Ex Parte Tock et al

Board of Patent Appeals and Interferences

Feb 1, 2010

09706297 (B.P.A.I. Feb. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THERON TOCK and SAMPATH SRINIVAS
____________________

Appeal 2008-0022881
Application 09/706,297
Technology Center 2400
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Decided: February 2, 2010
____________________

Before JEAN R. HOMERE, JAY P. LUCAS, and DEBRA K. STEPHENS,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed November 03, 2000. The real party in interest is Juniper Networks,
Inc. (App. Br. 1.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 37. (App. Br. 2.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm in part and enter a new ground of rejection.
Appellants’ Invention
Appellants invented a method and system for modifying a script
portion of a markup language document to thereby facilitate access to
resources residing on a remote server through an intermediary server. (Spec.
3, ll. 2-6.) As shown in Appellants’ Figure 1, upon receiving from a client
machine (104) a request for contents located at a remote server (110, 112),
the intermediary server (108) parses the markup language document
associated with the request to locate therein a script containing a link. The
intermediary server (108) then modifies the link to reference the
intermediate server as the hostname. (Spec. 4, ll. 26-31; 6, l. 26- 7, l. 19.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for modifying a markup language document
comprising:
receiving the markup language document at an
intermediary server, the markup language document having at
least one script portion including at least one link to a resource;
and
modifying the at least one link within the script portion
of the markup language document to link to the intermediary
server.
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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Delph 6,356,934 B1 Mar. 12, 2002
Pettersen 6,826,594 B1 Nov. 30, 2004

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1 through 37 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Pettersen.
2. Claims 1, 10, 16, 17, 20, 21, and 35 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Delph.
Appellants’ Contentions
1. Appellants contend that Pettersen does not teach modifying a
link within a script portion of a markup language document to link to an
intermediary server, as recited in independent claim 1. (App. Br. 9-12,
Reply Br. 2-8.) According to Appellants, Pettersen discloses a central
website that provides linking information between an affiliate website and
merchant websites. (App. Br. 9.) In particular, Appellants argue that after
receiving an HTML document, the central website can send additional
content to the user at the behest of the affiliate website, and merchant
websites can thereafter make changes to the contents of their advertisements.
(Id. at 11-12.) However, Appellants contend that the cited disclosure does
not teach the modifying a link within a script of the received HTML
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document to link with either the central website or the affiliate website. (Id.
at 12.)
2. Appellants also contend that Delph does not teach modifying a
link within a script portion of a markup language document to link to an
intermediary server, as recited in independent claim 1. (App. Br. 52-54,
Reply Br. 59-60.) According to Appellants, Delph discloses an intermediate
server that edits HTML data by identifying and modifying weblinks therein
to point to the intermediate server. (Id.) However, Appellants contend that
the cited disclosure does not teach that the modified a link is within a script
of the received HTML document. (Id.)
Examiner’s Findings
1. The Examiner finds that Pettersen’s disclosure of an affiliate
server that sends a request to a central server to modify a link within a script
of an HTML document teaches modifying a link within an HTML document
to link to an intermediary server. (Ans. 9.)
2. The Examiner finds that Delph’s disclosure of modifying a
common scripting language in URLs within the HTML document teaches
modifying the link within a script in the HTML document. (Id. at 12.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that both
Pettersen and Delph teach modifying a link within a script portion of a
markup language document to link to an intermediary server, as recited in
independent claim 1?
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence:
Pettersen
1. Pettersen discloses a method and system for inserting dynamic
content from a web server into a designated portion of a webpage to thereby
generate a webpage with dynamic content in response to a client’s request to
a host computer to access the webpage. (Col. 4, ll. 2-6, ll. 49-57.)
2. As shown in Figure 11, Pettersen discloses that a user at the
affiliate website (790) can contact the content serving website (780) that
uses a web server (781) to remotely manage the contents of various
webpages, and to modify the contents for insertion into pre-designated zones
(smart zones) of the webpages (793) in the affiliate website. (Col. 7, ll. 1-
11.)
3. The content serving website (780) includes a content database
(785) that contains a plurality of modifiable indexed entries associated with
interpretable JavaScript. (Col. 7, ll. 12-34.)
4. After defining smart zones in a webpage of the affiliate website
(790) by embedding therein dynamic content codes, the webpage owner
accesses the content database at the content serving website (780) to identify
contents to be dynamically inserted into the smart zones. The affiliate
webpage owner can only alter authorized entries in the content database.
(Col. 7, ll. 47-65.)
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5. Upon initiating the dynamic content code, which includes a link
within a script that identifies a host server code, a program filename, and an
identification code, the affiliate webpage associated therewith is retrieved
along with the associated contents from the content serving website to
modify the affiliate webpage as indicated by the webpage owner. (Col. 8, ll.
1-42.)
6. After modifying the affiliate webpage, the content serving
website returns a modified link to the affiliate owner reflecting the modified
webpage. (Col. 8, ll. 6-29.)
7. Pettersen discloses scanning the received HTML code, parsing
it to identify different script portions, and subsequently retrieving an output
for a calling webpage. (Col. 9, ll. 10-20.)
Delph
8. As depicted in Figure 1, Delph discloses upon receiving a URL
from a sender computer (80) requesting access to certain HTML document
located at a content server (70), an intermediate server (50) retrieves the
requested HTML document from the content server (70). Then, a control
program running on the intermediate server (50) may instruct it to modify
web links within the HTML document to point back to the intermediate
server (50). (Col. 5, ll. 21-41.)
9. Delph further discloses that modified web links displayed on
the sender screen (85) display leads back to the intermediate server (50),
whereas unmodified web links lead directly to the content server (70) that
has the identified data. (Col. 6, ll. 6-16.)
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Appellants’ Specification
10. Appellants’ Specification indicates that examples of a computer
readable medium include carrier waves. (Spec. 43, ll. 2-4.)

