Ex Parte George et al

Board of Patent Appeals and Interferences

Nov 9, 2010

10728864 (B.P.A.I. Nov. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID A. GEORGE and MALGORZATA E. STYS
____________

Appeal 2009-007749
Application 10/728,864
Technology Center 2400
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Before JOHN A. JEFFERY, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants invented a method, apparatus, medium, and system for
capturing user interactions and feedback. See generally Spec. 1, 5. Claim 1
is illustrative:
1. A method of enhancing a dialog with a web server, said method
comprising:
determining a dialog state by comprehensively capturing a dialog
with said web server.

The Examiner relies on the following as evidence of unpatentability:
Jawahar US 6,298,356 B1 Oct. 2, 2001

THE REJECTION
The Examiner rejected claims 1-30 under 35 U.S.C. § 102(b) as
anticipated by Jawahar. Ans. 3-11.2,3

CLAIM GROUPING
Appellants argue the following claim groupings separately: (1) claims
1, 2, 8-10, 12, 14-17, 19-24, and 27-294; (2) claims 3 and 4; (3) claim 5; (4)
claims 6 and 7; (5) claims 11, 13, and 18; (6) claims 25 and 26; and (7)
claim 30. See App. Br. 13-16. Accordingly, we select claims 1, 3, 6, 11,
and 25 as representative of groups (1), (2), and (4)-(6). See 37 C.F.R.
§ 41.37(c)(1)(vii).

2 Throughout this opinion, we refer to (1) the Appeal Brief filed July 29,
2008; (2) the Examiner’s Answer mailed October 20, 2008; and (3) the
Reply Brief filed December 22, 2008.
3 The § 101 rejection of claims 14-23 has been withdrawn. Ans. 11.
4 Claims 2, 8-10, 12, 14-17, 19-24, and 27-29 were not separately argued.
See App. Br. 13-16.
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THE CONTENTIONS
Regarding representative claims 1 and 30, the Examiner finds that
Jawahar discloses determining a dialog state by comprehensively capturing a
dialog with the web server by monitoring a user’s access to information
contained in a web server. Ans. 3, 10. Appellants argue that Jawahar does
not use an intermediary and does not comprehensively capture the whole
dialog, including all requests and responses being redirected through the
intermediary. App. Br. 13-15; Reply Br. 1-2.
As for representative claim 3, the Examiner finds that Jawahar
discloses analyzing the dialog content. Ans. 3. Appellants argue that
Jawahar’s disclosure of monitoring time spent on an accessed web page does
not reasonably satisfy the plain meaning of claim 3. App. Br. 15.
Regarding claim 5, the Examiner finds that Jawahar discloses the
analyzing step optionally comprise natural language processing. Ans. 4.
Appellants contend that Jawahar fails to disclose a natural language
processing capability. App. Br. 15.
As for representative claim 6, the Examiner finds that Jawahar
discloses an intermediary. Ans. 4, 9. Appellants contend that Jawahar fails
to disclose using an intermediary as defined and understood by an ordinarily
skilled artisan. App. Br. 15.
Regarding representative claim 11, the Examiner refers to the
discussion of claim 10. Ans. 5-6. Appellants assert that Jawahar fails to
disclose the user’s dialog with the original server will continue if the user
moves to another unrelated server. App. Br. 15; Reply Br. 1-2.

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Regarding representative claim 25, the Examiner finds that Jawahar
discloses the recited means by referring to the discussion of claims 6 and 7.
Ans. 9, 5. Appellants contend that Jawahar fails to teach or suggest the
means described in the application or an equivalent. App. Br. 15-16.
The issues before us, then, are as follows:

ISSUES
Under § 102, has the Examiner erred by finding that Jawahar
discloses:
(1) determining a dialog state by comprehensively capturing a dialog
with a web server as recited in claim 1?
(2) the determining step includes analyzing the dialog’s content as
recited in claim 3?
(3) the analyzing step optionally comprises natural language
processing as recited in claim 5?
(4) an intermediary as recited in claims 6 and 30?
(5) the dialog continues to be captured when a second web server is
selected by the user as recited in claim 11?
(6) the recited means in claim 25?
(7) comprehensively capturing a dialog with a web server as recited in
claim 30?

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FINDINGS OF FACT
1. Appellants have not defined the terms, “dialog state” and
“comprehensively capturing.” See generally Specification.
2. Jawahar discloses monitoring an individual’s access to
information contained in a web server. Jawahar, col. 3, ll. 52-54.
3. Jawahar monitors: (a) all web page accesses, including a web
browser’s “back” and “forward” functions; (b) whether a user selects a
“Help” button (e.g., step 236); (c) whether the user has accessed a different
web page (e.g., step 240); and (d) the total time a user views a web page at
step 252. Jawahar, col. 14, ll. 40-49; col. 15, l. 60 – col. 16, l. 22; col. 16, ll.
48-50; Figs. 7A-B.
4. Jawahar describes a procedure used to determine whether to
display a “Help” button to a user by examining the content of the viewed
web page (e.g., product or service displayed or discussed in web page).
Jawahar discloses monitoring the time a user spends on a single or various
web pages on a web server at steps 250 and 252, and may display a “Help”
button after a predetermined time of viewing web pages at steps 260 and 262
or a predetermined number of web pages at steps 264 and 262. Jawahar, col.
3, ll. 59-61; col. 13, l. 65 – col. 14, l. 12; col. 14, ll. 62-67; col. 16, ll. 40-67;
col. 17, ll. 24-33; Fig. 8.

