International Business Machines Corporation

Patent Trials and Appeals Board

Aug 24, 2021

2020001827 (P.T.A.B. Aug. 24, 2021)

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.
14/792,746 07/07/2015 Hanson Lieu GB920150031US1 9350
103763 7590 08/24/2021
IBM Corporation – Patent Center
1701 North Street
B/256-3
Endicott, NY 13760
EXAMINER
BURKE, TIONNA M
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
08/24/2021 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):
rocdrctr@us.ibm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANSON LIEU
___________

Appeal 2020–001827
Application 14/792,746
Technology Center 2100

____________

Before CARL W. WHITEHEAD JR., AMBER L. HAGY and
MICHAEL J. ENGLE, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 15, 16, 18–23,
25–29, 32 and 34–39 under 35 U.S.C. § 134(a). See Appeal Brief 11.

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed August 19, 2019), the
Reply Brief (filed January 10, 2020), the Final Action (mailed March 5,
2019) and the Answer (mailed December 2, 2019), for the respective details.
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (“The
word ‘applicant’ when used in this title refers to the inventor or all of the
joint inventors, or to the person applying for a patent as provided in
§§ 1.43, 1.45, or 1.46.”). Appellant identifies International Business
Machines Corporation of Armonk, New York as the real party in interest.
Appeal Brief 2.
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Claims 15, 18, 21 and 26 are independent. Claims 1–14, 17, 30, 31 and 33
are canceled. See Appeal Brief 28–34 (Claims Appendix.). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
Introduction
According to Appellant, “a first aspect of the present invention
includes a method for managing document annotations in a
publish/subscribe system as carried out at a publishing system. As part of
the method, the publishing system creates annotations of a document and
stores the annotations separately from the document.” Specification ¶ 5.

Representative Claim3 (disputed limitation emphasized)
15. A publishing system for managing document annotations in a
publish/subscribe system, comprising:
a memory; and
a processor in communication with the memory, the
processor configured to obtain program instructions from the
memory that cause the processor to perform a method comprising:

3 Appellant does not argue independent claims 15, 18, 21 or 26 individually.
See Appeal Brief 13 (“Accordingly, at least because Berson in combination
with Woolf does not teach the above-cited limitation, it cannot be said that
Berson and Woolf render any of claims 15, 18, 21, or 26 obvious”).
Accordingly, we select independent claim 15 as representative. See
37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same
ground of rejection are argued as a group or subgroup by appellant, the
Board may select a single claim from the group or subgroup and may decide
the appeal as to the ground of rejection with respect to the group or subgroup
on the basis of the selected claim alone.”).

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creating annotations of a document, the annotations
including reference for display of the annotations in relation
to display of the document;
storing the annotations separately from the document;
naming a set of the annotations using at least one tag;
setting roles and permissions for use of the set of the
annotations by subscribing users including setting access
permissions based on at least one constraint selected from a
group consisting of a time constraint and a location
constraint of a subscribing user; and
publishing the set of the annotations to a
publish/subscribe broker for access by subscribing users.

References
Name4 Reference Date
Woolf US 2004/0237033 A1 November 25, 2004
Le US 2008/0098294 A1 April 24, 2008
Lopez US 2013/0080916 A1 March 28, 2013
Smith US 8,706,685 B1 April 22, 2014
Berson US 2016/0063087 A1 March 3, 2016

Rejections on Appeal5
Claims 15, 16, 18, 19, 21–23, 25–29, 34, 35 and 37 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Woolf and Berson.6 Final
Action 5–15.

4 All reference citations are to the first-named inventor only.
5 The provisional nonstatutory double-patenting rejection of claims 18–23,
25–29, 32 and 34, as well as, the 35 U.S.C. § 112 rejection of claims 38 and
39 are withdrawn. See Answer 3.
6 Dependent claim 37 was not included in the statement of rejection;
however, the Examiner addressed the merits of the claim. See Final Action
14–15.
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Claims 20 and 32 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Woolf, Berson and Smith. Final Action 15–16.
Claim 34 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Woolf, Berson and Le. Final Action 16–17.
Claims 36, 38 and 39 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Woolf, Berson and Lopez. Final Action 17–19.

ANALYSIS
Independent claims 15, 18, 21 and 26
Appellant contends the obviousness rejection of independent claims
15, 18, 21 and 26 “should be reversed at least because Woolf and Berson,
taken alone or in combination, do not teach or suggest all of the limitations
of any of the claims 15, 18, 21, or 26.” Appeal Brief 11. Appellant argues
that “each of claims 15, 18, 21, and 26 recite the limitation ‘access
permissions based on at least one constraint selected from a group consisting
of a time constraint and a location constraint of [a] subscribing user” and
therefore “each claim requires access permissions based on time and/or
location constraints of the subscribing user (i.e., the one who subscribes to
annotations).” Appeal Brief 11.
Woolf discloses, “whenever a client subscribes for receiving another
users’ public annotations, the server 204 associates that client subscriber
with the annotation publisher (author) and his annotations for the specified
document.” Woolf ¶ 47; Final Action 5–6. The Examiner finds Berson
discloses “setting the access permission based on a subscription time of the
subscribing user or subscription location of the subscribing user” and
determines that it would have been obvious to one of ordinary skill in the art
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to modify Woolf by including “access permissions to annotations being
based on subscription times of the user, for the purpose of the security of the
annotations, as taught by Berson.” Final Action 6–7 (citing Berson ¶¶ 55–
56). Appellant contends, “Berson actually teaches placing access
restrictions on the rights of a ‘content creator’ to create annotations. It does
not teach placing any such restrictions on a subscribing user to view
annotations of others based on that subscriber’s on time and/or location
constraints.” Appeal Brief 12 (emphasis added); see also Reply Brief 3–4.
Appellant argues, “Berson does not teach setting access permissions
based on constraints of a ‘subscribing user’ as required by the limitation of
the claim. . . . because the content creator of Berson is very different from
the claimed subscribing user and viewing annotations is very different from
creating them.” Appeal Brief 12. The Examiner acknowledges that,
“[a]lthough Berson teaches placing restrictions on content creators and not
subscribing users, Woolf teaches subscribing user and controlling the access
to content such as using a filtering method.” Answer 4 (citing Woolf ¶ 36).
Appellant contends, “Woolf merely teaches that a subscribing user can
choose to perform time-based filtering. Because this is merely a choice by
the subscribing user, it cannot be considered an access permission constraint
on him, as presented in the language of these claims 15, 18, 21, and 26.”
Reply Brief 4.
The Examiner further determines that Berson discloses, “Access rules
and annotation rights can also be based on display time such as allowing
content to only be viewable to verified and permitted users in pre-defined
increments.” Answer 4 (citing Berson ¶ 38). Appellant reiterates that,
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“Berson contemplates restrictions on the right to create annotations, not on
the right to subscribe to annotations.” Reply Brief 4 (citing Berson ¶ 38).
We are not persuaded of Examiner error. Woolf discloses,
“Controlling subscriptions to others ink annotations is essentially performed
by communicating with the server to obtain a list of other users (authors), as
initiated via one of the buttons 404, e.g., the ‘Subscribe to:’ button.” Woolf
¶ 36; see also Answer 4. We agree with Appellant that restricting the right
to create annotations and restricting the right to subscribe to annotations are
not exactly the same. See Appeal Brief 12; Reply Brief 4. Nonetheless, any
difference in regard to restricting creators’ access to annotations and
restricting subscribers’ access to annotations would have been obvious. We
emphasize that “the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added).
A person of ordinary skill in the art would have recognized that
incorporating Berson’s content restrictions within Woolf would improve
Woolf’s ability to secure control and access to owner’s content. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”). Finally, Appellant has not demonstrated that combining
Berson’s content restrictions within Woolf would have been “uniquely
challenging or difficult for one of ordinary skill in the art,” and we find the
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proposed modification would have been within the purview of the ordinarily
skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418); see Final Action
6–7.
Appellant further argues that “Berson teaches away from the
combination with Woolf in the manner claimed” because “Berson teaches
the concept of placing limits on the creation of annotations by users without
any hint at the concept of placing limits on the ability of users to subscribe to
the annotations of others (once created)” and therefore “the only natural
combination that one of ordinary skill would infer from the combination of
Woolf and Berson would be to place restrictions on the creation of
annotations by the first set of individuals described in Woolf.” Appeal Brief
12.
We do not find Appellant’s arguments persuasive of Examiner error.
Berson does not discourage placing limits on users’ ability to subscribe to
annotations. See Berson ¶ 38. “A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation
marks omitted). Furthermore, it is irrelevant that Berson and the present
invention allegedly have different purposes. Nat’l Steel Car, Ltd. v.
Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) (“A finding
that two inventions were designed to resolve different problems . . . is
insufficient to demonstrate that one invention teaches away from another.”);
see Berson ¶¶ 55–56; Appeal Brief 12. Accordingly, we sustain the
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Examiner’s obviousness rejection of independent claims 15, 18, 21 and 26
argued together, as well as the obviousness rejections of dependent claims
19, 20, 25, 27, 32, 34 and 36 not argued separately. See Appeal Brief 13.

Dependent claim 16
The Examiner finds, “Woolf teaches time based filtering such as only
displaying annotations based on a certain display time.” Final Action 7
(citing Woolf ¶ 36). Appellant argues:
Even assuming, arguendo, the Examiner’s stated assertion is
correct, it does not follow that Woolf teaches the limitation of
claim 16. Woolf merely teaches that a subscribing user can
choose to perform time-based filtering. Because this is merely a
choice by the subscribing user, it cannot be considered an access
permission constraint on him, as required by the language of the
claim.
Appeal Brief 13.
Appellant contends the obviousness rejection of claim 16 is erroneous
because “Woolf and Berson, taken alone or in combination, do not teach or
suggest all of the limitations of claim 16.” Appeal Brief 13. The Examiner
determines that, “The claim does not include the authors setting specific
time or setting of the access permissions. The limitations are not limited by
the specification, thus, Woolf combined with Berson, disclose the limitation
and the rejection is maintained.” Answer 5. Appellant contends, “What
Woolf describes is merely the blocking of an unwanted subscriber. It is not
a display-time based constraint.” Reply Brief 6. Appellant’s arguments are
not persuasive of Examiner error because while Woolf alone may not
disclose the claimed limitations, Woolf in combination with Berson
discloses the claim limitation because the combination of Woolf and Berson
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does not merely teach performing time-based filtering as we explain above.
We sustain the Examiner’s obviousness rejection of dependent claim 16.

Dependent claims 22 and 28
Appellant contends that “claim 22 requires setting access permissions
based on subscription time and/or subscription location constraints of the
subscribing user (i.e., the one who subscribes to annotations).” Appeal Brief
15. The Examiner determines that “Berson teaches allowing the user to
view annotations based on time constraints and locations or annotations.”
Final Action 10–11 (citing Berson ¶¶ 55–56). Appellant contends that
“Berson actually teaches placing access restrictions on the rights of a
‘content creator’ to create annotations. It does not teach placing any such
restrictions on a subscribing user to view annotations of others based on that
subscriber’s on time and/or location constraints.” Appeal Brief 15. As we
state above, we agree with Appellant that restricting the right to create
annotations and restricting the right to subscribe to annotations are not
exactly the same. See Appeal Brief 12; Reply Brief 4. Nonetheless, any
difference in regard to restricting creators’ access to annotations, as taught in
Berson, and restricting subscribers’ access to annotations would have been
obvious. See KSR, 550 U.S. at 417; see also Berson ¶¶ 55–56.
Appellant contends, “Berson teaches away from the combination with
Woolf in the manner claimed.” Appeal Brief 16. For the reasons we state
above, we do not find Appellant’s argument persuasive of Examiner error.
See Kahn, 441 F.3d at 990. We sustain the Examiner’s obviousness
rejection of dependent claim 22. For the same reasons, we also sustain the
Examiner’s obviousness rejection of dependent claim 28 as argued by
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Appellant. See Appeal Brief 17–18 (“Appellant asserts that the Examiner’s
rationale for rejecting claim 28 is wrong for similar reasons that the
Examiner’s rationale for rejecting claim 22 is wrong.”).

Dependent claims 23 and 29
Appellant contends, “claim 23 requires setting access permissions based
on display time and/or display location constraints of the subscribing user (i.e.,
the one who subscribes to annotations).” Appeal Brief 18. The Examiner
determines that “Berson teaches allowing the user to view annotations based
on time constraints and locations or annotations.” Final Action 11 (citing
Berson ¶¶ 55–56). Appellant contends that “Berson actually teaches placing
access restrictions on the rights of a ‘content creator’ to create annotations.
It does not teach placing any such restrictions on a subscribing user to view
annotations of others based on that subscriber’s on time and/or location
constraints.” Appeal Brief 18. As we state above, we agree with Appellant
that restricting the right to create annotations and restricting the right to
subscribe to annotations are not exactly the same. See Appeal Brief 12;
Reply Brief 4. Nonetheless, any difference in regard to restricting creators’
access to annotations, as taught in Berson, and restricting subscribers’ access
to annotations would have been obvious. See KSR, 550 U.S. at 417; see also
Berson ¶¶ 55–56.
Appellant contends, “Berson teaches away from the combination with
Woolf in the manner claimed.” Appeal Brief 19. For the reasons we state
above, we do not find Appellant’s argument persuasive of Examiner error.
See Kahn, 441 F.3d at 990. We sustain the Examiner’s obviousness
rejection of dependent claim 23. For the same reasons, we also sustain the
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Examiner’s obviousness rejection of dependent claim 29 as argued by
Appellant. See Appeal Brief 20 (“Appellant asserts that the Examiner’s
rationale for rejecting claim 29 is wrong for similar reasons that the
Examiner’s rationale for rejecting claim 23 is wrong.”).

Dependent claim 35
Appellant contends, “claim 35 recites, a ‘time constraint [that] is a
predefined window of time during which the subscribing user is allowed to
access the set of the annotations after they are published.’” Appeal Brief 21.
The Examiner determines, “Berson teaches setting access permissions can be
done by a designated third party or the content owner. Berson teaches having a
predefined window of time that the content is viewable to the subscribing user.”
Final Action 14 (citing Berson ¶ 38). Appellant argues, “Berson teaches the
concept of limiting the length of content segments that user can view (e.g.,
15 seconds, 30 seconds, 1 minute).” Appeal Brief 21. Appellant further
argues, that Benson “does not teach a predefined window of time during
which access is allowed, as required by the limitation of the claim. A
predefined window of time (as claimed) and general limits on lengths of
segments that can be viewed (as described in Berson) are different.” Appeal
Brief 21.
Berson discloses, “To control access to the content, the content owner,
a designated third party, or a content curator may define access rules to the
content and annotation rights for content creators.” Berson ¶ 38 (emphasis
added). Benson further discloses that limits may be imposed on “the
duration of viewable content in associations with an annotation,” wherein the
“time limit on viewable content/scenes is one exemplary method that may be
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used so the content owner maintains control of how much of his video
production is viewable thereby avoiding unwanted distribution of the content
itself.” Berson ¶ 38 (emphasis added). Appellant’s argument is not
persuasive of Examiner error because Berson’s duration of viewable content
is a time limit or time constraint within a predetermined window of time, as
recited in claim 35. We sustain the Examiner’s obviousness rejection of
dependent claim 35.

Dependent claim 37
Appellant contends, “claim 37 recites, the computer program product
of claim 35, ‘wherein the predefined window of time includes a start date
and an end date.’” Appeal Brief 22. The Examiner determines that “Berson
teaches setting access permissions such as a predefined time limit that can
include dates or times.” Final Action 15 (citing Berson ¶ 38). Appellant
argues that Berson “does not teach a predefined time limit that includes start
and end dates, as required by the limitation of the claim. The fact that there
is a length of viewable time in Berson is very different from having a start
date and end date for a time limit as required by the claim.” Appeal Brief
22. Appellant’s argument is not persuasive of Examiner error because while
Berson discloses the duration of viewable content can be a predetermined
window of time for user’s access, Berson does not limit the predetermined
window of time to viewable content duration only. See Berson 38–39 (“The
access rules assigned to a content creator for a particular project may be
automatically determined by the system based on certain criteria as
discussed above or they may be manually assigned by the content owner or
curator of the content.”).
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Furthermore, “[a]s our precedents make clear . . . the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. Accordingly, Berson discloses or teaches a time limit associated
with a user’s access to annotations, and we find it would have been well
within the purview of one of ordinary skill in the art define the time limit by
well-known parameters such as dates. See Berson ¶ 38. Appellant’s
Specification supports this finding by using date and time interchangeably
with regard to the date filter. See Specification ¶ 81 (“A date filter 385 may
be provided for filtering subscriptions having a particular date/time range.”).
We sustain the Examiner’s obviousness rejection of dependent claim 37.

