Geoffrey Peters

Patent Trials and Appeals Board

Feb 1, 2021

2019006261 (P.T.A.B. Feb. 1, 2021)

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.
13/926,889 06/25/2013 Geoffrey Neil Peters 34874-981F01US 3498
64280 7590 02/01/2021
Mintz Levin/SAP
Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
EXAMINER
MINCEY, JERMAINE A
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
02/01/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEOFFREY NEIL PETERS
_____________

Appeal 2019-006261
Application 13/926,889
Technology Center 2100
____________

Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and
MICHAEL T. CYGAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1, 3, 4, 6–14, 16–19, and 22. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is SAP SE. See Appeal Br. 2.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “a content
management system with chained document discovery techniques.” (Spec.,
¶ 1).

Representative Independent Claim 1
1. A computer-implemented method comprising:

displaying, by a content management system including a display
presenting via a graphical user interface, a listing of a first plurality of
documents managed by the content management system and representing
favorites of a first user, the first plurality of documents comprising
documents authored by a plurality of users including a second user;

receiving, by the content management system and via the graphical
user interface, a first selection of a first document from the first plurality of
documents;

determining, by the content management system and based on the first
selection, that the second user authored or edited the selected document;

determining, by the content management system and based on the first
selection, a second plurality of documents representing favorites of the
second user;

receiving, by the content management system and via the graphical
user interface, a second selection of a second document from the second
plurality of documents;

2 We herein refer to the Non-Final Office Action, mailed (Mar. 8, 2018)
(“Non-Final Act.”); Appeal Brief, filed (May 13, 2019) (“Appeal Br.”); the
Examiner’s Answer, mailed (June 24, 2019) (“Ans.”); and the Reply Brief,
filed (Aug. 23, 2019) (“Reply Br.”).
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determining, by the content management system and based on the
second selection, that a third user authored or edited the second document;

determining, by the content management system and based on the
third selection, a third plurality of documents representing favorites of the
third user; and

wherein the displaying further comprises displaying, by the content
management system and via the graphical user interface, a document chain
of favorites comprising the first plurality of documents, the second plurality
of documents, and the third plurality of documents, the first plurality of
documents presented in a first view of the graphical user interface and
including only favorites of the first user, the second plurality of documents
presented in a second view of the graphical user interface and including only
favorites of the second user, the third plurality of documents presented in a
third view of the graphical user interface and including only favorites of
the third user, wherein traversal of the document chain is enabled by the first
selection in the first view and the second selection in the second view, the
first selection triggering the second view, and the second selection
triggering the third view.

Appeal Br. 28, 29, Claims App., disputed limitation emphasized.
Rejections3
Claims 1, 12, 13, 14, 15, and 22 are rejected under 35 U.S.C. § 103 as
being unpatentable over Heix et al. (US 2009/0024648 A1; published Jan.
22, 2009) (herein as ‘Heix’) and further in view of Gorzela (US
2007/0239674 A1; published Oct. 11, 2007) (herein as ‘Gorzela’).
Claims 3, 13, and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Heix, Gorzela, and further in view of Bera (US
2004/0107224 A1; published June 3, 2004) (herein as ‘Bera’).

3 The Examiner has withdrawn the § 101 rejections of claims 1, 3, 4, 6–14,
16–19 and 22. Ans. 3.
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Claims 4, 6, 7, 9, 10, 17, 18, and 19 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Heix, Gorzela, and further in view of
Pedersen et al. (US 2007/0130145 A1; published June 7, 2007) (herein as
‘Pedersen’).
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over
Heix, Gorzela, and further in view of Chandra (US 2014/0149378 A1;
published May 29, 2014) (herein as ‘Chandra’).
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
Heix, Gorzela, and further in view of Bae et al. (US 2010/0100524 A1;
published Apr. 22, 2010) (herein as ‘Bae’).

Issue on Appeal
Did the Examiner err in rejecting claims 1, 3, 4, 6–14, 16–19, and 22
as being obvious?

