Ex Parte Wu et al

Patent Trial and Appeal Board

Feb 21, 2017

11410421 (P.T.A.B. Feb. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/410,421 04/24/2006 Jiang Wu 2185.004US1 2981
21186 7590 02/23/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
FABER, DAVID
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
02/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANG WU, MICHAEL BASS,
STEFAN REICHENEDER, GEORGE KU, and SHELDON X. WANG
Appeal 2016-001054
Application 11/410,421
Technology Center 2100
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001054
Application 11/410,421
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—23, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to “the field of building or providing
forms, for example, building or providing online application forms.” (Spec.
11.) Claim 1, reproduced below, is exemplary:
1. A method of building an application form to be provided to
an applicant via the Internet, the method comprising:
providing a graphical user interface (GUI) to a user, the GUI
including a page layout zone and a page type zone including a
plurality of reference page types;
monitoring user placement of selected reference page types in
the layout zone, each reference page including page data and
wherein different reference pages include at least some different
textual information for inclusion in the application form;
automatically interconnecting the selected reference page
types based on their relative placement in the layout zone;
generating page flow data in response to the automatically
interconnecting the selected reference page types;
identifying rules data associated with each selected reference
page type, wherein the rules data defines required data of the
application form to be captured at runtime for the selected
reference page, the required data to be received from an applicant
input responsive to the textual information; and
1 Appellants identify Ehealthinsurance Services, Inc. as the real party in
interest. (See App. Br. 3.)
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Application 11/410,421
storing the page flow data, the page data and the rules data in
a storage media for subsequent conversion of each reference
page of the application form from a first format to a web-based
markup language at runtime, the first format being different than
the web-based markup language, wherein the subsequent
conversion is performed in response to applicant input and prior
to the reference page being provided to the applicant, the page
flow data defining one or more follow-up reference pages
generated at runtime.
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lavin et al. US 5,772,585 June 30, 1998
Arora et al.2 US 5,845,299 Dec. 1, 1998
Howell et al. US 2003/0083906 Al May 1,2003
Yankovich et al. US 6,704,906 B1 Mar. 9, 2004
Bleicher et al. US 6,820,235 B1 Nov. 16, 2004
Ali et al. US 6,920,607 B1 July 19, 2005
Arora et al. US 7,246,307 B2 July 17, 2007
McAlindon et al. US 7,251,609 B1 July 31,2007
2 U.S. Patent 7,246,307 (“Arora ’307”) incorporates U.S. Patent 5,845,299
(“Arora ’299”) by reference. (See Final Act. 3.) Unless otherwise noted, we
refer to Arora ’307 and Arora ’299 collectively as “Arora.”
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Application 11/410,421
THE REJECTIONS
1. Claims 1—8, 10, 11, 14, 16, and 18—23 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Arora, Bleicher, and Ali. (See Final
Act. 3-12.)
2. Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arora, Bleicher, Ali, and Howell. (See Final Act. 13.)
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Arora, Bleicher, Ali, and McAlindon. (See Final Act. 14.)
4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Arora, Bleicher, Ali, and Lavin. (See Final Act. 14—15.)
5. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Arora, Bleicher, Ali, and Yankovich. (See Final Act. 15.)
ANAFYSIS
Claim 1 concerns “[a] method of building an application form to be
provided to an applicant via the Internet.” The method includes
(a) providing a GUI including a page layout zone and a page type zone
including a plurality of reference page types; (b) monitoring user placement
of reference page types in the layout zone, each reference page including
page data and different textual information for inclusion in the form;
(c) automatically interconnecting the reference page types based on their
relative placement in the layout zone; (d) generating page flow data in
response to the interconnecting; and (e) identifying rules data associated
with each selected reference page type. The rules data defines required data
to be received from an applicant responsive to the textual information to be
captured at runtime. The claimed method further includes storing the page
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Application 11/410,421
flow data, the page data, and the rules for subsequent conversion of each
reference page from a first format to a different, web-based markup
language at runtime. The conversion is performed in response to applicant
input and prior to the reference page being provided to the applicant, and the
page flow data defines one or more follow-up reference pages generated at
runtime.
