AT&T Intellectual Property I, L.P.

Patent Trials and Appeals Board

Mar 29, 2022

2021000897 (P.T.A.B. Mar. 29, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/332,612 10/24/2016 Denis Brent WALTON 2007-0711CON1 2813 83811 7590 03/29/2022 AT&T LEGAL DEPARTMENT - TRBK PATENT DOCKETING ROOM 2A-212, ONE AT&T WAY BEDMINSTER, NJ 07921 EXAMINER HAILU, TADESSE ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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): docketing@trbklaw.com eOfficeActionDocs@att.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DENIS BRENT WALTON Appeal 2021-000897 Application 15/332,612 Technology Center 2100 Before JOHN A. JEFFERY, JAMES R. HUGHES, and LARRY J. HUME, Administrative Patent Judges. HUGHES, Administrative Patent Judge. JEFFERY, Administrative Patent Judge, CONCURRING. DECISION ON APPEAL STATEMENT OF THE CASE Claims 1-20 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies the real party in interest as AT&T Intellectual Property I, L.P. Appeal Br. 2. 2 We refer to Appellant’s Specification (“Spec.”), filed Oct. 24, 2016 (claiming benefit of US 11/948,354, filed Nov. 30, 2007); Appeal Brief Appeal 2021-000897 Application 15/332,612 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, generally “relates to web serving and more particularly to web serving pages that take a relatively long time to transfer to a client.” Spec. ¶ 2. More specifically, Appellant’s claimed subject matter is directed to preloader resources, computer readable media, and methods for processing web page requests by detecting a client request for a web page containing a preloadable object, instituting downloading of the preloadable object to the requesting client, and executing the operations of preloader to identify a preloader message from a set of preloader messages based, on multiple factors including a time- of-day, and displaying the preloader message. See Spec. ¶¶ 10-12; Abstr. Claim 1 (directed to a method), claim 9 (directed to a computer readable- medium), and claim 16 (directed to a preloader resource) are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of processing web page requests, the method comprising: responsive to detecting a client request for a web page containing a preloadable object, initiating a download of the preloadable object to a client associated with the client request; and before download completion, invoking a preloader to perform operations, wherein the operations include: identifying, from a set of available preloader messages, a particular preloader message, wherein the particular preloader message is identified based, at least in part, on a plurality of factors, wherein the plurality of factors include: a size of the preloadable object; (“Appeal Br.”), filed June 15, 2020; and Reply Brief (“Reply Br.”), filed Nov. 17, 2020. We also refer to the Examiner’s Final Office Action (“Final Act.”), mailed Oct. 24, 2019; and Answer (“Ans.”), mailed Sept. 17, 2020. Appeal 2021-000897 Application 15/332,612 3 demographic information associated with the client; subject matter with which the web page is concerned; and at least one of: a time-of-day; and a day-of-week; displaying the particular preloader message, wherein the particular preloader message includes: an indication of a progress of the download; and an independent part comprising a message that is independent of a progress status of the download; and responsive to detecting completion of the particular preloader message prior to completion of the download, displaying an additional message. Appeal Br. 15 (Claims App.). REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Klug et al. (“Klug”) US 5,996,007 Nov. 30, 1999 Krishan et al. (“Krishan”) US 6,442,529 B1 Aug. 27, 2002 REJECTION3 The Examiner rejects claims 1-20 under 35 U.S.C. § 103(a) as being as being unpatentable over Klug and Krishan. See Final Act. 3-10. 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application has an effective filing date prior to the AIA’s effective date (March 16, 2013), this decision refers to 35 U.S.C. § 103(a). Appeal 2021-000897 Application 15/332,612 4 ANALYSIS The Examiner rejects claim 1 (as well as independent claims 9 and 16, and dependent claims 2-8, 10-15, and 17-20) as being obvious in view of Klug and Krishan. See Final Act. 3-7; Ans. 13. Specifically, the Examiner relies on Klug for teaching most of the features of Appellant’s claim 1, except for teaching factors including “a time-of-day” or “a day-of-week” (claim 1). See Final Act. 4-6. The Examiner relies on Krishan for teaching the time-of-day or day-of-week factors. See Final Act. 6-7 (citing Krishan col. 17, ll. 32-42); Ans. 13. The Examiner also provides a rationale for combining Klug and Krishan: “scheduling in the