Ex Parte Bennett

Patent Trial and Appeal Board

Sep 30, 2016

12422499 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/422,499 04/13/2009 James D. Bennett
25883 7590 10/04/2016
HOWISON & ARNOTT, L.L.P
P.O. BOX 741715
DALLAS, TX 75374-1715
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RPXC-32934 6800
EXAMINER
ORTIZ, DERIC OMAR
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
patents@dalpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES D. BENNETT
Appeal2013---001379
Application 12/422,499
Technology Center 2100
Before BRADLEY W. BAUMEISTER, DAVID M. KOHUT, and
BRETT C. MARTIN, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART the Examiner's rejection of these claims and
enter a NEW GROUND OF REJECTION pursuant to our authority under
37 C.F.R. § 41.50(b).
INVENTION
The invention is directed to devices and methods to implement a
network browser that supports the display of historical hypertext and other
Appeal2013---001379
Application 12/422,499
links. Abstract. Independent claims l and 21, reproduced below, are
illustrative of the invention:
1. A client device configured to implement a network browser
adapted to access web pages and documents from [the] Internet
and from a search engine server, the client device comprising:
a communication interface;
a memory comprising at least a portion of a
network browser and a historical timeline support
module; and
a processing circuitry coupled to the
communication interface and to the memory, the
processing circuitry, memory, and communication
interface operable to:
receive a request from a user of the client
device to retrieve a web page or a document from
the Internet, send the request to a host server,
receive information back from the host server
and wherein the host server generates a page not
found error,
respond to the generation of page not found
error by redirecting the request to the search engine
server to attempt to obtain an as-of-this-date web
page or document, and
receive and display the as-of-this-date web
page or document in response to the page not found
error.
21. A method performed by a search engine server that supports
delivering of as-of-this-date web pages and documents over a
network, the method comprising:
providing search result links in a search list
to [a] user in response to a search request by the
user;
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Application 12/422,499
allowing the user to select historical archived
content options to satisfy the search request when
current content is not available on the network, and
where the historical archived content options are
selected from a plurality of options;
redirecting the request to the search engine
server if a search error occurs when trying to find
the current content;
receiving a current web page from [a] host
server or receiving an as-of-this-date web page from
a document and web page retrieval module
incorporated into the search engine server
depending upon the option chosen; and
displaying the received web page as either the
current web page or the as-of-this-date web page,
with version identification. 1
1 We note that method claim 21 contains multiple instances of conditional
language. Specifically, the claim's allowing step requires "allowing the user
to select historical archived content options to satisfy the search request"
only on the condition of "when current content is not available on the
network, and where the historical archived content options are selected from
a plurality of options." Similarly, claim 21 requires performing the step of
"redirecting the request to the search engine server" only on the condition of
"if a search error occurs." Lastly, claim 21 further lists an option of
receiving either a current web page or receiving an as-of-this-date web page.
As such, claim 21 reads on a method that merely entails providing search
result links in a search list to a user; and if current content is available,
receiving a current web page from a host server; and displaying the received
web page. Upon further prosecution, the Examiner should consider whether
claim 21 is anticipated or rendered obvious by a conventional, successful
search protocol, according to this broader interpretation of the claim.
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Application 12/422,499
Schneider
Fawcett
Chen
Bennett
Wong
REFERENCES
US 7,010,568 Bl
US 2007/0038641 Al
US 2007 /0288589 Al
US 2009/0287658 Al
US 2011/0066607 Al
REJECTIONS AT ISSUE
Mar. 7, 2006
Feb. 15,2007
Dec. 13, 2007
Nov. 19, 20092
Mar. 17, 2011
Claim 1 stands provisionally rejected under the judicially created
obviousness-type double patenting doctrine as being unpatentable over
claim 1 of Bennet. Ans. 3; Final Act. 3-5.
Claims 1-5, 8-9, and 11-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Chen and Schneider. Ans. 3;
Final Act. 7-19.
Claims 7, 10, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Chen, Schneider, and Wong. Ans. 3;
Final Act. 19-22.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Chen, Schneider, and Fawcett. Ans. 3; Final Act. 22-24.
THE PROVISIONAL DOUBLE PATENTING REJECTION
Appellant states that he disagrees with the provisional obviousness-
type double patenting rejection of claim 1 over Bennet, but presents no
substantive arguments in relation to this rejection. App. Br. 8.
2 Subsequent to the filing of Appellant's Reply Brief, Bennet issued as
US 8,661,008 B2 on February 25, 2014.
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Application 12/422,499
We decline to reach the merits of this prov1s10nal rejection because
doing so would be premature. For the reasons explained below, we sustain
the Examiner's rejection of claim 1. Accordingly, further prosecution of the
present application may render this rejection moot. Likewise, the rejection
may also be rendered moot if Appellant were to file a terminal disclaimer.
