Ex Parte Angeles

Board of Patent Appeals and Interferences

Mar 31, 2008

10013827 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PATRICK ANGELES

Appeal 2007-3567
Application 10/013,8271
Technology Center 2100
____________________

Decided: March 31, 2008
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on Dec. 11, 2001. The real party in interest is Acquire, Inc.
Appeal 2007-3567
Application 10/013,827

I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 31 through 64. Claims 1 through 30 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
According to Appellant, as depicted in Figures 1 and 2, the invention
relates to a method and system for monitoring on-line activities of a user
client device (210) on a service provider’s website (230). (Spec. 1, para.
002.) Particularly, a proxy agent (220) intercepts and captures Hypertext
Transfer Protocol (HTTP) transmissions between the client device (210) and
the server (230). (Id.) Upon capturing an HTTP Uniform Resource Locator
(URL) request from the client device or a URL reply from the server, the
proxy agent (220) stores and analyzes the captured transmission to identify
the nature of the activity. The proxy agent then modifies the captured URL,
and subsequently forwards the transmission to its destination. (Id. 6, para.
021, 034-039.)
Independent claim 31 further illustrates the invention. It reads as
follows:
31. A method for monitoring activity over a client-server computing
network, said method comprising:

capturing a client-server Hypertext Transfer Protocol (HTTP)
transmission related to activity of a user of a client device;

storing said captured client-server HTTP transmission; and

analyzing said captured client-server HTTP transmission in order to
identify an event associated with said activity.

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The Examiner relies on the following prior art to reject the claims on
appeal:

Jelen US 6,129,276 Oct. 10, 2000
Papierniak US 6,151,601 Nov. 21, 2000
Gobin US 6,745,229 B1 Jun. 1, 2004
(filed Sep. 24, 1998)
Grove US 6,820,133 B1 Nov. 16, 2004
(filed Mar. 24, 2000)

The Examiner rejects the claims on appeal as follows:
1. Claims 31 through 35, 37, 46 through 51, 53, and 62 through 64 stand
rejected under 35 U.S.C. § 103 as being unpatentable over the combination
of Papierniak and Gobin.
2. Claims 36 and 52 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Papierniak, Gobin, and Grove.
3. Claims 38 through 45 and 54 through 61 stand rejected under
35 U.S.C. § 103 as being unpatentable over the combination of Papierniak,
Gobin and Jelen.
FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Papierniak
1. Papierniak discloses an e-commerce monitoring system
including a tracking module (300) to collect data related to customers’
activities on the Internet. It also includes a data warehouse storage module
(302) to organize and structure the collected customer activities related data.
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Additionally, it includes an intelligent decision support tool (304) to analyze
and transform the collected data to derive knowledge therefrom. (Col. 8,
ll. 35-48; col. 14, ll. 40-52.)
2. Particularly, Papieniak discloses a SmartEC server (240) that
collects customer activity data from diverse sources on the Internet to
populate a data warehouse. (Col. 12, ll. 41-51.) The collected data includes,
inter alia, (1) the domain name/ IP address of the customer, their ISP and
related DHCP, DNS, NMS, their e-mail, phone number, zip code, address;
(2) what the customers are looking at, what resources they are using; and
(3) the type of transaction, how long the customer spent online, etc.
(Col. 15, l. 25 - col. 18, l. 12.)
3a. Papierniak further discloses when a client device (210) activates
a URL to request a session initiation with a web server (220), the web server
gathers information from the diverse sources in the data warehouse to
respond to the client. (Col. 12, l. 61 - col. 13, l. 15.)
3b. Additionally, Papierniak indicates that the disclosed data
collection and storage processes are focused and therefore favor continuous
data collection and storage efforts over general and discrete efforts. (Col.
13, ll. 26-28.)

Gobin
4. Gobin discloses a web-integrated interface for enabling a customer
to remotely generate invoices pertaining to various service related activities
conducted at a provider’s website. (Abstract.)
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5. Particularly, as depicted in Figure 2, Gobin discloses a browser
(20) running on the customer’s computer through which the customer issues
an HTTP request to a web server (24, 52) via the Internet to initiate a
session. Upon authenticating the customer, the web server forwards the
request to a dispatch server (26), which in turn forwards the message to an
application proxy via a TC/IP socket (27). That is, if the requestor is
authorized to communicate with the target service, the HTTP request is
forwarded to the target service’s proxy, which determines which of the
server resources to give the customer access to, if any. (Col. 7, l. 17- col. 8,
l. 16.)

PRINCIPLES OF LAW
OBVIOUSNESS
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
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1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) wherein evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”).
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41(2007)).
“One of the ways in which a patent's subject matter can be proved obvious is
by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent's claims.”
KSR, 127 S. Ct. at 1742.
Discussing the obviousness of claimed combinations of elements of
prior art, KSR explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. Ag
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
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illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. Where the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that there was “an apparent reason to combine the known elements
in the fashion claimed.” KSR, 127 S. Ct. at 1741. Such a showing requires
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741 (quoting In re
Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006)).
The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art. KSR, 127 S. Ct. at 1740-41. See also Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2007).
We note our reviewing court has recently reaffirmed that:
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the ‘improvement’ is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even
common-sensical—we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves. In
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such situations, the proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable
of combining the prior art references.

See also Leapfrog, 485 F.3d at 1162 (holding it “obvious to combine the
Bevan device with the SSR to update it using modern electronic components
in order to gain the commonly understood benefits of such adaptation, such
as decreased size, increased reliability, simplified operation, and reduced
cost”).
Also, a reference may suggest a solution to a problem it was not
designed to solve and thus does not discuss. KSR, 127 S. Ct. at 1742
(“Common sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle. . . . A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
The prior art relied on to prove obviousness must be analogous art.
As explained in Kahn,
the ‘analogous-art’ test . . . has long been part of the primary
Graham analysis articulated by the Supreme Court. See Dann
[v. Johnston,] 425 U.S. [219,] 227-29 (1976), Graham,
383 U.S. at 35. The analogous-art test requires that the Board
show that a reference is either in the field of the applicant's
endeavor or is reasonably pertinent to the problem with which
the inventor was concerned in order to rely on that reference as
a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992). References are selected as being reasonably
pertinent to the problem based on the judgment of a person
having ordinary skill in the art. Id. (“[I]t is necessary to
consider ‘the reality of the circumstances,’—in other words,
common sense—in deciding in which fields a person of
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ordinary skill would reasonably be expected to look for a
solution to the problem facing the inventor.” (quoting In re
Wood, 599 F.2d 1032 (C.C.P.A. 1979))).

Kahn, 441 F.3d at 986-87. See also In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992) (“[a] reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.”).
In view of KSR’s holding that “any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed,”
127 S. Ct. at 1742 (emphasis added), it is clear that the second part of the
analogous-art test as stated in Clay, supra, must be expanded to require a
determination of whether the reference, even though it may be in a different
field from that of the inventor's endeavor, is one which, because of the
matter with which it deals, logically would have commended itself to an
artisan’s (not necessarily the inventor’s) attention in considering any need or
problem known in the field of endeavor. Furthermore, although under KSR
it is not always necessary to identify a known need or problem as a
motivation for modifying or combining the prior art, it is nevertheless
always necessary that the prior art relied on to prove obviousness be
analogous. See KSR, 127 S. Ct. at 1740. (“The Court [in United States v.
Adams, 383 U.S. 39, 40 (1966)] recognized that when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”) (emphasis added). See also
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Sakraida, 425 U.S. at 280 (“Our independent examination of that evidence
persuades us of its sufficiency to support the District Court's finding ‘as a
fact that each and all of the component parts of this patent . . . were old and
well-known throughout the dairy industry long prior to the date of the filing
of the application for the Gribble patent.’”).

