Elad Gil et al.

Patent Trials and Appeals Board

Jul 31, 2019

14329158 - (D) (P.T.A.B. Jul. 31, 2019)

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.
14/329,158 07/11/2014 Elad GIL 16113-0020003 5750
26192 7590 07/31/2019
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
JAIN, ANKUR
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
07/31/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ELAD GIL, SHUMEET BALUJA, MARYAM GARRETT, and
CEDRIC BEUST
____________________

Appeal 2017-009617
Application 14/329,1581
Technology Center 2600
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–6, 8, and 21–33. Claims 7 and 9–20 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).

1 According to Appellants, the real party in interest is Google, Inc. (App. Br.
1). The instant application on appeal is a continuation of Appellants’ related
U.S. Patent Application No. 11/229,980, which was the subject of the related
PTAB Decision mailed November 4, 2013 (anticipation rejection over
McCartney reversed), which application matured recently into U.S. Patent
No. 8,781,532. Additionally, Appellants note related U.S. Patent
Application No. 14/168,939, which was the subject of a PTAB Decision
mailed March 7, 2018 (reversed, but claims not commensurate in scope with
claims in instant case on appeal) (see App. Br. 1). An oral hearing
scheduled for August 21, 2019, was waived by Appellants (see election to
waive hearing attendance filed July 3, 2019, p. 2).
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We AFFIRM-IN-PART.
Disclosed Invention
Appellants disclose a software application for a mobile device (Fig. 1,
phone 105; see also Figs. 2A–E, 3A–C), and specifically a customized data
retrieval application for providing rendering of markup language data
without accessing a browser application (Spec. ¶¶ 1, 4, 5, 7, 8; see also
claims 1, 21, 27).
Exemplary Claims
Exemplary claims 1 and 27, with bracketed lettering and emphases
added to disputed portions of the claims, read as follows:
1. A method comprising:
[A] installing, by one or more processors, a data retrieval
application other than a browser on a mobile device, the data
retrieval application comprising instructions for:
[A1] presenting a structured data display on the mobile
device;
[A2] defining structure information associated with the
structured data display;
[A3] requesting selected hyperlinks included in the
structured data display; and
[A4] rendering markup language information received
based on the selected hyperlinks;
[A5] receiving, by the one or more processors, a user
request to retrieve data using the data retrieval application;
[A6] retrieving, by the one or more processors, data based
on the received user request; causing, by the one or more
processors, the retrieved data to be displayed according to the
structure information; and
[A7] enabling, by the one or more processors, selection of
a hyperlink in the displayed data, the selection of the hyperlink
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causing markup language information to be retrieved and
rendered using the data retrieval application.

27. A device comprising:
a memory to store instructions; and
one or more processors to execute the instructions to:
[B] access a data retrieval application other than a
browser installed on a mobile device;
receive, from a user interface, a user request to
retrieve data using the data retrieval application, the
interface having a structure predefined by layout data
included at an installation of the data retrieval application;
retrieve, based on the received user request, the
data; cause the retrieved data to be displayed according to
structure information associated with the data retrieval
application; and
enable selection of a hyperlink in the displayed data,
[C] the selection of the hyperlink causing markup
language information to be retrieved and rendered using
the data retrieval application without accessing the
browser application.
The Examiner’s Rejection
The Examiner rejected claims 1–6, 8, and 21–33 under 35 U.S.C.
§ 103 over the combination of McCartney et al. (US 2002/0165847 A1;
published Nov. 7, 2002)(hereinafter, “McCartney”) and Husemann et al. (US
7,577,910 B1; issued Aug. 18, 2009)(hereinafter, “Husemann”). Final Act.
2–7; Ans. 2–8.
Issues on Appeal
Appellants: (i) present arguments as to claims 1–6, 8, and 33 as a
group with independent claim 1 as representative of the group (App. Br. 8–
9; Reply Br. 1–4); and (ii) argue independent claims 21 and 27 together,
relying the arguments presented for claims 21 and 27 for the patentability of
claims 22–26 and 28–32 depending respectively therefrom (App. Br. 5–7).
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Claims 21 and 27 contain similar limitations drawn to a one or more
processors that “access a data retrieval application other than a browser
installed on a mobile device” (claims 21, 27)(emphasis added). We select (i)
claim 1 as representative of the group of claims consisting of 1–6, 8, and 33;
and (ii) claim 27 as representative of the group of claims consisting of
claims 21–32, and we will only address independent claim 1 and 27 in our
analysis herein.
Based on Appellants’ arguments in the Briefs (App. Br. 4–8; Reply
Br. 1–4), the following issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1–6, 8, and 33 under
35 U.S.C. § 103(a) over the combination of McCartney and Husemann
because the combination fails to teach or suggest the data retrieval
application of limitation [A], including instructions for the performance of
steps [A1]–[A3], as recited in claim 1?
(2) Did the Examiner err in rejecting claims 21–32 under
35 U.S.C. § 103(a) over the combination of McCartney and Husemann
because the combination fails to teach or suggest limitations [B] and [C]
recited in representative claim 27?

ANALYSIS
We have reviewed the Examiner’s rejection (Final Act. 2–7; Ans. 2–
8) in light of Appellants’ arguments in the Appeal Brief (App. Br. 4–8) and
the Reply Brief (Reply Br. 1–4) that the Examiner has erred, as well as the
Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 8–
11).

