Ex Parte Ionescu et al

Patent Trial and Appeal Board

Dec 4, 2018

14026223 (P.T.A.B. Dec. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/026,223 09/13/2013 Paul Ionescu
73109 7590 12/06/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CA920120037US1_8150-0418 7560
EXAMINER
STORK, KYLER
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
12/06/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL IONESCU and IOSIF VIOREL ONUT
Appeal 2018-002662
Application 14/026,223
Technology Center 2100
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 21--40. We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm-in-part.
STATEMENT OF THE CASE
Appellants' invention identifies sequential browsing operations by
(1) receiving session data associated with plural sessions; (2) creating a
reduced page for each page in a series of pages associated with a first
session; and (3) creating a hash value associated with each reduced page. If
1 Appellants identify the real party in interest as IBM Corporation. App.
Br. 1.
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Application 14/026,223
the hash value of the first session is equivalent to that of the second session,
equivalent pages are identified and merged to create a common sequence.
See generally Abstract; Spec. ,r,r 78-86; Fig. 8. Claim 21 is illustrative:
21. A computer-implemented process, comprising:
receiving session data derived from a first session and a second
sess10n;
filtering elements from a page in a first series of pages associated with
the first session to generate a reduced page of the page;
hashing the reduced page to create a hash value for the reduced page;
comparing the hash value to each hash value associated with a
respective reduced page in a second series of pages associated with the
second session;
identifying equivalent pages, respectively found within the first and
second series of pages, upon hash values of the equivalent pages being
equivalent; and
merging the equivalent pages to create a common sequence.
THE REJECTION
The Examiner rejected claims 21--40 under 35 U.S.C. § I03(a) as
unpatentable over Cross (WO 02/48899 Al; published June 20, 2002),
Yahagi (US 2002/0038319 Al; published Mar. 28, 2002), and Chitapura
(US 2009/0049062 Al; published Feb. 19, 2009). Final Act. 2-14. 2
FINDINGS AND CONTENTIONS
Regarding independent claim 21, the Examiner finds that Cross
discloses, among other things, ( 1) receiving session data derived from first
2 Throughout this opinion, we refer to (1) the Final Rejection mailed March
23, 2017 ("Final Act."); (2) the Appeal Brief filed August 9, 2017 ("App.
Br."); (3) the Examiner's Answer mailed November 17, 2017 ("Ans."); and
(4) the Reply Brief filed January 15, 2018 ("Reply Br.").
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and second sessions; (2) identifying equivalent pages found within first and
second series of pages; and (3) merging the equivalent pages to create a
common sequence. Final Act. 2--4; Ans. 3. According to the Examiner,
Cross teaches this functionality when (1) a user arrives at a site (which is
said to teach a "page"); (2) the user re-enters the site via the same path
(which is said to teach an equivalent "page"); and (3) the system merges
both sessions together. See Ans. 3.
However, the Examiner finds Cross does not explicitly disclose
(1) filtering elements from a page to generate a reduced page; (2) hashing
the reduced page to create an associated hash value; (3) comparing the hash
value to each hash value associated with a respective reduced page in a
second series of pages associated with the second session; and
(4) determining that the equivalent pages' hash values are equivalent. Final
Act. 4--7. The Examiner, however, cites Y ahagi for teaching elements
(1) and (2) and Chitapura for teaching elements (3) and (4), respectively, in
concluding that the claim would have been obvious. Id.
Appellants argue, among other things, that Cross does not identify the
recited equivalent pages, let alone merge them to create a common sequence
as claimed. App. Br. 8-10; Reply Br. 2-3. Appellants add that Yahagi does
not filter page elements, and Chitapura's hash value comparison is not of
reduced pages as claimed. App. Br. 10-14; Reply Br. 3---6.
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 21 by finding
that Cross, Y ahagi, and Chitapura collectively would have taught or
suggested the recited (1) filtering to generate a reduced page, (2) hashing the
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reduced page, (3) comparing reduced page hash values, and (4) identifying
equivalent pages; and ( 5) merging the equivalent pages to create a common
sequence?
