Ex Parte Murata

Patent Trial and Appeal Board

Mar 19, 2014

11498293 (P.T.A.B. Mar. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/498,293 08/01/2006 Robert S. Murata AD01.P490 7837
111003 7590 03/19/2014
Adobe / Finch & Maloney PLLC
50 Phillippe Cote Street
Manchester, NH 03101
EXAMINER
BURKE, TIONNA M
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
03/19/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBERT S. MURATA1
__________

Appeal 2011-012439
Application 11/498,293
Technology Center 2100
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and
ULRIKE W. JENKS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to a
method of identifying a group of websites or documents, referred to in a first
electronic document, that the user desired to capture. The claims been
rejected as anticipated or obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 Appellant identifies the Real Party in Interest as Adobe Systems
Incorporated (App. Br. 1).
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STATEMENT OF THE CASE
“Electronic documents, or pages within such documents, can include
references or links to other locations in a page or document, or to other
pages or documents, which may be available locally or at remote locations
on a network, such as web pages located on the World Wide Web” (Spec.
1:17-20). “Content management programs, such as Adobe Acrobat®, allow
users to capture or download web pages for viewing at a later time . . . [but]
conventional programs provide limited options for selecting what content to
capture.” (Id. at 2:13-21.)
The Specification discloses “select[ing] links for capture based on the
layout of the content rather than just the location of the content in the HTML
code. Instead of selecting links individually, the user can define an area of
interest that corresponds to multiple links.” (Id. at 3:17-19.) “An area of
interest is a user-defined region, such as a rectangle or other shaped region,
that frames a portion or portions of the content in the electronic document.
The area of interest is not required to conform to selection areas that may be
pre-defined in the document, such as hotspots or text strings.” (Id. at 5:12-
15.)
Claims 43-45, 47-51, 53-57, and 59-63 are on appeal.2 Claim 43 is
illustrative and reads as follows:
43. A computer-implemented method comprising:
receiving input defining an area of interest within a graphical user
interface presenting electronic data including a first electronic document, the
first electronic document including references, the first electronic document
including pre-defined selection areas, the area of interest being defined

2 Claims 29-33 have been allowed (Ans. 2).
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independently of the pre-defined selection areas and is less than an entire
area of the first electronic document;
identifying a proper subset of the references included in the first
electronic document, the identifying comprising correlating the area of
interest with the references within the graphical user interface; and
manipulating multiple second electronic documents corresponding to
the proper subset of the references.

Claims 49 and 55, the other independent claims, are directed
respectively to a computer program product and a system, and include
essentially the same limitations as claim 43.
DISCUSSION
Issue
The Examiner has rejected claims 43-45, 47-51, 53-57, 59, and 60
under 35 U.S.C. § 102(b) as anticipated by Gerasoft3 (Ans. 4). The
Examiner has rejected claims 61-63 under 35 U.S.C. § 103(a) as obvious
based on Gerasoft and Porter4 (Ans. 8). Appellant has waived any
arguments directed to the § 103 rejection, so both rejections involve the
same issues.
The Examiner finds that Gerasoft discloses all of the limitations of
claim 43, including “an area of interest [that is] . . . defined independently of
the pre-defined selection areas” in its description of “highlight an area of
interest containing all relevant URL links” (id. at 4-5).

