UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________
Ex parte STEVEN J. HARRINGTON, PAUL B. GLOGER,
NOEL S. OMEGE, LEONID ORLOV, JOHN C. WENN II,
DANIEL W. MANCHALA, YOON J. JHONG, and
YOUNGSEOK SEO
__________
Appeal 2011-008314
Application 11/554,498
Technology Center 2100
__________
Before FRANCISCO C. PRATS, 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
for creating a multi-version document for publishing. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as Xerox
Corporation (see App. Br. 4).
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Statement of the Case
Background
The Specification teaches “a tagging structure, incorporating selection
and content nodes within a larger document so as to represent a plurality of
possible or alternative versions within a document” (Spec. 7-8 ¶ 0021).
According to the Specification, “[i]t is believed that such a structure, and a
method for use of the structure, is more convenient and will lead to lower
cost manipulation (e.g., storage, retrieval, and distribution) of multiple
versions of a document as a single unit” (Spec. 8 ¶ 0021).
The Claims
Claims 1-20 are on appeal. Claim 1 is representative and reads as
follows:
1. A method for creating a multi-version document for
publishing, comprising:
identifying a first section of said multi-version
document intended for representation in a first published
document version;
identifying a second section of said multi-version
document intended for representation in an alternative
published document version;
tagging at least the second section of said multi-
version document to indicate its association with said
alternative published document version, wherein said multi-
version document is represented as a graph structure
including at least one node characterizing the alternative
published document version; and
storing at least a portion of the multi-version
document as a single digital file including the first and
second sections and the at least one node.
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The issues
A. The Examiner rejected claims 1-4 and 7-14 under 35 U.S.C. § 103(a)
as obvious over RealSystem2 and Refsnes3 (Ans. 3-8).
B. The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
obvious over RealSystem, Refsnes, and Yamamoto4 (Ans. 9-10).
C. The Examiner rejected claims 1 and 15-20 under 35 U.S.C. § 103(a)
as obvious over Newman5 and Refsnes (Ans. 10-15).
A. 35 U.S.C. § 103(a) over RealSystem and Refsnes
The Examiner finds that “RealSystem teaches SMIL, an XML
document (p. 200), which has a graph-type structure of tags, but does not
describe representing that document as a graph structure. Refsnes teaches
representing an XML document (such as the SMIL document of
RealSystem) as a graph structure (tree view) including nodes” (Ans. 5).
The Examiner finds it obvious “to represent the SMIL document of
RealSystems as a DOM tree, which would have the effect of representing the
document as a graph structure including at least on content selection node
(RealSystems’s audio tag was a content selection element, and would be
2 RealSystem IQ PRODUCTION GUIDE With RealOne Player,
Last Update: 1 October 2002, http://service.reaI.com/help/library/
guides/realone/ProductionGuide/PDF/ProductionGuide. pdf
3 Refsnes, Hege et al., Introduction to the XML DOM,
w3schools.com, Refsnes Data, Archived 4/4/2003,
http://www.w3schools.com/dom/dom intro.asp?output=print
4 Yamamoto et al., US 2005/0015720 A1, published Jan. 20, 2005.
5 Newman, Debbie, Spice Up Your Web Pages with HTML+TIME,
May 2000, http://msdn.microsoft.com/en-
us/library/ms976099%28printer%29.aspx
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represented as a content selection node per Refsnes’s teachings)
characterizing the alternative version” (Ans. 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that RealSystems and Refsnes render the
claims obvious?
Findings of Fact
1. RealSystems teaches that “SMIL switching is a powerful means
to tailor presentations for different audiences without making viewers choose
which presentation they wish to view. In cases such as language choice,
SMIL switching occurs automatically based on a preference the viewer has
set in RealOne Player” (RealSystems 445).
2. RealSystems teaches that the “following sections demonstrate
switching with clips recorded in different languages. Keep in mind, though,
that the same principles apply to switching through other criteria, such as
bandwidth or monitor size” (RealSystems 445).
3. RealSystems teaches that “switch group starts with a
tag and ends with a tag. Between these tags, you list multiple
options, such as multiple clip source tags, that each contain a test attribute.
RealOne Player evaluates the options in the order you list them, choosing the
first option that it can play” (RealSystems 445).
4. RealSystems teaches that:
Within the RealOne Player media playback pane, a SMIL
presentation can display text in three different ways:
• RealTextclip (.rt)
Chapter 6 explains RealText markup, which is the
most powerful way to add text to your presentation.
