International Business Machines Corporation

Patent Trials and Appeals Board

Jun 1, 2020

14606101 - (D) (P.T.A.B. Jun. 1, 2020)

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.
14/606,101 01/27/2015 Stefan A. Hepper IN920130124US2 7087
103763 7590 06/01/2020
IBM Corp-Rochester Drafting Center
SVL
650 Harry Road, Almaden Research Center
C4TA/J2B
San Jose, CA 95120
EXAMINER
EL-BKAILY, AHMAD M
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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 STEFAN A. HEPPER and JASPREET SINGH
____________________

Appeal 2019-005626
Application 14/606,101
Technology Center 2100
____________________

Before ERIC S. FRAHM, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–5, 7, and 10–22, which constitute
all the claims pending in this application. Claims 2, 6, 8, and 9 have been
canceled (see Appeal Br. 25–27, Claims Appendix). We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “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.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as International Business Machines
Corporation (Appeal Br. 2).
Appeal 2019-005626
Application 14/606,101

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STATEMENT OF THE CASE
Disclosed Invention and Exemplary Claim
Appellant’s disclosed invention relates to the display of web page
content, and particularly, “the rendering of the content of web page frames
or portlets on mobile devices” (see Spec. ¶ 1). Elements displayed on a web
page may be too large to fit entirely with an active area of a mobile
computing device, or may be too crowded in the display area to be read or
interacted with easily (see Spec. ¶ 13). Accordingly, Appellant discloses
and claims a method (see claims 1 and 16) of receiving and rendering web
pages on portable computing device, wherein original page display
instructions are modified to render the web page in a more aesthetic manner
(see Spec. ¶ 18). Exemplary claim 1, under appeal, with emphases added to
key portions of the claim at issue, reads as follows:
1. A method of rendering portal pages within an active
display area of a display of a computing device, the method
comprising:
receiving display data that includes original page
display instructions specifying how to display a plurality of
portlets within a common page, wherein the original page
display instructions are configured to cause the computing
device to render the common page within the active display
area before rendering any individual portlet of the plurality
of portlets separately from the common page;
identifying an initial portlet of the plurality of portlets,
by analyzing the original page display instructions, wherein
analyzing the original page display instructions does not
require user input;
automatically producing, based on the analysis of the
original page display instructions, modified page display
instructions by removing portlets, other than the initial
portlet, from the original page display instructions;
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automatically scaling, based upon the modified page
display instructions, the initial portlet to render within the
active display area; and
automatically rendering, based upon the scaled initial
portlet, a web page within the active display area, wherein
the rendered web page includes the scaled initial portlet
without other portlets, and wherein the common page is not
rendered within the active display area prior to the rendered
web page.
Appeal Br. 25, Claims Appendix (emphases added). Remaining
independent claim 16 recites a method having limitations commensurate in
scope with the limitations of claim 1.
The Examiner’s Rejections
(1) The Examiner rejected claims 1, 3–5, 7, and 10–22 under
35 U.S.C. § 101, as being not patent-eligible (Final Act. 2–6). Because the
Examiner has withdrawn the § 101 rejection (see Advisory Act. 2), we will
not address this rejection or Appellant’s arguments directed thereto any
further.
(2) Claims 1, 3–5, 7, 10, 11, 12, and 16–19 are rejected under
35 U.S.C. § 103 as being unpatentable over Whitman et al. (US
2009/0070713 A1; published March 12, 2009) (hereinafter, “Whitman”) in
view of Yamabuchi et al. (US 2007/0234206 A1; published Oct. 4, 2007)
(hereinafter, “Yamabuchi”), and further, in view of Morris (US
2009/0089692 A1; published April 2, 2009). See Final Act. 7–12; Ans. 3–7.
(3) Claims 13–15 and 20–22 are rejected under 35 U.S.C. § 103 as
being unpatentable over Whitman, in view of Yamabuchi, in view of Morris,
and further, in view of Fujioka (US 2010/0211579 A1; published Aug. 19,
2010). See Final Act. 12–13.
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Application 14/606,101

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Appellant’s Contentions
Appellant primarily contends that the Examiner erred in rejecting
claims 1, 3–5, 7, and 10–22 under 35 U.S.C. § 103 based on the failure of
the applied references to teach or suggest the combination of limitations
emphasized above (see Appeal Br. 7–23; Reply Br. 2–19).
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 11–
16) and Reply Brief (Reply Br. 2–9), the following dispositive issue is
presented on appeal:
Has Appellant shown that the Examiner erred in rejecting claims 1, 3–
5, 7, and 10–22 under 35 U.S.C. § 103 because the combination of Whitman,
Yamabuchi and Morris, fails to teach or suggest:
receiving display data that includes original page display
instructions...configured to cause the mobile device to render
the common page on the display before rendering any
individual portlet of the plurality of portlets separately from the
common page;
identifying an initial portlet of the plurality of portlets
by analyzing the original page display instructions, wherein
analyzing the original page display instructions does not
require user input;
automatically producing, based on the analysis of the
original page display instructions, modified page display
instructions ...;
automatically scaling, based upon the modified page
display instructions, the initial portlet ...;
automatically rendering, based upon the scaled initial
portlet, a web page within the active display area, wherein the
rendered web page includes the scaled initial portlet without
other portlets and separately from the common page, and
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wherein the common page is not rendered on the display prior
to the rendered web page.
as recited in claim 1, and as commensurately recited in remaining
independent claim 16?

