Ex Parte Douglis et al

Board of Patent Appeals and Interferences

Apr 27, 2010

10457853 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FREDERICK DOUGLIS, ARUN KWANGIL IYENGAR, and
LAKSHMISH MACHEERI RAMASWAMY
____________
Appeal 2008-002723
Application 10/457,8531
Technology Center 2100
____________
Decided: April 28, 2010
____________

Before JOHN A. JEFFERY, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on June 10, 2003. The real party in interest is International Business
Machines Corp. (App. Br. 1.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 17. (App. Br. 1.)2 We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm-in-part.

Appellants’ Invention
Appellants invented a method, system, apparatus, and machine
readable medium for analyzing a web page’s sharing behavior,
personalization characteristics, and change over time in order to detect
fragments in the web page that are capable of being cached. (Spec. 1, ll. 4-7;
spec. 4, ll. 3-7.)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method of publishing electronic documents, comprising the
steps of:
automatically analyzing a plurality of electronic documents to
determine a plurality of fragments comprising the plurality of
electronic documents;
dividing the plurality of electronic documents into the plurality
of fragments;
storing the plurality of fragments; and
creating at least one electronic document by assembling the at
least one electronic document from at least a portion of the plurality of
fragments.

2 All references to the Appeal Brief are to the Appeal Brief filed on April 2,
2007, which replaced the prior Appeal Briefs filed on November 30, 2006,
and October 19, 2006.

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Schloss US 6,249,844 B1 Jun. 19, 2001

Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1 through 173 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Schloss.

Appellants’ Contentions
Appellants contend that Schloss’ disclosure of processing object
fragments in a web environment amounts to finding fragments across a
single document. (App. Br. 6.) In particular, Appellants argue that even if
Schloss’ disclosure indicates that the processing is performed multiple times,
it is still only processing a single document. Therefore, Appellants submit
that Schloss does not teach determining a plurality of fragments for a
plurality of electronic documents, as recited in independent claim 1. (Id.)
Further, Appellants allege that Schloss’ disclosure of tracking a fragment
that appears in multiple objects by assigning an identity or a name to each
fragment does not teach the disputed limitation. (Reply Br. 2.)

3 Although the Examiner omits claims 16 and 17 in the statement of the
rejection (Ans. 3), the Examiner nonetheless includes these claims in the
corresponding text of the rejection (Ans. 7-8). We therefore presume that
the Examiner intended to include claims 16 and 17 in the rejection. Accord
App. Br. 5 (confirming that the rejection includes claims 16 and 17).
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Examiner’s Findings and Conclusions
The Examiner finds that Schloss’ disclosure of digital objects
including web pages teaches documents, as recited in independent claim 1.
(Ans. 8.) Further, the Examiner finds that Schloss discloses that a document
contains one or more fragments. (Id.) Additionally, the Examiner finds that
Schloss discloses identifying or creating one or more fragments by
processing one or more documents. (Id.) In particular, the Examiner finds
that Schloss’ disclosure of identifying or recognizing that one or more
fragments appear in multiple documents teaches determining a plurality of
fragments for a plurality of electronic documents, as claimed. (Id. at 8-9.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that
Schloss anticipates independent claim 1? In particular, the issue turns on
whether Schloss teaches determining a plurality of fragments for a plurality
of electronic documents, as recited in independent claim 1.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Schloss
1. Schloss discloses dynamically parsing a digital content
description of a named object. (Col. 2, ll. 36-39.) Schloss further discloses
creating and maintaining fragment identities to facilitate caching. (Id.)
Schloss also discloses that digital objects may include web pages described
in Extensible Markup Language (“XML”), Standard Generalized Markup
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Language (“SGML”), and Hyper Text Markup Language (“HTML”). (Id. at
ll. 40-42.)
2. Schloss discloses determining which segment of an object to
recognize or identify as a fragment based on the segment’s properties,
including size and static vs. dynamic. (Id. at ll. 62-67.) Further, Schloss
discloses that since a client device has limited caching capacity, any
dynamic object or object exceeding a certain size will be deemed not
cacheable. (Col. 9, ll. 47-49.) Additionally, Schloss discloses that by
recognizing and treating dynamic content of an object as a separate
fragment, the revised object becomes static and, therefore, cacheable. (Id. at
ll. 60-64.)
3. Schloss discloses determining if a fragment appears in multiple
objects or multiple times in the same object by assigning a persistent name
or identity to the fragment and, further, tracking the respective fragment.
(Col. 4, ll. 45-49.)

IV. PRINCIPLE OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue “reads on” a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
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the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted).

V. ANALYSIS
Claim 1
Independent claim 1 recites, in relevant part, “to determine a plurality
of fragments comprising the plurality of electronic documents.”
As detailed in the Findings of Fact section, Schloss discloses
analyzing the content of a digital object, fragmenting the digital content, and
creating and maintaining fragment identities to facilitate caching. (FF 1.)
Further, Schloss discloses that digital objects may be web pages described in
XML, SGML, and HTML. (Id.) In particular, Schloss discloses assigning a
name or identity to a fragment, as well as tracking the respective fragment in
order to determine if the fragment appears in multiple digital objects or
multiple times in the same digital object. (FF 3.)
We find that Schloss’ disclosure teaches creating multiple fragments,
assigning identities to the respective fragments, and tracking each of the
fragments in order to determine whether a particular fragment appears in
multiple web pages or multiple versions of the same web page. We find the
Schloss’ cited disclosure teaches finding overlapping fragments across
multiple documents or multiple versions of the same document. Thus, we
find the Schloss’ disclosure teaches “to determine a plurality of fragments
comprising the plurality of electronic documents,” as recited in independent
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claim 1. It follows that Appellants have not shown that the Examiner erred
in finding that Schloss anticipates independent claim 1.

Claims 2, 5 through 8, 11 through 17
Appellants do not provide separate arguments with respect to
independent claims 7, 13, 15, and 16, and dependent claims 2, 5, 6, 8, 11, 12,
14, and 17. Therefore, we select independent claim 1 as representative of
these claims. Consequently, Appellants have not shown error in the
Examiner’s rejection of independent claims 7, 13, 15, and 16, and dependent
claims 2, 5, 6, 8, 11, 12, 14, and 17 for the reasons set forth in our discussion
of independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2009).

Claims 3 and 9
Appellants contend that Schloss’ disclosure of determining which
fragments to cache and replace based on the size of each fragment does not
teach “preference is given to determining fragments of a larger size over
fragments of a smaller size,” as recited in independent claims 3 and 9. (App.
Br. 7.) Further, Appellants argue that Schloss’ disclosure of recognizing or
identifying a fragment based on properties, such as size, does not teach the
disputed limitation. (Reply Br. 2-3.) We agree.
As detailed in the Findings of Fact section above, Schloss discloses
utilizing segment properties, such as size, in order to determine which
segments of a digital object to recognize or identify as a fragment. (FF 2.)
We find that Schloss’ disclosure teaches determining or assigning identities
to fragments of a web page based on size. At best, we find that Schloss’
disclosure teaches creating multiple fragments and assigning identities to the
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respective fragments based on size. We do not address on the record before
us whether the cited disclosure of Schloss would have suggested to one of
ordinary skill that fragments of a larger size can be preferred over those of a
smaller size, and vice-versa since that issue is not before us. We find,
however, that more than a mere suggestion of all the claimed limitations is
required for the Examiner to properly establish anticipation. See In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency … may not be
established by probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient.”) Absent a
showing that Schloss discloses determining or assigning identities to
fragments of a web page by necessarily preferring fragments of a larger size,
we find that the Examiner has improperly relied upon Schloss to teach the
disputed limitation. It follows that Appellants have shown that the Examiner
erred in finding that Schloss anticipates independent claims 3 and 9.

Claims 4 and 10
Appellants contend that Schloss’ disclosure of determining which
segment of a digital object to recognize or identify as a fragment based on
properties, such as static vs. dynamic, does not teach “preference is given to
determining fragments with different lifetimes,” as recited in independent
claims 4 and 10. (App. Br. 7-8; Reply Br. 3.) We do not agree.
As detailed in the Findings of Fact section above, Schloss discloses
utilizing segment properties, such as static vs. dynamic, in order to
determine which segments of a digital object to recognize or identify as a
fragment. (FF 2.) Further, Schloss discloses that segments of a digital
object that are static are cacheable, whereas segments of a digital object that
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are dynamic are not cacheable. (Id.) We find that Schloss’ disclosure
teaches determining or assigning identities to fragments of a web page based
on whether or not the respective web page content is static or dynamic. We
also find that Schloss’ disclosure teaches that static fragments of a web page
are cacheable.
In particular, we find that Schloss’ cited disclosure teaches
determining whether the content in the web page is changing frequently (i.e.,
dynamic content), analyzing and fragmenting the respective content that
does not undergo significant change (i.e., static content), and subsequently
caching the corresponding fragments. Consequently, we find that Schloss
teaches that static web page content (i.e., web page content that has a larger
lifetime) is given preferential treatment over dynamic web page content,
which has a shorter lifetime. In summary, we find that Schloss teaches
giving preference to determining fragments with different lifetimes, as
recited in independent claims 4 and 10. It follows that Appellants have not
shown that the Examiner erred in finding that Schloss anticipates
independent claims 4 and 10.

VI. CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in rejecting
claims 1, 2, 4 through 8, and 10 through 17 as being anticipated under
35 U.S.C. § 102(b).
2. Appellants have shown that the Examiner erred in rejecting
claims 3 and 9 as being anticipated under 35 U.S.C. § 102(b).

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VII. DECISION
We affirm the Examiner’s rejection claims 1, 2, 4 through 8, and 10
through 17. However, we reverse the Examiner’s rejection of claims 3 and
9.
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).

AFFIRMED-IN-PART

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