See id. (stating that a terminal disclaimer will be provided as appropriate).
CLAIMS 1-20
Appellant presents arguments only for independent claims 1 and 19
and states that dependent claims 2-18 and 20 are allowable for at least the
same reasons as claim 1 and 19. App. Br. 11, 12. We therefore limit our
discussion to claims 1 and 19.
Findings and Contentions
Regarding independent claim 1, the Examiner finds that Chen teaches
almost all of the elements of the claimed invention, including providing
archived web page content in place of current web page content when an
archived version of the web page exists, and giving the user the option of
displaying a current version, locally archived version, or older version of a
web page. Final Act. 8 (citing Chen i-fi-f 10, 23, Abstract). The Examiner
further finds that Chen fails to disclose responding to a page not found error
by redirecting the request to the search engine server, or receiving and
displaying as-of-this-date web pages in response to page-not-found errors
(Final Act. 9), but that Schneider teaches generating another address in
response to an error received when a valid address is not accessible (id.).
More specifically, the Examiner relies on Schneider for redirection to
the server following receipt of a page not found error. The Examiner finds
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Application 12/422,499
that Schneider discloses responding to a page not found error by redirecting
the request to a search engine server. Final Act. 9 (citing Schneider col. 8,
11. 24--34, 45-55). According to the Examiner, Schneider does this by
generating a search query from keywords in the inaccessible, valid address
and "using such keywords as a search request or as the query portion of the
generated valid [address]." Final Act. 9 (citing Schneider col. 8, 11. 31-32).
The Examiner finds that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify Chen
to respond to a page not found error code by redirecting the request to the
search engine server, as taught by Schneider, to provide the archived web
page content, as taught by Chen, for the purpose of improving data retrieval
of archived content. Final Act. 9. Thus, the Examiner finds that the
combination of Chen and Schneider renders independent claim 1
unpatentable.
Appellant agrees that Schneider "describes responding to [an error
message] by redirecting and displaying a generic web page informing the
user of the error 404 code, or generating a valid URI by creating appropriate
directories." Id. at 10 (emphasis added). But Appellant argues that
Schneider does not "provide any teaching or suggestion about redirecting a
request to a server." App. Br. 9. More specifically, Appellant argues that
the cited portions of Schneider "merely explain that a valid URI can be
generated when a valid URI is not accessible" and "discusses actions taken
when an error message is returned from a web server," but "does not provide
any teaching or suggestion about redirecting the request to the search engine
server in an attempt to obtain an as-of-this-date web page or document, as
recited by claim 1." Id. at 9-10.
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Application 12/422,499
Analysis
Appellant's arguments hinge on whether the redirection following
receipt of an error code in Schneider is to the same web server used by the
initial request versus being to a different "search engine server in an attempt
to obtain an as-of-this-date web page or document." App. Br. 10.
Appellant's arguments are unpersuasive.
As a threshold matter, we note that Appellant uses the term "server"
to mean one server or a server system comprised of many linked servers.
See Spec. 7, 11. 3--4 (stating that in some embodiments, the host server and
the search-engine server "are one and the same or two or more servers linked
in the same data room"). As such, Appellant's arguments are unpersuasive
for at least this reason.
But even if we were to accept Appellant's argument that the host
server and the search engine server must be distinct, which we do not,
Schneider discloses that "[t]he network 130 may use Internet
communications protocols (IP) to allow clients 110 to communicate with
[plural] servers 120." Schneider col. 6, 11. 13-15 (emphasis added).
Schneider discloses "[fJurthermore, [that] such server systems 120 may also
include one or more search engines having one or more databases 124." Id.
at col. 7, 11. 11-16 (emphasis added).
This disclosure implies that in at least some situations, the search-
engine server in Schneider that attempts to obtain an as-of-this-date web
page or document could be distinct and separate from the host server that
returned the error. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418, 421
(2007) ("a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ .... We note the Court of
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Application 12/422,499
Appeals has since elaborated a broader conception of the TSivI test than was
applied in the instant matter.").
Appellant argues in the Reply Brief that "[ w ]hile ... Schneider
teaches sending a search request to a server and redirecting a user's browser
to various pages/URLs, at no point does the [cited] portion explicitly or
necessarily teach redirecting a search request, originally sent to a first server,
to a different server." Reply Br. 5---6 (emphasis added). This argument is
not persuasive because it is not commensurate in scope with the claim
language or the basis of the rejection. Claim 1 does not require that a device
necessarily redirect to a different server in every situation. To find claim 1
obvious, it is sufficient that Schneider's system redirect to a different server
in at least some situations. And Appellant does not provide sufficient
reasoning or evidence to rebut the Examiner's finding that one of ordinary
skill in the art would infer from reading Schneider that Schneider's system
could redirect to a separate server in at least some situations.
Thus, Appellant's arguments do not show any error in the Examiner's
findings. We therefore sustain the Examiner's rejection of independent
claim 1, as well as dependent claims 2-5 and 7-18.
