Ex Parte Iannucci et alDownload PDFPatent Trial and Appeal BoardJun 4, 201310938412 (P.T.A.B. Jun. 4, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte LOUIS A. IANNUCCI, ROBERT J. RONAN, 7 and PETER E. KULIS 8 ___________ 9 10 Appeal 2012-000559 11 Application 10/938,412 12 Technology Center 3600 13 ___________ 14 15 16 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17 MEREDITH C. PETRAVICK, Administrative Patent Judges. 18 19 FETTING, Administrative Patent Judge 20 21 .22 DECISION ON REQUEST FOR REHEARING 23 24 Appeal 2012-000559 Application 10/938,412 2 STATEMENT OF CASE 1 This is a decision on rehearing in Appeal No. 2012-000559. We have 2 jurisdiction under 35 U.S.C. § 6(b). 3 Requests for Rehearing are limited to matters misapprehended or 4 overlooked by the Board in rendering the original decision. 37 C.F.R. 5 § 41.52. 6 ISSUES ON REHEARING 7 Appellant raises 5 issues in the Request for Rehearing. 8 1. Appellant's feature of "key components being a proper subset" 9 refers to a selected group of the components that does not contain 10 all of the components of the web page. 11 2. The receiving step claim feature is actually directed to "receiving 12 a selection," i.e., receiving an indication of which components of 13 the webpage are indicated as being the key components. 14 3. Killian's "composite data object" is a not proper subset of all the 15 objects downloaded. 16 4. The nature of data manipulated in a method claim is entitled to 17 patentable weight. 18 5. Appellant's claim CSLV however is the ratio of the total number 19 of key components with acceptable performance values to the total 20 number of key components of the web page, where by definition 21 the number of key components is less than the total number of 22 components of the web page. 23 ANALYSIS 24 We found in our decision that the rejection of claims 1, 5-7, and 9 under 25 35 U.S.C. § 103(a) as unpatentable over Killian, Mangipudi, and Olsson is 26 Appeal 2012-000559 Application 10/938,412 3 proper and the rejection of claims 9, 10, 14-16, 18, 19, 23-25, and 27-30 1 under 35 U.S.C. § 103(a) as unpatentable over Killian, Mangipudi, Olsson, 2 and Sarrel is proper. (Decision 14). 3 The Appellants argue the panel misapprehended the claims and the law 4 as to patentable weight (Request 1-6). 5 As to the first issue, claim 1 recites “receiving a selection of a set of key 6 components of a web page, the set of key components being a proper subset 7 of a plurality of components of the web page.” Claim 1 also uses the 8 transition phrase “comprising.” Such a transition does not preclude 9 additional unclaimed elements. Thus, even receiving an entire set 10 necessarily and inherently receives a proper subset within that entire set. 11 As to the second issue, the same phrase in claim 1 recites “receiving a 12 selection of a set of key components of a web page.” There is no 13 punctuation or other delineation following the phrase “receiving a 14 selection.” A selection is an abstraction and so itself is a non-entity. 15 Selection refers to what is selected or the act of selecting. The phrase “of a 16 set of components” following “receiving a selection” implies the selection 17 refers to what is selected, viz. the set of components. The claim does not 18 narrow the manner in which selection occurs or is manifest, or even that the 19 results are manifest. Neither the selection, nor the proper subset is referred 20 to in any of the succeeding steps, so any limitations on both the selection and 21 proper subset are entirely within the confines of the first recited limitation. 22 Rather, instead, the second recited limitation recites “each of the key 23 components of the web page,” which could be a larger set than in the first 24 limitation. 25 Appeal 2012-000559 Application 10/938,412 4 As to the third issue, we found that Killian described receiving not just a 1 single object, but also plural objects. 2 Often the performance monitoring instructions instruct a client 3 to monitor the time required to download a composite data 4 object. They can also instruct the client to measure the time 5 associated with other events, such as the time required to 6 download individual component data objects 7 8 Decision 6,:FF 04. 9 As to the fourth and fifth issues, we found that name of the data item 10 generated is not worthy of patentable weight, as the claim never uses the 11 data functionally. Appellants argue that 12 The generation of a customer service level value is predicated 13 "on a number of key components ... having acceptable 14 performance values divided by a total number of key 15 components." This specifies the functional relationship between 16 "key components" and the generated "customer service level 17 value" that requires the Board to give "key components" 18 patentable weight. 19 20 Request 4. 21 The panel afforded patentable weight to the calculation and its operands. 22 The panel simply found that the operands recited had nominal titles and the 23 titles were given no weight. The panel found that the prior art described 24 computing performance values for web sites generally, and a utilization 25 statistic where total number is the denominator specifically. The panel then 26 found it predictable to one of ordinary skill to apply such a performance 27 parameter to web components. Decision 13. 28 Appeal 2012-000559 Application 10/938,412 5 CONCLUSION 1 Nothing in Appellant’s request has convinced us that we have 2 overlooked or misapprehended the claims as argued by Appellant. 3 Accordingly, we DENY the request. 4 DECISION 5 To summarize, our decision is as follows: 6 We have considered the REQUEST FOR REHEARING 7 We DENY the request that we reverse the Examiner as to claims 1, 5-8 7, 9, 10, 14-16, 18, 19, 23-25, and 27-30. 9 10 DENIED 11 12 13 14 Klh 15 Copy with citationCopy as parenthetical citation