UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/568,630 08/07/2012 HYONSU KIM JP920010396US3
8152-0213
5453
112978 7590 07/21/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
PAULA, CESAR B
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
07/21/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte HYONSU KIM and YOSHIROH KAMIYAMA
____________
Appeal 2020-002132
Application 13/568,630
Technology Center 2100
____________
Before ELENI MANTIS MERCADER, JAMES R. HUGHES, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 28–47, which are all the claims pending and rejected in
the application (Appeal Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies IBM Corporation as the real party in interest.
Appeal Br. 1.
Appeal 2020-002132
Application 13/568,630
2
STATEMENT OF THE CASE
Introduction
The present invention relates to “a computer that can reduce the time
required for display of translation results.” Spec. ¶ 1. In particular, “the
object of the present invention is to provide a computer that can display
translation results within a relatively shorter period of time, a server therefor,
and a translation method and program.” Spec. ¶ 5. Claim 28 is exemplary:
28. A method, performed within and by a translation
server that is connected, via a computer network, to a client
computer, a web server, and a translation engine, comprising:
receiving, from the client computer, a translation request
to translate an original document, the translation request
including a URL of the original document;
obtaining the original document from the web server
using the URL;
transmitting at least a partial portion of the obtained
original document to the translation engine;
extracting image data from the original document;
generating an incomplete results document that includes
image tags extracted from the original document;
forwarding the incomplete results document to the client
computer;
receiving, after the results document was forwarded to
the client computer, translated text from the translation engine;
and
forwarding the translated text to the client computer,
wherein the image data is transmitted to the client computer
prior to the translated text being transmitted to the client
computer from the translation server, and
the client computer combines the results document, the
image data, and the translated text to form a complete results
document.
Appeal 2020-002132
Application 13/568,630
3
References and Rejections2
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis
28–31, 34–39,
42–47
103(a) Flanagan (US 6,993,471 B1, iss. Jan. 31, 2006),
Slotznick (US 6,011,537, iss. Jan. 4, 2000).
32, 33, 40, 41 103(a) Flanagan, Slotznick, Kobayakawa (US 6,119,078,
iss. Sept. 12, 2000).
ANALYSIS3
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in determining the cited portions of
Flanagan and Slotznick collectively teach “generating an incomplete results
document that includes image tags extracted from the original document,” as
recited in independent claim 28 (emphasis added). See Appeal Br. 10–11;
Reply Br. 2–3.
The Examiner finds “Flanagan does not specifically teach generating
an incomplete results document that includes image tags extracted from the
original document,” but finds Slotznick teaches that limitation. Final Act.
7–9. In particular, the Examiner finds Slotznick’s blank boxes on a web
page teaches the claimed “image tags extracted from the original document.”
Final Act. 9; see also Final Act. 15; Ans. 27–28.
2 Throughout this opinion, we refer to the (1) Final Office Action dated
March 1, 2019 (“Final Act.”); (2) Appeal Brief dated August 5, 2019
(“Appeal Br.”); (3) Examiner’s Answer dated November 22, 2019 (“Ans.”);
and (4) Reply Brief dated January 21, 2020 (“Reply Br.”).
3 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not address the additional arguments.
Appeal 2020-002132
Application 13/568,630
4
We disagree. The recited “image tags” is a term of art known to one
skilled in the art, and the Specification describes the claimed “image tags” as
follows:
The translation service unit 32 of the translation service server
30 includes: an HTML document acquisition unit 33 for
obtaining from the web server 20 the HTML document 21 at
the URL designated in the translation request; an HTML
document analyzer (an extraction unit and a prior acquisition
data extraction unit) 34 for extracting tag information, such as
image tags (instruction data and image acquisition data),
included in the HTML document 21.
Spec. ¶ 21 (emphasis added).
After the text portions have been transmitted, the HTML
document analyzer 34 of the translation service server 30
further analyzes the HTML document 21 or 38 obtained at step
S302 and extracts the included image tags (step S303).
Specifically, lines 72 and 83, for each of which image tags,
, are indicated, are extracted from the HTML
document in Fig. 4. In the image tags, a file name following
the “src =” is to be displayed as an image, and in this
embodiment, images based on files “image_l.gif” and
“image_2.gif”, which are respectively stored at the same
locations as the HTML documents 21 and 38, are to be
displayed on a web page.
Spec. ¶ 35 (emphasis added).
Consistent with the Specification and the knowledge of one skilled in
the art, Slotznick describes image tags as follows:
HTML web pages also have image tags to specify where
images are located in the worldwide web which are to be
displayed on a requested web page. A simple image tag is as
follows:
Appeal 2020-002132
Application 13/568,630
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(end of image tag)
Slotznick 36:1–9.
Contrary to the Examiner’s assertion (Final Act. 15), because “image
tags” is a term of art, one skilled in the art would not consider Slotznick’s
blank boxes on a web page to be the claimed “image tags extracted from the
original document.”4 Further, the Examiner’s statement that the “outcome
results would have been the same” from using the claimed “image tags” or
blank boxes (Final Act. 15) is unpersuasive. Regardless of whether that
statement is true, it does not address the issue of whether the cited prior art
portions teach or suggest the claimed “image tags extracted from the original
document.” As a result, the Examiner has not shown the cited portions of
Flanagan and Slotznick collectively teach “generating an incomplete results
document that includes image tags extracted from the original document,” as
required by claim 28 (emphasis added).
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of independent claim 28, and independent
claims 36 and 44 for similar reasons.
We also reverse the Examiner’s rejections of corresponding dependent
claims 29–35, 37–43, and 45–47. Although the Examiner cites an additional
reference for rejecting some dependent claims, the Examiner has not shown
the additional reference overcomes the deficiency discussed above in the
rejection of claim 28.
4 If prosecution reopens, we leave it to the Examiner to determine whether
Slotznick’s image tags (Slotznick 36:1–9) teach the claimed “image tags.”
Appeal 2020-002132
Application 13/568,630
6
CONCLUSION
We reverse the Examiner’s decision rejecting claims 28–47 under 35
U.S.C. § 103.
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
28–31, 34–
39, 42–47
103(a) Flanagan,
Slotznick
28–31, 34–
39, 42–47
32, 33, 40,
41
103(a) Flanagan,
Slotznick,
Kobayakawa
32, 33, 40,
41
Overall
Outcome
28–47
REVERSED
