Ex Parte Puri et al

Board of Patent Appeals and Interferences

Jun 1, 2009

10191891 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANISH N. PURI, MICHAEL J. VIGNEAU, and
LEONID WINESTEIN
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Appeal 2008-4018
Application 10/191,891
Technology Center 2100
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Decided:1 June 2, 2009
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Before ALLEN R. MACDONALD, JOHN C. MARTIN, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1-38, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
According to Appellants, the invention relates to providing a
permanent record, at a remote printer, of the service rendered.2 More
specifically, the invention involves sending a collection of files from a
content provider server to an output server.3 In one embodiment, a file is a
metadata file that is generated in Extensible Markup Language (XML).4
Exemplary Claim
1. A method of obtaining from a content provider server, at an
output server, content and identifying data in a data structure that
facilitates providing output to a remote output device, said method
comprising the steps of:
receiving, from the content provider server, a metadata
file comprising said identifying data;
receiving, from the content provider server, a layout file
describing position of files of said content data in output to be
provided by said remote output device; and,

2 Spec. 2:2-5.
3 Spec. 9:22-24.
4 Spec. 9:27-10:7.
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receiving, from the content provider server, content data
files referenced by said layout file.
Prior Art
The Examiner relies on the following prior art reference to show
unpatentability:
Gimson 2002/0188673 A1 Dec. 12, 2002

Examiner's Rejection
The Examiner rejected claims 1-38 under 35 U.S.C. § 102(e) as being
anticipated by Gimson.

ISSUE
The issue before us is whether the prior art teaches an output server
that receives data from a content provider server.

FINDINGS OF FACT
1. We find Figure 3 of Gimson illustrates a document 24 that is input
into a server 2. Server 2 stores the data and distributes it, on request,
to a requesting data-receiving device. "The requesting data-receiving
device can be any device that is capable of communicating with the
server 2. When the server 2 receives a request from a data-receiving
device or another device it will forward the requested data onto the
data-receiving device" (emphasis omitted). (See Gimson, Figure 3;
¶0058).
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2. We find Figure 4 of Gimson “shows a variety of devices that can
communicate with the server 2; including a WAP (Wireless
Application Protocol) telephone 26, a PDA 28 (Personal Digital
Assistant), and a PC 30. This list of devices that can request data
from the server is not exhaustive” (emphasis omitted). (See Gimson,
¶0061).
3. We find Gimson discloses "the PC 30 has the most capable display
capabilities, and therefore, it is appropriate to send all of the available
data to the PC 30 requesting data." In the example, where the PC is
the data receiving device, "[t]he whole of the name would be sent,
including , <first _name>, and <last_name>" (Gimson, ¶0077).

PRINCIPLES OF LAW
Burden on Appeal
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner's position. In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) ("On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.") (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). See also Hyatt v. Dudas, 492 F.3d 1365, 1369-70 (Fed. Cir. 2007)
("As we explained in In re Oetiker, [977 F.2d 1443, 1445 (Fed. Cir. 1992),]
the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production . . . .").
For a rejection under § 102, Appellants may sustain this burden by
showing that the prior art reference relied upon by the Examiner fails to
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disclose an element of the claim. It is axiomatic that anticipation of a claim
under § 102 can be found only if the prior art reference discloses every
element of the claim. See In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986);
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co.,
730 F.2d 1452, 1458 (Fed. Cir. 1984).
Claim Interpretation
"The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)). "Claims must be read in view of the
specification, of which they are a part." Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) (citations omitted). "[T]he
PTO gives claims their 'broadest reasonable interpretation." In re Bigio,
381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read into the
claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Non-functional Descriptive Material
Non-functional descriptive material recorded or stored in a memory or
other medium (i.e., substrate) is treated as analogous to printed matter cases
where what is printed on a substrate bears no functional relationship to the
substrate and is given no patentable weight. See In re Gulack, 703 F.2d at
1385 ("Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
terms of patentability. Although the printed matter must be considered, in
that situation it may not be entitled to patentable weight."). See also
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Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) aff'd,
No. 06-1003 (Fed. Cir. 2006). The Examiner need not give patentable
weight to descriptive material absent a new and unobvious functional
relationship between the descriptive material and the substrate. See In re
Lowry, 32 F.3d at 1582-83; In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004). See also Ex parte Nehls, 88 USPQ2d 1883 (BPAI 2008)
(precedential); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005)
(informative) aff'd, 191 Fed. Appx. 959 (Fed. Cir. 2006).

ANALYSIS
Claim Interpretation
Claim 1 recites "[a] method of obtaining from a content provider
server, at an output server . . . comprising the steps of: receiving, from the
content provider server, a metadata file comprising identifying data;
receiving, from the content provider server, a layout file . . . ; and receiving,
from the content provider server, content data files . . . ." (App. Br. 16,
Claims Appendix).
We interpret claim 1 generally as a method claim directed to (1) an
output server receiving a first data from a content provider server; (2) an
output server receiving a second data from a content provider server; and
(3) an output server receiving a third data from a content provider server.
We find that the type of data received does not change the function of
receiving recited in each step. Thus, the type of data received is
non-functional descriptive material, and will not be given any patentable
weight. Our reviewing court has held that non-functional descriptive
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material cannot lend patentability to an invention that would otherwise have
been anticipated by the prior art. See In re Ngai, 367 F.3d at 1339.
Common situations involving nonfunctional descriptive material are:

- a computer-readable storage medium that differs from the
prior art solely with respect to nonfunctional descriptive
material, such as music or a literary work, encoded on the
medium,

- a computer that differs from the prior art solely with respect to
nonfunctional descriptive material that cannot alter how the
machine functions (i.e., the descriptive material does not
reconfigure the computer), or

- a process that differs from the prior art only with respect to
nonfunctional descriptive material that cannot alter how the
process steps are to be performed to achieve the utility of the
invention.

Ex parte Mathias at 1279.
Further, we find that the Specification of the present application does
not expressly define (1) a content provider server, and (2) an output server.
Thus, we find a skilled artisan would have recognized that (1) a content
provider server is any device that provides content, and (2) an output server
is any device that receives data for outputting.
Content and Identifying Data
Appellants contend (1) "claim 1 recites that 'both content and
identifying data' are obtained from the content provider server,"5 and (2) "the
'identifying data' and the 'content' are distinct from each other" (App. Br. 9).