ANALYSIS
Based on Appellant’s arguments in the Briefs, the principal and
dispositive issue of whether the Examiner erred in rejecting exemplary claim
1 turns on whether the combination of Heix and Gorzela teaches the claim
limitations
displaying . . . a document chain of favorites comprising the first
plurality of documents, the second plurality of documents, and the
third plurality of documents, the first plurality of documents presented
in a first view of the graphical user interface and including only
favorites of the first user, the second plurality of documents presented
in a second view of the graphical user interface and including only
favorites of the second user, the third plurality of documents presented
in a third view of the graphical user interface and including only
favorites of the third user, wherein traversal of the document chain is
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enabled by the first selection in the first view and the second selection
in the second view, the first selection triggering the second view, and
the second selection triggering the third view.

(hereinafter “the disputed trigger limitation”). Appeal Br. 21–23; Reply Br.
4–7. Independent claims 14 and 22 recite similar subject matter.4
We adopt the findings of facts made by the Examiner in the Non-Final
Office Action and Examiner’s Answer as our own. We concur with the
decision reached by the Examiner in the Examiner’s Answer for the specific
reasons discussed below. We have considered Appellant’s Reply Brief, but
find it unpersuasive to rebut the Examiner’s responses. We highlight the
following for emphasis.
Appellant contends Gorzela does not disclose the disputed trigger
limitation. Appeal Br. 21–23. In particular, Appellant contends:
Gorzela’s display of blogrolls belonging to different users is not
analogous to displaying the chain of digital documents through a
series of views in which selecting one of a first plurality of digital
documents favorited by a first user and displayed in a first view of a
graphical user interface triggers a second view displaying a second
plurality of digital documents favorited by a second user who
authored or edited the selected digital document.

Appeal Br. 22 (underlining omitted).

The Examiner has identified the relevant portions of Gorzela and has
provided sufficient explanation with corresponding citations to various parts
of the reference for disclosing the disputed trigger limitation (Ans. 4–7). In

4 Appellant did not provide separate arguments with respect to the
patentability of claims 3, 4, 6–13, and 16–19.
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particular, the Examiner determines that Gorzela’s blogroll meets the
disputed trigger limitation (Ans. 7).
In particular, the Examiner finds
a user can select for example Mel's blog on Tom's blogroll
list and thus be presented with Mel's Weblog. Mel’s web log will be
similar to Fig. 2 except it will contain the title “Mel's Blog” also
include a link to other blogs (107), that will list Mel’s blogroll author
blogs. A user can select an third author from Mel’s blogroll and thus
be presented with the third author’s weblog which will be similar to
Fig. 2, except it will contain the title “Third Author’s Blog” and also
include a link to other blogs (107), that will list the third author’s
blogroll author blogs.
So a user can display different plurality of digital documents by
continually selecting a different author from each selected’s author’
blogroll. The authors on the blogroll are seen as favorites of an author
(ex. Tom) because the author (ex. Tom) of the weblog decided to
place the different author within the blog roll, hence the name “Tom’s
blogroll”.
Selecting an author from a blog will cause the selected author’s
weblog to be displayed with the selected author’s blogroll list.
Therefore once a first author from the blogroll list is selected the
displayed content will be the selected first author’s blogroll which is
seen as favorites of the selected author. The user is then able to select
from that first displayed author’s blogroll to display a second content
that is associated with the second author. The user is then able to
select a third author from the second author’s blog roll to display
third author content that contain a list of third author’s blogroll
authors.

Ans. 6, 7 (emphases added).

In other words, Gorzela teaches or suggests the disputed trigger
limitation with its blogroll selection features. Ans. 4–7 (Citing Gorzela
¶¶ 38, 39, and 53; Figures 2, 5).
As an initial matter of claim construction, we turn to the Specification
for context, and find no explicit definition for the claim term “triggering.”
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Claim 1 (emphasis added). Given the absence of a limiting definition in the
claim or Specification regarding the disputed trigger limitation, on this
record, we are not persuaded the Examiner’s reading is overly broad,
unreasonable, or inconsistent with the Specification.5 Based on our review
of Gorzela and consistent with the Examiner’s stated position (Ans. 4–7), we
interpret the disputed trigger limitation using the broadest reasonable
interpretation consistent with Appellant’s disclosure – to include the
selection of blogrolls in Gorzela. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997).
Appellant also contends:
combination of Heix and Gorzela is further untenable because even
assuming arguendo that Heix and Gorzela can be combined, the
resulting combination still does not include the claimed chain of
digital documents having one or more predefined attributes or
displaying the chain of digital documents in the claimed manner. . . .
Thus, a person having ordinary skill in the art cannot combine Heix
and Gorzela without substantial modification, which inevitably
defeats the requisite motivation to combine these references.

