Ex Parte Cragun et al

Patent Trial and Appeal Board

Mar 20, 2014

11669886 (P.T.A.B. Mar. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BRIAN JOHN CRAGUN and PAUL REUBEN DAY
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Appeal 2011-013139
Application 11/669,886
Technology Center 2100
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
Claims 1, 8, and 16 are representative. (Emphasis added.)
1. An apparatus comprising:
at least one processor;
a memory coupled to the at least one processor;
an electronic document residing in the memory;
an automatic document processing mechanism residing in the memory
and executed by the at least one processor, the automatic document
processing mechanism processing the electronic document and automatically
producing selective highlighting for at least a portion of the electronic
document to enhance the comprehension of the electronic document by a
human reader, the automatic document processing mechanism determining
which portions of the electronic document to selectively highlight based on
user preferences that include a specification of at least one word in the
electronic document that triggers highlighting of a corresponding portion of
the electronic document, the automatic document processing mechanism
including:
a display mechanism that displays the selective highlighting in a
display of the electronic document without altering the electronic document;
and
a conversion mechanism that generates a new electronic document
that includes all information in the electronic document and additionally
includes at least one markup language tag that specifies to the automatic
document processing mechanism how to perform at least a portion of the
selective highlighting of the new electronic document.

8. A method for selectively highlighting an electronic document to aid
a human reader in comprehending the electronic document, the method
comprising the steps of:
(A) determining user preferences for selectively highlighting the
electronic document, the user preferences including a specification of at least
one word in the electronic document that triggers highlighting of a
corresponding portion of the electronic document, the user preferences
further including a specification of type of highlighting;
(B) reading the electronic document;
(C) processing the electronic document according to the user
preferences; and
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(D) selectively highlighting at least a portion of the electronic
document according to the user preferences;
(E) displaying the electronic document with the selective highlighting
to the human reader without altering the electronic document; and
(F) generating a new electronic document that includes all
information in the electronic document and additionally includes at least one
markup language tag that specifies to the automatic document processing
mechanism how to perform at least a portion of the selective highlighting of
the new electronic document.

16. A computer-readable program product comprising software stored
on a nontransitory computer-readable storage medium, the software
comprising:
(A) an automatic document processing mechanism that processes the
electronic document and automatically produces selective highlighting for at
least a portion of the electronic document to enhance the comprehension of
the electronic document by a human reader, the automatic document
processing mechanism determining which portions of the electronic
document to selectively highlight based on user preferences that include a
specification of at least one word in the electronic document that triggers
highlighting of a corresponding portion of the electronic document, the
automatic document processing mechanism including:
(A1) a display mechanism that displays the selective
highlighting in a display of the electronic document; and
(A2) a conversion mechanism that generates a new electronic
document that includes all information in the electronic document and
additionally includes at least one markup language tag that specifies to the
automatic document processing mechanism how to perform at least a portion
of the selective highlighting of the new electronic document.

Cited References

Ono et al. US 6,742,163 B1 May 25, 2004
Milic-Frayling et al. US 6,968,332 B1 Nov. 22, 2005
Hay et al. US 7,020,663 B2 Mar. 28, 2006
Henkin et al. US 2002/0120505 A1 Aug. 29, 2002
Card et al. US 2002/0118230 A1 Aug. 29, 2002
Duga et al. US 2002/0174145 A1 Nov. 21, 2002
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Marshall et al. US 2003/0070139 A1 Apr. 10, 2003

Grounds of Rejection
1. Claims 1, 8, and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Milic-Frayling in view of Duga and Ono.
2. Claims 2, 9, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Milic-Frayling in view of Duga, Ono, and Hay.
3. Claims 4 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Milic-Frayling in view of Duga, Ono, and Marshall.
4. Claims 5, 13, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Milic-Frayling in view of Duga, Ono, and Henkin.
5. Claims 6, 7, 14, 15, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Milic-Frayling in view of Duga, Ono, and
Card.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 4-
9.

