Ex Parte Christfort et al

Board of Patent Appeals and Interferences

Jul 2, 2012

09947910 (B.P.A.I. Jul. 2, 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 07/02/2012
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
07/02/2012 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
____________

Ex parte JACOB CHRISTFORT and JEREMY CHONE
____________

Appeal 2010-000332
Application 09/947,910
Technology Center 2400
____________

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

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-32. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellants’ invention is directed to “a method and apparatus for
providing a network based operating system for mobile clients.” Spec. 63,
Abstract of the Disclosure.
Claim 1 is illustrative, with key disputed limitations emphasized:
1. A method for operating an intermediary through which clients may
obtain content from two or more of a plurality of different services
that are remotely located relative to the intermediary, the method
comprising the computer-implemented steps of:

in response to a first request received at the intermediary from a
client for first content from a first service, the intermediary
sending over a network a second request to the first service for
the first content and receiving over the network a first reply
from the first service that includes the first content, wherein the
client is remotely located relative to the intermediary;

prior to delivering the first content from the first service to the
client, the intermediary locating within the first content a
reference to second content from a second service of said
plurality of different services, wherein said reference can be
included in any content from any of said plurality of different
services and can refer to any other service of said plurality of
different services;

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;

generating combined content at the intermediary based on the
first content from said first service and the second content from
said second service; and

providing the combined content from the intermediary to the
client in response to said first request.
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The Examiner relies on the following as evidence of unpatentability:
Tso US 6,892,226 B1 May, 10, 2005
(filed Dec. 30, 1997)
Reisman US 2002/0124055 A1 Sept. 5, 2002
(filed Apr. 20, 2000)
Elsey US 2002/0055351 A1 May 9, 2002
(filed May. 25, 2001)
Smith US 5,835,724 Nov. 10, 1998

THE REJECTIONS
1. The Examiner rejected claims 1-3, 10-12, 19-21, and 26-28 under
35 U.S.C. §103 (a) as unpatentable over Tso and Reisman.
Ans. 3-7.1
2. The Examiner rejected claims 4-6, 13-15, 22-24, and 29-31 under
35 U.S.C. §103 (a) as unpatentable over Tso, Reisman, and Elsey.
Ans. 7-9.
3. The Examiner rejected claims 7, 16, 25, and 32 under 35 U.S.C.
§ 103 (a) as unpatentable over Tso and Smith. Ans. 9-12.
4. The Examiner rejected claims 8 and 17 under 35 U.S.C. § 103 (a)
as unpatentable over Tso, Smith, Elsey, and Reisman. Ans. 12.
5. The Examiner rejected claims 9 and 18 under 35 U.S.C. § 103 (a)
as unpatentable over Tso, Smith, and Elsey. Ans. 12-13.

ISSUES
Based upon our review of the record and the arguments proffered by
Appellants, we find the following issues dispositive of the present appeal.

1 Throughout this opinion, we refer to the Appeal Brief filed March 31,
2009; the Examiner’s Answer mailed June 24, 2009; and, the Reply Brief
filed August 24, 2009.
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1. Under § 103, has the Examiner erred in rejecting claims 1 and 10
by finding that Tso and Reisman show or suggest an intermediary
through which a client may obtain content wherein the
intermediary locates a reference to a second content within a first
requested content, requests that second content and then combines
the first content and the second content?
2. Under § 103, has the Examiner erred in rejecting claims 3 and 12
by finding that Tso and Reisman show or suggest that the
intermediary stores a record that the first and second content were
combined?
3. Under § 103, has the Examiner erred in rejecting claims 20 and 27
by finding that Tso and Reisman show or suggest that the
intermediary determines if the first content and second content
should be combined based upon a flag?
4. Under § 103, has the Examiner erred in rejecting claims 4 and 13
by finding that Tso, Reisman, and Elsey show or suggest that the
intermediary generates a reply which includes an object generated
by the intermediary?
5. Under § 103, has the Examiner erred in rejecting claims 6 and 15
by finding that Tso, Reisman, and Elsey show or suggest storing a
record at the intermediary that indicates that the second content
was retrieved in response to selection of the object generated by
the intermediary?
6. Under § 103, has the Examiner erred in rejecting claims 23 and 30
by finding that Tso, Reisman, and Elsey show or suggest that the
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intermediary determines if the object associated with the second
content is included based upon a particular flag?
7. Under § 103, has the Examiner erred in rejecting claims 7 and 16
by finding that Tso and Smith show or suggest reading a record to
determine that the service is the service from which content was
requested by the end user?

