International Business Machines Corporation

Patent Trials and Appeals Board

May 10, 2021

2020001400 (P.T.A.B. May. 10, 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.
14/631,890 02/26/2015 Nicholas A. Baldwin AU920140005US2 1551
106324 7590 05/10/2021
IBM Corporation - Patent Center
1701 North Street
B256/3
Endicott, NY 13760
EXAMINER
BARNES JR, CARL E
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
05/10/2021 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):
fdciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS A. BALDWIN, MARK C. HAMPTON,
STEFAN A. HEPPER, and ERIC MARTINEZ de MORENTIN
____________

Appeal 2020-001400
Application 14/631,890
Technology Center 2100
____________

Before CATHERINE SHIANG, NORMAN H. BEAMER, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, 4–9, and 11–13, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest
as International Business Machines Corporation. Appeal Br. 1.
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STATEMENT OF THE CASE
The Invention
The Specification states that the “invention relates to content
management systems and, more particularly to, dynamic consolidation
of web contents between web management systems and digital asset
management systems.” Spec. ¶ 1.2 The Specification explains that
embodiments of the invention include systems for defining “in a template
of” a web content management system (WCMS) “a location for storing, and
retrieving multi-media contents, or images of” a digital asset management
system (DAMS). Id. ¶ 13. The Specification also explains that the “system
further creates, via an administrative interface, a library of reusable image
components, in the defined template location, for consolidating, or mapping,
in one instance, the created reusable image components with the multi-media
contents, or images, transmitted between the DAMS and the WCMS.” Id.
According to the Specification, “the library of reusable image components
is a collection of web contents, or meta data, including, image contents, or
HTML elements, such as, images, web image identifiers, tables, or plain
text, or rich text elements of the web contents, that are created for a web
content collection of the WCMS.” Id.

