Ex Parte Brown et al

Patent Trial and Appeal Board

Aug 24, 2018

11923854 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
11/923,854
60683 7590
Robert Bosch LLC
FILING DATE
10/25/2007
08/27/2018
1800 W. Central Road
Mount Prospect, IL 60056
FIRST NAMED INVENTOR
Stephen J. Brown
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.
07-0096 1265
EXAMINER
NAZAR, AHAMED I
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
08/27/2018 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 STEPHEN J. BROWN and KONSTANTIN OTHMER
Appeal2018-000101
Application 11/923,854
Technology Center 2100
Before ALLEN R. MACDONALD, JOSEPH P. LENTIVECH, and
NABEEL U. KHAN, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 2, 4--11, 13-15, and 18-24. Claims
3, 12, 16, and 17 have been canceled. See App. Br. 34--36 (Claims App'x).
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Robert Bosch
Healthcare Systems, Inc. App. Br. 3.
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Application 11/923,854
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to determining the information
contents of document portions of a document sent over a communications
network and replacing undesired document portions with substitute
document portions or inserting substitute document portions. Spec. 2.
Claim 1, which is illustrative, reads as follows:
1. A system for generating documents, said system
compnsmg:
a first unit comprising a processor and a display unit that
generates a first request for a first document;
a first server that receives said first request and generates
said first document comprising at least one identifier and at least
one information portion, wherein said at least one identifier
denotes said at least one information portion contained in said
first document;
a second unit that is separate from said first unit and said
first server, wherein said second unit receives said first document
from said first server and generates a second request for a second
document based on said at least one identifier, wherein said
second request is further based on an undesired portion of said
first document, wherein said second unit is integrated with a
document processing device that receives a processing order
from said second unit;
a second server that receives said second request from said
document processing device and generates said second
document; and
a user profile bank that stores user profile information such
that said second document is generated based on information
contained in said user profile bank, and said user profile bank is
connected to said first server,
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wherein said second server comprises information which
is not requested by said first unit through said first request,
wherein said second server comprises user desired
information, wherein said user desired information is user
selectable,
wherein said second document is similar in size to said
undesired portion of said first document,
wherein said document processing device receives said
second document from said second server, processes said first
document and said second document to generate a third
document based on said processing order, and sends said third
document to said first unit for viewing on said display unit,
wherein the processing comprises swapping said undesired
portion of said first document with said second document,
wherein said user profile information comprises statistical
information compiled about a user, and
wherein said user desired information comprises health
related information, warning information, and general advisory
information.
References
The Examiner relies on the following prior art in rejecting the claims:
Merriman et al. us 5,948,061 Sept. 7, 1999
Moshfeghi et al. us 6,076,166 June 13, 2000
Granik et al. US 2002/0010757 Al Jan.24,2002
Gupta et al. US 6,487,538 Bl Nov. 26, 2002
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Re} ections2
Claims 1, 2, 4--11, 13, and 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Merriman, Granik, Gupta,
and Moshfeghi. Final Act. 2-14.
Claims 14, 15, and 18-23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Merriman, Granik, and Gupta.
Final Act. 2, 10-12.
ANALYSIS
Appellants do not substantively argue independent claims 1, 14, 22,
and 23 separately, but instead rely on the same arguments for all of these
claims. See App. Br. 16-22. Claims 7, 10, 11, 15, 19, and 24 which depend,
directly or indirectly, from claims 1 and 14, are also not separately argued
with particularity. See App. Br. 23, 26, 29, and 30. We select claim 1 as
representative. Accordingly, independent claims 14, 22, and 23; and
dependent claims 7, 10, 11, 15, 19, and 24 stand or fall with claim 1. 37
C.F.R. § 4I.37(c)(l)(iv).
2 In the Amendment After Final, filed December 8, 2013 ("Amendment"),
claim 1 was amended to include the limitations recited in claim 12 and
claims 3, 12, and 16 were cancelled. Amendment 3, 4, 6. These
amendments were subsequently entered by the Examiner. See Advisory
Action, mailed December 30, 2013. Accordingly, we address claim 1; and
claims 2, 4--11, 13, and 24, which depend, either directly or indirectly
therefrom, as being rejected based on Merriman, Granik, Gupta, and
Moshfeghi and we do not address the Examiner's rejections of claims 3, 12,
and 16.