5 As used here “identifying” describes the data rather than a function to be
performed.
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Appellants further contend (1) " 'content' is data to be displayed or printed
(such as the image of a movie ticket)," and (2) " 'identifying data' identifies
the content provider (e.g., the movie ticket service) and/or the user (e.g., the
purchaser of the movie ticket)" (id.). Appellants also argue "Gimson only
discloses providing content, and not identifying data, from a server" (id.).
Additionally, Appellants argue (1) "Gimson does not disclose
providing any information about the content provider or the user";
(2) "Gimson discloses a system for transmitting a document 24 to a server 2,
and for forwarding the document from the server 2 to one of a plurality of
devices 26, 28, 30"; (3) "[t]he document 24 is structured in a way that makes
it possible for the server [2] to provide different versions of the document to
the devices 26, 28, 30 based on their display properties"; and (4) Gimson
does not teach "providing any 'identifying data[,]' either within the document
24 or in addition to the document 24" (id. at 10-11).
We find, as discussed above, if the prior art teaches receiving data,
merely varying the type of data, received by the output server, will not
distinguish over the prior art for purposes of anticipation.
A Metadata File That is Separate from Identifying Data
Appellants contend, with regard to Gimson, that "the metadata file
(DTD) does not include the identifying data" (App. Br. 13) (emphasis
omitted). Appellants argue the Examiner (1) "admits that in a data packet
sent through the internet the data [is] preceded by header information that
includes the sender's and the recipient's IP addresses and concludes that such
sender and recipient information is equivalent to 'identifying data,'” and
(2) "this argument must fail since it admits, implicitly, that the 'identifying
data' are not in the metadata file, as required by appellants' claims, but rather
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precede the metadata file (the DTD in Gimson)" (id. at 14) (emphasis
omitted).
The Examiner found (1) "that a stylesheet is provided for each of the
data-receiving devices that can access the server that it is desired to
support," and (2) "[t]hus[,] the metadata file is received [from] the content
provider server" (Ans. 8). The Examiner also concluded that "the correct
information level is selected based on what is appropriate to be displayed on
the particular device," and (2) "[t]hus[,] the metadata file comprises
identifying data because the information level identifies what type of device
is being used" (id.).
We find, however, that it does not matter whether the prior art
teaches receiving identifying information which is included in the metadata
file, as long as the prior art teaches receiving data. We find, if the prior art
teaches receiving data, merely (1) varying the type of data received by the
output server, and/or (2) the timing of data (order of the data content)
received by the output server will not distinguish over the prior art for
purposes of anticipation.
Receiving Identifying Data
Appellants argue that the direction of data transfer in Gimson is from
the processing device, such as server 2, to the data receiving devices, such as
telephone 26, PDA 28, and PC 30 (See App. Br. 12). Further, Appellants
contend that "[a]lthough not explicitly stated in the Office Action, the
argument advanced by the examiner . . . has to be interpreting the 'content
provider server' in claim 1 to read on the processing apparatus (e.g., the
server 2) of Gimson" (id.).
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Appellants contend (1) "[p]resent claim 1 requires that the 'metadata
file including the identifying data' is received from the content provider
server,'" and (2) "[t]his would be consistent with data in Gimson being
received by one of the data receiving devices" (id.). Appellants argue that "a
different position is taken by the examiner," i.e., "that the data-receiving
device may send its capabilities to the processing apparatus" (id.).
Appellants further argue that "claim 1 requires that the identifying
data is received from the content server provider, not transmitted to the
content service provider" (id.) (emphasis omitted). Therefore, Appellants
contend "if the 'processing apparatus' of Gimson reads on a 'content provider
server' then the cited passage in paragraph 0044 of Gimson does not teach
'receiving , from the content provider server, a metadata file comprising said
identifying data'" (id. at 13).
The Examiner found the XSL stylesheet of Gimson to be equivalent to
the claimed metadata file (Ans. 8). The Examiner also found the
"information level" of Gimson to be equivalent to the claimed identifying
data (id.).
The Examiner also concluded that (1) "[i]t should be noted that
Gimson teaches that a stylesheet is provided for each of the data-receiving
devices that can access the server that it is desired to support”; and (2) thus,
“the metadata file is received from the content provider server" (id.).
We agree with Appellants arguments that the (1) server 2 corresponds
to the content provider server of claim 1, and the data-receiving devices
26, 28, 30 of Gimson correspond to an output server of claim 1 (See FF 1).
While we also agree with Appellants' argument that the data receiving
devices send their capabilities to the server 2, we find, however, Gimson
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discloses sending the data that is stored on the server 2 to the requesting
devices (See FF 1). Thus, the data-receiving devices 26, 28, 30, which
correspond to output servers, receive data from the server 2 that corresponds
to the content provider server (See FF 1). Accordingly, we find that Gimson
teaches receiving data from the content provider server.
We also find Gimson teaches sending (1) a title; (2) first name; and
(3) last name to a receiving a data-receiving device (See FF 3). Thus, we
find a skilled artisan would have recognized that a data-receiving device of
Gimson receives a first data, a second data, and a third data. Further, we
find that a skilled artisan would have recognized that the data would have
been sent serially, and thus, received serially by the data-receiving devices,
i.e., output servers of Gimson. Accordingly, Appellants have not persuaded
us of error in the Examiner's conclusion of anticipation for representative
claim 1.
Appellants’ arguments made with respect to claim 1 will also apply to
claims 2-38 (See App. Br. 9, 14). Thus, for similar reasons discussed above
with regard to representative claim 1, Appellants have not persuaded us of
error in the Examiner's finding of anticipation for claims 2-38.

DECISION
We have sustained the Examiner's rejections with respect to claims
1-38 on appeal. Therefore, the Examiner’s decision rejecting the claims is
sustained.
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).

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AFFIRMED

msc

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