Discussion
ISSUE
The Examiner argues that Milic-Frayling teaches each element
claimed except
Milic-Frayling does not explicitly disclose generating a new
electronic document that includes all information in the
electronic document and specifying to the automatic document
processing mechanism how to perform at least a portion of the
selective highlighting of the new electronic document. Duga
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teaches a conversion mechanism that generates a new electronic
document that includes all information in the electronic
document and specifying to the automatic document processing
mechanism how to perform at least a portion of the selective
highlighting of the new electronic document (par [0031]). In
view of KSR, 127 S. Ct. 1727 at 1742, 82 USPG2d [sic] at
1397 (2007), it would have been obvious to an artisan at the
time of the invention to include the [sic] Duga’s teaching with
the teachings of Milic-Frayling given that user may reference
the highlighted portion in the original document so that portions
of the document are not interpreted out of context.

(Ans. 5-6.)
Appellants argue that, “[n]owhere does Milic-Frayling teach or
suggest the display of highlights is performed without altering the electronic
document.” (App. Br. 6.) Appellants further contend that
Milic-Frayling teaches a display mechanism that displays
highlighting in a display of an electronic document by altering
the electronic document with tags that provide the highlighting.
This does not read on “a display mechanism that displays the
selective highlighting in a display of the electronic document
without altering the electronic document” as recited in claim 1.
Because Milic-Frayling does not teach or suggest a display
mechanism that displays the selective highlighting in a display
of the electronic document without altering the electronic
document, and because the known technology in Milic-Frayling
relating to web browsers teaches the exact opposite, the
examiner’s rejection of claim 1 is in error.

(App. Br. 7.)

Appellants argue that

[T]he examiner admits Milic-Frayling does not explicitly
disclose generating a new electronic document that includes all
information in the electronic document and specifying to the
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automatic document processing mechanism how to perform at
least a portion of the selective highlighting of the new
electronic document. The examiner then cites to Duga as
allegedly teaching these limitations in paragraph [0031]. This
is clear error. In Duga, the user can add marks, such as
bookmarks, inking, highlighting and underlining, and
annotations on digital content displayed on the screen of a
portable electronic book, then store the marked digital content
in the non-volatile memory of the electronic book. Duga goes
on to state the user can upload the marked digital content to the
information services system 20. The last sentence of paragraph
[0031] of Duga states:

It is noted that there is no need to upload any
unmarked digital content, since it was already stored
in the centralized bookshelf 30 at the time it was first
requested by the portable electronic book 10.

Thus, Duga expressly teaches uploading only the marked
digital content.

(App. Br. 7.)

The issue is: Does the cited prior art support the Examiner’s finding
that the claimed subject matter is obvious?

PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
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burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

ANALYSIS
We do not find that the Examiner has provided evidence to support a
prima facie case of obviousness. In particular, we do not find that the
Examiner has established that the prior art discloses or suggests “a display
mechanism that displays the selective highlighting in a display of the
electronic document without altering the electronic document,” as claimed.
[Emphasis added.]
Even assuming this element, i.e., display of the electronic document
without altering the electronic document, is present in the prior art, we
further find that the Examiner has failed to provide evidence in the prior art
of “a conversion mechanism that generates a new electronic document that
includes all information in the electronic document,” as claimed. We agree
with Appellants that Duga stores only the marked digital content in the non-
volatile memory of the electronic book, not the entire electronic document.
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(Duga, page 2, [0031]; App. Br. 7.) Moreover, the Examiner admits “Milic-
Frayling does not explicitly disclose generating a new electronic document
that includes all information in the electronic document and specifying to the
automatic document processing mechanism how to perform at least a portion
of the selective highlighting of the new electronic document.” (Ans. 5.)
Milic-Frayling creates and stores a summary document with highlighting
(col. 16, ll. 6-24). Therefore the Examiner has not established that either
Milic-Frayling or Duga, alone or in combination, discloses “a conversion
mechanism that generates a new electronic document that includes all
information in the electronic document,” as claimed.
The obviousness rejection over Milic-Frayling in combination with
Duga and Ono is reversed.
The Examiner has not shown that any of the additional references
used for rejection of additional independent and dependent claims makes up
for the deficiencies of the combination of Milic-Frayling in combination
with Duga and Ono also used for each additional rejection, and therefore
rejections 2-5 are also reversed.

CONCLUSION OF LAW
The Examiner has not established that the claimed elements are taught
or suggested by the prior art.

REVERSED

cdc