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Appellants present additional arguments for patentability of claims 4--
6, 8, 9, 13, 18, 20, and 21. See App. Br. 23-30. We address these
arguments below under separate subheadings.
Claim 1
Contention 1
Appellants contend the combination of Merriman, Granik, Gupta, and
Moshfeghi does not teach or suggest "a second server that receives said
second request from said document processing device and generate[ s] said
second document," as recited in claim 1. App. Br. 16; Reply Br. 11-12.
Appellants argue Merriman's advertising server process "is not patentably
analogous to the Appellant's 'second server' since there is no teaching for an
actual server in Merriman, but rather a process." App. Br. 16 ( citing
Merriman 3:35-38); see also Reply Br. 11. Appellants further argue:
FIG. 1 of Merriman and the associated description in the
specification refer specifically to an advertising server process,
and FIG. 2 of Merriman refers to an ad server architecture.
However, except for a database 54, all of the other components
in FIG. 2 are software-enabled processes. This is significant
because the Appellant is specifically claiming ( with support in
the Appellant's specification) an arrangement and
interrelationship amongst various hardware-enabled components
in a system ( e.g., a first unit comprising a processor and a display
unit, a first server, a second unit, a document processing device,
and a second server).
Reply Br. 11-12.
We do not find Appellants' arguments persuasive. Merriman teaches
"[ w ]hen a user using a browser accesses or 'visits' a web site of an affiliate,
an advertisement provided by the advertisement server 19 will be
superimposed on the display of the affiliate' s web page displayed by the
user's browser." Merriman 2:65-3: 1 ( emphasis added). Additionally,
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Merriman describes the advertisement server as "a particular node on the
Internet." Merriman 4: 15. Accordingly, we are not persuaded the Examiner
erred.
Contention 2
Appellants contend the combination of Merriman, Granik, and Gupta
fails to teach or suggest "a second unit that is separate from said first unit
and said first server, ... wherein said second unit is integrated with a
document processing device that receives a processing order from said
second unit," as recited in claim 1. App. Br. 17-22; Reply Br. 12-13.
Appellants argue Gupta's proxy server does not teach or suggest the claimed
"second unit" because "there is no teaching in Gupta of a separate
'document processing device' being integrated with the proxy server" and
"Gupta reveals no teaching or suggestion whatsoever of a 'document
processing device;' such a feature is merely assumed by the [Examiner]."
App. Br. 17; see also Reply Br. 12. According to Appellants, "it remains
well-settled law that obviousness requires at least a suggestion of all of the
features in a claim. App. Br. 22 ( citing CFMT, Inc. v. Yieldup Intern. Corp.,
349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985
( CCP A 197 4) ). Appellants argue because Gupta does not teach or suggest
that the proxy server includes a document processing device, the cited
references fail to teach or suggest the disputed limitations. App. Br. 22.
We do not find Appellants' arguments persuasive. In the Appeal
Brief, Appellants rely on item 62 in Figure 1, item 210 in Figure 3 and
paragraphs 45 and 60 for supporting "wherein said second unit is integrated
with a document processing device," as recited in claim 1. App. Br. 6.
Paragraph 45 provides "[a] swapping device 62, preferably integrated with
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controller 60 as shown [in Figure 1 ], is also provided to receive a swap order
which controller 60 issues when information portion 42 of a packet 40 has
an undesirable content." The Specification provides that the swap order is
used "to procure substitute document portion 110 from substitute document
server 34." Spec. ,r 58. Paragraph 60 provides "[a] controller 208, most
conveniently a proxy server, is connected directly to a number of lines 204
on which the document portion swapping or insertion function is desired"
and "[a] swapping mechanism 210 is connected to controller 208 and, in a
particularly convenient embodiment, can be integrated with the circuitry of
controller 208 and service provider 202." The Specification provides that
the operation of the controller 208 and swapping mechanism 210 is
analogous to that of the controller 60 and swapping device 62. Spec. ,r 63.
Accordingly, the broadest reasonable interpretation of a "document
processing device," consistent with Appellants' Specification, includes a
device (e.g., a proxy server) that procures substitutable content (e.g., an
advertisement) to be inserted into a document.
The Examiner finds (Ans. 16), and we agree, Gupta teaches "Internet
Service Providers (ISPs) or proxies owned by an ISP insert advertisements
that are transmitted from a web host to client" and "[t]he inserted
advertisement may be an advertisement that is stored in the proxy's cache or
may be retrieved from a web server for an advertiser" (Gupta 6: 11-13, 14--
17). Accordingly, we are not persuaded the Examiner erred.
