Ex Parte Secrist et al

Patent Trial and Appeal Board

Jun 28, 2013

10765378 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK S. SECRIST, ALEX NEHMER,
and RICO GUNDERMANN

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Appeal 2011-000909
Application 10/765,378
Technology Center 2100
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Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
BRYAN F. MOORE, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/765,378

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention is directed to determining a model for
separation or presentation logic and application logic of an existing Web
application to be adapted into the portal application (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method comprising:
determining a construction design for an adapted portal application;
determining a model for separation or presentation logic and
application logic of an existing Web application to be adapted into said
portal application;
determining a navigation construction for said adapted portal
application;
selecting a level of customization to apply to said adapted portal
application;
selecting an isolation model for isolating business logic from said
adapted portal application; and
employing the determined construction design, the determined model,
the determined navigation construction, the selected level of customization,
and the selected isolation model for adapting said existing Web application
into said portal application in a manner that maintains said existing Web
application's functionality within said portal application.

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REFERENCES and REJECTIONS
1. Claims 21-25 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.1
2. The Examiner rejected claims1-25 under 35 U.S.C. § 102(b) as
being anticipated by Anuff (US 6,327,628).

PRINCIPLE OF LAW
Although claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).

ISSUES
The issues are whether the Examiner erred in finding that:
1. Claims 21-25 are indefinite under 35 U.S.C. § 112, second paragraph;
2. Anuff teaches the claim limitation of “existing Web application” as
recited in claim 1; and
3. Anuff teaches the claim limitation of “creating a new window for
information retrieved in response to a call to said URL from said Web
application” as recited in claim 3.

1 The Examiner entered New Grounds of Rejection (Ans. 3).
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ANALYSIS
Analysis regarding the 35 U.S.C. § 112, second paragraph rejection
of claims 21-25
The Examiner rejected claims 21-25 because the Specification fails to
point out sufficient structure or material as the “means” for performing the
functions claimed, except the developer. The Examiner explained that a
person cannot be considered as sufficient structure or material for
performing the claimed function for a system claim. Ans. 3-9.
Appellants argue that the claimed “means” refers to code developed
by a developer and executed in a computer environment (e.g., FIGURE 2)
(Reply Br. 2-3).
We do not agree with Appellants’ argument. For a computer-
implemented means-plus-function claim limitation that invokes 35 U.S.C.
§ 112, ¶6, the corresponding structure is required to be more than simply a
general purpose computer. Aristocrat Technologies, Inc. v. International
Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008). The
corresponding structure for a computer-implemented function must include
the algorithm as well as the general purpose computer. WMS Gaming, Inc.
v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999). The
written description must at least disclose the algorithm that transforms the
general purpose microprocessor to a special purpose computer programmed
to perform the claimed function. See Aristocrat, 521 F.3d at 1338.
Accordingly, we affirm the Examiner’s rejections of claims 21-25. 2

2 Should there be further prosecution the Examiner should also consider
whether claims 21-25 are unpatentable under 35 U.S.C. § 101 in light of the
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Analysis regarding the anticipation rejection of claims 1, 2, and 4-25
Appellants argue that the Examiner’s interpretation of an “existing
Web application” as a known concept of a Web application (which appears
to refer to a known functionality that is performed via the Web, such as the
concept of performing keyword searching over the web) is unreasonably
broad (App. Br. 13). Appellants argue that when interpreted in view of their
Specification, an existing Web application refers to moving Web
components into the portal framework, wherein an example would be an
existing HTML page including several different components that provide
data to present to the user over the Web browser (App. Br. 14; ¶¶ [0023],
[0027]).
We do not agree with Appellants’ arguments. We agree with the
Examiner that a “Web application” as recited in the claim, can reasonably be
interpreted, in the broadest reasonable interpretation, to mean a concept of a
Web application (Ans. 14). For example, just the concept of searching the
web with a keyword for retrieving information relevant to the keyword can
be broadly referred to as a Web application (Ans. 14). Claim 1 is silent
regarding moving Web components into the portal framework or an HTML
page including several different components that provide data to present to
the user over the Web browser. We note that although claims are
interpreted in light of the specification, limitations from the specification are
not read into the claims. See Van Geuns, 988 F.2d at 1184.
We further agree with the Examiner that Anuff teaches a modular
portal infrastructure that uses the existing concepts of browser applications

recent decision CLS Bank Int’l. v. Alice Corp. Pty. Ltd., 106 USPQ2d 1696
(Fed. Cir. 2013).
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Application 10/765,378

