Ex Parte Chien

Board of Patent Appeals and Interferences

Feb 20, 2009

10160695 (B.P.A.I. Feb. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HERMAN CHIEN
____________

Appeal 2009-0359
Application 10/160,695
Technology Center 3600
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Decided:1February 23, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Herman Chien (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-39. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.2

THE INVENTION
The invention is related to providing copyright protection to an
electronic file to be transferred to a user on a device over a network.
Claim 3, reproduced below, is illustrative of the subject matter on
appeal.
3. A method of providing copyright protection to at least one
electronic file to be transferred to a user on a device over a network,
comprising:
via the network, receiving a request for a displayable file from a
user;
determining a level of copyright protection for at least one of
the electronic files;
creating the displayable file for display to the user, the
displayable file including one or more links to one or more electronic
files; and
embedding an indication of the level of copyright protection in
at least one of the links to the one or more electronic files.

2 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Sep. 19, 2006) and the Examiner’s Answer (“Answer,” mailed Dec. 22,
2006).

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Meyer
Nakajima
Kobata
US 6,829,368 B2
US 2001/0016483 A1
US 2002/0082997 A1
Dec. 7, 2004
Aug. 23, 2001
Jun. 27, 2002

The following rejections are before us for review:
1. Claims 1-17 and 21-39 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Meyer and Nakajima.3
2. Claims 18-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Meyer, Nakajima, and Kobata.

ISSUES OF LAW
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-17 and 21-39 under 35 U.S.C. §103(a)
as being unpatentable over Meyer and Nakajima; and, claims 18-20 under 35
U.S.C. §103(a) as being unpatentable over Meyer, Nakajima, and Kobata.
The issue turns on the obviousness of embedding an indication of the level
of copyright protection in a link.

