Ex Parte Paithankar

Patent Trial and Appeal Board

Jun 27, 2016

12780567 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121780,567 05/14/2010
48500 7590 06/29/2016
SHERIDAN ROSS P,C
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Anand Paithankar
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4366YDT-85 1961
EXAMINER
SALAD,ABDULLAHIELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
06/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANAND P AITHANKAR
Appeal2014-006538
Application 12/780,567 1
Technology Center 2400
Before ELENI MANTIS MERCADER, JEFFREY A. STEPHENS, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
Appellant's claimed invention relates to "a browser plug-in, capable
of fetching a site map or a web map and presenting the information in a
structured format before a user visits the intended network site." Spec. i-f 1.
1 According to Appellant, the real party in interest is Avaya Incorporated.
App. Br. 2.
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Application 12/780,567
Claim 18 is illustrative of the subject matter of the appeal and is
reproduced below with emphasis added to highlight disputed
limitations.
18. An apparatus comprising: a browser; a computing device
operable by a user, responsive to the user entering a minimum
resolvable network resource link into a browser by determining
from the entered resource link a target resource link, initiating a
connection to the target resource link, determining whether the
connection is successful or not, and if the connection is
successful then fetching an at least one resource link and links to
all sub-resources of the target resource link and presenting the
at least one resource link and links to all the sub-resources of the
target network resource link to the user to enable the user to
select a correct and live resource link to a selected sub-resource
of the target network resource link.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1, 5-7, 12, 13, and 15-20 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Sullivan et
al. (US 2006/0112094 Al; publ. May 25, 2006) (hereinafter "Sullivan"),
Austin (US 6,763,395 Bl; iss. July 13, 2004), and Levy (US 2010/0306257
A 1; publ. Dec. 2, 2010), collectively referred to as the "combination."
(2) The Examiner rejected claims 2--4 and 8-11 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Sullivan, Austin, and
Rose (US 2004/0019697 Al; publ. Jan. 29, 2004).
(3) The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sullivan, Rose, and Brown et al.
(US 2011/0294471 Al; publ. Dec. 1, 2011) (hereinafter "Brown").
ANALYSIS
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We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellant.
We disagree with Appellant's arguments, and we incorporate herein
and adopt as our own the findings, conclusions, and reasons set forth by the
Examiner in ( 1) the August 8, 2013 Final Office Action (Final Act. 2-8) and
(2) the April 24, 2014 Examiner's Answer (Ans. 2-10). We highlight and
address, however, specific findings and arguments below for emphasis.
(1) Fetching links to all sub-resources
Appellant argues the Examiner erred in finding Levy teaches or
suggests "fetching ... links to all sub-resources of the target network
resource link," as recited in claim 1, incorporated in claim 17, and similarly
recited in claim 18. See App. Br. 6; Reply Br. 5. Appellant argues Levy
instead teaches embedding a link that can direct a user "to a single web page
(i.e. the one network resource link of claim 1 ). There is no discussion of
fetching links to all sub-resources (e.g., all sub-web pages) associated with
the link .... " App. Br. 6 (citing Levy i-fi-159---60). Appellant also argues
"Li]ust because a web page is downloaded that may contain another link does
not mean that it reads on claim 1. The links in a web page may point to
another web site that is not a sub-resource at all." App. Br. 6; see also Reply
Br. 5 ("Levy does not disclose where the website has any sub-resources or
whether they are fetched.").
The Examiner finds Levy teaches or suggests the disputed limitation.
See Ans. 9. Specifically, the Examiner finds Levy teaches or suggests using
embedded data to link to additional information, such as a webpage. See id.
(citing Levy i-fi-159, 60). The Examiner also finds the linked-to web page can
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be displayed with links to additional resources. See id. The Examiner thus
concludes Levy teaches fetching links to all sub-resources of the linked to
webpage. See id.
We agree with the Examiner and find Levy teaches or suggests the
disputed limitation. For example, Levy teaches or suggests having an
embedded link to a webpage and that the linked-to webpage can be rendered
to a screen. See Levy i-fi-1 59, 60 ("The additional information may be
rendered to the screen (e.g., a web page .... "); Final Act. 2, 5. We disagree
with Appellant that Levy's teachings, including the display/download of the
linked-to webpage, fail to teach the disputed limitation because, under the
broadest reasonable interpretation, fetching the links to all sub-resources is
covered by the display/download of the webpage, which one of ordinary
skill in the art would have recognized would necessarily include fetching
links to sub-webpages when present. Furthermore, we find Appellant's
argument that "links in a [downloaded] web page may point to another web
site that is not a sub-resource at all" is inapposite because the links to all
sub-resources also would be fetched regardless of whether additional links
are also fetched.
(2) Live resource link
Appellant argues the combination fails to teach or suggest using "the
searched links to the sub-resources to connect the user to 'a live network
resource link,"' in accordance with claims 1, 17, and 18. App. Br. 8.
According to Appellant, "[t]here is no guarantee that the embedded links in
Levy are to live links or not," including because "the links are static (i.e., in
a CD)." See id. Appellant also argues "the system in Levy would have to
go to [the] web site ... link[ed to] on the CD/DVD and then fetch all the
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sublinks ... to determine whether or not the links are live network resources
links (which Levy clearly does not do)." App. Br. 8-9. Appellant then
