Ex Parte LAZIER et al

Patent Trials and Appeals Board

May 17, 2019

13491757 - (D) (P.T.A.B. May. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/491,757 06/08/2012
45809 7590 05/21/2019
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
ARI LAZIER
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.
316995-US-CNT/MFCP.169880 7951
EXAMINER
LUDWIG, MATTHEW J
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
05/21/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARI LAZIER, HUGH WILLIAMS, and NICK WHYTE
Appeal2018-001268
Application 13/491,757
Technology Center 2100
Before ERIC B. CHEN, IRVINE. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to finally reject claims 1-5 and 7-19. Claim 6 has been
canceled. See App. Br. 27 (Claims Appendix). We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC. App. Br. 3.
Appeal2018-001268
Application 13/491,757
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention generally relates to "detecting third-party
content in web pages." Abstr. Claim 1, which is illustrative of the claimed
invention, reads as follows:
1. One or more computer-readable storage media containing
thereon computer-readable code executed by one or more
computers for performing a method for handling third-party
content in web applications, comprising:
operating a set of software to detect third-party content
controlled by third party, wherein the third-party content is
embedded in a web page, and the third-party content is accessed
or executed from embedded content in the web page rendered
by a host application;
detecting the third-party content in the web page, wherein
a classifier determines if a content is third-party content that
belongs to a third-party;
downloading the third-party content so that the
third-party content is classified;
analyzing the third-party content with the classifier,
wherein the classifier is software located on a server or a user's
computing device, and wherein the classifier detects one or
more problems of loading the third-party content;
detecting the one or more problems with the third-party
content as an output of the classifier, wherein the one or more
problems include at least one of the third-party content no
longer exists, the third-party content is unavailable, the
third-party content changes, or the third-party content disrupts
the host application; and
modifying the web page to remove the one or more
problems that are detected before rendering the web page.
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Application 13/491,757
Rejections
Claims 1, 14, and 15 stand rejected on the ground of non-statutory,
obviousness-type double patenting based on claims 1, 15, and 17 of
Lazier et al. (US 8,255,873 B2; iss. Aug. 28, 2012). Final Act. 3-5.
Claims 1-5 and 7-19 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Palapudi et al. (US 2007/017 4324 Al; pub 1. July 26,
2007) ("Palapudi") and Randall (US 7,725,452 Bl; iss. May 25,
2010). Final Act. 5-14.
REJECTION FOR DOUBLE PATENTING
Appellants do not contest the double patenting rejection of claims 1,
14, and 15. Accordingly, we summarily sustain this rejection.
REJECTION UNDER 35 U.S.C. § I03(a)
Claims 1-5, 7-14, and 19
A dispositive issue for this rejection of claims 1-5, 7-14, and 19 is
whether the Examiner errs in addressing the claimed "determines if a content
is third-party content" (herein "claimed determination"), as recited by
independent claims 1 and 14 ( and incorporated by their dependent claims 2-
5, 7-13, and 19). For the below reasons, we are persuaded the Examiner
erred.
Appellants' Specification expressly defines the claimed "third-party
content" as "provided by someone or an entity other than the owner,
controller, or publisher of the web page." Spec. ,r 28. This meaning is not
disputed.
The Examiner finds the claimed determination is obvious over
Palapudi' s detecting of URL links, because some of the detected links would
expectedly be third-party content (as evidenced by Randall). Ans. 15-
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16. Further, because Appellants' Specification does not disclose a means of
discriminating third-party content, the Examiner finds the claimed
determination does not discriminate third-party content and, thus, reads on
Palapudi's mere detecting of links that may (i.e., 'so happen' to) include
links provided by third parties. Id. Specifically, the Examiner states:
Id.
[Palapudi] does not explicitly state the [detected] link is a third
part[y] link[, but Randall] show[ s] that ... [it] would have been
obvious ... to have utilized ... third party hyperlinks[.] ...
The examiner [also] notes that [Appellants'] specification
... fails to accurately detail how the third party content is
detected[,] other than that it is a link detected within a web
page. See paragraph 0028.
Appellants reply that the claimed determination "describe[ s] a
determination of whether 'a content is third-party content."' Reply Br. 5
( emphasis omitted). Appellants further reply that, because the claims "do[]
not merely recite that third-party content 'exists' in the web page" (id.), the
claimed determination cannot be interpreted as merely detecting links that
may include links provided by third parties. Id. at 4--5
We agree with Appellants. The plain meaning of "determines if a
content is third-party content" (claimed determination) is to determine
whether content of the webpage is provided by a third-party, i.e., to
discriminate third-party content. The Examiner's claim interpretation reads
this plain meaning out of the claims-thus reading out a restriction-only
because the Specification allegedly fails to disclose a means of
discriminating third-party content. Ans. 15-16. The Examiner thus neglects
the "presuppos[ition] that a patent applicant defines his invention in the
claims, not in the specification." Johnson & Johnston Assocs. Inc. v. R.E.
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Application 13/491,757
Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002). The Examiner cannot, as
here, remove a claim restriction to address a lack of specification
support. See, e.g., Generation II Orthotics Inc. v. Med. Tech. Inc.,
263 F.3d 1356, 1365 (Fed. Cir. 2001) ("[C]laims can only be construed to
preserve their validity where the proposed claim construction ... does not
revise or ignore the explicit language of the claims.").
The Examiner's claim interpretation also renders the claimed
"determines if a content is third-party content" ( claimed determination)
