Ex Parte Cope

Patent Trial and Appeal Board

Mar 7, 2013

12035584 (P.T.A.B. Mar. 7, 2013)

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.
12/035,584 02/22/2008 Brian Charles Cope GB920000090US2
(180DIV)
1250
46320 7590 03/07/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
AVELLINO, JOSEPH E
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
03/07/2013 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 BRIAN CHARLES COPE
____________

Appeal 2010-010698
Application 12/035,584
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III,
and CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 8-11, 13, 16, and 17. Claims 2, 4-7, 12, 14, and 15 have been
cancelled. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

Appeal 2010-010698
Application 12/035,584

2
STATEMENT OF THE CASE
Appellant’s claimed invention is directed to “methods, apparatus and
computer programs for enabling tracking of a user’s sequence of Web
Browser requests when navigating within a single Web site.” (Abstract).
Independent claim 13 is representative of the subject matter on appeal:
13. A method for tracking a plurality of Web Browser requests for
access to resources within a particular Web site, the requests having
been sent from a Web Browser to a Web server for accessing
resources within the Web site and then having been redirected to a
request tracker separate from the Web server, the method
implemented by the requests tracker comprising:

determining a session identifier,

logging the request together with the session identifier, and

redirecting the request back to the Web server for processing,

said determining, logging and redirecting steps being performed
externally to the Web server and the Web Browser.

REJECTIONS
The Examiner rejected claim 1 under 35 U.S.C. § 101 on the ground
of statutory double patenting based upon claim 1 of Cope (US 7,346,703
B2).
The Examiner rejected claims 13, 16, and 17 under 35 U.S.C.
§ 102(b) as being anticipated by Dustan (US 5,884,312).
The Examiner rejected claims 1 and 8-11 under 35 U.S.C. § 103 based
upon the combined teachings and suggestions of Pandya (US 6,671,724 B1)
and Dustan.
Appeal 2010-010698
Application 12/035,584

3
The Examiner rejected claim 3 under 35 U.S.C. § 103 based upon the
combined teachings and suggestions of Dustan, Pandya, and Pogue (US
6,112,240).
ANALYSIS
Statutory Double Patenting Rejection of Claim 1
At the outset we observe that the assignee of record of the cited Cope
‘703 patent and the real party in interest of the instant application on appeal
are the same: International Business Machines Corporation. The Cope ‘703
patent and the application on appeal and also share the same inventive
entity: Inventor Brian Charles Cope, a resident of Great Britain.
In a statutory double patenting rejection under 35 U.S.C. § 101, the
issue is whether the same invention is being claimed twice. The “same
invention” means identical subject matter. Miller v. Eagle Mfg. Co., 151
U.S. 186, 197 (1894). As expressed by the court in In re Vogel, 422 F.2d
438, 441 (CCPA 1970), “[a] good test, and probably the only objective test,
for ‘same invention,’ is whether one of the claims could be literally infringed
without literally infringing the other. If it could be, the claims do not define
identically the same invention.”
We agree with Appellant (referring to the claim chart provided on
pages 6-7 of the principal Brief):
Referring to the underlined portion of the above chart, for
claim 1 of the '703 Patent to be literally infringed, these
(underlined) limitations would necessarily be present. However,
if these limitations are not present, claim 1 of the '703 Patent
would not be literally infringed, yet claim 1 of the present
application would be literally infringed. Thus, there exists a
claim in the present application that can be literally infringed
without literally infringing a corresponding claim in the '073
Patent. Therefore, as guided by the above-reproduced test, a
Appeal 2010-010698
Application 12/035,584

4
rejection of claim 1 of the present application for double
patenting based upon claim 1 of the '703 Patent is not proper.

(App. Br. 7-8).
See also MPEP §804(II)(A) (“A reliable test for double patenting
under 35 U.S.C. [§]101 is whether a claim in the application could be
literally infringed without literally infringing a corresponding claim in the
patent.”) (Emphasis added).
Because the broader scope of claim 1 of the present application on
appeal could be literally infringed without infringing the narrower scope of
claim 1 of the ‘703 patent (which recites several limitations that are the same
as application claim 1, and also several additional limitations that are not
recited in application claim 1), we reverse the Examiner’s statutory double
patenting rejection under 35 U.S.C. § 101 of application claim 1 over claim
1 of Cope.
Anticipation Rejection of claims 13, 16, and 17
Based on Appellant’s arguments, we decide the appeal of the
anticipation rejection of claims 13, 16, and 17 on the basis of representative
claim 13. See 37 C.F.R. § 41.37(c)(1)(iv).
Issue: Under § 102, did the Examiner err in finding that Dustan
discloses the disputed limitation of “redirecting the request back to the Web
server for processing,” within the meaning of representative claim 13?
Appellant’s position, as articulated on page 9, line 7 through page 13,
line 3 of the principal Brief, is that Dustan fails to either explicitly or
inherently teach this redirecting limitation. In the Reply Brief, Appellant
summarizes the objections to the Examiner’s finding of anticipation:

Appeal 2010-010698
Application 12/035,584

5
First, the alleged request (i.e., "an account number and
password which is encrypted") has already been presented to
the web server 20. Since Dustan fails to teach that this request
is deleted within the web server 20 prior to sending the request
to the database server 22, it is not necessary to send the request
back to the database server 22 because the request already
resides within the web server 20.

Second, Dustan explicitly refers to returning control back
to the logon script 110 (which is within the web server 20). The
Examiner has produced no substantial evidence to support a
finding that the alleged request (i.e., "an account number and
password which is encrypted") needs to be sent back to the
logon script in order for control to be returned back to the logon
script 110. One can easily envision a functional data structure,
different than the request, that is sent back to the logon script
110 by which control is returned back to the logon script 110.

(Reply Brief 6-7).

At the outset, we observe that claim 13, is directed to “[a] method for
tracking a plurality of Web Browser requests . . . the requests having been
sent from a Web Browser to a Web server for accessing resources within the
Web site and then having been redirected to a request tracker separate from
the Web server . . . .” We observe that when the “plurality of Web browser
requests” is later referenced in claim 13 (“logging the request . . . , and
redirecting the request”) the language of the claim is imprecise as to which
particular request of the plurality of requests is being logged and redirected.
Turning to the Dustan reference, we find at least the portion of
column 14 referred to by the Examiner (Ans. 18) describes the invention as
claimed:
For example, when a user initially logs on, web server
program 68 initiates logon script 110 which prompts the user to
Appeal 2010-010698
Application 12/035,584

6
enter an account number and a password. Once this information
is received at web server program 68, logon script 110 accesses
database management system 88 and provides the
corresponding account number and password. Logon script 110
instructs database management system 88 to execute a logon
stored procedure 120 to assist with the logon process. Logon
stored procedure 120, under the control of database
management system 88, accesses a user table 132 and verifies
the provided account number and password. Also, log on stored
procedure 120 accesses an activity log table 134 and generates
a record reflecting the logon event. If the account number and
password are verified, control returns to logon script 110.
Logon script 110 may then generate a main menu of the
brokerage application and provide it to the client as a web page.

(Dustan, col. 14, ll. 51-67).

Referring to the aforementioned (col. 14) description of Dustan’s
Figure 3, we find a session identifier is determined (the user account
number1 is verified by logon stored procedure 120 using activity log table
134 depicted within database server 104; Dustan, col. 14, l. 61), the request
is logged with the session identifier (“generates a record reflecting the logon
event”; Dustan, col. 14, ll. 63-64, as performed by activity log table 134
which is also depicted within database server 104), and the request is
redirected to the web server for processing (“If the account number and
password are verified, control returns to logon script 110”; Dustan col. 14,
ll. 64-65, where logon script 110 is depicted as being part of web server
102). Thus, we find the recited determining, logging, and (disputed)

1 Cf. Appellant’s Specification, p. 11, ll. 6-9: “The logging process logs the
request details together with a session identifier (which may be an explicit
session identifier or an identifier of the client system or end user) . . . .”
(Emphasis added).
Appeal 2010-010698
Application 12/035,584

7
redirecting steps are performed externally to web server 102 and the web
browser (Dustan, Fig. 3, web browser client).
Notwithstanding Appellant’s arguments, on this record, we find the
weight of the evidence supports the Examiner’s finding of anticipation.
Therefore, we sustain the anticipation rejection of representative claim 13.
Claims 16 and 17 (not separately argued) fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Claims 1 and 8-11 rejected under §103
Based on Appellant’s arguments, we decide the appeal of the
obviousness rejection of claims 1 and 8-11 on the basis of representative
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding claim 1, Appellant contends:
Similar to claim 13, independent claim 1 recites
forwarding the request back to the Web server for processing.
To teach these particular limitations, the Examiner relied upon
Dustan. However, as noted above, Dustan fails to teach this
particular limitation. Therefore, the Examiner has
mischaracterized the scope and content of the applied prior art.
For above-described reasons, the Examiner has failed to
establish that the claimed invention, as recited in claims 1 and
8-11 would have been obvious within the meaning of 35 U.S.C.
§ 103. Applicant, therefore, maintains that the Examiner has
failed to establish that the claimed invention, as recited in
claims 1 and 8-11, would have been obvious, within the
meaning of 35 U.S.C. § 103, based upon the combination of
Pandya and Dustan.

(App. Br. 13).
Because we find no deficiencies with Dustan, we sustain the
Examiner’s obviousness rejection of representative claim 1 for the same
Appeal 2010-010698
Application 12/035,584

8
reasons discussed above regarding claim 13. Claims 8-11 (not separately
argued) fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

Dependent Claim 3 rejected under §103
Appellant contends:
Claim 3 depends from independent claim 1, and
Appellant incorporates herein the arguments previously
advanced in traversing the imposed rejection of claim 1 under
35 US.C. § 103 for obviousness based upon Pandya and
Dustan. The tertiary reference to Pogue does not cure the
argued deficiencies of Pandya and Dustan. Accordingly, even if
one having ordinary skill in the art were motivated to modify
Pandya in view of Dustan and Pogue, the proposed combination
of references would not yield the claimed invention. Appellant,
therefore, respectfully submits that the imposed rejection of
claim 3 under 35 US.C. § 103 for obviousness based upon
Pandya in view of Dustan and Pogue is not viable.
(App. Br. 14).
Because we find no deficiencies with the base combination of Dustan
and Pandya (see discussion above), we sustain the Examiner’s obviousness
rejection of dependent claim 3 for the same reasons discussed above
regarding claim 13.

DECISION
We reverse the Examiner’s rejection under §101 of claim 1 on the
ground of statutory double patenting.
We affirm the Examiner’s rejection under § 102 of claims 13, 16, and
17.
We affirm the Examiner’s rejections under § 103 of claims 1, 3, and
8-11.
Appeal 2010-010698
Application 12/035,584

9
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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).

ORDER
AFFIRMED

pgc