The Examiner finds that Arora teaches the majority of the elements of
claim 1, but fails to disclose (i) “building an application form to be provided
to an applicant via the Internet,” (ii) “identifying rules data associated with
each selected reference page type, wherein the rules data that defines
required data of the application form to be captured at runtime for the
selected reference page, the required data to be received from an applicant
input responsive to the textual information,” and (iii) “creating one or more
follow-up reference pages based on subsequent conversion wherein the
subsequent conversion is performed in response to applicant input and prior
to the reference page being provided to applicant.” (Final Act. 3—6.)
The Examiner further finds, however, that Bleicher discloses (i) “the
server creating a form and transmitting the form to the client to enter data,”
that (ii) “once textual data is entered into a field by the user, the rule(s)
governing the field checks the data for inconsistencies to make the entered
data satisfies the set rule(s) governing the input field,” and (iii) that a user
can click a tab causing “the associated form object [to be] called up[,]
resulting] in a form page being constructed by including data from database
and HTML fragments from templates” that is “sent to the user for viewing.”
(Final Act. 6—7.)
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The Examiner explains that it would have been obvious to modify
Arora with the functionality of Bleicher in order to provide “the benefit of
obviating the extra transmission back and forth that would be required if all
checks were done at the server and expediting the process by collecting and
managing trial data including communications between sites over the
Internet. . . resulting in faster process of and availability of data.” (Final
Act. 7-8.)
The Examiner further finds that the combination of Arora and
Bleicher fails to disclose “the format of page flow data, the page data, and
the rules data being converted into a web-based markup language for the
creation of being in a first format being different than a web-based
document.” (Final Act. 8.) The Examiner also finds, however, that Ali
“discloses dynamically generating a HTML document (a web based markup
language) generated from XML files (different from a web based markup
language)” and that “[i]t would have been obvious to one of ordinary skill in
the art at the time of Applicant’s invention to have the cited art with the
functionality disclosed by [Ali] since it would have provided the benefit of
providing extensible and interactive Web page.” (Final Act. 8—9.)
Appellants offer a series of arguments for the patentability of
representative claim 1, which we will refer to by their associated headings in
the Appeal Brief, B.l—B.9, and address seriatim?
3 Appellants also argue an objection to the Specification. (See App. Br. 9—
10.) Objections are not reviewable by appeal, but the objection has now
been withdrawn. (See Ans. 3.)
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Argument B.l
Appellants argue that “[conversion at runtime is in stark contrast to
generating an HTML version saved to a user’s system,” that “[i]n Arora, the
HTML is generated when the page is ‘published’ to the site and thus prior to
any access by an applicant online,” and that “[conversion at runtime in
response to applicant input and prior to the reference page being provided to
the applicant... is also not described or even suggested in Bleicher.” (App.
Br. 15-16.)
We are not persuaded by Appellants’ argument because the
Examiner’s combination contemplates the preparation of a form, as in Arora,
where user interaction (e.g., the clicking of a button) causes pages to be
rendered, as in Bleicher, and where the pages of the form are generated
dynamically (i.e., at runtime) as taught in Ali. (See Final Act. 3—9.) This
combination would use, at “runtime,” the page flow data (connecting one
page to the next), the page data (that displayed to the applicant), and the
rules data (validating the applicant’s input). Appellants’ contention does not
demonstrate error because it fails to address the Examiner’s finding that Ali,
not Arora, discloses dynamically generating a document. (See Final Act. 8)
Nonobviousness cannot be established by attacking individual references
where, as here, the rejection is predicated upon a combination of references.
See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Argument B. 2
Appellants next argue that “[t]he Examiner is apparently equating the
selection of a publish command in Arora with the claimed applicant input,”
where “[t]he alleged publish command, however, would be issued by a
publisher of a form, not by an applicant” and “Claim 1 recites that the
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required data is ‘of the application form’ and is ‘to be received from an
applicant.’” (App. Br. 16.) We find this argument ineffective because the
Examiner finds the claimed “applicant input” in Bleicher, not Arora. (See
Final Act. 6—7 (stating that “Arora et al fails to specifically disclose . . .
wherein the subsequent conversion is performed in response to applicant
input and prior to the reference page being provided to applicant” and
turning to Bleicher for that claim element).)
