Ex Parte Burckart et alDownload PDFPatent Trial and Appeal BoardMay 27, 201613248615 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/248,615 09/29/2011 75949 7590 IBM CORPORATION C/O: Fabian Vancott 215 South State Street Suite 1200 Salt Lake City, UT 84111 06/01/2016 FIRST NAMED INVENTOR Erik John Burckart 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. RSW920110077US 1 8445 EXAMINER LUU, LE HIEN ART UNIT PAPER NUMBER 2448 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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@fabianvancott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIK JOHN BURCKART, ROBERT MADEY JR., VICTOR S. MOORE, and JOSEPH WHAM ZISKIN Appeal2014-009296 Application 13/248,615 Technology Center 2400 Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL .6. .... ,1 .... ,....,-TTr'l.r-"\l\-1,....Al/'\.r'" , .. T"""1 •-, Appeuants' appeal unaer j) u.~.L. s U4~aJ rrom tne bxammer s final rejection of claims 12-30, which constitute all claims pending in the application. Claims 1-11 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellants' invention relates to controlling the execution of embedded scripts in web pages, such as those generated by web analytics services, 1 Appellants identify International Business Machines Corporation ("IBM") as the real party in interest. App. Br. 2. Appeal2014-009296 Application 13/248,615 thereby managing network tratlic and speeding users' web page retrieval. Spec. i-f 1. Claim 12, reproduced below with the disputed limitations in italics, is illustrative of the invention: 12. An apparatus comprising: at least one processor; a memory communicatively coupled to the at least one processor, the memory storing executable code that, when executed by the at least one processor, causes the at least one processor to implement a network appliance by: intercepting a web page sent from a server and addressed to a client browser; modifYing the web page by removing an embedded script from the web page; executing, by the network appliance, the removed embedded script; and sending the modified web page to the client browser. App. Br. 24 (emphasis added). THE REJECTIONS ON APPEAL Claims 12-25 stand provisionally rejected on the ground of obviousness-type double patenting over claims 1-11 of Application No. 13/429,754. Ans. 8. Claim 25 stands rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Ans. 7. 2 Appeal2014-009296 Application 13/248,615 Claims 12-25 and 30 stand rejected under 35 U.S.C. § 102(e) as anticipated by Fainberg et al. (US 2012/0079057 Al; Mar. 29, 2012). Ans. 4--5. Claims 26-29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fainberg and Applicant's admitted prior art. Ans. 6-7.2 ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments presented in this appeal. Any other arguments Appellants could have made but chose not to make in the Briefs are deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv). With respect to the obviousness-type double patenting rejection and the rejection under 35 U.S.C. § 101, we agree with the Examiner's findings and conclusions and adopt them as our own. With respect to the remaining rejections (i.e., anticipation and obviousness), however, we are persuaded by Appellants' arguments that the Examiner has erred. We provide the following to highlight and address specific arguments. Obviousness-Type Double Patenting Rejection of Claims 12-15 Appellants assert the provisional double patenting rejection can be cured by terminal disclaimer. App. Br. 13. On the record before us, however, no terminal disclaimer has been filed. Because Appellants present no arguments contesting the obviousness-type double patenting rejection of 2 Appellants also argue the Examiner erred in objecting to the title of the invention as non-descriptive. App. Br. 11 (citing Final Act. 2). We do not disturb the objection, because objections are reviewable only by petition to the Director, 37 C.F.R. §§ 1.113(a), 1.181. 3 Appeal2014-009296 Application 13/248,615 claims 12-25, we summarily sustain the rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a ground of rejection to the Board, ... the Board may treat any argument with respect to that ground of rejection as waived."). 35 U.S.C. § 101 Rejection of Claim 25 Claim 25 recites a "computer program product comprising ... a tangible computer readable storage medium" having computer readable program code embodied therewith, the program code configured to perform particular tasks. App. Br. 26-27. The Examiner finds the claim is directed to non-statutory subject matter because its broadest reasonable interpretation could include transitory media. Final Act. 5-6. The Examiner suggests Appellants overcome the rejection by amending the claim to replace "tangible" with "non-transitory." Id. Appellants, nevertheless, argue that the claim encompasses statutory subject matter as is, because the recited "storage" medium "excludes the transitory media that the Office Action cites as problematic." App. Br. 12. The broadest reasonable interpretation of claims drawn to "computer readable media" generally includes transitory propagating signals, and adding the word "storage" does not, in itself, alter this presumption. See, e.g., Ex parte Mewherter, 107 USPQ.2d 1857, 1860-63 (PTAB 2013) (precedential). When the broadest reasonable interpretation of a claim includes transitory propagating signals, the claim encompasses non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). Appellants' use of the term "computer readable storage medium," therefore, does not persuade us that the claim constitutes statutory subject matter. 4 Appeal2014-009296 Application 13/248,615 Appellants have provided no other persuasive evidence or argument that the Examiner erred. Accordingly, we sustain the Examiner's rejection of claim 25 under 35 U.S.C. § 101. 35 U.S. C. § 102(e) Rejection of Claims 12-25 and 30 Appellants argue Fainberg, relied upon by the Examiner in rejecting the claims as anticipated, fails to disclose two limitations common to the claims: (1) "removing an embedded script from the web page," and (2) "executing, by the network appliance, the removed embedded script." App. Br. 14.3 We are persuaded, on the record before us, the Examiner erred in finding the latter limitation in Fainberg. Like Appellants' invention, Fainberg is directed to a method for accelerating access to a web page. Fainberg i-f 2. It utilizes a "web page access accelerator (WPAA)" disposed between a web server and client. Fainberg i-fi-115-17; Ans. 10-11. When the client requests a web page from the server, the \VP AA "intercepts" the web page, analyzes it for potential acceleration improvements, modifies it using one or more acceleration techniques, and then delivers the modified page to the client. Ans. 1 O; Fainberg i-fi-122-27. The modification step includes the WP AA "moving the style data" of the web page "from their original position" embedded in the web page, "to one or more external files which can be located anywhere," thus satisfying Appellants' first disputed limitation. Fainberg i-f 23 (emphasis added); Ans. 10-11; see also Final Act. 3. As to the second limitation (the network appliance "executing" the removed embedded script), however, we find insufficient explanation or 3 Appellants argue the rejected claims as a group, and select claim 12 as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv). 5 Appeal2014-009296 Application 13/248,615 support in the record for the Examiner's position. The Examiner cites a lengthy passage in Fainberg (i-fi-f 22-27), Final Act. 3; Ans. 11, as disclosing the "executing" step, but fails to identify particularly where in this passage the network appliance (i.e., the WPAA in Fainberg) "executes" any removed script. Fainberg discloses the WP AA "pars[ing]" and "processing" the web page, Fainberg i1i124, 28, but (if the Examiner intended to rely on those disclosures) such actions are not the same as the claimed "executing ... the removed embedded script." Although Fainberg does disclose the client browser executing the modified web page, a client browser is not the claimed "network appliance" and the page being executed is not the "removed embedded script." See id. at i1i127-28. Nor does the Examiner explain how the disputed limitation may be found in Figure 2, Figure 3, or claim 3, all of which also are cited (without further discussion) by the Examiner. See Final Act. 3; Ans. 11. Accordingly, we do not sustain the rejection of claims 12-25 and 30 under 35 U.S.C. § 102(e) as anticipated by Fainberg. 35 U.S.C. § 103(a) Rejection of Claims 26--29 The Examiner's rejection of claims 26-29 relies upon the same finding in Fainberg that we determined erroneous, above. We, therefore, do not sustain the rejection of claims 26-29 under 35 U.S.C. § 103(a) as unpatentable over Fainberg and Appellant's admitted prior art. DECISION We affirm the Examiner's decision rejecting claims 12-25, and reverse the decision rejecting claims 26-30. 6 Appeal2014-009296 Application 13/248,615 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). See 37 C.F.R. § 1.136(a)(l)(iv) (2013). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation