Ex Parte Kinoshita et al

Patent Trial and Appeal Board

Jun 10, 2014

12344336 (P.T.A.B. Jun. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TAKAFUMI KINOSHITA and EIZO TSUKADA
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Appeal 2012-000806
Application 12/344,336
Technology Center 2400
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Before: JENNIFER D. BAHR, MICHAEL L. HOELTER and
LYNNE H. BROWNE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-20. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to computer systems,
and more particularly to social user script service by service proxy.” Spec.
para. [0001]. Independent claim 1 is illustrative of the claims on appeal and
is reproduced below:
1. A computer-implemented method for social user script
service by service proxy, comprising:
storing a plurality of user scripts;
associating the plurality of user scripts with one or more
models, wherein the one or more models can be specified in a
user preference setting;
receiving a request from a user for an electronic
document;
selecting based on one or more criteria one or more user
scripts from the plurality of user scripts associated with one or
more models set for the user and one or more conditions under
which said one or more user scripts are executed;
embedding said one or more selected user scripts into a
requested electronic document; and
transmitting the requested electronic document with the
embedded user scripts to the user.
EVIDENCE RELIED ON BY THE EXAMINER
Eichstadt US 2003/0023754 A1 Jan. 30, 2003
Messing US 2003/0126134 A1 Jul. 3, 2003

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THE REJECTIONS ON APPEAL
Claims 1, 2, 4-7, 10, 11, and 13-20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Eichstadt. Ans. 4.
Claims 3, 8, 9, and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eichstadt and Messing. Ans. 7.
ANALYSIS
The rejection of claims 1, 2, 4-7, 10, 11, and 13-20
as being anticipated by Eichstadt
Appellants present separate arguments for each of the three
independent claims, i.e., claims 1, 10, and 18. App. Br. 7-9. Appellants also
group together and present separate arguments for dependent claims 4 and
13 (App. Br. 9-10), claims 7 and 16 (App. Br. 10), and claims 2, 5, 6, 11, 14,
15, 17, 19, and 20. (App. Br. 10). We address each of the three independent
claims separately and we also address dependent claims 4, 7, and 2
separately in the order argued. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1
Claim 1 includes the limitation of “storing a plurality of user scripts”
and also the limitation of “selecting based on one or more criteria one or
more user scripts from the plurality of user scripts.” The Examiner finds
these limitations as disclosed in paragraphs [0011], [0012], [0027], and
[0039] of Eichstadt. Ans. 4-5, 9-10. Appellants contend that “Eichstadt et
al. does not disclose or suggest to ‘select’ a ‘user script’ from a plurality of
user scripts, for instance, based on user registration information.” App. Br.
8. In making this contention, Appellants first acknowledge that Eichstadt
“appear[s] to disclose that a ‘registered user may participate in a session,
request, receive and view web-pages having the inventive script code
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incorporated therein.’” App. Br. 8 referencing Eichstadt para. [0011].
However, Appellants contend that Eichstadt “appears to insert its fixed script
code into a web page for a user who is registered” and that Eichstadt “does
not disclose or suggest to ‘select’ (choose) which script to insert based on
the user's registration information.” App. Br. 8.
We first note that the claim limitation in question is directed to the
selection of a user script but that this limitation is silent as to selection by
whom or what or, that such selection is accomplished via any particular
criteria. App. Br. 13, Claims App’x. Paragraph [0011] of Eichstadt
discusses the user registration process which includes “user-specific data
such as” the “web-pages to be accessed.” Paragraph [0039] discusses the
example of a registered user wishing “to view his/her tax forms” such that
when the tax forms are transmitted “for display by the user’s Internet
browser, the script code 400 is added to the web-page 300.” Eichstadt
paragraph [0039] also teaches that “[w]hen the user navigates to another
web-page,” the script code associated with the former page “is erased from
RAM 22 and is no longer available to the user’s browser. In that way, the
script code 400 is provided only in connection with a predetermined web-
page 300.” In view of the teachings of these paragraphs [0011] and [0039],
the Examiner finds that “[e]ach web-page the user is registered to access
includes a particular script code incorporated on it.” Ans. 9. The Examiner
also finds that Eichstadt further addresses a plurality of scripts. Ans. 4
referencing Eichstadt para. [0027]. In view of the above, Appellants do not
make clear how Eichstadt’s insertion of a script code into a registered user’s
web page is not a “selection” of a script code, or that such “selection” is not
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from a plurality of script codes as claimed and asserted. Appellants’
contention is not persuasive.