Argument B. 3
Appellants next argue that “Arora and Bleicher, alone or in
combination, do not disclose or suggest storing data for subsequent
conversion of a reference page of an application form from a first format to a
web-based markup language at runtime, the first format being different than
the web-based markup language, wherein the subsequent conversion is
performed in response to applicant input and prior to the reference page
being provided to the applicant.” (App. Br. 18, emphasis omitted.) This
argument is essentially the same as Argument B.2 and we conclude that it
fails to show error for the reasons explained above.
Argument B.4
Appellants argue that “claim 1 recites ‘conversion from a first format
to a web-based markup language at runtime, the first format being different
than the web-based markup language’” but that “Bleicher specifically
teaches that its form is assembled from HTML from templates.” (App. Br.
20, emphasis omitted.) This fails to show error because the Examiner relies
on Ali, not Bleicher, for the different formats (see Final Act. 8) and Ali
teaches conversion from XML to HTML, which is the same as what is
described in Appellants’ Specification. (Compare Ali 6:15—19 (“The HTML
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user interface is generated with independent Extensible Markup Language
(XML) data files containing data that defines the UI.”), with Spec. 1177
(“[T]he data model 38 is an XML data structure from which HTML web
pages are generated on-the-fly by the runtime engine 18.”).)
Arguments B.5 andB.6
Appellants argue that “[cjontrary to the Examiner’s assertion, rules for
checking data for inconsistencies [are] not equivalent to defining the
required data . . . and [are] not equivalent to a definition of ‘required data of
the application form to be captured at runtime for the selected reference
page.’” (App. Br. 25, emphasis omitted.) We do not agree. Bleicher, which
is cited for this feature, teaches that “[f]or example, a rule might allow
patient temperatures only within a certain range, to protect against the
entering of Celsius temperatures instead of Lahrenheit.” (Bleicher 12:59—
62.) This is essentially the same as the rule checking described in
Appellants’ Specification: “An example of an error can be where the
applicant has entered a social security number but in an incorrect format or
with the incorrect number of digits.” (Spec. 1188.)
Argument B. 7
Appellants assert that “Ali describes generating a single (as opposed
to a sequence of) HTML page.” (App. Br. 28.) Even if accurate, this would
not be persuasive of Examiner error because both Arora and Bleicher teach
plural pages in the combination. (See final Act. 4—8.) And, again assuming
Appellants’ characterization of Ali is accurate, they fail to explain why it
would not have been obvious to one of skill in the art to render the plural
pages of Arora/ Bleicher with the page conversion technique of Ali.
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Appellants also assert that “[a]s described in Ali, control panel pages
are utilized” and “[cjontrol pages are not equivalent to applicant pages.”
(App. Br. 31, emphasis omitted.) We find this to be immaterial because the
Examiner draws on Ali only for the concept of rendering HTML from XML.
The use to which the HTML is put in Ali is not relevant to whether the
XML-HTML conversion would have been an obvious modification of
Arora/Bleicher.
Argument B.8
Appellants argue that “Arora and Bleicher, alone or in combination,
do not disclose or suggest follow-up reference pages, as defined in the
context of the claimed embodiment, and do not disclose or suggest the page
flow data defining one or more follow-up reference pages generated at
runtime.” (App. Br. 32 (emphasis omitted).) We do not agree. The
Examiner explains that both Arora and Bleicher teach linked pages (see
final Act. 4—8), and a user following a link from one page to another at
runtime would do so using an HTML link that had been generated from
“page flow data” using the XML-HTML conversion process of Ali.
Argument B. 9
finally, Appellants argue that “[conversion at runtime is in stark
contrast to generating an HTML version saved to a user’s system,” that “[i]n
Arora, the HTML is generated when the page is ‘published’ to the site and
thus prior to any access by an applicant online,” and “[cjonversion at
runtime in response to applicant input and prior to the reference page being
provided to the applicant, as claimed in the context of claim 1, is also not
described or even suggested in Bleicher.” (App. Br. 33.) This argument is
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unpersuasive for the reasons described above in connection with argument
B.l.
Conclusion
Because we find Appellants’ arguments insufficient to show Examiner
error, we sustain the rejection of independent claims 1,18, and 19 under
35 U.S.C. § 103(a) and, as no additional arguments are offered for
dependent claims 2—17 and 20-23 (see App. Br. 34), we sustain the
Examiner’s Section 103(a) rejections of those claims as well.
DECISION
The rejections of claims 1—23 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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