Ex Parte Olsson et al

Patent Trial and Appeal Board

Sep 20, 2012

10383853 (P.T.A.B. Sep. 20, 2012)

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.
10/383,853 03/06/2003 Stig Arne Olsson AUS920020694US1 8796
87220 7590 09/20/2012
Walder Intellectual Property Law (END)
C/O Walder Intellectual Property Law, P.C.
17330 Preston Road
Suite 100B
Dallas, TX 75252
EXAMINER
WIDHALM, ANGELA M
ART UNIT PAPER NUMBER
2452
MAIL DATE DELIVERY MODE
09/20/2012 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 STIG ARNE OLSSON, DAVID MICHAEL URGO, and
GEETHA VIJAYAN
____________________

Appeal 2009-015360
Application 10/383,8531
Technology Center 2400
____________________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 6, 2003. The real party in interest is International
Business Machines Corp. (App. Br. 2.)
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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 21, 23-26,
and 28-30. Claims 1-20, 22, and 27 have been canceled. (App. Br. 28-31.)
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal concerns a measurement calculation
and communication system and computer program product for calculating
and mapping statistics comparing data of a set of transactions performed by
applications and outputting a representation of the mapping. (Spec. 1: 22-
24; 7:1 to 8:25; Abstract.)2
Representative Claim
Independent claim 21, reproduced below, with disputed limitations
italicized, further illustrates the invention:
21. A system for calculating and communicating
measurements, the system comprising:
means for receiving data for a plurality of transaction
steps performed by a first application and at least one
additional application within a plurality of applications, from a
plurality of probes, wherein the first application and the at least
one additional application perform the same function, wherein
the set of transaction steps are the same for the first application
and the at least one additional application, and wherein the
first application and each of the at least one additional
application reside on separate hosting sites;

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed January 13, 2009; and Reply Brief (“Reply Br.”) filed July 31, 2009.
We also refer to the Examiner’s Answer (“Ans.”) mailed June 4, 2009.
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means for calculating statistics based on the data;
means for mapping the statistics that compare the data of
the set of transaction steps performed by the first application
and the at least one additional application to at least one
threshold value for each of the set of transaction steps; and
means for outputting a representation of the mapping.

Rejections on Appeal
1. The Examiner rejects claims 21, 23, 25, 26, 28, and 30 under 35
U.S.C. § 102(e) as anticipated by U.S. Patent App. Pub. No. 2004/0176992
A1, published Sep. 9, 2004 (filed Mar. 5, 2003) (“Santos”). (Ans. 3-5.)
2. The Examiner rejects claims 21, 23, 24, 26, 28, and 29 under 35
U.S.C. § 103(a) as being unpatentable over U.S. Patent App. Pub. No.
2003/0018450 A1, published Jan. 23, 2003 (“Carley”) and Nick Craswell
and David Hawking, Which search engine is best at finding airline site home
pages?, CSIRO Mathematical and Information Sciences, 1-7 (March 29,
2001) (“Craswell”). (Ans. 5-8.)

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in finding that Santos discloses:
means for receiving data for a plurality of transaction
steps performed by a first application and at least one additional
application within a plurality of applications, from a plurality of
probes, wherein the first application and the at least one
additional application perform the same function, wherein the
set of transaction steps are the same for the first application and
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the at least one additional application, and wherein the first
application and each of the at least one additional application
reside on separate hosting sites
(claim 21), within the meaning of Appellants’ claim 21 and commensurate
limitations of claim 26?
2. Does the Examiner err in finding that the combination of Carley
and Craswell collectively would have taught or suggested:
means for receiving data for a plurality of transaction
steps performed by a first application and at least one additional
application within a plurality of applications, from a plurality of
probes, wherein the first application and the at least one
additional application perform the same function, wherein the
set of transaction steps are the same for the first application and
the at least one additional application, and wherein the first
application and each of the at least one additional application
reside on separate hosting sites
(claim 21), within the meaning of Appellants’ claim 21 and commensurate
limitations of claim 26?
3. Does the Examiner err in concluding that that Carley and
Craswell are properly combinable?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own.

