Ex Parte Louis Wallace et al

Board of Patent Appeals and Interferences

Aug 31, 2012

09842366 (B.P.A.I. Aug. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DEBORAH A. LOUIS WALLACE and
CYNTHIA A. LOUIS WALLACE
_____________

Appeal 2010-011781
Application 09/842,366
Technology Center 2400
______________

Before, ROBERT E. NAPPI, DAVID M. KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-18, 27, 28, 31, and 33-37.1 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

1 Claims 19-26, 29, 30, 32, and 38-49 were previously cancelled. Appellants
erroneously omit claims 10, 11 and 16 from their statement summarizing the
status of the claims. See App. Br. 3 and Ans. 2 with a corrected listing.
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INVENTION
The invention is directed to a system and method for providing data in
connection with the operation of a control system. A web server module
connected to a control system controller contains a memory operative to
store a non-markup language web site database that completely defines a
web site for providing information about the control system. A web server
module configuration application receives user input to create the web site
database. The web site database is transmitted to the web server module
from the web site configuration application. When a request is received at
the web server module for a web page, the web server module utilizes the
web site database to dynamically generate the requested web page. Abstract.
Claim 1 is illustrative of the invention and is reproduced below:
1. A system for providing information regarding the
operation of a control system, comprising:
a Web server module associated with said control system,
said Web server module having a memory operative to store a
non-markup language Web site database that may be used to
dynamically generate a markup language Web page in response
to a request, wherein said Web site page is populated by the
Web server module with information obtained directly from
memory registers of the control system in response to the
request;
a remote computer operative to receive user-defined non-
markup language configuration data defining attributes of said
Web site, to store said configuration data as said non-markup
language Web site database, to transmit said non-markup
language Web site database to said Web server module, and to
request and receive said markup language Web page from said
Web server module;
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a Web server module configuration application
associated with the remote computer operative to create said
non-markup language Web site database from information
obtained locally at the remote computer and to transmit said
database to said Web server module in response to the request;
and
wherein the Web server module is further configured to
receive the non-markup language database from the remote
computer in a request and to dynamically generate a markup
language Web page that includes information obtained directly
from memory registers of the control system in response to said
request without data related to said markup language Web page
persisting on said Web server module.

REFERENCES
Inventor Patent No. Issue Date Filing Date
Papadopoulos US 6,282,454 B1 Aug. 28, 2001 Sep. 10, 1997
Haverstock US 6,401,131 B1 Jun. 4, 2002 Jun. 19, 1998
Sharood US 6,453,687 B2 Sep. 24, 2002 Jan. 8, 2001

REJECTIONS AT ISSUE2
Claims 1-18, 27-28, 31, and 33-37 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Ans. 3-4.
Claims 1-18 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention. Ans. 4.

2 Separate patentability is not argued for claims 2-4, 6-14, 16, 18, 28, 31 and
33-37. Except for our ultimate decision, those claims are not discussed
further herein.
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Claims 1-18, 27-28, 31 and 33-37 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Papadopoulos and
Haverstock. Ans. 4-9.
Claims 10, 11, and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Papadopoulos, Haverstock, and
Sharood. Ans. 9-10.

APPELLANTS’ CONTENTIONS
1. Appellants’ Specification provides support for the limitation “without
data related to said markup language Web page persisting on said
Web server module.” App. Br. 27-28.
2. The elements within the claims are not indefinite because they are
reasonably ascertainable by those skilled in the art. App. Br. 28-29.
3. Papadopoulos fails to teach or suggest a remote computer operative to
receive user-defined non-markup language configuration data, store
configuration data as said non-markup language database, and
transmit said non-markup language website database to said web
server module. App. Br. 13-16.3

ISSUES
1. Whether claims 1 and 27 comply with the written description
requirement of 35 U.S.C. § 112, first paragraph, with respect to the
limitation “without data related to said markup language Web page

3 We note Appellants present additional contentions of error (App. Br. 16-
27) but we do not reach them as our resolution of this contention is
dispositive of the appealed rejections under 35 U.S.C. § 103(a).
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persisting on said Web server module” as required by claim 1 with
similar language appearing in claim 27.
2. Whether claim 1 is definite as required by 35 U.S.C. § 112, second
paragraph.
3. Whether the combination of Papadopoulos and Haverstock renders
claims 1 and 27 obvious by teaching or suggesting the claimed subject
matter including a remote computer receiving user-defined non-
markup language configuration data, storing configuration data as said
non-markup language database, and transmitting the non-markup
language website database to a web server module.

