Ex Parte Schwenk

Patent Trial and Appeal Board

Oct 12, 2012

10491596 (P.T.A.B. Oct. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOERG SCHWENK
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Appeal 2010-006370
Application 10/491,596
Technology Center 2400
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Before JOHN A. JEFFERY, DENISE M. POTHIER, and TRENTON A.
WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9-26. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a method for outputting personalized
user information to a website. See generally Abstract; Spec. 2-4. Claim 9 is
illustrative, with disputed limitations emphasized:
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9. A method for outputting personalized information to an internet
user calling up a web site, comprising:
storing, in a database associated with an access server of an internet
service provider of the user, a list of user-selected preferences for the user in
association with an identifier of the user, the user-selected preferences being
specifically identified by the user such that the user consents to receive
information associated with the preferences;
requesting, from the internet service provider of the user using a
database request, the list of preferences using a web server contacted by the
user to call up a web site;
supplementing, by the web server, prior to sending the web page to a
terminal used by the user to access the internet, the web site called up by the
user with personalized information using at least one preference of the list of
preferences from the database;
sending, by the web server, to the internet service provider, a
temporary IP address of the terminal for the database request;
establishing the identifier of the user by reversing a remote
authentication dial-in user service request used to assign the temporary IP
address; and
transmitting the stored list of preferences to the web server.

THE REJECTION
The Examiner rejected claims 9-26 under 35 U.S.C. § 103(a) as
unpatentable over Gupta (US 2001/0020242 A1; published Sept. 6, 2001) in
view of Hosea (US 2002/0138331 A1; published Sept. 26, 2002).
Ans. 3-16.1

CONTENTIONS
The Examiner finds that Gupta discloses every recited feature of
representative claim 9 except for the user-selected preferences being

1 Throughout this opinion, we refer to (1) the Appeal Brief filed July 22,
2009; (2) the Examiner’s Answer mailed Nov. 16, 2009; and (3) the Reply
Brief filed Jan. 15, 2010.
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specifically identified by the user such that the user consents to receive
information associated with the preferences (Ans. 3-5), but cites Hosea as
teaching this feature in concluding that the claim would have been obvious.
Ans. 5-6.
Appellant argues “that neither Gupta nor Hosea teach or suggest at
least the features of a web server contacted by the user that supplements the
website with personalized information from the list of preferences.” App.
Br. 6. Appellant argues that Gupta and Hosea both teach the use of a proxy
server to perform the customization rather than the web server itself. App.
Br. 6-7.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 9 by finding
that Gupta and Hosea collectively would have taught or suggested:
“supplementing, by the web server, prior to sending the web page to a
terminal used by the user to access the internet, the web site called up by the
user with personalized information using at least one preference of the list of
preferences from the database,” where the web server is a web server
contacted by the user to call up a web site?

ANALYSIS
We begin by noting that the Examiner’s rejection of the
“supplementing, by the web server” step was based solely on Gupta, yet the
Examiner relied upon Hosea as disclosing this claim limitation for the first
time in the Answer’s Response to Argument section. Compare Ans. 4-5
(citing Gupta as teaching “supplementing, by the web server . . .”) with Ans.
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16-17 (citing Hosea as teaching this feature). Such shifts run counter to the
notions of fundamental fairness in appellate proceedings, for the appeal was
taken based on the Examiner’s position articulated in the rejection – not the
Response to Arguments. Such shifts must therefore be designated as a new
ground of rejection to give Appellant a fair opportunity to respond to the
new position—a procedural requirement not followed here. See MPEP §
1207.03; see also In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976).
Although Appellant did not petition this procedural inconsistency, but
instead filed a Reply Brief addressing the Hosea arguments, we nonetheless
decline to reach the merits of the newer position based on Hosea since it is
inconsistent with that taken in the rejection from which the appeal was
taken, which relies solely on Gupta for the step of supplementing by the web
server.2
Appellant argues “that neither Gupta nor Hosea teach or suggest at
least the features of a web server contacted by the user that supplements the
website with personalized information from the list of preferences . . . .”
App. Br. 6. Specifically, Appellant argues that “Gupta merely describes
using a proxy connected to the ISP to provide targeted advertisements as the
website is delivered to the user through the ISP.” Id.
We are not persuaded of error in the Examiner’s finding that Gupta
teaches the step of “supplementing, by the web server . . .” recited in claim
9. Ans. 4. The disclosure in Gupta relied upon by the Examiner states that

2 The Board reviews the Examiner’s final rejection in appeals under 35
U.S.C. § 134(a). See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
Accord Ex parte Wu, No. 2010-002378, 2012 WL 1375099, at *4 (BPAI
2012) (non-precedential); Ex parte Shaw, No. 2009-013330, 2012 WL
1071560, at *3 (BPAI 2012) (non-precedential).
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“if the user indicates his preferences to a search engine, every time other
customizable pages are forwarded to the user, the user may not need to input
the information.” Id. (citing Gupta ¶¶ [0074-75]). Furthermore, Gupta
discloses that “the Yahoo search engine may display sports, news, and travel
related pages to one user and beauty, nutrition, and travel related pages to
another user.” Gupta ¶ [0074]. Accordingly, Gupta discloses customization
by a web server, namely the Yahoo search engine. See id. In addition to
disclosing customization by a web server, Gupta alternatively discloses
customization using a proxy. Gupta ¶ [0075] (“Instead of the web server
dynamically creating the web pages, the proxy can create and transmit them
to the user.” (emphasis added)).
Appellant further argues that “Gupta teaches away from the claimed
invention,” because it “describes that using a proxy to create custom web
pages based on user preferences is more efficient than using a web server.”
App. Br. 6-7. We are unpersuaded by this argument. First, as discussed
above, Gupta merely discloses using a proxy as an alternative embodiment.
Second, Gupta states only that “web page creation and transmission by the
proxy is more efficient than a web server.” Gupta ¶ [0075] (emphasis
added). The ability of one of skilled in art to balance the advantages and
efficiencies of one implementation against the disadvantages does not
amount to a teaching away. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”). We find that a person of ordinary skill in
the art would have had little difficulty in selecting the embodiment disclosed
in Gupta, in which the web server performs the customization functions. See
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
Appellant further argues that Hosea fails to disclose the required step
of “supplementing, by the web server. . . .” See App. Br. 6-7. The
Examiner’s rejection, however, does not rely upon Hosea for teaching this
claim limitation. Ans. 4. Accordingly, Appellant’s arguments pertaining to
Hosea are not germane to the Examiner’s reliance on Gupta for teaching this
feature.
In short, Appellant’s arguments fail to rebut the Examiner’s prima
facie case of obviousness – a position that we find reasonable. For the
foregoing reasons, Appellant has not persuaded us of error in rejecting
representative claim 9 and claims 10-26 not separately argued with
particularity (App. Br. 5-7; Reply Br. 2-4).

CONCLUSION
The Examiner did not err in rejecting claims 9-26 under § 103.

ORDER
The Examiner’s decision rejecting claims 9-26 is 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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