Ex Parte Butler

Board of Patent Appeals and Interferences

Jun 6, 2011

10350439 (B.P.A.I. Jun. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/350,439 01/24/2003 Mark Henry Butler 200206578-2 2034
7590 06/06/2011
IP Administration
C/o Hewlett-Packard Company
Mail Stop 35
3404 East Harmony Road
Ft. Collins, CO 80528-9599
EXAMINER
JEAN GILLES, JUDE
ART UNIT PAPER NUMBER
2447
MAIL DATE DELIVERY MODE
06/06/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK HENRY BUTLER
____________________

Appeal 2009-006863
Application 10/350,439
Technology Center 2400
____________________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
THU A. DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
The Appellant appeals under 35 U.S.C. § 134 from a rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).

INVENTION
The Appellant describe the invention at issue on appeal as follows.
Content accessible to a variety of client devices from a web
page is associated with machine readable labels setting out
capabilities required by a client device in order to manifest the
content in a meaningful manner. Several versions of the
content may be provided by the author, each version of the
content being associated with its own specification of client
device capabilities required to manifest it. The capabilities
required are matched with the technical attributes of a client
device, in order to establish which version of the content to
provide to a client device.

(Abstract.)

ILLUSTRATIVE CLAIM
1. A method of providing content to a client device
comprising the steps of:

comparing first and second classes of client device
capabilities which define capabilities that would be required by
a client device in order to manifest first and second versions of
the content respectively with technical attributes possessed by
the client device;

establishing on the basis of the comparison whether the
client device has the capabilities of the first class; and

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in the event that the client device has the capabilities of
the first class, dispatching the first version of the content to the
client device, wherein in the event the client device does not
have the capabilities defined in the first class but does have the
capabilities defined in the second class, dispatching the second
version of the content to the client device.

REFERENCES
Kobata
Carter
US 6,393,471 B1
US 6,519,767 B1
May 21, 2002
Feb. 11, 2003

REJECTIONS
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobata and Carter.

CLAIM GROUPINGS
Based on the Appellant's arguments, we will decide the appeal of
claims 1-10 on the basis of claim 1 alone; claims 11-13 and 20-22 on the
basis of claim 11 alone; and claims 14-19 on the basis of claim 14 alone.
See 37 C.F.R. § 41.37(c)(1)(vii).

REPRESENTATIVE CLAIMS 1 AND 11
The issue before us is whether the Examiner erred in finding that the
combination of Kobata and Carter would have suggested classes of
capabilities corresponding to different versions of content, where a particular
version of content is dispatched to a client if the capabilities of the client fit
within a corresponding class of capabilities, as required by representative
claims 1 and 11.
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FINDINGS OF FACT
Kobata describes its invention as follows. "In an Internet-based
client/server application, a system is provided which detects demographics
of a client including CPU power, hard disk space, applications installed,
network connectivity and log-in history so as to provide this infrastructure
related information detailing client usage of the Internet to the service
provider." (Kobata, Abstract, ll. 1-6.)
Figure 5 of the same reference follows.

"FIG. 5 is a block diagram of the use of the demographic information for
automatic delivery selection by the server." (Kobata, col. 3, ll. 51-52.)
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ANALYSIS
"All of the disclosures in a reference must be evaluated for what they
fairly teach one of ordinary skill in the art." In re Boe, 355 F.2d 961, 965
(CCPA 1966)). "'The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which
they are concerned. They are part of the literature of the art, relevant for all
they contain.'" In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (quoting
In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)).
Here, the Examiner finds that "Kobata discloses . . . in the event that
the client device has the capabilities of the first class, dispatching the first
version of the content to the client device (fig. 5, item 110-121; column 5,
lines 26-55; column 6, lines 28-42) . . . ." (Ans. 3-4.) The Appellant argues
"that Kobata and the Examiner's arguments do not establish that Kobata or
Carter discloses the existence of classes of capabilities corresponding to
different versions of content, where a particular version of content is
dispatched to a client device if the capabilities of a client device fit within a
corresponding class of capabilities." (Reply Br. 2-3.)
Kobata's following disclosure, however, supports the Examiner's
finding.
As can be seen from FIG. 5, an automatic delivery
system 104 is provided which selects the destination of the
contents based on the ability of a client to receive a given
version of the contents. This is done by matching the
requirements of the particular version of the contents with the
demography of the client as shown at 106.
. . . .