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(e.g., Web applications such as web search, company directory search, News
etc. as shown in Fig. 2) and adapts those application concepts to meet the
desire of today's corporate users to have quick access to various resources
and data provided by the employer, while at the same time being able to
view information provided over the internet, such as news headlines,
financial data, and vendor data (col. 3, ll. 36-39) at once from a single site
using a portal infrastructure (Ans. 14-15). Anuff further teaches that the use
of a portal infrastructure to adapt existing Web application concepts into a
one-site gateway to the Web was not a new concept or technique (Ans. 15).
In particular, Anuff teaches that portals have become popular mechanisms
that enable users to access information from multiple different network sites
at once (col. 3, ll. 37-39). Therefore, even the concept of a portal
infrastructure itself can be thought of as “an existing Web application” at the
time of the invention (Ans. 15).
Furthermore, the Examiner in response to Appellants’ arguments
finds, and we agree, that Anuff does teach adapting an existing Web
application into a proposed portal infrastructure even if the terminology “an
existing Web application” as interpreted to mean not just a known Web
application (i.e., in the form of a concept or knowledge) but an actual
instance of a particular implementation of a Web application (i.e., a Web
application constructed from a number of Web components appropriately
coded by the developer that provide some information or application logic to
the user) (Ans. 17). This is because Anuff teaches that each module within
the portal represents a network resource (i.e., a Web application) that can be
accessed by a user through the portal (see Abstract) (Ans. 17).
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Anuff further teaches that these resources can be applications,
databases, services informational content, e-commerce offerings, and the
like, that are available from one or more of the servers 12a-12n (Ans. 17).
Some of these resources may be provided by the employer (or other provider
of the portal), whereas others may come from independent third parties (col.
3, l. 61-col. 4, l. 1; Ans. 17). Anuff teaches that one of the significant
advantages of the portal framework of the present invention is the fact that
the resources that are made available to the user via the modules can come
from a variety of third-party sources (col. 10, ll. 52-55). Since some of the
modules on the portal platform make available to the user resources
provided by third parties, it follows that these third party resources represent
existing Web applications, since at least these third party resources are not
built from scratch by the portal provider but represent resources that are
already provided by third parties (Ans. 18). Therefore, by providing access
to these third party Web application resources via designing and
implementing the modular portal, Anuff teaches a technique for adapting an
existing Web application into the proposed portal infrastructure (Ans. 18).
Accordingly, we affirm the Examiner’s rejections of claim 1 and for
the same reasons the rejections of claims 2 and 4-25.
Analysis regarding the anticipation rejection of claim 3
Appellants argue that Anuff does not teach the limitation of “creating
a new window for information retrieved in response to a call to said URL
from said Web application” as recited in claim 3 (App. Br. 15).
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We do not agree with Appellants’ argument. Anuff teaches that by
clicking on a headline in the “News” module, the user can be presented with
the full text of the news story to which that headline pertains (col. 4, ll. 1-5).
Thus, we affirm the Examiner’s rejection of claim 3.

CONCLUSIONS
The Examiner did not err in finding that:
1. Claims 21-25 are indefinite under 35 U.S.C. § 112, second paragraph;
2. Anuff teaches the claim limitation of “existing Web application” as
recited in claim 1; and
3. Anuff teaches the claim limitation of “creating a new window for
information retrieved in response to a call to said URL from said Web
application” as recited in claim 3.

DECISION
The Examiner’s decision rejecting claims 1-25 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

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