Ex Parte Dresden

Patent Trial and Appeal Board

Apr 25, 2013

10776689 (P.T.A.B. Apr. 25, 2013)

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.
10/776,689 02/11/2004 Scott Dresden X-9281 3830
24131 7590 04/26/2013
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
NGUYEN, THU V
ART UNIT PAPER NUMBER
2452
MAIL DATE DELIVERY MODE
04/26/2013 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 SCOTT DRESDEN
____________

Appeal 2010-011354
Application 10/776,6891
Technology Center 2400
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 8-14, which are all the claims remaining in the
application. Claims 1-7 were cancelled during prosecution. (App. Br. 2.)
We have jurisdiction under 35 U.S.C. § 6(b).

1 Application filed February 11, 2004. The real party in interest is Scott
Dresden. (App. Br. 2.)

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We affirm.
Invention
Appellant’s invention “helps to improve website design and economy
by conveying information to decision makes by providing a simulation of a
singular or aggregate site visitors’ experience.” (Spec. 2, ¶ [0004].)2
Representative Claim
Independent claim 8, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
8. A method for tracking and presenting information regarding a
behavior of a plurality of users on a series of web pages, which
comprises the following method steps:
displaying an initial content menu screen with at least one link;
when a content user chooses a desired link from the initial
content menu screen, prompting the content user for statistical
information and storing the statistical information in an electronic
database;
after the content user has successfully entered the statistical
information, returning to a first content screen including links to a
plurality of content screens;
recording links selected by the user from the first content
screen as long as choices selected by the user are recordable; and
replaying the recording of at least one of the choices selected by the
user in the perspective of the user and in correlation with the
statistical information in a browser simulator.
Rejections on Appeal
1. The Examiner rejects claims 8-11 under 35 U.S.C. § 103(a) as
being unpatentable over Duckett (U.S. Pat. Pub. No. 2003/0053420 A1,

2 We refer to Appellant’s Specification (“Spec.”) and Reply Brief (“Reply
Br.”) filed August 3, 2010, Appeal Brief (“App. Br.”) filed April 1, 2010.
We also refer to the Examiner’s Answer (“Ans.”) mailed June 3, 2010.
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published Mar. 20, 2003), Santos (U.S. Pat. Pub. No. 2004/0176992 A1,
published Sept. 9, 2004 (filed Mar. 5, 2003)), and Copley (U.S. Pat. Pub.
No. 2003/0061305 A1, published Mar. 27, 2003).3
2. The Examiner rejects claims 12 and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Santos and Rowley (U.S. Patent No.
7,296,080 B2, issued Nov. 13, 2007 (filed Jul. 9, 2002)).
3. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over Santos, Rowley, and Hentzel (U.S. Patent No.
6,877,007 B1 issued Apr. 5, 2005 (filed Oct. 16, 2001)).
Grouping of Claims
Based on Appellant’s arguments in their Principal Brief, we will
decide the appeal on the basis of representative claims 8, 12, and 14. See 37
C.F.R. § 41.37(c)(1)(iv).

ISSUES
1. Under § 103, did the Examiner err in providing a proper
motivation to combine Duckett and Santos in order to teach or suggest
“replaying the recording of at least one of the choices selected by the user in
the perspective of the user and in correlation with the statistical information
in a browser simulator” (emphasis added), within the meaning of
independent claim 8?

3 We note that the Examiner’s rejection of claims 8-11 constitutes a newly
applied reference (Copley), which constitutes new grounds of rejection.
However, as discussed infra, Appellant submit arguments in response to this
rejection in Appellant’s Reply Brief that are similar to those presented in
Appellant’s Principal Brief, which do not discuss the Copley reference.
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2. Under § 103, did the Examiner err in combining Santos and Rowley
to teach or suggest “presenting the statistically compiled actions in at least
one browser simulation being displayed on a display” (emphasis added),
within the meaning of representative claim 12?
3. Under § 103, did the Examiner err in combining Santos and Rowley
to teach or suggest “a browser simulator configured to take data from said
behavior organization module and to display a browser simulation based on
said compiled data representing the browser behavior of at least some of the
plurality of visitors” (emphasis added), within the meaning of independent
claim 14?

ANALYSIS
Claims 8-11
Appellant contends, inter alia, the following:
The teaching in Santos et al. is not related to the type of load
testing performed in Duckett et al. Santos et al. are not in any
way concerned with testing the situation where a website is
experiencing heavy usage. Rather, Santos et al. want to provide
website customers with an objective rating system that is useful
in deciding whether to use one website rather than one of many
other similar websites.
(App. Br. 9.)
The Examiner’s stated motivation for combining Santos and Duckett
is:
Therefore, one of ordinary skill in the art would have been
motivated to modify Duckett’s tracking system in order to
provide better website simulations based on user demographic
information. Additionally, Santos discloses replaying the
recording of the users’ choices in correlation with the statistical
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information [0016: replaying a session based on customer
segments which is derived from the statistical demographic
information collected from the user].
(Ans. 6.)
We find that the cited combination of Santos and Duckett is an
arrangement of familiar elements and further that Appellant did not address
the Examiner’s specific reasons for combining Santos and Duckett, i.e., to
provide better website simulations based on user demographic information.
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida
v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” (Id.)
Here, as noted by the Examiner (Ans. 10), both Duckett and Santos
disclose evaluating websites by recording user interactions and replaying the
user actions in a simulation. (Duckett, ¶¶ [0081]-[0083]; Santos, ¶ [0016].)
The Examiner found that Duckett and Santos disclose recording and
replaying user choices and Santos discloses creating a behavior model from
the collected data and simulating sessions with the website using the
behavior model. (Ans. 10.) According to the Examiner, Santos improves
upon Duckett’s invention by organizing the recorded user interactions. (Id.)
We agree with the Examiner’s findings (Ans. 4-6, 10-11) because the
teachings of Duckett and Santos were familiar elements to one of skill in the
art at the time of Appellant’s invention. The purported improvement
represents, on this record, no more than the predictable use of prior art
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elements according to their established functions and thus would have been
obvious to one of ordinary skill in the art. See KSR, 550 U.S. at 417.
Moreover, Appellant appears to argue that the motivations for combining
Duckett and Santos are not contained in either reference. (App. Br. 10.)
“[A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” In re ICON Health and Fitness Inc.,
496 F.3d 1374, 1380 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at 420). As
noted above, the Examiner presented a rationale for the combination (Ans.
6) even though the motivation did not come explicitly from either reference.
Appellant further argues that when one considers the teachings in
Duckett and in Santos, it is clear that one of ordinary skill in the art would
not have been motivated to perform the allegedly obvious modification.
(Reply Br. 3.) We disagree.
“What appellants overlook is that it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citations omitted) (emphasis added); see also In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”). The test for obviousness is
not whether the features of a reference may be bodily incorporated into the
structure of another reference but what the combined teachings of those
references would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). This reasoning
is applicable in the present case.
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Based on this record, we conclude that Appellant has not shown the
Examiner erred in rejecting representative claim 8. Accordingly, we affirm
the Examiner’s rejection of independent claim 8 and dependent claims 9-11,
which were not separately argued with particularity.
Claims 12-13
Appellant contends:
In order to arrive at the subsequent step in claim 12 of
“presenting the statistically compiled actions in at least one
browser simulation being displayed on a display”, Rowley et al.
would need to teach displaying the behavior model of Santos et
al. Rowley et al. however, do not teach or suggest displaying a
model, such as, the behavior model.
(App. Br. 12: Reply Br. 6.) We disagree.
The Examiner proposed modifying Santos to include Rowley’s
display functionality based on the well-known benefits of having a display in
a computer system which would allow users to view the simulated actions.
(Ans. 12.)
Similar to the above discussion, we agree with the Examiner’s
findings (Ans. 4-6, 10-11) because the teachings of Santos and Rowley were
familiar elements at the time of Appellant’s invention. The purported
improvement represents, on this record, no more than the predictable use of
prior art elements according to their established functions and thus would
have been obvious to one of ordinary skill in the art. See KSR, 550 U.S. at
417.
Appellant also argues that the cited teachings do not provide any
motivation for displaying the behavior model, or in the alternative, the
interaction between the behavior model and a website. (App. Br. 14.) As
discussed above, the motivation to combine the references can stem from
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any need or problem known in the field of endeavor at the time of invention
and addressed by the patent. Moreover, Appellant has not addressed the
Examiner’s specific motivation to combine the references. Therefore, we
find Appellant’s argument unavailing.
Based on this record, we conclude that Appellant did not show the
Examiner erred in rejecting representative claim 12. Accordingly, we affirm
the Examiner’s rejection of independent claim 12 and associated dependent
claim 13, the patentability of which was not argued with particularity.
Claim 14
Appellant argues:
Even if Hentzel et al. would have suggested incorporating an
event termination module, the invention as defined by claim 14
would not have been suggested because Rowley et al. would
not have suggested incorporating a browser simulator into the
teaching of Santos et al. in the way required by claim 14.
(App. Br. 14.)

Since the Examiner has equated the data mining system 16 of
Santos et al. with the claimed behavior organization module,
Rowley et al. would need to teach a browser simulator
configured to take data from a data mining system 16 in order
to suggest the limitations in paragraph B) of claim 14. Rowley
et al., however contain no such teaching.
(App. Br. 16.)
The Examiner stated that the reason for combining Santos and Rowley
is the same given for independent claim 12, discussed above. (Ans. 13.) We
agree with and adopt the Examiner’s findings. (Ans. 8-9, 13.) Similar to the
above discussion, Appellant appears to present arguments regarding the
bodily incorporation of Santos and Rowley and that the Examiner’s stated
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motivation is not found in the references. (App. Br. 16: Reply Br. 7-8.) As
stated above, the test for obviousness is not whether the features of a
reference may be bodily incorporated into the structure of another reference
but what the combined teachings of those references would have suggested
to one of ordinary skill in the art. In re Keller, 642 F.2d at 425. Further as
discussed above, we find that the Examiner articulated a rationale for the
combination. (Ans. 13.) Thus, we find that the cited combination of Santos,
Rowley and Hentzel is an arrangement of familiar elements and that
Appellant did not address the Examiner’s specific reasons for combining
Santos and Rowley. Therefore, we find Appellant’s arguments unavailing.
Based on this record, we conclude that Appellant has not shown that
the Examiner erred in rejecting independent claim 14. Accordingly, we
affirm the Examiner’s rejection of claim 14.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
8-14 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 8-14 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)(1)(iv).

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AFFIRMED

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