3 The Examiner’s statement of this rejection inadvertently left out claim 15.
The Final Rejection addressed the subject matter of claim 15 and the
Appellant recognized this by including claim 15 in the argument section of
the brief.
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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 3 is drawn to a method of providing copyright protection to an
electronic file to be transferred over a network.
2. The method of claim 3 involves the use of displayable files that
include one or more links to an electronic file.
3. Claim 3 calls for “embedding an indication of the level of copyright
protection in at least one of the links to the one or more electronic
files.”
4. The Specification does not provide a definition for “embedding”.
5. The ordinary and customary meaning of “embed” is “to set or fix
firmly in a surrounding mass.” (See Webster’s New World Dictionary
442 (3rd Ed. 1988.)(Entry 2. for “embed.”)
6. The Specification describes, with reference to block 210 of Figure 2,
an embodiment of the process of “embedding [ ] copyright protection
in a link to an electronic file” ([0034]) where the indication of the
level of copyright protection “could be any text used to indicate the
level of copyright protection.” Specification [0036].
7. The Specification provides this example of an HTML link with the
indication of the level of copyright protection embedded in the link:
Click to get a picture that can’t be copied
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(see Specification [0036]), the text in the link that is used to indicate
the level of copyright protection is “NAME=NOCOPY”:
The scope and content of the prior art
8. Meyer relates to systems and processes for linking audio and other
media objects to metadata.
9. Meyer discloses the transferring of electronic files to a user on a
device over a network. E.g., col. 16, ll. 42-50.
10. Meyer discloses displayable links to electronic files. In describing
dynamically linked data, Meyer indicates that the “data can also be
displayed in the form of HTML links, which, when activated, cause
the download of other data or initiate actions, such as playing
streaming content from a server.” Col., 14, ll. 7-10.
11. Meyer discloses identifiers which may be embedded in, for example,
watermarks in a media signal. See col. 18, ll. 10-11.
12. The identifiers “may also include usage rights that dictate how the
user ... may retrieve a copy from [a library of media titles] for
playback. For example, the watermark may include a number that
represents the number of times the user can access the content for
playback.” Meyer, col. 18, ll. 23-27.
13. Nakajima relates to a ringing tone delivery system. See Abstract.
14. The Examiner relies on Nakajima for its disclosure of a system to
deliver ringing tone data to cellular phones. See [0029]-[0032].
Answer 4.
15. Kobata relates to controlling and managing digital assets.
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16. The Examiner relies on Kobata for its disclosure of downloading
digital content such as audio, text graphics, and video via the Internet.
See [0006]. Answer 5.
Any differences between the claimed subject matter and the prior art
17. The prior art does not explicitly disclose embedding text in a link.
The level of skill in the art
18. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of providing copyright protection to
an electronic file. We will therefore consider the cited prior art as
representative of the level of ordinary skill in the art. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of
specific findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate level
and a need for testimony is not shown’”) (quoting Litton Indus.
Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
1985)).
19. Those of ordinary skill in the art know that authors can insert
hyperlinks in electronic documents delivered over the web.
20. Those of ordinary skill in the art know that a hyperlink in electronic
document displayed on a Web browser functions give the document
the capability to display another electronic document when it is
clicked.
21. Those of ordinary skill in the art know that a hyperlink can have
various appearances in an electronic document, such as text or a
graphic.
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22. Those of ordinary skill in the art know that a hyperlink functions to
link to another electronic document because of code situated behind
the appearance of the hyperlink that allows a Web browser to
understand that a linked document should be opened when the
hyperlink is clicked.
23. Those of ordinary skill in the art know that the code situated behind
the appearance of the hyperlink is governed by HyperText Markup
Language, or HTML.
24. Those of ordinary skill in the art know that, according to the rules of
HTML, the code for creating a hyperlink comprises an anchor
element, with start and end tags, and content that serves to display an
appearance of the hyperlink in the Web browser corresponding to the
content which, when clicked, opens the electronic document identified
in the anchor element.
Secondary considerations
25. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). “[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation. As
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this court has discussed, this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
Further, as applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee. Am. Acad., 367 F.3d at 1364.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Limitations appearing in the
specification but not recited in the claim are not read into the claim. E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court
in Graham further noted that evidence of secondary considerations “might
be utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 17-18.

