Ex Parte Sweet et al

Patent Trial and Appeal Board

Dec 19, 2012

10608587 (P.T.A.B. Dec. 19, 2012)

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.
10/608,587 06/27/2003 James M. Sweet D/A2555 8422
77282 7590 12/19/2012
Hoffmann & Baron, LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
12/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte JAMES M. SWEET, STEVEN J. HARRINGTON, RHYS PRICE
JONES, and ANDREAS SAVAKIS
_____________

Appeal 2010-006545
Application 10/608,587
Technology Center 3700
______________

Before, KALYAN K. DESHPANDE, DAVID M. KOHUT, and
MICHAEL R. ZECHER, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/608,587

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1-6, 10-13, 16-20, 25-28, 36, and 37.1,2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method for identifying the hyperlinked
components of a hypertext document to create a document representation
that is available for viewing or printing. See generally Spec: 1-4. Claim 1 is
representative of the invention and reproduced below:
1. An automated identification methodology for
assembling a document representation for subsequent viewing
or printing of a given hyperdocument by gathering related
hyperlinked page content comprising:
performing a page-level link analysis that identifies those
hyperlinks on a page linking to a candidate document page;
performing a recursive application of the page-level link
analysis to the linked candidate document page and any further
nested candidate document pages thereby identified, until a
collective set of identified candidate document pages is
assembled;

1 The Examiner has indicated claims 29-34 as containing allowable subject
matter. Non-Final Rej. 8 (mailed Jan. 4, 2008).
2 Appellants do not indicate that claims 7-9, 14, 15, 21-24, and 35 are at
issue in this appeal. App. Br. 3. Since the Board does not have jurisdiction
as to non-appealed claims, we suggest that the Examiner cancel the non-
appealed claims upon any further prosecution. See Manual of Patent
Examining Procedure (MPEP) § 1215.03 (8th Ed., Rev. 8, Jul. 2010); see
also Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)(precedential).
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examining the collective set of identified candidate
document pages to weed out from that collective set of
identified candidate document pages links which have
properties that are not characteristic of intra-document links, to
provide a resultant set of identified candidate document pages;
grouping the content found in the resultant set of candidate
document pages by an automated system into a document
representation stored in memory by the automated system; and,
printing, or viewing on a display by a user, the document
representation.

REFERENCES
Earl US 5,924,104 July 13, 1999

Bharat US 6,112,203 Aug. 29, 2000

REJECTION AT ISSUE
Claims 1-6, 10-13, 16-20, 25-28, 36, and 37 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Bharat and Earl. Ans. 3-8.
ISSUE
Did the Examiner err in finding that the combination of Bharat and
Earl teaches or suggests examining the collective set of identified candidate
document pages to weed out from the collective set of identified candidate
document pages links which have properties that are not characteristic of
intra-document links, to provide a resultant set of identified candidate
document pages?
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ANALYSIS3
We select claim 1 as representative of the group comprising claims 1-
6, 10-13, 16-20, 25-28, 36, and 37 as Appellants have not argued these
claims with particularity. 37 C.F.R. § 41.37(c)(1)(vii). Appellants initially
argue that Bharat does not teach or suggest examining “‘the collective set of
identified candidate document pages to weed out links which have properties
that are not characteristic of intra-document links,’” as required by claim 1.
App. Br. 11. However, the Examiner uses Earl to disclose this limitation.
Ans. 5-6. We agree with the Examiner and find this argument to be
unpersuasive.
Appellants then argue that Earl does not teach or suggest the above
referenced limitation because Earl’s definition of intra-document is the
Appellants’ definition of intra-page. App. Br. 12. Therefore, Appellants
assert that Earl’s inter-document is what Appellants mean by inter-page.
App. Br. 12. Appellants provide declarations by Sweet and Harrington to
demonstrate that an ordinarily skilled artisan would agree with this assertion.
Sweet Declaration, pg. 2; Harrington Declaration, pg. 2. We find that the
Declarants’ statements are entitled to little, if any, weight. For example,
Sweet and Harrington are both named inventors of the present application.
As such, the declarations are entitled to little weight compared to the
language of the patent application itself. See Bell & Howell Document
Management v. AltekSys., 132 F.3d 701, 706 (Fed. Cir. 1997) (“The
testimony of an inventor and his attorney concerning claim construction is