ANALYSIS
35 U.S.C. § 112, first paragraph: written description
Claims 1-18, 27-28, 31, and 33-37
Contention 1
The Examiner rejected claims 1 and 27 as amended during
prosecution4 together with claims dependent therefrom as failing to comply
with the written description requirement of 35 U.S.C. § 112, first paragraph.
At issue is the phrase, “without said data related to said markup language
Web page persisting on said Web server module” added to claim 1 with
similar language added to claim 27. Ans. 3-4. Appellants contend that
support for this limitation can be found in page 9, lines 23-25; page 12, lines
18-29; page 15, lines 11-18; page 16, lines 3-17; page 19, lines 13-30; page

4 Amendment in Response to Notice of Non-Compliant Amendment filed
Oct. 8, 2008.
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23, lines 12-22; page 24, line 22 to page 25, line 20; page 30, lines 1-7; and
page 32, lines 5-15 of the Specification. App. Br. 28.
We have reviewed the cited portion of the Specification and agree
with the Examiner that nowhere in either the cited portions or the remainder
of the Specification is there any mention of a web server module generating
a markup language web page without data related to the markup language
web page “persisting” on the web server module. To the contrary, other than
a single unrelated use of the term “persistent” describing a continuous
connection to the Internet, the disputed term and variations thereof are
completely absent from Appellants’ disclosure. Nor do we find any
equivalent disclosure describing that data is not persistent on the web server
module. Other than a brief discussion of the law concerning the written
description requirement under 35 U.S.C. § 112, first paragraph (App. Br. 27-
28), Appellants provide no explanation of how the cited portions of the
Specification relate to or otherwise disclose the disputed limitation.
It is well settled that new or amended claims which introduce
elements or limitations which are not supported by the as-filed disclosure
violate the written description requirement. See, e.g., In re Lukach, 442 F.2d
967, 968-69 (CCPA 1971). The written description requirement is designed
“to prevent an applicant from later asserting that he invented that which he
did not; the applicant for a patent is therefore required ‘to recount his
invention in such detail that his future claims can be determined to be
encompassed within his original creation.” Amgen Inc. v. Hoechst Marion
Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). While we agree with
Appellants that there is no in haec verba requirement (App. Br. 27), newly
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added claim limitations must be supported in the specification through
express, implicit, or inherent disclosure. The fundamental factual inquiry is
whether the specification conveys with reasonable clarity to those skilled in
the art that, as of the filing date sought, applicant was in possession of the
invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64.
When an explicit limitation in a claim is not present in the written
description it must be shown that a person of ordinary skill would have
understood that the description requires that limitation. Hyatt v. Boone, 146
F.3d 1348, 1353 (Fed. Cir. 1998). If the original disclosure does not provide
support for each limitation, new or amended claims must be rejected under
35 U.S.C. § 112, first paragraph, as lacking adequate written description.
None of the portions of the Specification cited by Appellants (see
App. Br. 26-27) make any mention of “persisting,” or “persistence” or use
any other form of the word, either positively or negatively. Nor are we able
to ascertain any other disclosure of data related to a markup language Web
page not “persisting” or otherwise being not being stored, remaining on or
being removed from a web server module. That is, we find no express,
implicit, or inherent disclosure which conveys with reasonable clarity to
those skilled in the art that, as of the filing date sought, Appellants were in
possession of a system for providing information regarding the operation of
a control system in which a web server module generates a markup language
web page without data related to the markup language web page “persisting”
on the web server module. We therefore sustain the Examiner’s rejection
under 35 U.S.C. § 112, first paragraph, of claims 1 and 27 together with
dependent claims 2-18, 28, 31, and 33-37 as failing to comply with the
written description requirement.
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35 U.S.C. § 112, second paragraph: definiteness
Claims 1-18
Contention 2
The Examiner found the following phrases, in claim 1, lack clear
antecedent basis: “said Web site page” and “said Web site.”5 Ans. 4. While
generally traversing, Appellants provide no explanation concerning the
disputed terms.
In the absence of persuasive explanation by Appellants, we agree with
the Examiner that the lack of clear antecedent basis for the above-identified
terms renders claims 1-18 indefinite under the second paragraph of 35
U.S.C. § 112. In that regard, it is our view that the metes and bounds of the
claimed invention cannot be determined with a reasonable degree of
precision and particularity because it is unclear when referring to “said Web
site” if the Appellants are claiming that the remote computer receives data
defining attributes of the “markup language Web page”, the “Web site page”
(the two presumably being the same) or of some other grouping (e.g., a
collection of Web site pages and/or the Web server module.)
We therefore sustain the Examiner’s rejection of claims 1-18 under 35
U.S.C. § 112, second paragraph.

