Ex Parte 7,269,636 B2 et al

Patent Trial and Appeal Board

Mar 30, 2015

95001734 (P.T.A.B. Mar. 30, 2015)

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.
95/001,734 08/31/2011 7,269,636 B2 324212802100 5934
43354 7590 03/31/2015
Schmeiser, Olsen & Watts LLP
18 E. University Drive, Suite 101
Mesa, AZ 85201
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/31/2015 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
____________

YAHOO! INC.
Requester and Respondent

v.

AUGME TECHNOLOGIES, INC.
Patent Owner and Appellant
____________

Appeal 2014-008888
Reexamination Control 95/001,734
Technology Center 3900
Patent 7,269,636 B2
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and
JEREMY J. CURCURI, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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Patent Owner Augme Technologies, Inc., appeals under 35 U.S.C.
§ 134(b) and 35 U.S.C. § 315(a) (pre-AIA) the Examiner’s final decision to
reject claims 1–4, 9, 14, 20, 21, and 25.
Third-Party Requester Yahoo! Inc. urges that the Examiner’s decision
be affirmed.
An oral hearing was held on February 25, 2015. The record includes
a written transcript of the oral hearing.
We have jurisdiction under 35 U.S.C. §§ 134 and 315 (pre-AIA). We
affirm.

STATEMENT OF THE CASE
A request for inter partes reexamination of U.S. Patent
No. 7,269,636 B2 (the ’636 patent), was filed on August 31, 2011, by Third-
Party Requester Yahoo! Inc., and assigned Reexamination Control
No. 95/001,734.
The ’636 patent, entitled “Method and Code Module for Adding
Function to a Web page,” issued September 11, 2007 to Charles P.
McCollum and Andrew L. Burgess, Jr., based on Application No.
10/612,480, filed July 1, 2003. The ’636 patent is also a continuation of
Application No. 09/429,357, filed October 28, 1999, now U.S. Patent No.
6,549,691.
The ’636 patent is assigned to Augme Technologies, Inc., the real
party in interest.

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Related Litigation
The ’636 patent is or has been involved in numerous litigations, as
summarized in Patent Owner’s Appeal Brief. (PO App. Br. 4–5.)

The Claims
Claims 1 and 14 are exemplary, with minor formatting added and
disputed limitations in italics:
1. A method of operating a computer network to add
function to a Web page comprising:
downloading said Web page at a processor platform, said
downloading step being performed by a Web browser;
when said Web page is downloaded, automatically executing a
first code module embedded in said Web page;
said first code module issuing a first command to retrieve a
second code module;
assembling, in response to said issuing operation, said second
code module having a service response;
said first code module issuing a second command to initiate
execution of said second code module; and
initiating execution of said second code module at said
processor platform in response to said second command.

14. A method of operating a computer network to add
function to a Web page comprising:
downloading said Web page at a processor platform, said
downloading step being performed by a Web browser;
when said Web page is downloaded, automatically executing a
first code module embedded in said Web page;
said first code module issuing a command to retrieve a second
code module;
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receiving, at a server system, information characterizing at
least one of said processor platform and said Web browser;
assembling, in response to said issuing operation, said second
code module having a service response, said assembling operation
being performed at a server system, and said assembling operation
assembling said second code module in response to said information;
downloading said second code module to said processor
platform; and
initiating execution of said second code module at said
processor platform.

