Ex Parte LAKRITZ

Patent Trials and Appeals Board

May 28, 2019

13734168 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/734, 168 01/04/2013 David LAKRITZ
26111 7590 05/30/2019
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
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.
3132.0050007 7695
EXAMINER
SMITH, BENJAMIN J
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
e-office@stemekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID LAKRITZ 1
Appeal2017-008087
Application 13/734, 168
Technology Center 2100
Before ERIC S. FRAHM, STACY B. MARGOLIES, and
MICHAEL T. CYGAN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 11--40. Claims 1-10 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was conducted on April 15, 2019. 2
1 According to Appellant, the real party in interest is Transperfect Global,
Inc., which is an assignee of the instant application (App. Br. 3).
2 Appellant was represented at oral hearing by Gabriel S. Gross, USP TO
Registration No. 52,973; and Salvador M. Bezos, USPTO Registration No.
60,889. Mr. Gross and Mr. Bezos also presented oral arguments for related
Appeal No. 2017-008085 (U.S. Application No. 13/734,153); and Appeal
No. 2017-008125 (U.S. Application No. 13/734,161), which both, like the
Appeal2017-008087
Application 13/734, 168
We affirm-in-part.
Appellant's Disclosed Invention
Appellant's disclosed and claimed invention concerns a method for
the multilingual translation of documents into target languages in a computer
environment, and a computer-readable medium and translation management
system for performing the translation method (Title; Abs.; Spec. 1: 13-27,
3:7--4:9; independent claims 11, 21, 31). Appellant's Specification discloses
using a visitor module (Fig. 2, 202) for communicating between a visitor's
browser (Fig. 2,201) and a web server (Fig. 2,203) in a network
environment (see Spec. 4: 19-22, 6:27-8:24; Figs. 2, 3).
Exemplary Claim
An understanding of the invention can be derived from a reading of
claim 11, which is reproduced below with bracketed lettering and emphases
added to disputed portions of the claim:
11. A method comprising:
configuring a visitor module to intercept a request for
content served by a web server, wherein the web server is
configured to accept requests at a host domain, wherein the web
server operates independently of the visitor module, and wherein
the visitor module is configured to access the web server [A]
using a language-specific URL in order to retrieve the content,
wherein the language-specific URL is formed from the host
domain, a top-level URL obtained from configuration data
accessible by the visitor module. a path corresponding to a
language associated with the request obtained from the
configuration data, and path information from the request; and
instant application, (i) are are continuation applications of U.S. Application
No. 10/313,518 filed on December 5, 2002 (see Spec. 1:5-7), and (ii) claim
the benefit of U.S. Provisional Application No. 60/075,740 filed on February
23, 1998.
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Application 13/734, 168
configuring the visitor module to respond to the request
for the content with a localization of the content based on the
language associated with the request, wherein access to the web
server at the host domain is usable to retrieve the content without
localization.
The Examiner's Rejections
( 1) Claims 11, 21, and 31 stand rejected based on the judicially
created doctrine of non-statutory obviousness-type double patenting, over
claims 1, 4, and 7 of Lakritz (US 6,526,426 B 1, issued Feb. 25, 2003; or US
6,623,529 Bl, issued Sept. 23, 2003; or US 7,207,005 B2, issued April 17,
2007) in view ofKobayakawa (US 6,119,078; issued Sept. 12, 2000),
Cragun (US 5,804,803; issued Sept. 8, 1998), and Reber (US 6,081,827;
issued June 27, 2000). 3 Final Act. 2--4.
(2) The Examiner rejected claims 11, 13, 14, 17, 18, 20, 21, 23, 24,
27, 28, 30, 31, 33, 34, 37, 38, and 40 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Kobayakawa, Cragun, and Reber.
Final Act. 5-10.
(3) The Examiner rejected claims 12, 22, and 32 under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Kobayakawa,
Cragun, Reber, and Munguia (US 2001/0052013 Al; published Dec. 13,
2001 ). Final Act. 10-11.