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Claims 1–6, 8, and 33
We concur with Appellants’ contentions (App. Br. 5–7; Reply Br. 1–
4) that the combination of McCartney and Husemann fails to teach or
suggest limitation [A]2 recited in independent claim 1. Specifically, we
agree with Appellants (App. Br. 5–6; Reply Br. 1–4) that the Examiner has
failed to show the combination teaches or suggests installing a data retrieval
application other than a browser that performs each of the steps of
independent claim 1, namely the presenting step of limitation [A1], the
defining step of limitation [A2], and/or the requesting step of limitation
[A3].
Neither the Examiner’s findings and reasoning in the Final Rejection
(Final Act. 2–4) and/or the Answer (Ans. 2–4), nor the response in the
Answer (Ans. 8–11), as to claim 1 provide an adequately articulated
rationale as to how/why either McCartney or Husemann teach or suggest
installing a data retrieval application other than a browser that performs the
steps in claim 1 of (i) presenting as recited in limitation [A1], (ii) defining as
recited in limitation [A2], and/or (iii) requesting as recited in limitation [A3].
At best, the Examiner leaves us to speculate as to how/why one of
ordinary skill in the art would modify the combination of McCartney and
Husemann to meet the three operational limitations of the data retrieval
application recited in limitations [A1]–[A3]. We will not resort to
speculation or assumptions to cure the deficiencies in the Examiner’s fact
finding and/or reasoning. See Application of Warner, 379 F.2d 1011, 1017

2 Notably, the features of (i) limitation [A] of claim 1, that the data retrieval
application be “other than a browser on a mobile device;” and (ii) limitation
[B] of claim 27, that the data retrieval application be “other than a browser
installed on a mobile device,” are negative limitations, and have written
description support in paragraphs 22, 32, 33, and 40 of the Specification.
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(CCPA 1967); Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999)
(unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process
whereby the examiner . . . invite[s] the [B]oard to examine the application
and resolve patentability in the first instance.”).
Accordingly, we do not sustain the Examiner’s obviousness rejection
of claim 1, as well as claims 2–6, 8, and 33 depending therefrom.
Claims 21–32
With regard to representative claim 27, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 2–4; see also Ans. 2–4), and (2) the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief (see Ans. 8–11). We concur with the conclusions reached by
the Examiner with regard to the obviousness of claim 27 in view of the
combination of McCartney and Husemann. We disagree with Appellants’
contentions (App. Br. 5–7) that the Examiner erred in rejecting claims 27
(and claims 22–32 grouped therewith) based on the failure of the
combination of McCartney and Husemann to teach or suggest limitation [B]
recited in claim 27.
We agree with the Examiner (Final Act. 3; Ans. 3–4, 9) that
Husemann (col. 16, ll. 35–47; Fig. 6) discloses a controller 62 that accesses a
data retrieval application (e.g., user-interface 65 and/or graphics information
69) that is “a file pre-installed on the controller” (col. 16, l. 39), and thus
teaches accessing “a data retrieval application other than a browser installed
on a mobile device” (limitation [B])(emphasis added).
As a result, we agree with the Examiner (Final Act. 2–4; Ans. 2–4,
10–11) that the combination of McCartney and Husemann teaches or
suggests limitation [B] recited in claim 27.
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We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(finding one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references).
In this light, Appellants’ arguments as to representative independent
claim 27 (App. Br. 5–6) concerning the individual shortcomings in the
teachings of McCartney and Husemann are not persuasive, and are not
convincing of the non-obviousness of the claimed invention set forth in
representative claim 27. The Examiner relies on a properly made
combination of McCartney and Husemann to support the conclusion of
obviousness of the subject matter of representative claim 27. For example,
Appellants contend (App. Br. 7) that Huseman fails to disclose or suggest
rendering markup language information based on selection of hyperlinks
(limitation [C] recited in claim 27), when the Examiner has relied on
McCartney (see Final Act. 2–3; Ans. 3) as teaching this feature. We agree
with the Examiner (see Final Act. 2–3; Ans. 3) that McCartney’s Figures 3,
4, and 7 and paragraphs 35, 49–59, 75–79, and 90–94 teach or suggest
“selection of the hyperlink causing markup language information to be
retrieved and rendered” as recited in claim 27.
Lastly, and notably, Appellants present arguments primarily to the
claim language of claim 1 (see App. Br. 5–7; Reply Br. 1–4), and rely on
those arguments for the patentability of remaining independent claims 21
and 27 (App. Br. 6–7). Because limitations [A] and [A4] in claim 1 are
different in scope than the corresponding and respective limitations [B] and
[C] in claim 27, Appellants’ arguments in this regard are not persuasive as to
claim 27.
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In view of the foregoing, Appellants have not rebutted or otherwise
shown error in the Examiner’s explanation of the combination of the
collective teachings and suggestions of the applied references with respect to
the subject matter of claim 27 (see Ans. 2–4, 9–11) made in response to the
Appellants’ arguments in the Appeal Brief (regarding the references
individually).
Accordingly, we sustain the Examiner’s rejection of claim 27, as well
as claims 22–32 grouped therewith.

CONCLUSIONS
(1) Appellants have shown the Examiner erred in rejecting claims 1–
6, 8, and 33 under 35 U.S.C. § 103(a) over the combination of McCartney
and Husemann, because the Examiner has not shown the combination
teaches or suggests limitation [A], including instructions for performing the
steps of limitations [A1]–[A3], as recited in claim 1.
(2) The Examiner did not err in rejecting claims 21–32 under
35 U.S.C. § 103(a) over the combination of McCartney and Husemann
because the combination teaches or suggests the limitation “access a data
retrieval application other than a browser installed on a mobile device,” as
recited in representative claim 27.

DECISION
The Examiner’s obviousness rejection of (i) claims 1–6, 8, and 33 is
reversed, and (ii) claims 21–32 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).
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AFFIRMED-IN-PART