Ex Parte Moore

Patent Trial and Appeal Board

Jan 25, 2017

10163877 (P.T.A.B. Jan. 25, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/163,877 06/07/2002 Mike Moore 82070693 8557
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
CHOU, ALAN S
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
01/27/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE MOORE
Appeal 2016-001730
Application 10/163,877
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, 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 21—39, which are all the claims remaining in the
application. Claims 1—20 and 40 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b). We Affirm.
Appeal 2016-001730
Application 10/163,877
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
21. A method of facilitating transactions in client-server
networks comprising:
employing a microprocessor that executes computer
executable commands stored within a memory to perform the
following:
[LI] continuously measuring a response time between
requests sent from a client to a server and corresponding
responses received by the client from the server in conjunction
with an electronic transaction occurring between a user of the
client and a party associated with the server;
[L2] continuously determining a ratio of the measured
response time to an average value of response times;
updating the average value of response times based on
the continuously measured response time; and
in response to the determined ratio of the measured
response time to the average value of response times exceeding
a predetermined threshold, generating a web page displayed at
the client to include a special incentive offer to the user to
compensate for a degraded rate at which the corresponding
responses are received by the client from the server in response
to the requests sent from the client to the server.
(Contested limitations LI and L2 bracketed and emphasized.)
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Rejections
A. Claims 21—26 and 28—39 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Merriam (US
2003/0195960 Al, Oct. 16, 2003), Susai (US 6,725,272 Bl,
Apr. 20, 2004), and Bankier (US 2002/0103663 Al, Aug. 1, 2002).
B. Claim 27 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Merriam, Susai, Bankier,
and Shuster (US 2010/0318603 Al, Dec. 16, 2010).
Prior Appeals
This appeal is related to prior BPAI Decision Appeal No. 2009-
008912, Application No. 10/163,877 (same as instant application), mailed on
Dec. 22, 2011 (Examiner Affirmed).
Grouping of Claims
Based upon Appellant’s arguments, we decide the appeal of rejection
A of claims 21—26 and 28—39 on the basis of representative claim 21. We
address rejection B of claim 27 separately, infra. To the extent Appellant
has not advanced separate, substantive arguments for particular claims or
issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We find Appellant’s arguments unpersuasive for the reasons
discussed infra. We adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the Final Office Action from which this appeal
is taken, and (2) the findings, legal conclusions, and explanations set forth in
the Answer in response to Appellant’s arguments (Ans. 3—4). We highlight
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and address specific findings and arguments for emphasis in our analysis
below.
Rejection A of Representative Claim 21
We decide the following issues presented in this appeal:
Issues: Under § 103, did the Examiner err by finding the cited
combination of Merriam, Susai, and Bankier would have collectively taught
or suggested contested limitations LI and L2:
LI — “continuously measuring a response time between
requests sent from a client to a server and corresponding
responses received by the client from the server in conjunction
with an electronic transaction occurring between a user of the
client and a party associated with the server” and
L2 — “continuously determining a ratio of the measured
response time to an average value of response times,”
within the meaning of representative claim 21? 1
In the final Action (2—3) the Examiner relies on Merriam for teaching
or suggesting contested limitations LI and L2. However, in the “Response
to Arguments” (Ans. 3), the Examiner shifts position and now relies on
Susai for teaching or suggesting contested limitation LI (Ans. 3), and on
Merriam, in combination with Susai, for teaching or suggesting contested
limitation L2. (Ans. 3—4).
Contested Limitation LI
Regarding contested limitation LI, the Examiner now finds:
Susai teaches expressly the measuring of current response time
by using actual past response times to derive an estimated
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 L.3d
1048, 1054 (Led. Cir. 1997).
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Application 10/163,877
response time (see column 5 lines 22-30). The measurement is
on-going traffic for the actual response time (see column 5 lines
35-40). Susai discloses expressly measuring of an estimated
current response time and comparing it with a threshold
response time to determine if current user experience is
acceptable (see column 5 lines 50-56). Susai discloses
expressly measuring response] time of actual current user
sessions.
Ans. 3.
Therefore, as a matter of due process and fairness, and in accordance
with our procedural rules,2 we consider Appellant’s new responsive
arguments in the Reply Brief (1—3). Regarding contested limitation LI,
Appellant refers to the newly cited portions of Susai, and contends:
Susai cannot be considered as continuously measuring a
response time between requests (plural) sent from a client
(singular) to a server and corresponding responses received by
the client from the server in conjunction with an electronic
transaction occurring between a user of the client and a party
associated with the server. Susai does not continuously
measure a response between plural requests sent from a client
to a server, but rather estimates once its current response time.
Susai does not measure response times between requests sent
from a client to a server and corresponding responses received
by the client from the server, in Susai, the current response time
is estimated before a response is ever even sent to the client
from the server. Susai does not measure a response time
between requests and corresponding responses in conjunction
with an electronic transaction occurring between a user of the
client and a party associated with the server, rather, once it is
deemed in Susai that the estimated current response time is
acceptable, the client is never place on-hold, such that no
further determinations are made as to the response time
between the client in question and the server.
2 See 37 C.F.R. § 41.41(b)(2).
