Ex Parte Kwok et al

Board of Patent Appeals and Interferences

Jul 23, 2012

10653665 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte THOMAS Y. KWOK, LINH H. LAM, THAO N. NGUYEN, and
KAKAN ROY
_____________

Appeal 2010-002436
Application 10/653,665
Technology Center 2100
______________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and KALYAN K.
DESHPANDE, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002436
Application 10/653,665

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 7 and 22.
We affirm-in-part.

INVENTION
The invention is directed to a method for transforming instructions for
various devices. See page 6 of Appellants’ Specification. Claim 1 is
reproduced below:
Claim 1. A method for transforming a first document into a second
document, the second document configured for use at
an electronic device, the method comprising:
receiving user interface information about the electronic device;
selecting content rules for modifying content in the first document
according to the user interface information;
selecting presentation rules for presenting the content from the
first document according to the user interface information; and
combining the content rules and presentation rules to form
transformation instructions for transforming the first document into
the second document.

REFERENCES
Guck US 5,848,415 Dec. 8, 1998
Lonnroth US 6,826,597 B1 Nov. 30, 2004

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REJECTION AT ISSUE
The Examiner has rejected claims 1 through 7 and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Lonnroth in view of Guck. The Examiner’s
rejection is on pages 3 through 6 of the Answer.1

ISSUES
Claims 1 and 3 through 7
Appellants’ contentions, on pages 3 through 7 of the Brief2 with
respect to the rejection of independent claim 1 present us with two issues:
a) Did the Examiner error in finding that the combination of Lonnroth
and Guck teaches receiving user interface information about the electronic
device?
b) Did the Examiner error in finding that the skilled artisan would
combine the teachings of Lonnroth and Guck?

Claim 2
Appellants’ contentions on pages 7 and 8 of the Brief present us with
the issue did the Examiner error in finding that the combination of Lonnroth
and Guck teach generating content rules?

Claim 22

1 Throughout this decision we refer to the Examiner’s Answer dated June 29,
2009.
2 Throughout this decision we refer arguments made in the Brief filed on
April 20, 2008 and the Reply Brief filed August 22, 2009.
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Appellants’ contentions on pages 8 and 9 of the brief present us with
the issue did the Examiner error in finding that the combination of Lonnroth
and Guck teach that the user interface information includes screen size and
keypad type?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to each of the arguments.
We disagree with Appellants’ conclusion that the Examiner erred in
finding that the combined teachings of Lonnroth and Guck teach receiving
user interface information about the electronic device and in finding the
skilled artisan would combine the teachings of the reference. We adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner.
With respect to the first issue, in addition to the Examiner’s findings
and responses, we note Appellants’ arguments focus on the limitation of
receiving, from the electronic device, the user interface information, see e.g.
Brief 4. These arguments are not commensurate with the scope of claim 1,
which merely recites receiving the information. Appellants state the claimed
device information may include model, screen size, keypad type and
preferred language of the device. Brief 5 (citing page 10 of the
Specification). Thus, the scope of the claimed information about the
electronic device includes such information. Lonnroth teaches XSL sheets,
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which are used to perform the conversion of documents are selected based
upon the type of client device. Col. 8, l. 39-52. Further, Lonnroth teaches
there is a metadata file which is passed from the XML processor to the post
processor (received by post-processor), which includes data on device type
and protocol used by the client (which meets the claimed information about
the device). Accordingly, Appellants’ arguments have not persuaded us that
the Examiner erred in finding that the combination of Lonnroth and Guck
teaches “receiving user interface information about the electronic device.”
Appellants’ arguments directed to the second issue have not
persuaded us that the Examiner erred in finding the skilled artisan would
combine the teachings of the reference. We consider the Examiner to have
provided a rational reasoning for combining the references on page 4 of the
Answer. Accordingly, we sustain the Examiner’s rejection of claims 1 and 3
through 7.

Claims 2 and 22
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We note that the Examiner has not
responded to Appellants’ arguments directed to each of these claims. We
have reviewed the evidence cited in the Examiner’s rejection of claims 2 and
22 (see Answer 4 and 22) and we concur with the Appellants that the cited
evidence does not support the Examiner’s finding. In the absence of further
findings by the Examiner and a response to Appellants’ arguments, we will
not sustain the Examiner’s rejection of these claims.

ORDER
Appeal 2010-002436
Application 10/653,665

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The decision of the Examiner to reject claims 1 and 3 through 7 is
affirmed.
The decision of the Examiner to reject claims 2 and 22 is reversed.

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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