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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
U.S. Patent No.	6,993,707
Title:	Document Placemarker
Inventors	David Baker and Walter L. Smith
Reexam Control No.:	90/010,473
Reexam Filing Date:	March 27, 2009
Examiner:	B. James Peikari
Confirmation No.:	7094
Mail Stop Amendment
Commissioner for Patents P.O. Box 1450
Alexandria, VA 22313-1450
RESPONSE TO
OFFICE ACTION IN EX PARTE REEXAMINATION
Sir:
This communication is responsive to the Non-Final Office Action in Ex Parte
Reexamination dated August 28, 2009, concerning the above-referenced patent application.
Remarks/Arguments begin on page 2 of this document.

REMARKS 
The Patent Owner respectfully requests reconsideration of the present application for the following reasons.
Introduction 
Claims 1-7 of the '707 patent have been rejected as anticipated by U.S. Patent No. 6,085,161 to MacKenty (claims 1-5 and 7) or obvious in view of MacKenty in combination with U.S. Patent No. 7,058,887 to Cragun (claim 6).
The Patent Owner respectfully traverses these rejections on the grounds that MacKenty does not teach (a) a "method of marking the position of a string in a document" or (b) "storing the positional value and the URL on a computer accessible medium," as described in the '707 patent and recited in independent claims 1, 4, and 7.1
In particular, MacKenty describes a system in which an HTML document is parsed into a "tree data structure" so that it can be read aloud. If the user moves to a different document, the system parses the new document into a new tree structure and reads it, but retains the point at which the reading stopped in the original tree, so that the reading can resume when the user returns to the original tree. Thus, MacKenty only describes maintaining the point in the tree data structure (not in the original document) at which the reading stopped, not marking the location of a string in the original document. Notably, once MacKenty converts the original document into the tree data structure, it is done with the original. There is no mechanism for maintaining any connection between the tree structure and the original document, for connecting the "read cursor" to the original document, or for marking a location of a string in the original document.
1 In claim 7, the term "webpage" is substituted for "document" in this claim language. This change does not affect the analysis.
The Invention of the '707 Patent 
The '707 patent is directed to a method of marking the position of a string in a document that includes the steps of (a) retrieving the document, (b) establishing a cursor location in the document associated with the beginning of the string, (c) parsing the source HTML in the document for a positional value representative of the number of HTML tags prior to the cursor location, (d) identifying the URL of the document, and (e) storing the value and the URL on a computer accessible medium. (Col. 3, 11. 9-18.)
The invention of the '707 patent, embodied in the Patent Owner's industry standard JAWS® screen reader product,2 allows a visually impaired computer user to return to the location of a string in a given document or webpage that may change over time. In one example, the patent explains that
if the user frequents a web site maintained by a retailer, the details of the web site may change with inventory changes, but the general layout of the web site will probably be the same. Thus, the user may mark portions of the web site of particular interest, such as, for example, audio equipment. Upon returning to the web site, the user would need only to activate the Placemarker for audio equipment. The algorithm would then move to the corresponding location on the web site and display audio equipment upon the computer monitor.
(Col. 12, 11. 52-62.) Accordingly, the '707 patent is directed to a system in which a user may mark the locations of specific portions of potentially changing documents that are of particular interest, so that the user may return to those particular portions quickly and easily.
2 While the Request implies that Freedom Scientific has asserted the '707 patent against GW Micro in a way that would "have a chilling effect on product development for visually impaired persons" (Request, at 3) the more complete story is that Freedom Scientific is a world leader in the development of products for the visually impaired (see www.freedomscientific.com) and is merely seeking to protect its substantial investment in research and development.
The MacKenty Reference 
As described in its Abstract, MacKenty concerns a system for "[r]epresenting HTML documents audibly" that "includes the steps of assigning (214) unique sounds to HTML tags and events encountered in an HTML document, producing the associated sounds whenever those tags or events are encountered (218), and representing encountered text as speech (220)." MacKenty
includes a "parser" for determining the structure of the HTML in the document," a "reader" for "sonifying" the document, and a "navigator" for allowing the user to select portions of the document to be sonified. (Col., 3, 11. 13-20.)
