Ex Parte Martin et al

Patent Trial and Appeal Board

Dec 20, 2013

10949684 (P.T.A.B. Dec. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SEAN J. MARTIN,
SIMON L. MARTIN, and CHETAN R. MURTHY
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Appeal 2011-004038
Application 10/949,684
Technology Center 2100
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Before LORA M. GREEN, ERICA A. FRANKLIN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims to
methods, systems, computer products and services for displaying a transient
state of an annotated web application view and/or annotating a transient state
of a computer displayed web application. The Patent Examiner rejected the
claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 Appellants identify the Real Party in Interest as International Business
Machines Corporation of Armonk, New York. (See App. Br. 3.)
Appeal 2011-004038
Application 10/949,684

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STATEMENT OF THE CASE
Claims 2, 5-12, and 38-65 are on appeal. Claim 7 is representative
and reads as follows:
7. A method for displaying a transient state of an annotated web
application view for which there is no persistent object against which the
annotation can be referenced wherein the application state has changed, the
method comprising the steps of:
initiating an annotation session by invoking an annotation application
which displays the application at its home state with annotations available
for the application;
selecting from the displayed annotations, an annotation for relating the
annotation to a displayable application view as the displayable application
exists at a given time;
retrieving the selected annotation, annotation key, and application
state information from the annotation database;
applying, with a computer, directives derived from the retrieved
application state information within a URL to navigate to the transient state
defined by the application state information to achieve the state of the
application program at the time the original annotation is retrieved from the
annotation database to impel the application to that state after which the
annotation can be shown in the correct context; and
displaying the application at the application state determined by the
application state information.

(Emphasis added.)

The Examiner rejected claims 2, 5-12, and 38-65 under 35 U.S.C.
§102(e) as anticipated by Altman.2

ANTICIPATION
The Examiner found that Altman anticipates the claimed inventions.
(See Ans. 3-10.) According to the Examiner, Altman teaches “the creation

2 Patent No. US 6,721,921 B1 issued to Ian K. Altman, Apr. 13, 2004.
Appeal 2011-004038
Application 10/949,684

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of annotations and view changes based upon the user based selections.
Altman provides the essential steps of the claims and therefore teaches a
method for displaying different views based upon annotations.” (Id. at 10.)
Appellants contend that Altman differs from the claimed invention in
that it “discloses a method and system for generating workflow messages
based on adding annotations to a file repository or database independent of
an original document that they annotate,” rather than displaying a transient
state of an annotated web application view wherein the application has
changed. (App. Br. 19.) In particular, Appellants assert “[t]here is no
teaching or suggestion in Altman for an annotation key and application state
information stored or retrieved in the annotation database, as claimed.” (Id.
at 20.) Specifically, independent claims 7, 47, and 59 recite, in part,
“retrieving the selected annotation, annotation key, and application state
information from the annotation database,” and independent claims 38, 41,
and 53 recite, in part, “saving the created annotation key, the state
information for recreating the second web applications view and the created
annotation record in an annotation store.” (Id.; see also id. at 22-30, App’x.
of Claims.)
After considering the evidence and arguments, we conclude that the
Examiner has not established that Altman anticipates the claimed inventions
for the reasons set forth by Appellants. (See App. Br. 19-21.) “A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987).
REVERSED
Appeal 2011-004038
Application 10/949,684

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