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Reply Br. 3.
However, we find Appellant is arguing limitations that are not
claimed. Contrary to Appellant’s contentions {id.), we broadly but
reasonably construe the claim 21 term “a client” as covering one or more
clients. Our reviewing court has repeatedly emphasized:
an indefinite article “a” or “an” in patent parlance carries the
meaning of “one or more” in open-ended claims containing the
transitional phrase “comprising.” That “a” or “an” can mean
“one or more” is best described as a rule, rather than merely as
a presumption or even a convention. The exceptions to this rule
are extremely limited: a patentee must “evince[ ] a clear intent”
to limit “a” or “an” to “one.” The subsequent use of definite
articles “the” or “said” in a claim to refer back to the same
claim term does not change the general plural rule, but simply
reinvokes that non-singular meaning.
SanDisk Corp. v. Kingston Technology Co., Inc., 695 F.3d 1348, 1360 (Fed.
Cir. 2012) (brackets in original) (emphasis omitted) (quoting Baldwin
Graphic Systems, Inc. v. Siebert, 512 F.3d 1338, 1342 (Fed. Cir. 2008)).
Here, we find Appellant has not evinced a clear intent to limit “a
client” as recited in claim 21 to only a singular meaning, either by express
language in the claim itself, or by a definition in the Specification. Because
“applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee.” In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). For
these reasons, we are not persuaded the Examiner’s broader reading of the
contested limitations is overly broad or unreasonable.
Regarding the broadest reasonable interpretation of the claim term
“continuously,” we find claim 21 is silent regarding the specific interval of
time over which the steps of (LI) “continuously measuring” and, (L2)
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“continuously determining” are performed. Is the continuous “measuring”
or “determining” being continuously performed for 1 second, 1 minute, 1
year, or 1 transaction, 10 transactions, or 1000 transactions? (Claim 21). In
the absence of more precise claiming, and on this record, we are not
persuaded the Examiner broader reading is overly broad, unreasonable, or
inconsistent with Appellant’s Specification,
Contested Limitation L2
In the “Response to Arguments” section in the Answer (3), the
Examiner now relies on Merriam and Susai for teaching or suggesting
limitation L2:
Merriam teaches expressly continuously measure over a period
of predetermined time such as peak usage hours (see page 4
section [0031]). Merriam teaches continuous determining a
ratio of measured response time (see ping as measured response
time on page 7 section [0049]) to average response time (see
average the network delay to ping ratios on page 7 section
[0050]).
Ans. 3.
The Examiner additionally finds:
Susai also teaches expressly the calculation of ongoing (see
column 5 lines 35-40), or continuously, measuring of ratio of
measured response time to average response time (see actual
past response time is averaged into the estimated response time
on column 5 lines 25-40).
Ans. 4.
In the Reply Brief, Appellant again imputes a narrow reading of the
claim language and argues limitations that are not expressly claimed. For
example, Appellant contends Merriam does not teach “a continuous
determination of a ratio of the measured response time between requests sent
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from a singular client to a server and corresponding responses received by
this client from the server to an average value of the response times.” Reply
Br. 4 (emphasis added). However, claim 21 is silent regarding a “singular”
client, as discussed above.
The Examiner newly cites to Susai for cumulatively teaching or
suggesting contested limitation L2 with Merriam. (Ans. 3). Susai teaches, in
pertinent part:
In step 306, interface unit 202 estimates the current
response time of the requested server. The current response
time of the requested server is estimated by interface unit 202
by using actual past response times as described next.
However, other techniques for determining the response time
can be used as should be readily apparent to one skilled in the
art.
Susai, col. 5,11. 23—27.
Susai further teaches “the estimated response time characteristic
assumes the actual response time” (col. 5,11. 36—37), and “[t]he estimated
current response time is then compared to a threshold value in step 308. The
threshold value represents the maximum response time allowed for the
current client (i.e., user) to gain access to the requested server” (col. 5,
11. 50-53).
Given this evidence (id.), and given our broader claim construction
above, Appellant has not persuaded us that the language recited in contested
limitation L2 precludes the Examiner’s broader reading on the cited
corresponding features in Merriam (Ans. 3) and Susai (Ans. 4). Further,
Appellant acknowledges that Susai’s formula incorporates “the sum of all
the response times divided by the number of response times” (Reply Br. 5).
Our reviewing court guides, “the question under 35 U.S.C. § 103 is not
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merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F. 2d 804,
807—808 (Fed. Cir. 1989) (citation omitted); see also MPEP § 2123.
This reasoning is applicable here, because we find the collective
teachings of Merriam and Susai (and Bankier) at least suggest all that is
contested by Appellant. On this record, and given the evidence relied on by
the Examiner (e.g., Merriam and Susai, Ans. 3—4), we find Appellant’s
arguments unavailing regarding contested limitations LI and L2, for
essentially the same reasons articulated by the Examiner in the Answer (3—
4), and for the reasons further discussed above. Accordingly, we sustain
rejection A of representative claim 21. The associated grouped claims fall
with claim 21. See “Grouping of Claims’ '' supra.
Rejection B of Claim 27
Appellant contends claim 27 “is patentable at least because it depends
from a patentable base independent claim” (App. Br. 6). However, we find
this argument unpersuasive for the reasons addressed above regarding
representative independent claim 21, from which claim 27 depends.
Conclusion
For at least the aforementioned reasons, and on this record, Appellant
has not persuaded us the Examiner erred. We find a preponderance of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness for all contested issues on appeal.
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DECISION
We affirm the Examiner’s decision rejecting claims 21—39 under
§ 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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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