Ex Parte Nashi et al

Patent Trial and Appeal Board

Dec 28, 2015

12935209 (P.T.A.B. Dec. 28, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/935,209 09/28/2010
23117 7590 12/30/2015
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Nadia M. Nashi
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.
RYM-36-2346 2435
EXAMINER
BURKE, TIONNA M
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
12/30/2015 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NADIA M. NASHI, COLIN R. PATERSON, and
HUGH CARTY
Appeal2014-001363
Application 12/935,209
Technology Center 2100
Before BRUCE R. WINSOR, JON M. JURGOV AN, and
JOHN F. HORVATH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-17, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest identified by Appellants is British
Telecommunications plc. (App. Br. 3.)
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STATEMENT OF THE CASE
Appellants' disclosed invention relates to "web content management
in general and has application to the preview of web content." (Spec. 1:3-
4.) Claim 1, which is illustrative, reads as follows:
1. A web page preview system, the system comprising:
a web host for hosting both a first version and a different
second version of a set of web pages in a run-time environment,
the web host comprising a computer processor; and
an interface for receiving requests from users for access
to the different versions of the set of web pages;
in which the system is arranged in use to provide access
to the first version of the set of web pages in the run-time
environment to a general set of users; and
in which, simultaneously with providing access to the
first version of the set of web pages in the run-time
environment to the general set of users, the system is arranged
in use to provide access to the different second version of the
set of web pages in the run-time environment to a restricted
sub-set of users;
so that the second version of the set of web pages may be
previewed in the run-time environment by the restricted sub-set
of users.
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Agarwalla et al. (US 7,587,515 B 2; issued Sept. 8, 2009;
filed Dec. 10, 2001; hereinafter "Agarwalla") and Nicholas et al. (US
7,111,229 B2; issued Sept. 19, 2006; filed June 25, 2003; hereinafter
"Nicholas").
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed June 18, 2013; "Reply Br." filed Oct. 30, 2013) and the
Specification ("Spec." filed Sept. 28, 2010) for the positions of Appellants
and the Final Office Action ("Final Act." mailed Sept. 19, 2012) and Answer
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("Ans." mailed Aug. 30, 2013) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUES
Appellants' contentions present the following salient issues:
Does the combination of Agarwalla and Nicholas teach or suggest:
simultaneously with providing access to [a] first version
of [a] set of web pages in [a] run-time environment to [a]
general set of users, the system is arranged in use to provide
access to [a] different second version of the set of web pages in
the run-time environment to a restricted sub-set of users
(the "simultaneous access limitation"), as recited in claim 1?
Does the combination of Agarwalla and Nicholas teach or suggest
"the web host is arranged in use to replace the first version of the set of web
pages with the second version of the set of web pages following preview by
the restricted sub-set of users" (the "replacement limitation"), as recited in
claim 3?
Does the combination of Agarwalla and Nicholas teach or suggest
"the first version of the set of web pages comprises an application and a first
item of content [and] ... the second version of the set of web pages
comprises the application and a second item of content," as recited in claim
4?
Does the combination of Agarwalla and Nicholas teach or suggest
"editing of the web pages is inhibited in the run-time environment," as
recited in claim 7?
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Does the combination of Agarwalla and Nicholas teach or suggest
"providing to the restricted sub-set of users simultaneous access to both the
first version and the second version of the set of web pages in the run-time
environment," as recited in claim 9?
Does the combination of Agarwalla and Nicholas teach or suggest:
copying the first version of the set of web pages to an edit
environment; modifying in the edit environment the first
version of the set of web pages to produce the second version of
the set of web pages; and transferring the second version of the
set of web pages to the run-time environment with restricted
access,
as recited in claim 13?
ANALYSIS
Claims 1, 2, 6, 8, 11, 12, and 14-17
Appellants contend neither Agarwalla nor Nicholas teaches of
suggests the simultaneous access limitation of claim 1. (See App. Br. 9-16;
Reply Br. 2-3.) We are not persuaded of error in the rejection of claim 1.
The Examiner finds, and we agree, Agarwalla, when combined with
Nicholas, teaches, or at least suggests, the simultaneous access limitation.