PRINCIPLES OF LAW
“The difference in meaning and scope between claims is presumed to
be significant to the extent that the absence of such difference in meaning
and scope would make a claim superfluous.” Free Motion Fitness, Inc. v.
Cybex Int’l, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005) (citations omitted).
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Claims 1, 13, and 18
ANALYSIS
We begin by construing the key disputed and only limitation of claim
1 which calls for, in pertinent part, determining a dialog state by
comprehensively capturing a dialog with a web server. As a preliminary
matter, claim 1 fails to recite an intermediary. That is, unlike dependent
claim 6 which claims an intermediary, claim 1 is broader in scope. See Free
Motion, 423 F.3d at 1351. We therefore find that Appellants’ arguments
related to an intermediary and redirection (App. Br. 13-14; Reply Br. 1-2)
are not commensurate with the scope of claim 1.
Additionally, contrary to Appellants’ discussion (App. Br. 13), the
Specification does not define the terms, “dialog state” or “comprehensively
capturing.” FF 1. Moreover, Appellants provide no evidence that the
phrases, “dialog state” or “comprehensively capturing,” have a particular
meaning to those skilled in the art. See App. Br. 13-14; Reply Br. 1-2. We
therefore attach no particular meaning to word “comprehensively,” such that
claim 1 requires the whole dialog or all user requests and server responses
must be captured. Rather, claim 1 recites capturing only “a dialog.” Also,
the phrase, “a dialog state” will be given its broadest reasonable construction
to include a condition of the dialog, such as how long the dialog lasts. See
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(internal citations omitted).
Jawahar discloses monitoring or capturing an individual’s access to
information contained in a web server. FF 2. As Appellants admit (App. Br.
15), Jawahar specifically discloses tracking the time a user spends on
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various web pages on a web server or capturing the length of the user’s
dialog. See FF 3. Jawahar further discloses capturing other interactions,
including: (a) a browser’s “back” and “forward” functions (id.); (b) whether
the user has accessed a different web page (see id.); and (c) whether a user
selects a “Help” button (see FF 3-4). Additionally, Jawahar examines the
content of a web page to determine whether to display a “Help” button. See
FF 4. All these captured interactions are dialogs with a web server. By
capturing these activities, Jawahar further determines a condition of these
interactions, including whether a website is being accessed, the time length
that a web site is being accessed, whether user is requesting help, and
whether the user is requesting a different web page. See FF 3-4. We
therefore find that Jawahar discloses determining a dialog state by
comprehensively capturing a dialog with the web server as recited in claim
1.
For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of independent claim 1 based on Jawahar. We
therefore sustain the rejection of claim 1, and claims 2, 8-10, 12, 14-17,
19-24, and 27-30, which fall with claim 1.

Claims 3 and 4
ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 3 which calls for, in pertinent
part, analyzing the dialog’s content. As discussed above, Jawahar discloses
several scenarios of determining a dialog state involving analyzing the
content of the dialog. See FF 3-4. For example, Jawahar discloses
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determining whether to display a “Help” button by analyzing the content of
each web page viewed or analyzing whether the user selects a “Help” button.
See id. We therefore disagree with Appellants that Jawahar fails to teach the
step of determining a dialog state further comprises analyzing a dialog’s
content as required by claim 3.
For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of claim 3 based on Jawahar. We therefore sustain the
rejection of claim 3, and claim 4 which falls with claim 3.

Claim 5
ANALYSIS
We begin by construing the key disputed limitation of claim 5 which
calls for, in pertinent part, the analyzing step optionally comprises natural
language processing. By reciting the analyzing step optionally comprises
natural language processing, this natural language processing step fails to
limit the claim. Rather, the processing step is just an option. We therefore
find that Jawahar discloses the limitations of claim 5, even if the reference
fails to teach natural language processing capability as Appellants contend
(App. Br. 15).
For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of claim 5, and we therefore sustain the rejection of
claim 5.

