Ex Parte Zhou

Board of Patent Appeals and Interferences

Sep 28, 2007

09799413 (B.P.A.I. Sep. 28, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte QIN ZHOU
____________

Appeal 2007-0039
Application 09/799,413
Technology Center 2100
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Decided: September 28, 2007
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Before LEE E. BARRETT, HOWARD B. BLANKENSHIP,
and MAHSHID D. SAADAT, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-47, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant invented an interactive multimedia story authoring system
and method, allowing users to create their own stories from their own
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content or from the content stored on a computer server (Specification 3:14
through 4:4).

Claim 1 is representative of the claims on appeal and reads as follows:
1. A method of creating a story in a multimedia story authoring
system, said method comprising the steps of:

providing a database of information including data to be used as
components in making up a multimedia story within the authoring
system;

providing a host computer server for storing and manipulating
said database;

making said database available for access by users through a
hosting website;

providing a plurality of user interface screens, said screens
including user executable commands enabling a user logged onto said
hosting website to access said database, and use selected data therein
corresponding to components of a story, said components of said story
comprising a story text field for entering story text composed by the
user, and characters/objects; and

creating a story by executing the commands on said user
interface screens to select data corresponding to the components of the
story, and entering desired story text.

The prior art reference relied upon by the Examiner in rejecting the
claims on appeal is:
Ferrel US 6,584,480 B1 Jun. 24, 2003
(effectively filed Jul. 17, 1995)

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The rejection as presented by the Examiner is as follows:
1. Claims 1-47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ferrel.

ISSUE
Under 35 U.S.C § 103(a), with respect to appealed claims 1-47, would
one of ordinary skill in the art at the time of the invention have found it
obvious to modify Ferrel to render the claimed invention unpatentable?

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issues involved
in the appeal and are believed to be supported by a preponderance of the
evidence.
1. Ferrel relates to a method and apparatus for publishing
documents on a computer system which are used to; for example, create
newsletters or brochures to promote a particular company. In addition,
publications can be used to disseminate information to a variety of
customers (col. 1, ll. 21-27). Specifically, Ferrel relates a new authoring
system for creating on-line stories (col. 3, ll. 47-48).
2. Ferrel further discloses a method of publishing structured
documents in a computer network comprising publisher, server, and
customer computers comprising creating tagged content and storing a
plurality of tagged objects representative of the tagged content in a
document in the publisher computer (col. 4, ll. 6-12).
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3. In the Multimedia Publishing (MP) system of Ferrel, content
and design are stored as separate objects so that many different pieces of
content can be viewed with the same appearance (col. 6, ll. 54-57). The
system also keeps track of the links between a piece of content and its
associated page layout, but does not actually format the data in the content
with a particular style (col. 6, ll. 64-67). Among the objects used for
authoring, Ferrel describes content objects as stories, images, audio, etc.
(col. 8, ll. 2-3). The MP system objects are stored using “caching object
stores” (COSs), which are present at the publisher workstation and in each
MPS server at the publication storage and distribution center (FIG. 2). Each
customer workstation also has a COS so that the customer can store and
retrieve MP system objects when assembling content into controls on pages
(col. 8, ll. 7-19).
4. In the MP system of Ferrel, titles, such as a title A 140, title B
142, or title P 144 can be divided into two parts: the content (148, 152, 156)
-- the information such as bitmaps, video clips, audio, animation, or stories
that make up a title -- and the title layout, also termed the design (146, 150,
154) -- the overall look and feel of a title (col. 9, ll. 20-25). Using this
technique a publisher can change a title on an ongoing basis by merely
updating the content 112, 114, 116 which has been placed into various
folders or containers within the master title. Using what is called dynamic
title synthesis or dynamic synthesis, content can be continually updated
without any need to modify and update the title design (col. 9, ll. 33-41),
noting flexibility as its advantage (col. 9, ll. 42-44).
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5. Ferrel further discloses a user interface including a set of tools
for designing, developing, and viewing multimedia on-line applications. A
publisher, such as the publisher 102, utilizes a publisher workstation 182 and
a Designer software environment 194 to create and publish the title layouts
110 and content 112 or just create content and use the title layouts of another
publisher, which are later stored (col. 10, ll. 17-33).
6. Designer software environment 194 includes project editor 184
and other media editors for authoring text as well as images, sounds, and
content objects (col. 10, ll. 34-47).
7. As shown in Figure 3 of Ferrel, multiple publisher workstations
102, 104, 106 and customer workstations 160, 164 are connected to a host
data center 242 by a wide area network (WAN) 240. The network allows
end users (i.e., publishers and customers) over a wide geographic area to
access the host data center 242 via modem (col. 12, ll. 27-41).
8. Ferrel discloses content authors as editors, writers, reporters,
and forum managers who generate content, including structured stories,
using the content authoring environment. Writers compose the textual
content that appears in a title (or a release of a title). They hand their
materials off to the editorial staff. The editorial staff is in charge of the
overall content of the title (col. 15, ll. 24-32).
9. Once the editorial staff has chosen the stories they wish to
include in a release and are satisfied with the content of those stories, they
pass them on to the art department to select and insert appropriate artwork,
and to the production staff to place in content folders (col. 15, ll. 49-53).
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10. Ferrel further shows in Figure 11 the process of creating
content, publishing the content to a server, and having that content retrieved
by a customer so that it can be viewed on a page within a title. Ferrel further
discloses the process for creating content in an on-line publishing system
with a story editor, as shown in Figure 12 (col. 25, ll. 21-27).

PRINCIPLES OF LAW
To reach a conclusion of obviousness under section 103, the Examiner
bears the burden of producing factual basis supported by teaching in a prior
art reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984).
Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006), In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991), and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,
82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (quoting KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007)). “One of the ways in
which a patent’s subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent’s claims.” KSR, 127 S. Ct. at
1742, 82 USPQ2d at 1397.

ANALYSIS
Rejection of claims 1-7, 9-12, and 16-22
Appellant contends that Ferrel stores only completed stories on a
database instead of the components of a story for use in making or creating a
story (Br. 7). The Examiner’s position is based on characterizing the content
objects of Ferrel as the components stored in a database (Answer 10). We
agree with the Examiner. Ferrel uses objects as components for authoring,
which include both design and content. The objects are stored using a
caching object store (COS) which functions as the publication storage and
distribution center in each server (FF 3).
Appellant further argues that a story is released and stored after its
creation, which means that publishers have access only to the complete
stories, and not to the data stored as components to be used in making up the
story (Br. 8). The Examiner’s response is focused on Ferrel’s content
objects stored in the servers connecting the publisher and the customer’s
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workstations (Answer 11-12). Again, we agree with the Examiner and note
that Ferrel teaches that both the content object database and the stored
completed project are available to end users, i.e., publishers and customer,
by accessing the data center in the host (FF 3 & 7). Ferrel also provides for
an on-line or web-based MP for creating content in an on-line publishing
and editing system (FF 10).
Appellant contends that Ferrel does not teach or suggest providing
user interface screens with user executable commands, as recited in claim 1
(Br. 9). The Examiner responds by pointing to Ferrel’s teaching of a server
hosting on-line applications (Answer 12) and concludes that the organization
of such system, which have storage and sharing functionalities, are well
known by the skilled artisan (id.). We agree with the Examiner’s arguments
and find that the host database is available to both publishers and users over
the network (FF 5-7). Contrary to Appellant’s argument that only the
publisher workstation has access to the components (Br. 10), Ferrel’s
network, as depicted in Figure 3, allows access to both publishers and users
to host data center 242 (FF 7). We also observe that the publishers are also
users of the database when publishers access the content objects and create a
story.
Thus, in light of these findings, we find that one of ordinary skill in
the art would have found that Ferrel suggests the subject matter recited in
Claim 1, as well as claims 2-7, 9-12, and 16-22, argued together as one
group. See Young, 927 F.2d at 590, 18 USPQ2d at 1091. See also 37 C.F.R.
§ 41.37(c)(1)(vii).

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Rejection of claims 8 and 30
Appellant argues that Ferrel allows only the publisher to create a
story, whereas claim 8 requires a user to create stories by selecting
components and also to add new components to the database for others to
use (Br. 11-12). Initially, we observe that the claim only requires user data
selected by the user and uploaded by the user to be stored in the database.
There is no requirement for the uploaded data to be used by other users in
creating stories. We also disagree with Appellant that only the publishers
may create and store a story where the users retrieve the completed stories
(id.). As discussed above, we do not see the publishers of Ferrel to be
different than the claimed users since publishers use the database containing
content objects for creating stories. Therefore, we find the Examiner’s
position reading the subject matter of claim 8 on the database available to
the end users for storing the user created contents, even if created by the
publishers, to be reasonable (FF 5-7). Appellant provides no additional
arguments for claim 30, which includes a similar limitation, and relies on the
arguments made for the patentability of claim 8 (Br. 18). Therefore, for the
same reasons discussed here, we find that the teachings of Ferrel suggest the
subject matter of claims 8 and 30.

Rejection of claims 13 and 35
Appellant argues that, unlike claim 13, Ferrel teaches that publishers
create complete stories on a workstation and store that completed story to a
network (Br. 12-13). The Examiner refers to Ferrel’s dynamic editing
functionality and argues that using the editing function, the publisher can
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edit the existing stories (Answer 14). We agree with the Examiner that the
dynamic title synthesis of Ferrel adds flexibility to the system by allowing
editing of the created story without the need for modifying the title design
(FF 4). Appellant provides no additional arguments for claim 35, which
includes a similar limitation, and relies on the arguments made for the
patentability of claim 13 (Br. 18). Therefore, for the same reasons discussed
here, we find that the teachings of Ferrel suggest the subject matter of claims
13 and 35.

