Ex Parte Padala et al

Patent Trial and Appeal Board

Dec 15, 2016

13307730 (P.T.A.B. Dec. 15, 2016)

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.
13/307,730 11/30/2011 Anil Kumar Padala 20110410 8591
7590 12/19/201625537
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
MILLS, FRANK D
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANIL KUMAR PAD ALA, MANAH KHALIL,
SENTHIL MUTHUSAMY, and SWAROOP MALLAMPALLI
Appeal 2016-000911
Application 13/307,730
Technology Center 2100
Before ALLEN R. MacDONALD, AARON W. MOORE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-000911
Application 13/307,730
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—4, 7, 8, 11, 12, 14, 15, and 17—19. Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (bracketing and
emphasis added):
1. A method performed by a computer device, the
method comprising:
[(A)] generating, by the computer device, a guidance file
for a document, wherein the guidance file includes guidance
instructions for one or more interactive elements in the
document, and wherein generating the guidance file for the
document includes:
[(i)] processing the document to identify the one
or more interactive elements in the document by
identifying terms indicative of interactive elements',
[(ii)] selecting an interactive element, of the
identified one or more interactive elements;
[(iii)] generating one or more guidance instructions
for the selected interactive element; and
[(iv)] storing the generated one or more guidance
instructions in the guidance file;
[(B)] generating, by the computer device, a script file
configured to cause the guidance file to be accessed and to
provide the guidance instructions in connection with the one or
more interactive elements; and
[(C)] adding, by the computer device, an instruction to
the document to run the script file when the document is
accessed.
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7. The method of claim 1, wherein the generating the
guidance file for the document further includes:
[(v)] determining whether a particular one of the one or
more interactive elements includes an identifier; and
[(vi)] adding an identifier to the particular one of the one
or more interactive elements, when the particular one of the one
or more interactive elements does not include an identifier.
Rejections
The Examiner rejected claims 1—4, 7, 11, 14, 17, and 18 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Horton et
al. (US 2011/0246880 Al; Oct. 6, 2011), Ozana (US 2006/0259483 Al;
Nov. 16, 2006), and Allen, Jr. et al. (US 2009/0132937 Al; May 21, 2009).1
The Examiner rejected claims 8, 12, 15, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Horton, Ozana,
Allen, and Larcheveque et al. (US 2004/0189708 Al; Sept. 30, 2004).2
1 Separate patentability is not argued for claims 2—4, 11, 14, 17, and 18.
Except for our ultimate decision, these claims are not discussed further
herein.
2 Separate patentability is not argued for claims 8, 12, 15, and 19. As to
these claims, Appellants merely reference the arguments of claim 1. Thus,
the rejections of these claims turns on our decision as to claim 1. Except for
our ultimate decision, these claims are not discussed further herein.
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Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
This section of ALLEN [at paragraphs 19-42] does not
disclose or suggest processing a document to identify one or
more interactive elements in the document by identifying terms
indicative of interactive elements. Rather, this section of
ALLEN discloses that an element in a user interface is selected
by a user when the user clicks or activates the element. Thus,
ALLEN discloses identifying a particular element based on a
user selection, rather than processing a document to identify
interactive elements in the document.
App. Br. 11 (emphasis added).
ALLEN does not disclose or suggest that the field having the
identifier “field_l” is identified as an interactive element based
on the identifier “field 1.” Rather, the identifier “field_l” is
used to locate tags within an XML hover help document
associated with the element after a user selects the element,
furthermore, at no point does ALLEN disclose that the
document is processed to identify interactive elements in the
document. Rather, only a single element is selected by the user.
App. Br. 11.
[l]n ALLEN, there is no identification of terms indicative of
interactive elements. Identifying terms indicative of interactive
elements, as recited in claim 1, inherently implies identifying
all terms from a set ofpredefined terms, as explained in
paragraph [0065] of the [Specification of the present
application. In contrast, ALLEN discloses that the XML
document is accessed to locate a specific hover help element
identifier based on the fact that the user has selected the hover
help element.
App. Br. 14 (emphasis added).
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Application 13/307,730
2. Appellants also contend that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 103(a) because:
HORTON and OZANA, whether taken alone or in any
reasonable combination, do not disclose or suggest JavaScript
code, loaded into a web browser, to access a guidance file that
is separate from a web page being displayed in the web
browser, as would be required by claim 1 based on the
Examiner’s interpretation of HORTON and OZANA.
App. Br. 12 (emphasis added).
[I]f HORTON were to be combined with OZANA, such a
combination would result in JavaScript code to manipulate a
document being displayed, rather than to access a guidance file
generated for the document.
App. Br. 12.
3. Appellants also contend that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 103(a) because:
The Examiner’s allegation is again merely a conclusory
statement providing an alleged benefit of the combination. The
Examiner has not provided any articulated reasoning with
some rational underpinning to support the legal conclusion of
obviousness with respect to claim 1. For example, the
Examiner has not explained how the hover help document of
ALLEN would be integrated with the JavaScript of HORTON
and OZANA.
App. Br. 13 (emphasis added).
4. Appellants also contend that the Examiner erred in rejecting claim
7 under 35 U.S.C. § 103(a) because:
Although this section of HORTON [at paragraphs 44-48]
discloses that a designer can add a name to an element, this
section of HORTON does not disclose or suggest what is to be
done if the designer fails to add a name to an element. In
other words, HORTON does not disclose or suggest any
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checking process to make sure interactive elements include
identifiers.
App. Br. 17 (emphasis added).
Issues on Appeal
Did the Examiner err in rejecting claims 1 and 7 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellants’ above contention 1, we disagree for the reasons set
forth by the Examiner at pages 18—19 of the Answer. Even if we adopt
Appellants’ assertion that Allen is identifying fields based on whether there
is an associated hover help (Reply Br. 6), we disagree with Appellants’
implication that this would not be recognized by an artisan as identifying
terms indicative of interactive elements.
Further, Appellants’ argument that “[identifying terms indicative of
interactive elements, as recited in claim 1, inherently implies identifying all
terms from a set of predefined terms, as explained in paragraph [0065] of
the [Specification of the present application” (App. Br. 14 (emphasis
added)) is not commensurate with the scope of the claim language. Claim 1
is not explicitly limited to identifying by using a set of predefined terms, and
Appellants do not explain how claim 1 would be inherently so limited.
As to Appellants’ above contention 2, we disagree. Appellants argue
claim 1 requires “a guidance file that is separate from a web page being
displayed in the web browser.” App. Br. 12 (emphasis added). However,
our review of claim 1 does not find the term “separate,” nor do we find
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alternative language that would similarly mandate the guidance file be
separate from the claimed document.
Further, Appellants speculate that the combination of Horton and
Ozana renders obvious “JavaScript code to manipulate a document being
displayed.” App. Br. 12. Even if we were to agree that the cited
combination also renders obvious an invention other than the invention of
Appellants’ claim 1, this is simply not a relevant argument as to whether the
Examiner has provided a proper final conclusion that the combination of
references renders obvious the claimed invention. A combination of two
references is not precluded from rendering obvious any number of distinct
inventions.
As to Appellants’ above contention 3, we disagree. Contrary to
Appellants’ argument that “[t]he Examiner has not provided any articulated
reasoning with some rational underpinning to support the legal conclusion
of obviousness” (App. Br. 13 (emphasis added)), the Examiner states the
combination would have been obvious “for the purpose of enabling an end
user to tailor the application-provided guidance information to his own
needs by editing thereof.” App. Br. 13 (quoting Final Act. 7). While
Appellants may disagree with the Examiner’s articulated reasoning or
believe the articulated reasoning to be too broadly set forth, such
disagreement does not equate to an absence of articulated reasoning.
Further, we disagree that the Examiner has erred by not explaining
how the hover help document would be integrated with the JavaScript.
“[T]he analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
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employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Additionally, Appellants do not contend that combining the prior art would
be “uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418-19).
As to Appellants’ above contention 4, we disagree. Again,
Appellants’ arguments are not commensurate with the scope of the claim
language. Appellants argue Horton does not disclose or suggest (A) “what is
to be done if the designer fails to add a name to an element” or (B) “any
checking process to make sure interactive elements include identifiers.”
App. Br. 17 (emphasis added). However, our review does not find either the
phrase “if the designer fails to add a name to an element” or “checking
process to make sure” in claim 7, nor do we find alternative language that
would similarly mandate these argued limitations.3
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—4, 7, 8, 11, 12,
14, 15, and 17—19 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1—4, 7, 8, 11, 12, 14, 15, and 17—19 are not patentable.
3 Although not necessary for our decision, we note that claim 7 recites its
“adding” step as being conditional on “when the particular one of the one or
more interactive elements does not include an identifier” (emphasis added).
The result is an alternative claim branch where only the “determining” step
is required when the determining step results in an affirmative determination
that the particular interactive element does include an identifier. As
performing either conditional branch (does vs. does not) would infringe
claim 7, the Examiner need only show one of the branches is obvious to
meet his burden.
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DECISION
The Examiner’s rejections of claims 1—4, 7, 8, 11, 12, 14, 15, and 17—
19 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)(l)(iv).
AFFIRMED
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