Ex Parte Dunietz et al

Board of Patent Appeals and Interferences

Jun 18, 2012

10837043 (B.P.A.I. Jun. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JERRY DUNIETZ, CHARLES P. JAZDZEWSKI,
DAVID ORNSTEIN, ROB RELYEA, OLIVER FOEHR,
MIKE HILLBERG, JOSEPH D. TERNASKY, ROBERT A. LITTLE,
and CHRISTOPHER L. ANDERSON
_____________

Appeal 2010-002429
Application 10/837,043
Technology Center 2100
______________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
KALYAN K. DESPANDE, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002429
Application 10/837,043

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 16 and 20 through 27.
We reverse.
INVENTION
The invention is directed to a system for a framework to define
building blocks for packaging and rendering document centered content.
See pages 1 and 2 of Appellants’ Specification. Claim 16 is representative
of the invention and reproduced below:
16. A system comprising:
one or more computer-readable media;
software instructions resident on the media which, when
executed, are capable of representing a document with a markup
representation, wherein the document comprises part of a package that
contains multiple payloads, each payload acting as a different
representation of the document, the markup representation
comprising:
a first element that controls how an application reacts to
an unknown attribute;
a second element that declares that an associated
namespace is ignorable;
a third element that specifies behavior for ignorable
content;
a fourth element that reverses the effect of a namespace
declared ignorable;
a fifth element that specifies content that may be
substituted for the preferred content if the preferred content is
unknown and the preferred content is associated with a
namespace requiring that items must be understood; and
a sixth element that specifies to document editing tools
whether individual attributes in an ignorable namespace should
be preserved when the document is modified.

Appeal 2010-002429
Application 10/837,043

3

REFERENCES
David Orchard and Norman Walsh (W3C), Versioning XML
Languages, [Editorial Draft] Published by the World Wide Web
Consortium, 11/2003.
Martin Gudgin et al. (SOAP) SOAP Version 1.2 Part 1: Messaging
Framework, Published by the World Wide Web Consortium, 5/2003.

REJECTION AT ISSUE
The Examiner has rejected claims 16 and 20 through 27 under 35
U.S.C. § 103(a) as being unpatentable over W3C in view of SOAP. Answer
4-6.
1

The Examiner has withdrawn the rejection of claim 16 under 35
U.S.C. § 101 as being directed to non-statutory subject matter. Answer 10.
Accordingly, we have not reviewed this claim to determine if it contains
patent-eligible subject matter since the issue is no longer before this panel.

ISSUES
Appellants argue on pages 12 through 23 of the Brief,
2
that the
Examiner’s rejection of independent claim 16 is in error. Appellants’
arguments present us with the issue: did the Examiner err in finding the
combination of W3C in view of SOAP teach instructions on a media
representing a document with a markup representation where the document

1
Throughout this opinion we refer to the Examiner’s Answer mailed on
May 23, 2008.
2
Throughout this opinion we refer to Appellants’ amended Appeal Brief
dated November 6, 2007, and Reply Brief dated July 23, 2008.
Appeal 2010-002429
Application 10/837,043

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comprises part of a package that contains multiple payloads, each payload
acting as a different representation of the document, as recited in
independent claim 16?
3

ANALYSIS
We have reviewed Appellants’ arguments in the Brief, the Examiner’s
rejection and the Examiner’s response to those arguments. We concur with
Appellants’ conclusion that Examiner erred in finding the combination of
W3C in view of SOAP the disputed claim limitation. The Examiner did not
address the disputed limitation in the statement of the rejection on pages 4
through 6 of the Answer. In response to Appellants’ arguments, the
Examiner states: “However, the W3C reference provides detailed
descriptions of XML documents and multiple versions of a document.
Furthermore, a document is an instance of a language which must have a
root element in XML.” Answer 7. We consider such a statement, which
does not cite to any specific teaching in W3C, insufficient evidence to
support a finding that the reference teaches the disputed limitation.
Accordingly, we will not sustain the Examiner’s rejections under 35 U.S.C.
§ 103(a) of independent claim 16 or the claims which depend therefrom.

3
We note Appellants’ arguments present additional issues, however as this
issue is dispositive, we do not reach the other issues presented.

Appeal 2010-002429
Application 10/837,043

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ORDER
The decision of the Examiner to reject claims 16 and 20 through 27 is
reversed.

REVERSED

ELD