The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte FABIO GIANNETTI Appeal 2007-0469 Technology Center 2100 Decided: May 22, 2007 Before LANCE LEONARD BARRY, ALLEN R. MACDONALD, and JOHN A. JEFFERY, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. 134 from the Examiner s rejection of claims 1-32. We have jurisdiction under 35 U.S.C. 6(b).
STATEMENT OF THE CASE Appellant invented a method for generating data suitable for transmission to at least one data-receiving device. Specifically, the data are specified in first and second portions: the first portion substantially independent of any formatting, and the second portion containing formatting for the first portion specified in a platform-independent manner. The second portion is transformed to generate a platform-dependent portion containing formatting in a platform-dependent manner. Then, the first portion is combined with the platform-dependent portion to generate data suitable for transmission to at least one receiving device. Such a technique allows a variety of different formats to be applied to the data contained in the first portion for transmission to multiple diverse data-receiving devices. See generally Specification 2-3. Claims 1 and 18 are illustrative: 1. A method of generating data suitable for transmission to at least one data-receiving device, said method comprising the following steps: i. specifying said data in a first and a second portion, said first portion being substantially independent of any formatting, and said second portion containing formatting for said first portion specified in a platform independent manner; ii. transforming said second portion, using a first transform, to generate a platform dependent portion containing said formatting specified in a platform dependent manner; and iii. combining said first portion with said platform dependent portion using a second transform to generate said data suitable for transmission to said at least one data-receiving device. 18. A data structure accessible by a processing apparatus for processing and subsequent transmission to a data-receiving device, comprising in combination: 2
a first portion containing data that it [sic] is desired to send to said data-receiving devices, held in a platform independent form, and being substantially free of any formatting information; and a second portion specifying how the first portion should be displayed on said data-receiving device, said second portion containing formatting information for said first portion specified in a platform independent manner. The Examiner relies on the following prior art references to show unpatentability: Ritchie US 4,829,421 May 9, 1989 Hicks WO 00/23912 A1 Apr. 27, 2000 Marmor US 2002/0026475 A1 Feb. 28, 2002 (filed Aug. 28, 2001) Hamalainen US 2003/0060284 A1 Mar. 27, 2003 (filed Mar. 19, 2001) The Examiner s rejections are as follows: 1. Claims 1-6, 8, 12, 15-19, 21, 23, 26, and 28-30 are rejected under 35 U.S.C. 102(b) as being anticipated by Hicks. 2. Claims 7, 9-11, 20, 22, 24, 25, 27, 31, and 32 are rejected under 35 U.S.C. 103(a) as unpatentable over Hicks in view of Hamalainen. 3. Claim 13 is rejected under 35 U.S.C. 103(a) as unpatentable over Hicks in view of Ritchie. 4. Claim 14 is rejected under 35 U.S.C. 103(a) as unpatentable over Hicks in view of Marmor. Rather than repeat the arguments of Appellant or the Examiner, we refer to the Brief and the Answer for their respective details. In this decision, we have considered only those arguments actually made by 3
Appellant. Arguments which Appellant could have made but chose not to make in the Brief have not been considered and are deemed to be waived. See 37 C.F.R. 41.37(c)(1)(vii). OPINION It is our view, after consideration of the record before us, that the disclosure of Hicks fully meets the invention set forth in claims 1-6, 8, 12, 15-19, 21, 23, 26, and 28-30. We also conclude that the evidence relied upon and the level of skill in the particular art would have suggested to one of ordinary skill in the art the invention set forth in claims 7, 9-11, 13, 14, 20, 22, 24, 25, 27, 31, and 32. Accordingly, we affirm. In addition, we enter new grounds of rejection under 37 C.F.R. 41.50(b) for claims 18-22, 24, and 25 as failing to recite statutory subject matter under 35 U.S.C. 101. The Anticipation Rejection We first consider the Examiner s rejection of claims 1-6, 8, 12, 15-19, 21, 23, 26, and 28-30 under 35 U.S.C. 102(b) as being anticipated by Hicks. Anticipation is established only when a single prior art reference discloses, expressly or under the principles of inherency, each and every element of a claimed invention as well as disclosing structure which is capable of performing the recited functional limitations. RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983). The Examiner has indicated how the claimed invention is deemed to be fully met by the disclosure of Hicks (Answer 4-8). Appellant argues that 4
Hicks does not disclose the limitations of independent claim 1 which call for, in pertinent part, specifying data in (1) a first format-independent portion, and (2) a second platform-independent portion containing formatting information that is transformed to a platform-dependent portion. Appellant notes that Hicks teaches (1) creating and embedding formatting instructions in the document at the start of the process; (2) providing instructions in a printer-independent language; and (3) determining the appropriate printer to handle the document. Appellant, however, emphasizes that the printer-independent language file already contains the formatting information for the document (Br. 9). According to Appellant, the document in the printer-independent language and the appended job ticket comprise the entire file that is transmitted to the system server; therefore, formatting information must be in the document or else the information is non-existent (Br. 10). The Examiner argues that claim 1 is fully met by Hicks since, among other things, the claimed first portion corresponds to the electronic document in the printer-independent language file in Hicks, and the second portion as claimed corresponds to the job ticket that is appended to the printer-independent file. The Examiner emphasizes that the job ticket contains specific information concerning the desired output presentation including rendering characteristics. These rendering characteristics, according to the Examiner, constitute formatting for the first portion (i.e., the printer-independent language file). The Examiner notes that once the job ticket is appended to the electronic document, it is routed to a devicespecific assembler (i.e., a transform) that changes the data to a devicespecific form that is sent to the appropriate output device (Answer 13-15). 5
We will sustain the Examiner s anticipation rejection of independent claim 1. We agree with the Examiner that the claimed first portion reasonably corresponds to the printer-independent printer language file in Hicks, and the claimed second portion reasonably corresponds to the job ticket whose rendering characteristics reasonably constitute formatting as claimed giving the term its broadest reasonable interpretation. 1 In affirming this factual finding, however, we note that Hicks suggests that the non-specific printer language file may have some formatting. Specifically, Hicks indicates that the job ticket is appended to the printer language file and contain[s] any other rendering characteristics which may not be supported by the printer independent language (Hicks 6:35-7:1; emphasis added). Since this passage states that the job ticket contains any other rendering characteristics, the passage suggests that the printerindependent language file could contain some rendering characteristics. Nevertheless, as the Examiner indicates on Page 14 of the Answer, claim 1 recites that the first portion is substantially independent of any formatting (emphasis added). Significantly, specifying that the first portion is substantially independent of any formatting hardly requires that the first portion be completely independent of any formatting. That is, the scope and breadth of the limitation simply does not preclude the printer-independent language file of Hicks, notwithstanding the presence of some rendering characteristics supported by the printer-independent language. 1 As the Examiner indicates, Hicks lists a number of exemplary rendering characteristics including color or monochrome output, duplex printing, number of copies, stapling, collating, binding, recipient and destination information, etc. (Hicks 2:10-12). 6
We also agree with the Examiner that the claimed second portion of the data is fully met by the job ticket in Hicks. The job ticket is appended to the printer-independent language file and specifies other rendering characteristics (i.e., formatting) as noted above. This second portion also specifies the formatting in a platform independent manner until it is converted into a specific form for the particular output device by the server, particularly the device specific assembler 22. That is, the server effectively transforms the second portion to generate a platform dependent portion containing formatting specified in a platform dependent manner as claimed. The server also effectively combines the first portion (printer-independent language file) with the platform-dependent portion (formatting) to generate output in a form tailored to the appropriate output device 16. Even if we assume that the printer-independent language file and the job ticket appended thereto in Hicks constitute a single file, the scope and breadth of claim 1 does not preclude such a file. Claim 1 recites, in pertinent part, specifying data in two portions. Such a data specification is fully met by a single file with multiple portions (e.g., a printer-independent language portion and an appended portion containing formatting). Even if the first and second portions are in a single file, the respective first and second portions are not combined as claimed prior to further processing by the server since the data is not suitable for transmission to the particular output device. Upon further processing by the server, however, the claimed combination step is performed in generating output in a form tailored to the appropriate output device. 7
