Ex Parte Christfort et al

Board of Patent Appeals and Interferences

Jun 29, 2012

09947910 (B.P.A.I. Jun. 29, 2012)

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.
09/947,910 09/05/2001 Jacob Christfort 50277-1689 6425
42425 7590 09/17/2012
HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
PATEL, CHIRAG R
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
09/17/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JACOB CHRISTFORT and JEREMY CHONE
____________

Appeal 2010-000332
Application 09/947,9101
Technology Center 2400
____________

Decided: July 2, 2012

Before JEAN R. HOMERE, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Filed on September 5, 2001. The real party in interest is Oracle
International Corporation. (App. Br. 1.)
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Application 09/947,910

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STATEMENT OF THE CASE
In a paper filed August 31, 2012, Appellants request a rehearing under
37 C.F.R. §41.52 from the Opinion of the Board of Patent Appeals and
Interferences (hereinafter referred to as the “Board”) dated July 2, 2012.
In the Opinion we affirmed the Examiner’s rejection of claims 1-32.
Appellants allege that the Board misapprehended or overlooked the requisite
factual and legal basis necessary to affirm those rejections. (Req. Reh’g. 2-
11). We summarize Appellants’ principal allegations of error as follows:
(1) Appellants allege, with respect to independent claim 1, that the
combination of the Tso and Reisman references fails to teach or suggest a
method for operating an intermediary which includes an “intermediary
locating within the first content a reference to second content” and “based on
said reference, the intermediary sending over the network a third request to
said second service for the second content and receiving over the network a
second reply from the second service that includes the second content” and
then “generating combined content at the intermediary based on the first
content from said first service and the second content from said second
service.” (Id. at 2-7.);
(2) Appellants allege, that in a manner similar to claim 1, independent
claim 4 recites an intermediary which locates a reference to a second service
within first content, and then generates a reply which includes an object
associated with the second service which can be subsequently selected by a
client to cause the intermediary to retrieve content from the second service.
Specifically, Appellants urge that the cited combination of Tso, Reisman and
Elsey fails to teach or suggest “generating a second reply at the intermediary
based on the first content from said first service, wherein said second reply
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includes, based on said reference, an object associated with said second
service, wherein said object is generated by the intermediary” and “in
response to a selection of said object by said client, the intermediary sending
over the network a third request to said second service for the second content
and receiving over the network a third reply from the second service that
includes the second content.” (Id at 7-9.); and,
(3) With regard to independent claim 7, Appellants allege that the
steps of “storing, at said intermediary, a record that indicates that said end
user requested said first content from said first service” and “reading said
record to determine that said first service is said service from which content
was requested by said end user” are not taught or suggested by the
combination of Tso and Smith. (Id at 9-11.)

PRICIPLES OF LAW
37 C.F.R. § 41.52 states:
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the brief and any reply brief(s) are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) and (a)(3) of this section.