5 While the Examiner also lists the term “web page” among those lacking
sufficient antecedent basis (Ans. 4), the term appears only as part of the
phrase “markup language Web page,” this latter phrase appearing four times
in claim 1 with the antecedent for at least the third and fourth occurrences of
the phrase also appearing to be indefinite.
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35 U.S.C. § 103(a) rejections

Contention 3
Appellants contend that Papadopoulos fails to teach or suggest a
remote computer operative to receive user-defined non-markup language
configuration data, store configuration data as said non-markup language
database, and transmit said non-markup language website database to said
web server module, as recited in independent claim 1. App. Br. 13.
In response, the Examiner contends that Papadopoulos teaches that a
remote computer receives a snapshot of configuration data and that a user
can update certain data in the form of multiple message entries and table and
send it to the web server via the controller. Ans. 12. The Examiner
concludes that “the disclosure of the Papadopoulos is sufficient in teaching
the limitations as required.” Id. We disagree.
In addressing the disputed limitations, it appears that the Examiner
equates Papadopoulos’s PC 8 with the claimed remote computer. See Ans. 5
and 12 addressing claim 1, and Ans. 8 whereat, in addressing claim 12 and
citing to Papadopoulos at col. 4, ll. 1-5, the Examiner contends that
Papadopoulos describes that an http request is received from a web browser
executing on a “remote computer”, presumably Papadopoulos’s PC 8. Thus,
if the Examiner considers PC 8 to be equivalent to the claimed remote
computer, then it is not clear where or whether Papadopoulos discloses that
PC 8 is operative to receive user-defined non-markup language
configuration data, store the configuration data as a non-markup language
Web site database, and transmit the non-markup language Web site database
to Web server 30. While we agree with the Examiner that Papadopoulos
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teaches that a user can update certain data, we find no disclosure that there is
the ability to send configuration data as a non-markup language Web site
database. Although the cited portions of Papadopoulos discloses that
“[r]egister data is displayed in a template having a form and a table, with the
user entering an address and a length” (Papadopoulos col 9, ll. 9-11), the
table displays register values, not non-markup language configuration data,
and is not disclosed to be transmitted to the web server. Therefore, we are
not persuaded that Papadopoulos discloses a remote computer operative to
receive user-defined non-markup language configuration data, store
configuration data as said non-markup language database, and transmit the
non-markup language website database to said web server module.
Thus, we conclude that the Examiner erred in rejecting claim 1 and
also independent claim 27 which recites commensurate limitations. For the
same reasons, and since Sharood fails to cure the above noted deficiencies,
we also reverse the Examiner’s obviousness rejection for each dependent
claim on appeal.

CONCLUSIONS
1. Claim 1 and 27 do not comply with the written description
requirement under 35 U.S.C. § 112, first paragraph, with respect to the
limitation “without data related to said markup language Web page
persisting on said Web server module” as required by claim 1 with
similar language appearing in claim 27.
2. Claim 1 indefinite and does not comply with the requirements of 35
U.S.C. § 112, second paragraph.
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3. The combination of Papadopoulos and Haverstock fails to teach or
suggest a remote computer receiving user-defined non-markup
language configuration data, storing configuration data as said non-
markup language database, and transmitting the non-markup language
website database to a web server module as required by claim 1 or the
commensurate limitations of claims 27.

DECISION
The rejection of claims 1-18, 27-28, 31, and 33-37 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is affirmed.
The rejection of claims 1-18 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention is
affirmed.
The rejection of claims 1-18, 27-28, 31 and 33-37 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Papadopoulos and
Haverstock is reversed.
The rejection of claims 10, 11, and 16 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Papadopoulos,
Haverstock, and Sharood 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

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