For at least these reasons, we will sustain the Examiner s rejection of independent claim 1. 2 Since Appellant has not separately argued the patentability of claims 2-4, 6, 8, 12, and 15-17 with particularity, these 2 Should additional prosecution follow this opinion, the Examiner should also consider the creation, display, and printing of standard HTML documents as fully meeting at least independent claims 1 and 18 given the broad scope of the claims. For example, suppose a user created the following simple HTML document in a text editor: <HTML> <B>THIS IS A DOCUMENT</B> </HTML> The first portion of the data corresponds to the text that is not part of an HTML tag (i.e., THIS IS A DOCUMENT ). This portion of the data is substantially independent of any formatting as claimed. The second portion of the data corresponds to the tags that inherently contain formatting for the first portion specified in a platform-independent manner (i.e., <B> and </B>). Specifically, the tags specify that the text within the tags will be bolded when rendered in a browser. Significantly, such formatting is platform-independent since the formatting will be rendered in many diverse browsers across multiple platforms. When the HTML document is rendered in a browser (e.g., a Windows-based browser such as MS Internet Explorer), the second portion (bold tags) are transformed to generate a platform-dependent formatting portion (bolded font) for display. If the user then prints this displayed bolded text from the browser, the browser would inherently combine the first portion (text) with the platformdependent portion (bold font) to generate data suitable for transmission to the printer (bolded text formatted for printing). 8
claims fall with claim 1. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987); see also 37 C.F.R. 41.37(c)(1)(vii). Regarding claim 5, we agree with the Examiner that Hick s teaching of appending the job ticket to the printer-independent printer language file reasonably teaches that the job ticket and language file are at least initially held in separate files. Even if the first and second portions are ultimately transmitted to the server as a single file as Appellant argues, the scope of the claim simply does not preclude the job ticket being separate from the printer language file prior to appending the job ticket to the printer language file. The rejection of claim 5 is therefore sustained. Regarding claim 18, Appellant argues that Hicks does not disclose the limitations of the claim for reasons described in the foregoing (Br. 11). For the reasons previously discussed in connection with claim 1, however, Appellant has not rebutted the Examiner s prima facie case of anticipation based on Hicks. Accordingly, we will sustain the Examiner s rejection of claim 18 as well as claims 19 and 21 dependent thereon. Moreover, since the limitations recited in claim 23 are commensurate with claim 5, we will likewise sustain the Examiner s rejection of claim 23 for the reasons previously discussed with respect to claim 5. Regarding claims 26 and 28-30, Appellant similarly argues that Hicks does not disclose the limitations of the claims for reasons described in the foregoing (claims 26, 29, and 30) (Br. 12, 14) or for reasons described above (claim 28) (Br. 13). For the reasons previously discussed in connection with claim 1, however, Appellant has not rebutted the Examiner s prima facie case of anticipation. Accordingly, we will sustain the Examiner s rejection of claims 26 and 28-30. 9
The Obviousness Rejections We next consider the Examiner s rejection of claims 7, 9-11, 20, 22, 24, 25, 27, 31, and 32 under 35 U.S.C. 103(a) as unpatentable over Hicks in view of Hamalainen. In rejecting claims under 35 U.S.C. 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Furthermore, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.... [H]owever, the 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 employ. KSR Int l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). If the Examiner s burden is met, the burden then shifts to the Appellant to overcome the prima facie case with argument and/or evidence. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Regarding claims 7 and 9-11, the Examiner s rejection essentially finds that Hicks teaches every claimed feature except that the device independent language is XML (claims 7 and 9) or the transforms written in XSL (claims 10 and 11). The Examiner, however, cites Hamalainen as teaching these features and concludes that it would have been obvious to one 10
of ordinary skill in the art at the time of the invention to modify the device independent language and transforms of Hicks to include XML and XSL respectively to allow the invention to be used on any available device and transform data to data with specific formatting (Answer 8-9). Regarding claims 7, 9-11, and 27, Appellant essentially reiterates the previous arguments made in connection with independent claim 1 and also argues that Hamalainen fails to cure the previously-noted deficiencies of Hicks (Br. 14-17). Appellant adds that Hamalainen does not teach or suggest transforming a second portion containing formatting in a platform independent manner to generate a platform dependent portion as claimed (Br. 15). We will sustain the Examiner s rejection of claims 7, 9-11, and 27. In short, Appellant has not persuasively rebutted the Examiner s prima facie case of obviousness. Specifically, the Examiner has (1) pointed out the teachings of Hicks, (2) noted the perceived differences between Hicks and the claimed invention, and (3) reasonably indicated how and why Hicks would have been modified by the teachings of Hamalainen to arrive at the claimed invention. Once the Examiner has satisfied the burden of presenting a prima facie case of obviousness, the burden then shifts to Appellant to present evidence or arguments that persuasively rebut the Examiner s prima facie case. Appellant s argument regarding Hamalainen is simply not germane to the reason the Examiner cited the reference. Hicks reasonably teaches transforming a second portion containing formatting in a platform independent manner to generate a platform dependent portion as claimed for the reasons previously discussed. Significantly, Appellant did not dispute 11
the Examiner s findings regarding Hamalainen s teachings regarding XML and XSL or the rationale for combining the references a position that we find reasonable. Since Appellant has not persuasively rebutted the Examiner s prima facie case of obviousness for claims 7, 9-11, and 27, the Examiner s rejection of those claims is therefore sustained. Moreover, since Appellant has not separately argued the patentability of claims 20, 22, 24, 25, 31, and 32, the Examiner s rejection of these claims is likewise sustained. 3 See In re Nielson, 816 F.2d at 1572, 2 USPQ2d at 1528 (Fed. Cir. 1987); see also 37 C.F.R. 41.37(c)(1)(vii). Likewise, we will sustain (1) the Examiner s obviousness rejection of claim 13 over the teachings of Hicks in view of Ritchie, and (2) the Examiner s obviousness rejection of claim 14 over the teachings of Hicks in view of Marmor. We find that (1) the Examiner has established at least a prima facie case of obviousness for these claims (Answer 10-11), and (2) Appellant has not persuasively rebutted the Examiner s prima facie case. The Examiner s rejections of claims 13 and 14 are therefore sustained. 3 We note in passing that no antecedent basis exists for the first transform and the second transform in claims 24 and 25 respectively. Because the parties did not raise this issue on appeal, it is not before us. In an ex parte appeal, "the [B]oard... is basically a board of review - we review... rejections made by patent examiners." Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). Accordingly, we leave resolution of this issue to the Examiner and the Appellant. 12
New Grounds of Rejection Under 37 C.F.R. 41.50(b) Under 37 C.F.R. 41.50(b), we enter new grounds of rejection under 35 U.S.C. 101 for claims 18-22, 24, and 25. 35 U.S.C. 101 provides: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Claims 18-22, 24, and 25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Independent claim 18 merely recites a data structure with two portions: (1) a platform-independent portion, and (2) a portion with formatting information. The claimed data structure, however, merely constitutes descriptive material per se and is therefore not statutory. A data structure is defined as [a] physical or logical relationship among data elements, designed to support specific data manipulation functions. In re Warmerdam, 33 F.3d 1354, 1362, 31 USPQ2d 1754, 1760 (Fed. Cir. 1994). Significantly, the claimed data structure does not define any structural and functional relationships between the data structure and other claimed aspects of the invention that permit the data structure s functionality to be realized. See Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz. Pat. Office 142, 151 (Nov. 22, 2005) ( Interim Guidelines ). Although the data structure of claim 18 is accessible by a processing apparatus for processing and subsequent transmission to a data-receiving device, such a functional recitation hardly distinguishes the claimed data structure from mere descriptive material which would also be so accessible. 13
In short, the claim merely recites data per se nonstatutory descriptive material. See id. We reach this conclusion notwithstanding the data structure s containing a second portion that specifies how the first portion of the data should be displayed. Like the first portion of the data, the recited formatting information in the second portion is merely descriptive material that, without more, simply fails to define structural and functional relationships between the data structure and other claimed aspects of the invention to permit the data structure s functionality to be realized. Regarding claims 19-22, 24, and 25, the claims merely recite mark-up languages. But for the reasons discussed above, these claims fail to recite any structural and functional relationships between the data structure and other claimed aspects of the invention that permit the data structure s functionality to be realized. Accordingly, the claims merely recite non-statutory descriptive material. For at least these reasons, claims 18-22, 24, and 25 fail to recite statutory subject matter under 101. 4 DECISION We have sustained the Examiner s rejections with respect to all claims on appeal. Therefore, the Examiner s decision rejecting claims 1-32 is affirmed. Moreover, we have entered a new grounds of rejection under 4 Our conclusion does not apply, however, to claim 23 calling for arranging the first and second portions in separate files. Since claim 23 minimally recites a structural and functional relationship between the data structure and other claimed aspects of the invention, the claim meets the threshold for statutory subject matter under 101. 14
37 C.F.R. 41.50(b) for claims 18-22, 24, and 25 as failing to recite statutory subject matter under 35 U.S.C. 101. This decision contains a new ground of rejection pursuant to 37 C.F.R. 41.50(b) (amended effective Sept. 13, 2004, by final rule notice 69 Fed. Reg. 49960 (Aug. 12, 2004), 1286 Off. Gaz. Pat. Office 21 (Sept. 7, 2004)). 37 C.F.R. 41.50(b) provides that [a] new ground of rejection... shall not be considered final for judicial review. 37 C.F.R. 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner.... (2) Request rehearing. Request that the proceeding be reheard under 41.52 by the Board upon the same record.... 15
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 37 C.F.R. 41.50(b) rwk HEWLETT-PACKARD COMPANY Intellectual Property Administration P.O. Box 272400 Fort Collins, CO 80527-2400 16