entirely redundant to the prior recited "detecting the third-party content in
the web page." Under the Examiner's interpretation, each recitation
identically requires only a detection of content that may include third-party
content. "[I]nterpretations that render some portion of the claim language
superfluous are disfavored." Power Mosfet Techs., L.L.C. v. Siemens AG,
378 F.3d 1396, 1410 (Fed. Cir. 2004).
Because the Examiner's claim interpretation is erred, we do not
sustain this rejection of claims 1-5, 7-14, and 19.
Claims 15-17
The only issue for this rejection of claims 15-17 is whether the
Examiner errs in addressing the claimed "detecting a change in ... a content
from a comparison of a last identifier associated with a last analysis of
... the content to a current identifier associated with a current analysis of
... the content" (herein "claimed detecting"), as recited by independent
claim 15 (and incorporated by its dependent claims 16 and 17). For the
below reasons, we are not persuaded the Examiner erred.
The Examiner finds the claimed detecting is obvious over Palapudi's
updates to an index 452 (herein "index"). Final Act. 12-14 (citing Palapudi
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,r,r 65-73); see also Palapudi ,r 66 ( describing the index). Specifically, the
Examiner finds the index tracks a webpage' s referenced files by storing
descriptions of the files as references 530 (herein "reference").
Final Act. 13; see also Palapudi ,r 79 ( describing the references); Fig. 5
(illustrating an indexed reference). The Examiner further finds a reference
monitor 460 detects a change to a file by detecting changes to the respective
reference. Final Act. 13-14. And, the Examiner reads the claimed last and
current identifiers respectively on a changed reference-that is, on the
reference before the change (last identifier) and after the change ( current
identifier). Final Act. 13-14; Ans. 17-18.
Appellants contend Palapudi' s reference monitor 460 does not
"detect[] a change in ... a content" ( claimed detecting), but rather merely
records a detected change into the index. App. Br. 20-21; Reply Br. 12.
According to Appellants, only Palapudi' s file system 480 detects a change to
a file, which is then reported to the reference monitor 460 for recording into
the index. Id.; see also Palapudi ,r 69 ( describing interactions of the file
system 480 and reference monitor 460). Appellants further contend that a
file's reference before a change (last identifier) is not compared to the
reference after a change (current identifier); rather, the obsolete reference is
merely removed. Reply Br. 12.
We are unpersuaded because Appellants do not address the
Examiner's reasoning for the above findings. According to the Examiner,
the claimed detecting requires an undescribed comparison of mere "last" and
"current" identifiers. Ans. 17-18. The claimed comparing is read on the
reference monitor 460 identifying a reference in need of an update, because
the last reference is determined to be different than ( comparing) the updated
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current reference. Final Act. 13-14; Ans. 17-18; see also Palapudi ,r 71
( describing the update). The claimed detecting is read on the reference
monitor 460 responding to the update by notifying a W ebmaster ( of the
respective file's modification), because the update is determined to be a
result of (detecting) the file being modified. Final Act. 13-14; Ans. 17-18;
see also Palapudi ,r 72 ( describing the notification). Instead of rebutting
these reasons for the rejection, e.g., establishing narrower meanings of
"compare" or "detect" as claimed, Appellants cursorily argue that Palapudi's
above update does not compare references and only Palapudi' s file system
480 detects a change in content.
Because the Appellants do not persuasively address the Examiner's
findings, we sustain this rejection of claims 15-17.
Claim 18
A dispositive issue for this rejection of claim 18 is whether the
Examiner errs in addressing the claimed "set of computer software operates
on the one or more servers to determine the last identifier and a set of
computer software operates on a computing device of a user to determine the
current identifier," as recited by claim 18 (which depends from claim 15).
For the reasons provided below, we are persuaded the Examiner erred.
Appellants argue, and there is no dispute, "in claim 18 [] the 'last
identifier' is determined on a server[] and the 'current identifier' is
determined on a client device." App. Br. 23. Appellants further argue the
Examiner neglects the claimed distribution of server and client operations
inasmuch the Palapudi-Randall combination "implement[ s] Randall's
crawling robot and URL scheduler and Palapudi' s reference engine on a
client device ... [ and thus] would perform all of [their] ... functions ... on
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a client device." Id. In the Reply Brief, Appellants contend the Examiner
"does not provide a response." Reply Br. 13.
We agree. The Answer states only that "the examiner points to the
same paragraphs and rationale mentioned [for] ... claim 15 above in
responding to appellant's arguments." Ans. 18. With respect to claim 15,
the Examiner cites to paragraph 70 of Palapudi. Id. at 17. Neither the
Examiner's findings nor the cited paragraph of Palapudi address a
client-server distribution of operations, as required by claim 18. The
Final Office Action is equally unavailing, stating nothing of a "server" in the
rejections of claims 15 and 18. Final Act. 12-14. 2
Because the Examiner does not address the claimed distribution of
server and client determinations, we do not sustain this rejection of
claim 18.
DECISION
We affirm the Examiner's rejection of claims 1, 14, and 15 on the
ground of non-statutory, obviousness-based double patenting.
We reverse the Examiner's rejection of claims 1-5, 7-14, 18, and 19
under 35 U.S.C. § 103(a).
We affirm the Examiner's rejection of claims 15-17 under
35 U.S.C. § 103(a).
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).
2 To the extent the Examiner finds Palapudi's "reference engine can be
implemented on a server computing device" in rejecting claim 17 (id. at 14),
that statement is neither explained nor directed to claims 15 and 18.
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AFFIRMED-IN-PART
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