Ex Parte Sugimoto et al

Board of Patent Appeals and Interferences

Oct 26, 2009

09908555 (B.P.A.I. Oct. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MIKA SUGIMOTO, SUGIO MAKISHIMA,
and NORIHISA HANEDA
____________
Appeal 2009-002159
Application 09/908,5551
Technology Center 2400
____________
Decided: October 27, 2009
____________
Before LEE E. BARRETT, JAY P. LUCAS, and JOHN A. JEFFERY,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-10 and 14-19. Claims 11-13 have been canceled. We
have jurisdiction pursuant to 35 U.S.C. § 6(b).

1 Filed July 20, 2001, titled "Content Management Server, Server
System and Method of Controlling Operation Thereof," which claims the
foreign filing priority benefit of Japan Application 2000-230140, filed
July 31, 2000. The real party in interest is FujiFilm Corporation.
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We affirm.
STATEMENT OF THE CASE
The invention
The invention relates to a content management server that receives
original digital content (such as an image) from a client computer, generates
a thumbnail image of the original image, creates a Web page utilizing the
thumbnail image, and transmits the generated Web page to a Web page
server. The Web page containing the thumbnail image can be viewed by
accessing the Web page server. The original image can be retrieved by
clicking on the thumbnail image. The client computer is authorized to
access the content management server using a log-in file sent from the server
to the client computer.

The claims
Claim 1 is reproduced below:
1. A content management server that is capable of communicating
with a client computer and a Web page server, comprising:
a receiving unit for receiving original digital content transmitted
from the client computer;
a storage unit for storing the original digital content received by
said receiving unit;
a Web page data generating unit for generating data for
generating and displaying a Web page, which includes a first section
for acquiring a part of the original digital content received by said
receiving unit, on a display unit of the client computer;
a Web page data transmitting unit for transmitting the Web
page data, which has been generated by said Web page data
generating unit, to said Web page server; and
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an authentication unit for authorizing a client computer to
access the content management server, wherein said authentication
unit transmits a log-in file to said client computer,
wherein the first section comprises other than an original
image.

The references

Narayen US 6,035,322 Mar. 7, 2000
Angiulo US 6,275,829 B1 Aug. 14, 2001
(filed Nov. 25, 1997)
Fuh US 6,463,474 B1 Oct. 8, 2002
(filed July 2, 1999)
Manolis US 6,583,799 B1 June 24, 2003
(filed Nov. 29, 1999)

The rejections
Claims 1, 5, 7, 16, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Narayen and Fuh.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Narayen and Fuh, further in view of Manolis.
Claims 2, 6, 8-10, 17, and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Narayen, Angiulo, and Fuh.
Claims 3, 4, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Narayen and Angiulo, further in view Fuh and Manolis.

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PRINCIPLES OF LAW
Obviousness
Obviousness requires that the combination of references teach or
suggest to a person of ordinary skill in the art all of the claim limitations.
35 U.S.C. § 103(a).

Arguments not made are waived
Arguments not made are considered waived. 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 nonobvious distinctions over the prior art."); In re Wiechert,
370 F.2d 927, 936 (CCPA 1967) ("This court has uniformly followed the
sound rule that an issue raised below which is not argued in this court, even
if it has been properly brought here by a reason of appeal, is regarded as
abandoned and will not be considered. It is our function as a court to decide
disputed issues, not to create them.").
"A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim." 37 C.F.R.
§ 41.37(c)(1)(vii). A statement that the references do not teach or suggest a
claim limitation, as Appellants often do in addressing the rejections, while
perhaps it is more of an "argument" than just repeating the claim limitation,
is not an argument demonstrating error by the Examiner where the Examiner
has provided reasons for rejecting the claim. That is, such a statement does
not constitute a placeholder argument that allows Appellants to provide
specific arguments later on.