Appellants also recite the “associating” step (as well as repeat the
“selecting” step above) and contend that “Eichstadt et al. does not disclose
or suggest, ‘selecting’ let alone based on ‘one or more user scripts from the
plurality of user scripts associated with one or more models set for the user’”
without further explanation. App. Br. 8. It is unclear whether the focus of
this contention is again the selection of “one or more user scripts from the
plurality of user scripts” as previously discussed, or the scripts being
“associated with one or more models set for the user,” or both. In any event,
regarding the former contention and as indicated supra, the Examiner has
indicated where Eichstadt discloses support for the selection “from the
plurality of user scripts” limitation. Ans. 4-5, 9-10. Regarding Appellants’
latter contention, claim 1 recites “associating the plurality of user scripts
with one or more models, where the one or more models can be specified in
a user preference setting” (emphasis added). Here, the Examiner discusses
Eichstadt’s registration process and the “web pages wishing to be accessed”
by the user (see Eichstadt para. [0011]) finding that “[t]he registration data
file serves as the model used to retrieve the web pages the user has
requested.” Ans. 10. The Examiner further finds that Eichstadt’s proxy
server, in turn, “parses the web page and adds the script code to the web
page.” Ans. 10; see also Eichstadt para. [0039]. Appellants do not otherwise
explain how or why these findings by the Examiner are in error or have been
improperly applied. In short, Appellants do not persuasively explain how
these teachings in Eichstadt fail to disclose the “selecting” step “let alone
based on ‘one or more user scripts from the plurality of user scripts
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associated with one or more models [i.e., the registration data files] set for
the user.’” App. Br. 8. Appellants’ contention is not persuasive.
Furthermore, in a similar situation where Appellants recite the
limitation in question and assert that the cited art lacks this teaching, our
reviewing court has stated that “the Board reasonably interpreted Rule 41.37
to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011). Following that guidance here, in addition to our discussion
supra, we are not persuaded of Examiner error by Appellants’ contention.
Appellants also address this “selecting” limitation in the Reply Brief
stating that Eichstadt’s paragraphs [0011] and [0039] fail to teach this
limitation because “Eichstadt does not ‘select’ scripts; rather, Eichstadt
discloses adding ‘the script code’”1. Reply Br. 2-3. According to
Appellants, “Eichstadt does not have ‘a plurality of user scripts’ to select
from.” Reply Br. 3. However, not only does the Examiner rely on a
different paragraph of Eichstadt, i.e., paragraph [0027], as disclosing this
“plurality” limitation, see Ans. 4 (which paragraph Appellants do not
address), we further note that Appellants do not challenge the Examiner’s
finding regarding the registration data file serving as the model (Ans. 10).
Instead, Appellants contend that Eichstadt’s addition of a script is not the
same as the selection of a script. Reply Br. 3. In this matter, Appellants do
not further explain how an addition of a script is not a selection of a script as

1 Appellants also contend that “Eichstadt does not have ‘a plurality of user
scripts’ to select from, let alone, ‘associated with one or more models set for
the user’ as claimed” (Reply Br. 3) which has previously been addressed and
found wanting.
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recited in claim 1 and further, Appellants’ asserted difference is not
otherwise self-evident from the record. Appellants’ conclusory contention is
not persuasive.
In view of the above, we sustain the Examiner’s rejection of
independent claim 1.
Claim 10
Claim 10 includes the limitation of a service proxy processor that
“selects one or more user scripts that are associated with one or more user
attributes specified in the user registration information.” See also App. Br.
9. Appellants again acknowledge that “Eichstadt et al. discussed above
appears to insert a fixed script into a web page for those users who are
registered for that web page” but that Eichstadt nevertheless lacks this claim
limitation. App. Br. 9. No further explanation is forthcoming and
Appellants also do not contend that Eichstadt fails to disclose a “service
proxy processor” as found by the Examiner. Ans. 5-6 referencing Eichstadt
paras. [0011] and [0012]. Again, following the lead of our reviewing court,
“a naked assertion that the corresponding elements were not found in the
prior art” is not persuasive. Lovin, 652 F.3d at 1357. We sustain the
Examiner’s rejection of claim 10.
Claim 18
Claim 18 includes the step of “selecting, based on one or more criteria
including at least user attribute, one or more user scripts from the plurality of
user scripts.” See also App. Br. 9. Appellants contend that “Eichstadt et al.
does not select a script based on user attribute” and, focusing on Eichstadt
paragraphs [0011] and [0039], contend that “[t]hose paragraphs of Eichstadt
et al. do not disclose to provide choices of different user scripts for inserting
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into a web page.” App. Br. 9. As indicated supra, Eichstadt paragraph
[0011] discusses the user registration process and teaches that “[e]ach user
may enter certain user-specific data such as … attributes for drawing (e.g.,
line type and color), and web-pages to be accessed.” As also discussed
supra, the Examiner did not rely on paragraph [0011] or [0039] for
disclosing a plurality of scripts but instead, the Examiner relied on Eichstadt
para. [0027] for disclosing this feature (Ans. 4) which Appellants do not
dispute. The Examiner also addressed Eichstadt para. [0012] (Ans. 5) which
further elaborates on the added script and how it may vary depending on its
desired function. Based on the above, Appellants’ contentions are not
persuasive of Examiner error. We sustain the Examiner’s rejection of claim
18.
Claim 4
Claim 4 depends from claim 1 and Appellants initially contend that
“[t]he above reasons are believe[d] to suffice to support that Eichstadt et al.
does not anticipate” this claim. App. Br. 9. Appellants also contend that
“Eichstadt et al. therein does not disclose or suggest that a script is selected
based on a ‘role’ of the user” and that according to Appellants’ invention,
“different scripts are inserted in the web page depending on who the
requesting user is.” App. Br. 9; see also Reply Br. 3. Here, with respect to
claim 4, the Examiner additionally references Eichstadt paragraph [0028] in
addition to those previously relied on. Ans. 11. Paragraphs [0011] and
[0028] both discuss the registration process and how registered users may
access web pages which are tailored based on “user-specific data.” See, e.g.,
Eichstadt para. [0011]. Paragraph [0039] discusses the example where the
user is a “tax consultant.” Paragraph [0012] discusses a user having the role
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of a “teacher” while others have the role of “students.” As the registration
process clearly involves “user-specific data,” there is no indication in
Eichstadt that each of these different users would view a web page having
the same script as Appellants appear to indicate. In other words, Appellants
have not shown that Appellants’ insertion of different scripts into the web
page depending on the user is any different from Eichstadt’s process. As
such, Appellants’ contentions are not persuasive that the Examiner erred in
finding that “script codes are added to web pages based on the registration
status and information of the user.” Ans. 11. Accordingly, Appellants’
contention that Eichstadt “does not disclose or suggest that a script is
selected based on a ‘role’ of the user” is not persuasive.
Claim 7
Claim 7 depends from claim 1 and includes the additional limitation
of “looking up registration information associated with the user and
selecting one or more scripts that the user registered.” Appellants’ contend
that “Eichstadt et al. does not disclose or suggest that a user register for a
specific script.” App. Br. 10. Here, the Examiner relies on Eichstadt’s
registration process disclosed in paragraph [0011] as disclosing this
limitation. Ans. 7, 11. The Examiner also references Eichstadt’s paragraph
[0039] which states that a script code associated with a web page is erased
when the user navigates to another web-page and “[i]n that way, the script
code 400 is provided only in connection with a predetermined web-page
300.” Ans. 11. Appellants provide no indication or other explanation as to
why the Examiner’s analysis is erroneous or that these paragraphs of
Eichstadt fail to teach this limitation. Accordingly, we do not find
Appellants’ contention persuasive.
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Claim 2
Claim 2 depends from claim 1 and Appellants contend that claim 2 is
allowable “[a]t least by virtue of [its] dependency.” Appellants’ contention
is not persuasive.
In summary, we sustain the Examiner’s rejection of claims 1, 2, 4-7,
10, 11, and 13-20 as being anticipated by Eichstadt.
The rejection of claims 3, 8, 9, and 12
as being unpatentable over Eichstadt and Messing
Claim 3 and 12 depend from independent claims 1 and 10 respectively
and include the additional limitation that the user script includes “at least
information script, feedback script, update script, or failure script or
combinations thereof.” In other words, this additional limitation is
understood to require at least one of these script types, but not all. The
Examiner additionally relies on the teachings of Messing as disclosing a
plurality of such recited scripts and particularly “failure script” and “update
script”. Ans. 8. The Examiner finds that it would have been obvious “to
combine the teachings of Eichstadt with the teachings of Messing to receive
failure and update information regarding scripts, because it will allow
debugging of the failed script.” Ans. 8.
Appellants contend that “Messing et al. does not make up for [that]
which Eichstadt et al. lacks” (App. Br. 10) but we are not persuaded of any
deficiency in the teachings of Eichstadt which is in need of curing.
Appellants also contend that Eichstadt lacks the additional limitation
directed to “information script” (see App. Br. 11) but as indicated supra, not
all of the additionally recited script types are required by claims 3 and 12;
and further, the Examiner relies on Messing for disclosing some of the
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recited script types. Ans. 8. Addressing Messing, Appellants acknowledge
that Messing “discloses a ‘failure analysis module’ that ‘analyzes the failure
of a data harvesting script and determines why the script failed.” App. Br.
11. However, Appellants contend that this identified “section does not
disclose or suggest a ‘feedback script’” and further that this “section also
does not disclose or suggest an ‘update script.’” App. Br. 11. As stated
supra, claims 3 and 12 do not require that all the different script types be
disclosed, only one; and even though Appellants’ acknowledge Messing’s
disclosure of a “failure analysis module,” Appellants contend that this “does
not disclose or suggest a ‘failure script for showing occurrence of failure to a
support’ as claimed in claims 3 and 12.” App. Br. 11.
Cited paragraph [0028] of Messing (Ans. 8) teaches “failure analysis
module 218 in financial analysis system 212 analyzes the failure of a data
harvesting script and determines why the script failed.” This same
paragraph also states that “[t]he failure analysis module 218 assists a user in
identifying the reason for the script failure.” In view of these teachings,
Appellants’ contention that, at a minimum, Messing fails to “disclose or
suggest a ‘failure script for showing occurrence of failure to a support’ as
claimed in claims 3 and 12” (App. Br. 11) is not persuasive. In other words,
we are not persuaded that the Examiner’s combination of Eichstadt and
Messing, and the reasons provided for such combination, are in error. We
sustain the Examiner’s rejection of claims 3 and 12 as unpatentable over
Eichstadt and Messing.
Regarding dependent claims 8 and 9 which are argued together (App.
Br. 11-12), Appellants contend that “because Eichstadt et al. and Messing et
al. do not disclose or suggest every element claimed in their base claim 1,
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those claims are believed to be unobvious over Eichstadt et al. and Messing
et al.” App. Br. 11. The Examiner has provided separate findings and
rationales for the rejection of claim 8 (Ans. 8-9) and claim 9 (Ans. 9).
However, Appellants contend “that a person of ordinary skill in the art
would not have considered it obvious to modify the disclosures of Eichstadt
et al. and Messing et al. to arrive at the pending [dependent] claims.” App.
Br. 12. Appellants do not explain how or why this might be the case and
have not provided any evidence in support of this allegation, which is also
not otherwise self-evident from the record. We are instructed by our
reviewing court that “[a]ttorney[] arguments in a brief cannot take the place
of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); see also In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and
conclusory statements which are unsupported by factual evidence are
entitled to little probative value).
Appellants further contend that “there is no reason to combine the
references as the Examiner does” (App. Br. 12) but Appellants do not
indicate or explain how the reasons provided by the Examiner (see Ans. 8
for claim 8 and Ans. 9 for claim 9) are unreasonable or otherwise lack
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In summary, Appellants’ contentions are not persuasive of Examiner
error and accordingly, we sustain the Examiner’s rejection of claims 3, 8, 9,
and 12 as being obvious over Eichstadt and Messing.

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DECISION
The Examiner’s rejections of claims 1-20 are 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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