ANALYSIS
Based on Appellants’ arguments (App. Br. 7-26; see id. 14, 26) we
select independent claim 21 as representative of Appellants’ arguments and
groupings. 37 C.F.R. § 41.37(c)(1)(vii).
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Anticipation Rejection of Claim 21
Appellants contend that Santos does not disclose the features of claim
21. (App. Br. 7-15; Reply Br. 3-7.) Specifically, Appellants contend that:
Nowhere, in any of [the Examiner’s] cited paragraphs, or
in any other section of Santos, is there a teaching of receiving
data for a plurality of transaction steps performed by a first
application . . .where the first application and the at least one
additional application perform the same function, where the set
of transaction steps are the same for the first application
and the at least one additional application, and where the
first application and each of the at least one additional
application reside on separate hosting sites.
. . . .
There is no mention whatsoever in the Santos reference, that the
Websites identified by Santos perform the same function and
that the set of transaction steps performed by the identified
Websites are the same. In contradistinction, the present
invention [recites] . . . the first application and the at least
one additional application perform the same function and
where the set of transaction steps are the same for the first
application and the at least one additional application.
(App. Br. 11-12.)
The Examiner sets forth a detailed explanation of the anticipation
rejections in the Examiner’s Answer with respect to each of the claims (Ans.
3-5) and, in particular, the rejection of claim 21. (Ans. 4-5, 8-9.)
Specifically, the Examiner submits that Santos discloses a system for
comparing website performance where the websites each perform the same
function, utilizing an agent to collect data from each website according to a
behavior model (the same behavior model being used with multiple
websites), such that “the steps within the behavior models will be the same
for each website to which the behavior model is applied” (Ans. 8). (Ans. 4-
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5, 8-9 (citing Santos ¶¶ [0015], [0016], [0021], [0024], [0029], [0030], and
[0033]; Fig. 3).)
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings that Santos discloses the disputed
features of representative claim 21. Accordingly, we sustain the Examiner’s
rejection of claim 21 for the reasons set forth in the Answer, which we
incorporate herein by reference. (Ans. 4-5, 8-9.) Our additional analysis
will be limited to the following points of emphasis.
Initially, we note that the features argued by Appellants merely
constitute non-function descriptive material and statements of intended use
of the recited applications. The claim simply recites “means for receiving
data for a plurality of transaction steps performed by a first application and
at least one additional application” – i.e., requires receiving data for a
plurality of transaction steps that have been “performed” (past-tense). The
act of “receiving” the data is the same regardless of what the actual data
constitutes. The steps utilized to produce the data (i.e., how the data is
produced) or the origin of the data (i.e., where (what application) the data
comes from) do not further limit the claimed invention either functionally or
structurally. The data received constitutes non-functional descriptive
material, which “does not lend patentability to an otherwise unpatentable
computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d
1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003),
aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in databases and
communicated on distributed network did not functionally change either the
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data storage system or the communication system used in the claimed
method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls,
88 USPQ2d at 1887-90 (discussing non-functional descriptive material).
Similarly, “[a]n[ ]intended use or purpose usually will not limit the scope of
the claim because such statements usually do no more than define a context
in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Accordingly
we need not attribute any distinguishing character to the asserted claim
features.
Even if we, arguendo, were to ascribe some weight to the disputed
claim limitations, Appellants’ argue a claim construction that is overly
narrow, which we decline to adopt. Appellants assert that not only must
each application have the same function, but that each application must
perform this function in an identical way – that functionality of the
application (the so-called “transaction steps) are identical (the same). (App.
Br. 19 (argued with respect to the § 103 rejection discussed infra); see id. at
11-13, 19-21; Reply Br. 4-7.) We do not agree. Rather, under our
construction, it is the transactions between the “means” (caused by the
probe) and the application that must be the same. The claim does not limit
how the application accomplishes the transactions.
We give claim terminology the “broadest reasonable interpretation
consistent with the [S]pecification” in accordance with our mandate that
“claim language should be read in light of the [S]pecification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). We construe
the transaction steps to be exchanges of information (data). This