Appeal Br. 24, 25 (underlining omitted).
The Examiner finds:
Par. 0002 Heix discloses as content management systems increase in
size, so does the difficulty in locating documents. Par. 0006 Gorzela
discloses the difficulty in effectively and conveniently accessing
content/documents through Weblogs. Therefore a person of ordinary
skill in the art at the time of the invention would have been motivated
to make this combination in order to locate document conveniently

5 We emphasize that, because “applicants may amend claims to narrow their
scope, a broad construction during prosecution creates no unfairness to the
applicant or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007).
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and effectively such as clicking on a link to access other Weblog
content. The document located on the blogroll are seen as the
documents a user wants to access quickly, therefore are considered
favorites (Par. 0006 and Par. 0039 Gorzela).
Ans. 8.

We agree with the Examiner because Appellant’s arguments do not
take into account what the collective teachings of the prior art would have
suggested to one of ordinary skill in the art and are therefore ineffective to
rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” (citations omitted)). Accordingly, the
Examiner appropriately combined the teachings of Heix and Gorzela. See
Ans. 8.
We further note that the Examiner has found actual teachings in the
prior art and has provided a rationale for the combination (see Non-Final
Act. 29; Ans. 8). We find that the above-noted teachings suggest that the
combination involves the predictable use of prior art elements according to
their established functions, i.e., to quickly locate documents by clicking on a
link to access other Weblog content. There is no requirement that the
problem solved by the secondary reference be discussed by the primary
reference to apply the teachings of the secondary reference in a rejection
under 35 U.S.C. § 103. The Supreme Court has held that in analyzing the
obviousness of combining elements, a court need not find specific teachings,
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but rather may consider “the background knowledge possessed by a person
having ordinary skill in the art” and “the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions,” id. at 417, and the basis for an obviousness rejection
must include an “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” Id. at 418 (citation omitted).
Here, the Examiner has provided a rationale for the combination.
Accordingly, we find that the Examiner has provided sufficient motivation
for modifying Heix with the teachings of Gorzela.
In the Reply Brief, Appellant contends that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because the Examiner has “failed
to provide a reference disclosing successive views of a graphical user
interface each presenting only those documents which was favorited by a
user who authored or edited a document selected from a previous view of the
graphic user interface.” Reply Br. 5.
As to Appellant’s above assertions, we disagree. Appellant’s
“successive views” and “document selected from a previous view”
arguments are not commensurate with the scope of the claim language.
Claim 1 is not explicitly so limited, and Appellant does not explain how
claim 1 would be inherently so limited. This claim language does not recite
“successive views” or “document selected from a previous view.” Nor do
we find alternative language in claim 1 that would similarly mandate this
argued limitation.
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On this record, and based upon a preponderance of the evidence, we
are not persuaded of error regarding the Examiner's finding of obviousness
regarding the rejection of independent representative claim 1.
Therefore, we sustain the Examiner’s obviousness rejection of
representative independent claim 1 and the rejection of grouped independent
claims 14 and 22, which recite similar limitations of commensurate scope.
The remaining grouped dependent claims also rejected (and not argued
separately) fall with their respective independent claims 1 and 14. See
37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
Appellant has not shown the Examiner erred with respect to the
obviousness rejections of claims 1, 3, 4, 6–14, 16–19, and 22 over the cited
prior art of record, and we sustain the rejections.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 12, 13,
14, 15, 22
103 Heix, Gorzela 1, 12, 13,
14, 15, 22

3, 13, 16 103 Heix, Gorzela,
Bera
3, 13, 16
4, 6, 7, 9,
10, 17, 18,
19
103 Heix, Gorzela,
Pedersen
4, 6, 7, 9,
10, 17, 18,
19

8 103 Heix, Gorzela,
Chandra
8
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11 103 Heix, Gorzela, Bae 11
Overall
Outcome
1, 3, 4, 6–
14, 16–19,
22

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED