Ex Parte RE40459 et al

Patent Trial and Appeal Board

Mar 28, 2016

90013058 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
90/013,058 12/09/2013 RE40459
26486 7590 03/28/2016
BURNS & LEVINSON, LLP
125 SUMMER STREET
BOSTON, MA 02110
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.
004-0010.RE.REX (A) 9675
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
03/28/2016 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 ACCESS CO., LTD.
Patent Owner and Appellant
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Technology Center 3900
Before JOHN A. JEFFERY, DAVID M. KOHUT, and
JENNIFER L. McKEOWN, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 306 the Examiner's
decision to reject claims 1, 17, and 18. We have jurisdiction under 35
U.S.C. §§ 134 and 306. We affirm.
STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on November 14, 2013 ofUnited States Patent RE40,459 ("the '459
patent"), issued to Hawkins et al. on August 12, 2008 that reissued United
States Patent 6,343,318 that issued January 29, 2002.
The '459 patent relates to low-bandwidth network access to Intemet-
based information. In one aspect, pages are displayed such that one part of
the content is derived from a stored data set to render a form for a selected
network site, and another part of the content is derived from a response
received from the site. See generally '459 patent, col. 9, 11. 34--59; Fig. 1.
Claim 1 illustrates the invention and is reproduced below:
1. A handheld computer comprising:
a display;
an antenna;
a memory configured to store a set of data configured for
a selected network site; and
a processor configured to:
access the set of data from the memory to render a form
for the selected network site, the form including one or more
fields;
associate user-input to the one or more fields provided
by the form;
signal a wireless communication over the antenna for the
selected network site, the wireless communication comprising
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the form with the user-input being associated with the one or
more fields,
receive a response over the antenna, the response
originating from the selected network site; and
providing a content comprising one or more selectable
pages appearing on the display, a first portion of the content
being derived from the set of data for the selected network, a
second portion of the content being derived from the response
received over the antenna from the selected network site.
RELATED PROCEEDINGS
This appeal is said to be related to four District Court proceedings in
Texas that have all settled. See App. Br. 2 (citing cases).
THE REJECTION
The Examiner rejected claims 1, 17, and 18 under 35 U.S.C. § 103(a)
as unpatentable over NETHOPPER VERSION 3.2 USER'S MANUAL, AllPen
Software, Inc. (1997) ("NetHopper") and MESSAGEPAD 2100 WITH NEWTON
2.1 OPERATING SYSTEM, Apple Computer, Inc. (1997) ("MP2100"). Final
Act. 8-21; Ans. 3. 1
CONTENTIONS
The Examiner finds that NetHopper's handheld computer, namely the
Newton PDA, has many recited elements of claim 1 including a memory
1 Throughout this opinion, we refer to (1) the Final Rejection mailed July 22,
2014 ("Final Act."); (2) the Appeal Brief filed January 22, 2015 ("App.
Br."); (3) the Examiner's Answer mailed February 23, 2015 ("Ans."); and
(4) the Reply Brief filed March 23, 2015 ("Reply Br.").
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configured to store a set of data configured for a selected network site,
where this data set is said to correspond to a combination of ( 1) texts and/ or2
search terms, and (2) forms to be cached as templates (e.g., Yahoo search
templates) for later submission. Final Act. 8-13; Ans. 5-7, 16-19, 21-24.
The Examiner also finds that NetHopper's computer has a processor
configured to ( 1) access the data set from the memory to render a form for
the selected network site, namely the forms saved as templates for
submission to Yahoo's website, and (2) associate user-input to one or more
fields provided by the form by inputting text and/ or search terms into the
forms. Final Act. 9; Ans. 16, 21-22. According to the Examiner,
NetHopper's processor is configured to provide content comprising one or
more selectable pages on the computer's display, where the content's "first
portion," namely the search text or terms within Yahoo's search results, is
said to be derived from the data set, and the "second portion," namely the
remaining parts of the Yahoo search result, derived from the response
received from the selected network site. Final Act. 10-13; Ans. 7-12, 15-
17, 22-23, 25.
2 The Examiner's mapping of the recited data set to corresponding elements
in NetHopper is somewhat inconsistent given the Examiner's different
articulations in the Answer. See Ans. 16 (mapping the data set to the
combination ofNetHopper's "texts or search terms and the forms to be
cached as templates"). But see Ans. 21 (mapping the data set to the
combination of "texts and search terms and the forms to be cached as
templates"); Ans. 18, 24 (mapping the data set to "(texts and/or search
terms)+ (forms)") (emphases added). Despite these inconsistencies, we
nonetheless presume that the Examiner intended to map the recited data set
to the combination ofNetHopper's (1) texts and/or search terms, and (2)
forms to be cached as templates, and deem any error in this regard harmless.
