Ex Parte Taylor et al

Board of Patent Appeals and Interferences

May 22, 2007

09981835 (B.P.A.I. May. 22, 2007)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEX S. TAYLOR
and ERCAN E. KURUOGLU
____________

Appeal 2007-0976
Application 09/981,835
Technology Center 2100
____________

Decided: May 22, 2007
____________

Before KENNETH W. HAIRSTON, ANITA PELLMAN GROSS,
and JOHN A. JEFFERY, Administrative Patent Judges.

GROSS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Taylor and Kuruoglu (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner's final rejection of claims 1 through 7, 9 through 16, 18, and
19, which are all of the claims pending in this application.
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Application 09/981,835

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Appellants' invention relates to a system and method for linking
annotated words in a source document to the same words in a target
document and annotating the words in the target document in the same
manner as in the source document. Claim 1 is illustrative of the claimed
invention, and it reads as follows:
1. A system for processing documents stored in a database, the
documents including a source document and a target document, the system
comprising:

a storage device for storing a plurality of words, each of the plurality
of words stored as a result of being annotated in the source document;

a search device for identifying whether any of the words present in the
storage device are present in the target document; and

an annotation device for annotating said words located in the target
document in the same manner that they were annotated in the source
document;

wherein the source document and the target document are pre-selected
from the database as the source document and the target document by a user
of the system before the source document is annotated.

The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Daryl T. Lawton & Ian E. Smith, The Knowledge Weasel Hypermedia
Annotation System, Hypertext '93 Proc., 106-117 (1993). (Lawton)

Morgan N. Price, Gene Golovchinsky, & Bill N. Schilit, Linking By Inking:
Trailblazing in a Paper-like Hypertext, HyperText 98, 30-39 (1998). (Price)

Gene Golovinsky, Morgan N. Price, & Bill N. Schilit, From Reading to
Retrieval: Freeform Ink Annotations as Queries, SIGIR '99, 19-25 (1999).
(Golovinsky)

Appeal 2007-0976
Application 09/981,835

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Claims 1 through 7, 9 through 16, 18, and 19 stand rejected under
35 U.S.C. § 103 as being unpatentable over Price in view of Golovchinski
and Lawton.
We refer to the Examiner's Answer (mailed September 29, 2006) and
to Appellants' Brief (filed June 12, 2006) and Reply Brief (filed October 23,
2006) for the respective arguments.

SUMMARY OF DECISION
As a consequence of our review, we will affirm the obviousness
rejection of claims 1 through 7, 9 through 16, 18, and 19.

OPINION
As a preliminary matter, we note that Appellants argue all of the
claims together. Accordingly, we will treat the claims as a single group,
with claim 1 as representative.
The Examiner admits (Answer 6) that Price fails to disclose expressly
that the source and target documents are pre-selected by the user before the
source document is annotated. The Examiner (Answer 6) asserts that
Lawton teaches pre-selecting a target file and that it would have been
obvious to modify Price with the teachings of Lawton.
Appellants contend (Br. 10-12 and Reply Br. 1-4) that modifying
Price to have the user pre-select the target document before annotating the
source document would render Price unsuitable for its intended purpose and
change the principle of operation. All of Appellants' arguments are directed
to the contention that Price cannot be modified. The only issue before us,
Appeal 2007-0976
Application 09/981,835

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therefore, is whether Price can be modified to have the target document pre-
selected before the source document is annotated.
As summarized in the abstract, Price discloses (Price 30) a reader
annotating images using a pen computer and the computer constructing
hypertext links based on the ink marks. The system "extracts the text near
free-form ink marks, uses these terms to construct queries, executes queries
against a collection of documents, and unobtrusively displays links to related
documents in the margin or as 'further reading lists.'" Thus, as stated by
Appellants (Br. 10), Price describes a system in which target documents are
located from a database based on a search formed from annotations made.
However, Price additionally discloses (Price 36-37), "We would also like to
extend XLibris to support multiple document tasks. Document work often
involves the use of several documents together [1]. In the context of
gathering information, people need to compare sources [35], to take notes
[37], and to write reports [29, 35]." In other words, Price suggests using the
system with two or more known documents and creating links from one to
another to compare the two documents. Accordingly, since Price suggests
using the system with pre-selected documents, Price can be modified to have
the target document pre-selected before the source document is annotated.
Further, the teachings of Lawton and Golovchinski are merely cumulative.
Therefore, we will sustain the obviousness rejection of claims 1 through 7, 9
through 16, 18, and 19 over Price, Lawton, and Golovchinski.

Appeal 2007-0976
Application 09/981,835

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ORDER
The decision of the Examiner rejecting claims 1 through 7, 9 through
16, 18, and 19 under 35 U.S.C. § 103 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).
AFFIRMED

KIS

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