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed February 26, 2015; “Final Act.” for the Final Office
Action, mailed December 14, 2018; “Advisory Act.” for the Advisory
Action, mailed March 20, 2019; “Appeal Br.” for the Appeal Brief, filed
June 13, 2019; “Ans.” for the Examiner’s Answer, mailed October 21, 2019;
and “Reply Br.” for the Reply Brief, filed December 10, 2019.
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Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads
as follows (with formatting added for clarity):
1. A computer system for consolidating reusable image
components with multi-media contents, between a digital asset
management environment and a web content management
environment, the computer system comprising:
one or more processors,
one or more computer-readable memories,
one or more computer-readable tangible storage devices
and
program instructions which are stored on at least one
of the one or more storage devices for execution by at least
one of the one or more processors via at least one of the one
or more memories, the program instructions comprising:
program instructions to define a location in
a content template of a web content management
environment for storing a library of reusable image
components and multi-media contents of a digital
asset management environment,
wherein the multi-media contents comprise
multiple versions of multi-media files comprising
an active version and all previous versions of
multi-media files of the multi-media contents,
wherein the defined location is configured
to consolidate the library of reusable image
components with the multi-media contents,
wherein the library of reusable image
components includes component identifiers
of the at least one multi-media content, and
wherein the component identifiers include
web content tables, web content lists, or web
content text elements, that are compiled for
storing, editing, or deploying multi-media contents
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of the at least one multi-media content in the web
content management environment;
program instructions to receive at least one multi-
media content for storage in the digital asset management
environment;
program instructions to if [sic] the received at least
one multi-media content is present in the defined location
of the content template,
wherein the determination is based on search
of component identifiers of the library of reusable
image components, the component identifiers
include web content tables, web content lists, or
web content text elements, that are compiled for
storing, editing, or deploying the multi-media
contents within digital asset management
environment; and
program instructions to consolidate and link, by
the one or more processors, the received at least one
multi-media content with the determined present at least
one multimedia content,
wherein consolidating comprises mapping
each link to a single instance of the at least one
multi-media content,
wherein the single instance of the at least
one multimedia content is linked to an active
version of the reusable image components
associated with the at least one multimedia
content, and
wherein linking comprises retrieving the
active version of the reusable image components
linked to the at least one multi-media content from
the library of reusable image components to the
defined location, and
wherein linking the active version of the
reusable image components to the at least one
multi-media content further comprises displaying
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the active version of the reusable image
components through web content management
environment, to a website.
Appeal Br. 20–21 (Claims App.).
The Evidence Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
publications and patent:
Name Reference Date
Smolen et al. (“Smolen”) US 2007/0260621 A1 Nov. 8, 2007
Wilkins US 2008/0263467 A1 Oct. 23, 2008
Baer et al. (“Baer”) US 2009/0157711 A1 June 18, 2009
Reech et al. (“Reech”) US 2012/0079450 A1 Mar. 29, 2012
Trieloff et al. (“Trieloff”) US 2014/0032577 A1 Jan. 30, 2014
Baldwin et al. (“Baldwin”) US 10,120,855 B2 Nov. 6, 2018
The Rejections on Appeal
Claims 1, 2, 4–9, and 11–13 stand rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1–6 in Baldwin.
Final Act. 8–11.
Claims 1, 2, 4–9, and 11–13 stand rejected under 35 U.S.C. § 103
as unpatentable over Wilkins, Reech, Baer, Trieloff, and Smolen. Final
Act. 12–34; Appeal Br. 6.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner’s conclusions concerning unpatentability due to double
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patenting but disagree with the Examiner’s conclusions concerning
unpatentability under § 103.
The Double-Patenting Rejection
Appellant does not contest—or even acknowledge—the double-
patenting rejection. See Appeal Br. 10–19; Reply Br. 2–8. Because
Appellant does not contest the double-patenting rejection, we summarily
sustain that rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008) (explaining that “[w]hen 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”); see also Manual of Patent Examining
Procedure (MPEP) § 1205.02 (9th ed. rev. 08.2017 Jan. 2018) (“If a ground
of rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).
The § 103 Rejection
ASSERTED VIOLATION OF 35 U.S.C. § 132
Appellant asserts that the Examiner fails to satisfy § 132’s notification
requirements because “it is unclear how the 5 cited references could be
combined using the rationale stated by the Examiner.” Appeal Br. 14. Also,
citing Dann v. Johnston, 425 U.S. 219 (1976), In re Urbanski, 809 F.3d
1237 (Fed. Cir. 2016), and In re Nilssen, 851 F.2d 1401 (Fed. Cir. 1988),
Appellant asserts that “the Examiner misconstrues the facts of the cases.”
Id. at 12–14. In addition, Appellant contends that there is (1) a “complete
lack of explicit articulation of the motivation to combine” in the Final Office
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Action and (2) a “complete disregard for the basis of motivation” in the
Advisory Action. Reply Br. 5.
We disagree that the Examiner fails to satisfy § 132’s notification
requirements. An examiner violates § 132 “when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990). No such violation occurred here.
In the Final Office Action, the Examiner determined that the
“motivation to combine Wilkins, Reech, Baer, Trieloff and Smolen would
be to efficiently manag[e] hierarchical content to create, modify, use and
distribute electronic content.” Final Act. 20, 31. The Examiner explained
that an ordinarily skilled artisan (1) “would have been motivated to make
such a combination because all of the claimed elements were known in the
prior art” and (2) “could have combined the elements as claimed by known
methods (e.g. searching, storing and transmitting) with no change in their
respective functions (e.g. digital content management).” Id. at 20, 31. The
Examiner also explained that “the combination would have yielded
predictable results to one of ordinary skill in the art at the time of the
invention (e.g. automatically track and retrieve required digital
components).” Id. at 20, 31.
In the Advisory Action, the Examiner provided more information
about the motivation to combine. See Advisory Act. 2–3. In the Answer,
the Examiner provided even more information about the motivation to
combine. See Ans. 4–40; Reply Br. 4–5 (quoting the Examiner’s statements
in the Answer about the motivation to combine).
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Even if the Examiner’s statements in the Final Office Action about the
motivation to combine were deficient, the additional information in the
Advisory Action and the Answer “would have put any reasonable applicant
on notice of” the rejection. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011). In light of the additional information in the Advisory Action and the
Answer, the rejection was not “so uninformative that it prevent[ed] the
applicant from recognizing and seeking to counter the grounds for
rejection.” See Chester, 906 F.2d at 1578.
In fact, Appellant did “seek[] to counter the grounds for rejection.”
See Appeal Br. 11–14; Reply Br. 6–7. Specifically, Appellant presented
arguments in the Appeal Brief “seeking to counter” the Examiner’s position
in the Advisory Action. See Appeal Br. 11–14 (discussing Dann, Urbanski,
Nilssen, and MPEP § 2143(D)). Additionally, Appellant presented
arguments in the Reply Brief “seeking to counter” the Examiner’s position
in the Answer. See Reply Br. 6–7.
Appellant argues that the Answer changes the “basic thrust of the
rejection” and constitutes a new ground of rejection. Reply Br. 2 (quoting
In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976)). But Appellant did not
petition the Director to request review of the Examiner’s alleged failure
to designate a new ground of rejection in the Answer. See 37 C.F.R.
§ 41.40(a). Instead, Appellant submitted the Reply Brief “seeking to
counter” the Examiner’s position in the Answer. See Reply Br. 6–7.
Appellant’s failure to petition the Director “constitute[s] a waiver of any
arguments that a rejection must be designated as a new ground of rejection.”
37 C.F.R. § 41.40(a).
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INDEPENDENT CLAIMS 1 AND 8:
“PROGRAM INSTRUCTIONS TO CONSOLIDATE AND LINK”
As noted above, the § 103 rejection of independent claims 1 and 8
rests on Wilkins, Reech, Baer, Trieloff, and Smolen. See Final Act. 12–20,
24–31. Appellant argues that the Examiner erred in rejecting the claims
because the references fail to teach or suggest the following limitation in
each claim:
program instructions to consolidate and link, by the one or more
processors, the received at least one multi-media content with
the determined present at least one multimedia content,
wherein consolidating comprises mapping each link to a single
instance of the at least one multi-media content, wherein the
single instance of the at least one multimedia content is linked
to an active version of the reusable image components
associated with the at least one multimedia content, and
wherein linking comprises retrieving the active version of the
reusable image components linked to the at least one multi-
media content from the library of reusable image components to
the defined location, and wherein linking the active version of
the reusable image components to the at least one multi-media
content further comprises displaying the active version of the
reusable image components through web content management
environment, to a website.
See Appeal Br. 14–16; Reply Br. 6–7. The Examiner cites the combined
disclosures in Trieloff and Smolen as teaching or suggesting the disputed
limitation in claims 1 and 8. See Final Act. 17–20, 29–31; Ans. 10–14,
24–28, 36–39.
Appellant asserts that Trieloff discloses “tracking and analytics of
components located on a webpage” and a consolidation component that
provides “analytics consolidation.” Appeal Br. 15–16 (citing Trieloff ¶¶ 35,
45–47). According to Appellant, Trieloff “describes an application in which
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elements of a web page are mapped to underlying data structures so that
interactions between the web page and users of the web page can be tracked
and analyzed using a different service.” Reply Br. 6. Further, Appellant
asserts that Smolen discloses “a heirachical [sic] searching structure, where
an aggregate entry (the alleged active version) is an intermediate catalog
with links for a user to navigate to an asset.” Appeal Br. 16.
In response, the Examiner finds that Trieloff discloses “a mapping
based a [sic] on selection of events or properties of the component to map
to corresponding data elements to be tracked by an analytics service.” Ans.
10–11, 24–25, 36 (emphasis omitted) (quoting Trieloff ¶ 5). Further, the
Examiner finds that Smolen discloses “mapping each link to a single
instance of the at least one multi-media content” such that “the single
instance of the at least one multimedia content is linked to an active version
of the reusable image components associated with the at least one
multimedia content” as claimed. Id. at 13, 27, 38–39 (citing Smolen ¶¶ 118,
244–247).
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Trieloff
and Smolen teach or suggest the disputed limitation in claims 1 and 8.
Trieloff discloses mapping component properties to data elements for
tracking by an analytics service. See Trieloff ¶¶ 5, 35, 45–48, Fig. 8.
Smolen discloses mapping assets and catalog entries to physical storage
locations. See Smolen ¶¶ 78, 244–247. The Examiner offers no explanation
how mapping according to Trieloff, Smolen, or the combination corresponds
to “mapping each link to a single instance of the at least one multi-media
content” such that “the single instance of the at least one multimedia content
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is linked to an active version of the reusable image components associated
with the at least one multimedia content” as claimed. See Final Act. 17–20,
29–31; Ans. 10–14, 24–28, 36–41.
Because the Examiner has not adequately explained how the cited
portions of Trieloff and Smolen teach or suggest the disputed limitation in
claims 1 and 8, we do not sustain the § 103 rejection of claims 1 and 8.3
DEPENDENT CLAIMS 2, 4–7, 9, AND 11–13
Claims 2 and 4–7 depend from claim 1, and claims 9 and 11–13
depend from claim 8. For the reasons discussed for claims 1 and 8, we
do not sustain the § 103 rejection of claims 2, 4–7, 9, and 11–13.
Because the preceding determinations resolve the § 103 rejection
for all pending claims, we need not address Appellant’s other arguments
regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency may
render a decision based on “a single dispositive issue”).
CONCLUSION
We affirm the rejection of claims 1, 2, 4–9, and 11–13 on the ground
of nonstatutory double patenting.

