International Business Machines Corporation

Patent Trials and Appeals Board

Mar 2, 2021

2019004699 (P.T.A.B. Mar. 2, 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.
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.
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Application 15/005,073
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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
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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”).
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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
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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
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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:
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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
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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
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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.
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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
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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).

AFFIRMED