Ex Parte Abe et alDownload PDFBoard of Patent Appeals and InterferencesJun 29, 201210128474 (B.P.A.I. Jun. 29, 2012) Copy Citation 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. 10/128,474 04/23/2002 Mari Abe RSW920020022US1 (043) 7369 46320 7590 06/29/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER NAJJAR, SALEH ART UNIT PAPER NUMBER 2492 MAIL DATE DELIVERY MODE 06/29/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MARI ABE, SCOTT D. DEWITT, MASAHIRO HORI, and BRAD B. TOPOL ____________ Appeal 2010-000029 Application 10/128,4741 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, JAMES R. HUGHES, and ANDREW J. DILLON, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is IBM Corporation. Appeal 2010-000029 Application 10/128,474 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-20, which are all the claims pending in the application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The present invention relates to the field of Web content transcoding and more particularly to generating XPATH expressions. See Spec., 1:5-6. Claim 1 is illustrative: 1. An anchoring method for generating an XPATH expression for a selected node in the transcodable markup comprising the steps of: identifying a stable anchor in the transcodable markup along an axis shared by the selected node; generating an XPATH expression for said stable anchor; computing an offset between said stable anchor and the selected node; and concatenating said offset and said XPATH expression for said stable anchor, said concatenation forming the XPATH expression for the selected node. Appellants appeal the following rejections: 1. Claims 1-20 are rejected under 35 U.S.C. § 102(a) as being anticipated by Abe, ("A Visual approach to Authoring XPath Expressions" pp 1-20); and 2. Claims 1-20 are rejected under 35 U.S.C. § 102(f) because the applicant did not invent the claimed subject matter. Appeal 2010-000029 Application 10/128,474 3 Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims as listed below. See 37 C.F.R. 41.37(c)(1)(vii). ANALYSIS Is Abe Prior Art Under § 102(a) Issue 1: Did the Examiner err in finding that there is a question as to whether the inventive entity is correct? Appellants contend that “the Examiner has failed to set forth any case law that requires that the article be derived from the work of all inventors.” (App. Br. 7.) The Examiner found that “Applicant has declared that the reference ‘A Visual Approach to Authoring XPath Expressions’ is derived from the work of only two out of the four inventors. Therefore, it raises a question as to whether the inventive entity (i.e., Abe, Hori, DeWitt and Topol) are the sole inventors since the claimed subject matter was only derived from Abe and Hori.” (Ans. 3.) We agree. Here, the Examiner appears to reason that because only two inventors are named as authors of the cited publication and Appellants have expressly declared that the subject matter disclosed in the cited publication was derived from the work of only Abe and Hori (see Declaration, 2), the inventive entity of the subject matter disclosed in the Abe publication does not match the inventive entity of the subject application, which includes four Appeal 2010-000029 Application 10/128,474 4 inventors. (See Ans. 3.) Specifically, Appellants averred in the declaration: “the subject matter disclosed in the article entitled ‘A visual Approach to Authoring XPATH Expressions’ is derived from the work of Mari Abe and Masahiro Hori, who are also inventors of the present application. Therefore, the disclosure found in the article entitled ‘A visual Approach to Authoring XPATH Expressions’ is our own invention.” (Declaration, 2.) In other words, the co-authors of the prior art publication, i.e., Abe, are merely a subset of the inventive entity of the present application, as there are two authors and four inventors. Appellants fail to assert that the Abe publication was derived from all of the inventors. As a result, Appellants’ attention is directed to MPEP § 2136.04. Under MPEP § 2136.04, if there is any difference in the inventive entity, the reference is “by another.” “Another” means other than applicants, In re Land, 368 F.2d 866 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are the same. The fact that the application and reference have one or more inventors in common is immaterial. Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was "by another" and thus could be used in a 35 U.S.C. 102(e)/103 rejection of the application.). Here, the declared authors of the cited prior art publication includes only a subset of the inventive entity of the application. Also, Appellants have proffered no evidence which establishes that portions of Abe relied on in the rejection are the work of all four present inventors, nor have Appellants filed a petition to amend the inventorship of Appeal 2010-000029 Application 10/128,474 5 the instant application, limiting the inventorship to the inventors listed on Abe. Therefore, we find that Abe is available as prior art, as Abe is by another. Rejection Under § 102(f) Issue 2: Did the Examiner err in finding that Appellants did not invent the subject matter sought to be patented? The Examiner found that “Applicant has declared that only two of the four inventors have derived the relevant portions of the reference ‘A Visual Approach to Authority XPATH Expressions.’” (Ans. 3.) Under 35 U.S.C. §102(f), A person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented. Where it can be shown that an applicant "derived" an invention from another, a rejection under 35 U.S.C. 102(f) is proper. Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981) ("most, if not all, determinations under section 102(f) involve the question of whether one party derived an invention from another"). While derivation will bar the issuance of a patent to the deriver, a disclosure by the deriver, absent a bar under 35 U.S.C. 102(b), will not bar the issuance of a patent to the party from which the subject matter was derived. In re Costello, 717 F.2d 1346, 1348-49 (Fed. Cir. 1983) ("[a] prior art reference that is not a statutory bar may be overcome by two generally recognized methods": an affidavit under 37 CFR 1.131, or an affidavit under 37 CFR 1.132 "showing that the relevant disclosure is a description of the applicant's own work"); In re Facius, 408 F.2d 1396, 1407 (CCPA 1969) (subject matter incorporated into a patent that was brought to the attention of Appeal 2010-000029 Application 10/128,474 6 the patentee by applicant, and hence derived by the patentee from the applicant, is available for use against applicant unless applicant had actually invented the subject matter placed in the patent). Where there is a published article identifying the authorship ( MPEP § 715.01(c)) or a patent identifying the inventorship ( MPEP § 715.01(a)) that discloses subject matter being claimed in an application undergoing examination, the designation of authorship or inventorship does not raise a presumption of inventorship with respect to the subject matter disclosed in the article or with respect to the subject matter disclosed but not claimed in the patent so as to justify a rejection under 35 U.S.C. 102(f). However, it is incumbent upon the inventors named in the application, in reply to an inquiry regarding the appropriate inventorship under subsection (f), or to rebut a rejection under 35 U.S.C. 102(a) or (e), to provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct in that the reference discloses subject matter invented by the applicant rather than derived from the author or patentee notwithstanding the authorship of the article or the inventorship of the patent. In re Katz, 687 F.2d 450, 455 (CCPA 1982) (inquiry is appropriate to clarify any ambiguity created by an article regarding inventorship, and it is then incumbent upon the applicant to provide "a satisfactory showing that would lead to a reasonable conclusion that [applicant] is the inventor" of the subject matter disclosed in the article and claimed in the application). Here, Appellants “declare that the subject matter disclosed . . . is derived from the work of Mari Abe and Masahiro Hori, who are also inventors . . . the disclosure found in the article . . . is our own invention.” Appeal 2010-000029 Application 10/128,474 7 Given that the declaration is signed by all four inventors named in the application, we view the phrase “is our own invention” as implicating all four inventors. Therefore, we find that Appellants have provided a satisfactory showing that all four Appellants are the inventors of the subject matter disclosed in the article and claimed in the application, notwithstanding the authorship of the publication. Rejection under 35 U.S.C. §102(a) Claims 1, 4, 5, 7, 10, 11, 14, 15, 17, and 20 Regarding the above-noted claims, Appellants have failed to present any arguments in the principle Brief to rebut the Examiner’s findings regarding any of the independent claims (e.g., claims 1, 7, 11, 17) and dependent claims 4, 5, 10, 14, 15, and 20. (See Final Office Action, 2- 4.) The Board reviews the particular findings contested by an appellant anew in light of all the evidence and arguments on that issue. Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Filing a Board Appeal does not, unto itself, entitle an appellant to a de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. Id. (citing, inter alia, Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)). Here, any arguments regarding claims 1, 4, 5, 7, 10, 11, 14, 15, 17, and 20 are considered waived. Accordingly, we summarily sustain the Appeal 2010-000029 Application 10/128,474 8 rejection of claims1, 4, 5, 7, 10, 11, 14, 15, 17, and 20. See Manual of Patent Examining Procedure (MPEP) § 1205.02, 8th ed., Rev. 8, July 2010 (“If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board.”). Claims 2, 8, 12, and 18 Issue 3: Did the Examiner err in finding that Abe discloses content or trait which has been pre-determined to be unlikely to change over time, as claimed? The Examiner found that “Abe has made it clear that the content of an anchor expression is unlikely to change because the anchor is supposed to be stable, and doesn’t often change due to updates of the document.” (Ans. 4.) Appellants contend that “the Examiner’s cited passage describes that an element can be located reliably. Being able to locate an element reliably is in no manner comparable to have content being predetermined to be unlikely to change over time.” (App. Br. 12.) We agree with Appellants. Here, the Examiner merely directs our attention to a location that may be stable, as opposed to content or a trait that may be stable, as required by representative claims 2 and 8. We agree with Appellants that the location of content is distinguishable from the content or the trait itself. For at least this reason, we reverse the Examiner’s rejection of claims 2, 8, 12, and 18. Appeal 2010-000029 Application 10/128,474 9 Claims 3, 9, 13, and 19 Issue 4: Did the Examiner err in finding that Abe discloses a unique trait, as claimed? Appellants contend that “[t]he Examiner’s cited passage is completely silent as to the claimed ‘unique trait.’” (App. Br. 13.) The Examiner found that “the node with the comment [is] unique from the node without a comment.” (Ans. 4.) Here, Appellants argue that the Examiner has failed to establish that the comments are in fact unique. The ordinary and usual meaning of the term “unique” is “being without like or equal.” Webster’s Ninth New Collegiate Dictionary, p.1290 (1990). The Examiner reasoned that a “comment” for one node would be unique because it would not be the same for another. In other words, comments for a node would be indicative of that particular node and no other. We find that the Examiner’s finding and conclusions reasonable in light of varying node characteristics. For at least the above-noted reasons, we affirm the Examiner’s rejection of claims 3, 9, 13, and 19. Claims 6 and 16 Issue 5: Did the Examiner err in finding that Abe discloses a test node and an ordinal predicate, as claimed? Appellants contend that “[t]he Examiner’s cited passage is completely silent as to the claimed ‘test node’ and the claimed ‘ordinal predicate defining a number of steps.’” (App. Br. 14.) Appeal 2010-000029 Application 10/128,474 10 The Examiner found support in section 3.2.1 of Abe to show the “test node” and “predicate expression.” (Ans. 4-5.) We agree with the Examiner. Contrary to Appellants contentions, Abe expressly talks about a “node test” and a “predicate expression” (see Abe, 9: section 3.2.1), and Appellants have failed to present substantive arguments and supporting evidence persuasive of Examiner error regarding the aforementioned disputed limitation. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)(“we hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Based on the record before us, we find no error in the Examiner’s obviousness rejection of representative claim 6 essentially for the reasons indicated by the Examiner. The recited “node test” and “ordinal predicate” is strikingly similar (at least conceptually) to Abe’s teachings, and the Examiner’s reliance on this functionality is therefore persuasive. We decline to examine the claims sua sponte, looking for distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). See also Ex parte Belinne, No. 2009- 004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative). For at least the above-noted reasons, we affirm the Examiner’s rejection of claims 6 and 16. Appeal 2010-000029 Application 10/128,474 11 DECISION We reverse the Examiner’s § 102(f) rejection of claims 1-20 and § 102(a) rejection of claims 2, 8, 12, and 18. We affirm the Examiner’s § 102(a) rejection of claims 1, 3-7, 9-11, 13-17, 19, and 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) . AFFIRMED-IN-PART pgc Copy with citationCopy as parenthetical citation