The Rejections
Patent Owner appeals the Examiner’s decision to reject all the
pending claims as follows:
1. Claims 1–4 and 9 stand rejected under 35 U.S.C. as obvious
§ 103(a) over Jaworski (James Jaworski, MASTERING™ JAVASCRIPT
(SYBEX, Inc. 1997)).
2. Claims 1–4 and 9 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jaworski and Flanagan (David Flanagan, JAVASCRIPT: THE
DEFINITIVE GUIDE (O’Reilly & Associates, Inc. 2d ed. 1997)).
3. Claims 1–4 and 9 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jaworski and DoubleClick (DoubleClick, Inc., DoubleClick
DART Webpage screenshots (Feb. 1997)).
4. Claims 14, 20, 21, and 25 stand rejected under 35 U.S.C. § 103(a)
as obvious over Jaworski and Flanagan.
5. Claims 14, 20, 21, and 25 stand rejected under 35 U.S.C. § 103(a)
as obvious over Jaworski and DoubleClick.
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6. Claims 14, 20, 21, and 25 stand rejected under 35 U.S.C. § 102(b)
as anticipated by DoubleClick.
7. Claims 1–4 and 9 stand rejected under 35 U.S.C. § 103(a) as
obvious over Danesh (Arman Danesh & Wes Tatters, JAVASCRIPT™ 1.1
DEVELOPER’S GUIDE (Sams.net Publishing 1996)) and Flanagan.
8. Claims 1–4 and 9 stand rejected under 35 U.S.C. § 103(a) as
obvious over Danesh and Harter (US 6,212,564 B1; Apr. 3, 2001).
9. Claims 14, 20, 21, and 25 stand rejected under 35 U.S.C. § 103(a)
as obvious over Danesh and Flanagan.
10. Claims 14, 20, 21, and 25 stand rejected under 35 U.S.C. § 103(a)
as obvious over Danesh and Harter.
11. Claims 14, 20, 21, and 25 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Burman (US 2001/0010059 Al; July 26, 2001).
Patent Owner relied upon the following declarations in rebuttal to the
Examiner’s proposed rejection:
Declaration under 37 C.F.R. § 1.131 of Charles P. McCollum, dated
February 20, 2012, accompanied by Exhibits 1–6.

Declaration under 37 C.F.R. § 1.131 of Nathaniel T. Bradley, dated
February 21, 2012, accompanied by Exhibit 1.

Declaration under 37 C.F.R. § 1.132 of Samrat Bhattacharjee, Ph.D.,
dated September 13, 2012.

Supplemental Declaration under 37 C.F.R. § 1.132 of Nathaniel T.
Bradley, dated September 28, 2012.1

1 The Examiner did not enter the Declaration under 37 C.F.R. § 1.132 of
Nathaniel T. Bradley, dated September 14, 2012 (evidence of secondary
considerations), which was submitted after the Action Closing Prosecution.
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Requester relied upon the following declarations in support of the
Examiner’s proposed rejection:
Declaration under 37 C.F.R. § 1.132 of Glenn Weadock, dated March
22, 2012.
Supplemental Declaration under 37 C.F.R. § 1.132 of Glenn
Weadock, dated October 15, 2012.

ANALYSIS
Claim Interpretation
The Examiner articulated that “the terms ‘assembling’ and ‘formed’
are broadly and reasonably interpreted to mean that the second code module
having the service response is ‘put together’ in some way.” (RAN 4–5.)
Requester agrees and argues that “[i]f Appellant wanted to capture
compatibility, it could have amended the claims during reexamination” and
“should not be able to now import such limitations through claim
construction.” (Requester Resp. Br. 5.) We agree with the Examiner’s
construction.
Independent claim 1 recites “assembling, in response to said issuing
operation, said second code module having a service response” (emphasis
added). One plain meaning of “assemble” is “to fit together the parts of.”
MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 69 (10th ed. 1999).
Although the ’636 patent does not expressly define the claim term
“assemble,” the ’636 patent discloses that:
Second code module 90 is assembled by accessing the
predetermined one of denial of service response 162 (FIG. 7),

