Ex Parte Hind et al

Patent Trial and Appeal Board

May 8, 2013

10643601 (P.T.A.B. May. 8, 2013)

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.
10/643,601 08/18/2003 John R. Hind RSW920030079US1 (099) 5066
46320 7590 05/08/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
JOO, JOSHUA
ART UNIT PAPER NUMBER
2445
MAIL DATE DELIVERY MODE
05/08/2013 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 JOHN R. HIND and MARCIA L. STOCKTON
____________

Appeal 2010-010249
Application 10/643,601
Technology Center 2400
____________

Before DEBRA K. STEPHENS, LYNNE E. PETTIGREW, and
BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2010-010249
Application 10/643,601

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STATEMENT OF THE CASE
Appellants’ invention relates to Internet security and more particularly
to content filtering. Spec. ¶ [0001].

CLAIMED SUBJECT MATTER
Claims 1, 9, and 13 are the independent claims on appeal. Claim 1 is
representative of the subject matter on appeal, and recites:
1. A method, in a markup language document delivery system,
for circumventing an operation of content blocking logic, the
method comprising the steps of:
determining the operation of content blocking logic connected
to a browser within a client device;
locating in markup a reference to content;
replacing in said markup said reference with an alias; and,
serving said markup to a requesting browser;
whereby said replacement with said alias circumvents the
operation of said content blocking logic.

EVIDENCE CONSIDERED
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Koeppel US 6,477,575 B1 Nov. 5, 2002
Serena US 6,912,571 B1 Jun. 28, 2005
Gnagy US 7,058,633 B1 Jun. 6, 2006
Schumacher US 7,444,369 B1 Oct. 28, 2008
Howerton US 2001/0049701 A1 Dec. 6, 2001
Trubey US 2002/0077930 A1 Jun. 20, 2002
Lambert US 2006/0248452 A1 Nov. 2, 2006

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REJECTIONS
Claims 1-2, 7, 9-14, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gnagy and Serena. Ans. 3-7.
Claims 3 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gnagy, Serena, and Lambert. Ans. 7-8.
Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gnagy, Serena, and Schumacher. Ans. 8-10.
Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gnagy, Serena, and Koeppel. Ans. 10-11.
Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gnagy, Serena, and Trubey. Ans. 11-12.
Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gnagy, Serena, and Howerton. Ans. 13-14.

ISSUES
Appellants argue that Gnagy does not teach the claimed determining
step or where the claimed determining step is performed. App. Br. 8-10;
Reply Br. 2-3, 6-7. Appellants further argue that Serena fails to cure these
deficiencies because the operation of Serena’s content blocking logic is not
performed by a device that is connected to a browser within a client device.
App. Br. 9-10; Reply Br. 2-6. Additionally, Appellants contend that the
Examiner failed to clearly identify a rationale employed in combining the
references. App. Br. 6. These arguments present us with the following
issues:
1) Did the Examiner err in finding that the combination of Gnagy and
Serena discloses “determining the operation of content blocking
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logic connected to a browser within a client device,” as recited in
independent claim 1, and commensurately recited in independent
claims 9 and 13?
2) Did the Examiner improperly combine Gnagy and Serena?

ANALYSIS
We have reviewed the Examiner’s rejection in light of the
Appellants’ arguments in the Appeal Brief presented in response to the Final
Office Action and the Reply Brief presented in response to the Examiner’s
Answer. We disagree with the Appellants’ conclusions (App. Br. 10-13)
and highlight and address specific findings and arguments for emphasis as
follows.