3 Appellant does not present specific arguments for claims 11, 21, and 31,
rejected based on the judicially created doctrine of non-statutory
obviousness-type double patenting, or otherwise rebut the Examiner's prima
facie case in regards to the obviousness-type double patenting rejection of
claims 11, 21, and 31 (see App. Br. 8-9). Therefore, no issue is presented
by Appellant as to this rejection, and we summarily sustain the provisional
obviousness-type double patenting rejection of claims 11, 21, and 31.
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(4) The Examiner rejected claims 15, 16, 25, 26, 35, and 36 under
35 U.S.C. § I03(a) as being unpatentable over the combination of
Kobayakawa, Cragun, Reber, and Flanagan (US 6,993,471 Bl; issued Jan.
31, 2006). Final Act. 12-13.
(5) The Examiner rejected claims 19, 29, and 39 under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Kobayakawa,
Cragun, Reber, and Levy (US 5,944,790; issued Aug. 31, 1999). Final Act.
13-14.
ISSUE
Appellant primarily presents arguments as to claim 11 (see App. Br.
9-10), and relies on the arguments presented for claim 11 with regard to the
patentability of (i) independent claims 21 and 31 (see App. Br. 10-11 ); and
(ii) dependent claims 12-20, 22-30, and 32--40 (see App. Br. 11-13; Reply
Br. 5). Because Appellant argues (i) dependent claims 13, 14, 17, 18, 20,
23, 24, 27, 28, 30, 33, 34, 37, 38, and 40 (see App. Br. 11), and (ii)
dependent claims 12, 15, 16, 19, 22, 25, 26, 29, 32, 35, 36, and 39 (see App.
Br. 11-13; Reply Br. 5), on a similar basis as presented for independent
claims 11, 21, and 31, the outcome of the appeal of the obviousness
rejections of dependent claims 12-20, 22-30, and 32--40 will stand or fall
with the outcome as to independent claims 11, 21, and 31.
Therefore, based on Appellant's arguments (App. Br. 9-12; Reply Br.
2--4), the following obviousness issue is presented:
Did the Examiner err in rejecting claims 11--40 under 35 U.S.C.
§ I03(a) over the base combination ofKobayakawa, Cragun, and Reber,
because Cragun, and thus the base combination, fails to teach or suggest
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Application 13/734, 168
limitation [A], as recited in claim 11, and as commensurately recited in
claims 21 and 3 1?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 2-14) in light
of Appellant's contentions in the Appeal Brief (App. Br. 8-13) and the
Reply Brief (Reply Br. 2-5) that the Examiner has erred, as well as the
Examiner's response to Appellant's arguments in the Appeal Brief (see Ans.
4--8).
Double Patenting Rejection of Claims 11, 21, and 31
The Examiner rejected claims 11, 21, and 31 based on the judicially
created doctrine of non-statutory obviousness-type double patenting, over
claims 1, 4, and 7 ofLakritz in view ofKobayakawa, Cragun, and Reber
(Final Act. 2--4). In the Examiner's Answer, the Examiner states that
"[ e ]very ground of rejection set forth in the Office action dated 10/23/2015
from which the appeal is taken is being maintained by the examiner except
for the grounds of rejection (if any) listed under the subheading
'WITHDRAWN REJECTIONS"' (Ans. 2). Because the Examiner's
Answer (see generally Ans. 4--12) does not contain any section entitled
"Withdrawn Rejections," nor does the Examiner's Answer list any rejections
that have been withdrawn, the non-statutory obviousness-type double
patenting rejection is before us on appeal.
Appellant does not provide specific arguments showing error in the
Examiner's double patenting rejection (see App. Br. 8-9). In addition, no
terminal disclaimer has been filed. Accordingly, we affirm the double
patenting rejection of claims 11, 21, and 31.
