Mestres, Xavier et al.

Patent Trials and Appeals Board

Mar 16, 2020

13112792 - (D) (P.T.A.B. Mar. 16, 2020)

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.
13/112,792 05/20/2011 Xavier Mestres UZM-1001 8185
36088 7590 03/16/2020
KANG LIM
3494 Camino Tassajara #444
Danville, CA 94506
EXAMINER
KASSIM, HAFIZ A
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
03/16/2020 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 XAVIER MESTRES, JAVIER DARRIBA,
ALFONSO DE LA NUEZ, ALBERT RECOLONS, and
FRANCESC DEL CASTILLO
____________________

Appeal 2019-003269
Application 13/112,792
Technology Center 3600
____________________
Before JON M. JURGOVAN, MICHAEL M. BARRY, and
IFTIKHAR AHMED, Administrative Patent Judges.
AHMED, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 30–45, all of the pending claims. Claims 1–29 are cancelled and
claims 46–55 are withdrawn. Appeal Br. 1, 20–24. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, the real party in interest is UserZoom
Technologies, Inc. Appeal Br. 3.
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Application 13/112,792

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Technology
The application relates to “gathering usability data for a web site.”
Spec. ¶ 2.
Illustrative Claim
Claim 30 is illustrative and reproduced below with certain limitations
at issue emphasized:
30. A computer-implemented method of performing
unmoderated remote usability testing of a target web site using a
computing system, the method comprising:
identifying, by the computing system, a target web site, the
target web site being displayed in a browser application of a
participant computing system connected to the computing
system, wherein the target website includes a virtual tracking
code that is inserted to the target website by the participant
computing system when the target website is being downloaded
by the participant computing system;
monitoring, by the computing system, a plurality of
activities of a user of the participant computing system in relation
to the target web site, wherein monitoring the plurality of
activities includes receiving an indication of the plurality of
activities from the participant computing system, the indication
generated by the participant computing system via executing the
virtual tracking code;
using, by the computing system, a program to determine a
usability of the target web site in accordance with the plurality of
activities; and
modifying, by the computing system, the target web site
based at least in part on the plurality of activities.
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REJECTIONS
Claims 30–33, 35–41, and 43–45 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Yavilevich (US
7,941,525 B1; May 10, 2011) and Van Duyne (US 6,859,784 B1; Feb. 22,
2005). Final Act. 6.
Claims 34 and 42 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Yavilevich, Van Duyne, and Dong (US
6,738,082 B1; May 18, 2004). Final Act. 15.
ISSUE
Did the Examiner err in finding that Yavilevich teaches or suggests
“the target website includes a virtual tracking code that is inserted to the
target website by the participant computing system when the target website
is being downloaded by the participant computing system,” as recited in
claim 30?
ANALYSIS
Independent claim 30 recites a “target website [that] includes a virtual
tracking code that is inserted to the target website by the participant
computing system when the target website is being downloaded by the
participant computing system.” Appeal Br. 16 (Claims App.) (emphasis
added). Independent claim 38, the only other independent claim, recites a
similar limitation.2