Contention 3
Appellants further contend the combination of Merriman, Granik, and
Gupta is improper. App. Br. 17-20; Reply Br. 13. Appellants argue the
combination is improper because:
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[The Examiner] relies on Gupta's proxy server to allegedly
support the combination of Merriman, Granik, and Gupta.
However, a document processing device being integrated with
Gupta's proxy server is absent from Gupta and is only present in
the Appellant[s'] specification and claimed language. Due to the
lack of the document processing device being integrated in
Gupta's proxy server and the fact that such a feature is only
present on the record in Appellant[s'] specification and claimed
language, it logically follows that the conclusion reached in the
Final OA [Office Action] has been improperly gleaned from
Appellant[s'] own specification and that the combination of
Merriman, Granik, and Gupta is an exercise of impermissible
hindsight.
App. Br. 19--20. Appellants further argue the combination is improper
because Gupta teaches away from the claimed second unit integrated with a
document processing device. App. Br. 18. In particular, Appellants argue:
Gupta offers no teaching or suggestion of integrating a document
processing device in its proxy server. Gupta only teaches a cache
as being part of its proxy server. However, one of ordinary skill
in the art would recognize a cache in Gupta's context is merely
and only a memory component that stores data, but does not
conduct or perform any processing whatsoever. Conversely, the
Appellant[ s] claim[] a "second unit that is integrated with a
document processing device that receives a processing order
from said second unit." Col. 2, lines 40-48 of Gupta actually
teach away from the Appellant[s'] claimed features as it pertains
to the document processing device as Gupta specifically defines
how a cache (or caching) works in the context of Gupta's
invention ( e.g., purely as a memory device, and not a processor
or processing device).
App. Br. 18. Appellants also argue the combination of Merriman, Granik,
Gupta, and Moshfeghi is improper because the Examiner fails to provide
"some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." App. Br. 20 (citing MPEP § 2141 III). In
this regard, Appellants argue the Examiner "does not explain why the
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elements missing from the proposed combination would have been obvious to
one [ ofJ ordinary skill in the art" and, therefore, the Examiner fails to provide
"a clear articulation of the reason(s) why the claimed invention would have
been obvious in view of the cited references." App. Br. 20.
Because, for the reasons discussed supra, we disagree with the
premise of Appellants' arguments (i.e., that Gupta fails to teach or suggest a
second unit that is integrated with a document processing device that
receives a processing order from said second unit), we are not persuaded by
the conclusions drawn from that premise (i.e., that the combination is based
on impermissible hindsight; that Gupta teaches away from the claimed
invention; that the does not provide "a clear articulation of the reason(s) why
the claimed invention would have been obvious in view of the cited
references"). Further, the Examiner provides articulated reasoning with
some rational underpinning for combining the references (Final Act. 6-7, 8),
which Appellants' arguments do not persuasively address. Accordingly, we
are not persuaded the Examiner erred in combining the cited references.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1 and claims 7, 10, 11, 14, 15, 19, and 22-24, which fall with
claim 1.
Claim 4
Appellants contend the combination of Merriman, Granik, Gupta, and
Moshfeghi fails to teach or suggest "wherein said second document is
generated based on content of said first document," as recited in claim 4.
App. Br. 23-24; Reply Br. 16-17. According to Appellants, Merriman
teaches "a unique identifier in the first document based on which the
advertisement object is retrieved from an advertisement server." App.
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Br. 23. Appellants argue retrieving an advertisement object based on a
unique identifier in the first document, as taught by Merriman, "deviates
from the preferred or desirable content created based on the undesired
content present in the received first document as claimed by Appellant[s]."
App. Br. 23-24; see also Reply Br. 16.
We do not find Appellants' arguments persuasive. We agree with the
Examiner (Ans. 17) that Merriman teaches the advertising server process
determines an appropriate advertisement to select for the particular user
"[u]sing the address information and/or other information passed by the
browser for the user, including the page being accessed [ e.g., the first
document]" (Merriman 2:24--30 ( emphasis added)).
According, we are not persuaded the Examiner erred in rejecting
claim 4.
Claim 5
Appellants contend the combination of Merriman, Granik, Gupta, and
Moshfeghi fails to teach or suggest "wherein said first document comprises
substitutable content comprising any of undesired content, unused content,
and targeted content selected for replacement," as recited in claim 5. App.