Patent Owner’s petition for entry of this declaration to the Director of the
Central Reexamination Unit, filed on January 28, 2014, was denied on
July 2, 2014.
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conditional service response 176 (FIG. 7), and predetermined
service response 186 (FIG. 7) from Web address database 68.
In addition, second code module 90 is assembled in response to
browser information 56 and platform information 58.
(Col. 11, l. 65 to col. 12, l. 4 (emphases added).) Accordingly, in light of
the ’636 patent and applying a plain meaning of “assemble,” we interpret
“assemble” as to fit together the parts of the second code module (e.g.,
selecting denial of service response, conditional service response, or
predetermined service response).
Patent Owner argues that
the ’636 Patent consistently uses the terms “assembly” (and
“formed”) to describe the creation of a second code module by
use of received information (e.g., browser and/or platform
information) so that the second code module will work with any
combination of browser/platform system to achieve one of the
objectives of the invention.
(PO App. Br. 35; see also PO Reply Br. 17.) However, in general, the
importation of claim limitations from the Specification is improper. See
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (“Though understanding the claim language may be aided by
explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim.”)
Patent Owner further argues that “one of ordinary skill in the art
reading the ’636 Patent would understand that ‘assembly of a second code
module’ means creating a second code module that enables a service
response to be compatible with the user’s specific browser/platform system”
and points to paragraph 5 of the Bhattacharjee Declaration. (PO App.
Br. 35.) One relevant portion of the Bhattacharjee Declaration states that
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“[o]ne of ordinary skill in the art reading the ’636 patent would understand
that ‘assembly of a second code module’ means a specific way of creating a
second code module that enables a service response to work on the user’s
specific browser/platform system.” (Bhattacharjee Decl. ¶ 5.) However, the
statements in the Bhattacharjee Declaration relied upon by Patent Owner
lack persuasive factual support because the Bhattacharjee Declaration does
not cite to sufficient corroborating evidence. See In re Beattie, 974 F.2d
1309, 1313 (Fed. Cir. 1992) (“[D]eclarations themselves offer only opinion
evidence which has little value without factual support.”).
Therefore, we agree with the Examiner’s construction of the claim
term “assembling” (i.e., “‘put together’ in some way”) is reasonably broad.
(RAN 4–5.)

§ 102 Rejection—Burman
Burman as Prior Art
Claims 14, 20, 21, and 25 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Burman. Patent Owner attempts to antedate Burman by
relying upon the McCollum Declaration, accompanied by Exhibits 1–6, and
the Bradley Declaration, accompanied by Exhibit 1, to establish diligence
from the time period prior to October 28, 1998, the filing date of Burman,
until July 29, 1999, Patent Owner’s purported actual reduction to practice.
(PO App. Br. 17–19.) In particular, Patent Owner argues that “Mr.
McCollum has asserted that work was proceeding to reduce the invention to
practice across the entire critical period” and “[a]s noted in the timeline of
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events, in February through April 1999, the company was recruiting
personnel to help the company practice the invention in a commercial
setting.” (PO App. Br. 19; see also PO Reb. Br. 8–9.)
The Examiner found that “the patent owner’s showing of facts is
insufficient to establish diligence from just prior to October 28, 1998 to at
least July 29, 1999.” (RAN 10.) In particular, the Examiner found that “the
patent owner’s general statements that the inventors ‘worked diligently’ on
the invention and that ‘programming progressed’ are not ‘specific as to dates
and facts,’ and that the patent owner does not account at all for the period
from February 1999 (the date up to which ‘programming progressed’) to
April/May 1999.” (Id.) Requester agrees and argues “Appellant’s attempt
to show diligence fails for yet another reason: there is a gap in the evidence
for the second period, from February 1999 to April/May 1999.” (Requester
Reb. Br. 10.) We agree with the Examiner’s finding that sufficient
reasonable diligence has not been shown.
Title 37 of the Code of Federal Regulations, Section 1.131(b), states
that:
The showing of facts shall be such, in character and weight, as
to establish . . . conception of the invention prior to the effective
date of the reference coupled with due diligence from prior to
said date . . . to the filing of the application. Original exhibits
of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.
During the period in which reasonable diligence must be shown, there must
be continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d
615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA
1949) (referring to “reasonably continuous activity”). A party alleging
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diligence must account for the entire period during which diligence is
required. Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966).
Furthermore, a party alleging diligence must provide corroboration with
evidence that is specific to both facts and dates. Kendall v. Searles,
173 F.2d 986, 993 (CCPA 1949). Vague and general statements in broad
terms about what the exhibits describe, along with a general assertion that
the exhibits describe a reduction to practice, “amounts essentially to mere
pleading, unsupported by proof or a showing of facts” and, thus, does not
satisfy the requirements of 37 C.F.R. § 1.131(b). In re Borkowski, 505 F.2d
713, 718 (CCPA 1974) (citing In re Harry, 333 F.2d 920, 923 (CCPA
1964)).
Paragraph 6 of the McCollum Declaration states that “[w]e diligently
worked to reduce our invention to practice from at least prior to October 28,
1998, through June 29, 1999.” Furthermore, paragraph 7 of the McCollum
Declaration states that “[a]s further evidence . . . we diligently worked to
reduce our invention to practice, I attach Exhibit 5, which is a list of events
related to the BoomBox Radio invention” and “[t]his document shows that
we actively pursued reducing the invention to practice through June 29,
1999.” Exhibit 5, a document entitled “SurfNet Media Group, and
BoomBox Radio History Overview,” states that “Earl Baldwin was recruited
to help with development of the live and talk radio project portion of
BoomBox Radio” in February 1999 and “Brook Carey and Daryl Gullickson
were recruited to bring structure and organization to the company” in April
1999. (P. 2.)
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Paragraph 8 of the Bradley Declaration states that “Charles P.
McCollum and Andrew L. Burgess, Jr. worked diligently from prior to
October 28, 1998, to reduce the invention practice by June 29, 1999.”
Furthermore, paragraph 10 of the Bradley Declaration states that “Mr.
Burgess has previously testified to the conception of the inventions claimed
in U.S. Patent No. 7,269,636” and “[t]his testimony is consistent with the
facts set forth in the McCollum Declaration.” In the accompanying
Exhibit 1, a deposition of Mr. Burgess pursuant to Federal Rules of Civil
Procedure Rule 30(b)(6) in an underlying litigation, Mr. Burgess states “[i]n
April/May of ‘99, I actually started working on this idea and didn’t actually
have a prototype ready to show anybody until June -- I believe it was in June
of ‘99.” (P. 28, ll. 12–15.)
However, neither the McCollum Declaration nor the Bradley
Declaration provides adequate corroborating evidence that is specific to both
facts and dates. While the McCollum Declaration and the Bradley
Declaration show activity in working on technology that pertains to the
claimed subject matter, Mr. McCollum and Mr. Burgess do not show that the
inventors continuously exercised reasonable diligence to reduce the claimed
subject matter to practice. For example, while Exhibit 5, the “Surf Net
Media Group, and BoomBox Radio History Overview” document, shows
activity related to commercialization in February 1999 and April 1999, Mr.
McCollum did not document the specific facts and dates pertaining to the
days work was performed, or the nature of the work and who performed it.
See, e.g., Scott v. Koyama, 281 F.3d 1243, 1249 (Fed. Cir. 2002) (providing
evidence of daily activity to establish reasonable diligence). Rather than
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provide specific facts and dates establishing a continuous exercise of
reasonable diligence, the McCollum Declaration and the Bradley
Declaration merely provide vague and general statements in broad terms
about what the exhibits describe (e.g., “[w]e diligently worked to reduce our
invention to practice from at least prior to October 28, 1998, through June
29, 1999” (McCollum Decl. ¶ 6) and “Charles P. McCollum and Andrew L.
Burgess, Jr. worked diligently from prior to October 28, 1998, to reduce the
invention practice by June 29, 1999” (Bradley Decl. ¶ 8)).
Moreover, some of the activity summarized in Exhibit 5, the “Surf
Net Media Group, and BoomBox Radio History Overview” document,
during this time focused more on recruiting people to assist on the “live and
talk radio project of BoomBox radio” in February 1999 and “to bring
structure and organization to the company” in April 1999. (P. 2.) It is not
clear the “live and talk radio project” shows diligence in reducing the claims
invention to practice. Also, there is no evidence of diligence in March 1999.
Lastly, Patent Owner has not demonstrated adequately that bringing
structure and organization to the company in April 1999 relates to and shows
diligence in reducing the claimed invention to practice.
In the Appeal Brief and the Rebuttal Brief, Patent Owner identifies
exhibits that support conception of the limitations of claim 1. (PO App.
Br. 16–17; see also PO Reb. Br. 6–7.) Even assuming, solely for the sake of
argument, that such discussion was sufficient to establish conception of the
claimed subject matter, Patent Owner has not adequately described or
documented diligence to actual reduction to practice of the claimed subject
matter.
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Therefore, we agree with the Examiner that the McCollum
Declaration and the Bradley Declaration were insufficient to establish a
continuous exercise of reasonable diligence by the Patent Owner, from a
date prior to the effective date of Burman to Patent Owner’s purported actual
reduction to practice.

Disputed Limitation
The Examiner found that the bandwidth and effective bandwidth of
Burman, which are calculated based on roundtrip transfer time between the
user’s computer or browser and the server, correspond to the limitation
“receiving, at a server system, information characterizing at least one of said
processor platform and said Web browser.” (See RAN 12 (adopting
Requester’s Comments 12–17).) Requester agrees and argues that the
“bandwidth is impacted by, and thus ‘characteriz[es],’ both the user’s
browser and platform.” (Requester Reb. Br. 11.) We agree with the
Examiner’s finding.
Burman relates to “selecting a data file to be sent via the computer
network as a function of the transfer time or bandwidth between two devices
connected to the computer network and for selecting or dynamically
customizing content provided to a client connected to the computer network
based on the transfer time and bandwidth determinations.” (¶ 3.) Figure 1
of Burman illustrates network apparatus 20 that includes computers 24, 26,
28, ad selection servers 32, 34, media servers 36, 38, and web site server 46.
(¶ 34.)
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In one example of Burman, by monitoring real-time bandwidth
“between a user and other devices connected to a computer network, web
browsing satisfaction can be increased for the users while advertising over
the computer network can be dynamically modified or created.” (¶ 36.)
Burman explains that “[a] user’s bandwidth may vary over time due to, for
example, telephone line noise, the number of users, changes in browser
type” (¶ 36) or the “use of a slow modem” (¶ 73). Burman further explains
that a browser operating on the computer 24 sends a fetch web page request
to server 46 such that “[t]he web page sent or served to the user’s browser
. . . will include a link or reference to a rich media file, such as a SCRIPT
(e.g., JavaScript, VBSCRIPT).” (¶ 47.) Burman also explains that requests
can be made “by the user’s browser for content (which may be initiated by
the rich media)” (¶ 80) and that such content includes Java Applets or
JavaScript (¶ 135). In addition, Burman explains that “an ad selection server
deciding which ad or content to be served to the user might request or use
the stored information regarding the user’s bandwidth to select the ad or
content to be served to the user.” (¶ 80.)
Because Burman explains that real-time bandwidth (e.g., for a
modem) is used to create or generate a web page that links to a rich media
file, such that the rich media file initiates a request for content (e.g., Java
Applets or JavaScript), Burman discloses the limitation “receiving, at a
server system, information characterizing at least one of said processor
platform and said Web browser.”
Patent Owner argues that “bandwidth information pertains to the
connection between devices and excludes information about a
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connected device.” (PO App. Br. 20.) Similarly, Patent Owner argues that
“[i]nformation about the computer and server is independent of the
bandwidth” and “[i]nformation about the web browser is orthogonal to the
information about available bandwidth” and points to the Bhattacharjee
Declaration for support. (Id.) The relevant portions of the Bhattacharjee
Declaration state that: (i) “[b]andwidth is not information about a client
computer” and “Web browser and processor platform information is
information about a client computer” (Bhattacharjee Decl. ¶ 11) and (ii)
“[i]nformation about the web browser is orthogonal to the information about
available bandwidth” and accordingly, “assembly based on bandwidth is
different than assembly based on browser type, and the information about
the browser is irrelevant to information about bandwidth and vice-versa” (id.
¶ 12). However, the statements in the Bhattacharjee Declaration relied upon
by Patent Owner lack adequate persuasive factual support because the
Bhattacharjee Declaration does not cite to sufficient corroborating evidence.
See Beattie, 974 F.2d at 1313. Furthermore, Burman expressly states that
“[a] user’s bandwidth may vary over time due to, for example . . . changes in
browser type” (¶ 36) and that “an ad selection server deciding which ad or
content to be served to the user might request or use the stored information
regarding the user’s bandwidth to select the ad or content to be served to the
user” (¶ 80).
Accordingly, we affirm the Examiner’s decision to reject claims 14,
20, 21, and 25 under 35 U.S.C. § 102(e) as anticipated by Burman.