contends "there is no motivation to combine Levy with the other references
because the result is a non-operative system and goes against the problem
solved by" the claims. App. Br. 9.
The Examiner finds, and we agree, the combined teachings of Levy,
Austin, and Sullivan teach the disputed limitation. Ans. 9. We agree with
the Examiner, Levy teaches, as discussed above, fetching a link and all of
the sub-resources (e.g., links to sub-webpages) of that link in accordance
with the broadest reasonable interpretation of the limitation. See id. (Levy
i-fi-1 59---60). We also agree with the Examiner that Austin teaches enabling a
user to select live links - Austin teaches providing a user URLs of all
accessible (i.e., connected and addressable) data sources (e.g., http servers).
See Ans. 9 (citing Austin col. 20, 1. 30 to col. 21, 1. 31 ); Austin col. 20, 1. 30
to col. 21, 1. 31 (teaching automatically identifying all of the accessible http
servers and generating corresponding URLs for integration in a list of a web
browser). We find the combined teachings teach or suggest this disputed
limitation. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (finding the
relevant inquiry is whether the claimed subject matter would have been
obvious to one of ordinary skill in light of the art's combined teachings).
We are not persuaded that combining Sullivan, Austin, and Levy
creates a non-operative system. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007) ("[I]n many cases a person of ordinary skill will be able to
fit the teachings of multiple patents together like pieces of a puzzle."); see
also id. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton."). Furthermore, we find Appellant's argument
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that Austin is directed to a different problem unpersuasive. See Alcon
Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) ("We
have repeatedly held that the motivation to modify a prior art reference to
arrive at the claimed invention need not be the same motivation that the
patentee had.") (citing KSR, 550 U.S. at 420 (finding that it is error to look
"only to the problem the patentee was trying to solve")).
(3) Teaching away
Appellant argues Austin teaches away from the claimed user entering
a minimum resolvable network resource link. App. Br. 7. Appellant argues
Austin instead teaches that "the system automatically generates the URLs
for the data sources based on the data source connecting to the computer."
See id. Appellant thus contends Austin is directed to a different problem
than the claimed invention. See App. Br. 7-8.
The Examiner finds and we agree that Sullivan discloses a user
entering a minimum resolvable network resource link. See Final Act. 3--4
( citing Sullivan i-fi-f 16-26; Figs. 2-3). We also find the Examiner relies on
Austin's teachings for limitations other than having a user enter a URL and
Austin does not serve to teach away from this limitation. Teaching away
requires a reference to actually criticize, discredit, or otherwise discourage
investigation into the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). We find Austin does not do so. See Austin col. 20,
1. 3 0 to col. 21, 1. 31. We also find Appellant's argument that Austin is
directed to a different problem unpersuasive. See Alcon Research, 687 F.3d
at 1368 (citing KSR, 550 U.S. at 420).
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(4) Conditional method steps
Appellant argues the Examiner errs in finding the combination teaches
or suggests limitations of claim 20. See App. Br. 7-12; Reply Br. 6.
However, the disputed limitations for method claim 20 occur within a
conditional step (i.e., "if the connection is not successful"). See id.; Claim
Appendix 15. Furthermore, claim 20's conditional step is the opposite of the
conditional step (i.e., "if the connection is successful") recited in claim 1-
claim 20 depends from claim 1 and incorporates claim 1 's limitations. See
Claim Appendix 12. As we address below, claim 20's conditional step does
not need to be performed under the broadest reasonable interpretation of the
claim.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The broadest reasonable
interpretation of claim 20 encompasses instances in which the prerequisite
condition for claim 20's conditional step is not met (i.e., when the
connection is successful). Thus, the broadest reasonable interpretation
encompasses methods where only the non-conditional steps and the
conditional step recited in claim 1 are performed.
Such a finding follows from the direct inverse relationship between
invalidity and infringement. "[I]t is axiomatic that that which would literally
infringe if later anticipates if earlier." Bristol-Myers Squibb Co. v. Ben
Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). As to infringement,
conditional method steps need not be performed for infringement to be
found. See, e.g., Applera Corp. v. Illumina, Inc., 375 Fed.Appx. 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming an interpretation of a method claim as
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including a step that need not be practiced if the condition for practicing the
step is not met); Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243
Fed.Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true that
method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed."). Likewise,
as to invalidity, conditional method steps generally need not be shown in
establishing invalidity. Accordingly, Appellant's arguments relating to
claim 20 are inapposite because they are directed to limitations within a
conditional step that need not be shown for establishing invalidity.2
CONCLUSION
Based on our findings above, we sustain the Examiner's rejections of
claims 1, 17, and 18, as well as claim 20. Further, we sustain the
Examiner's rejections of claims 2-16 and 19 because Appellant did not
provide separate arguments for their patentability.
DECISION
We affirm the Examiner's rejections of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
2 Notably, above we find Appellant's arguments directed to limitations
recited in claim 1 's conditional step (which occurs if claim 20's opposite
conditional step does not) unpersuasive.
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