Ex Parte Rehman et al

Patent Trial and Appeal Board

Dec 18, 2014

10884077 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SAMUELSON REHMAN,
ANIT CHAKRABORTY, and HUI LI
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Appeal 2012-000629
Application 10/884,077
Technology Center 2400
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Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–41. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
In reaching the decision, we have considered only the arguments
Appellants actually raised. Arguments Appellants did not make are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

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STATEMENT OF THE CASE
The present invention relates to information processing associated
with computing devices. See generally Spec. 1. Claim 1 is exemplary:
1. A system configured to operate within a computing device where
the computing device includes an application configured to communicate
with a remote device using a network connection, the system comprising:
a source data store within the computing device that stores a plurality
of forms received from the remote device during execution of the
application, where the plurality of forms include a plurality of data input
fields to receive data for submission to the remote device;
a link detection logic configured to determine a link status of the
network connection where the link status includes an online state and an
offline state;
an offline logic configured to allow the application to continue
operating when the network connection is in the offline state by providing a
simulated online state by allowing a user of the computing device to
navigate between pages of the plurality of forms that are stored in
accordance with a page structure relationship determined between the
plurality of forms, by allowing data to be inputted to the plurality of data
input fields while in the offline state, and to allow the plurality of forms to
generate network communications to be sent to the remote device,
responsive to user interaction with the plurality of forms;
where the offline logic is configured to identify navigation options
associated with the plurality of forms to determine page structure
relationships between the plurality of forms, where a navigation option is an
option that is programmed in a form to initiate a network communication to
the remote device to cause the remote device to determine a next page in the
plurality of forms;
redirecting the network communications and storing the network
communications and the data from the plurality of data input fields in a post
data store; and
the offline logic being configured to submit the network
communications and the data from the plurality of data input fields from the
post data store to the remote device when the link status changes to the
online state.
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THE REJECTIONS
Claims 1–5 and 7–27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mikhailov (US 6,990,534 B2; Jan. 24, 2006) and Edwards
(US 6,591,288 B1; July 8, 2003).
Claims 6 and 28–41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mikhailov, Edwards, and ORACLE (Oracle Corp., Oracle
Application Server 10g Wireless Client-User’s Guide, OTN Preview
Release, November, 2003, pages 1–37).1

ISSUES
Under 35 U.S.C. § 103, has the Examiner erred by finding Mikhailov
and Edwards collectively teach:
an offline logic configured to allow the application to continue
operating when the network connection is in the offline state by
providing a simulated online state by allowing a user of the
computing device to navigate between pages of the plurality of
forms that are stored in accordance with a page structure
relationship determined between the plurality of forms, by
allowing data to be inputted to the plurality of data input fields
while in the offline state, and to allow the plurality of forms to
generate network communications to be sent to the remote
device, responsive to user interaction with the plurality of
forms,
as recited in claim 1?2

1 Although the Examiner lists ORACLE for rejecting this group of claims,
citing ORACLE is unnecessary (though harmless) for some of the claims.
2 Additional issues are discussed in the Analysis section.
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ANALYSIS
Claims 1-10
On this record, we find the Examiner erred in rejecting claim 1.
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We concur with Appellants’ conclusion that the Examiner erred
in finding Mikhailov teaches the disputed claim limitation stated above.
The Examiner cites Mikhailov’s Figures 3A and 8, column 13, lines
10–13, column 14, lines 21–49, and column 27, lines 11–16 for that claim
limitation. See Ans. 6, 16. But the Examiner does not adequately explain,
how the cited portions teach:
an offline logic configured to allow the application to continue
operating when the network connection is in the offline state by
providing a simulated online state by allowing a user of the
computing device to navigate between pages of the plurality of
forms that are stored in accordance with a page structure
relationship determined between the plurality of forms, by
allowing data to be inputted to the plurality of data input fields
while in the offline state, and to allow the plurality of forms to
generate network communications to be sent to the remote
device, responsive to user interaction with the plurality of
forms,
as required by claim 1 (emphases added) (“Claim Limitation 1”).
Accordingly, we are constrained by the record and therefore, we do
not sustain the Examiner’s rejection of claim 1, and claims 2–10 for similar
reasons.

