Ex Parte Mayo et al

Patent Trial and Appeal Board

Jun 16, 2014

10811259 (P.T.A.B. Jun. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GLENNA G. MAYO
and JEFFREY D. MEYER
____________________

Appeal 2011-002922
Application 10/811,259
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, ELENI MANTIS MERCADER, and
JEFFREY S. SMITH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002922
Application 10/811,259

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-29. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. An access point, comprising:
a web server interface that couples one or more guests to
the Internet;
a usage collector application that monitors and collects
usage of all of said guests; and
web cache software that proactively caches, in a local
memory of the access point, non-requested web pages that
relate to a topic of a web page requested by a guest and
indicates to the guest that the non-requested web pages are
available for viewing, wherein the access point is a single
device that links the one or more guests on personal computers
to a broadband or telephone connector from which Internet
access is obtained for the personal computers.

Rejections on Appeal 1
The Examiner rejected claims 1-3, 5, 7-15, and 17-29 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Klug (US 6,615,251
B1), Madsen (US 6,941,338 B1), and Kumhyr (US 2003/0101214 A1). 2

1 The rejection of claims 1, 12, 17, and 25 under 35 U.S.C. § 112, first
paragraph (Final Rej. 2) has been withdrawn (Ans. 16).
2 As to this rejection, separate patentability is not argued for claim 5, 7-11,
13, 15, 18-24, and 26-27. Except for our ultimate decision, these claims are
not discussed further herein.
Appeal 2011-002922
Application 10/811,259

3
The Examiner rejected claims 4, 6, and 16 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Klug, Madsen, Kumhyr, and
Kasriel (US 6,963,874 B2). 3
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under § 103(a) because:
Kuhmyr does not use the algorithm to proactively cache non-
requested web pages that relate to a topic of a web page
requested by a guest as recited in claim 1. Instead, Kuhmyr is
updating group interests. Nowhere does Kuhmyr teach or even
suggest that such updates would include proactively cache non-
requested web pages that relate to a topic of a web page
requested by a guest.
App. Br. 17 (emphasis added).
2. Appellants further contend that the Examiner erred in rejecting
claim 1 under § 103(a) because:
Nowhere does Kuhmyr teach or even suggest that this
information would be used to proactively cache non-requested
web pages and then indicate to the guest that the non-
requested web pages are available for viewing.
App. Br. 18 (emphasis added).
3. Appellants also contend that the Examiner erred in rejecting claim 1
under § 103(a) because:
[C]laim 1 recites a usage collector application that monitors and
collects usage of all of said guests. The examiner argues that
“Klug teaches the claimed, a usage collector application that

3 As to this rejection, separate patentability is not argued for these claims.
Rather, the appeal for this rejection turns on the underlying § 103 rejection.
Therefore, except for our ultimate decision, these claims are not discussed
further herein.
Appeal 2011-002922
Application 10/811,259

4
monitors usage of all of said guests (Fig. 3, col. 10, lines 25-
28)” (see OA mailed 05/01/2009 at p. 4). This section,
however, does not teach a usage collector that collects usage as
claimed.
App. Br. 18 (emphasis added).
4. Appellants contend that the Examiner erred in rejecting claim 12
under § 103(a) because:
The combination of Klug in view of Madsen and Kuhmyr fails
to teach or even suggest predicting non-requested web pages
that relate to a topic of a web page requested by the guest and
that are of interest for the guest based on the guest’s usage
patterns.
App. Br. 20 (emphasis in original omitted, emphasis added).
5. Appellants contend that the Examiner erred in rejecting claim 17
under § 103(a) because:
The combination of Klug in view of Madsen and Kuhmyr
fails to teach or even suggest access points that cache in local
memory non-requested web pages that relate to topics of
previously requested web pages by the guests ... , the non-
requested pages being a prediction based on usage patterns of
the guests.
App. Br. 21 (emphasis in original omitted, emphasis added).
6. Appellants further contend that the Examiner erred in rejecting
claim 17 under § 103(a) because:
[C]laim 17 recites a usage collector application detecting and
collecting information relating to guest usage. Klug does not
teach a usage collector that both detects and collects usage
information.
App. Br. 22 (emphasis in original omitted, emphasis added).
Appeal 2011-002922
Application 10/811,259

5
7. Appellants contend that the Examiner erred in rejecting claim 25
under § 103(a) because:
Nowhere does Kuhmyr teach or even suggest that such updates
would include predicting and caching non-requested web pages
that relate to a topic of previously requested by a guest. Again,
Kuhmyr is merely tracking groups and what interests these
groups have.
App. Br. 23 (emphasis added).
8. Appellants further contend that the Examiner erred in rejecting
claim 25 under § 103(a) because:
[C]laim 25 means in said access point for monitoring and
collecting requests made by a guest to collect information on a
guest’s usage pattern. Klug in view of Madsen does not teach
such means.
App. Br. 23 (emphasis in original omitted, emphasis added).
9. Appellants contend that the Examiner erred in rejecting claim 2
under § 103(a) because:
Madsen at col. 5, lines 27-33 teaches that the usage pattern
algorithm selects files to store in cache. Nowhere does this
section of Madsen teach or even suggest that the usage pattern
algorithm predicts the non-requested web pages that are of
interest to the guest based on that guest’s usage pattern.
App. Br. 24.
10. Appellants contend that the Examiner erred in rejecting claim 3
under § 103(a) because:
Klug at col. 10, lines 37-40 teaches when a user moves to a web
page stored in a cache. Nowhere does this section of Klug teach
or even suggest that that the web cache software initiates a
signal to the guest indicating that the non-requested web pages
are available for viewing.
App. Br. 24.
Appeal 2011-002922
Application 10/811,259

6
11. Appellants contend that the Examiner erred in rejecting claim 14
under § 103(a) because:
Madsen at col. 5, lines 37-44 teaches anticipatory caching that
accesses a newspaper of a user in the morning. Nowhere does
this section of Madsen teach or even suggest proactively
caching non-requested web pages that the access point predicts
the guest will want based on a topic for which the guest
previously selected web sites.
App. Br. 25.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
As to Appellants’ above contention 1 covering claim 1, we disagree.
Although Appellants acknowledge that Kumhyr teaches updating group
interests, Appellants argue that Kumhyr does not teach or suggest using the
algorithm to proactively cache non-requested web pages that relate to a topic
of a web page requested by the user. (App. Br. 17). We do not agree as
Kumhyr’s ¶¶ 0021-0027 are directed to using the updated group interests
scores to designate relevant web pages to cache. (¶ 0025). A specific
example is provided of using hits on “Boston Marathon” web pages as a
trigger to designate related air travel and accommodations as a group
interest. (¶ 0022). At no time does Kumhyr require hits (requests) on the
web pages related to these topics before adding them to the group interests
and then caching pages related to these topics.
As to Appellants’ above contention 2 covering claim 1, we agree with
Appellants’ argument to the extent that we agree Kumhyr does not teach or
suggest indicating to a user that web pages are available for viewing.
Appeal 2011-002922
Application 10/811,259

7
However, this feature is known in the art as taught by Dietz (US 6,711,589
B2) at column 5, line 65, through column 6, line 5, and by Ferguson (US
6,769,019 B2) at column 24, lines 36-45. We leave it to the Examiner to
prepare a rejection based on these references and the previously applied
prior art.
As to Appellants’ above contention 3 covering claim 1, we disagree.
Klug explicitly teaches “tracking usage” at column 10, line 28. An artisan
would see no meaningful difference between “monitoring and collecting
usage” and “tracking usage.”
As to Appellants’ above contentions 4, 5, and 7 covering claims 12,
17, and 25, we disagree for the reasons we set forth above for Appellants’
similar contention 1.
As to Appellants’ above contentions 6 and 8 covering claims 17 and
25, we disagree for the reasons we set forth above for Appellants’ similar
contention 3.
As to Appellants’ above contention 9 covering claim 2, we do not
reach it as this contention is moot in view of the Examiner’s new analysis
directed to claim 2 in the Answer at page 5.
As to Appellants’ above contention 10 covering claim 3, we agree.
However, as with contention 2 for claim 1, we leave it to the Examiner to
prepare a rejection based on the newly cited Dietz and Ferguson patents, and
the previously applied prior art.
As to Appellants’ above contention 11 covering claim 14, we agree to
the extent that Madsen fails at column 5, lines 37-44, to teach proactively
caching. However, this feature is taught by Kumhyr as we discussed above
Appeal 2011-002922
Application 10/811,259

8
as to contention 1. We leave it to the Examiner to prepare an appropriate
rejection based on the Examiner’s previously applied prior art.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-11 as being unpatentable under 35 U.S.C. § 103(a). However, we
deem the Dietz and Ferguson references cited above to provide the features
missing from the Examiner’s rejection and leave it to the Examiner to
prepare new rejections based on these references and the previously applied
prior art.
(2) Appellants have established that the Examiner erred in rejecting
claim 14 as being unpatentable under 35 U.S.C. § 103(a) based on the
Examiner’s analysis of Klug, Madsen, and Kumhyr. However, as discussed
in our analysis, we deem the Kumhyr reference to teach the argued
limitation. We leave it to the Examiner to prepare an appropriate rejection
of claim 14 based on the Examiner’s previously applied prior art.
(3) The Examiner did not err in rejecting claims 12, 13, and 15-29
under 35 U.S.C. § 103(a).
(4) Claims 12, 13, and 15-29 are not patentable.
Appeal 2011-002922
Application 10/811,259

9

DECISION
The Examiner’s rejections of claims 1-11 and 14 are reversed. 4
The Examiner’s rejections of claims 12, 13, and 15-29 are affirmed.

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-IN-PART

msc

4 We leave it to the Examiner to prepare new rejections of these claims as
discussed in this decision.