Ex Parte DeMesa et al

Patent Trial and Appeal Board

Mar 9, 2018

12104652 (P.T.A.B. Mar. 9, 2018)

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.
12/104,652 04/17/2008 Jesse DeMesa 2007P08410 4255
27350 7590 03/13/2018
LERNER GREENBERG STEMER LLP
Box SA
P.O. BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
DYER, ANDREW R
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
boxsa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSE DeMESA and STEPHEN SJOLANDER
Appeal 2017-001695
Application 12/104,652
Technology Center 2100
Before ULRIKE W. JENKS, CHRISTOPHER G. PAULRAJ, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The application at issue relates generally to the generation of Web
pages and the handling of Web page requests. Spec. 1. According to the
Specification “various client devices exhibit different display properties and
1 Appellants identify Siemens Aktiengesellschaft of Munich, Germany, as
the real party in interest. Br. 2.
Appeal 2017-001695
Application 12/104,652
capabilities.” Id. Because of these different properties associated with each
client device “a Web page displayed by one client device may appear quite
different from the identical Web page as displayed by a different client
device. Some client devices may lack rendering capabilities needed to
display certain Web pages.” Id. The Specification indicates that a way to
manage reusable content while maximizing different rendering technologies
is needed. Mat 2.
Claims 1—3, 6—12, and 15—18 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief. Claim 1 is representative of the
claims on appeal, and reads as follows:
1. A method comprising:
receiving a Uniform Resource Locator;
determining to convert a markup-language file associated
with the Uniform Resource Locator to a Web format, wherein
the step of determining to convert the markup-language file
includes: determining that a Web-formatted file associated with
the Uniform Resource Locator is stored in the Web server file
system, determining that the markup-language file is associated
with the Uniform Resource Locator, and determining that the
markup-language file is more recent than the Web-formatted
file;
after performing the step of determining to convert the
markup-language file, converting the markup-language file to
the Web format;
storing the converted file in a Web server file system,
wherein storing the converted file includes replacing the Web-
formatted file with the converted file in the Web server file
system; and
providing the converted file to a Web client from which
the Uniform Resource Locator was received;
wherein the markup-language file represents an entire
page of information; and
wherein the step of determining that the Web-formatted
file associated with the Uniform Resource Locator is stored in
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the Web server file system includes: inspecting a hierarchical
tree of Uniform Resource Locators, and wherein the
hierarchical tree associates at least some of the Uniform
Resource Locators with respective Web-formatted files stored
in the Web server file system.
Br. 11—12 (Claims Appendix).
Claim 10, the only other independent claim, is directed to a program
code for carrying out the steps as recited in claim 1. Br. 13.
Appellants request review of the following grounds of rejection made
by the Examiner
I. claims 1—3, 7, 9-13, and 16—18 under 35 U.S.C. § 103(a) as
unpatentable over Hind,2 Harris,3 and Aoki4;
II. claim 6 under 35 U.S.C. § 103(a) as unpatentable over Hind,
Harris, Aoki, and Covington5; and
III claims 8 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Hind, Harris, Aoki, and Dale.6
I. Obviousness over Hind, Harris, and Aoki
We have reviewed Appellants’ contentions that the Examiner erred in
rejecting the claims over Hind, Harris, and Aoki. Br. 5—9. We disagree with
Appellants’ contentions and generally agree with the Examiner’s findings
concerning the scope and content of the prior art. See Final Act.7 4—10; see
2 Hind et al., US 2002/0122054 Al, published Sept. 5, 2002 (“Hind”).
3 Harris et al., US 2003/0023755 Al, published Jan. 30, 2003 (“Harris”).
4 Aoki et al., US 6,078,913, issued June 20, 2000 (“Aoki”).
5 Covington et al., US 2003/0009448 Al, published Jan. 9, 2003
(“Covington”).
6 Dale et al., US 6,049,664, issued Apr. 11, 2000 (“Dale”).
7 Final Office Action mailed Nov. 25, 2015 (“Final Act.”).
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Ans.8 2—6; see Ans.-20119 3—24. For emphasis, we highlight and address
the following:
Appellants contend that “[njeither the final office action nor the
Advisory Action contain a statement specifically identifying which
component in Hind has been equated with the claimed Web-formatted file.”
Br. 7. According to Appellants “the Examiner states that the TFC file in
Hind is not the claimed Web-formatted file.” Id. at 6.
