Ex Parte Kraft

Board of Patent Appeals and Interferences

Jun 19, 2009

10331738 (B.P.A.I. Jun. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte REINER KRAFT
____________________

Appeal 2008-004456
Application 10/331,738
Technology Center 2100
____________________

Decided:1 June 19, 2009
____________________

Before LEE E. BARRETT, JEAN R. HOMERE, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-004456
Application 10/331,738

I. STATEMENT OF THE CASE
Appellant appeals from the Examiner’s final rejection of claims 1-24
and 36 under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

A. INVENTION
According to Appellant, the invention generally relates to active
documents, and more specifically to an active shell surrounding the active
document, for providing basic management and connectivity features,
wherein the shell operates in a runtime environment and operates with a
helper process for the coordination and distribution of tasks (Spec. 1, ll. 8-
11).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A processor-implemented method for providing a runtime
environment comprising:

transforming a passive document into a first active document by
creating a first shell exclusively for the first active document;

wherein the first shell surrounds the first active document, and
comprises:

an executable code that provides management and
connectivity features to the first active document; and

an interface to provide access to the first active document;

registering the first shell with a first helper upon activation of the first
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shell;

wherein the first shell has a computational power that is substantially
smaller than a computational power of the first helper;

wherein the first helper provides to the first shell, at least some of the
processing power of the first helper;

wherein the first helper selectively performs, on demand, at least
some of the tasks on behalf of the first shell;

wherein the first shell operates in the runtime environment to
coordinate the management and connectivity features and to distribute
tasks;

wherein the first active document is processable as a process rather
than a passive document; and

wherein the first active document gradually collects additional data
and state information.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Potok US 2003/0120639 A1 Jun. 26, 2003

Satoh, Mobile Agent-based Compound Documents, Proc. of the 2001
ACM Symposium on Document Engineering, 76-84 (Nov. 2001)
(hereinafter “Satoh”).

Koppen, Active Hypertext for Distributed Web Applications Proc. of
the Eighth IEEE International Workshops on Enabling Technologies:
Infrastructure for Collaborative Enterprises, 1-6 (Jun. 1999)
(hereinafter “Koppen”).

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Claims 1-9, 24, and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Satoh and Koppen.
Claims 10-23 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Satoh, Koppen and Potok.

II. ISSUES
Has Appellant shown that the Examiner erred in finding that the
combination of Satoh and Koppen teaches or would have suggested a shell
“exclusively for the first active document” which “surrounds the first active
document,” and which has “a computational power that is substantially
smaller than a computational power of the first helper” (claim 1)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Koppen
1. Koppen discloses an approach for active hypertext documents which
realizes applications through hypertext documents with embedded
application logic (Koppen 1), wherein the basic idea is to combine
code and data (id. at 2).
2. A DELEGATE element at the root of the active hypertext document is
used to delegate behavior to a central document (id. at 4).
Satoh
3. Satoh discloses a mobile agent-based framework for building mobile
compound document, which can each be dynamically composed of
mobile agents (Satoh 76).
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4. In this framework, a compound document is a hierarchical mobile
agent that contains its contents and a hierarchy of mobile agents
which correspond to nested components embedded in the document
(id.) wherein a compound component is typically defined by two
parts: contents and codes for modifying them (id.).
5. Each mobile agent-based component can be displayed within the
estate of its container component or in a window on the screen (id. at
79), wherein this framework lets the user to directly move or copy
components between different containers (id. at 80).

IV. PRINCIPLES OF LAW
“[T]he claims . . . measure the invention.” See SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations
omitted). "[T]he PTO gives claims their 'broadest reasonable
interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations
are not to be read into the claims from the specification." In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989)).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
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1443, 1445 (Fed. Cir. 1992). “On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981). Section 103 forbids issuance of a patent when:
“the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. at 12 and
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Co., 340 U.S.
147, 152 (1950)). The Court reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
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skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (citing KSR, 550 U.S. at 416). The Federal
Circuit relied in part on the fact that Leapfrog had presented no evidence that
the inclusion of a reader in the combined device was “uniquely challenging
or difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Id. at 1162 (citing KSR, 550 U.S. at 418-19).