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construction is consistent with Appellants’ Specification as well as the
widely understood meaning of “transaction” as an exchange – in the present
instance, an exchange of data. Therefore, we agree with the Examiner that
Santos discloses a system for comparing website performance where the
websites each perform the same function, utilizing an agent to collect data
from each website according to a behavior model, and that the behavior
model produces the same transaction steps or each website to which it is
applied. (Ans. 8-9.)
Thus, we find Appellants contrary arguments unpersuasive of error in
the Examiner’s anticipation rejection of representative claim 21. Appellants
also do not persuade us of error in the Examiner’s anticipation rejection of
independent claim 26 which includes limitations of commensurate scope or
dependent claims 23, 25, 28, and 30 not separately argued with particularity
(supra). Accordingly, we affirm the Examiner’s anticipation rejection of
claims 21, 23, 25, 26, 28, and 30.
Obviousness Rejection of Claim 21
Similar to the anticipation rejection of claim 21(supra), Appellants
contend that the combination of Carley and Craswell does not teach or
suggest that the set of transaction steps are the same for the first application
and the at least one additional application. (App. Br. 15-21; Reply Br. 8-13.)
The Examiner sets forth a detailed explanation of the obviousness
rejections in the Examiner’s Answer with respect to each of the claims so
rejected (Ans. 5-7) and, in particular, the rejection of claim 21. (Ans. 5-7, 9-
11.) Specifically, the Examiner submits that Carley describes a system for
receiving data for multiple transactions (transaction steps) (Ans. 6, 10 (citing
Carley ¶¶ [0041], [0044]-[0047]; Fig. 1)) and Craswell describes running the
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same Perl script queries (transaction steps) for a number of search engines
(Ans. 7, 9-10 (citing Craswell, p.2, Sec. 2; Table 1; Abstract; Figs.1 & 2).)
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and ultimate legal conclusion that
Carley and Craswell would have taught or at least suggested the disputed
features of representative claim 21. Accordingly, we sustain the Examiner’s
rejection of claim 21 for the reasons set forth in the Answer, which we
incorporate herein by reference. (Ans. 5-7, 9-11.) Our additional analysis
will be limited to the following points of emphasis.
As with the anticipation rejection of claim 21(supra), Appellants, with
respect to the obviousness rejection of claim 21, argue limitations of claim
21 that merely constitute non-function descriptive material and statements of
intended use of the recited applications to which we ascribe no patentable
weight. Even if we, arguendo, were to ascribe some weight to the disputed
claim limitations, Appellants’ arguments are not consistent with the scope of
the claim as we construe it (supra).
Combinability
Appellants also contend that the combination of Carley and Craswell
is improper because “neither reference teaches or provides a technical reason
for the desirability of incorporating the subject matter of the other reference.
That is, there is no motivation offered in either reference for the alleged
combination.” (App. Br. 24; see id. 23, 25-26; Reply Br. 10-13.) We
disagree.
The Examiner provides a rationale for combining the references –
“Doing so would enable the network designer to know which hardware
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configuration is optimal for the task being execute[d] (see Carley paragraph
86) and enable the user to save time by knowing the expected performance
for a website before actually visiting the website (see Craswell abstract).”
(Ans. 7.) Therefore, the Examiner has stated “some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)) and Appellants have not shown error therein.
We further conclude that it would have been well with the skill of one
skilled in the art to combine such known techniques to receive and compile
data for multiple transactions as taught by Carley to compare websites
(search engines) as taught by Craswell. See KSR, 550 U.S. at 417 (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill” (citations omitted)). Accordingly, we conclude that
Carley and Craswell would have at least suggested the disputed features of
Appellants’ claim 21.
Thus, we find Appellant’s contrary arguments unpersuasive of error in
the Examiner’s obviousness rejection of representative claim 21. Appellants
also do not persuade us of error in the Examiner’s obviousness rejection of
independent claim 26 which includes limitations of commensurate scope or
dependent claims 23, 24, 28, and 29 not separately argued with particularity
(supra). Accordingly, we affirm the Examiner’s obviousness rejection of
claims 21, 23, 24, 26, 28, and 29.

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CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
21, 23, 25, 26, 28, and 30 under 35 U.S.C. § 102(e).
Appellants have not shown that the Examiner erred in rejecting claims
21, 23, 24, 26, 28, and 29 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 21, 23, 25, 26, 28, and
30 under 35 U.S.C. § 102(e).
We affirm the Examiner’s rejection of claims 21, 23, 24, 26, 28, and
29 under 35 U.S.C. § 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)(1)(iv).

AFFIRMED

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