Ex Parte Graham et al

Patent Trial and Appeal Board

Nov 25, 2014

11148830 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN S. GRAHAM, PRASANT K. KONTAMSETTY, and
SHANKAR RAMASWAMY
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Appeal 2012-006539
Application 11/148,8301
Technology Center 2100
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Before DEMETRA J. MILLS, LORA M. GREEN, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving method and
apparatus claims directed to providing annotations within a portal
environment. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 According to Appellants, the real party in interest is IBM Corporation.
App. Br. 1.
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STATEMENT OF THE CASE
Background
“The present invention relates to information management and, more
particularly, to annotating software objects with supplemental information.”
Spec. ¶ 1.
The Claims
Claims 1–12 and 21–28 are on appeal. Claim 1 is representative and
reads as follows.
1. A computer-implemented method of providing
annotations within a portal environment, said method
comprising:
storing, within a tag library, a plurality of tags and code
associated with each tag, wherein the code associated with each
tag specifies a handler and a visual identifier for the tag;
executing a portlet object comprising a tag associated
with at least one artifact displayed within a view generated by
the portlet object;
responsive to executing the portlet object, replacing,
within the portlet object, the tag with the code associated with
the tag from the tag library and, responsive to executing the
code, displaying the visual identifier specified by the code
proximate to the artifact with which the tag was associated
within the view generated by the portlet object, wherein the
visual identifier signifies availability of an annotation service
corresponding to the replaced tag; and
responsive to a selection of the visual identifier, invoking
the annotation service represented by the visual identifier by
executing the handler specified by the code that replaced the tag
to create an annotation associated with the artifact.
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App. Br. 22 (Claims App’x). Claim 21, the only other independent claim, is
directed to a computer readable storage device with a program executing the
method steps of claim 1. Id. at 25–26.
The Rejections
1. The Examiner maintains that claims 1–6, 9–12, 21–23, and 26–282
are unpatentable under 35 U.S.C. § 103(a) over Hollander3 in view
of D’Orto.4
2. The Examiner maintains that claims 7, 8, 24, and 25 are
unpatentable under 35 U.S.C. § 103(a) over Hollander in view of
D’Orto and Catchpole.5
DISCUSSION
1. Hollander in view of D’Orto
Because we reverse this rejection based on the limitations of
independent claim 1, we need not address the separate arguments presented
by Appellants for the dependent claims.
The Examiner asserts that Hollander discloses “a web based
collaborative annotation system” including a method comprising the steps
required by claim 1. Ans. 5. However, the Examiner acknowledges that
Hollander does not “explicitly teach the use of a tag library” as required by
the claim. Id. at 5–6. The Examiner asserts that D’Orto discloses storing
tags in a tag library, as well as executing a portlet object and code associated