Br. 24; Reply Br. 17. Appellants argue:
Merriman merely disclose[ s] that when the user browser requests
information from an affiliate website through a HTTP message,
in response, along with affiliate web server, the advertisement
server process also provides additional information including
objects of a banner advertisement that is to be displayed along
with the affiliate web site information as a composite at the user's
browser, but Merriman fails to teach or suggest that the first
document comprises substitutable content that can be any of
undesired, unused, and targeted content that is selected for
replacement with desired or useful content.
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App. Br. 24.
We do not find Appellants' arguments persuasive. Appellants'
Specification does not define or otherwise describe "unused content.' Based
on the plain meaning of the term, we find the broadest reasonable
interpretation of "unused content" includes a portion of a document not
containing content ( e.g., an empty or blank space in which content can be
inserted), which is consistent with Appellants' Specification. Spec. ,r 74.
The Examiner finds, and we agree, Merriman teaches that the provider
content (e.g., the first document) includes a link for retrieving an
advertisement to be inserted into an ad space ( e.g., a blank space) included
in the provider content. Ans. 18; see also Merriman 3:24---63. Appellants'
argument (Reply Br. 17) that claim 5 has been amended to remove "blank
content" is not persuasive because, as discussed supra, the broadest
reasonable interpretation of "unused content" includes a blank or empty
space.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 5.
Claims 6 and 18
Appellants contend the combination of Merriman, Granik, Gupta, and
Moshfeghi fails to teach or suggest "wherein said at least one identifier
comprises a network address, and wherein said substitutable content is
determined based on said network address," as recited in claim 6 and
similarly recited in claim 18. App. Br. 25-26; Reply Br. 18-19. Appellants
argue:
Merriman discloses a unique identifier in the first document
including an IP address for an advertiser web page, from which
the advertisement object is obtained and displayed, which is
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completely different to the identification of undesired
substitutable content (e.g., advertisement) based on a network
address (identifier) and being swapped with desired content as
provided by the Appellant[s].
App. Br. 25-26.
We do not find Appellants' arguments persuasive. As discussed
supra with respect to claim 5, Merriman teaches that the provider content
(e.g., the first document) includes a link (e.g., a network address) for
retrieving an advertisement to be inserted into an ad space ( e.g., a blank
space) included in the provider content. Merriman 3 :24--63. Because
Merriman teaches (Merriman 3 :35--44) that the link is used to obtain the
advertisement, the advertisement is determined based on the link.
Appellants do not present evidence or argument persuasive to show that
"based on" should be more narrowly construed. As such, we are
unpersuaded the Examiner erred in finding that Merriman teaches or
suggests the disputed limitation. Appellants' argument (App. Br. 26) that
[I]n the Appellant[s'] invention the first unit returns the complete
document to the second unit, wherein the complete document
includes the desired content as well as the advertisements, where
the advertisements then need to be replaced with desired content,
wherein Merriman the first document only gives the document
without the ads to the user and then the ads are separately fetched,
and therefore the advertisements of Merriman cannot be
analogous to desired content of the Appellant[ s '] claimed
invention
is not persuasive because it is not commensurate with the scope of the
claims. Claim 6 depends from claim 5. Claim 5 recites that the substitutable
content may be "any of undesired content, unused content [e.g., a blank
space], and targeted content selected for replacement." (Emphasis added).
Claim 18 depends from claim 14 which recites limitations similar to the
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limitations recited in claim 5. Thus, contrary to Appellants' arguments, the
claims do not require the first document to include the desired content as
well as the advertisements.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 6 and 18.
Claims 8 and 20
Appellants contend the combination of Merriman, Granik, Gupta, and
Moshfeghi fails to teach or suggest "wherein said second unit inserts content
contained in said second document into said first document in order to
generate said third document," as recited in claim 8 and similarly recited in
claim 20. App. Br. 26-28. Appellants argue:
The cited portions of Merriman merely discloses responding to
a user browser's request for information from an affiliate
website, wherein along with the affiliate web server, the
advertisement server also provides additional information
through a HTTP message including objects of a banner
advertisement which is displayed along with the affiliate web site
information at the user's browser, but Merriman fails to disclose
a second unit, which is separate from the first unit (user set), and
receives a second document containing preferred information
from a second sever (substitute document server) and inserts it in
the first document thereby replacing its undesired content to
generate a third document. Instead, Merriman discloses mere
retrieval and insertion of an advertisement object in the received
affiliate web page information and display of both objects as a
composite in the user's browser, which is entirely different from
the creation of a third document by insertion of a second
document into an undesired portion of the first document as
provided by the Appellant[s].
