Ex Parte Dayan

Patent Trial and Appeal Board

Feb 17, 2016

11647674 (P.T.A.B. Feb. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/647,674 12/29/2006
10996 7590 02/19/2016
McDermott Will & Emery LLP (Google)
The McDermott Building
500 North Capitol St., N.W.
Washington, DC 20001
FIRST NAMED INVENTOR
Tai Dayan
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.
2525. 0560000 3090
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
02/19/2016 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):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TAL DAYAN
Appeal2014-002542
Application 11/647,674
Technology Center 2400
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR, and
MICHAEL M. BARRY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-002542
Application 11/647,674
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A system comprising:
an application server, running on a first computer, that serves a
web based application to a container application, the container
application running on a second computer comprising system
resources;
wherein the web based application runs inside the container
application and uses the container application to access the system
resources of the second computer without being installed to become
part of the container application; and
wherein permission information specifies which of the system
resources of the second computer the web based application can
access, wherein the container application, in response to receipt of the
web based application from the application server, launches the web
based application,
wherein the container application maintains a meta UI area
associated with the container application and displayed on the
second computer, and
wherein the web based application alters or controls the meta
UI area. 1
1 Although as written the meaning of "UI" is unclear and correction is
required, for purposes of this appeal and consistent with Appellant's
Specification, we construe "UI" as "user interface." Spec. ,-r 44.
2
Appeal2014-002542
Application 11/647,674
Rejection on Appeal
1. The Examiner rejected claims 1-20 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Sears et al. (US 2002/0026507
Al), Gish (US 6,434,598 Bl), and Carels et al. (US 2004/0012630 Al).2
Appellant's Contentions3
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The browser proxy client frame 508 in Sears
"corresponds to the browser served to the user 78 by the
browser application 305." (Sears, i-fl 72.) The Examiner alleges
that the proxy client frame 508 corresponds to the container
application. (Office Action, p. 10.) However, proxy client
frame 508 does not maintain any meta UI as shown in Figure
15 or discussed anywhere in Sears. Further the "File," "View,"
"Tools," and "Help" components shown in Figure 15 of Sears
are components of "the user interface of the application session
executing on the web server 93 through web server module
309," and not the claimed container application. For this
reason, Sears fails to teach "the container application maintains
a meta UI area associated with the container application," as
claimed.
App. Br. 16.
2 Separate patentability is not argued for claims 2-20. Except for our
ultimate decision, this rejection of claims 2-20 is not discussed further
herein.
3 These contentions are determinative as to the rejections on appeal.
Appellant's additional contentions are deemed to overstate the differences
between Appellant's claimed invention and the prior art. As those
contentions are unpersuasive and are not determinative of the result reached
herein, they are not discussed particularly herein.
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Appeal2014-002542
Application 11/647,674
2. Appellant also contends that the Examiner erred in rejecting claim
1under35 U.S.C. § 103(a) because:
[Examiner's] motivation to combine Sears, Gish and Carels "to
enable an improved rendering method that does not construct
screens on a page-per-page basis but on an element-per-element
basis," still does not explain why would a person of ordinary
skill in the art combine these references to design a system
where a web based application runs inside a container
application. Nor does this reasoning explain why a web based
application would alter or control the meta UI area maintained
by the container application.
App. Br. 21 (emphasis omitted). Further:
All told, the Examiner fails to articulate how these references
teach "an application server, running on a first computer, that
serves a web based application to a container application"
where "the web based application runs inside the container
application," when none of the references teach this feature.
And, the Examiner fails to articulate how the web based
application "alters or controls the meta UI area" maintained by
the container application.
App. Br. 21-22 (emphasis omitted).
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We agree with the Appellant's above recited contentions. The claimed
"container application" has a particular meaning as set forth by Appellant.
Spec. i-f 44. Also, the claimed "meta user interface (UI)" is a term of art. 4 In
4 See, e.g., Joelle Coutaz, Meta-User Interfaces for Ambient Spaces,
T AMODIA'06 Proceedings of the 5th international conference on Task
models and diagrams for users interface design (2006) (ISBN
9783540708155).
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Appeal2014-002542
Application 11/647,674
neither case is the meaning of these terms adequately addressed in the
Examiner's analysis. Also, we conclude, consistent with Appellants, there is
insufficient articulated reasoning to support the Examiner's findings that
(1) Sears teaches "wherein the container application maintains a meta UI
area associated with the container application and displayed on the second
computer" and "wherein the web based application alters or controls the
meta UI area" (Final Act. 10; see App. Br. 14--16), and (2) Carels teaches
"wherein the web based application alters or controls the meta UI area"
(Final Act. 12; see App. Br. 18-19).
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1-20 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, these claims have not been shown to be
unpatentable.
DECISION
The Examiner's rejection of claims 1-20 is reversed.
REVERSED
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