(See Ans. 15-16 (citing Agarwalla col. 39, 11. 10-32 and 42-53.) The
Examiner explains "Agarwalla teaches displaying different versions of a
website by caching role-specific and category-specific fragments of content.
When different users access the web pages of the website, the system
determines which fragments of the web pages to display to the user for
viewing." (Ans. 16.) The cited passages of Agarwalla explicitly teaches
different versions of a website (i.e., the recited "set of web pages") including
a set of content accessible to non-managerial employees (i.e., the recited
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"first version [accessible by] ... [a] general set of users") and a set of
content accessible only to managerial-level employees (i.e., the recited
"second version [accessible by] ... a restricted sub-set of users"). (See
Agarwalla col. 39, 11. 42-53.)
We accept, arguendo, Appellants' contention that Agarwalla teaches
it is undesirable to cache different versions of the same content (i.e.,
fragments of content) (see App. Br. 9-12; Reply Br. 2-3). However,
teaching that cached versions of the content should be identical to stored
versions does not teach or suggest that websites, made up of the fragments
of content, may not be accessed in different versions, and thus does not teach
away from the simultaneous access limitation. To the contrary, Agarwalla
explicitly teaches "role-specific content can be cached, e.g., managerial
versus non-managerial, and the user's role within an organization can be
used to assist in the determination of which set of cached content is returned
to the user." (Agarwalla, col. 39, 11. 49-53)). Further, because we find
Agarwalla teaches the simultaneous access limitation, Appellants have not
demonstrated that the combination of Agarwalla and Nicholas would render
Agarwalla unsuitable for its intended purpose or change Agarwalla's
principle of operation.
On this record we find no error in the rejection of claim 1.
Accordingly, we sustain the rejection of claim 1; independent claims 8 and
17, which were argued together with claim 1 (see App. Br. 9); and claims 2,
6, 11, 12, and 14--16, which variously depend from claim 1 and 8 and are not
separately argued with particularity.
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Claims 3 and 10
Appellants contend neither Agarwalla nor Nicholas teach the
replacement limitation recited in claim 3. (See App. Br. 16-17, 19
(discussing claim 10); Reply Br. 3---6.) The Examiner explains that Nicholas
teaches "[ t ]he user doesn't replace the first version until the second version is
previewed." (Ans. 17 (citing Nicholas col. 2, 11. 13-23).) We agree with the
Examiner.
Nicholas teaches that following the preview of changed web pages
(i.e., the recited "second version") the user saves the changes (i.e.,
"replace[s] the first version ... with the second version".) (See Nicholas
col. 2, 11. 33-35 ("In this manner, the links are consistent to the user when
the user previews a webpage prior to saving his changes." (emphasis
added)); (see also Nicholas col. 2, 11. 22-23 ("[R]egardless of whether he has
saved the latest modification.").) One of ordinary skill in the art would have
understood that the user's saving of the changes to the webpage occurs
because the web host is arranged to replace the unchanged version with the
changed version. As discussed supra, Agarwalla suggests that the user may
be a member of a restricted sub-set of users.
We sustain the rejection of claim 3 and claim 10, which recites
substantially the same limitations as claim 3 (see Ans. 17; Reply Br. 3---6.)
Claims 4 and 5
Appellants contend Agarwalla does not teach or suggest "the first
version of the set of web pages comprises an application and a first item of
content [and] ... the second version of the set of web pages comprises the
application and a second item of content," as recited in claim 4. (See App.
Br. 17-18; Reply Br. 6.) Appellants argument amounts to no more than
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quoting the claim language, quoting the cited passages of the reference, and
a general denial that the reference teaches the quoted language of the claim.
Such a naked attorney assertion is insufficient to demonstrate Examiner
error. See 37 C.F.R. § 41.37(c)(vii) ("A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("[W]e hold that the Board reasonably interpreted [a previous
version of] 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."); cf In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.").
