Ex Parte Ehrich et al

Patent Trial and Appeal Board

Jun 27, 2016

12773274 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121773,274 05/04/2010
43168 7590 06/29/2016
LAW OFFICE OF MARCIAL. DOUBET, P. L.
PO BOX 1087
Lake Placid, FL 33862
FIRST NAMED INVENTOR
Nathanael F. Ehrich
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.
RSW920030072US3 5615
EXAMINER
SALAD,ABDULLAHIELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
mld@mindspring.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHANAEL F. EHRICH, NIRAJ P. JOSHI, KIMBERLY D.
KENNA, and ROBERT C. LEAH
Appeal2014-009082 1
Application 12/773,274
Technology Center 2600
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
SHARON PENICK, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20. Claims App. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants 'Invention
Appellants' invention is directed to a method and apparatus for
allowing a server ( 400) to provide to a client ( 420, 430, 440, 450), in
1 Appellants identify the real party in interest as International Business
Machines Corp. App. Br. 5.
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Application 12/773,274
response to the client's request, one of a plurality ofwebpage versions (130,
140, 150) selected based on the current condition of the client, as assessed
by the server's agent (410). Spec. i-f 23, Figs. 1 and 4. In particular, the
server defines, for each of the plurality of webpage versions, a
corresponding condition for selecting a suitable webpage version in response
to a webpage request received from the client. Id. i-fi-150-56, Fig. 6.
Illustrative Claim
Independent claim 1 is illustrative, and reads as follows:
1. A computer-implemented method of providing autonomic
content load balancing, comprising:
defining, in a server-side data structure for a Web page to be
served, that the Web page
has a plurality of alternative versions defined and at least one
condition for selecting a particular
one of the alternative versions, each of the alternative versions
having associated therewith at least
one value of each of the at least one condition;
receiving, at a server from a client, a request for the Web page;
upon determining, by the server from the server-side data
structure, that at least one
condition is defined for selecting a particular one of the
alternative versions of the requested Web
page and that the plurality of alternative versions are defined for
the requested Web page,
selecting a particular one of the defined alternative versions to
be used as the requested Web page
when responding to the received request, comprising:
determining, by the server from the server-side data structure
using information
that is distinct from information provided in the request, each of
the at least one condition defined
for selecting the particular one of the alternative versions and
then determining, for each of the
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Application 12/773,274
determined at least one condition, a current value thereof~ and
selecting, by the server as the particular one of the alternative
versions, the defined alternative version for which the
determined current value of each of the determined at least one
condition matches one of the at least one value associated with
the condition for the particular one; and
serving the selected alternative version of the Web page, from
the server to the client, as the requested Web page when
responding to the received request.
Mogul
Holland
Narin
Prior Art Relied Upon
US 6,243,761 Bl
US 2002/0083132 Al
US 7,159,182 B2
Rejections on Appeal
June 5, 2001
June 27, 2002
Jan.2,2007
Appellants request review of the following Examiner's rejections:
Claims 1, 7, 9, and 13 stand rejected under 35 U.S.C. § 112, First
Paragraph as failing to comply with the written description requirement.
Claims 1, 4--7, 9--11, 13, and 16-18 stand rejected as being anticipated
byNarin under 35 U.S.C. § 102(e), or in the alternative as being
unpatentable over the combination ofNarin and Mogul under 35 U.S.C. §
103(a).
Claims 2, 3, 8, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination ofNarin and Holland.
Claims 12, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Narin.
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Application 12/773,274
ANALYSIS
We consider Appellants' arguments seriatim as they are presented in
the Appeal Brief, pages 16-37, Reply Br. 2-15. 2
Written Description Rejection
Appellants argue the Examiner erred in concluding that the newly
recited claim limitation of using server side information distinct from the
client request information is not supported by the Specification. App. Br.
1 7-21, Reply Br. 2-9. According to Appellants, the Examiner improperly
requires a literal basis for support in the Specification for the claim language
thereby imposing an in haec verba requirement, as opposed to support in the
Specification through implicit or inherent disclosure. App. Br. 19, Reply Br.
5. Therefore, Appellants submit because the Specification discloses that the
client uses information in a webpage request, whereas the server uses server-
side data structure including the conditions associated with each version of
the webpage to select a suitable version, the Specification supports that the
server-side information is distinct from the client's, as recited in claim 1. Id.
20-21 (citing Spec. i-f 56). This argument is persuasive.
We do not agree with the Examiner that Appellants have not
explained how the Specification supports the disputed limitation. Ans. 14.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed July 7, 2014), the Reply Brief (filed
November 10, 2014), and the Answer (mailed October 24, 2013) for their
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Application 12/773,274
Although the Examiner correctly observes that paragraph 56 alone does not
provide the necessary support for the newly added limitation, that paragraph
nonetheless discusses the server-side selection of a requested webpage based
on information including conditions associated with the webpage. Id. at 15-
18. A further explanation of the server-side webpage selection indicates that
the conditions associated with the webpage versions are only presented at
the server-side, whereas the client's request only identifies the webpage. 3
Spec. i-fi-150-56, Figs. 1, and 6. Therefore, we agree with Appellants that the
ordinarily skilled artisan would readily ascertain from the Specification that
the client webpage request provides distinct information that does not
include the condition information used by the server in the selection of a
suitable webpage version. Reply Br. 6. Accordingly, we agree with
Appellants that the newly added limitation is fully supported by Appellants'
original Specification. Consequently, we will not sustain the written
description rejection of claims 1, 7, 9, and 13.
Anticipation by Narin or Obviousness over Narin and Mogul
Appellants argue Narin does not describe defining in a server-side
data structure that the webpage has a plurality of alternative versions as well
as one or more defined conditions for selecting a particular webpage version.