Claims 11-20
On this record, we find the Examiner erred in rejecting claim 11.
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We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We concur with Appellants’ conclusion that the Examiner erred
in finding Edwards teaches offline processing by the user. See App. Br. 31.
The Examiner cites Edwards’ Abstract and column 6, line 49 to
column 7, line 7 for teaching “in response to the communication link
changing from an online state to an offline state, determining the sequence
of pages of the plurality of forms and providing a simulated online state by
allowing the user to navigate between the sequence of pages of the plurality
of forms that are stored in accordance with the page structure relationships,”
as recited in claim 11 (“Claim Limitation 2”). See Ans. 9-10.
However, the Examiner does not adequately explain, and we do not
see, how the cited Edwards portions teach the above claim limitation.
Therefore, we are constrained by the record to not sustain the
Examiner’s rejection of claim 11, and claim 12-20 for similar reasons.3

Claims 21-274
On this record, we find the Examiner did not err in rejecting claim 21.
Appellants fail to persuade us of error because Appellants fail to
specifically point out the supposed error in the Examiner’s position. Instead,
Appellants merely assert claim 21 is patentable because it “includes similar
features as in claim 1 and/or claim 11.” App. Br. 31. Mere arguments and

3 Appellants raise additional arguments regarding claim 12. Because the
identified issue is dispositive of the appeal regarding claim 12, we do not
need to address such additional arguments.
4 Independent claims 21 and 36 (and corresponding dependent claims) recite
a computer-readable medium. If the prosectuion reopens, we recommend
the Examiner consider rejecting the claims under 35 U.S.C. § 101.
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conclusory statements that are unsupported by factual evidence are entitled
to little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). As a
result, Appellants fail to meet their burden to demonstrate reversible error
because Appellants’ assertion is not commensurate with the scope of claim
21.
Further, contrary to Appellants’ unsupported assertion, claim 21 does
not recite the Claim Limitation 1, which is discussed above with respect to
claim 1. In contrast, claim 21 merely recites:
providing a simulated online state by allowing the user to
continue accessing the plurality of forms and the data received
via the plurality of data input fields from the local data store as
though the data submitted by the user was successfully posted
to the web-based application, and processing the page
navigation functions using the page navigation relationships
between the plurality of forms.
Claim 21.5 As a result, Appellants fail to persuade us of error. See In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court [or this Board] to examine the claims in greater detail
than argued by an appellant, looking for [patentable] distinctions over the
prior art.”).
As discussed above, Appellants’ assertion that claim 21 is patentable
because it “includes similar features as in claim 1and/or claim 11” is