Appellant does not present separate substantive arguments for
independent claim 19, but instead relies on the arguments presented for
claim 1. App. Br. 11-12. Therefore, for the reasons indicated above, we
likewise sustain the Examiner's rejections of claim 19, as wen as dependent
claim 20, which was not argued separately. App. Br. 12.
Regarding dependent claim 6, rejected as obvious further over
Fawcett, Appellant presents no separate arguments. Appellant instead states
that claim 6 rises and falls with independent claim 1. App. Br. 11.
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Application 12/422,499
Accordingly, we sustain the obviousness rejection of claim 6 for the reasons
set forth above.
Claim 21
Contentions
The Examiner finds that the combination of Chen and Schneider
teaches all of the elements of the claimed invention, as discussed above with
regard to claim 1. According to the Examiner, though, the combination fails
to teach or suggest providing search-result links in the search list to a user in
response to a search request by the user, and also fails to disclose a
document and web page retrieval module incorporated into the search engine
server. Final Act. 21-22. The Examiner relies on Wong to teach these
missing limitations. Final Act. 21-22.
In addition to the arguments presented in relation to claim 1
(discussed above), Appellant also argues that "Wong does not teach or
suggest 'receiving a current web page from host server or receiving an as-of-
this-date web page from a document and web page retrieval module
incorporated into the search engine server depending upon the option
chosen', as recited by amended Claim 21." App. Br. 14. Appellant further
states that "Wong does not suggest providing options that determine whether
the server receives non-current (e.g.[,] as-of-this-date) web pages from one
server or current web pages from another server." App. Br. 14. We agree.
Wong discloses a method and system for interacting with a server and
generating a list of search results. See Wong, Abstract. Specifically, Wong
discloses a search engine that has a database of historical data from past
searches and a cache database of data from past searches where the search
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Application 12/422,499
engine receives a search term and determines if either of the databases
provides any results of a similar past search term or results (characteristics
of the webpages selected from the search results data and human interaction
data). Wong i-f 72. Then, if received, the results are ranked based on the
data from the past searches and transmitted back to the client and displayed.
Id.
No web pages are returned or stored as part of the search results.
Only a list of web pages are returned in the search results and only the
characteristic data (user data, operating system data, location data, language
data, etc.) from that search is saved. Nor is there an option for current or
historical data. As a result, the Examiner fails to show how Wong teaches a
search engine that has a database of historical data and a cache database
where the search engine receives a search term and determines if either of
the databases provides any results, then if received, the results are ranked
and transmitted back to the client and displayed.
Therefore, for the reasons indicated above, we do not sustain the
Examiner's rejection of claim 21 as unpatentabie over the combination of
Chen, Schneider, and \Vong.
However, this conclusion does not end our analysis. While we agree
with Appellant that the Examiner failed to show that Wong teaches the
disputed limitations of claim 21 indicated above, the combination of Chen
and Schneider, alone, does teach these limitations. Specifically, Chen
teaches a user transmitting a network address via a browser where the user is
then asked if the user would like to display current or archived content if it is
available. Chen i-fi-129-30. Links for the content are shown in either a pull-
down or pop-up menu to allow the user to select current or archived
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Application 12/422,499
historical content options. Id. i144. Depending upon the option chosen,
Chen's host server or the database returns either a current or historical
webpage or document and displays the received web page or document with
version identification. Chen i-fi-123, 29-32; see Fig. 3.
Schneider teaches where in response to an error code due to content
not being available, a page or document request is redirected to a search
engine server that, instead of returning an error code, uses keywords from
the unavailable address to find an available address to satisfy the search.
Schneider col. 8, 11. 24--34, 45-55. Incorporating the response-to-error-code
method of Schneider (where in response to an error, a search is performed
using bits from the unavailable web address) into the system of Chen, the
ultimate error return or a valid generated address will be different from the
stored content. The system will then prompt the user to make a selection for
either current content, if available, or archived content, if available, as taught
by Chen. At the time of the invention, then, it would have been obvious to
one of ordinary skill in the art to modify Chen to include Shneider's search
engine server request method and error code redirection to provide the
archived web page content of Chen, and thereby improve how resources and
content may be accessed.
We designate our analysis to be a new ground of rejection of
independent claim 21under35 U.S.C. § 103(a) as unpatentable over Chen in
view of Schneider.
DECISION
The Examiner's decision to reject claims 1-20 under 35 U.S.C.
§ 103(a) is affirmed.
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Application 12/422,499
The Examiner's dec1s10n to reject claim 21under35 U.S.C. § 103(a)
as unpatentable over the combination of Chen, Schneider, and Wong is
reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION for claim 21under35 U.S.C. § 103(a) as
unpatentable over the combination of Chen and Schneider.
TIME PERIOD
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Rule 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 CPR§ 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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