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Claims 6 and 7
FINDINGS OF FACT
5. Appellants define “intermediaries” as “computational entities . . .
that can be positioned anywhere along an information stream and are
programmed to tailor, customize, personalize, or otherwise enhance data as
it flows along the stream.” Spec. 12:19-13:2.
6. Jawahar discloses a transaction processing system 10 coupled to
server 12, a local area network (LAN) 16, and a public switched telephone
network (PSTN) 14 and receives transactions from server 12. This
processing system 10 receives, transmits, queues, routes and processes
transactions. Jawahar, col. 4, ll. 17-19, 27-51; Fig. 1.
7. Jawahar teaches the customer (e.g., 22, 24) can interact with an
agent (e.g., 20) through the transactional processing system 10. Data
regarding web pages viewed by the user while communicating with an agent
selected to provide help can be collected. Jawahar, col. 5, l. 47 – col. 6, l.
61; col. 15, l. 64 – col. 16, l. 6.
8. Jawahar teaches that the access monitoring application and the
accompanying JavaScript and Java applets may or may not be downloaded
to the user computer. Jawahar, col. 14, ll. 13-19, 38-39; Fig. 7A.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 6 which calls for, in pertinent
part, the comprehensively capturing step comprises directing information to
an intermediary. Appellants define an intermediary as a computational
entity “that can be positioned anywhere along an information stream and [is]
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programmed to tailor, customize, personalize, or otherwise enhance data as
it flows along the stream.” See FF 5. Jawahar discloses a transaction
processing system 10 that is positioned along an information stream between
a user (e.g., 22), a server (e.g., 12), and an agent (e.g., 20). See FF 6-7. This
processing system 10 is also used to queue and route transactions between
the user and agent and is thus programmed to tailor or enhance data as its
flows along the stream. See id. Moreover, data related to the web pages
accessed by the user can still be captured during these interactions between
user and agent. See FF 8. Jawahar’s processing system 10 is therefore an
intermediary (i.e., a computational entity that is positioned along the
information stream and is programmed to tailor or enhance data as its flows
along the stream) as defined.
Appellants also argue that Jawahar does not disclose an intermediary
because the Java components are downloaded to a user browser. App. Br.
15. This argument is not commensurate in scope with claim 6, which fails to
limit where the dialog capturing occurs. That is, there is no requirement that
the capturing occurs at the intermediary – only that capturing causes requests
and responses to be directed to the intermediary. Jawahar discloses such an
embodiment in Figure 1 where monitored traffic flows between a user (e.g.,
22) and an agent (e.g., 20) through server 12 and intermediary 10. See FF 6-
7. Moreover, Jawahar teaches an embodiment where the access monitoring
application is not downloaded to the user computer. See FF 8.
For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of claim 6 based on Jawahar. We therefore sustain the
rejection of claim 6, and claim 7 which fall with claim 6.

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Claims 11, 13, and 18
FINDINGS OF FACT
9. Jawahar discloses that the procedures in Figures 7A-B can be
executed on multiple or different web servers. One procedure may terminate
when a user accesses a different web server, and a new procedure may be
initiated on a new web server. Jawahar, col. 16, ll. 11-27; Figs. 7A-B.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 11 which calls for, in pertinent
part, the dialog continues to be captured when a second server is selected by
the user and requests are sent to the new server. Jawahar discloses that
procedures in Figures 7A-B, which includes capturing dialog information
(e.g., whether a user selects a “Help” button and how long a web page or
pages are viewed (see FF 3-4)), can also be performed when the user
accesses a different web server. See FF 9. Jawahar therefore discloses a
dialog can continue to be captured when a second web server is accessed or
selected by the user and requests are sent to the new server as recited in
claim 11. For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of claim 11 based on Jawahar. We therefore sustain
the rejection of claim 11 and claim 13 and 18, which fall with claim 11.

Claims 25 and 26
ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 25 which calls for, in pertinent
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part, a means for receiving an initial access request to the web server and a
means for comprehensively capturing a dialog between the browser and the
web server based on the request. The Examiner has satisfied the initial
burden to set forth the basis for anticipated claim 25’s means for receiving a
request and capturing a dialog between the browser and the server as recited.
See Ans. 9, 4. Appellants, on the other hand, have not provided any
evidence to demonstrate that the Examiner erred in these findings. See App.
Br. 15-16. Thus, weighing the evidence before us, we find in favor of the
Examiner. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Also, arguments made by counsel do not take the place of
evidence in the record. In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997).
For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of independent claim 25 based on Jawahar. We
therefore sustain the rejection of claim 25, and claim 26 which fall with
claim 25.

Claim 30
ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of claim 30 which calls for, in pertinent part,
comprehensively capturing the dialog with the server by setting up an
intermediary. As discussed above for claim 6, Jawahar discloses an
intermediary. See also FF 6-7. Additionally, claim 30 does not recite a
dialog state and thus any arguments related to a dialog state are not
commensurate in scope with claim 30. We also refer to our discussion for
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claims 1 and 6 for any remaining arguments, including whether Jawahar
teaches downloading the access monitoring application to the user’s
computer (App. Br. 13).
Finally, Appellants assert for the first time in the Reply Brief that
Jawahar does not disclose directing subsequent dialog to an intermediary by
adding the intermediary’s URL to all inbound and outbound portions of the
dialog. See Reply Br. 1-2. This argument is untimely and is therefore
waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.”).
We therefore sustain the rejection of independent claim 30.

CONCLUSION
The Examiner did not err in rejecting claims 1-30 under § 102.

ORDER
The Examiner’s decision rejecting claims 1-30 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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