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Obviousness Rejections of Claims 11-40
We agree with Appellant's arguments with regard to the obviousness
rejection of claim 11 over the base combination of Kobayakawa, Cragun,
and Reber that Cragun fails to teach or suggest the features of limitation [A]
(App. Br. 9-10; Reply Br. 2). More specifically, as to the obviousness
rejection of claim 11, we agree with Appellant (App. Br. 9-10; Reply Br. 2)
that Cragun fails to teach or suggest retrieving content "using a language-
specific URL" which is "formed from [inter alia,] ... a top-level URL
obtained from configuration data accessible by the visitor module" as set
forth in limitation [A] of claim 11, and as commensurately recited in
remaining independent claims 21 and 3 1.
We agree with Appellant that the Examiner's findings regarding
Cragun (Final Act. 6-7; Ans. 5-7) are in error. The Examiner relies on
Cragun's Figures lB and 2--4, along with several portions of Cragun's
disclosure, as teaching the recited step of forming "a language-specific
URL" to allow access of the web server by the visitor module using the four
enumerated parts of a URL recited in claims 11, 21, and 31, including "a
top-level URL obtained from configuration data accessible by the visitor
module" (see Final Act. 6-7, citing Cragun col. 3, 11. 29--43; col. 5, 11. 53-
67; col. 6, 1. 45---col. 7, 1. 46; see also Ans. 5, citing Cragun col. 5, 1. 52---col.
7, 1. 59). Specifically, in the Examiner's Answer (see Ans. 5), the Examiner
finds that Cragun's disclosed "server name" corresponds to the recited "top-
level URL," and the Examiner maps Cragun's "'26.43.60.77' or
'yummy.corp.com"' (Ans. 5) to the recited "top-level URL," which is
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"obtained from configuration data accessible by the visitor module" ( claims
11, 21, 31).
Column 3 ( describing Figure 1) of Cragun describes a local server
computer 122 (including databases 134 and 136) running a network
processing program 128 and a client processing program 130 on a central
processing unit ( CPU) 124 to respond to client requests of a client computer
102. Columns 5 through 7 of Cragun describe Figures 2--4, and converting a
barcode 117 to a uniform resource locator (URL) in a standard format (e.g.,
"service:! /server name/path name/file name" ( col. 5, 1. 63). After
converting, or translating, a universal product code (UPC) to a URL, the
client computer 102 can address a remote server 160 or local server
computer 122. However, Cragun is silent as to retrieving content "using a
language-specific URL" formed from "a top-level URL obtained from
configuration data accessible by the visitor module" as set forth in limitation
[A] of claim 11, and as commensurately recited in remaining independent
claims 21 and 3 1.
Appellant argues "Cragun describes only a simple expansion of
variables embedded in a URL" (App. Br. 9), and lacks any teaching or
suggestion of forming a language-specific URL using a top-level URL
obtained from "'configuration data accessible by the visitor module' on the
basis of language data associated with a request" (App. Br. 10). Appellant
contends Cragun fails to teach or suggest the forming step "from the very
specific sources into the 'language-specific URL"' (Reply Br. 2). More
specifically, Appellant contends that although the Examiner points to URL
components in Cragun and Reber "that are in the same position as the
components of the language-specific URL, [the Examiner] misses that the
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Application 13/734, 168
'forming' step sources its information from, alternatively, the request itself
(the host domain and the path information) and from 'configuration data
accessible by the visitor module" (Reply Br. 2).
We agree with Appellant's arguments and contentions as to the
teachings and suggestions of Cragun above. We agree with Appellant that
Cragun, and thus the base combination, fails to teach or suggest forming "a
language-specific URL" to allow access of the web server by the visitor
module using the four enumerated parts of a URL recited in claims 11, 21,
and 31, including "a top-level URL obtained from configuration data
accessible by the visitor module" as recited limitation [A] of claim 11, and
as similarly recited in claims 21 and 31.
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one
cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references) ( citation omitted).
Here, although Reber is relied upon (Final Act. 7-8; Ans. 7-8) as
teaching some portions of the forming and obtaining steps, including using
"a path corresponding to a language associated with the request obtained
from the configuration data" (see claims 11, 21, 31) (i.e., "remapping" as
argued by Appellant), Cragun, and not Reber, is relied upon for the features
of limitation [A] of configuring web server access using a "language-
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specific URL" formed from at least "a top-level URL obtained from
configuration data accessible by the visitor module." Final Act. 6-7.