Rejection of claims 14 and 36
Appellant argues that Ferrel does not teach or suggest the step of
editing a story by logging onto the website to add or modify the components
used in creating the story, as recited in claim 14 (Br. 13). Similar to the
arguments made above for claim 13, we find the examiner’s position to be
reasonable as Ferrel provides for editing the story as claimed (FF 4-6).
Appellant provides no additional arguments for claim 36, which includes a
similar limitation, and relies on the arguments made for the patentability of
claim 14 (Br. 18-19). Therefore, for the same reasons discussed here, we
find that the teachings of Ferrel suggest the subject matter of claims 14 and
36.
.
Rejection of claims 15 and 37
Regarding claim 15, Appellant argues that Ferrel publishes completed
stories and therefore, cannot benefit from providing feedback in the form of
approval or disapproval (Br. 14). The Examiner responds by taking Official
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Notice that an “offensive-content editor” means is common in the art and its
inclusion in the system of Ferrel would have been obvious (Answer 15).
Additionally, the Examiner argues that the editing functionalities in Ferrel
would have limited the availability of offensive material to the viewer in the
form of non-publication of the material (id.).
We agree with the Examiner that the selection of the stories by the
Editorial Staff (FF 8-9) encompasses an editor review to determine the
existence of any offensive content. Furthermore, the Examiner is correct to
conclude that non-publication of a story, whose content was not approved by
the Editorial staff, constitutes the feedback to the user indicating
disapproval, whereas publication of the story indicates approval to the user.
Appellant provides no additional arguments for claim 37, which includes a
similar limitation, and relies on the arguments made for the patentability of
claim 15 (Br. 19). Therefore, based on our discussion above and for the
same reasons discussed here, we find that the teachings of Ferrel suggest the
subject matter of claims 15 and 37.

Rejection of claims 23-29, 31-34, and 38-43
Appellant provides no new arguments for these claims and merely
relies on the arguments made in support of the patentability of claims 1-7, 9-
12, and 16-22 (Br. 15-17). Therefore, in light of our findings above with
respect to claim 1, we find that the teachings of Ferrel suggest the subject
matter of claims 23-29, 31-34, and 38-43. See Young, 927 F.2d at 590,
18 USPQ2d at 1091. See also 37 C.F.R. § 41.37(c)(1)(vii).

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Rejection of claim 44
Appellant argues that Ferrel lacks any teachings indicating the step of
entering the story into a contest and posting the results on a user interface
(Br. 20). Appellant further argues that Ferrel is a publishing system and
gains no benefit from modifying the reference teachings to include the
publishers’ participation in a contest (Br. 21). The Examiner responds by
characterizing a contest as a popular way to promote the publishing system
(Answer 18). While the Examiner’s observation about contests may be
reasonable, we observe that Ferrel’s selection of the stories to be published
by the editorial staff may reasonable be considered as a contest (FF 8-10).
In that regard, the stories submitted to the editorial staff for selection are
actually stories entered into a contest wherein selections of stories for release
based on the content and other criteria by the editorial staff is the same as
announcing the results by posting the published stories. Therefore, in view
of our discussion above, we find that Ferrel suggests the subject matter of
claim 44.

Rejection of claim 45
Appellant provides no additional arguments for claim 45 and relies on
similar arguments that were made for the patentability of claims 1, 8, 13, and
14 (Br. 21-23). Therefore, for the same reasons discussed supra, we find
that Ferrel suggests the subject matter of claim 45.

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Rejection of claim 46
Appellant merely repeats the recited features of claim 46 and basically
relies on similar arguments made for the patentability of claim 14 (Br. 23).
As discussed above, Ferrel teaches that the end users may access the content
objects and edit the created stories that are stored on the host storage (FF 4-
7). Therefore, for the same reasons discussed supra, we find that Ferrel
suggests the subject matter of claim 46.

Rejection of claim 47
Appellant repeats the same arguments raised for the patentability of
claim 1 (Br. 23-25). As discussed above, Ferrel teaches a publishing system
that includes a storage means for storing a database and a software for
creating user interfaces enabling the user to access the database through the
worldwide web for creating stories using the components of a story from the
database (FF 3-7). Therefore, for the same reasons discussed supra, we find
the subject matter of claim 47 to be suggested by Ferrel.

CONCLUSION OF LAW
Because Appellant has failed to point to any error in the Examiner’s
position, we sustain the 35 U.S.C. § 103 rejection of claims 1-47 over Ferrel.

DECISION
The decision of the Examiner rejecting claims 1-47 is 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)(1)(iv).
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AFFIRMED

eld

ANCEL W. LEWIS, JR.
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