Ex Parte LAKRITZDownload PDFPatent Trials and Appeals BoardMay 28, 201913734153 - (D) (P.T.A.B. May. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/734, 153 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. 3132.0050005 3011 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 Appeal2017-008085 Application 13/734, 153 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, 42, 44, and 46-49. Claims 1-10, 41, 43, and 45 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 Appeal2017-008085 Application 13/734,153 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: receiving, by a visitor module, a request for content served by a web server, wherein the web server operates independently of the visitor module, wherein the visitor module is configured to intercept web server requests including the request, and wherein the web server is configured to be accessible at a host domain; identifying, by the visitor module, a language associated with the request; Appeal No. 2017-008087 (U.S. Application No. 13/734,168); and Appeal No. 2017-008125 (U.S. Application No. 13/734,161), which both, like the 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. 2 Appeal2017-008085 Application 13/734,153 [A] obtaining, by the visitor module, a top-level URL and a path corresponding to the language associated with the request from configuration data accessible by the visitor module; forming, by the visitor module, a language-specific URL from the host domain, the top-level URL, the path corresponding to the language associated with the request, and path information from the request; determining, by the visitor module, that the language- specific URL corresponds to a cached version of the content in the language associated with the request; and responding to the request, by the visitor module, with the cached version of the content in the language associated with the request. The Examiner's Rejections (1) Claims 11, 12, 21, 22, 31, and 32 stand rejected based on the judicially created doctrine of non-statutory obviousness-type double patenting, over claims 1, 2, 4, 5, 18, 19, 21, 22, 35, 36, 38, and 39 ofLakritz (US 6,623,529 B 1; issued Sept. 23, 2003). 3 Final Act. 3--4. (2) The Examiner rejected claims 11-13, 16-18, 21-23, 26-28, 31- 33, 36-38, 42, and 46--49 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Flanagan et al. (US 6,993,471 B 1; issued Jan. 31, 2006), Kobayakawa et al. (US 6,119,078; issued Sept. 12, 2000), Cragun et 3 Appellant does not present specific arguments for claims 11, 12, 21, 22, 31, and 32, 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, 12, 21, 22, 31, and 32 (see App. Br. 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, 12, 21, 22, 31, and 32. 3 Appeal2017-008085 Application 13/734,153 al. (US 5,804,803; issued Sept. 8, 1998), and Reber et al. (US 6,081,827; issued June 27, 2000). 4 Final Act. 4--12. (3) The Examiner rejected claims 14, 15, 24, 25, 34, and 35 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Flanagan, Kobayakawa, Cragun, Reber, and Murata et al. (US 5,897,450; issued Nov. 16, 1999). Final Act. 12-13. (4) The Examiner rejected claims 19, 20, 29, 30, 39, and 40 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Flanagan, Kobayakawa, Cragun, Reber, and Levy (US 5,944,790; issued Aug. 31, 1999). Final Act. 14--15. ISSUE Appellant primarily presents arguments as to claim 11 (see App. Br. 9-12; Reply Br. 2-6), and relies on the arguments presented for claim 11 with regard to the patentability of (i) independent claims 21 and 31 (see App. Br. 12; Reply Br. 7); and (ii) dependent claims 12, 13, 16-18, 22, 23, 26-28, 32, 33, 36-38, 42, 44, and 46-49 (see App. Br. 12; Reply Br. 5, 7). Because Appellant argues dependent claims 14, 15, 19, 20, 24, 25, 29, 30, 34, 35, 39, and 40 (see App. Br. 12-13; Reply Br. 7), on a similar basis as 4 We consider the Examiner's failure to include claims 31-33 and 36-38 in the heading of the statement of the rejection (see Final Act. 4) to be harmless error, because claims 31-33 and 36-38 are included in the body of the rejection (see Final Act. 12), and claims 31-33 and 36-38 contain similar subject matter as (i) claims 11-13 and 16-18; and (ii) claims 21-23 and 26- 28, which are also rejected for obviousness over Flanagan, Kobayakawa, Cragun, and Reber. 4 Appeal2017-008085 Application 13/734,153 presented for independent claims 11, 21, and 3 1, the outcome of the appeal of the obviousness rejections of dependent claims 14, 15, 19, 20, 24, 25, 29, 30, 34, 35, 39, and 40 will stand or fall with the outcome as to independent claims 11, 21, and 3 1. Therefore, based on Appellant's arguments (Appeal Br. 9--13; Reply Br. 2-7), the following obviousness issue is presented: Did the Examiner err in rejecting claims 11--40, 42, 44, and 46-49 under 35 U.S.C. § 103(a) over the base combination of Flanagan, Kobayakawa, Cragun, and Reber, because Cragun, and thus the base combination, fails to teach or suggest 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. 3-15) in light of Appellant's contentions in the Appeal Brief (Appeal Br. 9--13) and the Reply Brief (Reply Br. 2-7) that the Examiner has erred, as well as the Examiner's response to Appellant's arguments in the Appeal Brief (see Ans. 4--12). Double Patenting Rejection of Claims 11, 12, 21, 22, 31, and 32 The Examiner rejected claims 11, 12, 21, 22, 31, and 3 2 based on the judicially created doctrine of non-statutory obviousness-type double patenting, over claims 1, 2, 4, 5, 18, 19, 21, 22, 35, 36, 38, and 39 ofLakritz (Final Act. 3--4). In the Examiner's Answer, the Examiner states that "[ e ]very ground of rejection set forth in the Office action dated 11/19/2015 from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading 5 Appeal2017-008085 Application 13/734,153 '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. 9). In addition, no terminal disclaimer has been filed. Accordingly, we affirm the double patenting rejection of claims 11, 12, 21, 22, 31, and 32. Obviousness Rejections of Claims 11-40, 42, 44, and 46--49 We agree with Appellant's arguments with regard to the obviousness rejection of claim 11 over the base combination of Flanagan, Kobayakawa, Cragun, and Reber that Cragun fails to teach or suggest the features of limitation [A] (App. Br. 10-11; Reply Br. 4--5). More specifically, as to the obviousness rejection of claim 11, we agree with Appellant (App. Br. 10-11; Reply Br. 4--5) that Cragun fails to teach or suggest "obtaining, by the visitor module, a top-level URL and a path corresponding to the language associated with the request 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 31. We agree with Appellant that the Examiner's findings regarding Cragun (Final Act. 6-7; Ans. 4--8) 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 6 Appeal2017-008085 Application 13/734,153 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. 6-7 citing Cragun col. 5, 1. 52---col. 7, 1. 59). Specifically, in the Examiner's Answer (see Ans. 6), the Examiner finds that Cragun's disclosed "server name" is the equivalent of the recited "top-level URL," and the Examiner maps Cragun's "'26.43.60.77' or 'yummy.corp.com"' to the recited "top-level URL" which is "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 "obtaining, by the visitor module, a top-level URL and a path corresponding to the language associated with the request 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 31. Appellant argues "Cragun describes only a simple expansion of variables embedded in a URL" (App. Br. 10), 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 7 Appeal2017-008085 Application 13/734,153 basis of language data associated with a request" (App. Br. 10-11). Appellant contends Cragun fails to teach or suggest the forming a language- specific URL based on information obtained by the visitor module, such as a top-level URL and path corresponding to the language associated with the request (Reply Br. 5). 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 '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. 5). We agree with Appellant's arguments and contentions as to the teachings and suggestions of Cragun above. Wwe 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. 8-9) as teaching some portions of the forming and obtaining steps, including using "a path corresponding to a language associated with the request obtained 8 Appeal2017-008085 Application 13/734,153 from the configuration data" (see claims 11, 21, and 31) (i.e., "remapping" as argued by Appellant), Cragun, and not Reber, is relied upon for the features of limitation [A] of "obtaining, by the visitor module, a top-level URL and a path corresponding to the language associated with the request from configuration data accessible by the visitor module." We also find the Examiner's attempted reliance upon additional prior references (see e.g., Final Act. 8; Ans. 2, 9 citing Barry, MacFarlane, and Refuah 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). 5 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 Flanagan, Kobayakawa, Cragun, and Reber 5 "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). 9 Appeal2017-008085 Application 13/734,153 teaches or suggests limitation [A] recited in claim 11, and as similarly recited in claims 21 and 31. In view of the foregoing, Appellant has shown the Examiner erred in rejecting claims 11, 21, and 31 under 35 U.S.C. § 103(a) over the base combination of Flanagan, 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 claims 11-13, 16-18, 21-23, 26-28, 31-33, 36-38, 42, 44, and 46-49 over the base combination of Kobayakawa, Cragun, and Reber. For similar reasons as provided for claims 11, 21, and 31 from which claims 14, 15, 19, 20, 24, 25, 29, 30, 34, 35, 39, and 40 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 Murata and/or Levy teach or suggest the method, computer-readable medium, and system recited in dependent claims 14, 15, 19, 20, 24, 25, 29, 30, 34, 35, 39, and 40. Thus, for similar reasons as already discussed as to independent claim 11 above, we also sustain the Examiner's obviousness rejections of claims 14, 15, 19, 20, 24, 25, 29, 30, 34, 35, 39, and 40. 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 10 Appeal2017-008085 Application 13/734,153 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, 42, 44, and 46-49 under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Flanagan, Kobayakawa, Cragun, and Reber because Cragun, and thus the base combination of Flanagan, 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, 12, 21, 22, 31, and 32 stand rejected based on the judicially created doctrine of non-statutory obviousness-type double patenting, over claims 1, 2, 4, 5, 18, 19, 21, 22, 35, 36, 38, and 39 of Lakritz, is affirmed. (2) The Examiner's obviousness rejections of claims 11--40, 42, 44, and 46-49 under 35 U.S.C. § 103(a) over the base combination of Flanagan, Kobayakawa, 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 Copy with citationCopy as parenthetical citation