ANALYSIS
Appellants argue that the Examiner has impermissibly relied upon
multiple separate features of the reference to show the various features of the
“intermediary” without demonstrating the presence of those features within a
single element. For example, the Appellants note that the Examiner relies
upon the “proxy server” of Reisman to show a remote location of an
“intermediary” from the client; the pre-fetch function described in the
Abstract of Reisman to show the location of a reference to second content
contained within first content; the link relocation tool of Reisman to show
fetching of references; and the separable content integration module of
Reisman to show generating a combined content. Reply Br. 2-5. Appellants
argue that “it is simply unclear as to how the proxy server may be combined
with the network device, in addition to the link relocation tool, and the fetch-
send protocol.” Id at 5.
With respect to the feature of an intermediary element, the Examiner
finds that Tso discloses a method for allowing clients to access multiple
services through an intermediary that is located remotely to those services
(Tso, col. 3, ll.13-32) and that Reisman also discloses an intermediary that
delivers content to a client from multiple services (Reisman, ¶[0024]). Ans.
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3-5. We concur with this finding and consequently we find no error in the
Examiner’s conclusion that Tso and Reisman both disclose an
“intermediary” for allowing a client to access multiple services.
As to Appellants’ contention that the cited references fail to show an
intermediary locating a reference to second content within first content, the
Examiner finds that Reisman discloses automatically prefetching additional
data objects referenced within a first data object (Id) in a manner which
suggests the location of a second content which is set forth in claims 1 and
10. Ans. 13-14. We find the Examiner’s argument on this point persuasive.
With regard to the Appellants contention that the cited references fail
to show generating a combined response with the first and second content,
(App. Br. 14) the Examiner finds that Reisman discloses integrating or
combining fetched data with original information utilizing a content
integration module which maintains records of that combination, as
described in Reisman at ¶[0230] in a manner suggestive of the limitations set
forth in claims 3 and 12. Ans. 16-17. We find this argument persuasive.
Appellants argue that the cited references fail to show or suggest
determining if a second content is to be requested, (App. Br. 16) or if the
object associated with the second content is to be included with the reply
(App. Br. 20) as recited in claims 20, 23, 27 and 30. The Examiner finds
that a URL coding character, as disclosed in Reisman at ¶[0321], falls within
the broadest reasonable interpretation of a “flag” as claimed by Appellants,
and may be utilized in the manner claimed by Appellants to determine if
selected content should be combined, and/or retrieved, Ans. 18. We concur
with the Examiner’s finding.
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With respect to claims 4, 6, 13, and 15, Appellants argue that the cited
references fail to show or suggest generating a reply at the intermediary
which includes an “object” generated by the intermediary. App. Br. 17.The
Examiner’s finds that Elsey discloses the preparation of a “hyperlink” (an
object prepared by an intermediary) and retrieving an object in response to
selection thereof, (Elsey ¶[0105]) in a manner suggestive of the features
recited in claims 4, 6, 13, and 15. Ans. 8. We find the Examiner’s position
persuasive.
Finally, Appellants argue, with respect to claims 7 and 16, that the
cited references fail to show or suggest reading a record to determine that the
service providing content is the service from which the content was
requested. App. Br. 21-22.The Examiner finds that Smith discloses storing
session data while a client is connected to a data source wherein the session
data may be accessed to ascertain the source of data which has been
requested by the client. (Smith, col. 3, ll.30-49), as recited in claims 7 and
16. Ans. 11. We concur with the Examiner’s finding.
Appellants argue that the Examiner has selected the above-referenced
features from multiple different elements within the cited references and has
failed to find each of those features in a single “intermediate,” as claimed by
Appellants. Appellants also argue that it is “unclear” how those references
could be combined. (Reply Br. 5)
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).
Additionally,the Supreme Court has determined that the conclusion of
obviousness can be based on the interrelated teachings of multiple patents,
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the effects of demands known to the design community or present in the
marketplace, and the background knowledge possessed by a person having
ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). As stated by the Supreme Court, an obviousness “analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
We conclude that such combination of Tso, Reisman, Elsey, and
Smith is no more than a simple arrangement of old elements with each
performing the same function it had been known to perform, yielding no
more than one would expect from such an arrangement. The skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420-21.
Thus, the issue here is whether the ordinarily skilled artisan, upon
reading the cited references, would find it obvious to include each of the
various features in an “intermediate” within a system for providing a
network based operating system to mobile devices. Here, it is our view that
an artisan possessing common sense and creativity at the time of the
invention would have recognized the advantage of combining each of the
enumerated features set forth above into an “intermediate” as claimed by the
Appellants.
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co. of Kansas City,
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383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has
clearly stated that the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR 550 U.S. at 401 (citation omitted).
That reasoning is applicable here. Based upon our review of
Appellants’ claims we are not persuaded that combining the respective
familiar elements of the cited references in the manner proffered by the
Examiner was “uniquely challenging or difficult for one of ordinary skill in
the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Therefore, we find the Examiner’s proffered combination of familiar
prior art elements according to their established functions would have
conveyed a reasonable expectation of success to a person of ordinary skill
having common sense at the time of the invention.
We note that Appellants have not rebutted the Examiner’s legal
conclusion of obviousness by showing that the claimed combination of
familiar elements produces any new function. Appellants have not provided
any factual evidence of secondary considerations, such as unexpected or
unpredictable results, commercial success, or long felt but unmet need.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1 and claims 2-32, for the reasons set forth above.

CONCLUSION
The Examiner did not err in rejecting claims 1-32 under §103.

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ORDER
The Examiner’s decision rejecting claims 1-32 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).

AFFIRMED

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