International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardMar 2, 20212019004699 (P.T.A.B. Mar. 2, 2021) Copy Citation 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. 15/005,073 01/25/2016 Frank L. Jania CAM920070224US2_8150-0599 8002 112978 7590 03/02/2021 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER HUYNH, THU V ART UNIT PAPER NUMBER 2177 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANK L. JANIA and LAWRENCE M. WRIGHT Appeal 2019-004699 Application 15/005,073 Technology Center 2100 ____________ Before ERIC B. GRIMES, ULRIKE W. JENKS, and RACHEL H. TOWNSEND, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s decision to reject claims directed at a method of enhancing data in a screenshot as being directed to nonstatutory subject matter, for anticipation, and for obviousness. We have jurisdiction 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). Appellant identifies the real party in interest as IBM Corporation. Appeal Br. 1. Appeal 2019-004699 Application 15/005,073 2 STATEMENT OF THE CASE Appellant’s invention concerns “[a] computer-implemented method of enhancing data in a screenshot.” Spec. Abstract. The Specification explains that “the term ‘screenshot’ means a reproduction of content presented on a display that is saved as a static image, for example as a bitmap (BMP) image, a portable network graphic (PNG) image, a Joint Photographic Experts Group (JPEG) image, a Graphics Interchange Format (GIF) image, or the like.” Id. ¶ 24. Screenshots are images of content presented on a display, or a portion thereof, and typically provide a static representation of the display at a particular moment. For example, a screenshot can depict a computer’s desktop as it appears at the time the screenshot is taken, as well as application windows that may be open, messages that are displayed, and the like. Screenshots are quite valuable in that they easily convey information in an applicable context. Id. ¶ 2. Claims 21–38 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claims 21 and 33 are representative of the claims on appeal, and read as follows: 21. A computer-implemented method, comprising: capturing a static graphical image of content presented on a display of a computer system; identifying, within the content, a first element including first semantic data; generating a first semantic representation of the first semantic data; and associating the first semantic representation with the first element. Appeal Br. 29 (Claims Appendix). 33. A computer program product, comprising: a computer-usable storage device having stored therein Appeal 2019-004699 Application 15/005,073 3 computer-usable program code, the computer-usable program code, which when executed by a computer hardware system, causes the computer hardware system to perform: capturing a static graphical image of content presented on a display of a computer system; identifying, within the content, a first element including first semantic data; generating a first semantic representation of the first semantic data; associating the first semantic representation with the first element, wherein the computer-usable storage device does not consist of a transitory, propagating signal. Id. at 31 (emphasis added). REJECTIONS The following rejections are before us on appeal: I. Claims 33–38 under 35 U.S.C. § 101 (Appeal Br. 15); II. Claims 21–23, 26–29, 32–35, and 38 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Lebel2 (id. at 19); and III. Claims 24, 25, 30, 31, 36, and 37 under pre-AIA 35 U.S.C. § 103(a) as obvious over Lebel in view of Barker3 (id. at 25). I. 35 U.S.C. § 101 The issue is whether claims 33–38 encompass transitory media and are thereby directed to nonstatutory subject matter. Examiner finds that the Specification does not define a “computer- usable storage device.” Ans. 8. Examiner finds that the claims recite a 2 Lebel, US 2007/0050703 Al, published Mar. 1, 2007. 3 Barker et al., US 5,129,052, issued July 7, 1992 (“Barker”). Appeal 2019-004699 Application 15/005,073 4 computer program product comprising a “computer-usable medium.” Final Act. 3; Ans. 3. Examiner finds that the computer-usable medium includes communication media, such as transmission media that can be in “a form of energy which is not limited to embodiments which fall within a statutory category of invention.” Final Act. 3; see Ans. 3, 8. Appellant contends that Examiner is rejecting the claims based on language and a construction not found in the claims. Appeal Br. 18. Appellant relies on extrinsic evidence to support the position that a “storage device” refers to a product or machine. See id. 17–18. Appellant contends that “Examiner has presented no evidence to support a finding that the term ‘storage device’ refers to a transitory, propagating signal per se.” Reply Br. 3. We find the Appellant has the better position. Claim 33 recites “[a] computer program product, comprising: a computer-usable storage device having stored therein computer-usable program code. . . . wherein the computer-usable storage device does not consist of a transitory, propagating signal.” Appeal Br. 31 (emphasis added). A plain reading of the claim is that the storage device contains program code for instructing the computer hardware to perform a particular task. The claim requires that the device that holds the program code is usable by a computer. The Specification describes how the pieces of the processing system work together. A data processing system suitable for