Ex Parte Cheng

Board of Patent Appeals and Interferences

May 20, 2011

10346678 (B.P.A.I. May. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte BRIAN CHENG
________________

Appeal 2009-005634
Application 10/346,678
Technology Center 2400
__________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Appeal 2009-005634
Application 10/346,678

2
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method of verifying the accuracy of dynamic content
requestable from a site, comprising the steps of:
creating a single dynamic-content key comprising an
identification of every dynamic content element and a copy of any
code comprising the dynamic content for the site;
obtaining a list of users of the site and preferences associated
with each user in the list;
identifying dynamic content elements associated with each user
in the list;
requesting each dynamic content element associated with each
user;
comparing the result of each request with the dynamic-content
key; and
designating each requested dynamic content element that
matches the key as being correct and designating each requested
dynamic content element that doesn't match the key as being
incorrect.

Rejection and Appellant’s Contention
Appellant contends the Examiner erred in rejecting claims 1-21 under
35 U.S.C. § 102(b) as being anticipated by Ginter (US 5,892,900) (Final
Action 2-5) because the relied on reference fails to teach “‘creating a single
Appeal 2009-005634
Application 10/346,678

3
dynamic-content key comprising an identification of every dynamic content
element and a copy of any code comprising the dynamic content’ as recited
in Claim 1” (App. Br. 7).
This contention that is directed to claim 1 is Appellant’s exclusive
premise for arguing patentability. We, accordingly, select claim 1 as
representative. See 37 C.F.R. § 41.37 (c)(1)(vii).
Issue on Appeal
Did the Examiner err in rejecting representative claim 1 as being
anticipated because Ginter fails to explicitly or inherently teach the argued
limitation?
ANALYSIS
We reviewed the Examiner’s rejection in light of Appellant’s
arguments, and we disagree with Appellant’s conclusion.
What Appellant argues and concludes is that:
The portion of Ginter relied upon by the Examiner as anticipatory of
this element is col. 29, line 20 through col. 30, line 39 which . . . states
that each piece of information to be disseminated securely is done so
by an individualized mechanism. No mention is made in the citation
quoted by the Examiner, or in Ginter as a whole, of a single dynamic
content key comprising an identification of each element of the
dynamic content and a copy of any code comprising the dynamic
Appeal 2009-005634
Application 10/346,678

4
content for the site. Thus, Ginter fails to disclose or suggest all of the
elements of Claim 1.
(App. Br. 7). The Examiner disputes this conclusion, and explains that
based on Appellant’s Specification the recited “dynamic-content key” is
construed “as a simple list identifying each element of dynamic content by
name and location and a copy of the code comprising that dynamic content”
(Ans. 7).1 Next, the Examiner sets out findings from Ginter disclosures in
col. 29, l. 19 – col. 30, l. 39 (Ans. 7-9). Relying on these findings, the
Examiner reasons and concludes:
Appellant argues that Ginter fails to teach this “single dynamic-
content key” but stat[es] generally that Ginter utilize[s] individualized
mechanisms, but fails to specifically address the control information.
Regardless of whether or not Ginter might teach “individualized
mechanisms” for specific aspects of his invention there is no question
that Ginter teaches the dynamic-content key as taught by Appellant,
including an identification of each of the elements of the dynamic
content and copy of code comprising that content. It is based upon the
particular sections of Ginter cited about [sic] in view of the Ginter
reference in its entirety that the Examiner maintains her position that
Ginter anticipates Appellant's claims in their entirety.
(Ans. 9).

1 The cited Specification disclosures in 12:14-17 read: “The key is
developed and is used for comparing with the retrieved content later in the
test. The key can comprise a simple list identifying each element of
dynamic content by name and location within the file, and a copy of the code
comprising the dynamic content.”
Appeal 2009-005634
Application 10/346,678

5
Appellant, in response, asserts that the Examiner incorrectly relies on
Ginter’s disclosure of “individualized mechanisms . . . provided for
controlling the secure delivery of information [as] somehow anticipat[ing]
the present claims” (Reply Br. 2). Specifically, Appellant argues by posing
an analogy to contend that Ginter fails to anticipate the appealed claims.
The analogy is to a 500-unit apartment complex maintenance staff having a
master key, as opposed to “500 individual duplicate keys” (id.). Relying on
this analogy, Appellant argues that “[t]he single dynamic-content key of the
present invention is analogous to the master key . . .” (id.).
Appellant does not dispute the Examiner’s understanding of Ginter
disclosures. Instead, Appellant substantively argues that the Examiner
improperly construes claim 1 as not excluding a single dynamic-content key
utilizing Ginter “individual mechanisms.” We find this argument unavailing
because Appellant references the “invention” as support for concluding that
the Examiner erred, but Appellant does not identify any limitation that
excludes a single dynamic-content key from utilizing “individual
mechanisms.” We do not find representative claim 1 recites such exclusion.
Accordingly, we agree with and adopt the Examiner’s findings that Ginter
teaches the claim 1 recited “creating a single dynamic-content key
comprising an identification of every dynamic content element and a copy of
any code comprising the dynamic content.”
Appeal 2009-005634
Application 10/346,678

6
For the foregoing reasons, we sustain the rejection of representative
claim 1 and we also sustain the rejection of claims 2-21.
CONCLUSIONS
1. The Examiner has not erred under 35 U.S.C. § 102(b) in rejecting
representative claim 1 as being anticipated by Ginter.
2. Based on the record of this appeal, claims 1-21 are not patentable.
ORDER
The Examiner’s decision rejecting claims 1-21 is affirmed.
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).

AFFIRMED

rwk