Ex Parte Achtermann et al

Patent Trial and Appeal Board

Feb 14, 2013

11456225 (P.T.A.B. Feb. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY MARK ACHTERMANN, ANDREW WILLIAM
LUCCHESI, NAVIN D. MANOHAR, and VICTOR GEE YIU
____________________

Appeal 2010-0094681
Application 11/456,225
Technology Center 2400
____________________

Before JEAN R. HOMERE, MICHAEL STRAUSS, and JOHN G. NEW,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines, Corp. (App.
Br. 2.)

Appeal 2010-009468
Application 11/456,225

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. (App. Br. 4.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ Invention
Appellants invented a server-based method and system for rendering
messages in a data processing system. In particular, upon detecting that an
Applet (412) or browser-side Javascript (414) in a primary webpage (410)
has updated the source object of a hidden IFRAME (in a secondary
webpage) (416) with the uniform resource locator (URL) of a message to be
rendered in the primary webpage (410), the secondary webpage (416)
transmits the message URL to a remote server (420). In response, the
remote server (420) looks up the appropriate message from a message
catalog (424), inserts parameters therein to generate HTML/Javascript code,
which it transmits to the secondary webpage (416) along with message
rendering instructions, which the secondary webpage utilizes to render the
message on the display of the primary webpage. (Fig. 4, Spec. [0033]-
[0035].)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A computer implemented method for rendering a message
in a data processing system, the computer implemented method
comprising:

Appeal 2010-009468
Application 11/456,225

3
updating a source object of a secondary web page
associated with a primary web page with information regarding a
message to be rendered for display on the primary web page,
wherein the primary web page and the secondary web page are in
a same interface;

transmitting the information regarding the message to be
rendered for display on the primary web page to a remote location
using the secondary web page;

receiving message code from the remote location, the
message code including the message to be rendered for display
on the primary web page and message rendering instructions; and

processing the received message code to render the
message for display on the primary web page.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Forman US 2004/0158628 A1 Aug. 12, 2004

Kreiner US 2007/0136417 A1 Jun. 14, 2007
(filed Dec. 14, 2005)
Rejection on Appeal
The Examiner rejects claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kreiner and Forman.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 10-22 and the Reply Brief, pages 2-10.
Appeal 2010-009468
Application 11/456,225

4
Dispositive Issue: Have Appellants shown the Examiner erred in
finding that the combination of Kreiner and Forman teaches or suggests
updating, transmitting, and receiving a message to be rendered on the
display of a primary browser, as recited claim 1?
Appellants argue that the proffered combination does not teach or
suggest the disputed limitations emphasized above. In particular, Appellants
argue that the proposed combination teaches updating, transmitting, and
receiving already rendered messages as opposed to messages to be rendered.
(App. Br. 10-13, Reply Br. 2-4.) Further, Appellants argue that there is
insufficient rationale to combine the references. (Reply Br. 4-5.)
In response, the Examiner finds that Kreiner’s disclosure of updating
a message at a second browser, and rendering the message as prescribed by a
remote location taken in combination with Forman’s disclosure of
transmitting the message to a remote location teaches the disputed
limitations. (Ans. 10-12.)
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. Kreiner discloses using a code of a
second webpage to update the content of the second webpage with the
content from a first webpage, and to subsequently render the updated content
in a web browser. (Kreiner, [0007].) Further, Kreiner discloses using
designated preferences obtained from a remote network to extend
functionality of a guest/second browser (Kreiner, [0065].) Additionally,
Forman discloses transmitting rendered portion of a webpage to a remote
location via computer-readable code associated with the rendered portion of
Appeal 2010-009468
Application 11/456,225

5
the webpage. (Forman, [0032].) We find that the combination of Kreiner
and Forman teaches or suggests upon detecting that a second webpage has
been updated with a message, using a code to transmit the message to a
remote location, which returns another code to indicate how the message
should be rendered at the second webpage. Thus, while Kreiner and Forman
disclose an already rendered message, Kreiner also discloses handling
information pertaining to a message to be rendered according to the remote
location’s instructions. Therefore, we are not persuaded by Appellants’
arguments that the proposed combination does not teach handling a message
to be rendered. Further, even if the proffered combination only taught
already rendered messages, as opposed to messages to be rendered,
Appellants cannot rely solely upon such distinction to patentably distinguish
the claims over the prior art of record. In particular, we find the argued
distinction to be directed to non-functional descriptive material, which is not
entitled to patentable weight. In a precedential Opinion, an expanded Board
panel held that nonfunctional descriptive material (sequence data) did not
distinguish the claimed computer-based system from a prior art system that
was the same except for its sequence data. See Ex parte Nehls, 88 USPQ2d
1883, 1887-88 (BPAI 2008) (precedential).2

2 See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) (aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006) (stating if a
claimed phrase cannot alter how the process steps are to be performed to
achieve the utility of the invention or merely states an intended use or
purpose for the data, it is not entitled to patentable weight.)
Appeal 2010-009468
Application 11/456,225

6
Next, we find untimely Appellants’ arguments in the Reply Brief that
the teachings of Kreiner and Forman are not properly combinable for lack of
sufficient motivation. (Reply Br. 4-5.) We note that these new arguments
were raised by Appellants for the first time in the Reply Brief, and they are
not in response to a new issue brought up by the Examiner in the Answer.
We therefore find these new arguments unavailing. Appellants are reminded
that:
The purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.
Giving cognizance to belated arguments in a reply would
vitiate the force of the requirement in Board Rule 37(c)(1)(vii)
that “[a]ny arguments or authorities not included in the brief . . .
will be refused consideration by the Board, unless good cause is
shown.” The reference in that section to the “reply brief filed
pursuant to § 41.41” does not create a right for the Appellant to
raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely
puts Appellants on notice that arguments that could be made in
the reply brief, but are not, are waived.

See Ex Parte Borden IV, Appeal 2008-004312, p. 4. (Jan. 7, 2010)
(informative.)
Appeal 2010-009468
Application 11/456,225

7
It follows that Appellants have not shown error in the Examiner’s
rejection of claim 1 as being unpatentable over the combination of Kreiner
and Forman.
Regarding claims 2-20, Appellants reiterate substantially the same
arguments submitted for patentablity of claim 1 above. (App. Br. 13-22.) As
discussed above, these arguments are not persuasive. See 37 C.F.R. §
1.37(c)(1)(vii). Further, while Appellants raised additional arguments for
patentability of claims 2-20, we find that the Examiner has rebutted in the
Answer each and every one of those arguments by a preponderance of the
evidence. (Ans. 12-19.) Therefore, we adopt the Examiner’s findings and
underlying reasoning, which are incorporated herein by reference.
Consequently, Appellants have failed to show error in the Examiner’s
rejections of claims 2-20.
DECISION
We affirm the Examiner’s rejection of claims 1-20 as set forth above.
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

tj