Appellants’ argument is not persuasive because the argument focuses
on a single reference and does not address the combination as presented by
the Examiner. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). The Examiner does not rely on the teachings of Hind for meeting the
limitation of the Web-formatted file, and instead, the Examiner relies on
Harris for teaching the Web-formatted file and storing the Web-formatted
file. See Final Act. 6. The Examiner finds that Harris discloses
“determining that the markup-language file is more recent than the Web-
formatted file” (See Harris Page 4, Paragraph 27) by implementing a ‘post-
translate’ cache.” Final Act. 6. Additionally, the Examiner finds that
Harris discloses “‘wherein storing the converted file includes replacing the
Web-formatted file with the converted file in the Web server file system’
(See Harris Page 4, Paragraph 27).” Id. We find no error with the
Examiner’s reliance on Harris for teaching the Web-formatted file.
Therefore, we are not persuaded by Appellants contention that the
Examiner’s rejection is in error because the Web-formatted file has not been
identified in Hind.
8 Examiner’s Answer mailed Sept. 1, 2016 (“Ans.”).
9 Examiner’s Answer mailed Dec. 23, 2011 (“Ans.-2011”).
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Application 12/104,652
Even if the TFC of Hind is considered to meet the claimed Web-
formatted file limitation, as argued by Appellants, this argument is also
unpersuasive. The Examiner explains:
Hind explicitly discloses that the “TFCs may be stored
and managed by a content management system” (See Hind
Page 4, Paragraph 49). Further, the replacement of the web-
formatted file of Harris is in the setting of a content
management system that caches files (See Harris Page 4,
Paragraph 27). Thus, caching a TFC in a content management
system (e.g., replacing the old copy with an updated copy)
would in no way render the method and system of Hind
unsuitable for its intended purpose.
Advisory Act.10 2.
Appellants contend that “the target document (Web formatted file) in
Hind is the result of a transformation of the TFC (markup-language file), the
TFC (markup-language file) will never be more recent than the target
document (Web formatted file - which is the converted TFC).” Br. 7.
Appellants contend that “there is no disclosure of determining that the target
document type is stored in the Web server file system as a part of
determining to convert the TFC.” Id. at 8.
We are not persuaded by Appellants argument because the argument
focuses on one reference and does not address the combination as relied on
by the Examiner. See Merck, 800 F.2d at 1097. Prior art references must be
“considered together with the knowledge of one of ordinary skill in the
pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting
In re Samour, 571 F.2d 559, 562 (CCPA 1978)). The Examiner recognizes
that “Hind does not appear to explicitly disclose ‘determining that the
10 Advisory Action mailed Jan. 26, 2016 (“Advisory Act.”).
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markup-language file is more recent than the Web-formatted file” and
therefore looks to Harris for supplying this teaching. Final Act. 5; see Ans.
23. A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
Harris recognizes that “the biggest problems with translating content
dynamically, [is] the performance penalty paid during each web page
request.” Harris 127. Harris explains that content can be derived from a
variety of sources.
This data can be WAX [wireless abstract XML], or any XML
file. It may be plain HTML. The data source can be web site, a
static file, a Servlet or a Java Server Page.. . . Once the content
is generated, the resulting stream is saved to cache (if
appropriate) so subsequent requests will be processed
instantaneously.
Harris 126. Thus, Harris explains that by storing processed Web-page
information into a cache any “[subsequent requests for the same page do[es]
not require expensive system calls.” Harris 127.
The Examiner makes clear that the XML file of Hind is considered the
claimed markup-language file. See Ans. 4 (citing Final Act. 5; see also
Non-Final Act. 6 (April 20, 2011); Final Act. 3 (Aug. 5, 2011 ); Ans. 23
(Dec. 23, 2011); and Patent Board Decision 7 (May 11, 2015)). Both the
data generation and data presentation blocks of Hind utilize XML markup-
language files. See Hind Figure 3 (“XML data” and “XSLfamily”); see id.
170 (“An XSL style sheet, which is itself an XML document, consists of
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declarative rules that are applied by the XSLT processor.”); see Ans.-2011,
12 (“dynamic data content may be XML documents converted with XSLT”);
see Hind Tflf 62 and 95. Hind teaches that the advantage of separating the
data generation and data presentation “facilitates reuse of dynamic data
content in a Web authoring environment. . . . [T]he dynamic data content
itself may optionally be stored in a cache, from which it is then available for
reuse, yielding even greater efficiencies.” Hind 149, see also 195
(“advantageous techniques for representing, storing, and managing dynamic
data content for Web documents, which avoids drawbacks of prior art
techniques. Note that where reference is made herein to using XML, this is
intended to encompass other similar notations”). The Examiner relies on
Hinds XML file for meeting the claimed markup-language file but
acknowledges that Hind does not address looking at the age of a markup-
language file during the data generation process (the dynamic data content)
and instead relies on Harris for this limitation. See Final Act. 5.
