Ex Parte 7191447 et al

Board of Patent Appeals and Interferences

Jan 25, 2012

95000505 (B.P.A.I. Jan. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,505 12/17/2009 7191447 NEWE.005RX 1331
26111 7590 01/26/2012
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HENEGHAN, MATTHEW E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

NEWEGG, INC.
Respondent
v.

SOVERAIN SOFTWARE LLC
Patent Owner, Appellant
____

Appeal 2012-001005
Inter partes Reexamination Control No. 95/000,505
United States Patent 7,191,447 B1
Technology Center 3900
____________

Before KARL D. EASTHOM, STEPHEN C. SIU, and ROBERT A.
CLARKE, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, patent owner Soverain Software LLC, appeals under 35
U.S.C. §§ 134(b) and 306 from a Right of Appeal Notice rejecting claims 1-
9, 11-16, 20, 23-25, 27-32, 36, 39-41, 43-48, 52, 55-57, 59-68, 71-73, 75-84,
87-89, 91-100. Claims 10, 21, 22, 26, 37, 38, 42, 53, 54, 58, 69, 70, 74, 85,
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86, 90, 101, and 102 have been confirmed (App. Br. 5-6). We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.

STATEMENT OF THE CASE
This proceeding arose from a request by NewEgg, Inc. for an inter
partes reexamination of U. S. Patent 7,191,447 B1 (the ‘447 patent), entitled
“Managing Transfers of Information in a Communications Network,” and
issued to John R. Ellis, David K. Gifford, and G. Winfield Treese (March
13, 2007).
The ‘447 patent describes “extracting information from pages of
information (or other items of network-based information) on a
communications network” (col. 10, ll. 36-38). Claim 1 on appeal reads as
follows:
1. A system for extracting data from sources of network-based
information in a communications network comprising a plurality of network
servers programmed to transmit network-based information over said
network, comprising:
a script program, implemented on a computer in said communications
network, structured to extract data from network-based information provided
by one of said network servers; and
an object embedding program, implemented on the computer in said
communications network, comprising a link to said network-based
information provided by said one of said network servers and a link from
which said object embedding program can locate said script program, said
object embedding program being structured to apply said script program to
said network-based information so as to cause said data to be extracted from
said network-based information, and to embed said data within a compound
document implemented on a computer in said communications network,
wherein said link from which said object embedding program can locate said
script program is said link to said network-based information, and wherein
said network-based information in turn comprises a link to said script
program.
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(App. Br. 63, Claims Appendix.)

The Examiner relies on the following prior art references:
Familiar US 5,752,027 May 12, 1998
Doyle US 5,838,906 Nov. 17, 1998
Ramos US 5,896,533 Apr. 20, 1999
Smiley US 5,978,811 Nov. 2, 1999

The Examiner rejects the claims as follows:
Claims 1-9, 11, 13-16, 20, 23-25, 27, 29-32, 36, 39, 40, 41, 43, 45-48,
52, 55-57, 59, 61-64, 68, 71-73, 75, 77-80, 84, 87-89, 91, 93-96, and 100
under 35 U.S.C. § 103(a) as being unpatentable over Smiley and Ramos;
Claims 12, 28, 44, 60, 76, and 92 under 35 U.S.C. § 103(a) as being
unpatentable over Smiley, Ramos, and Doyle;
Claims 65-67, 81-83, and 97-99 under 35 U.S.C. § 103(a) as being
unpatentable over Smiley, Ramos, and Familiar;
Claims 1 and 3-9 under 35 U.S.C. § 103(a) as being unpatentable over
Smiley and Familiar;
Claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Smiley,
Familiar, and Doyle.
ISSUES
Did the Examiner err in finding that Smiley, alone or in combination
with any of Ramos, Familiar, or Doyle, discloses or suggests that a link to
network-based information is a link from which a program locates a script
program or that network-based information comprises an identification of a
table comprising a link to the script program?

Appeal 2012-001005
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Patent 7,191,447 B1

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PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Claim 1 recites that a link to network-based information is a link from
which an object embedding program can locate a script program. Appellant
argues that Smiley, alone or in combination with either one of Ramos or
Familiar, fails to disclose or suggest this feature. We agree with Appellant.
The Respondent and the Examiner state that Smiley discloses that
“‘[l]inks are established between the data access mechanism 83 and scripts
80, as well as between the data access mechanism 83 and the data elements
85 and 89’” and that “‘[i]t is desirable to relate data fields to scripts 80 and
to native data access mechanisms 83 to promote script reuse as well as
ensure use of the correct data access mechanism 83’” (Second Corrected
Request for Inter Partes Reexamination of U.S. Patent 7,191,447 under 35
U.S.C. §§ 311-318 and 37 C.R.F. § 1.913, filed December 17, 2009, 3, and
App’x A, pp. 2-4) (quoting Smiley at col. 8, ll. 32-35, capitalization omitted
by Respondent). We note that Smiley discloses “DATA ACCESS
MECHANISMS 83” which are used by a “SCRIPT 80 . . . to access the
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operational data, as indicated by link 82” (col. 7, ll. 60-62). Moreover,
Smiley discloses that data fields are operational data attributes retrieved by
script files 80 (col. 8, ll. 30-31).
Even assuming that Smiley discloses that a data access mechanism is
connected to both a script and a data element as the Respondent and the
Examiner have implied, neither the Respondent nor the Examiner has shown
how a “link” to the “data element” (presumed to be equated by the
Respondent and Examiner with the claimed “network-based information”) is
the “link” to the “script” (presumed to be equated by the Respondent and
Examiner with the claimed “script program”), as recited in claim 1. Rather,
it appears that, at best, there are multiple and distinct connections between
the data access mechanism and each of the script and data element as
disclosed by Smiley.
The Examiner adopts (Ans. 3) the Respondent’s assertions and
concludes that “it would have been obvious that the link from which said
object embedding program locates said script program be the link to said
network-based information, and that the network-based information in turn
comprise a link to said script program” in order to “provide for the
predictable and desired result of script reuse.”1 This conclusion is at odds
with the disclosure of Smiley that the script files retrieve the data fields2 and

1 Second Corrected Request for Inter Partes Reexamination of U.S. Patent
7,191,447 under 35 U.S.C. §§ 311-318 and 37 C.R.F. § 1.913, filed
December 17, 2009, p. 4.

2 See, e.g., col. 7, ll. 42-43 (“scripts . . . access and manipulate operational
data stored on a . . . computer”) and col. 7, ll. 60-62 (a script “uses . . .
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therefore we cannot agree with the conclusion. The Respondent and
Examiner state that Ramos discloses “A URL 208 . . . that links the OLE
214 to the network-based information 206 provided by the network servers”3
and that Familiar discloses “the OLE interface 110 includes a VTABLE 700
that allows OLE interface 100 to link to the databases 145 so that the desired
data can be obtained.”4 However, it is not clear based on the Respondent’s
and Examiner’s statements how a URL linking a system to data (Ramos) and
an OLE interface including a table to link to databases (Familiar) discloses
or suggests the claimed feature that a link to network-based information is a
link from which a program locates a script program. The fact that a system
is “linked” to a database does not appear to indicate whether such a link is
(or is not) a link from which the system locates a script program. We
therefore cannot agree with the Respondent and Examiner.
Claims 5 and 6 recite similar features as claim 1. We therefore
conclude that the Examiner has not established that the combination of
Smiley with any one of Ramos or Familiar discloses or suggests claims 1, 5,
or 6. In addition, the Examiner does not state that Doyle makes up for the
deficiencies of Smiley, Ramos, and/or Familiar. Hence, we do not sustain

standard [mechanisms] to access the operational data . . . [the mechanisms]
in turn . . . are invoked to read or update operational data”).

3 Second Corrected Request for Inter Partes Reexamination of U.S. Patent
7,191,447 under 35 U.S.C. §§ 311-318 and 37 C.R.F. § 1.913, filed
December 17, 2009, App’x A, p. 3 and 6.

4 Second Corrected Request for Inter Partes Reexamination of U.S. Patent
7,191,447 under 35 U.S.C. §§ 311-318 and 37 C.R.F. § 1.913, filed
December 17, 2009, App’x B, p. 4.

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the Examiner’s rejections of claims 1, 5, and 6, or dependent claims 2-4, 11-
16, 20, 23-25, 27-32, 36, 39-41, 43-48, 52, 55-57, and 59-68.
Claim 7 recites that network-based information comprises an
identification of a table comprising a link to said script program (App. Br.
67, Claims Appendix). The Respondent and Examiner state that Smiley
discloses that “it is desirable to provide a directory of available scripts . . .”5
(see, e.g., Resp. Br. 16). The script “uses . . . standard DATA ACCESS
MECHANISMS 83 to access the operation data” (col. 7, ll. 60-62).
However, even assuming that the “directory of available scripts in
Smiley . . . suggest[s] the claimed table” (Resp. Br. 16), as Respondent
asserts, Respondent has not sufficiently demonstrated why it would have
been obvious to one of ordinary skill in the art to include a list of such
scripts with the data being accessed (as recited in claim 7) as opposed to, for
example, including the list with the data access mechanism itself –
particularly since the script utilizes the data access mechanism to access the
data in the first place (see, e.g., Smiley, col. 7, ll. 60-64). The Respondent
and Examiner do not rely on any of Ramos, Familiar, or Doyle to disclose or
suggest this feature.
Claims 8 and 9 recite a similar feature as claim 7. We conclude that
the Examiner has not established that the combination of Smiley with any
one of Ramos, Familiar, or Doyle discloses or suggests claims 7-9. Hence,
we do not sustain the Examiner’s rejections of claims 7-9, 55-57, 59-68, 71-
73, 75-84, 87-89, and 91-100.

5 Second Corrected Request for Inter Partes Reexamination of U.S. Patent
7,191,447 under 35 U.S.C. §§ 311-318 and 37 C.R.F. § 1.913, filed
December 17, 2009, App’x A, p. 13.
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CONCLUSION
The Examiner erred in finding that Smiley, alone or in combination
with any of Ramos, Familiar, or Doyle, discloses or suggests that a link to
network-based information is a link from which a program locates a script
program and that network-based information comprises an identification of a
table comprising a link to the script program.

DECISION
The Examiner’s decision to reject claims 1-9, 11-16, 20, 23-25, 27-32,
36, 39-41, 43-48, 52, 55-57, 59-68, 71-73, 75-84, 87-89, 91-100 is reversed.

rvb

Patent Owner

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005

Third Party Requester

MATTHEW L. WHIPPLE
ZARIAN MIDGLEY & JOHNSON PLLC
UNIVERSITY PLAZA
960 BROADWAY AVE., SUITE 250
BOISE, ID 83706