V. ANALYSIS
Claims 1-9, 24, and 36
Appellant argues that “Koppen does not explicitly teach that the shell
of executable code surrounds the active document” (App. Br. 26). Appellant
further contends that “Satoh does not intend the mobile compound
document… is not intended [sic] to be exclusively managed by the
hierarchical mobile agents” and that “each of the hierarchical mobile
compound documents are managed by the hierarchical mobile agents,
negating the exclusivity [as required by claim 1]” (App. Br. 27).
The Examiner finds that “Satoh teaches a compound document
framework where one hierarchical mobile agent contains the document
contents as well as a hierarchy of mobile agents which correspond to nested
components embedded in the document,” therefore “[t]he mobile agent is a
shell that comprises executable code” (Ans. 4). On this latter point, the
Examiner finds that “[b]ecause each agent is a container for the document,
the mobile agent is created exclusively for each document” (id.).
Thus, we determine in this Appeal whether Appellant has shown that
the Examiner erred in finding that the combination of Satoh and Koppen
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teaches or would have suggested a shell “exclusively for the first active
document” which “surrounds the first active document” (claim 1).
Though Appellant appears to be arguing that Koppen or Satoh alone
fails to teach the claim limitations, the Examiner has rejected the claims
based on the combination of Koppen and Satoh, and nonobviousness cannot
be shown by attacking the references individually. See In re Merck, 800
F.2d at 1097. Thus, despite Appellant’s contention that Koppen “does not
explicitly teach” the claim limitation, we address in this appeal whether the
subject matter sought to be patented by Appellant as a whole would have
been obvious to the artisan as we consider the facts of the case and the
common sense of those skilled in the art. See Leapfrog, 485 F.3d at 1161.
Koppen discloses an active hypertext document with an embedded
logic that combines data with code (FF 1). An artisan would have found it
obvious that the data and code comprising Koppen’s active document are
enclosed within a shell, and that the code is connected to the shell for
activation. That is, an artisan would have understood the active hypertext
document of Koppen to include a shell which includes an executable code
that provides management and connectivity features and an interface to
provide access to the active document, as recited in claim 1.
Furthermore, Satoh discloses a mobile agent-based framework for
building mobile compound document (FF 3), wherein the compound
document comprises a hierarchical mobile agent that contains its contents
and a hierarchy of mobile agents which correspond to nested components
embedded in the document, and wherein the compound components are
typically defined by two parts: contents and codes for modifying them (FF
4). Each mobile agent-based component can be displayed within the estate
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of its container component or in a window on the screen, and the user may
move or copy components between different containers (FF 5). As the
Examiner finds, “[t]he mobile agent is a shell that comprises executable
code” (Ans. 4). Artisan would also have understood Satoh’s hierarchical
mobile agent comprising the compound document’s contents and the
hierarchy of mobile agents to be a shell which includes an executable code
that provides management and connectivity features and an interface to
provide access to the active document, as recited in claim 1.
The Examiner also finds that “[b]ecause each agent is a container for
the document, the mobile agent is created exclusively for each document”
(Ans. 4). We agree with the Examiner.
Though Appellant argues that “Satoh does not intend the mobile
compound document… to be exclusively managed by the hierarchical
mobile agents” (App. Br. 27), such argument of Satoh’s intention “to be
exclusively managed by the hierarchical mobile agents” (emphasis added) is
not commensurate with the language of the claim invention since the claims
do not recite such “managed by the hierarchical mobile agents” language. In
fact, Appellant appears to be arguing that Satoh does not disclose that the
shell is exclusively managed by the hierarchical mobile agents at all times,
which is not commensurate with the language of claim 1.
Satoh discloses displaying the document in a container component or
in a window on the screen (FF 5). The artisan would also have understood
Satoh’s agent to be exclusively for the active document in the container
component or in a window at the time of the display. Accordingly, we
conclude that Appellant has not shown that the Examiner erred in finding
that the combination of Satoh and Koppen teaches or would have suggested
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a shell “exclusively for the first active document” which “surrounds the first
active document,” as recited in claim 1.
Appellant also argues that “the Examiner provided a general reason
for the desirability of the combination of Koppen and Satoh, in hindsight”
(App. Br. 28). To address the issue of whether Appellant has shown there is
error in the Examiner’s finding that it would have been obvious to combine
the teachings of Koppen and Satoh, we must determine whether or not the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains. See KSR, 550 U.S. at 406. That is, the
test for obviousness is rather what the combined teachings of the references
would have suggested to those of ordinary skill in the art. See In re Keller,
642 F.2d at 425; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
We find no error is the Examiner’s finding that “[b]oth inventions are
directed toward frameworks for active documents, and it would have been
obvious… to apply Satoh to Koppen, so that the user would have the benefit
of a framework with an intuitive way for compound documents to be
activated as active contents, displayed and edited seamlessly in a window,
and stored in a file” (Ans. 5). Appellant has presented no evidence that
adding the teachings of Koppen and Satoh of frameworks for active
documents "was uniquely challenging or difficult for one of ordinary skill in
the art" (see Leapfrog, 485 F.3d at 1162), nor has Appellant presented
evidence that these "represented an unobvious step over the prior art" (id.).
Rather, the combined teachings of the references represent merely a
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combination of familiar elements according to known methods and do no
more than yield predictable results. See KSR, 550 U.S. at 416.
However, Appellant also contends that the combined teachings do not
teach or suggest “that the shell has a computational power that is
substantially smaller than the computational power of the helper” (App.
Br. 29). In response, the Examiner finds that “Koppen teaches an active
document framework where function calls can be delegated to a central
monitor document,” and thus, “Koppen does disclose a helper (the central
monitor document) with greater computational power than the executable
code of the active document… since the central document could handle the
function calls, i.e., processing and tasks, from the active document” (Ans.
16). Thus, we also determine in this Appeal whether Appellant has shown
that the Examiner erred in finding that the combination of Satoh and Koppen
teaches or would have suggested a shell which has “a computational power
that is substantially smaller than a computational power of the first helper”
(claim 1).
Based upon the record on appeal, we agree with Appellant that the
combination of Satoh and Koppen does not teach and would not have
suggested a shell which has “a computational power that is substantially
smaller than a computational power of the first helper,” wherein the first
helper is defined as being registered with the shell “upon activation of the
first shell,” as required by claim 1.
While Koppen’s DELEGATE element is used to delegate behavior to
a central document (FF 2), we find that the central document is not “a
helper” as required by claim 1. That is, nothing in the sections relied upon
by the Examiner indicates or suggests that the central document is registered
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with a shell comprising executable code and interface, as required by claim
1. In fact, we find nothing in the sections relied upon by the Examiner that
indicates or suggests that a helper registered with a shell that has a
computational power, or that the computational power of the shell registered
therewith is substantially smaller than that of the helper.
As such, we reverse the rejection of representative claim 1 and claims
2-9, 24, and 36 standing therewith over Satoh and Koppen. We thus
conclude that Appellant has shown that the Examiner erred in rejecting
claims 1- 9, 24, and 36 under 35 U.S.C. § 103(a) for the reasons as set forth
above.
Claims 10-23
Claims 10-23 depend from claim 1. As discussed supra regarding
claim 1, we find that there is no shell which has “a computational power that
is substantially smaller than a computational power of the first helper”
taught or suggested by the combined teachings of Koppen and Satoh. We
also find that Potok does not cure this deficiency of Satoh and Koppen. We
thus conclude that Appellant has shown that the Examiner erred in rejecting
claims 10-23 under 35 U.S.C. § 103(a) for the reasons as set forth above.

VII. CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in finding claims 1-9, 24
and 36 unpatentable over Satoh and Koppen and claims 10-23 unpatentable
over the teachings of Satoh, Koppen and Potok under 35 U.S.C. § 103(a).

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VIII. DECISION
We have not sustained the Examiner's rejection with respect to any
claim on appeal. Therefore, the Examiner’s decision rejecting claims 1-24
and 36 is reversed.

REVERSED.

nhl

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