App. Br. 27.
We do not find Appellants' arguments persuasive. The Examiner
finds, and we agree, Merriman teaches "superimposing an image document
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(second document) received from the second server onto the affiliate web
page (first document) received from the first affiliate web server to create a
composite web page (third document)." Final Act. 10-11 (citing Merriman
3:24---63). Although Appellants argue that Merriman's composite web page
"is entirely different from the creation of a third document by insertion of a
second document into an undesired portion of the first document,"
Appellants fail to provide any arguments or evidence as to why Merriman's
composite web page does not teach or suggest the claimed "third document."
As such, Appellants' arguments are unpersuasive of error.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 8 and 20.
Claims 9 and 21
Appellants contend the combination of Merriman, Granik, Gupta, and
Moshfeghi fails to teach or suggest "wherein said second unit substitutes
said substitutable content in said first document with content contained in
said second document," as recited in claim 9 and similarly recited in claim
21. App. Br. 28; Reply Br. 19--20. Appellants argue:
The cited portion of Merriman merely discloses composite
displaying of objects of a banner advertisement along with a
received web page from an affiliate web server in the web
browser window of user computer or PDA or internet enabled
device, but fails to teach or suggest a separate second unit that
replaces the undesired substitutable content present in the
received first document with desired or useful content that is
retrieved from a second server. On the other hand, the
Appellant[ s] claims that the second unit substitutes the undesired
content of a first document with a second document. Moreover,
in Merriman there is no teaching or suggestion pointing towards
substitution of undesired or unsolicited content with useful or
preferred content performed by any device or equipment that is
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equivalent to neither that of a controller nor its associated
swapping device.
App. Br. 28.
We do not find Appellants' arguments persuasive. The Examiner
finds (Ans. 19), and we agree, Gupta teaches replacing an ad included in the
web page ( e.g., "substitutable content in said first document") with a second
ad (e.g., "content contained in said second document") (Gupta 6:13-14).
Appellants' argument that "there is no explanation in the Examiner's
Answer or Final OA of how Gupta's proxy server could be combined with
Merriman 's advertisement content" (Reply Br. 19) is not persuasive because
Gupta teaches that "any entity may insert or replace an advertisement that is
transmitted to a client" (Gupta 6: 13-14) and one of ordinary skill in the art
would understand "any entity" as including Gupta's proxy server. Thus,
Gupta alone teaches or suggests the disputed limitations.
We are also not persuaded by Appellants' argument that "in Merriman
there is no teaching or suggestion pointing towards substitution of undesired
or unsolicited content with useful or preferred content performed by any
device or equipment that is equivalent to neither that of a controller nor its
associated swapping device." App. Br. 28; Reply Br. 20. As discussed
supra with respect to claim 1, the Examiner finds (Ans. 16), and we agree,
Gupta teaches or suggests "a second unit that is separate from said first unit
and said first server, ... wherein said second unit is integrated with a
document processing device that receives a processing order from said
second unit."
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 9 and 21.
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Claim 13
Appellants contend the combination of Merriman, Granik, Gupta, and
Moshfeghi fails to teach or suggest "wherein said second unit is located at
any of a service provider, a proxy server, and a user set," as recited in claim
13. App. Br. 29--30. Appellants argue Merriman merely discloses
"interaction between user computer with a browser, internet service
providers or dedicated servers forming affiliate websites and an ad server
located at [a] particular node in [the] internet as separate entities" and not
that a second unit is located at any of a service provider, a proxy server, and
a user set, as required by claim 13. App. Br. 30.
We do not find Appellants' arguments persuasive. Gupta teaches
"Internet Service Providers (ISPs) or proxies owned by an ISP insert
advertisements that are transmitted from a web host to a client." Gupta
6: 10-13. Gupta, therefore, teaches that the second unit can be located at a
service provider or a proxy server. As such, Gupta teaches or suggests the
limitations recited in claim 13.
DECISION
We affirm the Examiner's rejection of claims 1, 2, 4--11, 13-15, and
18-24 under 35 U.S.C. § 103(a).
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
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