Ex Parte Moore

Board of Patent Appeals and Interferences

Dec 20, 2011

10163877 (B.P.A.I. Dec. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MIKE MOORE
____________

Appeal 2009-008912
Application 10/163,877
Technology Center 2400
____________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

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Invention
The invention relates to communication systems. More particularly,
the invention on appeal is directed to a process for establishing transactions
through the Internet or an Intranet network. (Spec. 1).

Representative Claim

1. A process of establishing a transaction, comprising:
communicating a request for a service from a client device to a
remote server,

processing of the request at the remote server,

issuing a response from the remote server to the client device,

measuring a response time for the request to be issued to the
remote server, a response to be processed by the remote server and
transmitted from the remote server to the client device, and

communicating an incentive offer from the remote server in
response to the measured time exceeding a predetermined time
allocated for the response.

Rejections
1. Claims 19-20 stand rejected under 35 U.S.C. §102(e) as being
anticipated by Susai (US 6,725,272 B1, Apr. 20, 2004).
2. Claims 1-3, 5, 8-12, and 14 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over the combination of Susai
and Bankier (US 2002/0103663 A1, Aug. 1, 2002)
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3. Claims 7 and 16 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over the combination of Susai, Bankier, and
Case (US 6,601,098 B1, Jul. 29, 2003)
4. Claims 4, 13, and 17 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over the combination of Susai and Tsun (US
6,708,224 B1, Mar. 16, 2004)
5. Claim 18 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Susai, Tsun, and Bankier.
6. Claims 6 and 15 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over the combination of Susai and Official
Notice.

First-stated rejection (Anticipation over Susai)
Independent Claims 19 and 20
Appellant argues claims 19 and 20 as a group. (App. Br. 10-
12). We select representative claim 19 to decide the appeal for this
group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant’s Contentions
It is submitted that the claimed "measuring time" requirement is
not disclosed and therefore is not anticipated by the disclosure
of Susai et al. At column 8, lines 50-54, there is disclosure of
the determination of "the approximate waiting time for the
client and displays the approximate waiting time to the client."
However, estimating a waiting time is not measuring an actual
time. Estimating and measuring are not the same. Thus, there is
no anticipation of the claimed measuring of time.
(App. Br. 10).
ISSUE (1)
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Under § 102, did the Examiner err in finding that Susai
discloses measuring a time for a communication to occur
between a client device and remote server, within the
meaning of independent claim 19, and the commensurate
limitation recited in independent claim 20?

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by the record:
1. Susai discloses that the current response time of the requested
server is estimated by interface unit 202 by using actual past
response times. (Col. 5, ll. 23-25).
2. Susai discloses that according to one embodiment the response
“time is measured as the time for completing the HTTP GET
transaction. Another embodiment is to measure the time
normalized by the number of bytes transferred.” (Col. 5, ll. 42-
45, emphasis added).
ANALYSIS
According to Appellant, Susai discloses “estimating” time instead of
“measuring” time, as required by the language of claims 19 and 20. (App.
Br. 10). Based upon our review of the record, we disagree.
Susai discloses estimating a current response time for a server, based
on actual measured past response times. (FF 1). Susai discloses at least two
ways in which the response times are measured. One way is to measure the
response time for completing the HTTP GET transaction. Another way is to
measure the response time as normalized by the number of bytes transferred.
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(FF 2). Given these express disclosures in Susai of measured response time,
we are not persuaded by Appellant’s arguments that the Examiner erred in
finding that Susai discloses measuring a time for a communication to occur
between the client device and the remote server, within the meaning of
independent claim 19, and the commensurate limitation recited in
independent claim 20.

Additional contentions by Appellant (claims 19 and 20)
Appellant additionally contends that Susai discloses “assigned
priorities” which does not amount to either specific or inferential disclosure
of “personalizing” a communication with the client. (App. Br. 10). In
particular, Appellant contends that the Examiner’s construction of the
claimed term “personalizing” is unreasonably broad. (App. Br. 11).

ISSUE (2)
Under §102 did the Examiner err in finding that Susai
discloses personalizing a subsequent one of said
transactions, according to the measurement, within the
meaning of independent claims 19 and 20?