IV. PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted)).
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999) (citation omitted). “In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.” Id. (citation omitted).

V. ANALYSIS
1. Pettersen
Independent claim 1 requires, in relevant part, modifying a link within
a script portion of a markup language document to link to an intermediary
server. (App. Br. 66, Claims App’x.)
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As set forth in the Findings of Fact section, Pettersen discloses that
upon an affiliate owner sending a link within a script to a remote website to
modify certain pre-designated zones within an associated webpage, the
remote website returns a modified link with the requested modifications to
the affiliate owner to subsequently render on a display device the webpage
associated therewith. (FF. 1-7.) We find that the web server in Pettersen’s
content serving website is an intermediary server that modifies a received
link of an HTML script to thereby insert specified contents into an
associated webpage which is sent to the affiliate website. Consequently, the
modified link received from the web server is linked to an intermediary
server. It follows that Appellants have not shown that the Examiner erred in
finding that Pettersen anticipates independent claim 1.
Regarding Appellants’ arguments presented at pages 12 through 52 of
the Appeal Brief and pages 2 through 52 of the Reply Brief, we observe the
following for most of claims 2 through 37:
(1) Appellants reproduce the language of the claim;
(2) Appellants argue that the cited claim is not anticipated by
Pettersen based on the same arguments for patentability submitted for claim
1 above;
(3) Appellants reproduce the text upon which the Examiner relies for
the rejection;
(4) Appellants provide a brief explanation of the cited text, and/or
(5) Appellants make a general allegation that the cited text does not
teach the cited claim language.
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A. In response, we make the following remarks:
1) We addressed Appellants’ argument regarding the limitations of
claim 1, and we found that Pettersen anticipates claim 1.
2) Appellants are reminded that a statement that merely points out
what the claim recites will not be considered as an argument for separate
patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii). Appellants are
further reminded that a general allegation that the claims define a patentable
invention without specifically pointing out how the language of the claims
patentably distinguishes them from the references does not constitute a
persuasive response. 37 C.F.R. § 1.111(b).
B. Further, we find the following:
1) Pettersen’s disclosure of the web server delivering the modified
link to the affiliate owner (FF. 6) teaches the disputed limitations of claim 2.
We will sustain the Examiner’s anticipation rejection against this claim.
2) While Pettersen discloses that the web server modifies the received
link, and forwards it to the owner at the affiliate website, (FF 2) we find that
such disclosure does not lend itself to replacing the located hostname with a
replacement host name, as recited in claims 4 through 8, 24 through 28, and
37. Therefore, we will not sustain the Examiner’s anticipation rejection
against these claims.
3) We found in our discussion of claim 1 that Pettersen teaches
modifying the link within a script to link to a server. See supra p. 7-8.
Further, we find that Pettersen’s disclosure of an affiliate issuing a string call
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to dispatch a link to the web server for subsequent modification (FF. 5)
teaches the disputed limitations of claim 10. Therefore, we will sustain the
Examiner’s anticipation rejection against this claim.
4) Pettersen’s disclosure of scanning the script in a received HTML
document to modify the received script with content data stored in the
content database as indicated by the affiliate owner, and to subsequently
return the modified link to the affiliate (FF. 4-7) teaches replacing the
predetermined function with a statement call, as recited in claims 11 through
19. Therefore, we will sustain the Examiner’s anticipation rejection against
these claims.
5) Regarding claims 20 through 23, 30, and 32-36, Appellants
reiterate the same arguments previously raised for the claims discussed
above. Further, Appellants have not presented separate arguments for
claims 3, 9, 29, and 31. In accordance with 37 C.F.R. § 41.37(c)(1)(vii),
these claims will fall with their corresponding claims with similar limitations
discussed above.