FINDINGS OF FACT
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Narayen
Narayen relates to publishing a collection of digital media on a
network. Abstract.
The client digital processing system generates a collection of digital
media and transmits collection information, which describes the collection
of digital media, to a server digital processing system. From the collection
information, a plurality of presentable media is automatically generated,
each of these presentable media is capable of being presenting to other client
digital processing system which are coupled to the network. Typically, the
network is operating according to the hypertext transfer protocol (HTTP). In
one example, the digital media includes digital images and the presentable
media includes viewable images. Col. 2, ll. 34-55.
The system allows a user at a client system to create a media container
which contains digital media and publish this media container with its digital
media onto the Internet for other clients to be able to view. Col. 7, ll. 29-33.
The media container may, for example, be a picture album. Col. 7, ll. 20-26.
The media container and the digital media are supplied from the client
computer to the server computer system which then automatically generates
the viewable pages such as viewable HTML pages. Col. 7, ll. 41-44. These
pages are made available to a web server which allows other client computer
systems to view the HTML pages which have been published by the client
computer system. Col. 7, ll. 44-48.
The client transmits the album format data (which specifies the layout
and style and number of pictures in the album) and, in an alternate
embodiment, the actual images, to a server computer system. Col. 8,
ll. 20-26. The server computer system saves the album format data and the
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images into a database. The images are converted into a web viewable
format. Col. 8, ll. 38-42; Fig. 5, step 229. In one embodiment, two different
images of different resolution are generated from the original master image
received from the client and stored at the server. Col. 10, ll. 62-66.
When a user of a client system selects a particular picture on a web
page, the server transmits an alternative view of an image, which may be the
higher resolution image. Col. 11, ll. 30-49.
In order to connect to the server computer system, the client computer
system from which the publication is to occur sends the log-in message, such
as user ID and user password to the server system, and the server system
responds to a log-in request and confirms acceptance. Col. 10, ll. 3-14.

Fuh
Fuh relates to network access control. The configuration is shown in
Figure 4. A user 320 of a client 306 attempts to remotely access a target
server 222 attached to an intranet 216. Inbound and outbound HTTP packets
are intercepted by a firewall that protects the intranet from unwanted
network traffic. Upon intercepting the HTTP packets, the firewall requests,
from the client authentication information such as username and password,
and sends this information for authentication to the authentication,
authorization, and accounting ("AAA") server 218. If the username is
successfully authenticated, the firewall is dynamically configured to open a
passageway for the HTTP packets. Because the firewall provides an
authentication and authorization mechanism that substitutes for an
authentication and authorization mechanism elsewhere, it is referred to as an
"Authentication Proxy." Col. 7, ll. 11-66.
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Figure 5A is an example of a graphical user interface representation of
the login form that may be sent from the Authentication Proxy to the client.
Col. 11, ll. 49-67.

DISCUSSION
Claims 1, 5, 7, 16, and 18 -- Narayen and Fuh
Claims 1 and 5
Issue
Have Appellants shown that the Examiner erred in concluding that it
would have been obvious to modify the authentication unit in the server of
Narayen so that "said authentication unit transmits a log-in file to said client
computer" given the teachings of Fuh?

Contentions
The Examiner finds that Narayen discloses the claimed subject matter
of claims 1 and 5 except that "Narayen is silent [regarding] transmitting the
log-in file from the server." Final Rej. 4. The Examiner finds that Fuh
describes transmitting a log-in form from a server to a client at column 11,
ll. 49-61, and concludes that it would have been obvious to modify Narayen
so that the authorization unit sends the log-in file to the client since this was
a well known procedure in the art. Id.
Appellants note that Narayen teaches at column 10, lines 4-25, that
the client system 121 sends a log-in message (e.g., user ID and password) to
the server system 111, which confirms acceptance of the log-in message.
Br. 9. It is argued that Narayen already provides a means for authenticating
a user/client and therefore one of ordinary skill in the art would not have
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modified Narayen as suggested by the Examiner for the purpose suggested
by the Examiner. Id.
Appellants argue that Fuh does not teach or suggest a server including
"an authentication unit for authorizing a client computer to access the
content management server, wherein said authentication unit transmits a
log-in file to said client computer," because the "authentication unit" of Fuh
is provided in an authentication proxy, not in the server. Br. 9-10;
Reply Br. 5-6.

Analysis
Narayen describes that "[t]he client system from which publication is
to occur sends the log-in message, such as user ID and user password to the
server system." Col. 10, ll. 10-13. Narayen says that a log-in message is
sent, but is silent about where the log-in message form originates. We agree
with the Examiner that it would have been obvious to one of ordinary skill in
the Internet communications art to transmit a log-in form from a server to a
client system, to be returned by the client system, as evidenced by Fuh. That
is, when logging on to a Web site, it was well known for the Web site to
transmit a log-in form in the form of a Web page for the user to sign in, as
shown in Figure 5A of Fuh. Even if Narayen explicitly said that the client
system originated the log-in message, one of ordinary skill in the art would
have known from Fuh that it was known alternative, and hence an obvious
modification that provides completely predictable results, to transmit a
log-in form from the server to the client system.
As to Appellants' argument that Fuh does not teach an "authentication
unit" on a server, because the authentication unit in Fuh is an authentication
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proxy, not a server, Fuh is relied on for its teaching of transmitting a log-in
form from the device a client system wants to connect with, a firewall router,
to a client system. The rejection is based on modifying the server in
Narayen, which is also the device a client system wants to connect with, to
transmit a log-in form to the client in view of Fuh. The fact that Fuh does
not transmit from a server does not negate its teaching of transmitting a
log-in form from a device to be connected with to a client system.
Therefore, we agree with the Examiner that it would have been
obvious to one of ordinary skill in the art to modify Narayen to transmit a
log-in form from the server to the client in view of the teachings of Fuh.

Conclusion
Appellants have not shown that the Examiner erred in concluding that
it would have been obvious to modify the authentication unit in the server of
Narayen so that "said authentication unit transmits a log-in file to said client
computer" given the teachings of Fuh. The rejection of claims 1 and 5 is
affirmed.

Claim 7
Appellants state that the references do not teach or suggest the
limitation "wherein the original digital content comprises at least one of an
image data, a sound data and a text data," as recited in claim 7. Br. 10.
It is difficult to credit Appellants' argument when Narayen is clearly
directed to digital image data for an album; e.g., block 227 shown in
Figure 5. In addition, the Examiner points to column 7, lines 4-12, which
states that digital media includes digital images, audio, video, and word
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processing files. Ans. 12. Thus, the Examiner establishes that Narayen
teaches the digital content recited in claim 7.
The rejection of claim 7 is affirmed.

Claim 16
Appellants state that the references do not teach or suggest the
limitations "wherein, upon a user of the client computer receiving the log-in
file and entering a password and user identification, the password and the
user identification are transmitted to the content management server, and
wherein, upon receiving the password and the user identification, the content
management server executes a user authorization based on the password and
the user identification," as recited in claim 16. Br. 10-11.
The Examiner refers to Figure 7 and column 10, lines 4-25. Ans. 12.
Appellants do not explain why the references do not teach the
limitations. We guess that Appellants' reason is based on the argument for
claim 1 that the references do not teach or suggest sending a log-in file and
thus do not teach receiving a log-in file in claim 16. However, we conclude
with respect to claim 1 that it would have been obvious for the server in
Narayen to send a log-in file in view of Fuh and therefore for the client
system to receive such a file. Narayen describes transmitting a user ID and
password to a server for authorization. The rejection of claim 16 is affirmed.

Claim 18
Appellants argue that the references do not teach or suggest the
limitations "wherein said authenticating the client computer and authorizing
the client computer to access the content management server further
comprises: entering, by a user of said client computer having received the
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log-in file, a password and user identification; transmitting the password and
the user identification to the content management server; and executing a
user authorization based on the password and the user identification," as
recited in claim 18. Br. 11.
The rejection of claim 18 is affirmed for the reasons discussed for
claims 1 and 16.

Claim 15 -- Narayen and Fuh in view of Manolis
The Examiner finds that Manolis relates to a system for uploading
images to a remote server and discloses "a computer-implemented method
facilitates orders for prints of images by: displaying a thumbnail image
representing a complete image; receiving input from a user ordering a print
of the complete image." Col. 3, lines 57-62. A laboratory processes the
order based on the order information. Col. 8, l. 44 to col. 9, l. 58; Fig. 7.
Appellants argue that the references do not teach or suggest "wherein
the content management server transmits order information from the client
computer to a laboratory computer, the laboratory computer processing an
order based on the order information" as recited in claim 15. Br. 19.
Appellants do not address the teachings of Manolis, but merely deny
that the references teach the limitations of claim 15 without any discussion.
This fails to show error in the Examiner's rejection. The rejection of
claim 15 is affirmed.

Claims 2, 6, 8-10, 17, and 19 Narayen, Angiulo, and Fuh
Claims 2 and 6
Appellants argue that the Examiner erred in concluding that the
combination of Narayen, Fuh, and Angiulo teaches or suggests "an
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authentication unit for authorizing a client computer to access said content
management server, wherein said authentication unit transmits a log-in file
to said client computer," as recited in claim 2 and a similar limitation in
claim 6. Br. 12-14. Appellants make the same arguments as for claims 1
and 5 in the rejection over Narayen and Fuh, id. at 12-13, and argue that
Angiulo does not cure the deficiencies in these two references, id. at 14.
The argued limitation is rejected for the same reasons as stated for
claim 1. See Final Rej. 7, paragraph beginning "Regarding claims 2 and 6"
and following indented paragraph. The Examiner relies on Angiulo for the
limitation of displaying first and second sections on the same screen and not
for the argued limitation. The rejection of claims 2 and 6 is affirmed for the
reasons discussed in connection with claim 1.