MacKenty also describes how the system may maintain the location of a single "read cursor" in the parsed tree data structure in memory so that "when a user switches to another page in the list the invention can continue reading a document from the position at which it stops when last reading that page." (Col. 6, 11. 54-56.)
In MacKenty, the read cursor location that is maintained in memory is the location in the parsed tree data structure where the reading stopped, not the location of a particular string in the original HTML document. MacKenty provides no mechanism for marking a location in the original HTML document, nor would there be any reason to even try to do that in a system like MacKenty.
The Request argues that MacKenty is important because it is claimed to "explicitly address[] what the '707 applicants told the Patent Office was the primary deficiency in the prior art," namely, that the prior art did not allow a user to "return to a previously read portion of the document." (Request, p. 2.) This argument is simply incorrect. MacKenty only allows a user to return to the place in the tree data structure (not the document) where the reading stopped; it does not allow a user to return to a "previously read portion of the document."
Claim Resections — 35 U.S.C. 102 
Claims 1-5 and 7 stand rejected under 35 U.S.C. § 102(b) as being anticipated by MacKenty. For the following reasons, the Patent Owner respectfully requests that these rejections be withdrawn.
MacKenty Does Not Teach
"Marking The Position Of A String In A Document"
The Request and the Office Action both conclude that MacKenty teaches "a method of marking the position of a string in a document" because MacKenty employs a "read cursor" and an "enqueue cursor" that lie at either end of the segment of text in the tree data structure that is about to be read at a given time. This clearly is not "marking the position of a string in a document," as described and claimed in the '707 patent.3
The "document" in which a string is marked in the method claimed in the '707 patent is the original HTML document. This is clear from the specification, as well as the claim language itself, which describes "marking the position of a string in a document," where "the document" is the original HTML document.
In MacKenty, on the other hand, the read and enqueue cursors define the current reading queue in a parsed tree data structure generated by a parser; there is no way to link that queue or those cursors to the original HTML document. If, for example, the original document changed, MacKenty would have no way of handing that short of re-parsing the document. This is not
described, of course, because it is not something that MacKenty is meant to address. Thus, MacKenty clearly does not describe a method for "marking the position of a string in a document," as claimed.
In addition, even if the parsed tree could be the claimed "document," MacKenty explains that the portion of the document between [the read and enqueue] cursors is what has been enqueued for reading but has not yet been sonified." (Col. 5, 11. 31-33.) Thus, the MacKenty
3 The preambles are limiting because they provide the antecedent basis for the claim terms "string" and "document." See, e.g., Bicon, Inc. v. Straumann Co., 441 F. 3d 945, 955 (Fed. Cir. 2006) ("finding the preamble limiting because "the body of the claim . . . refers back to the features of the abutment described in the preamble, so that the references to the abutment in the body of the claim derive their antecedent basis from the preamble").
cursors simply define a buffer of text to be read aloud. Because the portion of the parsed document that is located between the MacKenty cursors is constantly changing as the text is sonified by the reader and the cursors move though the document, the cursors cannot be said to mark the position of a particular string in a document.
Moreover, even assuming that the MacKenty cursors could be said to correspond to a specific portion of the text, they do not "mark" the position of the text in the sense of the '707 patent because they do not provide a mechanism to allow a user to return to that specific portion of the text. In fact, there is no description in MacKenty of anything that would allow the marking of a particular segment of the text at all (even in the tree data structure), much less a description of a method that would allow a user to mark the location of a particular portion of the original HTML document in a way that would allow it to be quickly revisited at a later time.
The portion of MacKenty that describes how a "list of the most recently requested, parsed HTML tree structures and their associated read cursors may be maintained"—relied upon heavily by the Request and the Office Action—does not describe marking the position of a string in a document, even assuming for the sake of argument that the tree data structure can be the claimed "document." MacKenty maintains the data tree structures and the read cursor locations so that "when a user switches to another page in the list the invention can continue reading a document from the position at which it stops when last reading that page." (Col. 6, 11. 53-56.) From this, it is clear that MacKenty is simply maintaining the position at which the reading of a parsed document stopped, and that it is not "marking the position of a string" in the document.
