Ex Parte Eves et al

Patent Trial and Appeal BoardSep 19, 2012

10515079 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID A. EVES and RICHARD S. COLE ____________ Appeal 2010-000297 Application 10/515,079 Technology Center 2100 ____________ Before CAROLYN D. THOMAS, CARL W. WHITEHEAD, JR., and ANDREW J. DILLON, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000297 Application 10/515,079 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 (2012) from a final rejection of claims 1-10. Appeal Brief 3. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to a method for generating a markup language document. Appeal Brief 3. Illustrative Claim 1. A method for generating a markup language document, comprising: accessing a pool of active markup language fragments; processing said fragments using at least one predetermined factor; and generating a markup language document accordingly. Rejections on Appeal Claims 1-10 stand rejected under 35 U.S.C. §102(b) as being anticipated by Nazem (U.S. Patent Number 5,983,227, issued November 9, 1999). Answer 3-4. Claims 1, 3 and 8-10 stand rejected under 35 U.S.C. §102(b) as being Appeal 2010-000297 Application 10/515,079 3 anticipated by Lafer (U.S. Patent Number 6,192,382 B1, issued February 20, 2001). Answer 4-5. Claim 2 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Lafer and Nazem. Answer 5-6. Issue on Appeal Does Nazem disclose a method for generating a markup language document as recited in claim 1? ANALYSIS We disagree with Appellants’ assertions regarding the Examiner’s rejection of the claims on appeal. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Answer 3-13) in response to arguments made in Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. We highlight and address certain findings and arguments below. Anticipation rejection based upon Nazem Appellants disagree with the Examiner’s interpretation of the live data in Nazem being equivalent to Appellants’ active markup language fragments as recited in claim 1. Appeal Brief 5 (quoting Answer 6). We do not find Appellants’ argument to be persuasive. Examiner has taken the position that Appellants’ “accessing a pool of active markup language fragments” Appeal 2010-000297 Application 10/515,079 4 limitation read upon Nazem’s “live data to fill any user template.” Answer 3. We agree with the Examiner’s findings because it is evident that Nazem employs the use of markup language that is syntactically distinguishable from the text of the user page generated by using a global template; in this circumstance, the text is “live data.” See Nazem Figures 3-5; see also Answer 6-7. Appellants further argue that “[o]ne skilled in the art clearly understands what is being referred to by using ‘markup language’” and refer to an example from their Specification (Page 4, lines 22-33) to show “an exemplary description of what fragments are.” Appeal Brief 6. The Examiner finds that limitations from the Specification are not read into the claims. Answer 7 (citations omitted). We agree with the Examiner’s findings. Although giving claims their broadest reasonable interpretation must take into account any definitions given in the Specification (In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)), it is improper to read into the claims limitations from examples given in the Specification. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). See also Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)(“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment”) (citations omitted). We sustain the Examiner’s rejection of claim 1 as well as independent claim 8, which was not argued separately, for the reasons stated above. We Appeal 2010-000297 Application 10/515,079 5 also sustain the Examiner’s rejection of dependent claims 2-7, 9 and 10 which were also not argued separately. We affirm the Examiner’s rejection of all of the pending claims 1-10 under 35 U.S.C. § 102 and therefore we need not address the other rejections of the very same claims under the various other rejections. DECISION The rejections of claims 1-10 are affirmed. 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 peb