Ex Parte Witt

Board of Patent Appeals and Interferences

Aug 29, 2008

10164192 (B.P.A.I. Aug. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte EVAN WITT
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Appeal 2008-0934
Application 10/164,192
Technology Center 2100
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Decided: August 29, 2008
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-49. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
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THE INVENTION
The disclosed invention relates generally to data processing. More
particularly, Appellant’s invention relates to computer systems, computer
programs, and methods for client/server communication using Internet
protocol and pages written in markup languages (Spec. 2).
Independent claim 1 is illustrative:
1. A method in a network for providing a markup page
including scripts from a server to a client controlled by a user,
the method comprising:

inserting into the markup page, a first array with a first
number set, a second array with a second number set, a third
array with a third number set, wherein the first set and third set
form a first function and the second set and the third set form a
second function;

inserting selector code for providing a selector directly
into the markup page, the code for interacting with the user to
receive a selection of selectively the first and the second
function; and

inserting directly into the markup page diagram code for
displaying a diagram for the first function or for the second
function depending on the selection and for enabling the user to
modify the first or second array, whereby the client is adapted
to adjust the diagram to reflect the user's modification without
communicating with the server.

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THE REFERENCE
The Examiner relies upon the following reference as evidence in
support of the rejection:
Smith US 2002/0130868 A1 Sept. 19, 2002

THE REJECTION
Claims 1-49 stand rejected under 35 U.S.C. §102(e) as being
anticipated by Smith.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
Appellant’s Specification
1. Appellant’s invention is directed to interactive diagram pages written
in markup languages where graph generation is shifted from the server
computer to the client computer. (Spec. 6-7, ¶ [025]).
2. Appellant’s Specification discloses that “[t]he server provides a
markup language page with number sets (e.g., X, Y) in combination
with code for providing the diagram.” (Spec. 7, ¶ [025]).
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3. Appellant’s Specification discloses that “[m]arkup page 200 is
provided in a browser interpretable language, for example, in HTML,
DHTML, XML (cf. FIG. 1) in combination with scripts (e.g.,
JavaScript).” (Spec. 15, ¶ [053]).
4. Appellant’s Specification discloses that “[d]ata is often available as a
function Y = f(X) of a first set of numbers (Y) over a second set of
numbers (X), such as stock values over time.” (Spec. 2, ¶ [002]).

The Smith reference
5. Smith discloses “a graphical display system having a server for
receiving and processing financial instrument data from at least one
financial data feed and a client computing device connected to the
server for concurrently displaying to a user processed financial
instrument data in graphical form, a multi-media streaming video
presentation, and interactive communications associated with the
financial instruments.” (¶ [0012]).
6. Smith discloses that “external clients can access the system through
the Internet, where as the internal users can use the intranet to access
the application. The HTML pages are available in the client machine
on request, and the web server is responsible for taking the user inputs
and passing them to the presentation layer, applets and servlets that
reside in the application server.” (¶ [0027]).
7. Smith discloses that “[t]he Presentation layer is responsible for
interacting with the user by displaying different forms and obtaining
the inputs . . . .” (¶ [0060]).
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8. Smith discloses that “[t]he components in the presentation layer may
be deployed as Java Applets, Servlets and/or HTML pages.” (¶
[0061]).
9. Smith discloses a “Chart of the Day” feature on a website accessed by
a user whereby, upon actuation by the user, the screen shown in FIG.
2 is generated and an applet delivers streaming quotes through the
user's browser. (¶ [0030]).
10. Smith discloses “[t]he user interface is built in Xview and launched in
the web through a combination of HTML-Perl/CGI scripts which
delivers the goods with the use of an X-emulator. Alternatively, the
proposed interface is written in a combination of Java-servlets-
applets.” (¶ [0069]).
11. Smith discloses that “[a] Java-based interface may also draw graphs
locally, so there is no dependency on the IP address for providing the
graphic functionality.” (¶ [0073]).
12. Smith discloses that “[i]n an implementation using a Java-based user
interface, the graphs and the interface are all executed in the client
machines.” (¶ [0075]).
ANALYSIS
We consider the Examiner’s rejection of claims 1-49 as being
anticipated by Smith. Since Appellant’s arguments with respect to this
rejection have treated these claims as a single group which stand or fall
together, we select independent claim 1 as the representative claim for this
rejection. See 37 C.F.R. § 41.37(c)(1)(vii).

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In traversing the anticipation rejection, Appellant contends that
several specific limitations of claim 1 are not disclosed by the Smith
reference (Br. 12-15). For convenience, we reference these limitations as L1
L2, and L3 infra:
(L1) providing a markup page including scripts from a
server to a client controlled by a user . . . :

(L2) inserting into the markup page, a first array with a
first number set, a second array with a second number set, a
third array with a third number set, wherein the first set and
third set form a first function and the second set and the third
set form a second function;
(L3) inserting directly into the markup page diagram
code for displaying a diagram for the first function or for the
second function depending on the selection and for enabling the
user to modify the first or second array, whereby the client is
adapted to adjust the diagram to reflect the user's modification
without communicating with the server.

