Elad Gil et al.Download PDFPatent Trials and Appeals BoardJul 31, 201914329158 - (D) (P.T.A.B. Jul. 31, 2019) Copy Citation 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). Appeal 2017-009617 Application 14/329,158 2 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 Appeal 2017-009617 Application 14/329,158 3 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). Appeal 2017-009617 Application 14/329,158 4 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). Appeal 2017-009617 Application 14/329,158 5 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. Appeal 2017-009617 Application 14/329,158 6 (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. Appeal 2017-009617 Application 14/329,158 7 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. Appeal 2017-009617 Application 14/329,158 8 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). Appeal 2017-009617 Application 14/329,158 9 AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation