Ex Parte Story et al

Board of Patent Appeals and Interferences

Jul 11, 2012

08901069 (B.P.A.I. Jul. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT DAVID STORY, ADAM B. FEDER,
ED BURNS, and RICHARD D. LEE
____________________

Appeal 2010-007439
Application 08/901,069
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-35, 37-43, and 45-73. Claims 36, 44, and 74-78 have been
canceled. (App. Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-In-Part.
Invention
Appellants’ invention relates to the field of publishing a hypermedia
document. (Spec. 1).
Claim 1 is illustrative:
1. A computer-implemented method for preparing
hypermedia documents for publishing, the method comprising:

generating an unpublished hypermedia document at a computer
system in a non-web-publishable format;

recursively parsing the unpublished hypermedia document to
identify at least one direct linked document and at least one nested
linked document;

remapping addresses for the unpublished hypermedia
document, the direct linked document and the nested linked
document, wherein cross-references between the unpublished
hypermedia document, the direct linked document and the nested link
document are represented with relative remapped addresses;

converting at least a version of the unpublished hypermedia
document from the non-web- publishable format to a web-publishable
format at the computer system;

storing a package of documents comprising the version of the
unpublished hypermedia document, versions of the direct linked
document, and the nested linked document in a directory at their
remapped addresses; and

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transmitting the package of documents from the computer
system to a web server to publish the unpublished hypermedia
document to the World Wide Web.
(disputed limitations emphasized)

REJECTIONS
1. Claims 1, 3-21, 23, 27-35, 37-40, 42, 43, 45, 47, 48, and 51-73 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by GETTING
RESULTS WITH MICROSOFT OFFICE 97, Microsoft, 441-463 (1997)
(“Microsoft Office”);
2. Claims 2 and 41 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Microsoft Office in view of FOREFRONT
WEBWHACKER Version 3.0, Windows 95/NT, chapters 1-4 (1996)
(“WebWhacker”);
3. Claims 22, 24, and 46 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Microsoft Office in view of U.S. Patent No.
5,884,014 (filed May 23, 1996) to Huttenlocher et al
(“Huttenlocher”);
4. Claims 25, 26, 49, and 50 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Microsoft Office in view of U.S. Patent No.
5,983,351(filed Oct. 16, 1997) to Glogau (“Glogau”).

Claim Grouping
Based on Appellants’ arguments (App. Br. 19 et seq.), we decide the
appeal on the basis of claims 1 and 9. See 37 C.F.R. § 41.37(c)(1)(vii).

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Contentions - Representative Claim 1
Regarding representative claim 1, Appellants contend that “Microsoft
Office fails to disclose, teach, or suggest ‘recursively parsing the
unpublished hypermedia document to identify at least one direct linked
document and at least one nested linked document,’ as is required by
Claim 1.” (App. Br. 18). In particular, Appellants contend:
The Advisory Action points to “the conversion of a series
of slide documents” of the passage at 455 of Microsoft Office to
disclose these elements. See Advisory Action, Continuation
Sheet. This, however, is incorrect. For example, the passage of
Microsoft Office discloses absolutely nothing about
identification, let alone how the identification occurs.
Instead, the passage merely discloses that:

. . . each presentation slide is turned into an
individual HTML page, existing hyperlinks are
converted to HTML format

See Microsoft Office, Page 455 (emphasis added). That is,
although the passage discloses the conversion of slides and
hyperlinks, it fails to disclose anything about how such slides
and hyperlinks are identified. Therefore, since it fails to
disclose how the slides and hyperlinks are identified, it clearly
fails to disclose that they are identified by “parsing,” as is
required by Claim 1. In fact, Appellants respectfully note that
“parsing” is never even mentioned in Microsoft Office.
(App. Br. 18-19).
The Examiner disagrees:
The Examiner disagrees with the Appellant’s arguments
that Office fails to teach the recursively parsing of an
unpublished hypermedia document to identify a directly linked,
and a nested linked document (page 18). Office teaches taking
various hyperlinked slide documents (such as hyperlinks to the
next, previous and last viewed slide documents) and converting
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them to an html version to be stored in a new directory, and to
be published on the Internet (pages 454- 455). In other words,
the first slide document, and all the subsequent slides-directly,
and nested linked document-- are parsed and the hyperlinks to
the various slides are converted and remapped to new addresses
associated with the converted web documents.
The Appellants] contend] that Office discloses
absolutely nothing about identification, let alone how the
identification occurs (page 18, last parag.). According to the
teachings found in Office, each slide along with their contents,
and hyperlinks are converted to html format (page 455). Put in
other words, the document is analyzed, hyperlinks are
identified and then converted to the html format. Office
doesn’t merely convert the slides, but it also singles out the
hyperlinks contained within the slides, and converts them to
html. These hyperlinks are not just ignored. They are
retrieved, and transformed from the Office format to html.
(Ans. 6-7).