Claim 8
Appellants state that the references do not teach or suggest the
limitation "wherein the original digital content comprises at least one of an
image data, a sound data and a text data," as recited in claim 8. Br. 18.
This limitation is addressed in connection with claim 7. The rejection
of claim 8 is affirmed for the reasons stated for claim 7.

Claim 9
Appellants state that the references do not teach or suggest "said
content management server comprises a storage unit for storing the original
digital content," as recited in claim 9. Br. 14-15.
Narayen describes saving (storing) images in a database. Fig. 5,
block 229. Narayen describes a picture database 110 connected to the server
computer system 111. Appellants have not said why the database is not a
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storage unit and have made no attempt to address the teachings of Narayen.
Accordingly, Appellants have not shown any error in the Examiner's
rejection. The rejection of claim 9 is affirmed.

Claim 10
Appellants state that the references do not teach or suggest "further
comprising storing the original digital content," as recited in claim 10.
Br. 15.
The rejection of claim 10 is affirmed for the reasons stated with
respect to claim 9.

Claim 17
Appellants state that the references do not teach or suggest "wherein,
upon a user of said client computer receiving the log-in file and entering a
password and user identification, the password and the user identification are
transmitted to said content management server, and wherein, upon receiving
the password and the user identification, said content management server
executes a user authorization based on the password and the user
identification," as recited in claim 17.
The rejection of claim 17 is affirmed for the reasons stated with
respect to claims 1 and 16.

Claim 19
Appellants state that the references do not teach or suggest "wherein
said authenticating the client computer and authorizing the client computer
to access the content management server further comprises: entering, by a
user of said client computer having received the log-in file, a password and
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user identification; transmitting the password and the user identification to
the content management server, and executing a user authorization based on
the password and the user identification," as recited in claim 19.
The rejection of claim 19 is affirmed for the reasons stated with
respect to claims 1 and 16.

Claims 3, 4, and 14 -- Narayen, Angiulo, Fuh, and Manolis
Appellants make the same arguments as for claim 1 for these
dependent claims. Br. 16-18. These arguments are not persuasive for the
reasons stated with respect to claim 1. In addition, Appellants make the
following separate arguments.

Claim 3
The Examiner relies on Manolis for transmitting a window containing
an order area for print ordering and concludes that it would have been
obvious to employ a print ordering system as taught by Manolis to facilitate
the ordering of prints. Final Rej. 8.
Appellants state that the references do not teach or suggest "wherein
said content management server comprises a fourth transmitting unit, which
is responsive to the receipt of data transmitted from said client computer
indicating that the second section has been clicked, for transmitting, to said
client computer, data for displaying, on a display unit, a window containing
an order area for ordering a printout of the original digital content," as
recited in claim 3. Br. 19. Appellants argue for the first time in the Reply
Brief that the Examiner's statements are no more than mere conclusory
statements. Reply Br. 3.
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Appellants do not address the merits of the Examiner's rejection based
on Manolis. Merely alleging that the references do not teach the claim
limitations is the ultimate in conclusory statements. Alleging that the
Examiner's statements are conclusory is itself conclusory and does not
address the merits of the rejection. The Board will not make Appellants'
arguments for them. Therefore, Appellants have failed to show error in the
Examiner's rejection. The rejection of claim 4 is affirmed.

Claim 4
Appellants state that the references do not teach or suggest "wherein
said content management server comprises a fifth transmitting unit, which is
responsive to the receipt of data transmitted from said client computer
indicating that the order area has been clicked, for transmitting, to said client
computer, data for displaying a window for inputting order information," as
recited in claim 4. Br. 19.
Appellants do not address the Examiner's rejection which is based on
Manolis. Therefore, Appellants have failed to show error in the Examiner's
rejection. The rejection of claim 4 is affirmed.

Claim 14
Appellants state that the references do not teach or suggest "further
comprising a laboratory computer, said laboratory computer receiving order
information from said client computer and processing an order based on the
order information," as recited in claim 14. Br. 19.
Appellants do not address the Examiner's rejection, Final Rej. 8,
which is based on Manolis. Manolis discloses a laboratory computer
receiving print order information as discussed in connection with claim 15.
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Therefore, Appellants have failed to show error in the Examiner's rejection.
The rejection of claim 14 is affirmed.

CONCLUSION
The rejections of claims 1-10 and 14-19 are affirmed.
Requests for extensions of time are governed by 37 C.F.R. § 1.136(b).
See 37 C.F.R. § 41.50(f).

AFFIRMED

erc

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