HONG LI et al.

Patent Trials and Appeals Board

Aug 31, 2021

2020002493 (P.T.A.B. Aug. 31, 2021)

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.
13/535,919 06/28/2012 HONG LI CN920110062US1_8150-0225 2344
112978 7590 08/31/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
BLOOMQUIST, KEITH D
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
08/31/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HONG LI, LEI REN, YUN SHENG WANG, and JUN WEI ZHAO
____________________

Appeal 2020-002493
Application 13/535,919
Technology Center 2100
____________________

Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 seeks our review3 under 35 U.S.C. § 134(a) from the final
rejection of Claims 41–58, all pending claims. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Our Decision refers to Appellant’s Appeal Brief filed October 30, 2019
(“Appeal Br.”); Appellant’s Reply Brief filed February 8, 2020 (“Reply
Br.”); Examiner’s Answer mailed January 27, 2020 (“Ans.”); the Final
Rejection mailed June 17, 2019 (“Final Act.”), and the Specification filed
June 28, 2012 (“Spec.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appeal Brief identifies IBM Corporation, as the real party in interest.
Appeal Br. 1.
3 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Any other arguments which Appellant could
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Application 13/535,919

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We AFFIRM.

STATEMENT OF THE CASE
PRIOR DECISION
In a Decision rendered November 1, 2017 (Appeal 2017-003126), the
present Panel of the Board AFFIRMED the obviousness rejection of claims
26–40, which have been cancelled. Dec. 7.
CLAIMED SUBJECT MATTER
The claims relate to methods for displaying multiple parts of a
document in different languages. See Abstract.
Claims 41, 47, and 53 are independent. Claim 41, reproduced
below with added formatting, is illustrative:
41. A computer-implemented method of presenting a document
using a computer having a first video output port and a second
video output port, comprising:
receiving, by the computer, a single structuralized file
that includes a first portion and a second portion;
outputting, to the first video output port, the first portion
of the structuralized file; and
outputting, to the second video output port, the second
portion of the structuralized file, wherein
the outputting to the first and second video output ports is
performed synchronously,
the document is contained within the single structuralized
file, and

have made but chose not to make in the Briefs are deemed to be forfeit. See
37 C.F.R. § 41.37(c)(1)(iv).
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Application 13/535,919

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the first portion of the structuralized file is within a first
language and the second portion of the structuralized file is
within a second language.

PRIOR ART
Name4 Reference Date
Curtis US 2003/0133041 A1 July 17, 2003
Hanlon US 2005/0022113 A1 Jan. 27, 2005
Ornstein US 2005/0248790 A1 Nov. 10, 2005

REJECTIONS5 AT ISSUE
1. Claims 41, 42, 45–48, 51–54, 57, and 58 stand rejected under
35 U.S.C. ¶ 103(a) as obvious over Curtis and Ornstein. Final Act. 2–
6.
2. Claims 43, 44, 49, 50, 55, and 56 stand rejected under 35 U.S.C.
¶ 103(a) as obvious over Curtis, Ornstein, and Hanlon. Final Act. 6–
8.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We do not find Appellant’s
arguments persuasive with respect to the rejections under § 103.

4 All citations herein to the references are by reference to the first named
inventor/author only.
5 The present application is being examined under the pre-AIA first to invent
provisions. Final Act. 2.
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Application 13/535,919