storing and/or executing program code will include at least one processor coupled directly or indirectly to memory elements through a system bus. The memory elements can include local memory employed during actual execution of the program code, bulk storage, and cache memories which provide temporary storage Appeal 2019-004699 Application 15/005,073 5 of at least some program code in order to reduce the number of times code must be retrieved from bulk storage during execution. Spec. ¶ 18. The ordinary meaning in the art of “device” encompasses a hardware computer component, i.e., a “concrete thing,” id, or a “tangible article[],” In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). In other words, the ordinary meaning of the term device encompasses a “machine” or “manufacture.” It does not, however, encompass a “[a] transitory, propagating signal,” Nuijten, 500 F.3d at 1357. Additionally, we note that the claim expressly excludes a transitory propagating signal as part of the device. For these reasons, we conclude claim 33 encompasses a machine or manufacture, but does not encompass a transitory signal per se. Accordingly, we reverse the rejection of claim 33 and its dependents. II. Anticipation by Lebel Appellant argues claims 22, 26–28, 32–34, and 38 stand or fall together with claim 21, and claims 29 and 35 stand or fall with claim 23. See Appeal Br. 19. Accordingly, we focus on claims 21 and 23. A. Claim 21 Appellant argues that Lebel does not teach “capturing a static graphical image of content presented on a display of a computer system” because the captured “State of a Web Page” in Lebel is not a static graphical image of content, and Lebel does not describe the “state” as being a static graphical image. Appeal. Br. 20. Appellant contends “Lebel describes the capture of a ‘state’ - not a capturing of the claimed ‘static graphical image.’” Id. at 21. Appellant contends that “[t]he Examiner fails to present an Appeal 2019-004699 Application 15/005,073 6 explanation as to why a ‘state of a web page’ is a static graphical image.” Id. at 22. We are not persuaded. We note that the Specification does not provide a definition of a “static graphical image” and does not provide any discernable difference between a “screenshot” and “a static graphical image.” The Specification defines “screenshot” as a reproduction of content presented on a display that is saved as a static image, for example as a bitmap (BMP) image, a portable network graphic (PNG) image, a Joint Photographic Experts Group (JPEG) image, a Graphics Interchange Format (GIF) image, or the like. Spec. ¶ 24 (emphasis added). Based on these disclosures in the Specification we determine that a “screenshot” and “a static graphical image” appear to be different names for the same thing. The Examiner responds by referring to Figure 5A of Lebel as teaching “concurrently displaying generated hierarchical representation and viewed/displayed portion [of a] web page.” Ans. 10 (Lebel, Fig. 5A). The Examiner further finds that the “displayed portion [of the] web page is a reproduction of content (HTML code) presented on a display as bitmap having coordinates. Lebel also specifies a hierarchical representation of a static view of the webpage is seen by a user is generated.” Ans. 10–11 (Lebel ¶ 38). Lebel discloses that “a state of a web page may be captured at a particular point in time. A plurality of HTML content elements may be identified for the captured web page.” Lebel ¶ 27. Figure 5A of Lebel is reproduced below: Appeal 2019-004699 Application 15/005,073 7 Fig. 5A, reproduced above, shows “[a] hierarchical representation 500 of a web page and the captured web page 501 are illustrated side by side on a user display.” Id. ¶ 46. [I]t may be possible to retrieve an object on the hierarchical representation of the web page by selecting/designating the corresponding region on the web page, which will cause the associated content element to be highlighted on the hierarchical representation. Similarly, a content element may be designated on hierarchical representation and the corresponding region may be highlighted on the web page. Id. ¶ 45. Here, Lebel describes that the hierarchical representation of the web page and the view of the web page are linked. Thus, when Lebel discusses generating “a hierarchical representation 200 of a static view of a web page as seen by a user or web browser” in order to collect information about the “snap shot of the web page structure” to present to a technical support Appeal 2019-004699 Application 15/005,073 8 person, it is reasonably interpreted as providing a static view. Lebel ¶ 38; see Ans. 10–11. Given these disclosures in Lebel, we are not persuaded by Appellant’s argument that Lebel does not “disclose capturing a static graphical image.” Reply Br. 4. Anticipation is not an ipsissimis verbis test, i.e., identity of terminology is not required. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Accordingly, we affirm Examiner’s rejection of claim 21. Claims 22, 26–28, 32–34, and 38 fall with claim 21. B. Claim 23 Claim 23 depends from claim 22 and ultimately from claim 21. Claim 23 further discloses that the second element has a hierarchical relationship with the first element. Appeal Br. 29 (Claims Appendix). Claim 23 recites the further limitation wherein “the second element is not within the static graphical image.” Id. The Examiner explains: Lebel teaches generating hierarchical representation includes parent and child relationship between content elements, wherein “div” defines content at a block-level having relationship with “attributes” and “properties” as parent/child relationship. The “attributes” includes “class” which is not visible on the display and “properties” includes “Unique Number”, “Left”, [“]Top”, “Width”, [“]Height” coordinates that is also not visible on the display (Lebel, fig.2). Therefore, Lebel teaches identifying an element that is not visible on the display when the screenshot is captured. It is noted that Lebel indicates “there are many types of elements provided by the HTML standard, for example, FRAME, FORM, HEADINGS, PARAGRAPHS, LISTS, FONTS, TABLES, and other types may be created, thus, embodiments of the present invention are not limited to the types provided herein for exemplary purposes.” (Lebel, [0034]). For example, fig. 5A, the hierarchical representation 500 includes an element paragraph “P” having “Events Calendar” content which Appeal 2019-004699 Application 15/005,073 9 is also visible on the captured displayed/view web page 501. However, “attributes” and “properties” elements under the paragraph “P” are not visible on the displayed/view portion web page. Therefore, Lebel teaches identifying an element that is not visible on the displayed/viewed portion web page. Ans. 13. Appellant contends that “attributes” and “properties” are not elements or children of elements. Appeal Br. 24. Specifically, Appellant contends that “attributes” and “properties” are characteristics of an element. Reply Br. 7. Appellant contends that Lebel does not teach that “one of these elements is within the static graphical element and the other element is not within the static graphical element.” Appeal Br. 24. The problem with Appellant’s argument is that while the Specification defines “semantic representation” (Spec. ¶ 25 (“[t]he term ‘semantic representation’, as used herein, means an object that represents, but is distinct from, an element’s semantic data as presented in a screenshot”)), and gives (non-limiting) examples of “semantic data,” there is no definition of “element,” and we do not find usage of the term in the claims or Specification that would exclude the Examiner’s interpretation that what Appellant calls a characteristic, is within the scope of the term “element” as used in the claim. We know from the claim language (of claim 23 and the claims on which it depends) that the not-visible second element “is a child element” of the first element and that first elements include semantic data. The foregoing language only requires that a second element is not a first element, but does not identify what is included as a second element. Accordingly, we cannot conclude that the Examiner erred in finding claim 23 to be anticipated by Lebel. Claims 29 and 35 fall with claim 23. Appeal 2019-004699 Application 15/005,073 10 III. Obviousness Appellant argues that claims 25, 30, 31, 36 and 37 stand or fall with claim 24. See Appeal Br. 25. Accordingly, we focus on claim 24. Claim 24 depends from claim 22 and ultimately from claim 21. Claim 22 further discloses that the second element has a hierarchical relationship with the first element. Appeal Br. 29 (Claims Appendix). Claim 24 recites the further limitation “wherein the second element is identified by recursive processing the hierarchical relationship.” Id. Appellant contends that Barker fails to teach “recursive processing of a hierarchical relationship.” Appeal Br. 26. “The fact that logical elements are recursively nested does not [provide a] requirement that these logical element be recursively identified.” Id. at 27. Appellant contends that “Examiner is confusing a particular type of structure (as disclosed) with a particular type of method (as claimed).” Reply Br. 8. We are not persuaded. Examiner finds that “Lebel teaches elements in the hierarchical representation of captured portion web page having hierarchical relationship and [that] can be nested.” Ans. 14 (Lebel ¶¶ 6, 8, 29, 44). Lebel shows a linear process for updating a hierarchical representation; Lebel states that “if change is detected,” certain operations of this process “may be repeated to provide an updated hierarchical representation of the HTML document.” Lebel, ¶ 55 (discussing Fig. 8). Thus, Lebel teaches a process that may be repeated in response to a detected change in order to identify elements. Examiner acknowledges that Lebel does not teach recursive processing of the hierarchical relationship. Ans. 6. Examiner relies on Barker for providing recursive processing of hierarchical relationships. Id. Specifically, Examiner relies on the flow chart, set out in Appeal 2019-004699 Application 15/005,073 11 Figure 10 of Barker, which teaches identifying logical elements and parent elements and performing this process recursively “which permits data formatting to automatically conform to changes in logical element nesting levels as the document is edited.” Baker 9:48–50; see Ans. 15. Accordingly, we cannot conclude that Examiner erred in concluding that claim 24 is obvious based on the combination of Lebel and Baker. Claims 25, 30, 31, 36 and 37 fall with claim 24. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 33–38 101 33–38 21–23, 26–29, 32–35, 38 102(b) Lebel 21–23, 26–29, 32–35, 38 24, 25, 30, 31, 36, 37 103(a) Lebel, Barker 24, 25, 30, 31, 36, 37 Overall Outcome 21–38 TIME PERIOD FOR 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). 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