Dependent claims 38 and 39
Appellant contends the obviousness rejection of dependent claim 38
“should be reversed at least because Woolf, Berson, and Lopez, taken alone
or in combination, do not teach or suggest all of the limitations of claim 38.”
Appeal Brief 23. The Examiner determines that “Woolf fails to expressly
disclose setting the time constraints for the users” and relies upon Lopez to
address Woolf’s stated deficiency. Final Action 18 (citing Lopez ¶ 87). The
Examiner further determines, “it would have been obvious to one having
ordinary skill in the art at the time the invention was filed to include editing
permissions to annotations for the user, for the purpose of the efficiently
limiting the viewing of certain data, as taught by Lopez.” Final Action 18.
Appellant argues, “contrary to the claim limitation’s requirement that
access permissions not be applied based on a displaying time of the
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subscribing user, Lopez teaches limiting viewing access to a specific display
time.” Appeal Brief 24 (citing Lopez ¶ 89). The Examiner determines,
“Lopez teach the access permissions are set based on the subscription time
of the subscribing user” because a “user must be present in the movie theater
and have bought a ticket to be able to subscribe to the movie. A user can not
subscribe to see a movie if the movie is not being shown during a specific
time (see paragraph [0089]).” Answer 9. Lopez discloses, “the user can
purchase or otherwise obtain additional permissions to expand the zones or
times for permissibly viewing the recording.” Lopez ¶ 89. Appellant argues
that Lopez actually discloses ‘“[a] user must be present in the movie theater
and have bought a ticket to be able to [display] the movie.”’ Reply Brief 15.
Appellant argues that “[e]ven assuming Lopez teaches some time
constraints, it is clear that those constraints are based on when the
annotations can be displayed, not based on when the user can subscribe to
the annotations.” Appeal Brief 23; Reply Brief 15.
Appellant’s argument is persuasive of Examiner error because
Lopez’s time constraints are based upon when annotations are displayed, and
not subscription time of the subscribing user as required by claim 38.
See Lopez ¶ 87. We, therefore, reverse the Examiner’s obviousness
rejection of claim 38. We also reverse the Examiner’s obviousness rejection
of claim 39 for the same reasons as claim 38 because both claims are
commensurate in scope, as well as, the arguments for claim 38 are repeated
for claim 39. See Answer 9–10; Reply Brief 16–18.
We note that claim 38 recites, “wherein the access permissions are not
applied based on a displaying time of the subscribing user” and claim 39
recites, “wherein the access permissions are not applied based on a
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displaying location of the subscribing user.” The Examiner is advised to
determine if the original disclosure provides an adequate basis for the
negative or exclusionary limitations recited in claims 38 and 39. See Ex
parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453
(Fed. Cir. 1984) (“[W]e agree with the examiner’s position of record that the
negative limitations recited in the present claims, which did not appear in the
specification as filed, introduce new concepts and violate the description
requirement of [35 U.S.C. § 112(a) and pre-AIA 35 U.S.C. § 112, first
paragraph].”); see also M.P.E.P § 2173.05(i).

CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
15, 16, 18, 19,
21–23, 25–29,
34, 35, 37
103 Woolf, Berson 15, 16, 18,
19, 21–23,
25–29, 34,
35, 37

20, 32 103 Woolf, Berson,
Smith
20, 32
34 103 Woolf, Berson, Le 34
36, 38, 39 103 Woolf, Berson,
Lopez
36 38, 39
Overall
Outcome
15, 16, 18–
23, 25–29,
32, 34–37
38, 39

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED IN PART