We also find the Examiner's attempted reliance upon additional prior
references (see, e.g., Final Act. 8; Ans. 2, 8, citing Barry, 4 MacFarlane, 5 and
Refuah 6 as "other evidence of obviousness") unavailing. The Examiner has
not provided any motivation for combining the additional references, or
explained the differences between the additional references and the base
combination and/ or the claimed invention. The additional references relied
on as "other evidence of obviousness" are not listed in the statement of the
rejection, nor are they developed in the body of the rejection in a meaningful
way so as to notify Appellant that a prima facie case of obviousness based
on the additional references has been made (i.e., the Examiner fails to
explain the differences between the additional references and the three base
combination references and/or the claimed invention). 7 Therefore, we do
not considered the teachings or suggestions of the additional references in
reaching our determination of non-obviousness of claims 11, 21, and 31
herein.
Therefore, Appellant has shown the Examiner erred in determining
that the base combination of Kobayakawa, Cragun, and Reber teaches or
4 Barry, US 7,225,249 Bl, issued May 29, 2007.
5 Macfarlane, US 2001/0042081 Al, published Nov. 15, 2001
6 Refuah, US 2009/0144288 Al, published June 4, 2009 and US 7,596,609
Bl, issued Sept. 29, 2009.
7 "Where a reference is relied on to support a rejection, whether or not in a
'minor capacity,' there would appear to be no excuse for not positively
including the reference in the statement of the rejection." In re Hoch, 428
F.2d 1341, 1342 n.3 (CCPA 1970).
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suggests limitation [A] recited in claim 11, and as similarly recited in claims
21 and 31.
Summary
In view of the foregoing, Appellant has shown the Examiner erred in
rejecting claims 11, 13, 14, 17, 18, 20, 21, 23, 24, 27, 28, 30, 31, 33, 34, 37,
38, and 40 under 35 U.S.C. § 103(a) over the base combination of
Kobayakawa, Cragun, and Reber, because Cragun, and thus the base
combination, fails to teach or suggest limitation [A] recited in representative
claim 11. Therefore, we do not sustain the Examiner obviousness rejection
of claim 11 over the base combination of Kobayakawa, Cragun, and Reber.
For similar reasons as provided for claims 11, 21, and 31 from which
claims 12, 15, 16, 19, 22, 25, 26, 29, 32, 35, 36, and 39 respectively depend,
Appellant has also shown that the Examiner erred in determining that the
remaining three combinations applying the base combination further in view
of Munguia, Flanagan, and/or Levy teach or suggest the method, computer-
readable medium, and system recited in dependent claims 12, 15, 16, 19, 22,
25, 26, 29, 32, 35, 36, and 39. Thus, for similar reasons as already discussed
as to independent claim 11 above, we also sustain the Examiner's
obviousness rejections of claims 12, 15, 16, 19, 22, 25, 26, 29, 32, 35, 36,
and 39.
CONCLUSIONS
(1) Appellant has not shown the Examiner erred in rejecting claims
11, 20, and 29 based on the judicially created doctrine of non-statutory
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obviousness-type double patenting over claims 1, 4, and 7 ofLakritz, in
view of Kobayakawa, Cragun, and Reber.
(2) Appellant has shown the Examiner erred in rejecting claims 11--40
under 35 U.S.C. § 103(a) as being unpatentable over the base combination of
Kobayakawa, Cragun, and Reber because Cragun, and thus the base
combination of Kobayakawa, Cragun, and Reber, fails to teach or suggest
limitation [A], as recited in claim 11, and commensurately recited in claims
21 and 31.
DECISION
(1) The Examiner's rejection of claims 11, 21, and 31 based on the
judicially created doctrine of non-statutory obviousness-type double
patenting over claims 1, 4, and 7 of Lakritz, in view of Kobayakawa,
Cragun, and Reber, is affirmed.
(2) The Examiner's obviousness rejections of claims 11--40 under
35 U.S.C. § 103(a) over the base combination ofKobayakawa, Cragun, and
Reber are reversed.
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
11