Ex Parte Watler et al

Board of Patent Appeals and Interferences

Mar 18, 2010

10272373 (B.P.A.I. Mar. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLIAM WATLER, JONATHAN PHILLIPS,
and DAVID YOUNG
__________

Appeal 2009-010481
Application 10/272,373
Technology Center 2100
__________

Decided: March 18, 2010
__________

Before JAMES D. THOMAS, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-62. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on March 11, 2010.
We affirm in part.
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The Invention
The disclosed invention relates generally to modifying and generating
markup-language code (Spec. 1).
Independent claim 1 is illustrative:
1. A method for modifying a copy of original Web-page
code stored at a content provider, the method comprising the steps of:
responsive to a request from a user for Web content, receiving,
at an annotation server, the copy of the original Web-page code,
wherein the copy of the original Webpage code includes executable
code associated with a data item;
determining an operational modification that should be applied
to the copy of the original Web-page code, wherein the determined
operational modification is associated with the data item;
modifying the copy of the original Web-page code according to
the determined operational modification, wherein the original Web-
page code stored at the content provider is not modified responsive to
modifying the copy of the original Web-page code; and
providing the modified copy of original Web-page code to the
user.

The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Freishtat US 5,945,989 Aug. 31, 1999
Dutta US 2002/0109729 A1 Aug. 15, 2002
(filed Dec. 14, 2000)

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The Rejections
1. The Examiner rejects claims 54 and 56-62 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. The Examiner rejects claims 1, 3-16, 18-20, 22-24, 35-44, 46-48, and
54-62 under 35 U.S.C. § 102(e) as being anticipated by Dutta.
3. The Examiner rejects claims 2, 17, 21, 25-34, 45, and 49-53 under 35
U.S.C. § 103(a) as being unpatentable over Dutta and Freishtat.

ISSUE 1
Appellants assert that Dutta “does not teach performing an operational
modification on web page code” (App. Br. 22), “an operational
modification” (App. Br. 27-28), modifying code “according to a determined
operational modification” (App. Br. 32), or elements that are “operationally
modified” (id.).
Did the Examiner err in finding that Dutta discloses modifying Web-
page code according to an operational modification?

ISSUE 2
Appellants assert that Dutta “does not teach a graphics-based
animation object which comprises Flash content” (App. Br. 22).
Did the Examiner err in finding that Dutta discloses Flash content?

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ISSUE 3
Appellants assert that “Dutta does not teach inserting executable code
configured to monitor a field for user data entry” (App. Br. 23).
Did the Examiner err in finding that Dutta discloses insertion of
executable code configured to monitor for the user to enter data into a field?

ISSUE 4
Appellants assert that Dutta fails to disclose “providing the modified
content to a user so that the modified content appears, from the user’s
perspective, to originate from the content provider” (App. Br. 24) or a
“modified copy [that] appears to originate from an entity other than the
entity which performed the modification” (App. Br. 29). Appellants further
argue that Freishtat fails to cure the deficiencies of Dutta (App. Br. 38).
Did the Examiner err in finding that Dutta discloses providing
modified-original content that appears to originate from the content provider
from the user’s perspective?

ISSUE 5
Appellants assert that Dutta fails to disclose “inserting JavaScript”
(App. Br. 26) and that inserting JavaScript is “not obvious over . . . Dutta,
either alone or combined with Freishtat” (App. Br. 39).
Did the Examiner err in finding that Dutta discloses inserting
JavaScript?

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ISSUE 6
Appellants assert that Dutta “does not teach an annotation server
‘intercepting’ web-page content” (App. Br. 31) or interception of web-page
content from a content provider (App. Br. 33).
Did the Examiner err in finding that Dutta discloses intercepting or
redirection of content?

ISSUE 7
Appellants assert that “an operational modification associated with a
data item comprising a table is clearly not taught . . . by Dutta” (App. Br.
35). Appellants also argue that there are “significant differences between
[tables] . . . and the images which are modified in Dutta” (App. Br. 43).
Did the Examiner err in finding that Dutta or Freishtat discloses or
suggests a data item comprising a table?