ANALYSIS
Claims 21-34
We begin by noting that claim 21 recites, in pertinent part, identifying
equivalent pages upon hash values of equivalent pages being equivalent.
Our emphasis on the term "upon" underscores a conditional limitation that,
in a recited method, need not be satisfied to meet such a claim. See Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB Apr. 28, 2016)
(precedential); see also MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2111.04(II) (9th ed. Rev. 08.2017, Jan. 2018) (citing
Schulhauser). 3 Nor do we see any reason to treat the computer program
product claim 28 any differently given its commensurate conditional
limitation.
Because the recited "upon" condition need not be satisfied to meet the
claim, the recited equivalent page identification and merging steps that are
contingent upon satisfying this condition need not occur to satisfy the claim.
Therefore, Appellants' arguments regarding the cited prior art's alleged
3 Although the limitations at issue in Schulhauser were rendered conditional
by reciting the term "if," we discern no meaningful distinction between the
recitation of "if' and "upon" in this context. The term "upon" is defined, in
pertinent part, as "after something happens." MACMILLAN DICTIONARY
(2018), available at http://www.macmillandictionary.com. Another
dictionary defines the term "upon," in pertinent part, as "[a]t the time of; on
occasion of." AMERICAN DICTIONARY OF THE ENGLISH LANGUAGE (Noah
Webster ed. 1828), available athttp://www.webstersdictionary1828.com.
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shortcomings regarding these limitations (App. Br. 8-1 O; Reply Br. 2-3) are
unavailing and not commensurate with the scope of the claim for that reason
alone.
In the rejection, the Examiner cites Cross for teaching identifying and
merging equivalent pages to create a common sequence. Final Act. 3--4
(citing Cross 13:19-14:3). In the Answer, the Examiner finds that Cross
teaches this equivalent page identification and merge functionality when
( 1) a user arrives at a site ( which is said to teach a "page"); (2) the user re-
enters the site via the same path (which is said to teach an equivalent
"page"); and (3) the system merges both sessions together-sessions that are
said to have associated documents. See Ans. 3, 5.
Cross' system tracks an Internet user's browsing activity. See Cross
Abstract; 1: 1-9. Cross explains that when a first document is requested
from a web server, the document is returned to the client with a session
identifier (ID) attached. Cross 1: 17-19. Thereafter, the client's browsing
software is expected to send a copy of the session ID back to the server
every time the user requests an additional document from that server. Cross
1:19-23.
A user's browsing activities, however, may result in detecting
multiple session IDs. Cross 13: 8-9. One such activity is when a user
( 1) visits a site, (2) backs completely out of the site using the back button,
and (3) re-enters the site via the same path. Cross 13:9-11. In light of
Cross' teachings, Cross at least suggests that when a user visits a site under
this scenario, a document will be returned to the user with an attached
session ID. See Cross 1:17-19; 11:15-18; Fig. 3. Likewise, when a user
backs out of the site and re-enters it via the same path, a document will also
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be returned to the user, but with a different session ID. See Cross 1: 17-19;
11:15-18; 13:10-11.
But by merging both sessions together, both session IDs would then
reference a single session. Cross 13 :20-22. Although sessions are merged
in this scenario, we fail to see-nor has the Examiner shown-how
equivalent pages are merged, let alone that they create a common sequence
as claimed. Accord Reply Br. 3 (noting this deficiency). Although the
Examiner finds that Cross merges sessions (Ans. 3), the Examiner does not
show or explain how Cross merges pages, let alone equivalent pages to
create a common sequence as claimed. Nor will we speculate in that regard
here in the first instance on appeal.
To be sure, Appellants' proffered definition of "session" on page 14
of the Appeal Brief is from Wikipedia-a non-peer-reviewed source with
dubious reliability and, therefore, low probative value. 4 Instead, we rely on
the generally-understood meaning of "session" in the art, namely that it is
"[a]n active communication, measured from beginning to end, between
devices or applications over a network." Harry Newton, NEWTON'S
TELECOM DICTIONARY 816 (22d ed. 2006). Given this meaning of "session"
in the art, we fail to see how Cross' merging sessions also merges pages as
the Examiner seems to suggest. Nor will we speculate in that regard here.