(Claim 1, emphasis in original as argued in the Brief; see App. Br. 17, ¶ 2))

Limitation L1
Regarding limitation L1, Appellant contends that the Smith reference
“is completely silent on providing a markup page including scripts from a
server to a client.” (App. Br. 16, ¶ 1). Instead, Appellant states that “Smith
teaches the use of Perl/CGI scripts at a server to launch a user interface via
HTML or by using Java-servlets-applets.” (id.). Appellant notes that the
Examiner has relied on Smith’s applets as teaching the claimed scripting
feature (App. Br. 16, ¶ 2). Appellant avers that applets are not the same as
the claimed scripts (App. Br. 17, ¶ 1).
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Thus, we begin our analysis by considering the question of whether
Smith’s teaching of applets meets the claimed scripting feature (i.e.,
providing a markup page including scripts from a server to a client. . .), as
recited in the preamble of claim 1.

Claim construction
During prosecution, “the PTO gives claims their ‘broadest reasonable
interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
With respect to the Examiner’s reliance upon various extrinsic
evidence in construing the claims (i.e., regarding whether a script reads on
an applet), we note that our reviewing court has determined that extrinsic
evidence is unlikely to result in a reliable interpretation of patent claim
scope unless considered in the context of the intrinsic evidence. Phillips v.
AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). The court in
Phillips reaffirmed its view that the specification “is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it is the single
best guide to the meaning of a disputed term.” Id. at 1315 (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
This same reasoning is applicable here. Therefore, we opt for the
more relevant intrinsic evidence and decline to rely upon the extrinsic
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evidence of record in this case.1 Hence, we look to Appellant’s
Specification for guidance regarding how we should construe the disputed
claim term “scripts.” From our review of the Specification, we find no
express definition for the term “scripts,” and do not find that Appellant has
identified any specific definition. Instead, Appellant discloses “scripts” in
the following context: “Markup page 200 is provided in a browser
interpretable language, for example, in HTML, DHTML, XML (cf. FIG. 1)
in combination with scripts (e.g., JavaScript).” (Spec. 15, ¶ [053], emphasis
added) (FF 3). Thus, Appellant’s Specification discloses that JavaScript is
an example of a type of script. The aforementioned portion of Appellant’s
Specification further distinguishes scripts from several markup languages
(HTML, DHTML, XML).
We note that Appellant’s Specification also includes the originally
filed claims and the drawings. After considering the claim as a whole, we
particularly note that literal support for the preamble term “scripts” is not
found or used in the body of claim 1. While the preamble recites “[a]
method . . . for providing a markup page including scripts . . . ,” the body of
claim 1 only recites three steps of “inserting” (into the markup page) first
and second arrays, “selector code,” and “the markup page diagram code.”
(Claim 1, emphasis added). In particular, we see no literal antecedent basis
in claim 1 for “the markup page diagram code,” as recited in the third clause
in the body of the claim.

1 We note that Appellant has indicated that two extrinsic “Wikipedia” web
documents of record do not include a publication date and are therefore not
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However, we recognize that the failure to provide explicit antecedent
basis for terms does not always render a claim indefinite. “If the scope of a
claim would be reasonably ascertainable by those skilled in the art, then the
claim is not indefinite.” Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed.
Cir. 2001). Moreover, antecedent basis can be present by implication.
Slimfold Manufacturing Co. v. Kinkead Industries, Inc., 810 F.2d 1113,
1116 (Fed. Cir. 1987). See also Energizer Holdings Inc. v. Int'l Trade
Comm'n, 435 F.3d 1366, 1370 (Fed. Cir. 2006) (holding that "anode gel"
provided by implication the antecedent basis for "zinc anode").
Here, we find that a skilled artisan at the time of the invention would
have reasonably ascertained by implication that “the markup page diagram
code” in the body of claim 1 has positive antecedent basis in the preamble of
claim 1, because an artisan would have understood that the recited “markup
page diagram code” is a script. Likewise, when the language of the claim is
considered as a whole, we find that an artisan would have reasonably
ascertained by implication that the “selector code” recited in the body of
claim 1 is also a script. Thus, the method of claim 1 includes scripts in a
markup page by inserting code (in the form of scripts) into the markup page.
Therefore, from the language of the claim itself, we conclude that Appellant
has broadly construed the “scripts” recited in the preamble to encompass the
two forms of “code” recited in the body of the claim.2