App. Br. 24--31, Reply Br. 9-13. In particular, Appellants argue Narin's
disclosure of a supplemental request header provided to a server for
determining which webpage version to return to a client in response to a
3 See Spec. paragraph 50 (stating "A server 400, at which Web page requests
are received, uses information pertaining to current conditions when
selecting content versions for use in response messages.")
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Application 12/773,274
webpage request does not describe information defined in a server-side.
App. Br. 25 (citing Narin 7: 19--32). Rather, the supplemental request header
is formed and defined on the client side. Id. at i-fi-17, 11-13, and 39. This
argument is persuasive.
Narin discloses a server which, upon receiving a client's webpage
request along with a supplemental request header information including
hardware characteristics for a user's device, utilizes the information in the
supplemental request header to determine which version of the webpage best
suits the client's current condition. Abst.; col. 7:19-32. As persuasively
argued by Appellants, because the supplemental request header is obtained
from the client, it is not formed or generated on the server side. Although
the Examiner correctly finds that the server stores various versions of the
webpage in a database from which a particular version is selected in
response to a client request (Ans. 21-22), Narin's server utilizes
information in the supplemental request header to determine which of the
webpage versions to return to the client. Therefore, we do not agree with the
Examiner that N arin describes defining the selection condition at the server
side.
However, we echo the Examiner's finding that Mogul's disclosure of
the server utilizing monitored network conditions (e.g., bandwidth, latency)
of the network path to determine which webpage version to return to the
client cures the noted deficiency of Narin. Ans. 22 (citing Mogul Abst., col.
5:47---67). First, we note, besides merely repeating the claim language and
making a general allegation that the cited portions of Mogul relied upon by
the Examiner do not cure the noted deficiencies ofNarin, Appellants have
not presented any substantive argument that compares and contrasts the
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Examiner's cited finding of Mogul (taken in combination with Narin) with
the disputed claim limitation. App. Br. 32. Appellants are reminded that
conclusory allegations without presenting evidence to rebut the Examiner's
findings of fact are unpersuasive of error. Likewise, Appellants are
reminded that merely reciting the claim limitations and findings relied upon
by the Examiner in the rejection is not a responsive argument. Such a
response to the Examiner's findings is insufficient to persuade us of
Examiner error, as mere attorney arguments and conclusory statements that
are unsupported by factual evidence are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, No. 2009-004693, slip
op. at 7-8 (BP AI Aug. 10, 2009) (informative); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."); cf In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.")
Second, we note Mogul's disclosure of the server using an agent for
monitoring the network conditions teaches defining on the server-side the
conditions for selecting a suitable webpage to return to the client, which is
consistent with Appellants' Specification. Spec. i-fi-151-52.
Last, Appellants argue that N arin does not describe a server using
information that is distinct from information provided by the client in the
request. App. Br. 27-29. According to Appellants, because the client in
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Narin provides to the server both the webpage request, and the supplemental
request header, the supplemental information is not distinct from
information provided by the client. Id. at 29. This argument is
unpersuasive.
Appellants' argument is not commensurate with the scope of the
claim, which does not preclude the server-side data structure from using all
information provided by the client. Instead, the claim precludes the server
from using information provided in the client request. Id. Therefore,
although Narin discloses that both the client request and the supplemental
request header are provided to the server by the client, the supplemental
request header is not part of the client request. As noted above, the client
request is sent to the server to request a webpage, whereas the supplemental
request header is separately sent to the server to assist in selection of a
suitable webpage version for the client. Consequently, the supplemental
header is distinct from the client request. Additionally, as noted above, we
find Mogul's teaching of the condition information defined on the server-
side complements Narin's disclosure to predictably result in a server that
utilizes data structure defined at the server to thereby select a suitable
webpage version in response to a client request. Because we agree with the
Examiner that the combination ofNarin and Mogul teaches the disputed
limitations, Appellants have not shown the Examiner erred in concluding
that the proffered combination renders claim 1 unpatentable.
Regarding the rejections of claims 4--7, 9--11, 13, and 16-18, because
Appellants have either not presented separate patentability arguments or
have reiterated substantially the same arguments as those previously
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discussed for patentability of claim 1 above, claims 4--7, 9--11, 13, and 16-
18 fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Obviousness over Narin or Narin and Holland
Regarding the rejection of dependent claims 2, 3, 8, 14, and 15,
Appellants argue Narin does not describe defining a selection condition on
the server-side, as previously argued above for independent 1. App. Br. 35.
As noted above, Narin alone does not teach the cited limitation. Because
Holland is not relied upon to cure the noted deficiencies ofNarin, we agree
with Appellants that the proposed combination does not render the cited
claims unpatentable. Consequently we reverse the Examiner's rejection of
claims 2, 3, 8, 14, and 15 over the combination ofNarin and Holland. 4 For
these same reasons, we reverse the Examiner's rejection of claims 12, 19,
and 20 over Narin. 5
DECISION
We affirm the Examiner's obviousness rejection under 35 U.S.C.
§ 103 (a) of claims 1, 4--7, 9--11, 13, and 16-18 over the combination of
Narin and Mogul. However, we reverse the Examiner's written description
of claims 1, 7, 9, and 13. We also reverse the Examiner obviousness
rejection of claims 2, 3, 8, 14, and 15 over the combination ofNarin and
4 In light of our analysis above of claim 1 over the combination ofNarin and
Mogul, the Examiner should consider in the event of further prosecution
rejecting these claims over the combination ofNarin, Mogul, and Holland.
5 Id.
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Holland. Likewise, we reverse the obviousness rejection of claims 12, 19,
and 20 over Narin.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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