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§ 103 Rejection—Danesh and Harter
The Examiner found that the client process of Harter, written as a Java
applet and built to optimize the application launcher, corresponds to the
limitation “assembling, in response to said issuing operation, said second
code module having a service response.” (See RAN 18.) The Examiner
concluded that “[a] person of ordinary skill in the art would have been
prompted to assemble the ‘Ticker.class’ applet of Danesh in the same way as
suggested in Harter, based on ‘the capabilities of the browser . . . and [the]
hardware executing the browser.’” (Id.) We agree with the Examiner’s
conclusion.
Danesh relates to JavaScript, a language that “integrates itself with the
World Wide Web” and “included as part of a standard HTML document,
just like any other HTML tags and elements.” (P. 8.) In one example,
Figure 14.10 of Danesh illustrates a “Ticker Tape Java Exercise,” which
adds a scrolling ticker tape at the bottom of a Web page. (P. 257.)
Harter relates to a “program product . . . which allow[s] a dynamically
constructed desktop to be optimized for the capabilities of the browser in the
target device.” (Abstract.) Harter states that “[a] need exists for a means of
mitigating the functional differences between the different levels of
computers with little or no impact to the end user” (col. 1, ll. 56–58), for
example, ranging from a full function and fully enhanced graphical user
interface (col. 1, ll. 62–63) to a small wireless unit (col. 2, l. 1–2). Figure 5
of Harter illustrates “a client process that is run on a distributed computer
501 and a server process running on a host or server computer 503.” (Col. 2,
ll. 61–63.) Harter explains that “[w]hen a user requests a url (uniform
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resource locator) by way of a web browser 505, the browser sends a request
to a web server 507” that “pass[es] the request to a servlet 509 for
processing” such that “servlet 509 returns to the client 501 . . . the
application launcher for the client based on device information passed to the
servlet in the request . . . to build the optimal application launcher based on
the capabilities of the client” (e.g., information relevant to the execution of
applets). (Col. 2, l. 64 to col. 3, l. 11.) In one embodiment, Harter explains
that “[t]he client process is typically written as a Java applet or as HTML
(hyper-text markup language) pages.” (Col. 3, ll. 37–39.) Because Harter
explains that servlet 509 returns to client 501 an application launcher “to
build” the optimal application launcher, based on the capabilities of the
client (e.g., information relevant to the execution of applets), Harter teaches
the limitation “assembling, in response to said issuing operation, said second
code module having a service response.”
A person of ordinary skill in the art would have recognized that
incorporating the client process of Harter, for building the optimal
application launcher based on the capabilities of the client (e.g., information
relevant to the execution of applets) with the “Ticker Tape Java Exercise”
for the Web page of Danesh mitigates the functional differences between the
different levels of computers. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) (“[I]f a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”). Thus, we agree with the
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Examiner (RAN 18) that modifying Danesh to incorporate the client process
of Harter would have been obvious.
Patent Owner argues that “the combination suggested by the
Examiner is technically infeasible” because “[i]f the target of the ‘code’
attribute of the applet tag in Danesh is replaced by the output of the server
described in Harter, then the Danesh system would not operate” and points
to the Bhattacharjee Declaration for support. (PO App. Br. 31; see also PO
Reb. Br. 15–16.) The relevant portion of the Bhattacharjee Declaration
states that “[i]t would have been clear to a person of ordinary skill in the art
that Harter does not teach generating an applet, but instead generating a
HTML page that embeds an applet” and “the combination suggested by the
examiner is technically infeasible.” (Bhattacharjee Decl. ¶ 29.) Again, the
statements in the Bhattacharjee Declaration relied upon by Patent Owner
lack persuasive factual support because the Bhattacharjee Declaration does
not cite to sufficient corroborating evidence. See Beattie, 974 F.2d 1309 at
1313.
Patent Owner further argues that “the applet in Harter is not generated
at the server, only the HTML surrounding the applet is generated” and points
to the Bhattacharjee Declaration for support, as well as Figures 2 and 4 of
Harter and column 4, lines 8–9, 16–22, and 59–65 of Harter. (PO App.
Br. 31; see also PO Reb. Br. 15–16.) However, Patent Owner’s arguments
do not adequately address the Figure 5 embodiment of Harter and column 5,
lines 37–39, which was cited by the Examiner for teaching the limitation
“assembling, in response to said issuing operation, said second code module
having a service response.” (RAN 18.)
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Patent Owner also argues that “this sentence [from Harter at
column 5, lines 37–39, that ‘client process is typically written as a Java
applet or as HTML . . . pages’] does not disclose the generation of Java
code” but “is simply referring to the overall client experience in which a web
page containing a Java applet is returned to the user.” (PO App. Br. 32.)
Contrary to Patent Owner’s arguments, Harter expressly states that “[t]he
client process is typically written as a Java applet” (col. 3, ll. 37–38) and that
the application launcher of Harter builds the optimal application launcher,
including information relevant to the execution of applets (col. 2, l. 64 to
col. 3, l. 11). Furthermore, as discussed previously, the claim language
“assembling” is broad enough to encompass the application launcher of
Harter, which builds the optimal application launcher, including information
relevant to the execution of applets.
Accordingly, we affirm the Examiner’s decision to reject claims 1–4
and 9 under 35 U.S.C. § 103(a) as obvious over Danesh and Harter.