ISSUE 8
Appellants assert that “nowhere in . . . Freishtat is there even a
mention of a virtual agent, let alone any suggestion” (App. Br. 40).
Did the Examiner err in finding that the combination of Dutta and
Freishtat discloses or suggests a virtual agent?

ISSUE 9
The Examiner finds that claims 54 and 56-62 are “directed to non-
statutory subject matter” (Ans. 3).
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Appellants contest the Examiner’s rejection under 35 U.S.C. § 101
(App. Br. 43-47).
Did the Examiner err in finding that claims 54 and 56-62 are drawn to
non-statutory subject matter?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Dutta discloses that “the file corresponding to the first SVG image is
modified by an editor in the web server to include code from the file
corresponding to the second SVG image (i.e., the virtual
advertisement)” (¶ [0016]).
2. The Specification discloses “modifying original content served up by
a content provider” (Spec. 14, ¶ [0030]) in which an “annotation
server 105 can insert text, images, or icons . . . into a content
provider’s original content” (Spec. 15, ¶ [0030]).
3. Dutta discloses “[p]rior to sending the SVG image to the client, the
web server request the virtual advertisement 102 . . . from the ad
server,” “modifies the primary SVG image file,” and the “client
browser then GETs the GIF image 104 and the SVG image 106 from
the web server” (¶ [0055]).
4. Dutta discloses that the “ad server consults its database . . . to
determine which virtual advertisement to use, and sends it to the web
server” and that the “web server modifies the primary SVG image
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file so that the virtual advertisement overlays a portion of the original
image” (¶ [0055]).
5. Dutta discloses that the client receives “the SVG image 106 from the
web server” and that the “browser displays the modified version of
the image containing the virtual advertisement inserted by the web
server” (¶ [0055]).

PRINCIPLES OF LAW
35 U.S.C. § 101
“Those four categories [process, machine, manufacture, or
composition of matter] define the explicit scope and reach of subject matter
patentable under 35 U.S.C. § 101.” In re Nuijten, 500 F.3d 1346, 1357 (Fed.
Cir. 2007). A claim that recites no more than software, logic or a data
structure (i.e., an abstraction) does not fall within any statutory category. In
re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).

35 U.S.C. § 102
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).

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Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Issue 1
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 1-12, 35-40, 55, 56, and 57 with respect to issue 1 on
the basis of claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As described above, Dutta discloses modifying original code (FF 1).
In one example, the system of Dutta inserts a virtual advertisement into a
video (¶ [0031], Fig. 1). In so doing, Dutta modifies the operation of the
original video, which now displays a superimposed advertisement. Since the
operation of the original video is modified, we agree with the Examiner that
Dutta discloses determining an operational modification to be applied to
original web page code as recited in claim 1.
Appellants argue that “image merging is the only type of modification
taught by Dutta” (App. Br. 20 ) and that image merging “simply changes the
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appearance of a page” (id.) and is therefore supposedly distinct from an
“operational modification” as recited in claim 1. The Specification fails to
provide an explicit definition of the term “operational modification” but
discloses modifying original content by inserting images into original
content (FF 2). Construing the claim term “operational modification” in
light of the disclosure in the Specification that includes inserting images into
content, we agree with the Examiner that the disclosure of inserting images
into content of Dutta is equivalent to the disclosure of inserting images into
content as described in the Specification. Appellants have not demonstrated
otherwise. In any event, Appellants have not demonstrated any distinction
between modifying the operation of the video in Dutta to display an
advertisement and the claimed “operational modification.”
For at least the aforementioned reasons, we conclude that there is no
error in the Examiner’s rejection of claim 1, or of claims 2-12, 35-40, 55, 56,
and 57, which fall therewith with respect to issue 1.

Issue 2
The Examiner finds that Dutta discloses “scalable vector graphic
(SVG) is a vector graphics language . . . [that] will greatly enhance the
functionality of web pages” (Ans. 17-18). However, the Examiner does not
demonstrate that Dutta also discloses Flash content as recited in claim 7.
Accordingly, we conclude that the Examiner erred in rejecting
claim 7.

