Ex Parte Kellner et al

Patent Trial and Appeal Board

Jul 16, 2018

14341913 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/341,913 07/28/2014 Charles B. Kellner
141563 7590 07/18/2018
MHKKG (CA Technologies)
P.O. BOX 398
AUSTIN, TX 78767-0398
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
CZ20140144US1/7100-06100 5512
EXAMINER
NAZAR, AHAMED I
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
07/18/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES B. KELLNER, MICHAEL PLATT,
and PAVEL SKOPIK
Appeal2018-000191
Application 14/341,913
Technology Center 2100
Before JEAN R. HOMERE, IRVINE. BRANCH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5, 7, 9-15, 17, and 19-21, constituting all claims
currently pending in the application. App. Br. 4. Claims 6, 16, and 18 have
been canceled. Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b) for claims 1, 11, and 21.
1 "The real party in interest in the present appeal is CA, Inc., the assignee of
the subject application." App. Br. 2.
Appeal2018-000191
Application 14/341,913
STATEMENT OF THE CASE
Appellants' invention is directed to personalized wiki annotations, and
in particular, to associating personalized annotations with an updated version
of the wiki page. Spec. ,r 33. Claim 1, reproduced below with the disputed
limitation in italics, is exemplary of the claimed subject matter:
1. A method for assembling customized documentation,
compnsmg:
storing, by a computer, annotations to an original version
of a document, wherein the document comprises a wiki page;
receiving, by the computer, a new version of the
document, wherein the new version of the document is different
than the original version of the document;
storing, by the computer, an updated version of the
document based on differences between the original version and
the new version of the document; and
associating, by the computer, the annotations with the
updated version of the document,
wherein the annotations comprise a wiki formatting
macro, and
wherein the associated annotations and the updated
version of the document form a personalized version of the
document.
REJECTIONS
Claims 1-5, 7, 9-15, 17, and 19-21 stand rejected under 35 U.S.C.
§ 112(a), first paragraph, as failing to comply with the written description
requirement.
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Application 14/341,913
Claims 1-5, 7, 9-15, 17, and 19-21 stand rejected under 35 U.S.C.
§ 102(a)(l) as being anticipated by Bowling (US 9,047,261 B2; issued June
2, 2015).
ANALYSIS
35 USC§ l 12(a),first paragraph, Rejection
The Examiner rejects claims 1-5, 7, 9-15, 17, and 19-21 as failing to
comply with the written description requirement of 35 U.S.C. § 112(a), first
paragraph. Final Act. 3--4. According to the Examiner, independent claim 1
recites "where the annotations comprise a wiki formatting macro" ( emphasis
and internal quotations omitted), but "the specification fails to recite [a]
'wiki formatting macro,' or 'wiki macro' or 'formatting macro,' and "is
silent regarding the term formatting, and the macro capabilities described in
the specification are not directed toward formatting, or the manner in which
information is displayed, but are directed toward what is displayed (i.e., the
content)." Final Act. 3--4 ( emphases omitted). The Examiner explains
"formatting is well known to be related to the control of the manner in which
information is displayed, such as text size or style, bold or italics, color etc.
The specification describes macros capabilities that do not appear to be
related to formatting functions, and thus the claimed 'formatting macro'
appears to be new matter." Ans. 3 ( emphasis omitted).
Appellants argue "the phrase 'wherein the annotations comprise a
wiki formatting macro' was included in the originally filed specification as
claim 8 and claim 18." App. Br. 10. Appellants further submit the
document "Using Templates and Formatting Macros in a Knowledge Base,"
to indicate "the phrase 'formatting macros' in the context of a Confluence
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Wiki was in use by those skilled in the present field of endeavor at the time
of filing the present application," and in particular with examples of
formatting content of a wiki page, such as through the use of macros for Tip,
Info, Warning, and Note. App. Br. 10-11, Reply Br. 2-3. In addition,
Appellants identify paragraphs 35 and 37 of the Specification as describing
example annotations. App. Br. 11.