ANALYSIS
We begin our analysis by observing that Appellant has not pointed to
a particular definition of “personalizing” in Appellant’s Specification.1

1 Absent an express intent to impart a novel meaning to a claim term, the
words take on the ordinary and customary meanings attributed to them by
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Instead, Appellant presents a dictionary definition for the disputed claim
term “personalizing” (personalize) as found in the “American Heritage®
Dictionary of the English Language: Fourth Edition. 2000.” (See App. Br.
19, “EVIDENCE APPENDIX”).
However, we observe that the Evidence Appendix (Br. 19) is silent
regarding the requisite statement setting forth where the aforementioned
dictionary reference was entered into the record by the Examiner. See 37
C.F.R. § 41.37(c)(1)(ix); see also MPEP §716.01. Nor has Appellant
provided a copy of the aforementioned dictionary definition as part of the
Evidence Appendix to the Brief as required by our rule. See 37 C.F.R. §
41.37(c)(1)(ix). Our procedural rules do not permit reference to unentered
evidence in the Brief. 2 Therefore, we decline to construe Appellant’s
claims in accordance with the proffered extrinsic dictionary evidence.3
(App. Br. 11).

those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical,
Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).

2 See 37 C.F.R. § 41.37(c)(1)(ix):
Evidence appendix. An appendix containing copies of
any evidence submitted pursuant to §§1.130, 1.131, or
1.132 of this title or of any other evidence entered by the
examiner and relied upon by appellant in the appeal,
along with a statement setting forth where in the record
that evidence was entered in the record by the examiner.
Reference to unentered evidence is not permitted in the
brief. See §41.33 for treatment of evidence submitted
after appeal. This appendix may also include copies of
the evidence relied upon by the examiner as to grounds
of rejection to be reviewed on appeal.
3 Our reviewing court guides that extrinsic evidence is unlikely to result in a
reliable interpretation of patent claim scope unless considered in the context
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On this record, we are not persuaded by Appellant’s arguments that
the Examiner’s claim interpretation is overly broad, unreasonable, or
inconsistent with the Specification. As pointed to by the Examiner in the
rejection (Ans. 4), Susai expressly discloses that “[t]he initial on-hold
request can be either a default request or a client-customized request.” (col.
7, ll. 2-4). We also observe that Susai discloses that “different contents (i.e.,
web pages) are designed to be available based on the different waiting
times.” (col. 6, ll. 65-66). Susai discloses calculating the waiting time by
including the estimated current response time as a factor (col. 6, ll. 51-53),
which is estimated based upon measured times (“actual past response
times),” as discussed above. (FF 1, col. 5, ll. 23-25).
Therefore, we agree with the Examiner Susai discloses a transaction
(client-customized request) that is personalized, or modified for a particular
customer using a time measurement (waiting time) factor. (Ans. 13). Thus,
for essentially the same reasons articulated by the Examiner in the Answer
(4, 13), we agree with the Examiner’s finding that Susai discloses
personalizing a subsequent one of said transactions, according to the
measurement, within the meaning of independent claims 19 and 20.

of the intrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed.
Cir. 2005) (en banc). The court in Phillips guided that “different
dictionaries may contain somewhat different sets of definitions for the same
words. A claim should not rise or fall based upon the preferences of a
particular dictionary editor, or the court’s independent decision, uninformed
by the specification, to rely on one dictionary rather than another.” Id. at
1322. The court in Phillips reaffirmed its view that the specification “is
always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.” Id.
at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996)).
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For the reasons discussed above regarding Issues 1 and 2, Appellant
has not persuaded us that the Examiner erred in rejecting independent claims
19 and 20 as being anticipated by Susai. Accordingly, we sustain the
Examiner’s anticipation rejection of representative claim 19, and claim 20
which falls therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Second-stated rejection
Claims 1-3, 5, 8-12, and 14 (rejected under §103)
Appellant argues claims 1-3, 5, 8-12, and 14 as a group. (App.
Br. 10-12). We select representative claim 1 to decide the appeal for
this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant’s Contentions
Appellant contends that “[n]either of the references discloses time
measurement. Note the discussion above with respect to Susai et al.” (App.
Br. 12). In particular, Appellant contends that the secondary Bankier
reference fails to cure the deficiencies of Susai: “There is no measurement of
time and no time value from which to determine if any incentive offer needs
to be made or not.” (Id.).
We note that the Examiner relied on Susai to teach or suggest the
disputed time measurement limitation (“measuring a response time”). (Claim
1, Ans. 6). Bankier 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.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references).
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Here, we observe that the Examiner relied on the secondary Bankier
reference for teaching or suggesting communicating an incentive offer when
the server is unable to provide appropriate service. (Ans. 6). The
Examiner’s obviousness rejection is based on the combination of Susai and
Bankier.
In addition, as a matter of claim construction, we conclude that the
claimed process step of “communicating an incentive offer” is not changed
or performed differently according to the particular type of data (incentive
offer) that is communicated from the remote server. (Claim 1). We note that
the content of such nonfunctional descriptive material is not entitled to
weight in the patentability analysis. 4
Therefore, on this record, Appellant’s arguments have not persuaded
us of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness for representative claim 1.
Accordingly, we sustain the Examiner’s obviousness rejection of
representative claim 1, and claims 2, 3, 5, 8-12, and 14 (not argued
separately), which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Third-stated rejection
Claims 7 and 16

