Ex Parte ONG

Board of Patent Appeals and Interferences

Jan 25, 2010

09201749 (B.P.A.I. Jan. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte PING-WEN ONG 8
____________________ 9
10
Appeal 2009-004853 11
Application 09/201,749 12
Technology Center 3600 13
____________________ 14
15
Decided: January 25, 2010 16
17
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU 18
R. MOHANTY, Administrative Patent Judges. 19
20
CRAWFORD, Administrative Patent Judge. 21
22
23
DECISION ON APPEAL24
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STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1-3, 5-10, 12-18, 20-24, and 26-281. We have jurisdiction under 3
35 U.S.C. § 6(b) (2002). 4
Appellant invented systems and methods for providing persistent 5
storage of Web resources by augmenting Uniform Resource Locators 6
(“URLS”) to include a time stamp (Abstract). 7
Claim 1 under appeal is further illustrative of the claimed invention as 8
follows: 9
1. A method for providing an electronic document, said 10
electronic document having multiple versions, each of' said 11
versions identified by a creation time-stamp indicating a 12
creation time of' said corresponding version, said method 13
comprising the steps of: 14
receiving a request for said electronic document, said 15
request including a requested time-stamp indicating a time 16
associated with a desired version of said electronic document 17
and a requested domain name associated with said time-stamp; 18
identifying as a function of said creation time-stamp and 19
said requested time-stamp a desired version of said electronic 20
document having a creation time corresponding to said 21
requested time-stamp; and 22
identifying an address of' said desired version of' said 23
electronic document stored on a server corresponding to said 24
requested time-stamp as a function of' said requested timestamp 25
and said requested domain name, wherein a server identified by 26
said requested domain name does not provide said desired 27
version at a time of said request and said identified server has a 28
redirected domain name that is different than said requested 29
domain name. 30

1 Claims 4, 11, 19, and 25 were objected to as being dependent upon a rejected base claim, but would be
allowable if rewritten in independent form including all of the limitations of the base claim and any
intervening claims. Claims 29-35 are withdrawn from consideration.
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The prior art relied upon by the Examiner in rejecting the claims on 1
appeal is: 2
KANFI US 5,559,991 Sept. 24, 1996 3
AMSTEIN US 5,793,966 Aug. 11, 1998 4
5
The Examiner rejected claims 1, 6, 8, 12, 15, 16, 20, 22, 26, and 28 6
under 35 U.S.C. § 112, second paragraph, for indefiniteness; rejected claims 7
1-3, 5-7, 9, 10, 12-16, 18, 20-24, and 26-28 under 35 U.S.C. § 103(a) as 8
being unpatentable over Amstein; and rejected claim 8 under 35 U.S.C. 9
§ 103(a) as being unpatentable over Kanfi in view of Amstein. 10
We AFFIRM-IN-PART. 11
12
ISSUES 13
Did the Appellant show the Examiner erred in rejecting claims 1, 6, 8, 14
12, 15, 16, 20, 22, 26, and 28 under 35 U.S.C. § 112, second paragraph, for 15
indefiniteness? 16
Did the Appellant show the Examiner erred in asserting that the 17
updated document meta information file of Amstein corresponds to “wherein 18
a [server/machine] identified by said requested domain name does not 19
provide said desired version at a time of said request and said identified 20
server has a redirected domain name that is different than said requested 21
domain name,” as recited in independent claims 1, 8, 15, 16, 22, and 28? 22
23
FINDINGS OF FACT 24
Specification 25
Appellant invented systems and methods for providing persistent 26
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storage of Web resources by augmenting Uniform Resource Locators 1
(“URLS”) to include a time stamp (Abstract). 2
3
Amstein 4
Amstein discloses computer systems for creating, developing, and/or 5
modifying on-line services in a client-server information system (col. 1, ll. 6
9-11). 7
Each web or service has a location 400 on the server where all the 8
document objects and associated information of the web is stored (col. 17, ll. 9
33-35). 10
Meta-information, or information about information, is also stored. 11
First, document meta-information, or information about a particular web 12
document object, such as the title of the document, the author of the 13
document, the date and time that the document was created, and the date and 14
time that the document was last modified, may be stored in another location 15
406 on the server. The document meta-information may also include a list 16
of hypertext links from the document to other document objects (col. 17, ll. 17
55-63). 18
The attribute “vti_cachedbasedtm” gives the date and time of last 19
modification to any of the cached attribute values, in this case “19 Nov. 20
1995 10:47:2 EST”. The attribute “vti_cachedtitledtm” gives the date and 21
time of last modification to the “vti_cachedtitle” attribute value, in this case 22
“19 Nov. 1995 10:47:50 EST”. The attribute “vti_cachedlinkedinfo” gives 23
the list of document that this document links to, in this case the first link is 24
to “images/logo.gif”. The attribute “vti_cachedlinkedinfotm” gives the date 25
and time of last modification to the “vti_cachedlinkedinfo” attribute value, 26
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in this case, “19 Nov. 1995 10:47:42 EST”. The attribute 1
“vti_timelastmodified” gives the time at which the document was last 2
modified, in this case “19 Nov. 1995 10:47:33 EST”. The attribute 3
“vti_timecreated” gives the time at which the document was created, in this 4
case “19 Nov. 1995 10:47:33 EST” (col. 19, ll. 28-47). 5
The attribute “vti_autorecalc” indicates whether the server extension 6
program must automatically recalculate document dependencies after a 7
document object is saved to the server (col. 20, ll. 13-16). 8
The document meta information file is updated as follows. The value 9
of the "vti_timelastmodified" attribute is changed to the current time, to 10
indicate the time at which the document was last modified. The value of the 11
"vti_cachedlinkinfo" attribute is changed to be the current list of documents 12
or images that the current document either includes or has links to, so that 13
the list reflects any additions or deletions of links in the new version of the 14
document. The value of the "vti_cachedlinkinfodtm" attribute is changed to 15
the current time, to indicate the time at which the value of the 16
"vti_cachedlinkinfo" attribute was last updated. The value of the 17
"vti_cachedtitledtm" attribute is changed to the current time, to indicate the 18
time at which the value of the "vti_cachedtitle" attribute was last updated. 19
The attribute "vti_cachedbasedtm" is changed to the current date and time, 20
indicating the most recent modification to any of the cached attribute values. 21
The attributes "vti_timecreated" and "vti_author" are not changed, since 22
these give information about the creation of the document. After meta-23
information is updated, the document dependency database and the text 24
index of all documents in the web are both updated to reflect the changes in 25
the saved document (col. 24, ll. 31-64). 26
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PRINCIPLES OF LAW 1
Claim Construction 2
The context of the surrounding words of the claim must be considered 3
in determining the ordinary and customary meaning of those terms. ACTV, 4
Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003). 5
6
Indefiniteness 7
A claim is definite if “one skilled in the art would understand the 8
bounds of the claim when read in light of the specification.” Personalized 9
Media Communications, LLC v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998). 10
Breadth is not indefiniteness. In re Gardner, 427 F.2d 786, 788 11
(CCPA 1970). 12
If a claim is subject to two interpretations as the examiner suggests is 13
the case here and one interpretation would render the claim unpatentable 14
over the prior art, we believe the proper course of action is for the examiner 15
to enter two rejections: (1) a rejection based on indefiniteness under 35 16
U.S.C. §112, second paragraph, and (2) a rejection over the prior art based 17
on the interpretation of the claims which renders the prior art applicable. 18
Entry of simultaneous rejections avoids piecemeal appellate review. Ex 19
parte Ionescu, 222 USPQ 537, 540 (Bd. Pat. App. & Int. 1984) (citing, e.g., 20
In re Marosi, 710 F.2d 799 (Fed. Cir. 1983); Tofe v. Winchell, 645 F.2d 58, 21
(CCPA 1981); Stratoflex, Inc., v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 22
871 (Fed.Cir. 1983)). 23
24
25
26
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Obviousness 1
Rejections on obviousness grounds cannot be sustained by mere 2
conclusory statements; instead, there must be some articulated reasoning 3
with some rational underpinning to support the legal conclusion of 4
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) 5
During examination, the examiner bears the initial burden of 6
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 7
1443, 1445 (Fed. Cir. 1992). 8
9
ANALYSIS 10
Indefiniteness 11
We are persuaded of some error on the part of the Examiner by 12
Appellant’s argument that claims 1, 6, 8, 12, 15, 16, 20, 22, 26, and 28 are 13
not indefinite under 35 U.S.C. § 112, second paragraph (App. Br. 7; Reply 14
Br. 2-4). 15
The Examiner asserts that there is insufficient antecedent basis for the 16
multiple recitations of “a time” in independent claims 1, 8, 15, 16, 22, and 17
28 (Examiner’s Ans. 4-5, 10-11). However, the multiple recitations of “a 18
time” are not read in a vacuum, but must be considered in the context of the 19
rest of the claim. See ACTV, Inc. v. Walt Disney Co., 346 F.3d at 1088. 20
Taken in context, the multiple recitations of “a time” are not indefinite 21
because each recitation of “a time” is followed by what the time is 22
associated with. For example, independent claim 1 recites “a time 23
associated with a desired version of said electronic document” and “a time 24
of said request.” Accordingly, one of ordinary skill in the art would 25
understand how each recitation of “a time” differs from the others. See 26
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Personalized Media Communications, LLC v. ITC, 161 F.3d at 705. A 1
similar analysis can be applied to independent claims 8, 15, 16, 22, and 28. 2
By contrast, the same analysis does not hold true for the multiple 3
recitations of “a desired version” in independent claims 1, 8, and 15. Here, 4
the second recitation of “a desired version” in the paragraph beginning with 5
“identifying as a function” is the same as the recitation of “a desired 6
version” in the paragraph beginning with “receiving.” Indeed, Appellant 7
admits that “one or more of the instances of a desired versions may identify 8
the same document” (App. Br. 7). The use of “may” injects ambiguity that 9
makes the terms indefinite. Accordingly, either the second recitation of “a 10
desired version” should be “said desired version,” as set forth in the 11
