Ex Parte Nesbitt et al

Patent Trial and Appeal Board

Feb 4, 2013

11432070 (P.T.A.B. Feb. 4, 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.
11/432,070 05/11/2006 Richard E. Nesbitt END920050172US1 8625
30449 7590 02/04/2013
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
GEORGANDELLIS, ANDREW C
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
02/04/2013 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 RICHARD E. NESBITT, BRIAN M. O’CONNELL,
HERBERT D. PEARTHREE, and KEVIN E. VAUGHAN
____________

Appeal 2010-009761
Application 11/432,070
Technology Center 2400
____________

Before ALLEN R. MacDONALD, GEORGIANNA W. BRADEN and
MIRIAM L. QUINN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-3, 5, 7-9, 11, 12, 14-16, and 20. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 4, 6, 10, 13, 17-19 have been cancelled.
We AFFIRM-IN-PART and enter a NEW GROUNDS OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
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STATEMENT OF THE CASE
Appellants’ Invention
According to Appellants, the invention relates to a method, system
and computer program product for collecting web metric data over a
computer network without substantially increasing the load time for a web
page. (Spec. 1, ll. 5-7.)

Representative Claim
Independent claim 1 is representative and reads as follows:
1. A method of collecting web usage data over a
computer network, said method comprising the steps
of:
inserting a script at the top of each web page of a
plurality of web pages to be metered, wherein said
script identifies a list of metric servers to be contacted
in a priority order for recording web usage data
collected, and wherein said inserting said script step
consists essentially of inserting said script at the
beginning of said each web page of said plurality of
web pages to be metered;
sending a web page request over a computer
network to a web server for a web page of said
plurality of web pages;
loading said web page while executing said script
inserted within said web page for collecting said web
usage data without substantially increasing load time
for said web page;
establishing an asynchronous connection to a first
metric server listed in said list of metric servers
according to said priority order provided in said script
for sending a record request for recording said web
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usage data collected for said web page after said web
page is loaded; and
transmitting, upon establishment of said
asynchronous connection to said first metric server,
said web usage data as part of said record request using
a method such that said record request is not cached at
an intermediate proxy.
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Allard US 6,018,619 Jan. 25, 2000
Mankude US 6,223,231 B1 Apr. 24, 2001
Russell US 2002/0099818 A1 Jul. 25, 2002
Jorgenson US 6,813,635 B1 Nov. 2, 2004

Rejections1
Claims 1, 2, 3, 5, 9, 11, 12, 15, and 16 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Russell in view of
Mankude. (Ans. 4-8.)
Claims 7, 8, 14, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Russell, Mankude, and Jorgenson, as
applied to claim 6, and in further view of Allard. (Ans. 8-9.)

