O'Sullivan, Patrick J. et al.

Patent Trials and Appeals Board

Feb 11, 2020

12015270 - (D) (P.T.A.B. Feb. 11, 2020)

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.
12/015,270 01/16/2008 Patrick J. O'Sullivan RSW920070483US1 2063
106324 7590 02/11/2020
IBM Corp. - Fishkill Drafting Center
SVL
650 Harry Road, Almaden Research Center
C4TA/J2B
San Jose, CA 95120
EXAMINER
ELL, MATTHEW
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
02/11/2020 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 PATRICK J. O’SULLIVAN, EDITH H. STERN,
ROBERT C. WEIR, and BARRY E. WILLNER
____________

Appeal 2019-001130
Application 12/015,270
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3–8, 10, 12–14, 16, 18, and 20, which are all the claims pending in
this application. Claims 2, 9, 11, 15, 17, and 19 are canceled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to Applicant as defined in 37 C.F.R.
§ 1.42(a). The real party in interest is International Business Machines
Corporation. Appeal Br. 2.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention “relates to the field of bookmarking
content and more particularly to social bookmarking.” Spec. ¶ 3.
Exemplary Independent Claim 1
1. A method for automatically surfacing tagged
content adjunct to a vertical application, the method
comprising:

establishing a hook by auto-surfacing logic executing in
a host server into an end-user application in a client computing
device in order to pull content from and to direct visual
emphasis of portions of the content matching social bookmarks
and associated metadata;

detecting, by the auto-surfacing logic in the host server,
an attempt by the client computing device to display content in
the end-user application;

retrieving into the auto-surfacing logic from the client
computing device the screen display for the end-user
application upon detecting the attempt to display content;

forwarding the content from the auto-surfacing logic in
the host server to a social bookmarking system executing in a
memory of a different server, the social bookmarking system
saving links to memorable content on the Internet and
publishing the links on the Internet for public inspection so as
to provide a communal repository of bookmarks;

2 We herein refer to the Final Office Action, mailed Dec. 28, 2017 (“Final
Act.”); Appeal Brief, filed June 8, 2018 (“App. Br.”); the Examiner’s
Answer, mailed Sept. 21, 2018 (“Ans.”), and the Reply Brief, filed Nov. 21,
2018 (“Reply Br.”).
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receiving, at the auto-surfacing logic in the host server
and subsequently forwarding to the client computing device,
text from the social bookmarking system resulting from a
matching of content parsed from the screen display with words
and phrases of one or more social bookmarks in the social
bookmarking system that have been assigned only a high value;
and,
directing the client computing device to visually
emphasize the received text from the content in the end user
application by determining a frequency of match of the received
text to the at least one social bookmark and adjusting a font size
of the received text proportionately based upon the determined
frequency of match so as to visually differentiate the received
text from the content.

Appeal Br. 16–17, “CLAIMS APPENDIX.” (Emphasis added regarding the
contested dispositive limitations under 35 U.S.C. § 103).
Rejection
Claims 1, 3–8, 10, 12–14, 16, 18, and 20 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Hubert et al. (US 7,133,862 B2; iss. Nov. 7, 2006)
(“Hubert”), Kei Shiratsuchi, et al. “Finding unknown interests utilizing the
wisdom of crowds in a social bookmark service”, Proceedings of the 2006
IEEE/WIG/ACM International Conference on Web Intelligence and
Intelligent Agent Technology, (“Shiratsuchi”), Blanchard et al. (US
2008/0072145 A1; pub. Mar. 20, 2008) (“Blanchard”), and further in view
of Hong et al. (US 2008/0201651 A1; pub. Aug. 21, 2008) (“Hong”).

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Prior PTAB Decision
Appeal No. 2012-011855, corresponding to Application No.
12/015,270, decided Aug. 3, 2015 (Examiner Affirmed).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. Based upon our review, and for the reasons discussed below,
Appellant provides sufficient argument and evidence to persuade us the
Examiner erred with respect to the single rejection under 35 U.S.C. § 103(a)
over the cited combination of Hubert, Shiratsuchi, Blanchard, and Hong.
Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
Contentions
Appellant contends:
Hong does not describe Appellants’ claim elements, as
Appellants[’] claims require the establishment of a hook by
auto-surfacing logic (in the server) into an end-user application
in a client computing device in order to pull content from and to
direct visual emphasis of portions of the content matching
social bookmarks and associated metadata.
Appeal Br. 14 (emphasis added).
Appellant urges that “[n]o hook is taught in Hong that is established
by logic in a server that pulls content and directs visual emphasis of portions
of the content that match social bookmarks and associated metadata.” Id.
In support, Appellant points to Hong ¶¶ 30–32, 37, and urges:
Furthermore, [the] Examiner, while neglecting to map
any portion of the “establishing” claim limitation to any portion
of the cited art, does provide mere argument without evidence
at page 6 of the New Final Office Action in stating, “For a
plug-in to function as described in Hong, said plug-in
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necessarily creates or interacts with a hook”. Appellants
disagree and believe that plug-ins do not necessarily create or
interact with a hook and say so with evidence. Indeed, Hong
teaches at paragraph [0037] that the “annotation plug-in”
gratuitously receives events and therefore does not "pull"
anything. In other words, there is no need for a hook for the
annotation plug-in to hook the underlying web browser because
the plug-in annotation receives the events from the web
browser.
Appeal Br. 14–15.
Issue: Under 35 U.S.C. § 103(a), did the Examiner err by finding
Hubert, Shiratsuchi, Blanchard, and Hong collectively teach or suggest the
disputed dispositive “establishing a hook” limitation:
establishing a hook by auto-surfacing logic executing in
a host server into an end-user application in a client computing
device in order to pull content from and to direct visual
emphasis of portions of the content matching social bookmarks
and associated metadata[,]
within the meaning of independent claim 1?3 (emphasis added).
The Examiner disagrees with Appellant, and further explains the basis
for the rejection:
The use of a hook has been addressed earlier[:] basically
plugins use hooks and even with a narrower definition of hook
using a plugin to change the way established software performs
regular tasks requires that the plugin use a hook.
Establishment is not clearly defined by the specification. Hence
the loading/initialization of the plug-in cited in the reference
portions of Hong, paragraph 30 and Figure 3 (more specifically
parts 302 and 324, shown below) could fall under the
initialization or establishment spoken. And hence[,]Applicant's

3 We give the contested claim limitations the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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arguments that Examiner did not map the claim language to the
cited art is incorrect.
Ans. 12–13.
We note in the Final Action the Examiner made a finding of inherency
under § 103: “Hong teaches the use of browser plug-ins to send requested
URLs or entire documents to an annotation server to annotate documents
and to allow for their further annotation (see Hong, paragraphs 30 and 32).”
Final Act. 5. Based upon this evidence, the Examiner finds: “For a plug-in
to function as described in Hong, said plug-in necessarily creates or
interacts with a hook.” Final Act. 6 (emphasis added).
Turning to the Specification for context regarding the intended
meaning of the claim term “hook” we note the following description of
usage that we find is consistent with the term “hook” as known and
understood by artisans (computer programmers) as a term of art: “The
server-side auto-surfacing logic 280ALT1 can establish a hook into each of
the applications 270 in order to pull the content 290A and to visually
emphasize the portions 290B of the content 290A matching the social
bookmarks and associated metadata 250.” Spec. ¶ 23 (emphasis added).
In the Reply Brief, Appellant provides several online references for
the claim term “hook.” We decline to rely on online sources such as
Wikipedia and “WhatIs.com” for definitions, as provided by Appellant.4

4 For example, Wikipedia is generally not considered to be as trustworthy as
traditional sources because: (1) it is not peer reviewed; (2) the authors are
unknown; and (3) anyone can contribute to the source definition. See, e.g.,
Techradium, Inc. Blackboard Connect Inc., 2009 WL 1152985 *4 n. 5 (E.D.
Tex. 2009)(“The Court agrees with Blackboard that Wikipedia disclaims any
validity of the content listed on its website, and is therefore not a reliable
source of technical information.”)
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However, Appellant provides a description of “hooks” as found in US
Pat. 7,225,430 (issued on May 29, 2007) that we find is consistent with the
claim term “hook” at the time of the invention (filed Jan. 16, 2008), and as
understood by artisans as a term of art: “Once installed, the hook function
can monitor messages, and even alter them. System-wide hook functions
can intercept all messages that enter a system. Application-specific hook
functions allow interception only of messages directed at a specified
window or application.” Eatough et al. (US 7,225,430 B2; iss. May 29,
2007) col. 7, ll. 4–9 (emphasis added).5
In reviewing Hong ¶ 37 (as pointed to by Appellant, Appeal Br. 15),
we find the following description:
Subsequent to augmenting the web page at 326, the web
page is displayed at 330 and made available to the user for (a)
viewing annotations previously applied to similar content by
the user or identified co-users and (b) further annotation. At
332, an event handler in the annotation plug-in receives and
responds to events associated with input received from the user
directed at the displayed web page.
Although paragraph 37 (id.) describes the “event handler in the
annotation plug-in receives and responds to events associated with input