clearly available as prior art (App. Br. 16, ¶ 2).
2 “An analysis of claim indefiniteness under § 112 ¶ 2 is ‘inextricably
intertwined with claim construction.’” Energizer Holdings Inc. v. Int'l Trade
Comm'n, 435 F.3d at 1368 (quoting Atmel Corp. v. Information Storage
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We continue our analysis by noting that Appellant added the
limitation “including scripts” to the originally-filed claims by the
Amendment received on March 15, 2006. However, we find the portion of
the Specification Appellant cites as providing support for this limitation
(paragraph 53) does not, in fact, provide the proffered support (App. Br. 7).
To the contrary, paragraph 53 of the Specification merely discloses
providing a markup page “in combination with scripts,” rather than
providing clear Section 112, first paragraph support for “including scripts,”
as recited in the preamble of claim 1, as amended (emphasis added).
Nevertheless, we find markup page 200 (as shown in Figure 8 of
Appellant’s drawings) provides the requisite support in the form of “CODE
201” that is included in markup page 200 as, inter alia, code element “240
SELECTOR” and code element “250 DIAGRAM.” (Spec., Fig. 8). These
illustrated code elements correspond to the “selector code” and “markup
page diagram code” recited in the body of claim 1. Thus, by applying an
alternative analytical approach, we find again that Appellant has broadly
construed the “scripts” recited in the preamble to encompass two forms of
“code” (as shown within markup page 200 in Appellant’s Figure 8).
From the aforementioned discussion, we broadly but reasonably
construe the scope of the preamble claim term “scripts” to read on any form
of code. As discussed supra, this broad construction is fully consistent with
Appellant’s Specification (claims, description, and drawings), as originally
filed.

Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir. 1999)).
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After considering the claim as a whole in the context of Appellant’s
supporting Specification (including the drawings),3 we conclude that the
broad language of claim 1 does not preclude the interpretation proffered by
the Examiner. Accordingly, because we agree that Smith’s “applet” is
clearly a type of “code” that is referenced (i.e., called) from a markup page,
we find no error in the Examiner’s reasoning as set forth in the Answer.
Moreover, we find that when an applet is called or invoked from a markup
page, it is reasonably “included” in the markup page, because code elements
must necessarily be present in the markup page to call or invoke the applet
code. Thus, we find that Smith discloses limitation L1 above, i.e.,
“providing a markup page including scripts from a server to a client
controlled by a user . . . .” (claim 1).
Limitations L2 and L3
Next, we consider the question of whether Smith discloses the argued
features of limitations L2 and L3, i.e., (L2) “wherein the first set and third
set form a first function and the second set and the third set form a second
function,” and (L3), “enabling the user to modify the first or second array,
whereby the client is adapted to adjust the diagram to reflect the user's
modification without communicating with the server,” as recited in the body

3 See Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684,
692 (Fed. Cir. 2001) (The definiteness inquiry “focuses on whether those
skilled in the art would understand the scope of the claim when the claim is
read in light of the rest of the specification.”).

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of claim 1 (emphasis in original, as shown in Appellant’s principal Brief,
page 17).
Regarding limitations L2 and L3, Appellant contends that adjusting a
time frame in the Smith reference does not constitute modifying a first or
second data array, as claimed, because the chosen time frame does not form
“a first function” or “a second function” with another array or number set, as
required by the language of claim 1 (App. Br. 17, ¶ 2).
We begin our analysis of disputed limitations L2 and L3 by noting
that Appellant’s Specification discloses that “[d]ata is often available as a
function Y = f(X) of a first set of numbers (Y) over a second set of numbers
(X), such as stock values over time.” (Spec. 2, ¶ [002], emphasis added) (FF
4).
In particular, we note that Smith is expressly directed to displaying
processed financial instrument data in graphical form, where the financial
data consists of stock values displayed over time, according to one disclosed
embodiment (Smith, p. 2, ¶ [0029]; see also Figs. 10-15) (FF. 5). Therefore,
we find no error in the Examiner’s reasoning, as set forth on pages 17-19 of
the Answer. We find that Smith discloses a plurality of financial analysis
functions with respect to time (i.e., a third value), including at least (1) stock
prices presented as a function of time, and, (2) moving averages presented as
a function of time (see e.g., ¶¶ [0125 and 0130]; see also Figs. 10-15).
Nor do we find persuasive Appellant’s argument in the Reply Brief
that “modification of a time span does not describe modification of a first
array or a second array as recited in claim 1.” (Reply Br. 7). To the
contrary, we note that Smith discloses that older data drops off the left side
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of the display as newer data is introduced on the right side of the graph (¶
[0130]). Therefore, we find that the data arrays represented in Smith’s
display frame buffer are necessarily modified as the user selects a particular
window of time to view the stock data (Id.). Moreover, we note that Smith
discloses a Java-based interface embodiment that draws graphs locally
where the graphs and the interface are all executed on the client side (FF. 11-
12). Thus, we find that Smith additionally discloses limitations L2 and L3,
as described supra. (claim 1).
For at least the aforementioned reasons, we find that the weight of the
evidence supports the Examiner’s position. On this record, we conclude that
Appellant has not sustained the requisite burden on appeal in providing
arguments or evidence persuasive of error in the Examiner’s rejection of
representative claim 1. Because Appellant has not shown the Examiner
erred, we sustain the Examiner’s rejection of independent claim 1 (and
claims 2-49 that fall therewith), as being anticipated by Smith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not met his burden of showing that the Examiner erred in
rejecting claims 1-49 under 35 U.S.C. § 102(e) for anticipation. Therefore,
these claims are not patentable.

DECISION
We affirm the Examiner’s decision rejecting claims 1-49.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc

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