ANALYSIS
Independent claim 31 recites in relevant part capturing a client-server
HTTP transmission related to activity of a user of a client device. Claim 31
also recites storing and analyzing the captured transmission to identify an
event associated with the user activity. (App. Br., Appendix A.) Appellant
argues that the combination of Papierniak and Gobin does not teach these
limitations. (App. Br. 24-28.) Appellant further argues that the proffered
combination is improper since Gobin teaches away from Papierniak.
Additionally, Appellant argues that there is insufficient rationale to combine
the teachings of the cited references to yield the claimed invention. (Id. 28-
29.) In response, the Examiner avers that Papierniak’s disclosure of
capturing, storing, and analyzing user activity data on the Internet, taken in
combination with Gobin’s disclosure of a proxy agent that captures HTTP
requests, teaches the cited limitations. (Ans. 4-5.)
Therefore, the issue before us is whether one of ordinary skill in the
art would have found sufficient rationale to properly combine Papierniak’s
disclosure of collecting and analyzing customer activity data retrieved from
a data warehouse in response to a URL request issued by a customer, with
Gobin’s disclosure of a proxy agent that intercepts a customer HTTP request
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to access a web server, to yield the invention as recited in representative
claim 31. We answer this inquiry in the affirmative.
As set forth in the findings of fact section, Papierniak teaches upon
receiving a URL request from a customer, a web tracker module collects
from diverse sources on the Internet customer activity data, populated in a
data warehouse. (FF 1.) The collected information includes the user DNS,
IP address, e-mail address, ISP. (FF. 2) Papierniak also teaches a decision
support module that analyzes the collected customer activity data to
determine the nature of the customer’s transactions on a service provider’s
website. (FF 1, 3a.) Further, Gobin teaches that upon receiving an HTTP
request from a customer, a proxy agent of a web service provider determines
whether the customer is authorized to access the requested service before
said customer can be allowed to access the requested service. (FF 4-5.)
Therefore, we find that the ordinarily skilled artisan would have appreciated
Gobin’s suggestion of using a proxy agent to intercept an HTTP
transmission such as the URL request initiated by Papierniak’s customer to
predictably result in a proxy agent that analyzes the captured user
information (e.g., IP address, ID, DNS) to determine whether the user is
authorized to access the requested service from the web server. Further, this
combination of teachings would have predictably resulted in identifying the
nature of the user’s activities on the web server, as suggested by Papierniak.
Appellant’s allegation that there is insufficient rationale to combine
the cited references is not persuasive. The Supreme Court has held that in
analyzing the obviousness of combining elements, a court need not find
specific teachings, but rather may consider "the background knowledge
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possessed by a person having ordinary skill in the art" and "the inferences
and creative steps that a person of ordinary skill in the art would employ."
See KSR at 1740-41. To be nonobvious, an improvement must be "more
than the predictable use of prior art elements according to their established
functions." Id. at 1740. As set forth in the preceding paragraph, both
Papierniak and Gobin teach the use of HTTP transmission (URL request) as
a way for a client to submit a request to a web server. Furthermore, Gobin
teaches a proxy agent that intercepts and analyzes the URL request to
determine the customer’s access rights in relation to the web server.
Additionally, Papierniak teaches examining the collected data including the
client’s IP address and login ID to determine the nature of the client’s
activity of the provider’s website. Therefore, intercepting a URL request,
examining it, and determining its nature are prior art elements that are being
used in a conventional e-commerce monitoring system to perform their
established functions to predictably result in the claimed limitations in
question.
Further, Appellant argues that Gobin’s discrete monitoring approach
would render Papierniak’s continuous monitoring approach inoperable for
its intended purpose. Therefore, Appellant concludes Gobin teaches away
from Papierniak. (App. Br. 28-29.) This argument is unavailing.
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000).
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Medichem S.A. v. Rolabo S.L., 77 USPQ2d 1865, 1869 (Fed. Cir. 2006).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). If the proposed modification would render the prior
art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification.
In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984.) Furthermore, our
reviewing court has held that “[a] reference may be said to teach away when
a person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). See also Para-Ordnance Mfg. v.
SGS Importers Int’l, 73 F.3d 1085, 1090 (Fed. Cir. 1995).
In this case, Papierniak merely discloses a preference for continuous
data collection and data storage processes over general and discrete
approaches. (FF 3b.) We do not view the recited textual portions of
Papierniak as an attempt to discredit the discrete approach of collecting
customer activity data. In fact, Papierniak alternatively discloses such
discrete collection of customer data. (FF 3a.) Therefore, Gobin’s discrete
monitoring approach would not render Papierniak’s monitoring system
inoperable for its intended purpose. Alternatively, we note that Gobin’s
discrete monitoring system alone teaches a proxy agent that (1) captures an
HTTP transmission related to a user activity on a client device (URL
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request), (2) stores the captured URL request in its internal buffer, and (3)
analyzes the captured URL request to determine if the customer is
authorized to access the web server. (FF 4-5.) It follows that Appellant has
not shown that the Examiner erred in concluding that the combination of
Papierniak and Gobin renders independent claim 31 unpatentable.
Regarding the rejection of independent claims 47, 63 and 64,
Appellant substantially reiterates the same arguments offered for
patentability of claim 31. We have already addressed these arguments along
with their variations in our detailed discussion of representative claim 31
above, and we did not find them persuasive of error. Similarly, Appellant
has not shown error in the Examiner’s rejection of independent claims 47, 63
and 64.
Appellant does not provide separate arguments with respect to the
rejection of dependent claims 32 through 46 and 48 through 62. Therefore,
we select independent claim 31 as being representative of the cited claims.
Consequently, these claims fall together with representative claim 31.
37 C.F.R. § 41.37(c)(1)(vii).

III. SUMMARY
(1) We affirm the Examiner’s decision rejecting claims 31 through 35, 37,
46 through 51, 53, and 62 through 64 under 35 U.S.C. § 103 as being
unpatentable over the combination of Papierniak and Gobin.
(2) We affirm the Examiner’s decision rejecting claims 36 and 52 under
35 U.S.C. § 103 as being unpatentable over the combination of Papierniak,
Gobin, and Grove.
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(3) We affirm the Examiner’s decision rejecting claims 38 through 45 and
54 through 61 under 35 U.S.C. § 103 as being unpatentable over the
combination of Papierniak, Gobin, and Jelen.

DECISION
We affirm the Examiner’s decision rejecting claims 31 through 64.
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

clj

PETER K. TRZYNA, ESQ.
P.O. BOX 7131
CHICAGO, IL 60680

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