Ex Parte Benson

Board of Patent Appeals and Interferences

Sep 30, 2008

10694509 (B.P.A.I. Sep. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC A. BENSON
____________

Appeal 2008-1257
Application 10/694,509
Technology Center 2100
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Decided: September 30, 2008
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Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
ALLEN R. MACDONALD, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-42, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2008-1257
Application 10/694,509

Definitions
A “cookie” is an updateable token stored in persistent memory on a
user’s (or client’s) machine. When the user initiates a request for a Uniform
Resource Locator (URL), the user’s browser automatically sends the cookie
to the host Web server with the URL request. When sending a response to a
contacting client, the server can update or set new cookies to be maintained
by the client. (See Spec. 1, ¶ [0003].) See also Durham col. 1, l. 35 - col. 2,
l. 67.
“The term ‘schema,’ as used herein, refers generally to the pattern or
arrangement of a collection of data elements.” (Spec. 4, ¶ [0019].)
A “data structure” refers to a set of data elements arranged according
to an organizational scheme. (Reply Br. 3.)

Appellant’s Invention and Rejections over the Prior Art
Appellant’s invention relates to Web site customization using cookies,
and extending the functionality of the cookies. (Spec. 1, ¶ [0002].) Claim 1
is illustrative.
1. A system for servicing web page requests, the system comprising:

a server that responds to user requests for web pages, said server
comprising a memory;

schema data stored in the memory of the server, said schema data
specifying past and present schemas used to encode data structures into
cookies stored on user computers;

a conversion component executed by the server, said conversion
component configured to use the schema data to identify and decode the data
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structures encoded within cookies received from user computers to generate
temporary data structures within the memory of the server; and

application code executed by the server, said application code
configured to use the temporary data structures to customize web pages
requested by the user computers.

The Examiner relies on the following references as evidence of
unpatentability.
Goldberg US 5,907,847 May 25, 1999
McDonough US 5,991,878 Nov. 23, 1999
Durham US 6,330,566 B1 Dec. 11, 2001

Claims 1-15, 17-28, and 30-42 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Durham.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Durham and McDonough.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Durham and Goldberg.

Independent claims (1, 18, 28, and 39) -- Section 102 rejection
Appellant alleges that Durham does not disclose the encoding of data
structures into cookies, or the use of schema data to do so, as required by
instant claim 1.
Durham depicts, at Figures 4 and 5, a cookie and a process for its
generation. A user (client) elects particular preferences relating to Web page
content. The preferences are stored in a (server) database, as well as

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encoded into a cookie. Durham col. 9, ll. 33-52. The server can also
generate a cookie based on prior data in the database. See, e.g., col. 8, ll.
13-18.
Durham thus describes the encoding of data structures into cookies;
i.e., the encoding of a set of data elements arranged according to an
organizational scheme.
Appellant seems to argue (e.g., App. Br. 7) that the “cookie data
structure” in claim 5 of Durham does not mean “cookie data structure.”
First, we note that essentially all of the Durham claims recite a “data
structure” in reference to the described cookie. Second, we disagree that the
data structure is not encoded in the cookie. According to Appellant, “even if
the cookie as a whole can be considered a ‘data structure,’ it does not
necessarily follow that one or more data structures are encoded in the
cookie.” (App. Br. 7.) However, regardless of what may “necessarily
follow,” and regardless that claim 1 does not require “one or more” data
structures encoded in a cookie, Durham describes encoding one or more data
structures in a cookie. See, e.g., Durham col. 3, ll. 55-64; col. 10, ll. 46-59.
Appellant’s main argument in defense of claim 1, however, appears to
be that Durham does not use “schema data” to encode the data structures.
As the Examiner indicates, the claimed “schema data” is broader than
the examples in the Specification of a schema file, table, or other data
structure. (See Spec. 4, ¶ [0019].) “Schema data” may refer, for example,
simply to data that might be suitable for use in a schema file, table, or other
data structure, or simply to data used in determining the pattern or
arrangement of a collection of data elements. The claims measure the
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invention. See SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121
(Fed. Cir. 1985) (en banc). Our reviewing court has repeatedly warned
against confining the claims to specific embodiments described in the
specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(en banc). During prosecution before the USPTO, claims are to be given
their broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “An
essential purpose of patent examination is to fashion claims that are precise,
clear, correct, and unambiguous. Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative process.”
In re Zletz, 893 F.2d at 322.
Thus, while Durham does not refer verbatim to a schema file, table, or
other data structure, Durham does use data to determine the arrangement of
data elements in a cookie. Appellant acknowledges as much -- “Durham
discloses a system in which the schema is fully specified by, or ‘hard coded’
in, the executable program code used to decode the received cookies.”
(Reply Br. 3.) “Durham uses an approach in which the schema is embodied
within the executable program instructions.” (Reply Br. 5-6.)1
Whether the data is contained in a table or other data structure, or
scattered throughout the software at the server, Durham’s system contains
data that determines the pattern or arrangement of the collection of data

1 Although not required for consideration of claim 1, we observe that, for
Durham’s system to make sense of received cookies, the same data would be
used for both generation and decoding of the cookies.
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elements in the generated cookies. As Appellant also acknowledges: “All
software is divided into two general categories: data and programs.
Programs are collections of instructions for manipulating data.” (Reply Br.
2.) As examples, and for the purposes of claim 1, the version number 200
(Durham Fig. 4) and the field delimiters (“!”) are schema data. The version
number and the delimiter reside in server memory before the information is
placed in the generated cookie; else, the server could not place the
information into the cookie.
Appellant’s claim 1 is not specific about the form of the “schema
data.” The claim is not overly specific with respect to where the “schema
data” resides -- it resides “in the memory of the server.” We thus agree with
the Examiner that Durham describes using “schema data” to identify and
decode data structures encoded in cookies within the requirements of instant
claim 1.
The executable portion of the code that Appellant acknowledges
Durham to describe is sufficient to meet the terms of the “conversion
component” of claim 1. Code within the response page (an Active Server
Page, or ASP, file) disassembles the cookie and uses its contents to generate
the Web page according to user preferences stored in the cookie. Durham
col. 10, ll. 9-11. The server can assemble data in server memory and modify
the data using an ASP file. Col. 9, ll. 4-16. The ASP code determines
cookie creation and allows server-side processing. The code may be
interpreted on the server and the results (e.g., an HTML or Web page) sent
to the client. Col. 7, ll. 34-50.

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Claim 1 recites that the conversion component is “configured to” use
the schema data to identify and decode the data structures encoded within
cookies received from user computers “to generate temporary data structures
within the memory of the server.” We note that the claim does not require
that the “temporary” data structures be the same data structures encoded
within the cookies. In any event, although Durham does not use the term
“data structure” when describing the generation of data in server memory
when using cookie contents to produce a Web page, a “data structure”
simply refers to a set of data elements arranged according to an
organizational scheme, which is the way all data is properly stored in
physical memory. Else, the data could not be found for retrieval from the
memory. For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832 (Fed. Cir. 1990).
Claim 18 differs from claim 1 in the feature of decoding the encoded
data structure to reproduce the data structure within a memory of the server
depending upon the determined validity of the data structure encoded within
the cookie data. The reference provides more than adequate support for the
Examiner’s finding that either of Durham’s description of determining that
cookie contents are incomplete or damaged (col. 8, ll. 13-18), or treatment of
the version number in the cookie (col. 10, ll. 12-16; Figs. 4 and 5, ref. num.
200), meets the terms of claim 18.

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Instant claim 28 is drawn to a method of encoding, rather than
decoding, data structures in cookies. In addition to the arguments we have
previously considered, Appellant submits, without explanation, the odd
allegation that the term “data structure” is “properly construed in Claim 28
to mean a set of data elements arranged according to an organizational
scheme that is not the result of the cookie generation process.” (App. Br.
13.) In any event, in view of the claim 28 that Appellant submits in the
Appeal Brief claim appendix (and reproduces in the Appeal Brief on page
13), we are not persuaded of error in the Examiner’s finding of anticipation.
Appellant’s arguments in support of claim 39 are based on the
untenable position that Durham fails to describe “schema data.” We agree
with the Examiner that the different version numbers of the cookie encoding
described by the reference means, to the skilled artisan, that schema data is
modified over time consistent with the claim 39 requirements. “A reference
anticipates a claim if it discloses the claimed invention ‘such that a skilled
artisan could take its teachings in combination with his own knowledge of
the particular art and be in possession of the invention.’” In re Graves, 69
F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936
(CCPA 1962)).
We have considered all of Appellant’s arguments in response to the
rejection of claims 1, 18, 28, and 39 as being anticipated by Durham. We
are not persuaded of error in the Examiner’s finding of anticipation. We
thus sustain the rejection. According to Appellant’s grouping of claims in

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the Appeal Brief, dependent claims 3, 11-15, 17, 20, 21, 23, 25-27, 30,
32-34, and 36-38 fall with the respective base claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Dependent claims -- Section 102 rejection
Appellant submits remarks under numerous separate headings in the
Appeal Brief addressing dependent claims rejected under § 102(e) over
Durham. We refer to the Examiner’s findings in the Answer in support of
the rejection, which include findings in response to Appellant’s remarks in
the Appeal Brief that refer to multiple sections of Durham that Appellant
fails to address. Moreover, many of Appellant’s remarks in nominal support
of dependent claims seem based on the premise that Durham does not
describe “schema data” as claimed, or on an unduly narrow definition of the
term “data structure.” We are not persuaded of error in the rejection of any
claim. We thus sustain the rejections, but add the following observations for
emphasis.
With respect to claims 2, 4, and 31, Durham’s conversion component
is also “not specific to a particular type of data structure,” and the schema
data specifies the content and format of multiple data structures, because as
we have noted, several different types of data structures are encoded (e.g.,
col. 3, ll. 55-64; col. 10, ll. 46-59).
With respect to claim 8, we do not place any weight on what the
schema data “includes information about” because the information does not
modify any machine or substrate in the claimed “system,” and in fact is not
put to any use at all. The content of nonfunctional descriptive material is not
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entitled to weight in the patentability analysis. Cf. In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information
content of a memory. . . . Nor does he seek to patent the content of
information resident in a database.”). See also Ex parte Nehls (BPAI Jan.
28, 2008), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf; Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent Examining
Procedure (MPEP) § 2106.01 (Eighth ed., Rev. 7, Jul. 2008).
Appellant in the Reply Brief contests the Examiner’s finding that
Durham describes (claim 35) cookie generation in “an off-line mode to
reduce a delay experienced by a user.” As we have indicated previously,
Durham discloses cookie generation without the user being required to re-
enter all the requisite data (e.g., col. 7, ll. 59-63; col. 8, ll. 13-18). We agree
with the Examiner that Durham describes generation in an off-line mode to
reduce a delay experienced by a user within the meaning of claim 35.
Appellant also contests the Examiner’s findings in support of the
rejection of claims 40 and 41 in the Reply Brief.
We agree with the Examiner that Durham’s description of using
cookie version numbers, to one skilled in the art, anticipates the claim 40
step that includes an unspecified “set of rules” to modify schema data.
Claim 40 does not specify what, or who, modifies the schema data. Claim
40 does not specify where the “set of rules” may reside. Claim 40, in fact,
does not require that the “set of rules” reside on any tangible medium. Nor
does the claim specify whether the rules are known a priori or become
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apparent only after modification of the schema data. In any event, we
disagree with Appellant’s premise that Durham fails to disclose executable
code and schema data. Further, we agree with the Examiner that the server
itself in Durham is a “management layer” for all that claim 41 requires.

Dependent claims -- Section 103 rejection
In response to the § 103(a) rejections of claims 16 and 29, Appellant
relies on the arguments we have considered in the § 102 rejection applied
against base claims 1 and 28. As Appellant has not demonstrated error in
the rejection of claim 1 or claim 28, Appellant has not demonstrated error in
the rejection of claim 16 or claim 29. We sustain the rejections.

CONCLUSION
For the foregoing reasons, we affirm the § 102(e) rejection of claims
1-15, 17-28, and 30-42 and the § 103(a) rejections of claims 16 and 29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

pgc

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