Ex Parte Abe et al

Board of Patent Appeals and Interferences

Jun 29, 2012

10128474 (B.P.A.I. Jun. 29, 2012)

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

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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
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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
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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
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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.”
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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
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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.

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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.)
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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
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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

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