International Business Machines Corporation

Patent Trials and Appeals Board

May 18, 2021

2020001451 (P.T.A.B. May. 18, 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.
15/443,220 02/27/2017 Feng Shao CN920160206US1 5341
11480 7590 05/18/2021
IBM Corporation - Patent Center
1701 North Street
B/256-3
Endicott, NY 13760
EXAMINER
HUYNH, CONG LAC T
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
05/18/2021 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FENG SHAO, WEI PING TU, and JIN YIN
____________

Appeal 2020-001451
Application 15/443,220
Technology Center 2100
____________

Before ANTON W. FETTING, JAMES P. CALVE, and
CHRISTA P. ZADO, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2020-001451
Application 15/443,220

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STATEMENT OF THE CASE1
Feng Shao, Wei Ping Tu, and Jin Yin (Appellant2) seeks review under
35 U.S.C. § 134 of a final rejection of claims 1–20, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellant invented a way of calculating space on a web browser
for a scrollbar. Spec. para. 5.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for calculating a space on a web browser for a
scrollbar, the method comprising:
[1] determining,
by one or more processors,
dimensions of a web browser presenting a webpage,
the webpage including an inner container and an outer
container;

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed June 20, 2019) and Reply Brief (“Reply Br.,” filed December 17,
2019), and the Examiner’s Answer (“Ans.,” mailed October 22, 2019), and
Final Action (“Final Act.,” mailed February 20, 2019).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation (Appeal Br. 3).

Appeal 2020-001451
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[2] modifying,
by one or more processors,
dimensions of the outer container of the webpage
based upon an associated maximum height value, an
associated minimum height value, and an amount of
data within the outer container;
[3] responsive to calculating a vertical height of the inner
container,
assigning,
by one or more processors,
a maximum height value and a minimum height value to
the inner container;
[4] modifying,
by one or more processors,
dimensions of the inner container
to a minimum height for the web browser to present
the data of the webpage,
based on the assigned maximum height value and
minimum height value of the inner container; and
[5] augmenting,
by one or more processors,
the web browser
to include a scrollbar based on the modified
dimensions of the outer container and the modified
dimensions of the inner container.
Claims 1–20 stand rejected under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure.
Claims 1–20 stand rejected under 35 U.S.C. § 112(a) as not enabling a
person of ordinary skill in the art to make and use the claimed subject matter
from the original disclosure.
Appeal 2020-001451
Application 15/443,220

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Claims 1–20 stand rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention.
The Examiner also makes an uncontested provisional rejection under
obviousness double patenting.
ISSUES
The issues of written description matter turn primarily on whether the
originally filed disclosure supports the claims.
The issues of enablement matter turn primarily on whether the
Wands3 factors support the rejection.
The issues of indefiniteness matter turn primarily on whether one of
ordinary skill would understand the metes and bounds of the claims.
ANALYSIS
Claim Construction
The term “container” has many disparate meanings in various
dictionaries, even within the context of computing. No lexicographic
definition is provided. The definition most pertinent to the context of the
claims is “a document or an application in which objects and components
can be placed. A Web browser is an example of a container. It displays
HTML (Hypertext Markup Language) pages that contain text and objects.
Objects can be pictures, sounds, videos, Java applets, and ActiveX
controls.”4 We therefore construe “container” as a document or an
application in which objects and components can be placed.

3 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
4 Linktionary, http://www.linktionary.com/c/container.html, last visited May
2, 2021.
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Claims 1–20 rejected under 35 U.S.C. § 112(a) as lacking a supporting
written description within the original disclosure
The Examiner first determines
the process of augmenting the web browser to include a scrollbar
to the outer container does not include “determining...
dimensions of a web browser presenting a webpage, the webpage
including an inner container and an outer container” as claimed.
Instead, the process includes determining that the web browser
305 viewing area is enhanced to 110%.
Final Act. 4–5. We are persuaded by Appellant’s argument that the
Specification supports this at paragraph 23. Appeal Br. 8, 14, and 16.
“Cognitive scrollbar program 200 determines web browser dimensions.”
Spec. para. 23.
Next the Examiner determines
There is no modifying of dimensions of the outer container of
the webpage based on an associated maximum height value,
an associated minimum height value, and an amount of data
within the outer container as claimed. Instead, as seen in
[0024] for modifying the outer container in step 212 in figure
2, the outer container is modified such that all data available
from web browser can be presented on web browser or the
outer container is modified to “a minimum value as a function
of the data presented on web browser 150.”
It is noted that the process for augmenting the web browser to
direct presentation of the scrollbar in the outer container 307
on the right side of the page is performed but without
mentioning of modifying dimensions of the outer container as
claimed. It appears that to augment the web browser to include
the scrollbar to the outer container, only modifying the inner
container is required.
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Final Act. 5. Initially we find that this is supported by Specification
paragraph 5. Further, we are persuaded by Appellant’s argument that the
Specification supports this at paragraphs 23 and 24. Appeal Br. 13–14.
As to the maximum, “the outer container dimension is assigned a
value based upon a height dimension of web browser.” Spec. para. 23. We
agree with Appellant that the web browser height is an implicit associated
maximum dimension. Appeal Br. 18; Reply Br. 2–3. As to the minimum,
“cognitive scrollbar program 200 modifies the outer container to a minimum
value as a function of the data presented on web browser 150.” Spec. para.
24. Looking at the limitation as a whole, it recites basic definitional
common sense in assigning a value that is based on being less than or equal
to a maximum and greater than or equal to a minimum.
Next the Examiner determines “augmenting the web browser to
include a scrollbar either in the outer container or the inner container does
not require modifying the outer container.” Final Act. 5. This modifying is
in the context of limitation 2, “modifying, by one or more processors,
dimensions of the outer container of the webpage based upon an associated
maximum height value, an associated minimum height value, and an amount
of data within the outer container.”
We are persuaded by Appellant’s argument that “[t]he parameters of
the outer container are assigned based on the overflow attributes of web
browser 150 used by cognitive scrollbar program 200 to assess and modify
the outer container[].” Appeal Br. 18; Spec. para. 24. The augmenting
limitation 5 does not recite modifying the outer container, this being the
Examiner’s apparent premise. Rather the step 5 augmenting is based on
prior step 2 modifying.
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The rejection of claim 4 (Final Action 6; Answer 6) is summarily
affirmed because Appellant does not contest it.

Claims 1–20 rejected under 35 U.S.C. § 112(a) as not enabling a person of
ordinary skill in the art to make and use the claimed subject matter from the
original disclosure
The Examiner determines that
there is no showing that [sic] what the dimensions of the outer
container would be after being modified. Since it is unsure what
the modified dimensions of the outer container are, it is
impossible to augment the web browser to include a scrollbar
based on such a modified dimensions of the outer container.
Final Act. 7. We are persuaded by Appellant’s argument that the Examiner
did not analyze enablement according to the Wands factors. Appeal Br. 20.
Appellant goes on to explain how this is adequately enabled. Id. at 20–23.
The Examiner does not respond to this in the Answer.

Claims 1–20 rejected under 35 U.S.C. § 112(b) as failing to particularly
point out and distinctly claim the invention
The Examiner determines that “it is unclear what the dimension of the
outer container after modified would be based on the maximum height
value, the minimum height value and the amount of data within the outer
container.” Final Act. 8. We are persuaded by Appellant’s argument that
“the specification expressly recites features that disclose that the ‘ ...
dimensions of the outer container [are modified] ... based upon an associated
maximum height value, an associated minimum height value, and an amount
of data within the outer container[.]’” Appeal Br. 26. The Examiner
responds
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The specification may recite that the outer container dimension
is determined on the web page and that the web page is
augmented to include a scrollbar as stated. However, it is not the
claim requirement where modifying dimensions of the outer
container is based upon an associated maximum height value, an
associated minimum height value, and an amount of data within
the outer container, and where augmenting the web browser to
include a scrollbar based on the modified dimensions of the outer
container and the modified dimensions of the inner container.
Ans. 15 (emphasis omitted). This does not appear to support the Examiner’s
rejection reasoning. As with the written description rejection, the context is
limitation 2, “modifying, by one or more processors, dimensions of the outer
container of the webpage based upon an associated maximum height value,
an associated minimum height value, and an amount of data within the outer
container.” It is unnecessary to specify actual dimensions to understand this
limitation. It is sufficient to understand how to respect the boundaries
recited in the limitation. One of ordinary skill understands how to respect
minima and maxima.
The Examiner next determines that “it is unclear how the process of
augmenting the web browser works to include a scrollbar based on the
modified outer container and the modified inner container.” Final Act. 8.
We are persuaded by Appellant’s argument that “the specification recites
‘the outer container dimension is assigned a value based upon a height
dimension of web browser 150.’” Appeal Br. 26. The Examiner responds
that “[i]t is not seen that the scrollbar is included in the web browser
based on the modified dimensions of the outer container and the
modified dimensions of the inner container as claimed but only based on
the modified dimensions of the inner container.” Ans. 15. The context is
limitation 5, “augmenting, by one or more processors, the web browser to
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include a scrollbar based on the modified dimensions of the outer container
and the modified dimensions of the inner container.” The Examiner
apparently determines that the inner container dimensions alone is sufficient
based on his finding. But the Examiner overlooks the dependency of the
inner container dimensions on the outer container dimensions.
The rejection of claims 5, 12, and 19 (Final Action 8–9; Answer 9) is
summarily affirmed because Appellant does not contest it.

Non-Statutory Double Patenting
As the non-statutory double patenting rejection is provisional in
nature because a patent has not yet issued, we conclude that it is premature
to address this rejection. See Ex parte Moncla, 95 USPQ2d 1884, 1885
(BPAI 2010) (precedential).
CONCLUSIONS OF LAW
The rejection of claims 1–3 and 5–20 under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure is
improper.
The rejection of claim 4 under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure is uncontested.
The rejection of claims 1–20 under 35 U.S.C. § 112(a) as not enabling
a person of ordinary skill in the art to make and use the claimed subject
matter from the original disclosure is improper.
The rejection of claims 1–4, 6–11, 13–18, and 20 under 35 U.S.C.
§ 112(b) as failing to particularly point out and distinctly claim the invention
is improper.
Appeal 2020-001451
Application 15/443,220

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The rejection of claims 5, 12, and 19 under 35 U.S.C. § 112(b) as
failing to particularly point out and distinctly claim the invention is
uncontested.
CONCLUSION
The rejection of claims 4, 5, 12, and 19 is affirmed.
The rejection of claims 1–3, 6–11, 13–18, and 20 is reversed.
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 112(a) Written
Description
4 1–3, 5–20
1–20 112(a) Enablement 1–20
1–20 112(b) Indefiniteness 5, 12, 19 1–4, 6–11,
13–18, 20
1–7 Provisional
Obvious-type
Double Patenting5

Overall Outcome 4, 5, 12, 19 1–3, 6–11,
13–18, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED IN PART

5 As explained above, we do not reach this rejection per Ex parte Moncla, 95
USPQ2d 1884, 1885 (BPAI 2010) (holding that it is premature to address a
provisional rejection (designated precedential).