4 In a precedential decision, a BPAI expanded panel held that elements that
do not affect the claimed process are non-functional material and are merely
descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887-1888 (BPAI 2008).
(precedential) available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf.
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Appellant argues claims 7 and 16 as a group. (App. Br. 13).
We select representative claim 7 to decide the appeal for this group.
See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant restates the previous argument that the cited references do
not teach measuring time (“there is no measured time”). (App. Br. 13). We
do not find this argument persuasive for the same reasons discussed above
regarding the second-stated rejection. See Merck, 800 F.2d at 1097.
Appellant additionally contends that cited tertiary Case reference has
“nothing to do with an incentive and [merely] provide[s] the user with less
than is desired.” (App. Br. 13) .
However, we observe that representative claim 7 recites: “[the]
[p]rocess according to claim 1, further including modifying the number of
graphical elements transmitted to a user of the client device according to the
measured time.”
As pointed to by the Examiner in the rejection of claim 7 (Ans. 8),
Case expressly teaches that “if a server receives a request for a Web page
from a client over a network with very high latencies, it would be
advantageous for the server to reduce or filter the amount of information
sent in response to the client's request.” (col. 3, ll. 1-5, emphasis added).
Thus, we agree with the Examiner that the cited portion of Case (in
combination with Susai and Bankier) would have taught or suggested
“modifying the number of graphical elements transmitted to a user of the
client device according to the measured time,” within the meaning of claim
7.
For these reasons, we find Appellant’s arguments unpersuasive of
Examiner error. Therefore, we sustain the Examiner’s obviousness rejection
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of representative claim 7, and claim 16 (not argued separately), which falls
therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Fourth-stated rejection
Claims 4, 13, and 17
Appellant argues claims 4, 13, and 17 as a group. (App. Br. 13-
14). We select representative claim 4 to decide the appeal for this
group. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant presents the following contentions:
In this rejection, Tsun is relied upon to disclose a database
storing values. However, there is nothing advanced in the
rejection as to why these teachings would move the
hypothetical person of ordinary skill to consider rectifying the
dilemma associated with the combination Susai et al. or the
Bankier references. Indeed, this citation appears to be applied
in nothing more than -its known so it's obvious- type of
maneuver.
(App. Br. 13-14).

In reviewing the record, we observe that the Examiner sets forth a
specific rationale explaining why it would have been obvious to modify
Susai with the teachings of Tsun. (Ans. 9). Appellant has not traversed the
Examiner’s proffered rationale for combining the references with any
substantive argument or evidence. Conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693,
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slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
This reasoning is applicable here. Therefore, because Appellant has
not convinced us of Examiner error, we sustain the Examiner’s fourth -stated
rejection of claim 4, and claims 13 and 17 (not argued separately), which fall
therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Fifth-stated rejection (claim 18) and Sixth-stated rejection (claims 6 and 15)
Appellant does not provide any arguments traversing the Examiner’s
rejections of dependent claims 6, 15, and 18. Therefore, we consider these
arguments waived. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir
2008) (“When the appellant fails to contest a ground of rejection to the
Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no
burden on the Board to consider the merits of that ground of rejection. . . .
[T]he Board may treat any argument with respect to that ground of rejection
as waived.”).
On this record, we summarily sustain the Examiner’s obviousness
rejections of claims 6, 15, and 18.

DECISION
We affirm the §103 rejections of claims 1-18.
We affirm the § 102 rejection of claims 19 and 20.
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) (2011).

ORDER
AFFIRMED
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