Ex Parte Sellman

Patent Trial and Appeal Board

Apr 17, 2014

11432560 (P.T.A.B. Apr. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROYSTON SELLMAN

__________

Appeal 2012-000371
Application 11/432,560
Technology Center 2100
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
of exporting a document structure from an electronic document
representation containing multiple document structures. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the Real Party in Interest as Hewlett-Packard
Development Company, L.P. (See App. Br. 3.)
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Application 11/432,560

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Statement of the Case
Background
“Text editors and layout design tools are used to design the documents
for publication. These text editors and layout design tools obtain content
from a Content Management System (CMS), and some CMS applications
allow the tagging of content” (Spec. 1, ll. 28-31). According to the
Specification, content tags may be “lost when data is exchanged between
different Content Management Systems, for example if different systems are
used by different publishers between which content is to be syndicated”
(Spec. 2, ll. 2-4).
The Specification teaches “enabling the export of a document
structure, such as a story, article or advertisement from a document editing
software package into a neutral, platform-independent format, whilst
preserving attributes such as layout, style and relative positioning of
document portions” (Spec. 5, ll. 19-23).
The Claims
Claims 1-28 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of exporting a document structure from an
electronic document representation containing multiple
document structures, wherein the document structure to be
exported includes a plurality of independently selectable
document portions of a whole or a part of the electronic
document representation, the method comprising:
in a document editing tool, receiving a selection of
multiple ones of the plurality of independently selectable
document portions of the document structure to be exported
from only the part and not the whole of the electronic
document representation, wherein the selected multiple
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document portions include at least one text document
portion;
in the document editing tool, grouping and preparing
the selected multiple document portions as code comprising
XML code which identifies the structure and style of the text
within each text document portion and which identifies the
geometry of the multiple document portions;
storing the code and the text content in a format which
is independent of the document editing tool.

The issues
A. The Examiner rejected claims 1-6, 8, 9, 22-25, and 28 under
35 U.S.C. § 103(a) as obvious over Exegenix2 and Uchiyama3 (Ans. 4-9).
B. The Examiner rejected claims 7 and 26 under 35 U.S.C. § 103(a) as
obvious over Exegenix, Uchiyama, and Xplor4 (Ans. 10).
C. The Examiner rejected claims 10, 11, 13-17, 19, and 20 under
35 U.S.C. § 103(a) as obvious over Exegenix and Adobe5 (Ans. 11-13).
D. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious
over Exegenix, Uchiyama, Adobe, and Ross6 (Ans. 14).

2 Exegenix, Exegenix Technology Overview,
http://www.exegenix.com/media/pdf/exegenix_technology_overvi
ew.pdf 1-4 (2004).
3 Uchiyama et al., US 2005/0066271 A1, published Mar. 24, 2005.
4 Xplor International Southern California Chapter,
http://regions.xplor.org/SouthernCalifornia/PDF/MtgMinutes/2003
- 0925MtgMinutes.pdf 1-6 (Sept. 25, 2003) (hereinafter referred to
as “Xplor”).
5 Adobe InDesign 2.0, Using XML in Adobe InDesign,
www.adobe.com/products/indesign/pdfs/UsingXML.pdf 1-11 (Jan.
2002) (hereinafter referred to as “Adobe”).
6 Ross et al., US 6,026,417, issued Feb. 15, 2000.
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E. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as obvious
over Exegenix, Uchiyama, Adobe, and Xplor (Ans. 15).
F. The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as obvious
over Exegenix, Uchiyama, Adobe, and Design7 (Ans. 15).
G. The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as obvious
over Exegenix, Uchiyama, and Maffezzoni8 (Ans. 16).
A. 35 U.S.C. § 103(a) over Exegenix and Uchiyama
The Examiner finds that “Exegenix discloses a method of exporting a
document structure from an electronic document representation containing
multiple document structures, where the document structure to be exported
includes a plurality of independently selectable document portions” (Ans. 5).
The Examiner finds that Exegenix “does not disclose where the portion of
the document structure to be exported from only the part and not the whole
of the electronic document representation” (Ans. 6-7). The Examiner finds
that “it was well known in the art to allow for a portion of a document to be
selected for exportation, as taught by Uchiyama” (Ans. 7).
The Examiner finds it obvious “to modify Exegenix, by allowing for
portions of a document to be selected and stored for later formatting, as
taught by Uchiyama, for the purpose of identifying individual portions of an
electronic document” (Ans. 7).