5 We consider US Pat. 7,225,430 to Eatough et al. only to the extent that it
provides evidence of the ordinary and plain meaning of the well-known
computer programming term “hook” just prior to the time of Appellant’s
invention. In the event of further prosecution of this application, including
any review prior to allowance, we leave it to the Examiner to consider
whether this reference could also be used as evidence to support a new
ground of rejection under § 103(a). Although the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02.
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received from the user directed at the displayed web page,” without more
evidence in support, we cannot determine whether “hooks” are involved, or
normal function or procedure calls.
Moreover, we find the Examiner contradicts his finding of inherency
(“a plug-in necessarily creates or interacts with a hook” Final Act. 6
(emphasis added)) by stating: “the loading/initialization of the plug-in cited
in the reference portions of Hong, paragraph 30 and Figure 3 (more
specifically parts 302 and 324, shown below) could fall under the
initialization or establishment.” Ans. 12–13 (emphasis added).
“The inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness.” In re Napier, 55
F.3d 610, 613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103 rejection based in
part on inherent disclosure in one of the references). The question of
obviousness is “based on underlying factual determinations including . . .
what th[e] prior art teaches explicitly and inherently.” In re Zurko, 258 F.3d
1379, 1383 (Fed. Cir. 2001) (citations omitted). Our reviewing court has
also “recognized that inherency may supply a missing claim limitation in an
obviousness analysis.” PAR Pharmaceutical, Inc. v TWI Pharmaceuticals,
Inc. 773 F.3d 1186, 1194-95 (Fed Cir. 2014). However,
[t]he mere fact that a certain thing may result from a given set
of circumstances is not sufficient. If, however, the disclosure is
sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the
questioned function, it seems to be well settled that the
disclosure should be regarded as sufficient. In re Oelrich, 666
F.2d at 581 (emphasis added) (citations and quotation marks
omitted). Thus, our early precedent, and that of our predecessor
court, established that the concept of inherency must be limited
when applied to obviousness, and is present only when the
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limitation at issue is the “natural result” of the combination of
prior art elements. Id.
PAR Pharmaceutical, Inc., 773 F.3d at 1195 (quoting In re Oelrich, 666
F.2d 578, 581 (CCPA 1981)) (emphasis added).
This guidance is applicable here. Therefore, on this record, we find a
preponderance of the evidence, and applicable case law, support Appellant’s
argument in the Reply Brief:
In any event, as can be seen, [the] Examiner appears to
have pivoted from a direct comparison of the claimed “hook” to
a “plug-in” and more recently indicates the presence of a
“hook” to be inherent to the presence of a plug-in to a function.
Under the law, to establish inherency, the extrinsic evidence
‘must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and
that it would be so recognized by persons of ordinary skill.
Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from
a given set of circumstances is not sufficient.
Reply Br. 6.
Thus, failure to provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art amounts to mere speculation
on the part of the Examiner and mere speculation as to the
inherent presence of claimed element in cited art is a basis for
reversal on appeal.
Reply Br. 7 (emphasis added).
To the extent that the Examiner finds the “plug-in necessarily creates
or interacts with a hook” (Final Act. 6), we find the evidence cited by the
Examiner (Final Act. 5, 8, citing Hong ¶¶ 30, 32) is insufficient to show “the
natural result flowing from the operation as taught would result in the
performance of the questioned function.” PAR Pharm., 773 F.3d at 1194–
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95. Moreover, we find that to affirm the Examiner on this record would
require some degree of speculation on our part. We decline to engage in
speculation.6
Therefore, for essentially the same reasons argued by Appellant
(Appeal Br. 14–15; Reply Br. 1–8), as further discussed above, we are
constrained on this record to reverse the Examiner’s obviousness rejection of
independent claim 1 over the cited combination of Hubert, Shiratsuchi,
Blanchard, and Hong. Because remaining independent claims 5 and 10
recite the disputed limitations using similar language of commensurate
scope, we also reverse the Examiner’s rejection of independent claims 5
and 10.
Because we have reversed the rejection of each independent claim on
appeal, we also reverse the Examiner’s obviousness rejection for each
dependent claim on appeal.
Accordingly, we reverse the Examiner’s obviousness rejection of all
claims 1, 3–8, 10, 12–14, 16, 18, and 20 on appeal.

CONCLUSION
The Examiner erred in rejecting claims 1, 3–8, 10, 12–14, 16, 18,
and 20, as being obvious under pre-AIA 35 U.S.C. § 103(a), over the cited
combination of Hubert, Shiratsuchi, Blanchard, and Hong.

6 “A rejection . . . must rest on a factual basis . . . .” In re Warner, 379 F.2d
1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not . . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.” Id.
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DECISION SUMMARY
Claims
Rejected
Pre-AIA
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–8, 10,
12–14, 16,
18, 20
103(a) Hubert,
Shiratsuchi,
Blanchard, Hong
1, 3–8, 10,
12–14, 16,
18, 20
Overall
Outcome
1, 3–8, 10,
12–14, 16,
18, 20

REVERSED