Issue - Claim 1
Issue: Under § 102, did the Examiner err in finding that the cited
Microsoft Office reference discloses:
recursively parsing the unpublished hypermedia document to
identify at least one direct linked document and at least one nested
linked document,

within the meaning of representative claim 1(emphasis added)?
Appellants’ contention that “‘parsing’ is never even mentioned in
Microsoft Office” (App. Br. 19) fails to demonstrate error in the Examiner’s
finding of anticipation. Anticipation is not an “ipsissimis verbis” test. In re
Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U. S. Int’l
Trade Comm’n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). “An
anticipatory reference . . . need not duplicate word for word what is in the
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claims.” Standard Havens Prods., Inc., v. Gencor Indus., Inc., 953 F.2d
1360, 1369 (Fed. Cir. 1991).
Here, we observe that Microsoft Office discloses that PowerPoint
presentations (slides) are converted to HTML format where existing
hyperlinks are converted to HTML format (pp. 454-455).
Appellants’ Specification broadly describes that “[e]ach link within a
hypermedia document corresponds to a URL address associated with the
linked content.” (Spec. 2, ll. 29-30). Appellants further describe “nested
links” as being “at least two jumps removed from the referencing
document.” (Spec. 4, ll. 7-8).
Microsoft Office discloses, inter alia, that “[w]hen your presentation
is converted to HTML format, each presentation slide is turned into an
individual HTML page, [and] existing hyperlinks are converted to HTML
format, and actions that you assigned by using the Action Settings
command (Slide Show menu) are translated into their HTML counterparts.”
(Microsoft Office, 455, emphasis added).
Thus, we find Microsoft Office describes “n” number of presentation
slides (represented as individual HTML pages) that are successively linked
for Web viewing. (See Id.). Since presentation slides have a particular
default order or sequence for viewing, we find a transitive relationship (i.e.,
a nested link at least two jumps removed from the referencing slide) between
e.g., slide 1 and slide 3, because presentation slides 1 and 3 are linked in an
ordered set through slide 2.
Therefore, we find the weight of the evidence supports the Examiner’s
finding that “the first slide document, and all the subsequent slides-directly,
and nested linked document[s]-- are parsed and the hyperlinks to the various
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slides are converted and remapped to new addresses associated with the
converted web documents.” (Ans. 6).
We agree with the Examiner that all such direct and nested links must
be (i.e., are inherently) recursively1 parsed and identified as necessary for
the full HTML conversion to occur. Thus, on this record, we are not
persuaded of error regarding the Examiner’s finding of anticipation.
Accordingly, for essentially the same reasons articulated by the
Examiner in the Answer (Ans. 6-7), as discussed above, we sustain the
anticipation rejection of representative claim 1 over Microsoft Office.
Claims 3-8, 10-21, 23, 27-35, 37-40, 42, 43, 45, 47, 48, and 51-73 (not
argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Dependent Claim 9
Regarding claim 9, Appellants contend that “Microsoft Office fails to
disclose, teach, or suggest ‘storing the versions of the documents
comprises storing the versions in a hierarchical organization within the
directory,’ as is required by Claim 9.” (App. Br. 19).
In support, Appellants present the following arguments:
(1) Microsoft Office “fails to disclose any type of organization in
the folder, let alone a hierarchical organization” within the directory of
claim 9 (App. Br. 20), and (2) the Examiner relies on the same exact passage
in the Final Office Action to disclose storing the versions in a flat
organization, in the rejection of claim 10 (id.). Appellants also contend:

1 We broadly but reasonably construe “recursively parsing” as iteratively
identifying all links and associated documents or document portions
referenced within a hypermedia document until a terminating event occurs
(i.e., no more links are found).
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[O]ne of ordinary skill in the art would clearly understand that
the mere listing of files “in a hierarchical manner from older to
most recently converted (such as 001, 002, and 003 ... )” fails to
disclose “storing the versions in a hierarchical organization
within the directory” of Claim 9 (emphasis added)-especially in
light of the passage at Page 13, Lines 6-22 of Appellants'
Specification.
(App. Br. 21).

The Examiner disagrees:
[B]ecause the converted slides are placed in a document folder
(page 455) [See Microsoft Office]. The slides, along with all
the necessary hyperlinked content files (where a parent slide
document crossreferences or links to a child slide-
hierarchical organization) are stored in the folder. In
addition to the hierarchical nature of hypermedia, the slides
by definition have a sequential hierarchy starting with a
first slide, second, third, etc.
(Ans. 7).
As previously discussed, Microsoft Office discloses: “[w]hen your
presentation is converted to HTML format, each presentation slide is turned
into an individual HTML page, [and] existing hyperlinks are converted to
HTML format, and actions that you assigned by using the Action Settings
command (Slide Show menu) are translated into their HTML counterparts.”
(Microsoft Office, 455.)
We agree with the Examiner that hypermedia is hierarchical in nature,
because of the link references contained within a hypermedia document and
between plural hypermedia documents. However, on this record, we cannot
say without engaging in speculation that the cited portions of Microsoft
Office expressly or inherently disclose “wherein storing the versions of the
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documents comprises storing the versions in a hierarchical organization
within the directory,” within the meaning of claim 9 (emphasis added).
We decline to engage in speculation. We are of the view that the
Examiner has not fully developed the record to show express or inherent
anticipation regarding the disputed limitations of claim 9. Therefore, for
essentially the same reasons argued by Appellants (App. Br. 21), we reverse
the Examiner’s anticipation rejection of dependent claim 9.

Remaining rejections under §103
Dependent claims 2, 22, 24-26, 41, 46, 49, and 50
Appellants contend that these dependent claims are allowable for the
same reasons discussed above with regard to claim 1. (App. Br. 21-23).
Appellants also contend that the cited respective secondary references fail to
cure the deficiencies of Microsoft Office. (Id.). However, because we did
not find Appellants’ arguments persuasive regarding independent claim 1,
we sustain the Examiner’s rejections under §103 for dependent claims 2, 22,
24-26, 41, 46, 49, and 50, for the same reasons discussed above regarding
independent claim 1.

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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3-8, 10-21, 23,
27-35, 37-40, 42, 43, 45, 47, 48, and 51-73 under § 102.
We reverse the Examiner’s decision rejecting claim 9 under § 102.
We affirm the Examiner’s decision rejecting claims 2, 22, 24-26, 41,
46, 49, and 50 under § 103.
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.
§ 41.50(f).

ORDER
AFFIRMED-IN-PART

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