3 GERASoft, PageSaver 4.0 for Windows 9x/NT4/Me/2000, MSIE 5.0
http://web.archive.org/web/20010926015212/http://www.gerasoft.com/ (last
visited Aug. 20, 2002).
4 Porter, US 6,476,827 B1, patented Nov. 5, 2002.
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Appellant contends that defining an area of interest “independently of
the pre-defined selection areas,” as claimed, does not include a method of
selecting based on selecting text, as disclosed by Gerasoft (App. Br. 6-7),
and that Gerasoft is not enabling for defining an area of interest that is
independent of pre-defined selection areas (id. at 7-8).
The issues presented are whether the broadest reasonable
interpretation of the claims encompasses the method of selecting described
by Gerasoft and, if so, whether Appellant has provided an adequate showing
to establish that the reference would not have enabled a person of ordinary
skill in the art to practice what it describes.
Findings of Fact
1. The Specification states that “references . . . represent links to
other electronic documents” (Spec. 4:20-21).
2. The Specification states that “[r]eferences 220 can include
hyperlinks embedded in the electronic document 150, including text strings
or hot spots” (id. at 4:25-26).
3. The Specification states that an “area of interest is a user-defined
region, such as a rectangle or other shaped region, that frames a portion or
portions of the content in the electronic document” (id. at 5:12-13).
4. The Specification states that “selection areas that may be pre-
defined in the document” include “hotspots or text strings” (id. at 5:14-15).
5. Gerasoft describes PageSaver 4.0, a “plug-in to MS Internet
Explorer that will make saving multiple-paged documents as easy and fast as
a snap” (Gerasoft 1).
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6. Gerasoft states that “[a]ll that you need to do to save a document
with PageSaver - just to choose the link and make a right mouse click” (id.).
7. Gerasoft states that a user can also “hit PageSaver Icon that will be
placed after installation on MS Internet Explorer toolbar and you’ll see all
links that are on current page in convenient drop-down menu” (id.).
8. Gerasoft states: “When you need at the same time save number of
links - just highlight the area that contains links that are interesting for you
and make right mouse click” (id.).
Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
“[A] prior art printed publication cited by an examiner is
presumptively enabling barring any showing to the contrary by a patent
applicant.” In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012).
“As long as an examiner makes a proper prima facie case of
anticipation by giving adequate notice under § 132, the burden shifts to the
applicant to submit rebuttal evidence of nonenablement.” Id. at 1289.
Analysis
We agree with the Examiner that Gerasoft describes a method that
meets all of the limitations of claim 43. Gerasoft describes a plug-in for
Internet Explorer that allows a user to define (highlight) an area of interest
within an electronic document (Web page) including references (links). The
plug-in then saves the documents that the links refer to; or, in the words of
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claim 43, it identifies a proper subset of the references by correlating the
area of interest with the references and manipulates the documents
corresponding to the proper subset of references.
Appellant argues, however, that “Gerasoft fails to disclose definition
of an area of interest ‘independently of’ the pre-defined selection areas”
(App. Br. 6). Appellant argues that “pre-defined selection areas . . . are
exemplified in the [Specification] as ‘hotspots or text strings’” (id. at 5).
Appellant argues that Gerasoft’s “approach[ ] for how a user can define what
linked-to page(s) that should be stored” (id. at 6), in which “you ‘highlight
the area that contains links that are interesting for you’” (id. at 7),
is no different from the other two in the sense that they are all
based on the user selecting the pre-defined selection areas on
the page. That is, when the user “highlight[s] the area”
according to this approach, the area that is highlighted will be
defined solely by the pre-defined selection areas (e.g., links,
text, or other objects) that it contains.
(Id.)
As we understand it, Appellant’s argument is that, because the
Specification states that one example of a “pre-defined selection area” is
“text strings,” any method of defining an area of interest that is based on
selecting or highlighting text is not encompassed by claim 43. This
argument is not persuasive.
We give claims the broadest reasonable interpretation that is
consistent with the Specification. In re Hyatt, 211 F.3d at 1372. Here, the
Specification states that “pre-defined selection areas” can be “text strings”
(FF 4). It does not say that any and all text on a web page is a “pre-defined
selection area.”
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The Specification also says that “references” can “include hyperlinks
embedded in the electronic document 150, including text strings or hot
spots” (FF 2). See also Spec. 1:22-25 (“[L]inks are often displayed in some
distinguishing manner such as by underlining text with which the link is
associated. A reader viewing a document that includes links can jump to a
linked document or a different part of the same document by activating the
text or a hot spot associated with a link.”).
In the context of the disclosed method, therefore, the “text strings”
referred to in the Specification are “pre-defined selection areas” if they are
associated with links embedded in the electronic document that refer to other
documents, such as other web pages. In other words, “pre-defined selection
areas” include only those text strings that are links to other electronic
documents, such that the user can jump to the linked documents by
activating the linked text strings.
Thus, the broadest reasonable interpretation of the claim language
includes defining an area of interest based on the text of a web page; for
example, highlighting a block of text that includes links that are of interest to
the user. The claims therefore read on the method of “highlight[ing] the area
that contains links that are interesting” (FF 8) that is disclosed by Gerasoft.
Appellant also argues that Gerasoft is not enabling for methods of
selecting that are not based on selecting blocks of text (App. Br. 7-8). This
argument is also unpersuasive, for two reasons. First, as discussed above,
the broadest reasonable interpretation of the claim language includes
defining an area of interest based on blocks of text. Second, Gerasoft is
presumed to enable what it describes and Appellant has pointed to no
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evidence of record to show that practicing the claimed method based on
Gerasoft’s disclosure would have been beyond the ordinary skill in the art.
Conclusion of Law
Gerasoft describes defining an area of interest that is independent of
pre-defined selection areas. Appellant has not provided an adequate
showing to establish that the reference would not have enabled a person of
ordinary skill in the art to practice what it describes.
SUMMARY
We affirm the rejection of claim 43 as anticipated by Gerasoft.
Claims 44, 45, 47-51, 53-57, 59, and 60 have not been argued separately and
therefore fall with claim 43. 37 C.F.R. § 41.37(c)(1)(vii). Appellant has
waived any arguments based on Porter, so we also affirm the rejection of
claims 61-63 as obvious based on Gerasoft and Porter. See Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a
ground of rejection to the Board, . . . the Board may treat any argument with
respect to that ground of rejection as waived . . . [and] affirm the rejection of
the group of claims that the examiner rejected on that ground without
considering the merits of those rejections.”).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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