Ex Parte Dargahi et al

Patent Trial and Appeal Board

Jul 16, 2014

11705843 (P.T.A.B. Jul. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROSS DARGAHI, KEVIN M. HENRIKSON,
JONG YOON LEE, and JAMES ANDREW CLARK1
__________

Appeal 2012-003465
Application 11/705,843
Technology Center 2100
__________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
ULRIKE W. JENKS, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an object
embedding method and system and to an embedded object editing method.
The Examiner has rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1-3, 5-13, and 17-22 are pending and on appeal (App. Br. 3).
Claims 1 and 7 are illustrative and read as follows:

1 Appellants identify the real party in interest as VMware, Inc. (App. Br. 1).
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1. A method for embedding an object into a container document in a
browser window, the embedded object using a first application, and the
container document using a second application, the method comprising:
initiating creation of an instance of the embedded object at a specific
location within the container document in the browser window;
inserting data into the embedded object instance created at the specific
location while remaining within the container document; and
saving the data in the embedded object along with the container
document, wherein the first application is not installed on a machine being
used by the user.
7. A method for embedding an object into a container document in a
browser window, the container document using a first application, the
method comprising:
creating a shell at a specified location in the container document;
creating an instance of the object to be embedded in the shell;
allowing a user to edit the instance of the object using a second
application, while remaining within the container document in the browser
window; and
saving an instance of the object when the container object is saved.
Claims 1-3, 5, and 17-22 stand rejected under 35 U.S.C. § 103(a) as
obvious over Morgan et al. (US 2007/0094607 A1, Apr. 26, 2007) in view
of Herrmann (US 5,995,756, Nov. 30, 1999) (Ans. 5).
Claims 6-13 stand rejected under 35 U.S.C. § 103(a) as obvious over
Morgan in view of Herrmann and Oikawa et al. (US 2004/0006743 A1,
Jan. 8, 2004) (Ans. 10).
I
In rejecting claim 1, the Examiner finds that “Morgan fails to
expressly disclose . . . wherein the first application is not installed on a
machine being used by the user” (Ans. 6). Instead, the Examiner finds that
Herrmann discloses this feature (id.).
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Appellants argue that “Morgan and Herrmann separately or combined,
do not teach or suggest an embedded object that uses an application that is
not installed on the host or user machine” (App. Br. 9). We conclude that
the Examiner has not set forth a prima facie case of obviousness.
As noted by the Examiner (Ans. 17), Herrmann recites “creating at the
server an application document, said application document including
information necessary for locating and downloading program code necessary
for rendering a view of the application document within the Web browser,
without requiring that an application document handler already be installed
at the Web browser” (Herrmann, col. 18, ll. 12-20). However, as noted by
Appellants (App. Br. 10), Herrmann also recites, “if the program code
[capable of rendering the application document] does not reside locally,
automatically downloading the program code from a location indicated by
said information” (Herrmann, col. 18, ll. 34-40; see also col. 8, ll. 51-54, &
col. 12, ll. 42-50). Therefore, we do not agree with the Examiner that
Herrmann suggests conducting the initiating, inserting, and saving steps of
claim 1 wherein an application that is used by the embedded object is not
installed on a machine being used by the user.
Thus, we conclude that the Examiner has not set forth a prima facie
case that claim 1 would have been obvious. For substantially the same
reasons, we conclude that the Examiner has not set forth a prima facie case
that independent claims 17 and 20 would have been obvious. We therefore
reverse the obviousness rejection of independent claims 1, 17, and 20, as
well as of dependent claims 2, 3, 5, 18, 19, 21, and 22.
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II
In rejecting claim 6, which depends from claim 1, the Examiner
additionally relies on Oikawa for disclosing the feature recited in claim 6
(Ans. 11). However, the Examiner does not explain how Oikawa overcomes
the deficiencies in Morgan and Herrmann discussed above. We therefore
reverse the rejection of claim 6.
In rejecting claim 7, the Examiner finds that “Morgan and Herrmann
fail to expressly disclose . . . creating a shell at a specified location in the
container document . . . [and] creating an instance of the object to be
embedded in the shell” (id. at 12). Instead, the Examiner finds that Oikawa
discloses these features (id.).
Appellants argue that “Oikawa neither teaches nor suggests the
limitation in claim 7 of ‘creating a shell at a specified location in the
container document’ and therefore cannot be combined with Morgan and
Herrmann to teach or suggest all of the limitations of claim 7” (App. Br. 11).
We conclude that the Examiner has not set forth a prima facie case of
obviousness.
As noted by the Examiner (Ans. 12), Oikawa discloses that “HTML
4.01 provides the special HTML tag , namely an inline frame, for
embedding a given Web document in a target Web page” (Oikawa, ¶ 6). In
addition, Oikawa discloses: “After framing a portion to manipulate by the
HTMLviewPad, the HTMLviewPad displays a pop-up menu of view editing
operations, including EXTRACT, REMOVE, and INSERT operations
through a mouse operation. After selecting a portion in this way, the user
can select one of EXTRACT and REMOVE.” (Id. at ¶ 133.) Thus, Oikawa
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discloses creating a frame, which the Examiner relies on to be the shell
(Ans. 12), in a document from which a portion is being removed or
extracted.
We understand that the Examiner is considering the target document
into which extracted material is inserted to be “the container document” (id.
at 18). However, we agree with Appellants that the Examiner does not
adequately explain where Oikawa discloses creating a frame at a specified
location in the target document. We therefore reverse the obviousness
rejection of claim 7 and of claims 8-13, which depend from claim 7.

REVERSED

cdc