Ex Parte ONGDownload PDFBoard of Patent Appeals and InterferencesJan 25, 201009201749 (B.P.A.I. Jan. 25, 2010) Copy Citation 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 Appeal 2009-004853 Application 09/201,749 2 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. Appeal 2009-004853 Application 09/201,749 3 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 Appeal 2009-004853 Application 09/201,749 4 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 Appeal 2009-004853 Application 09/201,749 5 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 Appeal 2009-004853 Application 09/201,749 6 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 Appeal 2009-004853 Application 09/201,749 7 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 Appeal 2009-004853 Application 09/201,749 8 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 Appeal 2009-004853 Application 09/201,749 9 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 Appeal 2009-004853 Application 09/201,749 10 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 Appeal 2009-004853 Application 09/201,749 11 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 20 21 22 MP 23 Ryan, Mason & Lewis 24 1300 Post Rd. 25 Suite 205 26 Fairfield CT 06430 27 Copy with citationCopy as parenthetical citation