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 7–
27; Reply Br. 2–19), the Examiner’s rejection (Final Act. 7–13), and the
Examiner’s response (Ans. 3–7) to Appellant’s arguments in the Appeal
Brief. We are persuaded by Appellant’s contentions that the Examiner has
not sufficiently shown that the combination of applied references teaches or
suggests the methods recited in independent claims 1 and 16. Our reasoning
follows.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v.
State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation
marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp.,
814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative
agency, the PTAB “must articulate logical and rational reasons for [its]
decisions” (internal quotation marks and citation omitted)). We will not
resort to speculation or assumptions to cure the deficiencies in the
Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). In this light, and in view of the Examiner’s findings of fact for the
rejection of claim 1 (see Final Act. 7–12; Ans. 3–6), we are persuaded that
the Examiner erred in rejecting claim 1 over the combination of Whitman,
Yamabuchi, and Morris.
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In the Final Rejection, the Examiner finds the combination of
Whitman, Yamabuchi, and Morris renders claim 1 obvious (see Final Act.
7–9). More particularly, the Examiner finds Whitman teaches automatically
producing modified page display instructions having a first transition
instruction by removing portlets, other than the initial portlet, from the
original display instructions, citing paragraphs 23 through 25. See Final Act.
7–8. Further, the Examiner finds Yamabuchi teaches analyzing original
page instructions without requiring user input, citing paragraph 164, and first
transition instructions specifying how the processor circuit will transition
between displaying the initial portlet and at least one other portlet, citing
paragraph 148. Id. at 8–9. The Examiner also finds Morris teaches that a
common page is not rendered on the display prior to the rendered web page,
citing paragraph 26. Id. at 9. Finally, the Examiner finds that the claim
language in claim 1 does not require any ordering of display instructions,
such that the claims merely require the automatic production of modified
display instruction. See Ans. 3–4.
Appellant argues, and we agree, that the combination of references
fails to teach the claim limitations when taken as a whole. See Appeal Br.
11–15. In particular, Appellant argues claim 1 requires (i) receiving original
instructions configured to cause the common page to be rendered first, (ii)
modifying those instructions, and (iii) rendering, based on the modified
instructions, a web page including an individual portlet without first
rendering the common page. Id. at 11. Appellant submits Whitman, at
paragraph 25, teaches maximizing an initial portlet after a user chooses a
portlet from a previously displayed common page. See Appeal Br. 12.
Appellant argues, and we agree, the change from a common page to a
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maximized selected portlet is a second set of instructions to display a second
page, not a modification of the original page display instructions, based on
first transition instruction. Id. In further support of this argument, Appellant
submits that the transition of Whitman through pre-established page display
instructions as part of normal operations initiated by user interaction does
not involve the modification of any page display instructions, but rather,
merely involves using different page display instructions sequentially to
display different things sequentially. Id. at 12. Similarly, Appellant argues,
Yamabuchi teaches displaying a common page first, and then shifting to a
scaled portlet. See Appeal Br. 12–13. Additionally, Appellant argues,
Morris teaches displaying a first widget, and switching to a second widget
upon selection by a user. See Appeal Br. 13–14.
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). In other words, the mere fact that elements can be combined is not,
in itself, a reason to combine them. Rather, an obviousness rejection must
explain the reasoning by which those findings support the Examiner’s
conclusion of obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
F.3d 1324, 1328−30 (Fed. Cir. 2009). In this case, the rejection fails to meet
this required standard.
The Examiner fails to provide how the references can be construed to
render claim 1 obvious in light of the limitations “receiving display data that
includes original page display instructions...configured to cause the mobile
device to render the common page on the display before rendering any
individual portlet of the plurality of portlets separately from the common
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page;” “identifying an initial portlet of the plurality of portlets by analyzing
the original page display instructions, wherein analyzing the original page
display instructions does not require user input;” “automatically producing,
based on the analysis of the original page display instructions, modified page
display instructions;” and “automatically render, based upon the scaled
initial portlet, a web page within the active display area, wherein the
rendered web page includes the scaled initial portlet without other portlets
and separately from the common page, and wherein the common page is not
rendered on the display prior to the rendered web page.” Reading the claim
as a whole, these limitations, taken in combination, require a change in the
ordering of displays. Appellant further argues, and we agree, that the
Examiner’s claim construction ignores the actual requirements of the claim
as a whole, and the rejection set forth in the Final Office Action has not
sufficiently established how the references teach the combination of
elements in the claim. See Appeal Br. 14–15.
As a result, based on the record before us, Appellant has shown the
Examiner erred in rejecting independent claims 1 and 16, and thus claims 3–
5, 7, 10–15, and 17–22 depending respectively therefrom, under 35 U.S.C.
§ 103(a), and we cannot sustain the Examiner’s obviousness rejection of
claims 1, 3–5, 7, and 10–22 over the combination of Whitman, Yamabuchi,
and Morris.2

2 Because we are persuaded of error with regard to the identified issue,
which is dispositive of the rejection of claims 1, 3–5, 7, and 10–22 over
Whitman, Yamabuchi, and Morris, we do not reach the additional issues
raised by Appellant’s arguments.

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CONCLUSION
For all of the reasons above, we hold as follows:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–5, 7,
10–12, 16–
19
103 Whitman,
Yamabuchi, Morris
1, 3–5, 7,
10–12, 16–
19
13–15, 20–
22
103 Whitman,
Yamabuchi,
Morris, Fujioka
13–15, 20–
22
Overall
Outcome
1, 3–5, 7,
10–22

REVERSED