2 Claim 38 recites a non-transitory, computer-readable storage medium
comprising instructions to be executed by a computer. Appeal Br. 18
(Claims App.).
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The Examiner finds that Yavilevich teaches or suggests this
limitation. According to the Examiner, Yavilevich discloses that “a user can
visit a web site that includes one or more web pages,” and “[w]hile a web
page is displayed the user can perform various activities that are monitored
by [a] tracking code.” Final Act. 7. That tracking code, the Examiner
determines, is “being installed when the user connects to the client
computer,” and “in response to a request from client computer 100 to
download web page 122.” Ans. 4 (citing Yavilevich, Abstract, 6:3–23). The
Examiner further explains that the tracking code in Yavilevich could be
“script 124 and/or script file 132, [and] may start executing automatically or
wait for an instruction from some other piece of script in the web page 122.”
Id. The Examiner further finds that Yavilevich discloses that “initially only
a part of the tracking code is downloaded during stage 820 and that other
parts of a tracking code can be downloaded in response to the execution of
the initially downloaded tracking code.” Id. at 4–5 (citing Yavilevich, 8:31–
36 (referring to Fig. 8B)). “Stage 820 conveniently includes stage 802
during which the user visits a certain web page,” the Examiner explains. Id.
at 5 (quoting Yavilevich, 8:36–38) (referring to Fig. 8A).
Appellant argues that Yavilevich teaches “that any website to be
monitored or evaluated already includes any tracking code prior to
downloading the website.” Appeal Br. 9 (citing Yavilevich, 1:58–2:3).
Appellant contends that:
[T]he Examiner acknowledges that Yavilevich . . . discloses
“wherein the subscriber copies the code into each web-site page
that is to be monitored. When a visitor to the subscriber’s web
site (‘client’ or ‘visitor’) loads one of the web-site pages into his
or her computer, the JavaScript code collects information,
including time of day, referring page, page visited, etc.”
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Id. at 8 (citing Yavilevich, 1:56–66, referring to Final Act. 4). According to
Appellant, the subscriber in Yavilevich is “the presumed owner/operator of
website to be monitored,” not the operator of the client computer, visiting
the website. Id. at 9. Because “Yavilevich’s tracking code is a pre-
embedded integral part of the website as it sits, waiting to be requested by a
‘visitor,’” Appellant argues “Yavilevich teaches away from Appellant’s
invention by promulgating a tracking code that is already included in any
monitored website by the owner/operator of the website . . . on the web
server hosting the website.” Id. (citing Yavilevich, 1:58–2:3, Fig. 8A, Steps
801, 802) (emphasis omitted). In contrast, Appellant contends, the claimed
invention requires the tracking code to be inserted by the participant system
while the website is being downloaded, such that website “usability can be
tested on any web sites including competitions’ web sites.” Id. at 10 (citing
Spec. ¶ 23).
The Examiner counters by determining that Yavilevich discloses the
insertion of the tracking code “at the participant computer” because “in
response to a request from client computer 100 to download web page 122
(using browser 102), the web server 120 returns web page 122 to the client
100 with script 124,” i.e., the tracking code. Ans. 6 (citing Yavilevich,
Abstract, 6:17–23) (emphasis omitted).
However, the Examiner has not sufficiently explained how Yavilevich
teaches or suggests this claim limitation. In Yavilevich, the subscriber, i.e.,
the website owner, “copies the code into each web-site page that is to be
monitored,” and “[w]hen a visitor to the subscriber’s web site . . . loads one
of the web-site pages into his or her computer, the javascript code collects
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information.” Yavilevich, 1:61–66. Figure 8A, portion of which is
reproduced below, shows this order.

Figure 8A of Yavilevich, above, depicts a flowchart showing the step of the
subscriber or website owner embedding the script in a webpage, 801, occurs
before the steps of a user visiting the webpage, 802, and the user’s browser
executing the script, 803. As can be seen, the tracking code is inserted into
the webpage to be monitored before a user visits the webpage. Yavilevich
states that stage 801 “is a preliminary stage that is executed at the web
server and is not an integrated part of method 800 that is executed (at least
mainly) by a client computer.” Yavilevich, 8:27–30.
The Examiner has not sufficiently explained how the script or tracking
code in Yavilevich is inserted “by the participant computing system when
the target website is being downloaded by the participant computing
system,” as recited in claim 30. Rather, the tracking code in Yavilevich is
inserted at the server computer before the target website is downloaded to
the client computer.
The Examiner also does not rely on Van Duyne as teaching this claim
limitation in support of the obviousness rejection based on Yavilevich and
Van Duyne.
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Accordingly, given the record here, we reverse the rejection of
independent claims 30 and 38, and their dependent claims 31–37 and 39–45.
DECISION
For the reasons above, we reverse the Examiner’s decision rejecting
claims 30–45.
In summary:
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
30–33, 35–
41, 43–45
103(a) Yavilevich, Van
Duyne
30–33, 35–
41, 43–45
34, 42 103(a) Yavilevich, Van
Duyne, Dong
34, 42
Overall
Outcome
30–45
REVERSED