The Examiner finds that Harris teaches “determining that the markup-
language file is more recent than the Web-formatted file ... by
implementing a ‘post-translate’ cache. Additionally, Harris discloses
‘wherein storing the converted file includes replacing the Web-formatted file
with the converted file in the Web server file system.’” Final Act. 6. We
agree with the Examiner’s position that Harris necessarily evaluates which
data file was created most recently. In other words, Harris explains that if
changes are made to the stored data which is the markup-language file (the
XML file) then the system recognizes that this particular file has never been
translated and cached before, necessitating a new translation and saving of
that information. See Harris ]Hf 26—27. We agree with the Examiner’s
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conclusion that the combination of Hind and Harris would “reduce the
number of system calls to provide the pages to the user.” Final Act. 6. As
expressly recognized in KSR, any art recognized need or problem can
provide a reason for combining claim elements. KSR, 550 U.S. at 416. Such
a modification of checking whether a request for the same page has
previously been made and cached before proceeding to translate any new
content requires no more than the creative steps that a person of ordinary
skill in the art would ordinarily employ in view of the teachings of the cited
references.
Appellants contend that claim 1 requires “receiving a Uniform
Resource Locator” and “determining to convert a markup-language file
associated with the Uniform Resource Locator to a Web format.” Br. 5.
We are not persuaded by Appellants contention. As explained by the
Examiner, “[t]he claimed invention only requires that the Web-formatted file
is ‘associated with the Uniform Resource Locator.’ (Claim 1). Here, the
document type defines what format the document markup-language file will
be converted into to generate the Web-formatted file (Hind 151), which is
an association between the URL and the Web-formatted file.” Ans. 5
(emphasis added); see Hind 151 (“a URL or other identifier may be used to
identify the target document type.”). The Examiner further explains that by
“creating a ‘rendered output document’” Hind returns the converted file
back to the requesting source as well as storing the converted file. Final
Act. 5; see also Hind 1 50 (“The source document 300 . . . may be
considered a ‘template’ for creating a rendered output document.”); see id.
1 8 (“input requests are mapped to back-end application logic, and how the
results of that logic are represented in an output response.”); see id. 195
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(“storing and managing dynamic data for web content”). Hind specifically
separates data generation from data presentation. See id. 149. An input
request in Hind requires obtaining information from both the data generation
and data presentation blocks. Id. The use of a URL in Hind determines
what blocks are to be retrieved in response to a request is reasonably
identified by the Examiner as being associated with a Web-formatted file as
claimed.
[T]he Examiner notes that the features upon which Appellants
rely (i.e., “the target document type [identified by the URL in
Hind | 51] is not a Web-formatted file”) are not recited in the
rejected claim(s). Although the claims are interpreted in light
of the specification, limitations from the specification are not
read into the claims. . . . The claimed invention only requires
that the Web-formatted file is “associated with the Uniform
Resource Locator.” (Claim 1). Here, the document type defines
what format the document markup-language file will be
converted into to generate the Web-formatted file (Hind 151),
which is an association between the URL and the Web-
formatted file.
Ans. 5. We find no error with the Examiner’s reasonable interpretation that
the claim does not require a URL linked to a Web-formatted file only that
there is an association between a URL and Web-formatted file. Because the
limitation of receiving a URL request is not linked to a particular document
all that is required to meet this limitation is that such a request is made at
any point during the processing of a Web page. The Examiner has directed
us to sufficient evidence in Hind to support the position that “a URL or other
identifier may be used to identify the target document type” and
identification of a target document meets the claimed limitation of “a Web-
formatted file associated with a Uniform Resource Locator.” See Hind 151;
see final Act. 4 and 8.
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Appellants have not provided any argument directed to Aoki. See
Appeal Br. 8 (“Note that the disclosure in Aoki et al. has not been referenced
with regard to the limitations of claim 1 that are copied above.”).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Hind, Harris,
and Aoki renders obvious the limitation claim 1. We affirm the rejection of
claim 1 under 35 U.S.C. § 103(a) as being obvious. Because claims 2, 3, 7,
9—13, and 16—18 fall with claim 1, we affirm the rejection as to those claims
as well.
II. and III. Obviousness over Hind, Harris, Aoki, and Other References
The Examiner has rejected claims 6, 8, and 15 under 35 U.S.C.
§ 103(a) as obvious over the combination Hind, Harris, Aoki, and Covington
(claim 6), or the combination of Hind, Harris, Aoki, and Dale (claims 8
and 15). Appellants do not separately argue the obviousness rejection of
these claims, instead relying on the same reasons set forth with respect to
claim 1. Br. 9. Having affirmed the obviousness rejection of claim 1 over
the combination of Hind, Harris, and Aoki we also find that further
combination with Covington or Dale renders claims 6, 8, and 15 obvious for
the reasons given by the Examiner. See Final Act. 10—12; see Ans. 6.
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SUMMARY
We affirm the rejection of all pending claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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