ANALYSIS
We have carefully reviewed the Opinion in light of Appellants’
allegations of errors. We will address those remarks in the order in which
they are presented in the Request, and as outlined above.
The basis for Appellants’ arguments regarding claim 1 is their
assertion that the combination of Tso and Reisman “might yield a modified
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version of Tso’s client 1 that has prefetching capabilities along with a DAM
for displaying advertisements, but such a modified version of Tso’s client 1
is not an intermediary that performs the recited steps of claim 1.” (Id at 5)
The Examiner found that Tso discloses a remotely located
intermediary which permits clients to access multiple services. Ans. 3. The
only intermediary described within the cited portion of Tso is network
device 4, which Tso discloses includes an advertising service provider 5
capable of embedding advertising content into web pages downloaded to a
client. The Examiner acknowledged that Tso failed to disclose that the
content provided to the client included additional content referenced within
first content. Id at 4.
For that purpose the Examiner cites Reisman which discloses pre-
fetching additional data objects referenced by a first data object. Id. at 4.
As noted by Appellants, Reisman discloses such pre-fetching takes
place within a client, and not at an intermediary device. Req. Reh’g. 3.
In our original analysis we found that the Examiner’s proposed
combination of Tso and Reisman suggested the claimed features argued by
Appellants in their Appeal Brief and in their Request For Rehearing by
yielding a modified version of Tso’s network device 4 which includes the
pre-fetching capabilities disclosed within Reisman. (Op. 5-6) We find that
the ordinarily skilled artisan, upon reading these references would note the
use of an intermediary (network device 4) within Tso that can add additional
content to a requested web page and the known practice of pre-fetching
second content referenced within first content, as taught by Reisman. We
find that as it is well known to examine requested first content for references
to second content contained therein which may be pre-fetched, albeit at the
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client level, and it is also known that an intermediary device (Tso’s network
device 4) can add additional content to a requested web pages, the
Examiner’s proposed combination to yield an intermediary device that finds
a reference to second content contained therein and pre-fetches that second
content is merely a “combination of familiar elements according to known
methods” which “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, 401
(2007).
We are therefore satisfied that the combination of Tso and Reisman
teaches or suggests the claimed features argued by Appellants of an
“intermediary locating within the first content a reference to second content”
and “based on said reference, the intermediary sending over the network a
third request to said second service for the second content and receiving over
the network a second reply from the second service that includes the second
content” as set forth in our original opinion.
Regarding claim 4, Appellants argue that like claim 1, claim 4 recites
that when a reference is located to second content, within the first content,
rather than prefetching that second content, an object is included in the
content provided which may then be selected by the client to initiate a
request for the second content. Appellants argue that Elsey, cited by the
Examiner to suggest such an object, does not disclose “in response to a
selection of said object by said client, the intermediary sending over the
network a third request to said second service for the second content and
receiving over the network a third reply from the second service that
includes the second content” as required by claim 4. Appellants specifically
argue that the data retrieved in response to selection of the hyperlink is not
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retrieved over a network, is not “remote” relative to server 28 and is not
provided by server 28 of Elsey. Req. Reh’g. 8.
We find Appellants’ arguments unpersuasive. As noted in our original
opinion, the Examiner only relies on Elsey for the disclosure therein of the
preparation of a “hyperlink” (an object) and retrieving content in response to
selection thereof. The “remote” nature of the data retrieved, the retrieval of
that data over a network and the nature of the element performing the
retrieval are disclosed within the other references cited by the Examiner.
(Tso and Reisman).
As we noted in our original opinion, one cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
Finally, with regard to claim 7, Appellants argue that Tso and Smith
fail to teach or suggest the steps of “storing, at said intermediary, a record
that indicates that said end user requested said first content from said first
service” and “reading said record to determine that said first service is said
service from which content was requested by said end user.” Specifically,
Appellants argue that Smith, relied upon by the Examiner for disclosing the
storing and reading of a record which indicates the service from which an
end user requested content, fails to meet the claimed features of determining
which service the client had previously requested. Req. Reh’g. 10-11.
Once again we find the Appellants have attacked the references
individually where the Examiner’s rejection is based upon a combination of
references. As noted in our original opinion, the citation of Smith by the
Examiner was relied upon to suggest the claimed features of “storing, at said
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intermediary, a record that indicates that said end user requested said first
content from said first service” and “reading said record to determine that
said first service is said service from which content was requested by said
end user.” Nothing within those particular limitations requires the
aforementioned storing and reading steps to track which service the client
had previously requested. The Examiner expressly relies upon Tso for those
features, as set forth in the Answer at pages 10-11.
Consequently, we are unconvinced of error regarding claim 7 in our
original opinion.

CONCLUSION
In conclusion, based upon the foregoing, we have granted Appellants’
Request to the extent we have reconsidered our Decision, but we deny
Appellants’ request to make any change therein.

REQUEST FOR REHEARING-DENIED

pgc