We agree with Appellants. To comply with the written description
requirement, the disclosure in applicant's specification must reasonably
convey to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date. Ari ad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Although
Appellants' Specification does not use the words "wiki formatting macro,"
the Specification describes macros and customization or personalization of
wiki pages through annotations, including through the use of macros. Spec.
,r,r 30, 32, 33, 35, and 37. It is well settled that "ipsis verbis disclosure is not
necessary to satisfy the written description requirement of section 112."
Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). The
identified disclosures are sufficient to convey to a person having ordinary
skill in the art that Appellants were in possession of the claimed invention.
We, therefore, do not sustain the Examiner's rejection of claims 1-5,
7, 9-15, 17, and 19-21 for failing to comply with the written description
requirement of 35 U.S.C. § 112(a), first paragraph.
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Application 14/341,913
35 US. C. § 102(a)(l) Rejection
Claim 1
Issue 1: Did the Examiner err in finding Bowling discloses "storing,
by a computer, annotations to an original version of a document, wherein the
document comprises a wiki page," and "wherein the annotations comprise a
wiki formatting macro," as recited in independent claim 1 and
commensurately recited in independent claims 11 and 21?
The Examiner finds "Bowling discloses [a] browser based document
editing environment in Figure 1." Ans. 4. The Examiner further finds "a
macro is equivalent to an interface widget" and "interface widgets are well
known aspect of web pages and mark-up pages." Ans. 4 (citing Spec. ,r 30).
The Examiner finds "Bowling discloses the editing process includ[ing]
adding interface widgets" and "[a] text box is an interface widget." Ans. 4
(citing Bowling, col. 4, 1. 66- col. 5, 1. 3).
Appellants argue "[ w ]hile Bowling describes web pages in general,
... Bowling does not identically disclose that the edited document is a wiki
page with the annotations specifically being a wiki formatting macro." App.
Br. 13. According to Appellants, "Bowling does not provide details of how
the annotating is accomplished and, thus, does not identically disclose an
annotation that comprises a wiki formatting macro." App. Br. 13.
Appellants further argue "Bowling does not disclose that an annotation can
be accomplished using a macro nor disclose that an annotation can be
accomplished using a wiki formatting macro associated with a wiki page."
App. Br. 14. Appellants argue, "[a]ccording to claim 1, the annotation is not
simply a generic annotation to a document but, instead, specifically
comprises a wiki formatting macro." App. Br. 14.
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We disagree with Appellants' argument that Bowling does not
disclose the edited document is a wiki page. Appellants' Specification
describes a wiki as, for example, "a website that allows users to create and
collaboratively edit web pages via a web browser." Spec. ,r 2. Appellants'
Specification also states "[ w ]ikis can be considered a type of web content
management system." Spec. ,r 2. A dictionary definition of "wiki" is "a
website that allows visitors to make changes, contributions, or corrections,"
Merriam-Webster online dictionary, http://www.merriam-
webster.com/ dictionary/wiki (last visited June 13, 2018), which is consistent
with the example provided in Appellants' Specification. Bowling relates to
editing a document, and in particular, to editing a web page through the use
of a web browser. Bowling col. 1, 11. 5-6, col. 7, 11. 15-19. We agree with
the Examiner that this discloses the edited document is a wiki page. See
Ans. 4.
Bowling further describes annotating the document, where
"annotating may include making notes on the document, for example by
adding a text box including text of the note, to the document being edited."
Bowling col. 4, 1. 66 - col. 5, 1. 3. The Examiner finds this disclosure of
adding a text box, or adding an interface widget, discloses an annotation
comprising a "wiki formatting macro." See Ans. 4. Although we agree with
the Examiner that Bowling discloses annotations, we disagree that Bowling
explicitly discloses an annotation comprising a "wiki formatting macro."
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Appellants do not provide an explicit definition of a "wiki formatting
macro," or a "macro." With regard to a "macro," Appellants' Specification
describes:
As part of the editing process, the user can select an
interface widget to add a macro to the page. The macro is then
run whenever the page is loaded by a browser. In particular, the
user writes the user code of the macro to include a body of text,
or images, of personalized documentation, or annotations, for
that particular wiki page. Whenever any user with appropriate
permission views the page, the macro output will be visible to
that user within the context of the wiki page.
Spec. ,r 30. A dictionary definition of a "macro" is "a single computer
instruction that stands for a sequence of operations." Merriam-Webster
online dictionary, http ://www.merriam-webster.com/ dictionary/macro (last
visited June 13, 2018). We agree with Appellants the described "interface
widget" in paragraph 30 is the mechanism by which the macro is added to
the wiki page, but is not the macro itself. See Reply Br. 5. Bowling does
not explicitly describe how the text box annotation is added, be it through a
manual process, a macro, or some other means.
"Claim limitations directed to printed matter are not entitled to
patentable weight unless the printed matter is functionally related to the
substrate on which the printed matter is applied." Praxair Dist., Inc. v.
Mallinckrodt Hosp. Prod. IP Ltd., 90 F.3d 1024, 1031----32 (Fed. Cir. 2018)
(citing In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015); In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)).
As discussed above, Bowling discloses annotations generally, but
does not explicitly disclose an annotation comprising a wiki formatting
macro. A claim limitation is directed to printed matter "if it claims the
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Application 14/341,913
content of information." DiStefano, 808 F.3d 848. The annotation itself,
whether it's a note, comment, highlight, macro, or a specific type of macro,
is simply the content of data or information, and is, thus, printed matter.
If the claim limitation is directed to printed matter, we then ascertain
whether the printed matter is functionally related to its "substrate," and if so,
it is given patentable weight. DiStefano, 808 F.3d at 850. However, if the
printed matter is not functionally related to its "substrate," the printed matter
will not distinguish the invention from the prior art. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). "Claim limitations directed to the content of
information and lacking a requisite functional relationship are not entitled to
patentable weight." Praxair, 890 F.3d at 1032. "[T]he printed matter must
be interrelated with the rest of the claim." Id.
Here, the claimed annotation differs from the prior art only in the type
of annotation (a macro versus some other type of annotation), which is not a
patentable distinction. Independent claims 1, 11, and 21 simply recite
storing and associating the annotations with the updated version of the
document by the computer. In other words, the claim functionally recites
storing information and associating that information with the updated
version of the document (the "substrate"). Storing and associating a wiki
formatting macro, as opposed to some other annotation, is not functionally
different than storing and associating any other type of annotation
information. The recited wiki formatting macro is not functionally related to
the computer system carrying out the storing and associating because the
computer behaves in the same way regardless of whether the annotation is a
wiki formatting macro or other type of annotation. We note claims 1, 11,
and 21 do not recite displaying or loading the updated wiki page with the
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associated annotations, which would necessitate running the macro and may
provide distinguishing functionality beyond simply displaying or loading
other types of annotations on the wiki page. See Spec. ,r 30.
We agree with the Examiner that Bowling anticipates claims 1, 11,
and 21 because it discloses each and every limitation of the claim. Any
argued difference between the prior art and the claimed invention is simply a
substitution of one piece of non-functional descriptive material (an
annotation comprising a wiki formatting macro) for another piece of non-
functional descriptive material (an annotation comprising a text box), which
does not change the functionality of the claims. To decide otherwise would
mean that any specific type of annotation is sufficient to warrant separate
patentability even if the remainder of the invention is unchanged, even
where, as here, Appellants have admitted that a wiki formatting macro was
known in the art. See App. Br. 10-12.
Therefore, we sustain the Examiner's rejection of independent claims
1, 11, and 12 under 35 U.S.C. § 102(a)(l). For the same reasons, we sustain
the Examiner's 35 U.S.C. § 102(a)(l) rejection of dependent claims 2-5, 7,
9, 12-15, 17, and 19.
