Ex Parte 5974447 et al

Patent Trial and Appeal Board

Nov 13, 2012

90010888 (P.T.A.B. Nov. 13, 2012)

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.
90/010,888 03/05/2010 5974447 0113518.00123US19 5704
22850 7590 11/13/2012
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/13/2012 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 Motorola Mobility, Inc.
____________________

Appeal 2012-009476
Reexamination Control 90/010,888
U.S. Patent No. 5,974,447
Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, STEPHEN C. SIU, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Patent Owner, Motorola Mobility, Inc., appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 1 and 8 of U.S. Patent No.
5,974,447 (“the ‘447 patent”). App. Br. 3. This appeal arose from a request
for ex parte reexamination of claims 1 and 8 of the ‘447 patent filed on
March 5, 2010. Original claims 2-7 and 9-17 were not subject to this
reexamination proceeding. Id. We heard oral arguments from the Patent
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Owner on November 7, 2012, a written transcript of which will be entered
into the electronic record in due course. We have jurisdiction under 35
U.S.C. §§ 6(b), 134(b), and 306.
We affirm.
The Invention Claimed in the ‘447 Patent
The invention claimed in the ‘447 patent generally relates to selective
call transceivers and, in particular, to retrieving information from a widely
distributed information source using a selective call transceiver. Spec. 1:7-
10. Figure 1 of the ‘447 patent is reproduced below.

Figure 1 illustrates a communication system 10 that operatively couples a
selective call transceiver 18 to a widely distributed information resource 24.
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Spec. 2:19-21. Communication system 10 also comprises a server 22
coupled to the widely distributed information resource 24, wherein the
server 22 contains agents for retrieving information customized for the
selective call transceiver 18. Id. at 2:22-26. The selective call transceiver 18
is operatively coupled to the widely distributed information resource 24 via
paging terminal 20. Id. at 2:26-29. The paging terminal 20 allows selective
call transceiver 18 to request information from the server 22, which in turn
retrieves the requested information from widely distributed information
resource 24 and transmits such information back to selective call transceiver
18. Id. at 2:29-35.

Claims on Appeal
The original claims on appeal are independent claims 1 and 8.
Independent claim 1 was amended in a response filed January 20, 2011. App.
Br. 3. The Examiner subsequently entered the amendment to independent
claim 1 in the Final Rejection mailed May 26, 2011. Fin. Rej. 2. Independent
claim 8 was not amended during this reexamination proceeding. App. Br. 3.
Independent claims 1 and 8 read as follows (with underling showing added text
relative to the original claims):
1. A method for coupling a selective call transceiver
to a widely distributed information source, comprising the steps
of:
operatively coupling a server to the widely distributed
information source, wherein the server contains agents for
retrieving predetermined information from the widely
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distributed information source that is customized for a given
selective call transceiver;
originating, at a communication terminal operatively
coupled to the server, a request of the server for such
predetermined information to be provided to the selective call
transceiver; and
retrieving the predetermined information from the widely
distributed information source using the agents in the server.

Supplemental Claims Appendix—Ans. 21.

8. A communication system for coupling a selective
call transceiver to a widely distributed information source,
comprises:
a server coupled to the widely distributed information
source, wherein the server contains agents for retrieving
predetermined information customized according to identified
capabilities of a requesting selective call transceiver;
a paging terminal coupled to the server for allowing the
selective call transceiver to request such predetermined
information from the server; and
a transmitter for transmitting the predetermined
information retrieved from the widely distributed information
source to the selective call transceiver.

Id.
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Prior Art Relied Upon
Armando Fox & Eric A. Brewer, Reducing WWW latency and
bandwidth requirements by real-time distillation, Computer Networks and
ISDN Systems, 28 INT’L J. OF COMPUTER & TELECOMMS. NETWORKING
1445, 1445-56 (1996) [hereinafter “WWW Latency”].

Anupam Joshi et al., Mowser: Mobile Platforms and Web Browsers,
(January 22, 1996) (thesis, Perdue University)(on file with the Department
of Computer Science) [hereinafter “Mowser”].

Other Evidence
The Patent Owner relies on the Declaration of John L. Friend filed on
March 5, 2010 (“Friend Decl.”), to indicate the ordinary and customary
meaning of the claim term “agent” at the time the ‘447 patent was filed. Friend
Decl. ¶¶ 16 and 21.
The Rejections Under Appeal
1. Claim 8 was rejected under 35 U.S.C. § 102(a) as being
anticipated by WWW Latency.1 Ans. 5; see also Fin. Rej. 11-12.
2. Claims 1 and 8 were rejected under 35 U.S.C. § 102(a) as being
anticipated by Mowser. Ans. 5; see also Fin. Rej. 7-10.

1 The Examiner withdrew the rejection of claim 1 under 35 U.S.C. § 102(a)
as being anticipated by WWW Latency. Ans. 3 and 5.
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The Examiner’s Findings and Conclusions
1. The Examiner finds that WWW Latency’s Pythia proxy server is
implemented in Perl language structure that is otherwise known as a scripting
language or executable program code. Ans. 8 (citing pgs. 1454-55). The
Examiner finds that WWW Latency’s Pythia proxy server invokes this
executable program code on behalf of the client browser to achieve a number of
predetermined goals, including: (1) real-time distillation and refinement; (2)
transcoding to a representation understood directly by the client; and (3)
knowledge of client display constraints that allows content to be optimized for
rendering on the client. Ans. 8-9 (citing pg. 1455, col. 2). Therefore,
consistent with the broadest reasonable interpretation of an “agent” presented
by Appellant in the Friend Declaration, the Examiner finds that WWW
Latency’s Pythia proxy server includes software that functions as the “agents”
recited in independent claim 8. Ans. 11.
2. The Examiner finds that Mowser’s proxy server is a modified
version of a Hypertext Transfer Protocol (hereinafter “HTTP”) server written in
Perl language structure that is otherwise known as scripting language or
executable program code. Ans. 11 (citing pg. 6, col. 1). The Examiner finds
that Mowser’s proxy server invokes this executable program code on behalf of
a mobile host (hereinafter “MH”) in order to allow the web server to take into
account the limits and preferences of the MH, such that “the proxy server can
modify the file before sending it to the MH.” Id. (citing pg. 4, col. 2).
Therefore, consistent with the broadest reasonable interpretation of an “agent”
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presented by Appellant in the Friend Declaration, the Examiner finds that
Mowser’s Mobile Support Station (hereinafter “MSS”) contains both a cache
and proxy server, which in turn function as the “agents” recited in independent
claims 1 and 8. Ans. 10-11.

Appellant’s Contentions
1. Appellant contends that WWW Latency’s cached image data is not
“predetermined information” as recited in independent claim 8 because it is not
transmitted from a widely distributed information source. App. Br. 5-6.
Further, Appellant references Mr. Friend’s testimony in his written declaration
in which he provided a definition of an “agent” and asserts that the “agents”
recited in independent claim 8 are contained in the server for achieving a
predetermined goal—namely retrieving predetermined information. App. Br. 6
(emphasis omitted). Appellant argues that WWW Latency’s alleged agents do
not retrieve predetermined information upon invocation, and have no
preconceived goal relative to predetermined information. Id. In other words,
Appellant asserts that the claimed “agents” have a predetermined goal of
retrieving predetermined information, whereas the mechanisms of WWW
Latency have a predetermined goal of “real-time distillation and refinement.”
App. Br. 6; Reply Br. 2-3. In addition, Appellant contends that while the proxy
aspects of WWW Latency demonstrate executable functionality, these features
do not properly identify the claimed “agents” because they pass through HTTP
GET requests on behalf of the requesting device. App. Br. 6-7.
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2. Appellant contends that Mowser’s proxy server, which is coded in
executable language such as PERL, simply passes on communications to
another device. App. Br. 7. Appellant argues that relaying such
communications does not describe the operation of agents contained in a server
for retrieving predetermined information, as required by independent claims 1
and 8. Id. Further, Appellant contends that because Mowser’s HTTP GET
communication originates in the MH to retrieve specified information, such
information is not retrieved by an agent contained in the server that has a
preconceived goal. App. Br. 8; Reply Br. 3-4. Appellant alleges that even if
Mowser’s default uniform resource locator (hereinafter “URL”) or homepage
constitutes the claimed “predetermined information,” Mowser discloses that the
HTTP GET request of the MH—not a server retrieval agent—operates to
retrieve the URL or homepage. App. Br. 8; Reply Br. 6.

II. ISSUES
1. Did the Examiner error in determining that WWW Latency
describes “[a] server [that] contains agents for retrieving predetermined
information customized according to identified capabilities of a requesting
selective call transceiver[,]” as recited in independent claim 8?
2. Did the Examiner error in determining that Mowser describes
“[a] server [that] contains agents for retrieving predetermined information
from [a] widely distributed information source that is customized for a given
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selective call transceiver[,]” as recited in independent claim 1, and similarly
recited in independent claim 8?

III. ANALYSIS
Claim Construction
We begin our analysis by first considering the scope and meaning of the
claim term “agent,” which must be given its broadest reasonable interpretation
consistent with Appellant’s disclosure in the ‘447 patent. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989) (stating that during examination “claims must be interpreted as
broadly as their terms reasonably allow”). Upon reviewing the Specification of
the ‘447 patent, we agree with the Examiner that it does not set forth a special
definition for the claim term “agent.” Ans. 15-16. Therefore, we look to its
ordinary and customary meaning. See Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (claim terms are “generally given their ordinary
and customary meaning”). Appellant presents the Friend Declaration as
evidence that an “agent” would be understood by an ordinarily skilled artisan to
mean an executable computer program that is invoked on behalf of another
entity to achieve a predetermined goal. App. Br. 5; see also Friend Decl. ¶¶ 16
and 21. The Examiner accepts the definition of an “agent” offered by Mr.
Friend. Ans. 8-9 and 10-11. In addition, the Examiner cites to two prior art
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references—Civanlar2 and Chow3—that interchange the term “agent” with a
proxy type server. Ans. 14-15. The Examiner indicates that those prior art
references serve as evidence that a proxy type server can act as an “agent.” Id.
Consequently, we adopt Mr. Friend’s definition as the broadest reasonable
interpretation of the claim term “agent.” With this claim construction in mind,
we turn to the merits of the Examiner’s anticipation rejections.

35 U.S.C. § 102(a) Rejection—WWW Latency
Claim 8 of the ‘447 Patent
Based on the record before us, we do not discern error in the Examiner’s
anticipation rejection of independent claim 8, which recites, inter alia, “[a]
server [that] contains agents for retrieving predetermined information
customized according to identified capabilities of a requesting selective call
transceiver[.]”
In formulating the anticipation rejection of independent claim 8, the
Examiner relies upon WWW Latency’s Figure 2. Ans. 7-8; see also Fin. Rej.
10-11. Figure 2 is reproduced below.

2 U.S. Patent No. 6,298,120 B1, issued October 2, 2001 (filed June 28,
1996).
3 U.S. Patent No. 6,029,175, issued February 22, 2000 (filed June 7, 1996).
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Figure 2 illustrates a Phythia proxy server, which serves as a conduit betweeen
the client browser and a widely distributed information source such as the
Internet. Pg. 1449, cols. 1-2. Further, WWW Latency discloses that the current
implementation of Pythia is unoptimized Perl. Pg. 1455, col. 1.
We agree with the Examiner that the Perl language structure invoked on
WWW Latency’s Pythia proxy server constitutes scripting language or
executable program code. Ans. 8-9. It does not appear that Appellant disputed
this determination. Therefore, WWW Latency’s Pythia proxy server contains
executable program code that retrieves requested or predetermined image data
from the Internet (see, e.g., the Joint Photographics Expert Group (“JPEG”)
image disclosed on pg. 1449, col. 2) and, subsequently, distills and refines such
an image according to the identified capabilities of a given client. In
particular, we find that the executable program code invoked on behalf of
WWW Latency’s Pythia proxy server achieves numerous goals, including
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distilling and refining image data (pg. 1455, col. 2) and, therefore, properly
accounts for the claimed “agents.” Thus, the Examiner’s determination that
WWW Latency describes the disputed claim limitation is supported by the
evidence. Ans. 7-9.
We are not persuaded by Appellant’s argument that WWW Latency’s
cached image data does not amount to the “predetermined information” recited
in independent claim 8 because it is not transmitted from a widely distributed
information source. App. Br. 5-6. While WWW Latency discloses that the
Pythia proxy server caches a copy of image data locally to minimize latency
(pg. 1454, col. 2), WWW Latency also discloses that web browsers generally
employ a proxy server to obtain documents or images from the appropriate
server on a client’s behalf (pg. 1449, col. 1). In this case, WWW Latency’s
Pythia proxy server performs the function of retrieving image data from the
Internet (pg. 1449, cols. 1-2) prior to caching the image data locally in order to
minimize latency (pg. 1454, col. 2). Once the client requests to distill and
refine this image data (pg. 1453-54), WWW Latency’s Pythia proxy server
retrieves the predetermined image data from the cache, distills and refines the
image data (pg. 1453, cols. 1-2), and then transmits it to the client (pg. 1454,
col. 1).
The relevant portions of independent claim 8 recite “retrieving
predetermined information” and “the predetermined information retrieved from
the widely distributed information source.” The scope and breadth of
independent claim 8 does not preclude storing image data transmitted from the
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Internet in a cache prior to retrieving such predetermined data from the cache.
As such, we agree with the Examiner that WWW Latency’s cached image data
constitutes the claimed “predetermined information.” Ans. 16-17.
Next, we are not persuaded by Appellant’s argument that the claimed
“agents” have a predetermined goal of retrieving predetermined information,
whereas the mechanisms of WWW Latency have a predetermined goal of “real-
time distillation and refinement.” App. Br. 6; Reply Br. 2-3. WWW Latency
discloses the Pythia proxy server achieves three important goals, one of which
is “[r]eal-time distillation and refinement.” Pg. 1455, col. 2. WWW Latency
also discloses that the Pythia proxy server achieves the following two goals:
(1) “[t]ranscoding to representation understood directly by the client may
improve rendering on the client or result in a representation that can be
transmitted more efficiently[;]” and (2) “[k]nowledge of client display
constraints allows content to be optimized for rendering on the client.” Id.
In light of our analysis supra, we find that the executable program code
invoked on behalf of WWW Latency’s Pythia proxy server properly accounts
for the claimed “agents” because it achieves any one of the three goals—all of
which satisfy our claim construction because they the fall within the purview of
a predetermined goal. We therefore sustain the Examiner’s rejection of
independent claim 8 of the ‘447 patent under 35 U.S.C. §102(a) as being
anticipated by WWW Latency.
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35 U.S.C. § 102(a) Rejection—Mowser
Claims 1 and 8 of the ‘447 Patent
Based on the record before us, we do not discern error in the Examiner’s
anticipation rejection of independent claim 1, which recites, inter alia, “[a]
server [that] contains agents for retrieving predetermined information from [a]
widely distributed information source that is customized for a given selective
call transceiver[.]” We also do not discern error in the Examiner’s anticipation
rejection of independent claim 8, which recites a similar claim limitation.
In formulating the anticipation rejection of independent claims 1 and 8,
the Examiner relies upon Mowser’s Figure 1. Ans. 10; see also Fin. Rej. 7-8.
Figure 1 is reproduced below.

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Figure 1 illustrates a MH coupled to an MSS, which in turn contains two
servers: (1) a proxy server that serves files based on preferences; and (2) a
caching server that stores the preferences for the MH. Pg. 2, col. 2-pg. 3,
col. 1. Mowser discloses that all communication between the MS and the
World Wide Web (“WWW”) is done through the MSS. Pg. 3, col. 1.
Further, Mowser discloses that the proxy server is a modified version of an
HTTP server written in Perl. Pg. 6, col. 1.
We agree with the Examiner that the Perl language structure invoked on
Mowser’s proxy server constitutes scripting language or executable program
code. Ans. 11. It does not appear that Appellant disputed this determination.
Thereforewe find that Mowser’s proxy server contains executable program
code that retrieves predetermined information for the MH from the WWW (see,
e.g., the GET requests disclosed on pg. 6, col. 1), and customizes such
information according to the identified preferences of the MH (id.). In
particular, we find that the executable program code invoked on behalf
Mowser’s proxy server achieves the goal of allowing the MH to set its own
preferences (pg. 2, col. 2) and, therefore, properly accounts for the claimed
“agents.” Thus, the Examiner’s determination that Mowser describes the
disputed claim limitation is supported by the evidence. Ans. 9-11.
We are not persuaded by Appellant’s argument that because Mowser’s
HTTP GET communication originates in the MH to retrieve specified
information, such information is not retrieved by an agent contained in a server
that has a preconceived goal. App. Br. 8; Reply Br. 3-4. Mowser discloses that
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once the preference file of the MH is stored in the cache server, the proxy
server starts the browsing session by loading the default URL or homepage
defined in the preference file. Pg. 4, col. 2. After the proxy server retrieves the
default URL or homepage defined in the preference file from the WWW,
Mowser discloses that all subsequent HTTP GET requests are handled by the
proxy server. Id.
In light of our analysis supra, we find that the executable program code
invoked on behalf of Mowser’s proxy server properly accounts for the claimed
“agents” because it retrieves the predetermined URL or homepage from a
widely distributed information resource such as the WWW. By retrieving the
predetermined URL or homepage from the WWW, the executable program
code invoked on behalf of Mowser’s proxy server achieves the goal of
customizing information for the MH based on the default values stored in the
preference file. Pg. 2, col. 2; pg. 4, col. 1. We therefore sustain the Examiner’s
rejection of independent claims 1 and 8 of the ‘447 patent under 35 U.S.C.
§102(a) as being anticipated by Mowser.

IV. DECISION
The Examiner’s decision to reject independent claim 8 of the ‘447
patent under 35 U.S.C. § 102(a) as being anticipated by WWW Latency is
affirmed. The Examiner’s decision to reject independent claims 1 and 8 of
the ‘447 patent under 35 U.S.C. § 102(a) as being anticipated by Mowser is
also affirmed.
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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(f).

AFFIRMED

KMF

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For Patent Owner:

OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, P.C.
1940 Duke Street
Alexandria, VA 22314

For Third Party Requester:

WILMER CUTLER PICKERING HALE AND DORR, LLP
1875 Pennsylvania Avenue, NW
Washington, D.C. 20006