Ex Parte Error

Patent Trial and Appeal Board

Sep 22, 2016

11669869 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111669,869 0113112007
72058 7590 09/26/2016
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Christopher R. Error
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.
58083-857815 (00036) 6125
EXAMINER
ELL, MATTHEW
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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):
ipefiling@kilpatrickstockton.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER R. ERROR
Appeal2015-000916
Application 11/669,869
Technology Center 2100
Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 29-53, which constitute of all of the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Adobe Systems
Incorporated. App. Br. 4.
2 Claims 1-28 have been canceled. App. Br. 6.
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Application 11/669,869
INVENTION
Appellant's invention relates to a retrieval mechanism for a web visit
simulator. Abstract. Claim 29 is illustrative and reads as follows:
29. A method executed by a processor, the method comprising:
while displaying, via a web analytics tool, a first
presentation that replicates characteristics of a first web site visit,
receiving, via the web analytics tool, a request for a second
presentation that replicates characteristics of a similar web site
visit;
responsive to receiving the request for the second
presentation, determining that a second web site visit is similar
to the first web site visit based on at least one criterion associated
with both the first web site visit and the second web site visit,
wherein the at least one criterion is indicative of at least one of a
manner of initiating the first web site visit and the second web
site visit, an identity of a visitor initiating the first web site visit
and the second web site visit, and at least one input received from
the visitor during the first web site visit and the second web site
visit; and
displaying the second presentation via the web analytics
tool, wherein the second presentation comprises a representation
of at least one of a plurality of web pages accessed during the
second web site visit and an interactive depiction of the order in
which the plurality of web pages were accessed during the
second web site visit.
REFERENCES AND REJECTIONS
Claims 29, 30, 32--42, and 44--53 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of McGuire (US
2002/0129363; published Sept. 12, 2002) and Donsbach et al. (US
2006/0212362; published Sept. 21, 2006) ("Donsbach").
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Claims 31 and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McGuire, Donsbach, and Farrington et
al. (US 2003/0214538; published Nov. 20, 2003) ("Farrington").
ANALYSIS
We have considered Appellant's arguments, but do not find them
persuasive of error. We agree with and adopt as our own the Examiner's
findings of facts and conclusions as set forth in the Answer and in the Action
from which this appeal was taken, to the extent consistent with our analysis
below. We provide the following explanation for emphasis.
Claims 29, 30, 32-36, 38, 39, 41, 42, 44--48, 50, 51, and 53
In rejecting representative claim 29, the Examiner found that McGuire
teaches or suggests all of the recited limitations, except that the request for
the second presentation is for a similar web site visit, the determining step
determines that the second web site visit is similar to the first web site visit
based on a criterion associated with both the first web site visit and the
second web site visit, and the request is received while displaying the first
presentation. Final Act. 3--4. The Examiner relied on Donsbach as teaching
or suggesting those limitations. Id. at 4 (citing Donsbach Figs. 1 and 4).
Appellant contends the cited portions of McGuire and Donsbach do
not teach or suggest determining that another web site visit is similar to a
currently displayed web site visit based on at least one criterion that is
associated with both the first and second web site visits, as claim 29
requires. App. Br. 10-13. Specifically, Appellant argues that the
combination of McGuire and Donsbach teaches only finding a web page that
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is similar to a displayed web page, not a "web site visit" similar to a
currently displayed "web site visit," as recited in claim 29.
Appellant's arguments do not persuade us of Examiner error. The
Examiner found that McGuire teaches displaying, via a web analytics tool, a
first presentation that replicates characteristics of a first web site visit. Final
Act. 3. The Examiner also found that "searching by similar attributes to a
target object is well known in the art," as exemplified by Donsbach. Final
Act. 4. The Examiner concluded that it would have been obvious to an
artisan of ordinary skill to modify the web analytics tool of McGuire to
allow searching for a similar web site visit based on attributes of a current
web site visit, as taught or suggested by Donsbach. Id.; Ans. 3.