Each version has a set of corresponding version
requirements 119 and 121. These version requirements are
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supplied to, matching module 106 which determines not which
clients can receive a given version, but rather which versions
can be sent to which clients. Selection module 110 then
couples the appropriate version to the appropriate clients in a
push operation.

(Kobata, col. 5, ll. 26-55.)
More specifically, we agree with the Examiner's finding that the
requirements of the particular versions of the contents (Fig. 5, 117,
119, 121) would have suggested classes of capabilities corresponding
to different versions of content. We also find that pushing the
appropriate version of the contents to the appropriate clients would
have suggested that a particular version of content is dispatched to a
client if the capabilities of the client fit within a corresponding class of
capabilities.
Therefore, we conclude that the Examiner did not err in finding that
the combination of Kobata and Carter would have suggested classes of
capabilities corresponding to different versions of content, where a particular
version of content is dispatched to a client if the capabilities of the client fit
within a corresponding class of capabilities, as required by representative
claims 1 and 11.

REPRESENTATIVE CLAIM 14
The issue before us is whether the Examiner erred in finding that the
combination of Kobata and Carter would have suggested “a web server
hosting a web page having at least one component of content,” as required
by representative claim 14.
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ANALYSIS
"Nonfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious." Ex parte Curry,
84 USPQ2d 1272, 1274 (BPAI 2005)(Federal Circuit Appeal No. 2006-
1003) (aff’d Rule 36, June 12, 2006) (citing In re Ngai, 367 F.3d 1336, 1339
(Fed.Cir. 2004)). "[W]hen descriptive material is not functionally related to
the substrate, the descriptive material will not distinguish the invention from
the prior art in terms of patentability." Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006)
(citing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)).
Furthermore, "[a]n intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.'' Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Although ''[s]uch statements often . . . appear in the claim's preamble,'' In re
Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or
purpose can appear elsewhere in a claim. Id.
Here, claim 14 recites in pertinent part the following limitations.
A web server hosting a web page having at least one
component of content, wherein machine readable labels are
incorporated within the content specifying at least one of first
and second classes of client device capabilities required by a
client device to manifest the component of content.
(Emphases added.) Because the italicized phrase is not functionally related
to the web server or merely states an intended use or purpose for the content
data, it is not entitled to patentable weight.
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Just as "[i]t is not the function of [the U.S. Court of Appeals for the
Federal Circuit] to examine the claims in greater detail than argued by an
appellant, looking for nonobvious distinctions over the prior art," In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991), "it is not the
function of this Board to examine claims in greater detail than argued by an
appellant, looking for nonobvious distinctions over the prior art." Ex parte
Post, No. 2005-2042, 2006 WL 1665399 at *4 (BPAI 2006).
Here, the Examiner makes the following "specific and detailed
findings," Ex parte Belinne, No. 2009-004693, 2009 WL 2477843, at *4
(BPAI 2009) (informative), the combination of Kobata and Carter.
The combination Kobata-Carter discloses a web server hosting
a web page having at least one component of content, wherein
machine readable labels are incorporated within the content
specifying at least one of first and second classes of the client
device capabilities required by a client device to manifest the
component of content (see Kobata; column 8, lines 7-61).

(Ans. 8.)
For his part, the Appellant does not address these findings regarding
column 8 of Kobata. Instead, he merely alleges that "Kobata does not
disclose that a web server hosts a web page having machine readable labels
specifying first and second classes of client device capabilities required to
manifest a component of content of the web page." (App. Br. 13.) These
allegations "do not . . . explain why the Examiner's explicit fact finding is in
error." Belinne, at *4.
Therefore, we conclude that the Examiner did not err in finding that
the combination of Kobata and Carter would have suggested “a web server
hosting a web page having at least one component of content,” as required
by representative claim 14.
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DECISION
We affirm the rejection of claims 1, 11, and 14 and of claims 2-10, 12,
13, 15-22, which fall therewith.
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) (2010).

AFFIRMED

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