Ex Parte Lawbaugh

Patent Trial and Appeal Board

Jul 13, 2016

13088290 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/088,290 04/15/2011
34395 7590 07115/2016
OLYMPIC PA TENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104
FIRST NAMED INVENTOR
Paul Claudell Lawbaugh
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
35100.006 8107
EXAMINER
NANO, SARGON N
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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):
joanne@olympicpatentworks.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL CLADUDELL LAWBAUGH
Appeal2015-002038
Application 13/088,290
Technology Center 2400
Before CATHERINE SHIANG, SCOTT B. HOWARD, and JOHN D.
HAMANN, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6 and 8-18, which are all the claims pending and
rejected in the application. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Introduction
The present invention relates to automated data analysis and Intemet-
based experimentation. See generally Spec. 1. Claim 1 is exemplary:
1 Claim 7 is objected to as being dependent from a rejected base claim and,
therefore, not before us. See Final Act. 8.
Appeal2015-002038
Application 13/088,290
1. A configuration-controlled instrumentation system
compnsmg:
a user device that includes one or more processors that
execute processor instructions encoded in an electronic memory
within the user device that implement a user-device operating
system which, in turns, provides an application-execution
environment;
an application program that includes embedded
instrumentation and that executes in the application-execution
environment;
a persistent data store provided by the user-device
operating system and used by the embedded instrumentation to
store configuration parameters; and
a messaging service through which the embedded
instrumentation transmits data to a remote data-collection
server and receives responses to transmitted messages from the
remote data-collection server.
References and Rejections
Claims 1--4, 6, 8, and 15 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Ainslie (US 2010/0332550 Al; Dec. 30, 2010).
Claims 5, 9-14, and 16-18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ainslie and Thomas
(US 2009/0271514 Al; Oct. 29, 2009).
ANALYSIS
The Anticipation Rejection
We have reviewed the Examiner's rejection in light of Appellant's
contentions and the evidence of record. We concur with Appellant's
conclusion that the Examiner erred in finding Ainslie discloses "a persistent
data store provided by the user-device operating system and used by the
2
Appeal2015-002038
Application 13/088,290
embedded instrumentation to store configuration parameters," as recited in
independent claim 1. 2
The Examiner cites Ainslie's paragraph 16 for the disputed claim
limitation (Ans. 3), but does not respond to Appellant's argument that the
cited paragraph does not disclose the disputed claim limitation (App. Br. 16-
18).
Inherency can only be established when "prior art necessarily
functions in accordance with, or includes, the claimed limitations." In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
omitted). Ainslie's paragraph 16 states:
FIG. 1 is a block diagram of an operating environment 100.
Operating environment 100 may comprise a client device 110, a
web site farm 120, a logging server 130, and an analytics server
140. Client device 110 may comprise, for example, a
computing device 300 such as that described in greater detail
below with respect to FIG. 3. Web site farm 120 may comprise
one and/or a plurality of server computers operative to host web
pages associated with one and/or more web sites. Client device
110, web site farm 120, logging server 130, and analytics server
140 may be in communication with each other over a
computing network or other communications medium. For
example, client device 110 may be operative to request and
retrieve a web page from a web server associated with site farm
120 via the network.
The Examiner maps the claimed "embedded instrumentation"
to Ainslie's web browser cookie. See Ans. 10. The above paragraph
does not discuss a web browser cookie, let alone "a persistent data
store provided by the user-device operating system and used by the
2 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
3
Appeal2015-002038
Application 13/088,290
embedded instrumentation to store configuration parameters," as
required by claim 1. Absent further explanation from the Examiner,
we agree with Appellant that Ainslie's paragraph 16 does not
explicitly or necessarily disclose the disputed claim limitation. See
App. Br. 16-18.
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner's rejection of claim 1, and dependent claims
2--4, 6, 8, and 15 for similar reasons.
The Obviousness Rejection
The Examiner cites an additional reference for the obviousness
rejection of dependent claims 5, 9-14, and 16-18. The Examiner relies on
Ainslie in the same manner discussed above in the context of claim 1, and
does not rely on the additional reference in any manner that remedies the
deficiencies of the underlying anticipation rejection. See Final Act. 5-8.
Accordingly, we reverse the Examiner's obviousness rejection of
claims 5, 9-14, and 16-18.
DECISION
We reverse the Examiner's decision rejecting (i) claims 1--4, 6, 8, and
15 under 35 U.S.C. § 102 and (ii) claims 5, 9-14, and 16-18 under 35
U.S.C. § 103.
REVERSED
4