Notably, because MacKenty "maintains" only the read cursor, and not the enqueue cursor (see col. 6, 11. 46-48), the analyses of the Request and the Office Action, which depend on the use of both cursors (Office Action, p. 3 ("marked by cursors"); Request, p. 5 ("MacKenty uses two cursors to mark the position")) must be erroneous. If the "string" in MacKenty is defined by both cursors, then the "string" cannot be "marked," because only one of the cursors is "maintained."
These are not trivial distinctions. As explained above, the method described and claimed in the '707 patent is one that facilitates the marking of a specific portion of an HTML document
so that the user (or another user) may return at another time to the same place easily and even if the contents of the document have changed. MacKenty does not do this at all.
Because MacKenty's method, which simply tracks the text to be spoken with a pair of cursors in a parsed tree data structure, does not "mark[] the position of a string in a document,"
as described and claimed in the '707 patent, MacKenty cannot anticipate independent claims 1, 4, or 7, or their dependent claims 2-3, and 5, and the Patent Owner respectfully requests that these rejections be withdrawn.
MacKenty Does Not Teach "Storing The
Positional Value And The URL On A Computer Accessible Medium"
Both the Request and the Office Action maintain that the "storing the positional value and the URL on a computer accessible medium" limitation of independent claims 1, 4, and 7 is met
in the following paragraph of MacKenty:
A list of the most recently requested, parsed HTML tree structures and their associated read cursors may be maintained. The user can move linearly from document to document in this list, which provides the "history" of visited HTML documents commonly implemented in browser software. However, by maintaining the read cursor along with each parsed document, when a user switches to another page in the list the invention can continue reading a document from the position at which it stops when last reading that page.
(Col. 6,11. 47-56.)
This passage does not meet the claim limitations, however, because it merely shows that MacKenty retains the static parsed tree structures for later use in a given session, not URLs so that a user can return to the same location in the original document (which may have changed) at a later time. This fundamental difference is manifested in the claim language in at least two ways.
First, there certainly is no teaching in MacKenty of "storing . . . the URL." At pages 3-4, the Office Action states that "by storing the HTML trees, the list must reference their URLs for use by the browser utility." This is not true at all, most particularly because the tree data structures that MacKenty uses are not HTML documents that would have URLs.
The MacKenty system describes maintaining "each parsed document"—the tree data structure that is the output of MacKenty's parser—not the original document or its URL. (Col. 6, 1. 53.) This is sufficient in MacKenty because MacKenty is not concerned about marking strings in original HTML documents for later retrieval, but instead simply maintains the parsed documents in the current session so that a user can restart the reading of a given page where it stopped. Again, this is very different than the system described and claimed in the '707 patent, which creates markers that identify portions of HTML documents that can be stored, reused, and even shared.
The portion of MacKenty identified in the Office Action that describes using URLs (col. 3, 11. 36-40) relates to requesting the HTML documents in the first instance (before parsing into a tree), not locating or rendering (or re-rendering) content that has already been parsed into data tree structures. Once MacKenty retrieves and parses a document, it works exclusively with the parsed tree and has no reason to return to the original document or use its URL.
Simply put, MacKenty does not "store . . . the URL" because it does not use the URLs after creating the tree structure, and thus has no reason to store them.
Second, MacKenty does not teach "storing . . . on a computer accessible medium" as that term is used in the specification and claims of the '707 patent. Because the invention and claims are directed to a system that creates "placemarkers" that are retained for future use, the "storing" of the independent claims of the '707 patent involves writing the placemarkers to a file for later use, not simply maintaining them in memory allocated to an instance of the program. The specification is very clear on that point:
The invention contemplates that the fixed Placemarkers are retained within their own proprietary Placemarker file that is written and read by the JAWS® screen reader program. . . . Because the Placemarkers are stored in a separate file, the fixed Placemarkers are preserved when the user moves between pages or windows of the displayed document.
