11531139 (P.T.A.B. Dec. 22, 2014)

Ex Parte Fish et al

Patent Trial and Appeal BoardDec 22, 2014

11531139 (P.T.A.B. Dec. 22, 2014)

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. 11/531,139 09/12/2006 Douglas Ray Fish ROC920050429US1 1765 7590 12/23/2014 Grant A. Johnson IBM Corporation, Dept. 917 3605 Highway 52 North Rochester, MN 55901-7829 EXAMINER MUELLER, KURT A ART UNIT PAPER NUMBER 2157 MAIL DATE DELIVERY MODE 12/23/2014 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 DOUGLAS RAY FISH and JOHN EDWARD PETRI ____________ Appeal 2012-005883 Application 11/531,139 Technology Center 2157 ____________ Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 29–42 and 45–55. Claims 1–28 and 43–44 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real party in interest identified by Appellants is International Business Machines, Inc. See Appeal Br. 2. Appeal 2012-005883 Application 11/531,139 2 STATEMENT OF THE CASE Introduction Appellants describe the present invention as follows: The present invention provides an efficient processing mechanism to classify and pre-process rules, encode and embed portions of the rules in the client page, and process rules with minimal return trips to the server. One embodiment of the invention comprises a method for providing web applications, comprising generating a rules mapping for a web application view; and transmitting the web application view to a client device. In some embodiments, the rules mapping is a binary array comprising matched groups of rule identifiers and evaluation attributes. This binary array may be encoded in a web page representing the web application view. Spec. page 3:9–17. Rejections on Appeal2 Claims 29–42 and 47–55 stand rejected under 35 U.S.C. §103(a) as being obvious in view of Gangadharan (US 2003/0132967 A1; published July 17, 2003), Chiang (US 2001/0037490 A1; published Nov. 1, 2001), and Salas (US 6,233,600 B1; issued May 15, 2001). Claim 45 stands rejected under 35 U.S.C. §103(a) as being obvious in view of Gangadharan, Chiang, Salas, and Benussi (US 2001/0044898 A1; published Nov. 22, 2001. Claim 46 stands rejected under 35 U.S.C. §103(a) as being obvious in view of Gangadharan, Chiang, Salas, and Ozana (US 2006/0259483 A1; published Nov. 16, 2006). 2 In the Non-Final Rejection mailed on January 14, 2011, the Examiner rejected claims 47–49 under 35 U.S.C. § 101 as being directed to non- statutory subject matter. See Appeal Br. 9. In light of Appellants’ remarks in the Appeal Brief, the Examiner withdrew this rejection. See Ans. 23. Appeal 2012-005883 Application 11/531,139 3 Illustrative Claim Claim 29 is illustrative and provides as follows: 29. A method for providing web applications from a server computer, comprising: receiving, via a network interface, a GUI interface request from a client device; generating a rules mapping at the server computer for a web application view responsive to the request, wherein the rules mapping comprises a target evaluation rule identifier and an associated evaluation result for a plurality of GUI interface nodes in the web application view; and transmitting, via the network interface, the web application view to the client device. Issue on Appeal Appellants’ arguments in the Appeal Brief3 and Reply Brief present us with the following dispositive4 issue: Does Gangadharan teach or suggest generating a rules mapping for a web application view responsive to a GUI interface request from a client device “wherein the rules mapping comprises a target 3 Our Decision refers to Appellants’ Amended Appeal Brief, filed on Nov. 19, 2011 (“Appeal Br.”), the Examiner’s Answer, mailed on Dec. 29, 2011 (“Ans.”), Appellants’ Reply Brief, filed on Feb. 29, 2012 (“Reply Br.”), and the original Specification, filed on Sept. 12, 2006 (“Spec.”). 4 Appellants’ arguments present us with additional issues, but we do not reach them because the identified issue is dispositive of the appeal. Appeal 2012-005883 Application 11/531,139 4 evaluation rule identifier and an associated evaluation result for a plurality of GUI interface nodes in the web application view,” as recited in claim 29? ANALYSIS Appellants contend that none of the references teaches or suggests generating a rules mapping at a server computer for a web application view on a client device “wherein the rules mapping comprises a target evauation rule identifier and an associated evaluation result for a plurality of GUI interface nodes . . . .” See Appeal Br. 10; Reply Br. 3–5. The Examiner relies on Gangadharan as teaching a method for transferring files between a web enabled client device and a web server using a drag and drop user interface or GUI. See Ans. 24, 26–27; Gangadharan, Abstract and ¶ 27. The Examiner finds that “[t]he very nature of a drag and drop interface implicitly requires consideration of rules,” that “Gangadharan explicitly discloses a rule based evaluation, specifically in the form of a virus screen,” and that the “if, then” determination relating to the virus screen “meets the limitations of the claims.” Ans. at 24. The Examiner relies on Chiang as teaching that “transformations take place on the server.” Id. at 25–27. “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). Here, the Examiner has not persuaded us that Gangadharan teaches or suggests the limitations “wherein the rules mapping comprises a target evaluation rule identifier and an associated evaluation result for a plurality of GUI interface nodes in the web application view,” as Appeal 2012-005883 Application 11/531,139 5 required by claim 29, either implicitly or explicitly. In regard to the Examiner’s finding that Gangadharan’s drag and drop interface “implicitly requires the consideration of rules,” the Examiner has not cited any portion of the disclosure of Gangadharan or any other authority, or provided any reasoned explanation, in support of this conclusion. Furthermore, we agree with Appellants argument that, “because Gangadharan never describes how any of its functionality is actually implemented, there is no way to show that any specific encoding technique is ‘necessarily’ present . . . .” See Reply Br. 4; see also Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 2014 WL 6782649 at *6 (Fed. Cir. Dec. 3, 2014 ) (“We have, however, also explained that the use of inherency, a doctrine originally rooted in anticipation, must be carefully circumscribed in the context of obviousness. See, e.g., In re Rijckaert, 9 F.3d 1531, 1533–34 (Fed.Cir. 1993) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency].” (internal quotation omitted)). In regard to the Examiner’s finding that the “if, then” determination relating to the virus screen “meets the limitations of the claim” (see Ans. at 24), we agree with Appellants’ explanation that the “if, then” condition is processed by the client and a file is transferred to the web server after it is checked for viruses in element 106 and repaired in element 108 if viruses are detected. See Reply Br. 6; Gangadharan, Figure 1 and ¶ 28. Even if we assume that the “if, then” determination relating to the virus screen is a “rule based evalution” as found by the Examiner, we are not persuaded that Gangadharan, including Figure 1 and paragraphs 25, 27–28, teaches or suggests the limitations of generating a rules mapping “wherein the rules mapping comprises a target evaluation rule identifier and an associated Appeal 2012-005883 Application 11/531,139 6 evaluation result for a plurality of GUI interface nodes in the web application view.” In other words, we are not persuaded that Gangadharan teaches or suggests that, “for a plurality of GUI interface nodes in the web application view,” the rules mapping includes “a target evaluation rule identifier” and “an associated evaluation result.” Thus, we conclude these limitations are not taught or suggested in Gangadharan. Accordingly, we do not sustain the rejection of claim 29. For the same reasons, we do not sustain the rejection of independent claims 47 and 50 or the rejection of dependent claims 30–42, 45, 46, 48, 49, and 51–55. DECISION The Examiner’s decision rejecting claims 29–42 and 45–55 is reversed. REVERSED ELD