Rather than address the Examiner's factual findings and conclusion of
obviousness, Appellant asserts that the combined teachings of McGuire and
Donsbach merely disclose (i) displaying a page from a re-creation of a user's
visit to a web site (as disclosed in McGuire) and (ii) finding a web page
having content that is similar to the displayed page (as disclosed in
Donsbach). App. Br. 12-13; Reply Br. 3. The Examiner, however, rejected
claim 29 for obviousness, not anticipation. The test for obviousness is what
the combined teachings of the references would have suggested to those
having ordinary skill in the art. In re Mouttet, 686 F.3d 1322, 1332 (Fed.
Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Appellant
has not persuasively explained why the cited portions of the combined
references would not have taught or suggested the disputed limitation to an
artisan of ordinary skill.
Appellant next contends the Examiner relied on improper hindsight
reasoning in rejecting claim 29 because an artisan of ordinary skill in the art
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would not have been able to obtain the claimed invention without the
teachings in Appellant's specification. App. Br. 14. In particular, Appellant
argues that obviousness requires that "one skilled in the art could have
combined the elements as claimed with no change in their respective
functions." App. Br. 13; Reply Br. 4 (citing MPEP §§ 2143(A), 2143.02).
Appellant's arguments are unpersuasive of Examiner error. Here, as
the Examiner explained, the proposed combination is based on adding a
"Compare" function, as shown in Figure 4 of Donsbach, to the screen of
Figure 2 of McGuire to allow a user to find similar web site visits. Ans. 4--5.
The portion of the MPEP emphasized by Appellant pertains to the
requirement that there be a reasonable expectation of success in modifying
or combining prior art references. See MPEP § 2143.02. 3 Appellant has not
presented persuasive explanation or evidence that an artisan of ordinary skill
would not have had a reasonable expectation of success in modifying
McGuire with the teachings of Donsbach as proposed by the Examiner.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of McGuire and Donsbach teaches or discloses
the disputed limitations of claim 29.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 29, as well as the 35 U.S.C. § 103(a) rejection of
independent claims 41, and 53, which Appellant argues are patentable for
similar reasons. App. Br. 10-13. We also sustain the Examiner's rejection
3 Appellant also refers to MPEP § 2143(A), which we interpret to refer to
§ 2143 (I)(A), titled "Combining Prior Art Elements According to Known
Methods To Yield Predictable Results." Appellant, however, has not
persuasively explained how the Examiner erred in light of this MPEP
section.
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of dependent claims 30, 32-36, 38, 39, 42, 44-48, 50, and 51, for which
Appellant makes no additional arguments. Id. at 13, 14.
Claims 31 and 43
With regard to dependent claims 31 and 43, Appellant contends the
cited portions of McGuire, Donsbach, and Farrington fail to disclose the
limitation "wherein the at least one criterion comprises at least one default
criterion automatically selected by the processor without input from an input
device selecting the at least one criterion," recited in the claims. App. Br.
15, 22, and 26. Appellant argues that
[t]he combination of references merely discloses that upon
initializing a software tool (as disclosed by Farrington), a visual
presentation of a web site visit (as disclosed by McGuire) can be
obtained by the software tool using default search criteria (as
disclosed by Farrington), and another web page similar to a
displayed web page can be retrieved (as disclosed by Donsbach).
Jd.at16.
Appellant's arguments do not persuade us that the Examiner erred.
To the extent that Appellant's arguments regarding claims 31 and 43 are
based on the arguments made in support of the patentability of claim 29, we
are not persuaded of Examiner error for the reasons discussed above.
Moreover, Appellant has not addressed the Examiner's rejection. In
particular, Appellant has not persuasively explained why the cited portions
of the references, when combined in the manner proposed by the Examiner,
would not have suggested the disputed limitation to an artisan of ordinary
skill.
Moreover, Appellant's argument that Farrington would not have
suggested using default search criteria at any time other than during
initialization of a software tool is not persuasive. Using default values is
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well known in the art and Appellant has not presented explanation or
evidence sufficient to show that combining Farrington with McGuire and
Donsbach would have been "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. 398, 418-19 (2007)).