1 The Examiner’s Answer includes a rejection of claims 15-20 under
35 U.S.C. § 101 for being directed to non-statutory subject matter. (Ans. 3.)
We note, however, that this rejection was deemed overcome in the Advisory
Action mailed 6/10/2009, and, therefore, we treat it as having been
withdrawn.
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ISSUES
Based on Appellants’ arguments, and emphasizing the disputed
claim language as provided in Appellants’ Brief, the dispositive issues
on appeal are:
(1) Whether Russell teaches or suggests “establishing an
asynchronous connection to a first metric server . . . after said web
page is loaded,” as recited in claim 1 (Br. 13-15);
(2) Whether Russell in view of Mankude teaches or suggests
the limitation “said script including a list of available metric server
machines to be contacted in a priority order for recording web metric
data collected,” as recited in claim 15 (Br. 30-32);
(3) Whether Russell in view of Mankude teaches or suggests
“second program instructions to execute said script for collecting
said web metric data associated with a web page of said plurality
of web pages being loaded without substantially increasing load time
for said web page,” as recited in claim 15 (Br. 32-33);
(4) Whether Russell in view of Mankude teaches or suggests
“using a method such that said request is not cached at an
intermediate proxy,” as recited in claim 15 (Br. 33-34); and
(5) Whether the Examiner has erred in rejecting claims 7, 8,
14, and 20 under 25 U.S.C. § 103(a) as being unpatentable over
Russell, Mankude, and Jorgenson, as applied to claim 6, and in further
view of Allard. In particular, the substantive issue turns on whether
the disclosure in Allard that “the client will . . . send or post (via
HTTP) the session usage log” meets the claimed “POST method.”
(Br. 36-40 (emphasis added).)
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments.
Issue 1
We first address the limitation of “establishing an asynchronous
connection to a first metric server . . . for recording said web usage data
collected for said web page after said web page is loaded,” as recited in
claim 1. We note that independent claim 9 recites a similar limitation, but
independent claim 15 does not. In the Final Rejection, and for the first time,
the Examiner finds that Russell, although teaching the establishment of an
asynchronous connection for purposes of transmitting collected data, does
not “explicitly indicate when the asynchronous connection is established.”
(Final Rej. 4.) The Examiner determined, nevertheless, that one of ordinary
skill in the art would have been “motivated at the time of the invention to try
establishing Russell’s asynchronous connection before, during, and after the
web page has loaded because doing so would have been easy to try, i.e.,
there are only three permutations.” (Final Rej. 4, 8.) Appellants challenge
that determination arguing that the Examiner is unable to show evidence of
knowledge in the prior art of establishing the asynchronous connection to a
first metric server after the web page is loaded. (Br. 13-15.) The Examiner
responds that Appellants failed to traverse the Examiner’s official notice in
accordance with MPEP § 2144.03. (Ans. 13.) And, therefore, the limitation
of “establishing an asynchronous connection to a first metric server . . . after
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said web page is loaded,” is deemed admitted prior art. (Id.) We do not
agree with the Examiner.
While an Examiner’s notice of a fact being common knowledge or
well known in the art must be adequately traversed per MPEP § 2144.03,
that traverse is required in the next reply to the Office action in which the
common knowledge finding was made. MPEP § 2144.03. In this case, the
Examiner first made that finding in the Final Rejection. The first response
thereto being Appellants’ Appeal Brief, which traverses the Examiner’s
finding by demanding authority evidencing the existence in the prior art of
the fact. (Br. 13-15.) Though in this case Appellants filed an Amendment
After Final to narrow the issues on appeal, that amendment is not a response
of right. See 37 C.F.R. § 1.113(c) (limiting a reply to a final rejection of
unallowed claims to cancellation of the rejected claims or appeal from the
rejection of those claims); 37 C.F.R. § 1.116 (allowing amendment of claims
and/or admission of evidence after final rejection and before appeal in
limited circumstances).
Therefore, we find that Appellants traversed the Examiner’s notice in
their Appeal Brief and that the Examiner erred in failing to adequately
respond to that traverse. Accordingly, we do not sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) over Russell, in view of Mankude. We
also do not sustain the rejection of independent claim 9 based on the analysis
above, because that claim recites language similar to claim 1 and Appellants
challenge the Examiner’s rejection on the same grounds (Br. 24-25).
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Issue 2
We now turn to issues affecting independent claim 15, the first of
which deals with the following claim language: “insert[ing] a script at the
top of each web page . . . said script including a list of available metric
server machines.” (Br. 30.) Acknowledging that Mankude discloses that
primary and secondary servers are in a priority order for processing an I/O
request, Appellants, however, contend that Mankude does not disclose a list
of servers that includes the primary and secondary servers. (Br. 31
(emphasis added).) Appellants further contend that the Examiner failed to
provide a reason for determining it would have been obvious for an
ordinarily skilled artisan to identify the list of servers in the script that is
inserted at the top of a web page. (Br. 31-32.) We do not agree with
Appellants’ conclusions.
As to the first contention, the Examiner construed the claim term
“list” according to the broadest reasonable interpretation consistent with the
specification. (Ans. 9-10.) Under that interpretation, the Examiner finds
that Mankude’s disclosure – of a primary server to be contacted first and a
secondary server to be contacted in the event of failure to contact the
primary server – meets the claimed “list of servers.” (Ans. 9-10.) We find
no error in the Examiner’s analysis concerning Mankude’s disclosure of a
list of servers.
As to the second contention, we find the Examiner provided a
reasonable rationale for determining that a person of ordinary skill in the art
would modify Russell’s system so that the script identifies the list of servers
taught in Mankude. (Ans. 5.) According to the Examiner, allowing Russell
to record collected data at a secondary server, even if the primary server
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fails, adds failover capabilities to Russell’s system. (Id.) We find that the
Examiner’s stated reasoning is reasonable. And we find unpersuasive
Appellants’ argument that Russell need not be informed of the list of servers
using a script because “Russell merely has to be informed in any manner.”
(Br. 23.) That argument does not show error in the Examiner’s finding, such
as by stating why one of ordinary skill in the art at the time of the invention,
motivated to provide a failover feature in Russell, would not be capable of
providing that list of servers in the script disclosed in Russell. See DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006) (“[T]he proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable of combining
the prior art references.”).
Accordingly, we find that the disclosure of Russell in view of
Mankude, as relied on by the Examiner, discloses the limitation of
“insert[ing] a script at the top of each web page . . . said script including a
list of available metric server machines,” as recited in claim 15. We also
find that claim 16, dependent on claim 15, is argued by Appellants on the
basis of the “existence of the list of available metric server machines
provided in the script” (Br. 35), as discussed above. Therefore, we reach the
same conclusion with regard to that claim.
Issue 3
Next we decide the issue concerning the claimed limitation of “second
program instructions to execute said script for collecting said web metric
data associated with a web page of said plurality of web pages being
loaded,” as recited in claim 15. (Br. 32.) Appellants agree that Russell
“impliedly discloses executing the script in a manner that does not delay
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delivery of the web page to the end user.” (Br. 33.) Appellants contend,
however, that (a) non-delay of delivery of the web page to the user is
accomplished if the script is executed after the web page is loaded; and (b)
non-delay of delivery of the web page to the end user is not guaranteed to be
accomplished if the script is executed while the web page is loaded. (Id.
(emphasis added).) We do not agree with Appellants’ conclusions.
First, we agree with the Examiner’s conclusion that Russell teaches
“that the script is executing while the page is loaded.” (Ans. 12.) The
Examiner supports that conclusion with the following findings:
(1) Russell discloses that a Javascript code for collecting
performance metrics is appended to the web page code or is included
in annotation “towards the beginning of the HTML document.” (Ans.
11-12.)
(2) Russell discloses the collection of the “render latency” metric
(which measures the amount of time it takes to load the page from
start to finish). (Ans. 12.)
(3) Russell’s metrics “can only be collected if the script is
executing while the page is loading, while other metrics such as
‘dwell time’ only require that the script be executing once the page
has loaded.” (Ans. 12.)
The Examiner points to Table 1, and paragraphs 47-49, 55, and 76 in
Russell to support these findings. (Ans. 11-12.) We find the disclosure in
Russell supports the Examiner’s findings and conclusion that the limitation
at issue is met by Russell.
With regard to Appellants’ contentions, we agree with the Examiner’s
response as stated in the Answer, and adopt it as our own. (Ans. 12.) We
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also note that paragraph 24 of Russell, pointed out by Appellants as
supporting their contentions, teaches to not execute the script before loading
the web page, but does not teach that the script must be executed after
loading the web page, as Appellants argue. (Br. 33; Russell [0024].)
