Ex Parte Kasriel

Patent Trial and Appeal Board

Jan 23, 2015

10128595 (P.T.A.B. Jan. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEPHANE KASRIEL
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Appeal 2012-004435
Application 10/128,595
Technology Center 2400
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Before JEAN R. HOMERE, STANLEY M. WEINBERG, and
LINZY T. McCARTNEY, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–5, 7–9, 13–22, 24–32, 35, 36, 38, and 40–56. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
Appellant’s “invention relates to the field of computer networks, and
in particular to a system and method that facilitates an analysis of the
performance of sites on a network.” (Spec. 1:8–9.) The appealed
independent claims (claims 1, 18, and 30) illustrate the claimed subject
matter:
1. A web-page performance toolbar system, comprising:
a first display component that is configured to effect a
display of a web-page in a browser display; and
a second display component that is configured to effect a
display of performance data associated with the web-page in a
tool bar providing an interface to a web-page performance
analysis system simultaneously along with the web-page in the
browser display, the performance data includes data about the
web-page relative to other pages of the web-site.
18. A method performed by a browser for displaying
performance data associated with a web-page, comprising steps
of:
displaying the web-page in a browser display; and
displaying the performance data simultaneously in a
toolbar in the browser display simultaneously with the web-
page, the toolbar providing an interface to a web-page
performance analysis system, the performance data includes
data about the web-page relative to other pages of the web-site.
30. A web-based service providing web-analysis for web-
sites, the web-based service being operatively configured to
perform steps of:
providing a performance display system to a browser that
is configured to display performance data associated with a
web-page in a tool bar in a browser display while the web-page
is also displayed by a web-page display system in the browser
display; and
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sending performance data from the web-based service to
the performance display system in the browser, the performance
data includes data about the web- page relative to other pages
associated with the web page that are part of a single web-site.

REJECTIONS
Claims 1–5, 7–9, 13–22, 24–32, 35, 36, 38, and 40–56 stand rejected
under 35 U.S.C. § 101 because the claims fail to fall within a statutory
category of invention.
Claims 1–5, 7–9, 13–22, 24–32, 35, 36, 38, 40–56 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Becker (US 6,834,372 B1;
Dec. 21, 2004) and Leshem (US 5,870,559; Feb. 9, 1999).
ISSUES
(1) Do claims 1–5, 7–9, 13–22, 24–32, 35, 36, 38, and 40–56
encompass non-statutory subject matter?
(2) Does the Examiner’s combination of Becker and Leshem teach or
suggest displaying “performance data [that] includes data about the web-
page relative to other pages of the web-site” as recited in claims 1, 18, and
30?
ANALYSIS
§ 101
The Examiner found the appealed claims encompass non-statutory
subject matter because the claims “are directed to [a] program . . . [and] not
limited to tangible embodiments since they do not claim physical articles or
objects.” (Ans. 5.) In response, Appellant argues the “physical nature” of
the claims is “directed to a machine and [therefore] not software per se.”
(App. Br. 13.) In particular, Appellant asserts independent claim 1 recites a
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“web-page performance toolbar system” that “is describing an apparatus
(i.e., a display).” (Id. at 11; see also Reply Br. 3–4.) Appellant makes a
similar argument regarding independent claim 18: According to Appellant,
claim 18 “positively recite[s] performing the method steps within a physical
structure (i.e., a browser display).” (App. Br. 11.) As for independent claim
30, Appellant asserts the recited “web-based service” includes “features . . .
[that] by their very nature are parts of a machine.” (Id. at 12.)
Contrary to Appellant’s arguments, under the broadest reasonable
interpretation in light of Appellant’s specification, claims 1, 18, and 30 are
not limited to a machine or physical structure. For example, Appellant’s
specification indicates the “system” recited in claim 1 is simply a toolbar
integrated with a web browser: “These objects and others are achieved by
providing an integration between a web-site performance system and a web-
site navigation system. A user is provided a toolbar that is synchronized
with a web-site navigation system, such as the Microsoft Internet Explorer
or Netscape Navigator browser systems. The toolbar provides an interface
. . . .” (Spec. ¶ 13 (emphasis added); see also id. Figs. 1A, 1B.) And
although claims 1 and 18 use the word “display” in various contexts, none of
these uses limits claim 1 or claim 18 to a machine or physical structure. For
example, claim 1 recites first and second “display components” and both
claim 1 and claim 18 recite a “browser display.” As admitted by Appellant,
the recited “display components” are parts of a web browser, (see App. Br.
17), and Appellant’s drawings indicate a “browser display” consists of the
entire web browser, (see Spec., Figs. 1A, 1B).
The extrinsic evidence cited by Appellant also suggests Appellant’s
various uses of the word “display” do not limit claims 1 or 18 to a machine
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or physical structure. Appellant notes the Merriam-Webster Online
Dictionary defines “display” as a noun including “an electronic device
([such] as a cathode-ray tube) that presents information in visual form; also:
the visual.” (Reply Br. 4.) But Appellant neglects the latter portion of
Merriam-Webster’s definition, which is truncated in Appellant’s brief:
“also : the visual information.” Display Definition, MERRIAM-WEBSTER
ONLINE DICTIONARY, http://www.merriam-webster.com/dictionary/display
(last visited Dec. 23, 2014). Thus, the word “display” when given its
broadest reasonable interpretation, encompasses simply visual information.
As for claim 30, Appellant cites a definition that makes clear claim 30
is not limited to a machine or physical structure. Claim 30 recites a “web-
based service,” and Appellant contends the definition of “web service” from
a W3C Working Group establishes that a web service includes parts of a
machine. (App. Br. 12.) But that definition states that a “web service” is
“[a] software system designed to support interoperable machine-to-machine
interaction over a network.” (Id. at 12 (emphasis added).) Accordingly, the
term “web-based service” encompasses software.
At bottom, based on the record before us and Appellant’s arguments,
we disagree with Appellant that the appealed claims are limited to a machine
or physical structure. We therefore sustain the Examiner’s rejection of
claims 1, 18, and 30 and their respective dependent claims under 35 U.S.C.
§ 101.
§103
Claim 1 recites “a second display component that is configured to
effect a display of performance data” that “includes data about the web-page
relative to other pages of the web-site.” (App. Br. 28 (emphasis added).)
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Claims 18 and 30 recite similar limitations. (Id. at 30, 32.) The Examiner
found Becker teaches these limitations because Becker discloses a database
that includes data for two webpages from the same website. (See Ans. 6,
18–19; see also Becker, Table 1.) Appellant asserts Becker’s database
contains data for a single page; Appellant contends Becker does not teach or
suggest performance data “about [a] web-page relative to other pages of [a]
web-site,” much less displaying such data. (See App. Br. 18 (emphasis
added).)
We agree with Appellant. Although the Examiner correctly found
Becker’s database contains information concerning two webpages from the
same website, (see Ans. 6, 18–19), the Examiner has not established the
cited portions of Becker teach or suggest displaying performance data that
“includes data about the web-page relative to other pages of the web-site” as
recited in the claims. Accordingly, we do not sustain the obviousness
rejection of claims 1, 18, and 30. Because the remaining appealed claims
depend from either claims 1, 18, or 30, we do not sustain the obviousness
rejection of the remaining claims.
DECISION
For the above reasons, we affirm the rejection of claims 1–5, 7–9, 13–
22, 24–32, 35, 36, 38, and 40–56 under 35 U.S.C. § 101, and we reverse the
rejection of these claims under 35 U.S.C. § 103. Because we have affirmed
at least one ground of rejection with respect to each claim on appeal, the
Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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