Claim 10
Issue 2: Did the Examiner err in finding Bowling discloses
"determining, by the computer, the differences between the new version of
the document with the original version, wherein the annotations are ignored
when determining the differences," as recited in dependent claim 10 and
commensurately recited in dependent claim 20?
The Examiner finds:
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Bowling is directed toward a first form of document
annotation described as "editing data" ( column 2, lines 5-7)
and a second form of document annotation described as a "text
box" (column 5, line 2). Bowling indicates the two types are
different .... Bowling indicates both types of annotation are
stored in memory ( column 5, lines 20-22). Bowling describes
the document comparing process at column 5, lines 40-48,
where what is compared is the first edited version and the
second edited version, where the first version is the version
received at step a) and the second version is the version with
editing data described at step d) ( column 1, line 62 to column 2,
line 7). The comparing is described relative to the editing data
(the first form of document annotation) and is not described in
terms of comparing the text box annotations ( the second form
of document annotation). Since the second type of annotation is
stored but not considered in the comparison step, Bowling
discloses annotations are ignored when determining the
differences.
Ans. 5.
Appellants argue "Bowling does not state that 'annotations are not
considered during the difference determination step', such a conclusion is
merely an inference drawn from Bowling's lack of discussing how
annotations are handled." App. Br. 15. Appellants further argue, "while the
markup-related edits and annotation-related edits may be received
differently during the editing process in Bowling ... when considering
different versions of a document, annotations are considered to be a part of a
particular version of the document." Reply Br. 6-7.
We agree with Appellants. Bowling describes storing data associated
with annotations, which are different than editing mark-up, as part of the
first edited version of the document and/ or second edited version of the
document. Bowling, col. 4, 11. 63----67, col. 5, 11. 35-39. Bowling further
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describes comparing one of the first edited versions of the document, the
second edited version of the document, or another version of the document
with one of the first edited versions of the document, the second edited
version of the document, or another version of the document. Bowling col.
5, 11. 40-49. We do not see, and the Examiner has not sufficiently explained,
how this disclosure teaches ignoring the annotations when determining the
differences between documents, particularly since Bowling explicitly
teaches the annotations are stored as the first edited version of the document
and/ or the second annotated version of the document.
Accordingly, we are persuaded the Examiner erred in rejecting
dependent claims 10 and 20 under 35 U.S.C. § 102(a)(l), and we, therefore,
do not sustain those rejections.
NEW GROUND OF REJECTION
We enter a NEW GROUND OF REJECTION against claims 1, 11,
and 21 under 35 U.S.C. § 102(a)(l) as anticipated over Bowling. Because
the fact finding and reasoning relied on by the Board to sustain the rejections
of claims 1, 11, and 21 differs from the fact finding and reasoning relied
upon by the Examiner, we designate our affirmance of the rejections of
claims 1, 11, and 21 as NEW GROUNDS OF REJECTION so as to provide
Appellants with a full and fair opportunity to respond to the thrust of the
rejections.
Although we have rejected claims 1, 11, and 21 under 37 C.F.R.
§ 41.50(b ), we have not reviewed the remaining claims to the extent
necessary to determine whether these claims are unpatentable under 3 5
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U.S.C. § 102(a)(l). We leave it to the Examiner to determine the
appropriateness of any further rejections based thereon.
DECISION
The Examiner's 35 U.S.C. § 112(a), paragraph 1, rejection of claims
1-5, 7, 9-15, 17, and 19-21 is reversed.
The Examiner's 35 U.S.C. § 102(a)(l) rejection of claims 1-5, 7, 9,
11-15, 17, 19, and 21 is affirmed.
The Examiner's 35 U.S.C. § 102(a)(l) rejection of claims 10 and 20 is
reversed.
We enter a NEW GROUND OF REJECTION against claims 1, 11,
and 21 under 35 U.S.C. § 102(a)(l) as anticipated by Bowling.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same record ....
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Further guidance on responding to a new ground of rejection can be
found in the MANUAL OF PATENT EXAMINING PROCEDURE§ 1214.01 (9th
Ed., Rev.08.2017, Jan. 2018).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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