Other §§ 102 and 103 Rejections
We do not reach the rejections of claims 1–4, 9, 14, 20, 21, and 25
under 35 U.S.C. § 103(a) as obvious over various combinations of Jaworski,
Flanagan, DoubleClick, Danesh, and Harter or the rejection of claims 14, 20,
21, and 25 under 35 U.S.C. § 102(b) as anticipated by DoubleClick.
Affirmance of the rejections discussed previously renders it unnecessary to
reach the remaining rejections, as all of pending claims have been addressed
and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009).
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20
DECISION
The Examiner’s rejection of claims 1–4 and 9 under 35 U.S.C.
§ 103(a) as obvious over Danesh and Harter is sustained.
The Examiner’s rejection of claims 14, 20, 21, and 25 under 35 U.S.C.
§ 102(e) as anticipated by Burman is sustained.
The Examiner’s decision to reject claims 1–4, 9, 14, 20, 21, and 25 is
affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

peb
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Patent 7,269,636 B2

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PATENT OWNER:
SCHMEISER, OLSEN & WATTS LLP
18 E. UNIVERSITY DRIVE
SUITE 101
MESA, AZ 85201

THIRD PARTY REQUESTER:
MORRISON & FOERSTER, LLP
707 WILSHIRE BOULEVARD
LOS ANGELES, CA 90017