3 We note that Appellants have filed a Reply Brief. However, the Reply
Brief presents a new issue not presented before in the Appeal Brief and will,
therefore, not be considered. See 37 C.F.R. § 41.41(a)(2).
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thus entitled to little or no consideration. The testimony of an inventor is
often a self-serving, after-the-fact attempt to state what should have been
part of his or her patent application ....”); Roton Barrier, Inc. v. Stanley
Works, 79 F.3d 1112, 1126 (Fed. Cir. 1996) (“We have previously stated
than an inventor's ‘after-the-fact testimony is of little weight compared to the
clear import of the patent disclosure itself.’” (citation omitted)).
Even so, we have considered this evidence and do not consider it to be
persuasive that the Examiner erred in finding that Earl’s inter-document
links read on Appellants’ links that have properties that are not characteristic
of intra-document links. Ans. 10-11. Appellants’ evidence concerning the
understanding of an ordinarily skilled artisan is premised on the experts’
conclusions without identification of what particular evidence was relied on
for those opinions. Additionally, the Examiner finds that Appellants’ claims
require “links which have properties that are not characteristic of intra-
document links” and Appellants’ Specification does not specifically define
this limitation. Ans. 10. Appellants fail to specifically address the
Examiner’s finding. Thus, we find that the Examiner has given the claim its
broadest reasonable meaning consistent with the Specification, In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997), and properly relies on Earl’s inter-
document links to meet the claimed limitation of “links which have
properties that are not characteristic of intra-document links.” Ans. 10.
Appellants also argue that Earl does not disclose the above recited
limitation since Earl does not weed out any links, but rather keeps all of
them but displays them differently. App. Br. 13. Appellants argue that the
term “weed out” requires the links to be discarded, or as indicated by the
Sweet Declaration on page 4, “filtered out.” App. Br. 13. Similar to the
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explanation above, Appellants’ Declarations are entitled to little, if any
weight. Appellants’ Specification does not specifically define the term
“weed out” and the declaration does not provide particular evidence that was
relied on for the expert’s opinion. Thus, we find that the Examiner has
given the claim its broadest reasonable meaning consistent with the
Specification, In re Morris, 127 F.3d at 1048, and properly relies on Earl’s
visual discrimination between intra-document and inter-document links
“meet the definition of separating out, weeding out, or filtering out, the links
visually on the screen.” Ans. 12.
Appellants additionally argue that neither of the references teach or
suggest “a table of contents.” App. Br. 13. We find that Appellants’
argument is not commensurate in scope with the claims. None of the claims
recite “a table of contents.”
Lastly, Appellants argue that that the Examiner has not provided a
“genuine identifiable reason” why one skilled in the art would have
combined the references. App. Br. 14. We disagree as the Examiner finds a
specific motivation to combine the references. Ans. 6. Specifically, the
Examiner finds that it would have been obvious to combine the references in
order to provide “an improved method and apparatus for displaying links on
a user display interface in a computer system” (citing Earl, col. 1, ll. 39-41).
Ans. 6. We find the Examiner’s motivation to be reasonable, and Appellants
fail to address the Examiner’s specific findings. Thus, we agree with the
Examiner.
Thus, for the reasons stated supra, we sustain the Examiner’s rejection
of claims 1-6, 10-13, 16-20, 25-28, 36, and 37.
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CONCLUSION
The Examiner did not err in finding that the combination of Bharat
and Earl teaches or suggests examining the collective set of identified
candidate document pages to weed out from the collective set of identified
candidate document pages links which have properties that are not
characteristic of intra-document links, to provide a resultant set of identified
candidate document pages.
SUMMARY
The Examiner’s decision to reject claims 1-6, 10-13, 16-20, 25-28, 36,
and 37 is 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).

AFFIRMED

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