Ex Parte Mukherjee et al

Patent Trial and Appeal Board

Feb 28, 2013

11085849 (P.T.A.B. Feb. 28, 2013)

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.
11/085,849 03/22/2005 Sarit Mukherjee MUKHERJEE 16-18-2
(LCNT/1
2329
46363 7590 02/28/2013
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
NGUYEN, DUSTIN
ART UNIT PAPER NUMBER
2446
MAIL DATE DELIVERY MODE
02/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SARIT MUKHERJEE,
SAMPATH RANGARAJAN, and
PABLO RODRIGUEZ
____________________

Appeal 2010-006704
Application 11/085,849
Technology Center 2400
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/085,849

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STATEMENT OF CASE1
Introduction
Appellants appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants disclose a method (Fig. 3A; claim 1) and apparatus (Fig. 2;
claim 16) for retrieving embedded objects of a web page across network
links (Abs.; Spec. 3:5-12). The method comprises (i) receiving, at a
gateway, a requested web page having at least one embedded uniform
resource locator (URL) from at least one content server in response to a
request for the web page from an end-user browser (Spec. 9:7-15); (ii)
modifying the embedded URL with an IP address of a caching proxy (Fig.
3A, 308; Spec. 9:18-20), and (iii) sending the web page and modified
embedded URLs to said end-user browser, wherein said end-user browser
receiving the embedded URL from the caching proxy (Fig. 3A, 310 and 312;
Spec. 10:20-11:2; claim 1).
Exemplary Claims
Exemplary independent claims 1 and 16 under appeal, with emphasis
added to the disputed portions of the claims, read as follows:

1 Throughout our decision, we make reference to the Appeal Brief filed April
16, 2009 (“App. Br.”); the Appeal Brief for missing page “11” filed
September 24, 2009 (“Suppl. App. Br.”); the Examiner’s Answer mailed
January 28, 2010 (“Ans.”); and the Reply Brief filed March 18, 2010
(“Reply Br.”).
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1. A method for retrieving embedded objects of a web
page across links, comprising:

receiving, at a gateway, a requested web page having at
least one embedded uniform resource locator (URL) from at
least one content server in response to a request for said web
page from an end-user browser;

modifying said at least one embedded URL with an IP
address of a caching proxy; and

sending said web page and modified embedded URLs to
said end-user browser, wherein said end-user browser is
adapted to receive said at least one embedded URL from said
caching proxy.

16. Apparatus for retrieving embedded objects of a web
page across links, comprising:

means for receiving, at a gateway, a requested web page
having at least one embedded uniform resource locator (URL)
from at least one content server in response to a request for said
web page from an end-user browser;

means for modifying said at least one embedded URL
with an IP address of a caching proxy; and

means for sending said web page and modified
embedded URLs to said end-user browser, wherein said end-
user browser is adapted to receive said at least one embedded
URL from said caching proxy.

Appeal 2010-006704
Application 11/085,849

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Examiner’s Rejections
(1) The Examiner rejected claims 1-3, 5, 6, 16, 17, and 19-21 under
35 U.S.C. § 102(b) as being anticipated by Gupta (US 6,701,374 B2).2 Ans.
3-5.
(2) The Examiner rejected claims 4 and 18 as being unpatentable
under 35 U.S.C. § 103(a) over Gupta and Wang (US 7,349,967 B2). Ans. 6.
(3) The Examiner rejected claims 7 and 8 as being unpatentable under
35 U.S.C. § 103(a) over Gupta and DeLima (US 7,213,071 B2). Ans. 7.
(4) The Examiner rejected claims 9-15 as being unpatentable under
35 U.S.C. § 103(a) over Gupta and Jungck (US 7,032,031 B2). Ans. 7-10.

Appellants’ Contentions
(1) With regard to claim 1, rejected under 35 U.S.C. § 102(b) as being
anticipated by Gupta, Appellants make numerous arguments (App. Br. 10,
12; Suppl. App. Br. 11; Reply Br. 2-6), including:

2 Separate patentability is not argued for claims 2-15 and 17-21. Appellants
rely on arguments presented for claim 1 with respect to claims 3-14
(depending from claim 1) (App. Br. 9), and with respect to independent
claim 21. Appellants rely on the arguments presented for claim 16 with
respect to claims 17-19 (depending from claim 16) (App. Br. 9-14). We
select claim 1 as representative of the group of claims 1-3, 5, 6, and 21; and
claim 16 as representative of the group of claims 16, 17, 19, and 20,
pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). See In re
McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002) (“If the brief fails to meet
either requirement [of 37 CFR § 1.192(c)(7)], the Board is free to select a
single claim from each group of claims subject to a common ground of
rejection as representative of all claims in that group and to decide the
appeal of that rejection based solely on the selected representative claim.”)
Accordingly, our analysis herein will only address representative claims 1
and 16.
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(a) Gupta neither expressly nor inherently discloses the feature
of a content server sending response to a request from an end-user
browser (App. Br. 10 and Suppl. App. Br. 11);
(b) The Examiner did not accord patentable weight to the
phrase “retrieving embedded objects of a web page across links” of
claim 1 (Suppl. App. Br. 11);
(c) The Examiner pieced together teachings of Gupta to make
an anticipation rejection (Reply Br. 3-5); and
(d) Gupta does not teach “modifying said at least one embedded
URL with an IP address of a caching proxy” (Reply Br. 5); and
(e) The Examiner’s citations to Gupta (col. 8, l. 39-col. 10, l. 24
and col. 11, l. 11-col. 12, l. 53 do not meet the specificity required
under § 102 as set forth in 37 CFR 1.104(c)(2).
(2) With regard to claim 16, which invokes 35 U.S.C. § 112, sixth
paragraph, and is rejected under 35 U.S.C. § 102(b) as being anticipated by
Gupta, Appellants argue (App. Br. 12-13 and Reply Br. 6-9) that:
(a) the Examiner has not considered the required structure
disclosed in the Specification to make the rejection (App. Br. 12-13);
and
(b) Gupta’s Figure 2 is not equivalent to Appellants’ Figure 1
structure under 35 U.S.C. § 112, sixth paragraph (id.).
Issues on Appeal
Based on Appellants’ arguments in the appeal briefs (App. Br. 10 and
12-14; and Suppl. App. Br. 11) and the Reply Brief (Reply Br. 2-9), the
following issues are presented on appeal:
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Did the Examiner err in rejecting representative claim 1 as being
anticipated by Gupta because Gupta fails to disclose the limitations at issue
in representative claim 1?
Did the Examiner err in rejecting representative claim 16 under
35 U.S.C. § 112, sixth paragraph, because (i) the Examiner has not
considered the required structure disclosed in the Specification; and (ii)
Gupta’s structure shown in Figure 2 is not equivalent to Appellants’
disclosed structure?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 10, 12-14, Suppl. App. Br. 11) and
the Reply Brief (Reply Br. 2-9) that the Examiner has erred. We disagree
with Appellants’ conclusions.
With regard to representative claims 1 and 16, we concur with the
conclusions reached by the Examiner, and we adopt as our own (i) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Ans. 4), and (ii) the reasons set forth by the Examiner in the
Examiner’s Answer in response to the Appellants’ Appeal Brief (Ans. 10-
11). We highlight and amplify certain teachings and suggestions of the
references, as well as certain ones of Appellants’ arguments as follows.
We agree with the Examiner’s findings that Gupta teaches (Gupta,
Fig. 3 and col. 10, ll.3-5 and ll.17-19) intermediaries 308 (i.e., gateway) that
can modify a response 306 from an origin server 312 (i.e., content server)
sent in response to a request 304 from a client 302 (i.e., end-user browser).
The modification can be to add or delete thru-proxy tags (Gupta, col. 12,
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ll.5-9 and col. 9, ll.1-45) that identify a proxy to the client which can be used
for related requests from the client (Gupta, col. 11).
Claims 1, 2, 3, 5, 6, and 21
With regard to representative claim 1, we agree with the Examiner
(Ans. 10-11) that Gupta teaches a content server sending a response to a
request from an end-user browser.
Appellants argue (App. Br. 10) that the cited portions of Gupta do not
teach a content server sending response to a request from an end-user
browser as recited in representative claim 1 because the Examiner merely
annotated the cited portions of Gupta with commentary. Further, Appellants
argue (Reply Br. 4-5) that the Examiner cites long passages extending over
pages which is not in compliance with 37 CFR § 1.104(c)(2). We find that
Appellants’ arguments are not persuasive since 37 CFR § 1.104(c)(2) states
that when a reference is complex, the particular part relied on must be
designated as nearly as practicable and that the pertinence of each reference,
if not apparent, must be clearly explained. By citing relevant portions of
Gupta and annotating the cited portions, the Examiner has reasonably shown
how Gupta discloses the limitations of representative claim 1. Further, when
a claim covers multiple portions of a reference, it is common to cite all
relevant sections. By way of example, we note that Appellants cite pages
10-14 of the Specification to show support for a single portion of claim 1
(App. Br. 7).
Appellants’ arguments that (i) the Examiner pieced together teachings