4 See Bing Shun Liv. Holder, 400 F. App'x 854, 857 (5th Cir. 2010)
(unpublished) (noting Wikipedia's unreliability and citing Badasa v.
Mukasey, 540 F.3d 909, 910-11 (8th Cir. 2008)); see also Ex parte Three-
Dimensional Media Group, Ltd., No. 2009-004087, 2010 WL 3017280
(BP AI 2010) (non-precedential), at * 17 ("Wikipedia is generally not
considered to be as trustworthy as traditional sources for several reasons, for
example, because (1) it is not peer reviewed; (2) the authors are unknown;
and (3) apparently anyone can contribute to the source definition").
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We reach this conclusion despite the Examiner's reasonable reliance
on Y ahagi for teaching hashing a reduced page and Chitapura for teaching
comparing such a hash value with those of other pages. See Final Act. 4--7;
Ans. 4. Although Yahagi's systemjoins various elements together, such as
those associated with the tags entitled "personal, "family name," and
"former name" in Figure 10, the resulting display nonetheless deletes nodes
of the original elements to yield the more compact document shown in
Figure 11, effectively filtering the original document of superfluous
elements. Compare Y ahagi Fig. 10 with Fig. 11. Appellants' arguments to
the contrary (App. Br. 10-12; Reply Br. 3--4) are unavailing and not
commensurate with the scope of the claim.
Furthermore, it is undisputed that Chitapura compares hash values to
determine structural similarity between documents, but does not do so for
reduced pages or from pages from different sessions. See App. Br. 13;
Reply Br. 6; see also Chitapura ,r,r 28-31, 36; Fig. 1. But as noted
previously, the Examiner relies on Y ahagi for teaching hashing reduced
pages. See Final Act. 4--7; Ans. 4. Appellants' contention, then, that
Chitapura's "shingles" are not reduced pages, but rather hash values (App.
Br. 14) is inapposite to the Examiner's rejection that relies on Yahagi-not
Chitapura-for teaching reduced pages as noted above. See Final Act. 4--7;
Ans. 4.
Given these collective teachings, we see no reason why the compared
hash values in Chitapura could not be from reduced pages in light of Y ahagi.
Such an enhancement uses prior-art elements predictably according to their
established functions-an obvious improvement. See KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007). To the extent that Appellants
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Application 14/026,223
contend otherwise, there is no persuasive evidence on this record to
substantiate such a contention.
Nor do we see any reason why the Chitapura/Yahagi hash value
comparison could not be combined with Cross' system to determine
equivalent pages as the Examiner proposes. See Final Act. 4--7; Ans. 5.
Such an enhancement uses prior-art elements predictably according to their
established functions-an obvious improvement. See KSR, 550 U.S. at 417.
That Chitapura does not say whether the compared documents are
from different sessions, as Appellants indicate (Reply Br. 6), is of no
consequence here, for the Examiner's rejection is not based on Chitapura
alone, but rather the cited references' collective teachings. It is well settled
that one cannot show nonobviousness by attacking references individually
where, as here, the obviousness rejection is based on the combination of
references. In re Keller, 642 F.2d 413,426 (CCPA 1981).
In short, although we are not persuaded of error in the Examiner's
rejection based on the collective teachings and suggestions of the cited prior
art with respect to the first five limitations of claim 21, namely the receiving,
filtering, hashing, comparing, and identifying steps, we are persuaded of
error in the Examiner's findings and conclusions with respect to the last step,
namely the merging step.
But because the identifying step is a conditional limitation, and the
merging step is contingent upon satisfying that condition, these steps need
not occur to satisfy the claim. See Schulhauser, at *4--5. As such,
Appellants' arguments with respect to the cited prior art's shortcomings with
respect to the identifying and merging steps (App. Br. 8-10; Reply Br. 2-3)
are not commensurate with the scope of the claim.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21, and claims 22-34 not argued separately with particularity.