paragraph beginning with “identifying an address” as recited in independent 12
claim 1, or “a desired version” should be named something else if it truly is 13
different from the first desired version. 14
The recitation of “a time” in independent claims 1, 8, 15, 16, 22, and 15
28 is not indefinite because “a time” could mean any time such as “a minute 16
or a second or an hour or a day or a week or a month or a year” (Ex. Ans. 17
11). One of ordinary skill understands that “a time” could be in any of these 18
units, but that a specific time using whichever units would still be required 19
(e.g., “19 Nov. 1995 10:47:33 EST”). See Personalized Media 20
Communications, LLC v. ITC, 161 F.3d at 705. The fact that “a time” could 21
be broad does not render it indefinite. See In re Gardner, 427 F.2d at 788. 22
The Examiner asserts that “said request” in “said request is specified 23
using a browser,” as recited in dependent claims 6, 12, 20 and 26, is 24
indefinite because it is unclear which “request” in respective independent 25
claims 1, 8, 15 and 22 is being referenced (Examiner’s Ans. 7, 11). 26
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However, independent claims 1, 8, 15 and 22 each recite “a request for said 1
electronic document,” with the “requested time-stamp” and “requested 2
domain name” being subsets of the “request.” Accordingly, independent 3
claims 1, 8, 15 and 22 each recite only one “request.” 4
5
Desired Version 6
While certain aspects of independent claims 1, 8, and 15 are not 7
completely clear, in the interest of judicial economy, we will review the 8
prior art rejections. For this purpose, we construe the second recitation of “a 9
desired version” as being “said desired version.” 10
We are persuaded of error on the part of the Examiner by Appellant’s 11
argument that the updated document meta information file of Amstein does 12
not correspond to “wherein a [server/machine] identified by said requested 13
domain name does not provide said desired version at a time of said request 14
and said identified server has a redirected domain name that is different than 15
said requested domain name,” as recited in independent claims 1, 8, 15, 16, 16
22, and 28 (App. Br. 8-11, Reply Br. 3, 5-8). Amstein discloses electronic 17
documents including meta-information containing various time data related 18
to the creation and modification of a current version of the electronic 19
document. However, the recited “desired version” of the electronic 20
document is a version previous to the current version of the electronic 21
document. This is recited in the independent claims as the server/machine 22
“does not provide said desired version at a time of said request.” In other 23
words, the desired version is not the version that is current at the time of said 24
request. The portions of Amstein cited by the Examiner do not disclose 25
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providing a version of an electronic document previous to the current 1
version. 2
Furthermore, the Examiner admits that “Amstein did not expressly 3
disclose that the server is identified by the requested domain name” 4
(Examiner’s Ans. 6). Thus, the Examiner admits that Amstein does not 5
disclose that “said identified server has a redirected domain name that is 6
different than said requested domain name,” as recited in independent claims 7
1, 8, 15, 16, 22, and 28. The Examiner then asserts that “Amstein discusses 8
a server in col. 20, lines 13-16 which could be used to perform this step in 9
claim 1,” and that “it would have been obvious to one having ordinary skill 10
in the art at the time the invention was made to incorporate the server being 11
identified by the requested domain name with the identified server having a 12
redirected domain name because such feature would make the web pages 13
(HTML files) available to be viewed by the web browser at a redirected web 14
site on the Internet” (Examiner’s Ans. 6-7). However, these are mere 15
conclusory statements that modifying Amstein would result in the 16
aforementioned recitation of independent claims 1, 8, 15, 16, 22, and 28, 17
without the required articulated reasoning with rational underpinnings as to 18
why one of ordinary skill would modify Amstein to include these recitations. 19
See In re Kahn, 441 F.3d at 988. Accordingly, as the Examiner has not 20
provided a proper case of prima facie obviousness, we will not sustain the 21
rejections of independent claims 1, 8, 15, 16, 22, and 28, and the rejections 22
of their dependent claims 2, 3, 5-7, 9, 10, 12-14, 17, 18, 20, 21, 23, 24, 26, 23
and 27. 24
25
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CONCLUSION OF LAW 1
On the record before us, Appellant has shown that the Examiner erred 2
in rejecting claims 6, 12, 16, 20, 22, 26, and 28 under 35 U.S.C. § 112, 3
second paragraph. 4
On the record before us, Appellant has not shown that the Examiner 5
erred in rejecting claims 1, 8, and 15 under 35 U.S.C. § 112, second 6
paragraph. 7
On the record before us, Appellant has shown that the Examiner erred 8
in rejecting claims 1-3, 5-10, 12-18, 20-24, and 26-28 under 35 U.S.C. § 9
103(a). 10
11
DECISION 12
The decision of the Examiner to reject claims 2, 3, 5-7, 9, 10, 12-14, 13
16-18, 20-24, and 26-28 is reversed. 14
The decision of the Examiner to reject claims 1, 8, and 15 is affirmed. 15
No time period for taking any subsequent action in connection with 16
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 17
18
AFFIRMED-IN-PART 19
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MP 23
Ryan, Mason & Lewis 24
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