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Although the Examiner acknowledges that NetHopper does not teach
explicitly that the Newton handheld computer has an antenna for
communicating wirelessly with a network, the Examiner cites MP2100 for
teaching this feature in concluding that the claim would have been obvious.
Final Act. 13.
Appellant argues that the Examiner not only interprets NetHopper's
search terms as corresponding to both the claimed data set and user-input,
but also equates the search terms to both the content's first portion and the
received response from which the second portion is derived. App. Br. 10-
11, 15. NetHopper's search result pages, however, are said to be generated
using only content included in responses received from the search website-
not previously-cached content. App. Br. 13-14. As such, Appellant
contends, N etHopper does not display different portions of content that
correspond to static and dynamic information, respectively, and are derived
from different sources, namely ( 1) the data set stored on the handheld
computer, and (2) the response received from the network site. App. Br. 15-
16; Reply Br. 2-10.
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that NetHopper and MP2100 collectively would have taught or suggested a
handheld computer with a processor configured to ( 1) access a set of data
stored in the computer's memory to render a form for a selected network
site; (2) associate user-input to one or more fields provided by the form; and
(3) provide content comprising one or more selectable pages appearing on
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the computer's display, where a first content portion is derived from the data
set, and a second content portion derived from a response received over the
antenna from the selected network site?
ANALYSIS
We begin by noting that the Examiner's reliance on MP2100 in the
rejection (Final Act. 13) is undisputed, as is its combinability with
NetHopper. Rather, this dispute turns on whether the Examiner's reliance
on NetHopper is erroneous; therefore, we confine our discussion to that
reference.
As noted above and in the Answer, the Examiner maps the recited
stored data set to a combination of (1) texts and/or search terms, and (2)
forms cached as templates (e.g., Yahoo search templates) for later
submission. See Ans. 16, 18, 21, 24. We see no error in this mapping.
On page 1, NetHopper is described as a browser for a Newton PDA
(handheld computer) that, among other things, enables the user to (1) view
HTML web pages; (2) cache/store pages for later viewing; and (3) submit
forms via HTML pages. NetHopper also enables the user to search for
keywords on various search pages, including Yahoo. NetHopper, at 3.
In one aspect, N etHopper caches pages for off-line viewing, and if a
page contains a form that is used repeatedly, the user can mark the page as a
template and save it in cache memory-an example of which is shown in the
"Yahoo Search Results" cache entry whose icon corresponds to a page saved
as a template as shown on page 16. NetHopper, at 14--16, 18 ("Make
Template" section). Forms can be submitted while online, but the user can
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defer form submission to a later time if, for example, the user is offline or
wants to delay gathering data. NetHopper, at 17. To this end, the user can
send forms after exiting NetHopper and launching it again. NetHopper, at
22.
Based on this functionality, we see no error in the Examiner's finding
that NetHopper's "Yahoo Search Results" page, which is saved as a
template, at least suggests a form with search terms to be submitted
repeatedly to a network site, such as Yahoo. Ans. 5-7. Although the title of
the saved Yahoo template reflects search results, as the Examiner indicates,
NetHopper teaches that (1) form-containing documents can be saved as
templates, and (2) forms can be submitted repeatedly. See NetHopper, at 18.
Although NetHopper may not state explicitly that a cached template includes
search terms previously entered by a user as Appellant contends (App. Br.
10 n.1 ), N etHopper at least suggests as much given N etHopper' s form-based
search functionality, and the user's ability to perform searches by entering
search terms.
Nor do we find error in the Examiner's position that NetHopper at
least suggests associating user-input to one or more fields provided by this
form. Under the Examiner's position, the user inputs at least the associated
search terms into the forms to be cached as templates and, as such, this user
input would have been at least an obvious variation. See Ans. 16, 22. To
the extent that Appellant argues that the Examiner incorrectly maps
NetHopper's search terms to both the recited data set and user input (see
App. Br. 10), we find such an argument unavailing, for not only is the
Examiner's mapping of these two elements different as noted on pages 21,
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22, and 24 of the Answer, but the scope of the term "user-input" is quite
broad. That is, "user-input" can include not only the search terms
themselves, but also any other data associated with user entry including (1)
data associated with a user-input device (e.g., data generated responsive to a
user operating a keyboard, stylus, mouse, trackball, etc.), or (2) other data
entered by the user that facilitates particular search functions.