7 Architecture Design II,
http://isc.temple.edu/arch132/01A03PW-Quark.html, 1-2 (Jan. 8
2003) (hereinafter referred to as “Design”).
8 Maffezzoni, G., US 7,149,978 B1, issued Dec. 12, 2006.
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Exegenix and Uchiyama render
claim 1 obvious?
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Findings of Fact
1. Exegenix teaches that
The ECS Inspector offers a unique preview into the
conversion process, enabling further streamlining via user-
directed action if required, and allowing the user to add
value to the converted content, or specify how ambiguous
input should be structured. Before any XML is generated, a
user can examine the structures and text that the ECS Engine
has automatically identified. Results are presented in an
intuitive single window so there is no need to open the
original document in the application it was created with, and
compare it with the XML output.

(Exegenix 2, col. 1-2.)
2. Exegenix teaches that “Exegenix Conversion Solutions convert
into XML any file that can be printed to PostScript™ or PDF. Our
extensible, modular technology is easily adapted to meet the content
conversion needs of any organization” (Exegenix 1).
3. Exegenix teaches an “intuitive interface that enables users at
any technical level of expertise to take control of the conversion process via
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user-directed actions, if required. Authors can examine structures and text
identified by the ECS Engine, and add value to the output XML prior to
export” (Exegenix 1).
4. Exegenix teaches that “[a]ll content goes through four processes
within the ECS Engine in order to uncover the document’s structure and
generate valid XML that can then be transformed to meet specific customer
needs” (Exegenix 1).
5. Exegenix teaches that the “Structure Identification phase places
these basic building blocks into a tree structure. This phase identifies
sections, paragraphs, quotes, lists, tables, footnotes, and other graphical
objects, and forms a complete, cohesive, internal representation of the
structured document” (Exegenix 2, col. 1).
6. Exegenix teaches to “[c]onsolidate your conversion processes
around a single technology, with no need to maintain software from multiple
vendors for individual file formats. Configuration is not required for every
different input document type” (Exegenix 3, col. 2).
7. Uchiyama teaches where “the system for selecting and
extracting a portion of a structured document such as an HTML document
detects an end node of a tree structure that corresponds to a position
indicated by a user on the screen displaying the structured document”
(Uchiyama 2 ¶ 0021).
8. Uchiyama teaches:
[A] portion selecting unit 1 for receiving instruction from a
user that selects a portion in a structured document, a
portion-information storage unit 2 for storing information
about the selected portion, a document-structure analyzing
unit 3 which identifies a partial tree in the tree structure by
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use of tags and associated format attributes, and a portion
identifying unit 4 for returning a document portion
corresponding to the selected portion upon user request.

(Uchiyama 3 ¶ 0060.)
9. Uchiyama teaches that “a user may wish to select portions of
particular interest from Web pages that the user is familiar with, putting
these portions together to create a collection of information which allows the
user to readily view only necessary information” (Uchiyama 1 ¶ 0004).
Analysis
We adopt the Examiner’s findings regarding the scope and content of
the prior art (Ans. 4-19; FF 1-9) and agree that the claimed method for
exporting a document structure would have been obvious in view of
Exegenix and Uchiyama. We address Appellant’s arguments below.
Appellant contends that
[E]ven if it was well known in the art that a portion of a
document could be selected for exportation, such well
known fact would not have worked for Exegenix because, as
discussed above, in Exegenix, the entire PDF document
must be captured and converted into the HTML document.
Thus, selecting a portion of the PDF document would not
have worked for Exegenix.

(App. Br. 11-12.)
We find this argument unpersuasive. Appellant has not established,
with evidence, that Exegenix must capture the entire PDF document to
function, and may not simply capture a selected portion of a PDF document.
Appellant does not identify a component, function, or element in Exegenix
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which would prevent the software from operating on a selected portion of a
document.
In addition, Exegenix specifically teaches a “Structure Identification
phase” which “identifies sections, paragraphs, quotes, lists, tables, footnotes,
and other graphical objects, and forms a complete, cohesive, internal
representation of the structured document” (Exegenix 2, col. 1; FF 5). Since
Exegenix is reasonably interpreted as analyzing sections and paragraphs of
an entire document (FF 5), we agree with the Examiner’s finding that it
would have been obvious for the ordinary artisan to allow “for portions of a
document to be selected and stored for later formatting” (Ans. 7). “A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421.
Appellant contends that the
[S]election of a portion of a document disclosed in
Uchiyama would not have worked for the system in
Exegenix because the system in Exegenix does not convert a
HTML document into a tree structure like Uchiyama.
Instead, the system of Exegenix converts a PDF document
into a HTML document. Thus, one skilled in the art would
not have used the disclosure of Uchiyama for the system of
Exegenix.