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Within the SMIL presentation, SMIL timing and
layout commands determine where and when the
RealText clip displays relative to other clips. As the
RealText clip plays, though, its own markup controls
where and when text displays within its assigned
SMIL region.
(RealSystems 229.)
5. RealSystems teaches that “[e]ach time you want a clip to appear
in a presentation, you write a clip source tag that tells RealOne Player where
to find the clip. The source tag URL may point RealOne Player to a clip on
Helix Universal Server, a Web server, or even the viewer’s local computer”
(RealSystems 211).
6. RealSystems teaches that clip source tags include text as shown
in the table reproduced below.
7. RealSystems teaches that:
in the following simple group, the
systemLanguage test attributes cause RealOne Player to
choose one of two audio clips based on its language
preference:
Only RealOne Players in which the viewer has selected
French (fr) as the language preference will choose the first
clip. Only RealOne Players in which the viewer has selected
German (de) as the language preference will choose the
second clip. A RealOne Player with another language
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preference will not play either clip: it simply ignores the
clips in the group and proceeds to the next part of
the presentation. Hence, a RealOne Player either plays just
one clip from a group, or it plays no clip. But it
never plays more than one option.
(RealSystems 446.)
8. RealSystems teaches that “[y]ou can also create presentations
that play back from a user’s local computer. An example of this is a
multimedia-enhanced book written with HTML and linking to clips. Users
download the files to their computers, playing back the media clips with
RealOne Player” (RealSystems 29).
9. Refsnes teaches that:
a program called an XML parser can be used to load an
XML document into the memory of your computer. When
the document is loaded, its information can be retrieved and
manipulated by accessing the DOM. The DOM represents a
tree view of the XML document. The documentElement is
the top-level of the tree. This element has one or many
childNodes that represent the branches of the tree.
(Refsnes 1).
Principles of Law
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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Analysis
Appellants contend that “RealSystems and Refsnes fail to teach the
recited limitation of ‘storing at least a portion of the multi-version document
as a single digital file including the first and second sections and the at least
one node’ as recited in claim 1” (App. Br. 14).
The Examiner finds that “RealSystems clearly shows a skilled artisan
to use any clip source tag with the switch tag. Thus, a skilled artisan upon
reading these sections would know that they are being told to create
documents [which] . . . shows the first and second section stored in a single
digital file” (Ans. 17). The Examiner separately finds that the “first and
second sections correspond to the audio tags and the actual audio clips in the
example. The audio tags (a portion of the section) are stored in the saved
file” (Ans. 18).
We find that Appellants have the better position. In the Examiner’s
rejection, the Examiner relies upon page 29 of RealSystems to address the
“single digital file” limitation of claim 1 (see Ans. 4-5). RealSystems
teaches, at page 29, that “[u]sers download the files to their computers,
playing back the media clips with RealOne Player” (RealSystems 29; FF 8).
The reference uses the plural “files,” not the singular “file,” thereby
expressly teaching that the clips are not necessarily stored in a single digital
file as required by claim 1.
The Examiner’s attempt to interpret the “portion of the multi-version
document” to encompass the SMIL switching code as the single digital file
required by claim 1 is unavailing because the single digital file requires the
“first and second sections,” as well as the tags and node. The SMIL
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switching code may represent a portion of the document, but cannot
reasonably be interpreted as the “first and second sections.”
These “first and second sections” are reasonably interpreted to
represent two different versions of an underlying document, not controlling
computer code, since claim 1 requires the first section to be “intended for
representation in a first published document version” and the second section
to be “intended for representation in an alternative published document
version.” This is consistent with the Specification, which teaches to “allow
the various content alternatives to be collected within a single document
rather than being captured in different document versions.” (Spec. 6 ¶ 0016.)
We therefore do not find the SMIL code taught by RealSystems at
page 446 to satisfy the requirement of storing “first and second sections” as
a single digital file as required by claim 1.
Therefore, while RealSystems clearly teaches different document
versions (such as French and German audio clips (FF 7)) which may be
tagged and used together (FF 1-3), the Examiner has not provided neither a
prior art teaching nor any reasoning which supports a finding to store these
clips as a single digital file. We are therefore constrained to reverse this
rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that RealSystems and Refsnes render the claims obvious.
B. 35 U.S.C. § 103(a) over RealSystem, Refsnes, and Yamamoto
The rejection of claims 5 and 6 relies upon the underlying rejection of
RealSystem and Refsnes, where Yamamoto is relied upon to address the
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automatic generation of second section contend (see Ans. 9). This rejection
does not address the underlying issue in claim 1 that the prior art fails to
teach storing a “portion of the multi-version document as a single digital file
including the first and second sections.” Therefore, having reversed the
underlying rejection over RealSystem and Refsnes, we also reverse this
rejection for the same reasons.
C. 35 U.S.C. § 103(a) over Newman and Refsnes
The Examiner finds that “Newman teaches HTML+ TIME, an XML
document (clear from the 3rd code sample on p.3 and the xmlns attribute),
which has a graph-type structure of tags, but does not describe representing
that document as a graph structure” (Ans. 11). The Examiner finds that
“Refsnes teaches representing an XML document (such as the HTML+
TIME document of Newman) as a graph structure (tree view) including
nodes” (Ans. 11).
The Examiner finds it obvious to “to represent the HTML+ TIME
document of Newman as a DOM tree, which would have the effect of
representing the document as a graph structure including at least one node
(Newman's span tag was a element, and would be represented as a node per
Refsnes's teachings) characterizing the alternative version” (Ans. 11).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Newman and Refsnes render the
claims obvious?
Findings of Fact
10. Newman teaches “HTML+ TIME Language - Switch on
System Language Setting. This example detects the system language setting
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in the Regional Options in the Control Panel and displays a text fragment in
Spanish, Portuguese, or English, depending on the system language setting”
(Newman 10).
11. Newman teaches “HTML+ TIME is the Microsoft
implementation of the HTML+ SMIL profile in SMI L 2.0. SMIL 2.0 is the
next version of the Synchronized Multimedia Integration Language (SMIL)
specification” (Newman 10).
12. RealSystems teaches that “[i]n the HTML pages, URLs point to
clips on the user’s computer instead of on Helix Universal Server”
(RealSystems 29).
Analysis
Appellants contend that “because it is well-known that web pages are
indeed often stored as a plurality of files operated on by a browser,
Appellants urge that the recited limitation of single file storage of web pages
is not at all inherent” (App. Br. 26).
The Examiner finds, in the original rejection, that “web pages are
inherently stored somewhere as single file” (Ans. 11). The Examiner further
finds that “the actual HTML page (such as index.html) is absolutely stored
somewhere as a single page. If Appellant is referring to server-side
processing of several documents, eventually, a single HTML file is severed
[sic served?] to the user. The interpretation of web page, as the actual HTML
file is completely consistent with Appellants use of the term in the
specification” (Ans. 26).
We find that Appellants have the better position. “Inherency . . . may
not be established by probabilities or possibilities. The mere fact that a
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certain thing may result from a given set of circumstances is not sufficient.”
MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999). Thus, the burden on the Examiner is to either demonstrate, with
evidence or reasoning, that the only possible implementation of the HTML
file requires storage as a single digital file or alternatively to demonstrate
that the prior art process is identical to that claimed, in order to invoke the
burden shifting of In re Best, 562 F.2d 1252, 255 (CCPA 1977). The
Examiner has not established that the processes are the same, so Best does
not apply.
Also, while neither the Examiner nor Appellants provide evidence
supporting their positions regarding whether web pages are stored as single
files or as multiple files, RealSystems teaches, in the discussion of local
playback, that “[i]n the HTML pages, URLs point to clips on the user’s
computer instead of on Helix Universal Server” (RealSystems 29; FF 12).
The use of the URLs to point to clips, plural, on the user’s computer is
reasonably understood as teaching that the HTML files may be composed of
multiple digital files, not a single file as required by claims 1 and 15.
Therefore, the Examiner has also not established, with evidence, that the
only possible implementation of the HTML file is as a single digital file.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Newman and Refsnes render the claims obvious.
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SUMMARY
In summary, we reverse the rejection of claims 1-4 and 7-14 under 35
U.S.C. § 103(a) as obvious over RealSystem and Refsnes.
We reverse the rejection of claims 5 and 6 under 35 U.S.C. § 103(a)
as obvious over RealSystem, Refsnes, and Yamamoto.
We reverse the rejection of claims 1 and 15-20 under 35 U.S.C. §
103(a) as obvious over Newman and Refsnes.
REVERSED
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