middle of the night (i.e. time of day)” “permits the user to schedule the message fetcher program to run at times when the user’s other computer use will not be disrupted by the message fetcher program, such as in the middle of the night.” Final Act 6-7. Appellant contends that Klug and Krishan are not properly combinable and do not teach the disputed limitations of claim 1. See Appeal Br. 5-12; Reply Br. 2-5. Specifically, Appellant contends, inter alia, that the Examiner-cited portions of Krishan “clearly teach[] away from Klug” because “Klug defines the ‘waiting time of an internet session’ as the time period between website selection and completion of web site loading” (Reply Br. 3) (boldface omitted), and Krishan teaches message fetching in the “middle of the night” “so that it would not interrupt the user’s use of the computer.” Reply Br. 4. Appellant further contends that “the Examiner has merely found within Krishan some general teachings relating to ‘a time of day.’ From such general teachings of a time of day, the Examiner unreasonably then concluded that Klug in combination with Krishan would make obvious independent claims 1, 9 and 16.” Reply Br. 4. Appeal 2021-000897 Application 15/332,612 5 As articulated by the Federal Circuit, the Examiner’s burden of proving non-patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections”). “A rejection based on section 103 clearly must rest on a factual basis[.]” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. We conclude the Examiner’s analysis fails to meet this standard because the rejection does not adequately explain the Examiner’s findings of fact. We agree with Appellant that the Examiner has not persuasively shown the combination of Klug and Krishan describes the preloader message selection factors as set forth in claim 1. See Appeal Br. 5-12; Reply Br. 2-5. As argued by Appellant, the Examiner-cited portions of Klug describe a waiting time to access a web site (web page), i.e., a delay, and displaying messages during the waiting time. See Klug col. 3, ll. 17-39 and col. 8, ll. 6-39; Reply Br. 3-4. The Examiner-cited portions of Krishan, on the other hand, merely teach user-scheduled message fetching at a time when a user computer use will not be interrupted, e.g., “in the middle of the night” (Krishan col. 17, ll. 40-42). See Krishan col. 17, ll. 32-42; Reply Br. 3-4. The Examiner has not sufficiently explained how the cited portions of the references would have taught or suggested preloader message selection based on a particular “time-of-day” (claim 1) to one of ordinary skill in the art. Appeal 2021-000897 Application 15/332,612 6 “When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. § 1.104(c)(2) (2019). Here, the Examiner has not provided the requisite explanation of the pertinence of the cited portions of the prior art. Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Klug and Krishan renders obvious Appellant’s claim 1. Independent claims 9 and 16 include limitations of commensurate scope. Claims 2-8, 10-15, and 17-20 depend from and stand with their respective base claims. Thus, we do not sustain the Examiner’s obviousness rejection of claims 1-20. CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 1-20 as being obvious under 35 U.S.C. § 103(a). We, therefore, do not sustain the Examiner’s rejection of claims 1-20. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1-20 103(a) Klug, Krishan 1-20 REVERSED Appeal 2021-000897 Application 15/332,612 7 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DENIS BRENT WALTON Appeal 2021-000897 Application 15/332,612 Technology Center 2100 Before JOHN A. JEFFERY, JAMES R. HUGHES, and LARRY J. HUME, Administrative Patent Judges. JEFFERY, Administrative Patent Judge, CONCURRING. I join the majority in reversing the Examiner’s obviousness rejection, but I nonetheless find that Klug itself at least suggests the recited temporal factors, namely time-of-day and day-of-week, despite the Examiner’s apparent finding to the contrary on pages 4 and 6 of the Final Rejection. On this record, I find the Examiner’s rejection erroneous only because of the Examiner’s reliance on Krishan to cure Klug’s purported deficiencies which is problematic for various reasons, as noted by the majority and Appellant. But Klug has no such deficiencies, for Klug itself at least suggests claim 1’s temporal factor limitation. Notably, the claim does not require both recited temporal factors, namely time-of-day and day-of-week, but only just one due to its “at least one of” language. Appeal 2021-000897 Application 15/332,612 8 In the Abstract, Klug notes that a message set and particular messages may be selected based on (1) user information (e.g., demographic, psychographic, or product