Claims 35-40
We do not sustain the Examiner's rejection of claim 35 reciting, in
pertinent part, a computer hardware system with a processor configured to
initiate operations commensurate with those recited in claim 21, including
identifying equivalent pages upon hash values of equivalent pages being
equivalent.
Despite this conditional limitation, where, as here, the claim recites an
apparatus whose structure performs a function that need only occur if a
condition precedent is met, claim 35 still requires structure configured to
perform the function should the condition occur. See Schulhauser, at *7.
Therefore, claim 3 5 's structure, namely the processor with the recited
configuration, is present in the system regardless of whether the condition is
met and the function is actually performed.
That is, to render obvious claim 35, the cited prior art must teach or
suggest corresponding structure that is "configured to" initiate, among other
things, the recited merging operation. For the reasons noted previously,
however, the Examiner's rejection falls short in this regard.
But because a single processor is "configured to" initiate all six
functions, claim 35 effectively recites a single "means" claim. Apart from
reciting that the processor is configured to initiate these operations, the claim
recites no particular structure to achieve this end.
Although omitting the term "means" in a claim element creates a
rebuttable presumption that§ 112(f) does not apply, such an omission does
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not automatically prevent that element from being construed as a means-
plus-function element. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1348 (Fed. Cir. 2015) ( en bane). In such a case, § 112( f) will apply if the
claim term fails to recite sufficiently definite structure, or else recites
function without reciting sufficient structure for performing that function.
Id. at 1349.
That is the case here. First, the term "processor" is merely a generic
description for hardware and/ or software that performs a specified function,
namely the six recited functions in claim 35. That is, the term "processor" is
simply a nonce word or "non-structural generic placeholder" that is
tantamount to the term "means" because it fails to connote sufficiently
definite structure and, in the context of claim 35, invokes § 112(f). Cf id. at
1350 ( discussing similar nonce words). See also MPEP § 2181 (I)(A); see
also Ex parte Lakkala, No. 2011-001526 (PTAB Mar. 13, 2013) (expanded
panel) (informative); Ex parte Ero!, No. 2011-001143 (PTAB Mar. 13,
2013) (expanded panel) (informative); Ex parte Smith, No. 2012-007631
(PTAB Mar. 14, 2013) (expanded panel) (informative)). 5
As the expanded panels noted in those decisions, a "processor" is "a
general purpose computer, a central processing unit ('CPU'), or a program
that translates another program into a form acceptable by the computer being
used." See Lakkala at 10; see also Ero! at 15; Smith at 13. Given this
definition, those panels held that the term "processor" in the claims at issue
in those cases was a non-structural term that would not be recognized by
skilled artisans as reciting sufficiently definite structure for implementing
5 These three informative Opinions are available from the Board's web page
at http://www.uspto.gov.
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the associated functions. See Lakkala at 10-13; see also Ero! at 15-18;
Smith at 13-17.
The Examiner, however, does not articulate such a construction.
Nevertheless, we leave that question to the Examiner to consider, as well as
the related question of whether the single recited "hardware processor" in
claim 35 is equivalent to a single "means" limitation that is not enabled for
its scope under§ 112(a). See Ex parte Rodriguez, 92 USPQ2d 1395, 1406-
11 (BP AI 2009) (precedential) ( discussing functional claiming and scope of
enablement); see also MPEP § 2164.08(a) (citing In re Hyatt, 708 F.2d 712
(Fed. Cir. 1983)).
Nevertheless, for the reasons noted previously, we are persuaded that
the Examiner erred in rejecting claim 35, and claims 36-40 for similar
reasons.
CONCLUSION
Under§ 103, the Examiner did not err in rejecting claims 21-34, but
erred in rejecting claims 3 5--40.
DECISION
We affirm-in-part the Examiner's decision to reject claims 21--40.
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-IN-PART
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