We also see no error in the Examiner's position that NetHopper's
handheld computer displays content with two "portions": (1) a "first
portion" comprising search text or terms within Yahoo's search results
derived from the stored data set, and (2) a "second portion," namely the
remaining parts of the Yahoo search result, derived from the response
received from the selected network site. Final Act. 10-13; Ans. 7-12, 15-
17, 22-23, 25.
The Examiner notes that because the term "derived" is not defined in
the '459 patent unlike other terms, the term "derived" is construed with its
ordinary and customary meaning. See Ans. 9-10 (noting that "derived" is
excluded from the terms defined in the '459 patent's "Definitions" section).
To this end, the Examiner cites two dictionary definitions, the first of which
is a computer dictionary definition of "derived data" as "[ d]ata that is
computed or otherwise obtained from other data by application of a specified
procedure." Ans. 10 (citing IEEE Standard Computer Dictionary). The
second definition is from an online general-purpose dictionary defining
"derived" as "[t]o arrive at by reasoning" or "deduce or infer." Id. (citing
www. thefreedictionary. com).
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Although Appellant finds the former definition from the computer
dictionary "more satisfactory" (Reply Br. 4, 8 n.6), we find no error in the
Examiner's position under either definition. First, nothing in the claim
requires that the respective first and second portions of the recited content
appear on the display in a particular way or have a particular layout apart
from (1) the content itself comprising selectable pages appearing on the
display, and (2) the content having two portions that are derived from their
respective sources. Therefore, to the extent that Appellant contends that the
two recited content portions must have a particular appearance, such as the
side-by-side depictions in Figure 1 of the '459 patent, or the so-called
"visual aid" presented in an earlier interview with the Examiner (App. Br. 9-
10), 3 the claims are not so limited.
To be sure, both content portions in NetHopper under the Examiner's
position, namely (1) the search text or terms within Yahoo's search results,
and (2) the remaining parts of the Yahoo search result, are derived from the
response from the selected network site, namely Yahoo, as Appellant
indicates. See App. Br. 13-16 (arguing that NetHopper's search result pages
are generated using only content included in responses received from the
search website-not previously-cached content). But nothing in the claim
precludes the first content portion to also be derived from the stored data set
for the selected network, namely the search text or terms within Yahoo's
search results that were previously entered by the user and stored in forms
before submission under the Examiner's position. That is, despite the first
3 As the Examiner indicates, this "visual aid" is not part of the '459 patent.
Ans. 23.
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and second content portions' common derivation from received responses,
the first portion, namely the search terms, are additionally derived from the
stored data set-a derivation that even Appellant acknowledges, albeit in an
"abstract sense." See Reply Br. 3 ("While one might consider that all
'search results' are in some 'abstract sense' 'deduced' from a query that
includes a 'search term, ' one would not ordinarily say that the displayed
'search term' was 'deduced' from the query.") (italics added; underlining
omitted). That Appellant uses the qualifier "ordinarily" here is telling, for
Appellant implies that it could be said that the displayed search term was
deduced from the query, albeit a statement that one would not ordinarily
make.
In any event, NetHopper's additional derivation satisfies either
definition of "derived" proposed by the Examiner. First, the derived data of
NetHopper's first portion is "[d]ata that is computed or otherwise obtained
from other data by application of a specified procedure," namely by entering
search terms, storing the terms in a form, submitting the form-based search
query to a selected network site, and receiving the response. Accord Ans.
10. NetHopper's first portion is also deduced from the stored search terms
as the Examiner indicates, thus satisfying the second definition. Id.
Appellants' arguments to the contrary are unavailing and not commensurate
with the scope of the claim.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 17 and 18 not argued separately with particularity.4
§ 103.
CONCLUSION
The Examiner did not err in rejecting claims 1, 17, and 18 under
DECISION
The Examiner's decision rejecting claims 1, 1 7, and 18 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(±).
AFFIRMED
4 Although Appellant additionally argues that NetHopper does not (1)
associate user-input to one or more fields provided by the form in claim 1, or
(2) disclose a user selecting a presented user-selectable option in claim 17,
these arguments were made for the first time in the Reply Brief and are,
therefore, deemed to be waived as untimely. See 37 C.F.R. § 41.41(b)(2)
(2012) ("Any argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner's
answer, including any designated new ground of rejection, will not be
considered by the Board for purposes of the present appeal, unless good
cause is shown.").
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