Ex Parte DUMITRU et al

Patent Trial and Appeal Board

Feb 16, 2016

12708694 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121708,694 02/19/2010
63206 7590 02/18/2016
Fish & Richardson P.C. (Blackberry)
P.O. Box 1022
Minneapolis, MN 55440
FIRST NAMED INVENTOR
Dan Mihai DUMITRU
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.
9507.011.NPUSOO 5040
EXAMINER
SCHALLHORN,TYLERJ
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
patdoctc@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN MIHAI DUMITRU, RAKESH KUMAR ARORA,
and MICHAEL RANDY ROSSI
Appeal2014-001306
Application 12/708,694
Technology Center 2100
Before JASON V. MORGAN, MINN CHUNG, and
WILLIAM M. FINK, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-10 and 12-17. 1 Claim 11 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellants' invention relates to a method for "uniform presentation of
documents on a mobile communication device irrespective of the source of
1 The real party in interest identified by Appellants is Research In Motion
Limited. App. Br. 3.
Appeal2014-001306
Application 12/708,694
the document." Spec. il I 7. The Specification describes achieving uniform
presentation of documents in web-based document retrieval by including or
encoding document requests in HTTP headers in the form of XML
descriptors. See, e.g., Spec. i-fi-f 18-20, 39-43, 45-54. Claim 1, which is
illustrative, reads as follows, with the disputed limitation emphasized in
italics:
1. A method operable on a mobile communication
device, comprising:
opening a browser session and issuing an HTTP request
for document data, at least one HTTP header of said request
having a string of XML including at least an identifier of the
request and an identifier of said document data; and
receiving an HTTP response including said XML string
along with document binary data representing respective
chunks of said document data for display on said mobile
communication device.
The Examiner relies on the following prior art in rejecting the claims.
Ballinger
Boxall
Schlimmer
Dumitru
US 2004/0205216 Al
US 2006/0041931 Al
US 2006/0230164 Al
US 2008/0120360 Al
Oct. 14, 2004
Feb.23,2006
Oct. 12, 2006
May 22, 2008
Roy T. Fielding et al., Hypertext Transfer Protocol-HTTP/1.1,
Network Working Group, The Internet Society (June 1999)
(hereinafter "Fielding").
Nilo Mitra (ed.), SOAP Version 1.2 Part 0: Primer, W3C XML
Protocol Working Group (June 24, 2003) (hereinafter "Mitra").
Claims 1, 2, 6, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ballinger, Schlimmer, and Boxall. Final Act. 4--8.
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Application 12/708,694
Claims 3, 4, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ballinger, Schlimmer, Boxall, and Dumitru. Id. at 8-10.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ballinger, Schlimmer, Boxall, Dumitru, and Fielding. Id.
at 10.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ballinger, Schlimmer, Boxall, and Fielding. Id. at 11.
Claims 12-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ballinger, Schlimmer, Boxall, and Mitra. Id. at 11-15.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ballinger, Schlimmer, Boxall, Mitra, and Dumitru. Id. at
15.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ballinger, Schlimmer, Boxall, Mitra, and Fielding. Id. at
15-16.
Rather than repeat the arguments here, we refer to the Appeal Brief
("App. Br." filed July 25, 2013), the Reply Brief ("Reply Br." filed Oct. 28,
2013), the Final Office Action ("Final Act." mailed Apr. 25, 2013), and the
Answer ("Ans." mailed Aug. 28, 2013) for the respective positions of
Appellants and the Examiner.
ISSUE2
The issue presented by Appellants' contentions is whether the
Examiner erred in finding the combination of Ballinger, Schlimmer, and
2 Appellants' arguments raise additional issues. Because the identified issue
is dispositive of the appeal, we do not reach the additional issues.
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Application 12/708,694
Boxall teaches or suggests "issuing an HTTP request for document data, at
least one HTTP header of said request having a string of XML including at
least an identifier of the request and an identifier of said document data," as
recited in claim 1.
ANALYSIS
In rejecting claim 1, the Examiner finds Ballinger discloses "using
SOAP messages, which are XML documents that contain a header with
specific information" (Final Act. 4 (citing Ballinger i-f 11) ), and Schlimmer
teaches "using SOAP messages for requesting data, the headers of which
contain a message identifier and the content to be retrieved" (id. at 4--5
(citing Schlimmer i-f 16)). The Examiner finds that a person of ordinary skill
in the art would have been motivated to "use SOAP and include identifiers
for the request message and the content" because doing so would "allow
more flexibility in the manner of requesting the content" and "overcome the
constraints of HTTP." Id. at 5 (citing Schlimmer i-f 13). The Examiner
further finds Boxall teaches including custom HTTP headers in HTTP
messages. Id. (citing Boxall i-f 59). The Examiner finds that a person of
ordinary skill would have been motivated to "include information in the
HTTP header rather than the HTTP body, or vice-versa ... based on [the]
subject design choice." Id.
Appellants contend that, in Schlimmer, the entirety of the SOAP
messages, including the SOAP headers, are "contained in the body of the
HTTP messages," and not in any HTTP header, because the HTTP protocol
is used as a "wrapper" or a transport protocol for transmission of the SOAP
messages. See App. Br. 12; Reply Br. 3. Therefore, Appellants contend,
moving information from the body of the HTTP request to the header would
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Application 12/708,694
render the SOAP message redundant and suffer from the disadvantages of
HTTP described in Schlimmer. App. Br. 12-13 (citing Schlimmer i-f 12).
Regarding Boxall, Appellants contend it does not teach or suggest placing
XML strings in HTTP headers because the "custom HTTP headers"
described in paragraph 59 of Boxall cited by the Examiner do not include
XML strings. See App. Br. 12. Consequently, Appellants argue, the
Examiner's findings address whether the proposed modification would be
possible but not whether it would be obvious. See Reply Br. 3.
On the record before us, we are persuaded by Appellants' arguments.
As an initial matter, we agree with Appellants that the cited portions of
Boxall do not discuss placing XML strings in an HTTP header, as the claim
requires. See App. Br. 12. Thus, the Examiner's finding that Boxall's
teaching of "custom HTTP headers in general" (Ans. 2 (emphasis added))
suggests any portion of the SOAP message could be placed in the HTTP
header, as opposed to the HTTP message body, as a matter of design choice
(see Final Act. 5; Ans. 2-3), does not sufficiently address Appellants'
argument that using a SOAP message in the header of an HTTP Get request
would suffer from the disadvantages of HTTP that Schlimmer seeks to
overcome (see App. Br. 12-13 (citing Schlimmer i-f 12)). As discussed
above, the Examiner has also found "overcom[ing] the constraints of HTTP"
to be a motivating factor to use SOAP instead of or in addition to HTTP.
Final Act. 5 (citing Schlimmer i-f 13). Therefore, the Examiner's findings do
not adequately explain why a person of ordinary skill would have been
motivated to complicate the process described in Schlimmer by moving the
SOAP message, including the identifiers for the request message and the
content, out of the HTTP message body and move it to the HTTP header,
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Application 12/708,694
rendering the SOAP message redundant. See Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v.
VGO Communications, Inc., 751F.3d1327, 1352 (Fed. Cir. 2014))
("[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention."); In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.").
Accordingly, on this record, we agree the Examiner erred, and,
therefore, do not sustain the Examiner's rejection of claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over Ballinger, Schlimmer, and Boxall,
together with the rejection of claim 2, which depends from claim 1.
Independent claim 6 recites essentially the same disputed limitation as claim
1 except that claim 6 recites "receiving an HTTP request" instead of "issuing
an HTTP request." The Examiner relies on the same reasoning and evidence
as claim 1 to reject claim 6. See Final Act. 6-8; Ans. 2-3. Therefore, for
the same reasons discussed above with respect to claim 1, we do not sustain
the Examiner's rejection of claim 6 under 35 U.S.C. § 103(a) together with
the rejection of claims 8 and 9, which depend from claim 6. We also do not
sustain the rejections of claims 3, 4, 5, 7, 10, 12, and 13, which depend from
claims 1 or 6, as the Examiner's findings fail to overcome the deficiency of
the base rejections. Regarding claim 14, the Examiner adds Mitra to teach
"receiving a GET HTTP request," but otherwise relies on the same
reasoning and evidence as claims 1 and 6. See Final Act. 13-14; Ans. 2-3.
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Therefore, for the same reasons discussed above with respect to claims 1 and
6, we do not sustain the Examiner's rejection of claim 14 as well as the
rejections of claims 15, 16, and 17, which depend from claim 14, based on
the deficiency of the base rejection discussed above.
DECISION
The decision of the Examiner to reject claims 1-10 and 12-17 is
reversed.
REVERSED
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