5 We note the Examiner correctly cites Mikhailov’s Figures 8 and column 27
for teaching “an offline logic configured to allow the application to continue
operating when the network connection is in the offline state by providing a
simulated online state . . . by allowing data to be inputted to the plurality of
data input fields while in the offline state,” as recited in claim 1. See Ans. 6.
Indeed, Appellants fail to provide adequate analysis of the cited Mikhailov
portions to counter such Examiner’s findings.
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unsupported and speculative. Nevertheless, we note except for Appellants’
argument with respect to Claim Limitation 1 (discussed above regarding
claim 1), Appellants’ remaining arguments about claim 1 are unpersuasive
for the following reasons.
Remaining Arguments Regarding Claim 1
We disagree with Appellants’ remaining arguments (App. Br. 18–29;
Reply Br. 2–6) (excluding the arguments discussed above with respect to
claim 1), and agree with and adopt the Examiner’s findings and conclusions
on pages 5–7 and 14–18 (except for the findings and conclusions reversed
above with respect to claim 1) of the Answer as our own. Therefore, we
limit our discussion to the following points for emphasis.
First, Appellants contend Mikhailov does not teach “plurality of
forms include a plurality of data input fields,” as recited in claim 1, because
the Examiner incorrectly map the recited form to Mikhailov’s frame. See
App. Br. 19, 22.
Contrary to Appellants’ arguments, the Examiner does not map the
recited form to Mikhailov’s frame. The Examiner cites Mikhailov’s column
27, lines 11–16, Figures 15A, 24D, and 24E. See Ans. 16. The Examiner
finds:
[such cited portions] clearly indicate that there are multiple
form-related submissions such as bug reports, stock selling and
purchasing web pages. These are combined list of submissions,
whether obtained from different frames (Fig. 24D) or from a
single frame (Fig. 24E). Note that since all these documents or
web pages contain input fields, they should be regarded as
forms. It is also noted that the word “form” and “page” are
intermixed throughout Applicant’s own specification.
Id.
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Appellants assert:
[t]he examiner’s response relies on finding the term “fields” in
the Mikhailov text col. 27, lines 11-16. However, the actual
claim element as recited in the claim as a whole has not been
found. The examiner response does not actually show how the
cited text teaches the entire claim language. The claim element
has not been found and the rejection is improper.
Reply Br. 4. Appellants’ assertion lacks adequate analysis to counter the
Examiner’s findings and therefore, is unpersuasive of error.
Second, Appellants assert Mikhailov does not teach “a source data
store . . . that stores a plurality of forms received from the remote device
during execution of the application,” as recited in claim 1. See App. Br. 21–
22; Reply Br. 3. Appellants contend the terms “form” and “download” do
not appear in the cited Mikhailov column 5 portion, and Mikhailov’s column
46 portion does not discuss receiving forms from a remote device or storing
the forms in a source data store. See App. Br. 21. Appellants argue the
Examiner advances unsupported speculations. See App. Br. 21–22; see also
Reply Br. 3.
Appellants fail to persuade us of error, because although the cited text
does not repeat the recited claim limitation verbatim, one skilled in the art
would understand the recited claim limitation encompasses the disclosure
cited by the Examiner. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990)
(whether a reference teaches a claim limitation “is not an ‘ipsissimis verbis’
test”).
The Examiner correctly maps the recited source data store to
Mikhailov’s cache 1026. See Ans. 15. The Examiner correctly finds
Mikhailov’s cache 1026 stores files that were download. See Ans. 15;
Mikhailov 46:39–46 (“PAT 22 . . . checks the PAT Cache 1026 and retrieves
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previously cached document content from the Cache 1026 if any . . . or loads
and caches the newer version for future use.”). Therefore, the Examiner
correctly finds “a source data store. . . that stores a plurality of [files]
received from the remote device during execution of the application” is
taught by or at least obvious in light of Mikhailov’s teachings. See Ans. 15–
16.
As discussed above, Mikhailov teaches “forms.” Therefore, the
Examiner correctly finds “a source data store. . . that stores a plurality of
form received from the remote device during execution of the application” is
taught by or at least obvious in light of Mikhailov’s teachings. See Ans. 15–
16. Combining the teachings of Mikhailov would have predictably used
prior art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Third, Appellants contend Mikhailov and Edwards do not teach:
the offline logic is configured to identify navigation options
associated with the plurality of forms to determine page
structure relationships between the plurality of forms, where a
navigation option is an option that is programmed in a form to
initiate a network communication to the remote device to cause
the remote device to determine a next page in the plurality of
forms
as recited in claim 1. See App. Br. 25–27. Appellants contend Edwards does
not teach an offline mode or determining the next page, and Edwards’ web
page links do not read on the claimed navigation option. See id. The
Examiner finds:
[S]ince Applicant does not specifically show how the
navigation options are programmed in a form, the examiner
mapped this features to a HTML hyperlink programmed in a
page. [Further,] Applicant teaches in [0052] and [0065] that
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when a user selects a navigation option by pushing or selecting
a “next page” button, it initiates a network communication to
the remote device. By the same token, it is known that when a
user clicks on a hyperlink (which may be marked “next page”
or something else), it invokes (via the local browser) a network
communication to a remote server destined by the hyperlink.
Ans. 16–17.
Appellants fail to persuade us of error. Because the Examiner relies
on Mikhailov for the recited “offline logic” (Ans. 6 (citing Mikhailov’s
figure 8)), Edwards does not need to teach the same claim element. Further,
the Examiner’s findings are consistent with the Specification, which teaches
using a “next page” button as a navigation option. See, e.g., Spec. 13–14.
And Appellants fail to rebut the Examiner’s above findings: in response to
the Examiner’s above findings, Appellants merely assert:
The examiner fails to show where the references teach or
suggest the actual claim elements that were identified in the
appeal brief as (1) “to identify ... ”, (2) “to initiate ... ” and (3)
“to cause ... ” Instead, the examiner again presents speculative
explanations based on possibilities (EA pages 16-17). No
additional citation to any reference was provided. A prima
facie rejection has not been established and the rejection should
be reversed.
Reply Br. 5.
Appellants’ assertion lacks adequate analysis to counter the
Examiner’s findings and therefore, is unpersuasive of error. Mere
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. See Geisler, 116 F.3d at 1470;
see also De Blauwe, 736 F.2d at 705.
Fourth, Appellants contend there is no teaching, suggestion, or
motivation to combine Mikhailov and Edwards. See App. Br. 28–29; Reply
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Br. 5–6. Appellants argue because Edwards does not teach offline
capabilities, there is no motivation to combine the references. See App. Br.
28.
Appellants fail to persuade us of error because “[t]he obviousness
analysis cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents.” KSR, 550
U.S. at 419. Further, “[i]n determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls.” KSR, 550 U.S. at 419.6 The Examiner
correctly finds Mikhailov and Edwards are in the same field of endeavor.
See Ans. 7.7 And the Examiner has provided articulated reasoning with a
rational underpinning as to why one skilled in the art would have found it
obvious to combine the teachings of Mikhailov and Edwards (Ans. 7).
Combining the teachings of Mikhailov and Edwards would have predictably

6 We note there is motivation to combine because the combination facilitates
user access and therefore, is more “efficient.” See Ans. 7; Dystar
Textilfarben GmBH & Co. Dutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006) (“[A]n implicit motivation to combine exists . . .
when the ‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable . . . because
it is . . . more efficient.”).
7 We note under KSR, “[w]hen a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR,
550 U.S. at 417 (emphasis added). While not relied on for our analysis, we
note Mikhailov, Edwards, and this invention are all in the same field of
information processing associated with computing devices. See, e.g.,
Mikhailov, Abstract; Edwards, Abstract; Spec. 1.
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used prior art elements according to their established functions—an obvious
improvement. See KSR, 550 U.S. at 417.
Further, it is well settled that “a determination of obviousness based
on teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).

Remaining Arguments Regarding Claim 11
Similarly, except for Appellants’ argument with respect to Claim
Limitation 2 (discussed above regarding claim 11), Appellants’ remaining
arguments about claim 11 are unpersuasive for the following reasons.
We disagree with Appellants’ arguments (App. Br. 29–31; Reply Br.
6) (excluding the arguments discussed above with respect to claim 11), and
agree with and adopt the Examiner’s findings and conclusions on pages 9,
10, and 18 of the Answer as our own (except for the findings and
conclusions reversed above with respect to claim 11). Therefore, we limit
our discussion to the following points for emphasis.
Appellants contend Mikhailov and Edwards do not collectively teach
“forms are programmatically interconnected as a sequence of pages . . .
analyzing the plurality of forms to generate page structure relationships
between the plurality of forms to determine the sequence of pages.” See
App. Br. 29–31, Reply Br. 6. Appellants argue Mikhailov teaches frames,
not forms. See App. Br. 29–30. Appellants contend Edwards does not
discuss sequence of pages. See App. Br. 30.
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Appellants fail to persuade us of error because as discussed above
with respect to Remaining Arguments Regarding claim 1, Mikhailov teaches
forms. Further, in response to Appellants’ arguments, the Examiner presents
detailed findings showing the basis for the rejection (Ans. 18). But
Appellants fail to rebut such findings. See Reply Br. 6.
Because Appellants fail to meet their burden to demonstrate reversible
error, we sustain the Examiner’s rejection of claims 21, and claims 22–27 for
similar reasons.

Claims 28-33
Claim 28 recites “means for providing a simulated online state by
allowing the plurality of stored forms to be navigated in the offline state by
processing the page navigation functions in accordance with the page
navigation relationships, where network communications to the web-based
application are generated from the forms.”
Therefore, for similar reasons discussed above with respect to claim 1,
we do not sustain the Examiner’s rejection of claims 28, and claims 29–33
for similar reasons.

34-35
We sustain the Examiner’s rejection of claims 34 and 35 because
Appellants fail to present any substantive arguments. Instead, Appellants’
conclusory assertion (App. Br. 34) fails to persuade us of error. Further,
Appellants fail to rebut the Examiner’s findings on page 19 of the Answer.
See Ans. 19; Reply Br. 6.

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36-41
On this record, we find the Examiner did not err in rejecting claim 36.
Appellants contend:
Claim 36 recites, “where the plurality of web pages are
received in a format compatible with XForms.” Based on the
reasoning explained under claim 6 and claim 28, the references
fail to teach or suggest each and every element of the claim.
App. Br. 34.8
We disagree with Appellants’ arguments with respect to the
“XForms” claim limitation associated with claims 6 and 28 (App. Br. 32–35;
Reply Br. 6), and agree with and adopt the Examiner’s findings and
conclusions on pages 12 and 18–19 of the Answer as our own. Therefore,
we limit our discussion to the following points for emphasis.
Appellants fail to persuade us of error because Appellants fail to
adequately rebut the Examiner’s detailed findings on pages 18–19 of the
Answer. See Ans. 18–19; Reply Br. 6. Because the Examiner relies on the
combination of Mikhailov, Edwards, and ORACLE to teach the disputed
claim limitations, Appellants cannot establish nonobviousness by attacking
the references individually. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Further, for similar reasons discussed above under Remaining
Arguments Regarding Claim 1, Appellants’ arguments regarding improper
combination and “there is no teaching, suggestion, or motivation to

8 We interpret Appellants’ contention to mean Appellants merely argue
claim 36 is patentable because it recites “where the plurality of web pages
are received in a format compatible with XForms.” If Appellants meant to
argue claim 36 is patentable because of other claim limitations, then
Appellants fail to meet their burden for similar reasons discussed above with
respect to claim 21.
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combine” (App. Br. 32–33) are unpersuasive.9 The Examiner has provided
articulated reasoning with a rational underpinning as to why one skilled in
the art would have found it obvious to combine the teachings of Mikhailov
and ORACLE (Ans. 12). Combining the teachings of Mikhailov and
ORACLE would have predictably used prior art elements according to their
established functions—an obvious improvement. See KSR, 550 U.S. at 417.
Finally, Appellants’ attorney arguments about whether ORACLE
constitutes prior art—without citing any support—fail to persuade us of
error. Contrary to Appellants’ unsupported argument, the Examiner
correctly finds ORACLE is a publication, as it entitled “User’s Guide.” See
Ans. 19.
Accordingly, we sustain the Examiner’s rejection of claims 36, and
claims 37-41 for similar reasons.
DECISION
The Examiner’s decision rejecting claims 1–20 and 28–33 is reversed.
The Examiner’s decision rejecting claims 21–27 and 34–41 is
affirmed.
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-IN-PART

msc

9 We note there is motivation to combine because the combination simplifies
the development process and therefore, is more “efficient.” See Ans. 12;
Dystar Textilfarben, 464 F.3d at 1368.