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ANALYSIS
The rejection of claims 1-17 and 21-39 under §103(a) as being
unpatentable over Meyer and Nakajima.
The Appellant argued claims 1-17 and 21-39 as a group (Br. 8-10).
We select claim 3 (see supra) as the representative claim for this group, and
the remaining claims 1, 2, 4-17, and 21-39 stand or fall with claim 3. 37
C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant argued only that the cited references do not disclose
embedding an indication of a level of copyright protection in a link to an
electronic file.
The broadest reasonable construction of the claim step “embedding an
indication of the level of copyright protection in at least one of the links to
the one or more electronic files” that is consistent with the specification as it
would be interpreted by one of ordinary skill in the art is that it encompasses
inserting text about a level of copyright protection in the coding of an
HTML link. See FF 1-7.
The construction of hyperlinks per se is well known to those of
ordinary skill in the art. See FF 19-24. Those of ordinary skill in the art
know that text can be inserted in the HTML coding of a hyperlink and that
text inserted as the content element in the coding of the hyperlink may
appear when the hyperlink is displayed on the Web browser. FF 24. There is
a “need for caution in granting a patent based on the combination of
elements found in the prior art,” KSR at 1739. In the broadest sense, the
claimed subject matter appears to be the combination of HTML coding of a
hyperlink and text which together do no more than yield predictable results.
The combination of familiar elements according to known methods is likely
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to be obvious when it does no more than yield predictable results.” KSR at
1739. In that regard, there is insufficient evidence on record of secondary
considerations of non-obviousness. FF 25.
We are cognizant of the fact that the claim does not call for inserting
any text in a hyperlink but for “embedding an indication of the level of
copyright protection.” In that regard, Meyer discloses hyperlinks (FF 10)
and information indicative of a level of copyright protection (FF 12). These
disclosures are not in dispute. Meyer evidences that links and indications of
a level of copyright protection are known in the art. The question is whether,
given this knowledge, it would have been obvious to insert text indicative of
a level of copyright protection into the HTML coding of a hyperlink.
According to the Specification, text can be used to convey an
indication of the level of copyright protection. FF 6. As already explained,
the insertion of text in the coding of a hyperlink is known if the text is
inserted as the content element of the HTML coding that creates the
hyperlink, thereby providing the hyperlink with the appearance of the text
when it is displayed in the Web browser. FF 24. The information that is
conveyed by the text does not affect the hyperlink’s function to link to
another electronic document. Accordingly, an indication of the level of
copyright protection conveyed by text that is inserted in the hyperlink is
merely descriptive in character and is not functionally related to any
structural aspect of the hyperlink or any another element of the claimed
subject matter. Also, there is insufficient evidence on record to show that
the structure of the link is itself functionally affected by inserting text,
whether or not it conveys information about an indication of the level of
copyright protection. Accordingly, it is reasonable therefore to characterize
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the indication of the level of copyright protection that is recited in the claim
as descriptive and not functionally related to any structure of the claimed
invention. As such, it is properly considered nonfunctional descriptive
material. See Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005)
(informative) (“Common situations involving nonfunctional descriptive
material are: - a computer-readable storage medium that differs from the
prior art solely with respect to nonfunctional descriptive material, such as
music or a literary work, encoded on the medium, - a computer that differs
from the prior art solely with respect to nonfunctional descriptive material
that cannot alter how the machine functions (i.e., the descriptive material
does not reconfigure the computer), or - a process that differs from the prior
art only with respect to nonfunctional descriptive material that cannot alter
how the process steps are to be performed to achieve the utility of the
invention. Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to be well
within the level of ordinary skill in the art at the time the invention was
made. The difference between the prior art and the claimed invention is
simply a rearrangement of nonfunctional descriptive material.).” Patentable
weight need not be given to nonfunctional descriptive material absent a new
and unobvious functional relationship between the descriptive material and a
substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994); In re
Ngai, 367 F.3d at 1338. See also Ex parte Mathias, 84 USPQ2d 1276
(BPAI 2005) (nonprecedential) (Federal Circuit Appeal No. 2006-1103;
affirmed without written opinion Aug. 17, 2006). Here there is insufficient
evidence of a new and unobvious functional relationship between the
descriptive material (i.e., an indication of the level of copyright protection)
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and a substrate (whether it be the hyperlink’s structure or another element of
the claimed subject matter). Accordingly, the difference between the prior
art and the claimed invention is simply a rearrangement of nonfunctional
descriptive material. Nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious. In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability).
The Appellant’s challenge of the rejection rests solely on the
argument that it would have been unobvious to embed an indication of a
level of copyright protection in a link. Since we find that the recited
indication of a level of copyright protection is patentably inconsequential
nonfunctional descriptive material, we are not persuaded that the Appellant
has shown error in the rejection.

The rejection of claims 18-20 under §103(a) as being unpatentable over
Meyer and Nakajima, and Kobata.
The Appellant has argued against the rejection of dependent claims
18-20 for the same reason used to challenge the rejection of claims 1-17 and
21-39. Br. 11-12. Since we were not persuaded by the Appellant’s argument
challenging the rejection of 1-17 and 21-39, we reach the same conclusion
with respect to the challenge of the rejection of claims 18-20.

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CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1-17 and 21-39 under 35 U.S.C. §103(a) as being
unpatentable over Meyer and Nakajima; and, claims 18-20 under 35 U.S.C.
§103(a) as being unpatentable over Meyer, Nakajima, and Kobata.

DECISION
The decision of the Examiner to reject claims 1-39 is affirmed.
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) (2007).

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AFFIRMED

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