1) First Issue
Contrary to Appellants’ arguments, the Examiner correctly finds that
Gnagy discloses determining the operation of content blocking logic (Ans.
4). Consistent with Appellants’ Specification, the claimed determining step
is reasonably construed to broadly encompass various ways of making the
determination, “[t]he skilled artisan will note, though, that the exact manner
in which the determination is made —e.g., a priori knowledge of a system
administrator, direct correlation of references within served markup and
subsequent requests for the references, instrumentation, statistics, etc.—is
immaterial when ascertaining the scope of this invention.” Spec. ¶[0031].
We agree with the Examiner that Gnagy discloses a markup language
document delivery system that is able to circumvent operation of content
blocking logic (Ans. 4, 17 (citing Gnagy col. 7, ll. 19 - 23, 42 - 48, 51- 66)).
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To circumvent blocking, the system of Gnagy examines returned Web pages
for Uniform Resource Locators (URLs) that correspond to domains of
known advertisers. Gnagy col. 7, ll. 42-48. Appellants’ argument that
Gnagy’s system does not make a determination because it “presumes” that
content blocking logic is used (Reply Br. 7) is not commensurate with the
scope of the claims (Spec. ¶[0031] (stating that “a priori knowledge of a
system administrator” is an example of making the claimed determination)).
We are also not persuaded by Appellants’ arguments that Gnagy does
not teach that the claimed determining step is performed in a system that is
different from where content blocking logic resides (App. Br. 8; Reply Br. 2-
3). First, we agree with the Examiner’s broad, but reasonable interpretation
of the claims (Ans. 14-15) and Appellants have not presented sufficient
evidence or argument to persuade us that interpretation is in error.
Nonetheless, even under Appellants’ interpretation of the claims (Reply Br.
3), Gnagy discloses that the determining step occurs at a location (re-writing
system 100) other than where the content blocking logic resides (client 110)
(Ans. 4, 17 (citing Gnagy col. 7, ll. 19-23; Fig. 5)).
We also are not persuaded by Appellants’ further arguments that
Serena fails to cure the deficiencies of Gnagy (App. Br. 9-10; Reply Br. 2-
6). We agree with the Examiner’s detailed findings showing that Serena
discloses content blocking logic connected to a browser within a client
device (Ans. 4, 15-17 (citing Serena col. 4, ll. 29-31, 47-50; col. 5, ll. 8-11;
col. 5, l. 66-col. 6, l. 5; col. 6, ll.13-16, 29-54; col. 10, ll. 46-49; col. 12,
ll.10-16; Fig. 4)). Additionally, contrary to Appellants’ arguments that the
claimed determining step involves a server determining an operation of an
entity other than itself (App. Br.10; Reply Br. 2-3), since we agree with the
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Examiner’s interpretation of the claims (Ans. 14-15), we also agree with the
Examiner’s findings (Ans. 4, 16-17) that Serena discloses determining the
operation of content blocking logic connected to a browser within a client
device.
Accordingly, we are not persuaded by Appellants’ arguments and
agree with the Examiner that the combination of Gnagy and Serena discloses
“determining the operation of content blocking logic connected to a browser
within a client device,” as recited in independent claim 1, and
commensurately recited in independent claims 9 and 13.
2) Second Issue
We are not persuaded by Appellants’ contention that the Examiner
erred in combining Gnagy and Serena by failing to clearly identify a
rationale employed in combining references (App. Br. 6). First, the use of
Gnagy’s system for re-writing URLs to defeat the blocking of Web content
by a program such as that disclosed by Serena is no more than a predictable
use of familiar prior art elements according to their established functions
yielding predictable results, which renders the recited invention obvious.
See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416-17 (2007).
Additionally, the Examiner has articulated reasoning with a rational
underpinning as to why one of ordinary skill in the art would have
combined the teachings of Gnagy and Serena (Ans. 4), which is sufficient
for a determination of obviousness. Therefore, we do not agree with
Appellants’ conclusion (App. Br. 6, 10) that the Examiner erred in
combining Gnagy and Serena.
Thus, Appellants have not persuaded us that the Examiner erred in
finding that the combination of Gnagy and Serena discloses the invention as
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recited in independent claims 1, 9, and 13, and dependent claims 2-8, 10-12,
and 14-20, not separately argued (App. Br. 5, 10-13). Accordingly, we are
not persuaded of error in the Examiner’s rejection of claims 1-20 under 35
U.S.C. § 103(a) and, therefore, we sustain that rejection.

DECISION
We affirm the Examiner’s rejection of claims 1-20 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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