(App. Br. 12.)
We are not persuaded. Exegenix teaches that the “Structure
Identification phase places these basic building blocks into a tree structure”
(Exegenix 2, col. 1; FF 5). Similarly, Uchiyama teaches “a document-
structure analyzing unit 3 which identifies a partial tree in the tree structure
by use of tags and associated format attributes, and a portion identifying unit
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4 for returning a document portion corresponding to the selected portion
upon user request” (Uchiyama 3 ¶ 0060; FF 8). Thus, both Exegenix and
Uchiyama teach that the structure analyzing portions of the software
function by generating tree structures (FF 5, 7, 8), and Uchiyama teaches a
unit which functions to identify a “selected portion” when requested (FF 8).
Further, the Examiner is not necessarily suggesting the bodily
incorporation of Uchiyama’s process into the method of Exegenix, but
simply relying upon Uchiyama to demonstrate that “a user may wish to
select portions of particular interest . . . which allows the user to readily view
only necessary information” (Uchiyama 1 ¶ 0004; FF 9). See In re Keller,
642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”) Here, the combined teachings of Exegenix and Uchiyama
would have suggested selection of portions of an entire document for
conversion and analysis (FF 2-5, 9).
Appellant contends that the
[S]ystem in Uchiyama does not select a plurality of portions
of a document, as recited in claim 1. Thus, Uchiyama fails
to teach or suggest “in a document editing tool, receiving a
selection of multiple ones of a plurality of independently
selectable document portions of the document structure to be
exported from only the part and not the whole of an
electronic document representation,” as recited in
independent claim 1.

(App. Br. 13.)
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We are not persuaded. As already pointed out, Uchiyama teaches that
“a user may wish to select portions of particular interest . . . which allows
the user to readily view only necessary information” (Uchiyama 1 ¶ 0004;
FF 9). Uchiyama’s use of the plural “portions,” rather than the singular,
reasonably suggests that Uchiyama recognizes that a plurality (i.e. two or
more) portions of a document may be selected (FF 9). We therefore agree
with the Examiner’s finding that
[S]ince Uchiyama discloses the functionality of performing
of selecting a portion of a document once, it would have
been obvious for one of ordinary skill in the art to be able to
perform the functionality again of selecting another portion
since it would have provided the benefit of allowing a user
to readily view only necessary information the user wishes
to read when only selecting portions of a document.

(Ans. 18.)
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Exegenix and Uchiyama render claim 1 obvious.
B-G. 35 U.S.C. § 103(a)
These rejections rely upon the underlying obviousness rejection over
Exegenix and Uchiyama. Appellant provides no separate arguments specific
for the remaining rejections and claims at issue, instead relying upon the
argument that the remaining claims “are believed to be allowable over the
cited documents of record for at least the same reasons as set forth above in
connection with independent claims 1 and 22” (App. Br. 14). Since we did
not find those reasons persuasive for claim 1 for the reasons given above, we
affirm these rejections for the reasons given by the Examiner.
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SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Exegenix and Uchiyama. Pursuant to 37 C.F.R.
§ 41.37(c)(1), we also affirm the rejection of claims 2-6, 8, 9, 22-25, and 28,
as these claims were not argued separately.
We affirm the rejection of claims 7 and 26 under 35 U.S.C. § 103(a)
as obvious over Exegenix, Uchiyama, and Xplor.
We affirm the rejection of claims 10, 11, 13-17, 19, and 20 under
35 U.S.C. § 103(a) as obvious over Exegenix and Adobe.
We affirm the rejection of claim 12 under 35 U.S.C. § 103(a) as
obvious over Exegenix, Uchiyama, Adobe, and Ross.
We affirm the rejection of claim 18 under 35 U.S.C. § 103(a) as
obvious over Exegenix, Uchiyama, Adobe, and Xplor.
We affirm the rejection of claim 21 under 35 U.S.C. § 103(a) as
obvious over Exegenix, Uchiyama, Adobe, and Design.
We affirm the rejection of claim 27 under 35 U.S.C. § 103(a) as
obvious over Exegenix, Uchiyama, and Maffezzoni.

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

cdc