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CLAIMS 41, 42, 45–48, 51–54, 57, AND 58: OBVIOUSNESS
OVER CURTIS AND ORNSTEIN
Appellant states: “For convenience of the Honorable Board in
addressing the rejections, claims 42, 45-48, 51-54, and 57-58 stand or fall
together with independent claim 41.” Appeal Br. 8. In view of Appellant’s
statement, we decide the appeal of the § 103 rejections on the basis of Claim
41 and refer to the rejected claims collectively herein as “the claims.” See
37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir.
1986). See In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002) (“[T]he
Board is free to select a single claim from each group of claims subject to a
common ground of rejection as representative of all claims in that group and
to decide the appeal of that rejection based solely on the selected
representative claim” in the absence of a clear statement asserting separate
patentability of the claims.).
A single structuralized file
Claim 41 recites, inter alia, “receiving, by the computer, a single
structuralized file that includes a first portion and a second portion.”
The Examiner finds Ornstein teaches a package which is a single file
containing all component pieces of a modular document. Final Act. 3 (citing
Ornstein, ¶ 38).
Appellant contends Ornstein fails to teach the received file is
“necessarily (i.e., inherently) a single file.” Appeal Br. 9 (“Rather, Ornstein
teaches that ‘[w]hile packages often correspond directly to a single file, this
is not necessarily always so’”). Appellant argues the disclosure at Ornstein
paragraph is a generic description of a package, as that term is used in the
art, but that the actual package 200 disclosed by Ornstein is not a single file.
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Appeal Br. 10. Appellant maintains the actual package 200 disclosed by
Ornstein comprises a plurality of files. Id. at 11.
The Examiner finds “the fact that the package is not always a single
file does not change the fact that Ornstein states, ‘A package is a logical
entity that may be represented physically in a variety of ways (e.g . . . . in a
single file . . . ).’” Ans. 9 (quoting Ornstein, ¶ 38). The Examiner further
finds “any of the exemplary packages described in the reference include
packages which exist as a single file, as the reference explicitly states this an
embodiment of a ‘package.’” Id.
Appellant contends: “Notably, the Examiner’s analysis continues to
overread what is actually disclosed by paragraph [0038] of Curtis.”6 Reply
Br. 2. Appellant cites Ornstein:
Often a package will be a single file, referred to in this
application as a container. This gives end-users, for example, a
convenient way to distribute their documents with all of the
component pieces of the document.
Id. (quoting Ornstein, ¶ 38). Ornstein discloses “[a] container provides
many benefits over what might otherwise be a collection of loose,
disconnected files.” Reply Br. 2 (quoting Ornstein, ¶ 40.). Appellant argues
thus, the “single file” of Ornstein is actually a package or container of the
component parts of a document, which themselves are individual files. Id.
(quoting Ornstein, ¶ 168) (“packages hold a collection of parts”).
Ornstein discloses a container comprising parts with the following
names: /markup/page.xml; /images/picture.jpeg; and /images/other_

6 Appellant’s citation to the disclosure of “Curtis,” at page 2 of the Reply
Brief, are to be found in Ornstein. We find this to be harmless error.
Appeal 2020-002493
Application 13/535,919

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picture.jpeg. Ornstein, ¶¶ 73–76. A person of ordinary skill in the art would
recognize the recitations “.xml” and “.jpeg” to be filename extensions
indicative of particular file types and thus, would recognize the disclosed
container comprises three separate files. Thus, we agree with the Examiner
that Ornstein discloses a “container,” i.e., “a single structuralized file,” as
claimed. The Examiner further finds, and we agree, Ornstein teaches that a
package may include separate portions representing document parts in
different languages. Final Act. 3 (citing Ornstein, ¶¶ 127–128).
Accordingly, we are not persuaded the Examiner erred in finding Ornstein
teaches the disputed limitation and thus, are not persuaded the combination
of Curtis and Ornstein fails to render claims 41, 42, 45,–48, 51–54, 57, and
58 obvious.

CLAIMS 43, 44, 49, 50, 55, AND 56:
OBVIOUSNESS OVER CURTIS, ORNSTEIN, AND HANLON
Appellant states:
For convenience of the Honorable Board in addressing the
rejections, claims 43-44, 49-50, and 55-56 stand or fall together
with independent claim [41].7
Claims 43-44, 49-50, and 55-56 respectively depend
from independent claims 41, 47, and 53, and Appellants
incorporate herein the arguments previously advanced in
traversing the imposed rejection of claims 41, 47, and 53 under
35 U.S.C. § 103 for obviousness based upon Curtis and
Ornstein.
Appeal Br. 17.

7 Appellant refers to claim 26; however, claim 26 is not pending. We find
reference thereto is a typographical error with intent to reference Claim 41.
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In view of the foregoing, for the reasons set forth above, we are not
persuaded the Examiner errs in determining claims 43, 44, 49, 50, 55, and 56
are obvious over the combination of Curtis, Ornstein, and Hanlon.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
41, 42, 45–
48, 51–54,
57, 58
103 Curtis, Ornstein 41, 42, 45–48,
51–54, 57, 58

43, 44, 49,
50, 55, 56
103 Curtis, Ornstein,
Hanlon
43, 44, 49, 50,
55, 56

Overall
Outcome
41–58

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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2013).

AFFIRMED