In conclusion, we find the disclosure of Russell as relied on by the
Examiner teaches or suggests the limitation of a “second program
instructions to execute said script for collecting said web metric data
associated with a web page of said plurality of web pages being loaded
without substantially increasing load time for said web page,” as recited in
claim 15.
Issue 4
We now turn to the final issue affecting claim 15, the issue concerning
the limitation that “said request is not cached at an intermediate proxy,”
a negative limitation. (Br. 33-34.) Appellants contend that Russell does not
disclose, explicitly or inherently, the negative limitation, at least in part
“because there is no disclosure in Russell that negates the possibility of
having the record request cached at an intermediate proxy.” (Br. 34.)
Appellants also contend the Examiner’s rationale improperly focuses on
“caching the metric data at an intermediate proxy” and not on the negative
limitation as claimed. (Id.) We find Appellants’ arguments in support of
these contentions unpersuasive and do not agree with Appellants’
conclusions. Instead, we agree with the Examiner’s comprehensive findings
and conclusions in response to the Appellants’ arguments and adopt said
response as our own. (Ans. 14-16.)
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Issue 5
The Examiner rejects claims 7, 8, 14, and 20 under 35 U.S.C. § 103(a)
over a combination of Russell, Mankude, and Jorgenson, as applied to claim
6, and in further view of Allard. (Ans. 8-9.) Appellants present two
arguments concerning the alleged Examiner error in that rejection. As for
the substance of the rejection, Appellants contend that Allard does not
disclose a method for a record request as claimed. (Br. 37-40.) As for the
form of the rejection, Appellants contend that claim 6 has been cancelled,
and that the rejection is, therefore, improper. (Br. 36-40.)
Concerning the first argument, we focus on whether the substance of
the rejection is proper with respect to claim 20, which depends on claim 16.
Appellants argue that, although Allard discloses that the client sends or posts
(via HTTP) the session usage log, Allard does not disclose the claimed
“POST method.” (Br. 40 (emphasis added).) The Examiner finds that
Allard teaches “utilizing POST to record a session log to a server, which is
identical to Appellants’ use of POST to record metric data to a server.”
(Ans. 20.) Appellants quibble over the grammatical effect of the description
in Allard, but fail to show that the Examiner’s finding is in error. The
passage in Allard on which the Examiner relies expressly teaches the use of
the HTTP protocol to “post” a session usage log. (Ans. 20 (citing Allard,
col. 12, ll. 38-42).) The Examiner’s conclusion is further supported by
Allard, col. 6, ll. 43-45, which states that “a usage tracking data object is
sent by the client to the designated usage tracking server by means of an
HTTP ‘post’ operation.” Accordingly, we are not persuaded by Appellants’
argument that the Examiner erred in finding that Allard teaches the use of
the claimed POST method.
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Turning to the argument concerning the form of the rejection, we
agree with Appellants that the rejection of claim 20 is improperly stated.
(Br. 39.) We also note that the rejection is improper because, as pointed out
by the Examiner, the prior art cited as the basis for that rejection is
incorrectly stated. (Ans. 19.) Therefore, exercising our authority under 35
C.F.R. § 41.50(b), we make the following new grounds of rejection of claim
20 to correct the statement of the Examiner’s rejection:
Claim 20 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Russell in view of Mankude, and in further view of Allard.
CONCLUSIONS
On the record before us, we conclude that the Examiner erred in
rejecting independent claims 1 and 9 under 35 U.S.C. § 103(a) over Russell
in view of Mankude. Therefore, we do not sustain the rejection of
independent claims 1 and 9, as well as dependent claims 2, 3, 5, 7, 8, 11, 12,
and 14.
Further, we find that the Examiner did not err in rejecting independent
claim 15, and dependent claim 16 under 35 U.S.C. § 103(a) over Russell in
view of Mankude. Therefore, we sustain the rejection of claims 15 and 16.
Concerning dependent claim 20, although we agree with the
Examiner’s analysis on the substance of the rejection, we correct the form of
the rejection and state a new grounds of rejection under 35 U.S.C. § 103(a)
over Russell in view of Mankude, and in further view of Allard, using our
authority under 37 C.F.R. § 41.50(b).
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DECISION
We reverse the rejection of claims 1-3, 5, 7, 8, 9, 11, 12, and 14 under
35 U.S.C. § 103(a) over Russell in view of Mankude.
We affirm the rejection of claims 15 and 16 under 35 U.S.C. § 103(a)
over Russell in view of Mankude.
In a new ground of rejection, we reject claim 20 as being unpatentable
under 35 U.S.C. § 103(a) over Russell in view of Mankude, and in further
view of Allard.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv)
(2011).
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AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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