2 The Examiner also refers to claims 13–20 in the Grounds of Rejection.
Ans. 4. However, those claims have been cancelled. See App. Br. 2.
3 Hollander et al., US 7,506,246 B2, issued on Mar. 17, 2009.
4 D’Orto et al., US 2004/0225959 A1, published on Nov. 11, 2004.
5 Catchpole et al., US 2002/0065912 A1, published on May 30, 2002.
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with a tag. Id. at 6. The Examiner concludes that “it would have been
obvious for one of ordinary skill in the art to have modified the teachings of
Hollander to support the use of tag libraries.” Id.
The dispositive issue with respect to this appeal is whether the
Examiner has established a prima facie showing that the proposed
combination of Hollander and D’Orto discloses a tag that includes code
associated with a handler and code associated with a visual identifier, such
that when the visual identifier is selected, the code associated with the
handler is executed, invoking an annotation service represented by the visual
identifier.
Findings of Fact
We have determined that the factual findings in the analysis below are
supported at least by a preponderance of the evidence. See Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Principles of Law
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the combination of prior art references or would have been
obvious based on the knowledge of those of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
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Analysis
Appellants argue, inter alia, that this rejection should be reversed
because the Examiner has failed “to explicitly identify, within Hollander, a
teaching corresponding to the alleged tag.” App. Br. 13.
In response to this argument, the Examiner asserts the following:
Hollander at least indicates code associated with a tag that
specifies a handler (monitor user navigation inputs) and visual
identifier for the tag (span element that contains the image).
Thus Hollander discloses that the icons are presented
responsive to selection of the visual identifier “monitors user
navigation and inputs to determine when to display indications
. . .”. For Example Fig 4a shows these icons or visual
indicators 256 and 258 and the claimed “annotation service” as
the window 254 showing the associated annotations.
Ans. 18–19 (citing Hollander col. 10, ll. 38–46; col. 14, ll. 62–63; col. 15, ll.
12–17; col. 16, ll. 45–47).
In reply, Appellants assert that the claim requires that the handler
perform an action after the visual identifier is selected, arguing that the
handler identified by the Examiner in Hollander performs an action before
the visual indicators are displayed. Reply Br. 4. Appellants argue also that
the Examiner has not established that code associated with the tag in
Hollander specifies the alleged handler relied upon by the Examiner. Id. at
5.
For the reasons set forth below, we find that the Examiner’s
conclusion that Hollander discloses a tag including code associated with a
handler and a visual identifier that performs the actions required by the
claim is not supported by a preponderance of the evidence of record.
Hollander discloses the following:
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The invention relates generally to shared annotation systems
and provides a method for automatically navigating a document
in a display that has at least a first portion and a second portion.
An annotation related to the document may be generated by a
user at a first client. The annotation can be received and
associated with a first indication in the document. An input to
navigate a first portion of a display may be received from a user
at the second client. The input causes the first indication to be
displayed in the first portion of the display; and in response to
the input, the annotation is automatically displayed in a second
portion of the display at the second client.
Hollander, Abstract. Additionally, Hollander discloses that “code such as a
JavaScript synchronization module monitors user navigation inputs and
mouse inputs and states to determine whether and when to synchronously
scroll or otherwise display indications and their related annotations in the
first and second portions of the display.” Id. at col. 10, ll. 39–43. Further,
with respect to the indication icons used, Hollander discloses the following:
Span element shrdbk_icons 376 is a span element that
contains the image of the icon or indication to be embedded.
For each location in the content, such as the book text, a
different type of indication icon is used to represent each
different type of annotation (e.g.—text annotation, multimedia
annotation, etc.).
Id. at col. 15, ll. 12–17.
Based on these disclosures in Hollander, the Examiner concludes that
“Hollander at least indicates code associated with a tag that specifies a
handler (monitor user navigation inputs) and visual identifier for the tag
(span element that contains the image).” Ans. 18. However, we find that
the Examiner has failed to establish how the code associated with the alleged
handler, and the code associated with the visual identifier, are both
associated with a single tag, as required by claim 1.
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In addition, we find that the Examiner has not sufficiently articulated
how this tag in Hollander meets the claim requirement of “responsive to a
selection of the visual identifier, invoking the annotation service represented
by the visual identifier by executing the handler specified by the code that
replaced the tag to create an annotation associated with an artifact.” We find
that the code associated with the handler identified by the Examiner in
Hollander, i.e. the monitoring of user navigation inputs, is executed before
the code associated with the visual identifiers, because Hollander teaches
that the visual identifiers are displayed in response to user navigation inputs,
while the claim requires that these actions take place in the opposite order,
i.e. the handler is executed based on a selection of the visual identifier. The
Examiner has neither sufficiently explained how the relied upon disclosures
in Hollander meet the “responsive to a selection of the visual identifier”
clause in the claim, nor has the Examiner articulated any reasoning why
taking action in the opposite order would have been obvious in light of the
disclosure of Hollander. Finally, we note that the Examiner asserts that
D’Orto is “relied on for teaching tag libraries,” and has not identified
anything in D’Orto that would cure the deficiency in the Examiner’s
findings with respect to Hollander. Ans. 19.
Based on the foregoing, we find that the Examiner has failed to
establish a prima facie case of obviousness, and thus, we reverse the
rejection of claims 1–6, 9–12, 21–23, and 26–28.
2. Hollander in view of D’Orto and Catchpole
The Examiner does not rely on Catchpole to cure the deficiency in the
rejection based on Hollander and D’Orto. We therefore find that the
Examiner has not established a prima facie case of obviousness with respect
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to claims 7, 8, 24, and 25 for the same reasons articulated with respect to the
rejection of claim 1, as described above. Accordingly, we reverse this
rejection.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1–
12 and 21–28.
REVERSED

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