For emphasis, we note that the reading of claims on a prior art
reference is not an ipsissimis verbis test, cf In re Bond, 910 F.2d 831, 832
(Fed. Cir. 1990). We agree with the following analysis by the Examiner:
Agarwalla teaches providing 2 versions of content with
the first version containing different items of content then the
second version (see column 39 lines 42-53). The first version
can consists of the full webpage for or a set of prices for a first
group of users and the second version can consists of the
modified version of the webpage[.] Both content items are in
the same application because it is two versions of a website one
version for a general set of users and a one version for a sub-set
of users. Thus, Agarwalla describes a same application with
the first and second content items.
(Ans. 18.)
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On this record we find no error in the rejection of claim 4. Therefore,
we sustain the rejection of claim 4 and claim 5, which depends from claim 4
and is not separately argued with particularity.
Claim 7
The Examiner finds Agarwalla teaches that "editing of the web pages
is inhibited in the run-time environment," as recited in claim 7. (See Final
Act. 7 (citing Agarwalla col. 40, 11. 44--4 7).) Appellants contend the cited
passage of Agarwalla does not teach or suggest the limitations of claim 7.
(App. Br. 18)
We agree with Appellants. We find nothing in the cited passage of
Agarwalla, or anywhere else in Agarwalla, that discusses editing of web
pages, let alone inhibiting editing of web pages. Nicholas is generally
directed to editing webpages, but the Examiner does not direct us to any
passages of Nicholas that teach inhibiting editing of webpages in a run-time
environment, and the Examiner has not concluded that it would have been
obvious to a person of ordinary skill in the art to inhibit editing of webpages
in a run-time environment (e.g., to ensure webpage integrity). Accordingly,
on this record, we do not sustain the rejection of claim 7.
Claim 9
The Examiner finds Nicholas teaches "providing to the restricted sub-
set of users simultaneous access to both the first version and the second
version of the set of web pages in the run-time environment," as recited in
claim 9. (See Final Act. 8 (citing Nicholas col. 2, 11. 13-23).) Appellants
contend the cited passage of Nicholas does not teach or suggest the
limitations of claim 9. (App. Br. 18-19.) Rather, Appellants contend, the
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cited passage of "Nicholas clearly only provides one version (i.e., the latest
version) to users." (App. Br. 19.)
We agree with Appellants. We find nothing in the cited passage of
Nicholas, or anywhere else in Nicholas, that discusses providing the same
user with simultaneous access to two different versions of a set of web
pages, and the Examiner has not concluded that it would have been obvious
to a person of ordinary skill in the art to provide the user in Nicholas access
to both the edited and non-edited versions of a web page (e.g., to perform a
visual comparison). The Examiner does not direct us to any passages of
Agarwalla that teach providing a user with simultaneous access to two
different versions of a set of web pages. Accordingly, on this record, we do
not sustain the rejection of claim 9.
Claim 13
Appellants contend "Nicholas makes no mention of an edit
environment or of a run-time environment. One of ordinary skill in the art
would find no structure in Nicholas to support the transfers of versions of a
set [of] web pages between run-time environment and edit environment
provided in claim 13." (App. Br. 20; see also Reply Br. 7-8.) We do not
agree with Appellants. The reading of claims on a prior art reference is not
an ipsissimis verbis test. Cf Bond, 910 F.2d at 832. Furthermore, when
considering the obviousness of a claimed invention, we "consider[] the prior
art evidence and references in their entirety for all they teach and suggest."
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
One of ordinary skill would have understood that the whole purpose
of editing Nicholas' s webpages is to create and modify webpages that can be
accessed in normal use by devices connected to a network, i.e., in a "run-
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time environment." Furthermore, Nicholas' s invention is directed to an
environment in which webpages can be created and modified (see, e.g.,
Nicholas Figs. 3-5), i.e., in an "edit environment." Accordingly, although
not explicitly described in so many words, one on ordinary skill would have
understood Nicholas to teach or suggest both a run-time environment and an
edit environment, and saving edits made to web pages in the edit
environment by transferring the edited web pages to the run-time
environment.
On this record we find no error in the rejection of claim 13.
Accordingly, we sustain the rejection of claim 13.
DECISION
The decision of the Examiner to reject claims 1---6, 8, and 10-17 is
affirmed.
The decision of the Examiner to reject claims 7 and 9 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2013).
AFFIRMED-IN-PART
kis
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