Appellant further contends
[t]he proposed combination of McGuire (and Donsbach) with
Farrington would change the principle of operation of the
invention disclosed in McGuire . . . from a web provider
specifying when presentations of web site visits are to be
generated to the opposite principle of using default criteria
without user input to determine when to generate these
presentations.
App. Br. 17.
Appellant's arguments are unpersuasive. As the Examiner points out,
Appellant's "principle of operation" argument does not address the
Examiner's rejection, as Appellant attacks the combination of McGuire and
Farrington, while the Examiner relies on the combination of McGuire,
Donsbach, and Farrington. See Ans. 6. Furthermore, the skilled artisan is "a
person of ordinary creativity, not an automaton," and this is a case in which
the skilled artisan would "be able to fit the teachings of multiple patents
together like pieces of a puzzle." KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398, 420, 421 (2007).
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claims 31 and 43.
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Claims 37 and 49
With regard to dependent claims 37 and 49, Appellant argues that the
cited portions of McGuire and Donsbach do not teach or suggest the
limitation "wherein the second web site visit is selected at random from a
plurality of web site visits each having at least one respective value for the at
least one criterion corresponding to the at least one first value associated
with the first web site visit," recited in the claims. App. Br. 18-19.
Specifically, Appellant argues that the combination of references would
simply disclose that the first presentation displayed by a software tool (as
disclosed by McGuire) is selected at random (as disclosed by Donsbach),
and that randomly selecting a first presentation is not the same as, or
suggestive of, randomly selecting a similar web site visit from multiple web
site visits that are similar to a currently displayed web site visit, as recited in
claims 37 and 49. Id.
We are not persuaded of error. Appellant has not persuasively
explained why the cited portions of the combined references would not have
suggested the disputed limitation to an artisan of ordinary skill. Moreover,
Rule 41.37 "require[s] more substantive arguments in an appeal briefthan a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art." Lovin, 652 F.3d at
1357.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claims 37 and 49.
Claims 40 and 52
With regard to dependent claims 40 and 52, Appellant argues that the
cited portions of McGuire and Donsbach do not teach or suggest the recited
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limitation "wherein each web page of the plurality of web pages is displayed
for a respective first amount of time proportional to a respective second
amount of time that the web page was accessed during the second web site
visit." App. Br. 19-20. Appellant argues that "McGuire lacks any explicit
disclosure that these playback options involve presenting a given web page
for an amount of time that is proportional to a different amount of time that
the web page was accessed during a visit." Id. at 20. Appellant further
argues that Donsbach does not teach or suggest displaying pages of web site
visits at all. Id.
Appellant's arguments are unpersuasive because Appellant attacks the
references individually, even though the Examiner relied on the combination
of McGuire and Donsbach as teaching or suggesting the disputed limitations.
Mouttet, 686 F.3d at 1332. Moreover, we agree with the Examiner that the
plain language of claim 40 requires only that the first amount of time be
proportional to the second amount of time, and nothing in the claim requires
one to be faster or slower than the other. Ans. 7-8. We also agree with the
Examiner that McGuire's teaching of recreating a web site visit in movie
form, "depicting what users were actually doing/seeing/hearing when they
accessed a Web Site," when combined with the cited teachings of Donsbach,
teaches or suggests the disputed limitation. See Ans. 8 (citing McGuire
Abstract, ,-r 11 ).
Appellant argues for the first time in the Reply Brief that the
Examiner's reliance on McGuire's teaching of a "reenactment" is
insufficient to teach or suggest the disputed limitation. Reply Br. 9.
Appellant, however, has waived this argument because Appellant presented
it for the first time in the Reply Brief, without a showing of good cause. See
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37 C.F.R. § 41.41(b)(2) (2012); accord Ax parte Borden, 93 USPQ2d 1473,
1473-74 (BPAI 2010 (informative opinion) ("[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not."). We note,
however, that Appellant has not shown the Examiner's interpretation of
"proportional" (Ans. 7-8) is overly broad, unreasonable, or inconsistent with
the Specification. See Reply Br. 8-9.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claims 40 and 52.
DECISION
We affirm the decision of the Examiner rejecting claims 29-53.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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