(Col. 12, 11. 37-44; see also col. 4, 11. 43-44 ("The Placemarkers are stored in a separate Placemarker file, such as in a user's personal computer."); col. 14, 11. 19-31 ("To Share the
Placemarkers with Other JAWS Users . . . Placemarker information is stored in .PMI files."). In fact this arrangement is illustrated in Fig. 1:
Fig. 1
20
The storage system of the '707 patent can be contrasted with Fig. 1 of MacKenty, which shows that the HTML documents are parsed and delivered directly to the reader:
Internet
Document	13
— 16
VirluaI Dortumen
,	I 	
Piacemarket
Flies
ii
HTML DvvAnnearsFrcrqe
NAVIGATOR	
\ i6
As explained in the MacKenty specification, "[t]he parser 12 may store the tree data structure that it generates in a convenient memory element that is accessible by both the parser 12 and the reader 14" or alternatively, the parser 12 may communicate the tree data structure directly to the reader 14." (Col. 4, 11. 53-55.) As for the reader: "In some embodiments the reader 14 accesses a separate memory element which contains the tree, while in other embodiments the reader 14 provides a memory element in which the tree structure is stored." (Col. 4, 11. 62-65.)
MacKenty says nothing about storing any information to a file because it has nothing to do with the creation of persistent placemarkers.
The argument in the Office Action that the list itself (in the "memory element") can be the claimed "computer accessible medium" cannot be correct; if it were, the "storing" limitation would be completely unnecessary, as the entire method is already being performed on a computer. In other words, if "storing" is construed to mean maintaining the list in memory, that would describe what is inherent in the rest of the claim, and the language would not be limiting or otherwise add any meaning Because claims must be construed in a manner that does not render terms superfluous, the "computer accessible medium" cannot be the list itself. See, e.g., Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-31 (Fed. Cir. 2008) (rejecting claim construction that "ascribes no meaning to the term . . . not already implicit in the rest of the claim.").
Because MacKenty's method, which simply maintains the parsed tree structures and read cursors in memory during a given session, does not "stor[e] the .. URL on a computer accessible medium," as described and claimed, MacKenty cannot anticipate independent claims 1, 4, or 7, or their dependent claims 2-3 and 5, and the Patent Owner respectfully requests that these rejections be withdrawn for this reason as well.
MacKenty Does Not Teach Additional Steps Recited in Claims 4 and 7
Independent claims 4 and 7 each recite additional steps, including "retrieving the positional value for the URL from the computer accessible medium" and "parsing the source HTML in the document until the quantity of tags parsed equals the positional value." As explained above, MacKenty does not "store" the positional value or a "URL," and does not parse the source HTML in the document until the quantity of tags parsed equals the positional value (particularly because it has no use for the source document). Thus, claims 4 and 7, and dependent claims 5 and 6, are even more distinguishable from, and patentable over, MacKenty.
Claim Resections — 35 U.S.C. 103 
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over MacKenty in view of U.S. Patent No. 7,058,887 to Cragun.
The Patent Owner traverses this rejection on the grounds that, as explained above, MacKenty fails to teach various limitations of independent claim 4, which are not found in Cragun either.
CONCLUSION 
The Patent Owner believes that the present application is now in condition for allowance. Favorable reconsideration of the application is respectfully requested.
The Examiner is invited to contact the undersigned by telephone if it is felt that a telephone interview would advance the prosecution of the application.
The Commissioner is hereby authorized to charge any additional fees which may be required regarding this application under 37 C.F.R. §§ 1.16-1.17, or credit any overpayment, to Deposit Account No. 19-0741. Should no proper payment be enclosed herewith, as by the credit card payment instructions in EFS-Web being incorrect or absent, resulting in a rejected or incorrect credit card transaction, the Commissioner is authorized to charge the unpaid amount to Deposit Account No. 19-0741.
If any extensions of time are needed for timely acceptance of papers submitted herewith, the Patent Owner hereby petitions for such extension under 37 C.F.R. § 1.136 and authorizes payment of any such extensions fees to Deposit Account No. 19-0741.
Respectfully submitted,
Date 	October 28, 2009 	By 	/s/ Aaron W. Moore 
FOLEY & LARDNER LLP 111 Huntington Ave
Boston, Massachusetts 02199
Telephone:	(617) 342-4019
Facsimile:	(617) 342-4001
Aaron W. Moore
Attorney for The Patent Owner Registration No. 52,043