preference information); (2) information regarding the expected waiting time; or (3) other information. I emphasize “or” here because messages need not be selected based on user information or expected waiting time, but could also be selected based solely on “other information.” Although Klug does not specify what exactly constitutes this “other information,” I see no reason why it could not include temporal information, such as a particular time or day. This “other information” basis is a key alternative. Although the first two alternatives are detailed in steps 420 to 430 in Klug’s Figure 4 and column 7, line 33 to column 8, line 52, Klug’s Abstract nonetheless adds this third “other information” alternative, albeit not detailed further in the specification. Nevertheless, leaving this “other information” alternative with its temporal possibilities aside, Klug at least suggests identifying and selecting messages based at least on time-of-day in connection with the first two message selection bases enumerated above, namely (1) user information (e.g., demographic, psychographic, or product preference information), and (2) information regarding the expected waiting time. Klug explains that user information can be obtained from a web site or questionnaire and, based on that user information, a message set is selected by deriving demographic, psychographic, lifestyle, or other information. Klug col. 7, ll. 38-41, 45-48. My emphasis underscores that, given their breadth, at least these two pieces of information, namely “lifestyle” and the Appeal 2021-000897 Application 15/332,612 9 unspecified “other information,” could implicate either a time of day or a day of the week in connection with a particular user’s activities. For example, if a user typically uses the Internet at a certain time of day, say in the morning, or on certain days of the week, say Monday to Friday, that information would be relevant “user information” that could be provided via a questionnaire or otherwise obtained from a web site. That information could, in turn, be used to derive at least (1) “lifestyle information,” namely regarding the user’s Internet usage, including when the user uses-or prefers to use-the Internet, or (2) “other information” associated with the user’s Internet usage. See Klug col. 7, ll. 38-41, 45-48. That Klug notes that user information can also be derived based on a history of web sites selected during current and previous sessions in column 7, line 66 to column 8, line 3 only further suggests that user information can include temporal information regarding the user’s Internet usage at the current time of day and earlier times. The other alternative basis on which messages are selected in Klug, namely the expected waiting time, likewise implicates a particular time and day. As Klug explains, the approximate waiting time depends on various factors including, among other things, the level of congestion on the Internet. The term “congestion” is defined as “[t]he condition of a network when the current load approaches or exceeds the available resources and bandwidth designed to handle that load at a particular location in the network.” MICROSOFT COMPUTER DICTIONARY 123 (5th ed. 2002). My emphasis on the word “current” underscores that congestion depends on the load at the current time approaching or exceeding the available resources or bandwidth. Therefore, the level of congestion depends on the time of day Appeal 2021-000897 Application 15/332,612 10 and day of the week: there will be more congestion during peak Internet usage times when the load is higher because more users are using the Internet simultaneously, and less congestion when the load is lower during off-peak usage times. That Klug further explains that information regarding the expected waiting time and regarding the fastest communication network at the current time may be obtained by “pinging” the network and measuring the response time in column 8, lines 34 to 39 only further underscores the temporal factors associated with this determination, namely that it is performed at the current time. I, therefore, find that Klug itself at least suggests identifying a particular preloader message based at least in part on the recited factors, including time-of-day and day-of-week as claimed. For these reasons, I leave to the Examiner to reconsider the teachings of Klug, particularly given the scope and breadth of the claim language. The Examiner is in the best position to make this determination, for the Board’s primary role on appeal is to review the Examiner’s adverse decision for error as was done here-not to conduct its own separate examination of the claims. See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th ed. rev. 10.2019 June 2020).