2. Delph
As per claim 1, we find that Delph’s disclosure of a control program
instructing an intermediate server to modify web links associated with the
retrieved HTML documents (FF. 8) teaches the disputed limitations. In
particular, we find that the disclosed control program is a script since it is a
set of instructions that direct the intermediate server to modify the web links
associated the retrieved documents. Further, as per claim 17, we find the
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instructions sent between the sender, intermediate server and content server
are function calls that the control program uses to enable the different
devices on the network to communicate with one another. Therefore, we
will sustain the Examiner’s anticipation rejection against claims 1 and 17.
Regarding claims independent claims 10, 16, 20, 21 and 35,
Appellants reiterated the same arguments previously raised for the claims
discussed above. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), these
claims will fall with corresponding claims with similar limitations discussed
above.2

VI. NEW GROUND OF REJECTION
35 U.S.C. § 101 Rejection
Claims 20 through 37 recite, in relevant part, “[a] computer readable
media including at least computer program code.” (App. Br. 69-74, Claims
App’x.)
According to Appellants' Specification, computer readable media
includes carrier waves. (FF. 10.) We find that such transmissions implicate
a carrier wave or a signal modulated by a carrier over a transmission
medium. Therefore, the cited claims encompass the use of a computer data
signal embodied in a carrier wave to transmit information. A computer data
signal embodied in a carrier wave is a transitory, propagating signal not

2 We note that FF. 9 above appears to teach the limitations of dependent
claim 4 and the like. We leave it to the Examiner to decide whether to reject
those claims based on Delph’s disclosure.
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within any of the four statutory categories and, therefore, non-statutory. See
In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). It follows that claims
20 through 37 are directed to non-statutory subject matter.

VII. CONCLUSIONS OF LAW and DECISION
1. Appellants have not established that the Examiner erred in
rejecting claims 1 through 3, 9 through 23, and 29 through 36 as being
anticipated under 35 U.S.C. § 102(e) by Pettersen. We therefore affirm the
Examiner’s rejection of these claims.
2. Appellants have not established that the Examiner erred in
rejecting claims 1, 10, 16, 17, 20, 21, and 35 as being anticipated under
35 U.S.C. § 102(e) by Delph. We therefore affirm the Examiner’s rejection
of these claims.
3. Appellants have established that the Examiner erred in rejecting
claims 4 through 8, 24 through 28 and 37 as being anticipated under
35 U.S.C. § 102(e) by Pettersen. We therefore reverse the Examiner’s
rejection of these claims.
4. We have entered a new ground of rejection against claims 20
through 37 as not being directed to statutory subject matter under 35 U.S.C.
§ 101.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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