of Gupta to make an anticipation rejection, and (ii) by so doing, the context
of claim 1 is lost, fail to actually rebut the Examiner’s findings that the cited
portions of Gupta teach the claimed limitations.
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Appellants criticize Gupta (Suppl. App. Br. 11) for merely teaching a
server when representative claim 1 requires “at least one content server.”
However, we agree with the Examiner (Ans. 10-11) that Gupta teaches “at
least one content server” (Gupta, col. 2, ll.53-54).
Appellants criticize Gupta (Suppl. App. Br. 11) for not teaching “a
web page from an end-user browser.” Claim 1, however, does not require “a
web page from an end-user browser” as argued by Appellants, but requires a
request for a web page from an end-user browser which is sufficiently
shown by the Examiner (Ans. 10-11) as being taught by Gupta (Gupta, col.
2, ll. 45-51).
Additionally, Appellants argue (Suppl. App. Br. 11) that the Examiner
did not accord patentable weight to the phrase “retrieving embedded objects
of a web page across links” of representative claim 1 but present no support
for the argument. We find this argument unpersuasive because the
Examiner has sufficiently relied upon Gupta for disclosing these features
(see Ans. 4 and 10-11).
Furthermore, Appellants assert (Reply Br. 5) that the Examiner
overlooked the feature “modifying said at least one embedded URL with an
IP address of a caching proxy” by claiming there is no mention of the feature
in the Office Action. We have carefully reviewed these arguments and
found that the Examiner addressed (Ans. 4) the feature (Gupta, items 512-
516 of Fig. 5).
We sustain the rejection of representative claim 1, as well as claims 2,
3, 5, 6, and 21 grouped therewith as being anticipated by Gupta. Although
Appellants nominally argued the rejection of claims 4, 7-8, and 9-15
separately (App. Br. 14), the arguments presented do not point out with
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particularity or explain why the limitations of the claims are separately
patentable. Accordingly, we sustain the rejection of claims 4, 7-8, and 9-15
under 35 U.S.C. § 103(a) for the same reasons as claim 1.
Claims 16, 17, 19, and 20
With regard to representative claim 16, which invokes 35 U.S.C.
§ 112, sixth paragraph, we agree with the Examiner (Ans. 12) that Gupta’s
disclosure, including Figures 3 and 6, anticipates the claimed means of claim
16. Appellants’ arguments (App Br. 12-13; Reply Br. 6-9) that (i) the
Examiner has not considered the required structure disclosed in the
Specification to make the rejection, and (ii) the required structure includes
Figures 2-4 of Appellants’ Specification, are not persuasive inasmuch as
only Appellants’ Figure 2 is needed to support the structure of the means
limitations recited in claim 16.
Appellants argument (Reply Br. 9) that the elements disclosed in
Gupta do not perform the same functions as the elements of Appellants’
Specification, e.g., the method of Figure 3 and the flow diagram of Figure 4,
are not persuasive because any such differences are not set forth in claim 16
on appeal. See CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d 1225,
1231(Fed. Cir. 2005).
The structure set forth in claim 16 encompasses what is shown in both
Appellants’ Figure 2 (which is an expanded view of gateway 104 shown in
Appellants’ Figure 1) and Gupta’s Figure 3 (showing the network
architecture including intermediaries or gateways 308) and Figure 6
(showing the operational flow of intermediaries or gateways 308).
Appellants’ argument (Reply Br. 9) that the Specification discloses multiple
means to carry out the claimed method (see e.g., Figs. 2-4), is unpersuasive
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because (i) the structure shown in Appellants’ Figure 2 corresponds to the
means for receiving, modifying, and sending recited in claim 16 without the
need to resort to Figures 1, 3, and 4, and (ii) the Examiner addressed the
means of claim 16 by comparing the components of Gupta’s Figures 2, 3,
and 6 as equivalents to Appellants’ Figure 2; not as equivalents to
Appellants’ Figures 1, 3, and 4 (Ans. 12).
We will sustain the rejection of claim 16, as well as claims 17, 19, and
20 grouped therewith as being anticipated by Gupta. We will sustain the
rejection of claim 18 because Appellants have not argued (App. Br. 14) the
patentability of claim 18 separately.
In view of the foregoing, we conclude that the inventions recited in
claims 1-21 have not been shown to be patentably distinguishable from the
teachings of the applied prior art.

CONCLUSIONS
(1) The Examiner has not erred in in rejecting representative claim 1
on appeal, and claims 2-3, 5, 6, and 21 grouped therewith, since Gupta
teaches the limitations of representative claim 1.
(2) Appellants have not adequately shown that the Examiner has erred
in rejecting representative claim 16, as well as claims 17, 19, and 20 grouped
therewith, since (i) the Examiner has considered the required structure
disclosed in the Specification to make the 35 U.S.C. § 112, sixth paragraph,
rejection; and (ii) Gupta’s Figures 3 and 6 are equivalent to Appellants’
Figure 2 which show the structure corresponding to the means recited in
claim 16.
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DECISION
(1) The Examiner’s rejections of claims 1-3, 5, 6, 16, 17, and 19-21
under 35 U.S.C. § 102(b) are affirmed.
(2) The Examiner’s rejections of claims 4, 7-15, and 18 under
35 U.S.C. § 103(a) 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
Vsh