3 In the event of continued prosecution, the Examiner should consider the
propriety of a rejection under 35 U.S.C. § 112(b) for claims 1 and 8 because
the language “program instructions to if the received at least one multi-
media content is present in the defined location” appears to omit one or more
words, e.g., “determine,” between the words “to” and “if.” In any event, the
phrases “the determination” and “the determined present at least one
multimedia content” in each claim lack an antecedent basis. While the
Board has discretion to enter a new ground of rejection, no inference should
be drawn from a failure to exercise that discretion. See 37 C.F.R.
§ 41.50(b); MPEP § 1213.02.
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We reverse the rejection of claims 1, 2, 4–9, and 11–13 under
35 U.S.C. § 103.
Because we affirm at least one ground of rejection for each claim
on appeal, we affirm the Examiner’s decision to reject all of the claims
on appeal. See 37 C.F.R. § 41.50(a)(1).
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–9,
11–13
Nonstatutory
Double Patenting
1, 2, 4–9,
11–13
1, 2, 4–9,
11–13 103
Wilkins, Reech,
Baer, Trieloff,
Smolen
1, 2, 4–9, 11–13
Overall
Outcome
1, 2, 4–9,
11–13
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)(1)(iv).
See 37 C.F.R. § 41.50(f).
AFFIRMED