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Issue 3
The Examiner finds that Dutta discloses a system that “must have a
code to monitor the selection of the embedded link (user data entry as
claimed) to the first SVG image” (Ans. 18). Claim 9 recites code to monitor
for the user to enter data into a field. We do not find, and the Examiner has
not demonstrated, that the embedded hyperlink monitors the user entering
data into a field. Rather, a hyperlink merely provides a link to a web page if
a user chooses to select the hyperlink.
Accordingly, we conclude that the Examiner erred in rejecting
claim 9.

Issue 4
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 13-34, 41-54, and 58-62 with respect to issue 4 on the
basis of claim 13 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
Dutta discloses that an image from an ad server is superimposed on an
image from a web page at a web server and sent to a client (FF 4-5). Since
the client receives data from the ad server that is modified at the web server,
we agree with the Examiner that, from the perspective of the user in the
Dutta system, the data received from the ad server (i.e., superimposed on the
web server data), appears to have been sent from the ad server since the ad
server is the entity that originally provided and sent the data. In other words,
the data from the ad server of Dutta is generated by the ad server and is not
generated by the web server. Appellants have not demonstrated how or why
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it would have appeared to the user in Dutta that data generated and sent from
an ad server appears to originate from elsewhere.
Claims 41 and 58-62 recite similar features as claim 13. Accordingly,
we conclude that the Examiner did not err in rejecting claims 13, 41, and 58-
62, and claims 14-34 and 42-54, which depend therefrom, with respect to
issue 4.

Issue 5
The Examiner finds that Dutta discloses “page code content that
including the Java Scrip at page 4, 0039 as cited ‘It is based on the
Extensible Markup Language (XML) . . .’” and that the “web page editor
needs to insert JavaScript to enhance the functionality of web page by using
HTML language” (Ans. 19). Claims 20 and 21 recite inserting JavaScript
into the original content. While the Examiner finds that Dutta discloses code
based on XML, the Examiner has not established a nexus between the code
based on XML of Dutta and inserting JavaScript into original web page
content. In fact, Dutta appears to be lacking in such a disclosure.
Accordingly, we conclude that the Examiner erred in rejecting claims
20 and 21 with respect to issue 5.

Issue 6
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 41-54 and 58 with respect to issue 6 on the basis of
claim 41 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
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As described above, Dutta discloses a web server receiving an SVG
for a client but inserting a virtual advertisement into the SVG image prior to
sending the modified SVG image to the client (FF 3). Because the virtual
advertisement, sent by an ad server (FF 4-5), is transmitted to a client only
via the web server, we agree with the Examiner that the web server
intercepts, then redirects the virtual advertisement (that is sent by the ad
server) to the client.
Appellants argue that the Specification “clearly and explicitly
discloses ‘intercepting’ as including diversion of content from its intended
target” (App. Br. 30). However, we find no definition of the term
“intercept” in the Specification. Rather, the Specification merely discloses
that the term includes “but is not limited to . . . [a] content provider . . .
[routing] content bound for the user 125 to the annotation server 105 instead
of the user 125” (Spec. 10, ¶ [0020]).
However, even assuming that Appellants’ contention that the
Specification discloses a definition of the term “intercept” and that the
definition disclosed in the Specification requires that intercepted data be
limited to only data routed to a server instead of a user, we agree with the
Examiner that Dutta discloses intercepting and/or redirecting data since
Dutta discloses that data from an ad server is intended to be sent to a user
but is first processed by the web server (i.e., “intercepted”), the data being
sent to the user only after being routed through the web server (FF 4-5).
Therefore, we disagree with Appellants’ contention that Dutta supposedly
fails to disclose this feature.
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Claims 41 and 58 recite similar features. Accordingly, we conclude
that the Examiner did not err in rejecting claims 41 and 58, and of claims 42-
54, which fall therewith, with respect to issue 6.

Issue 7
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 2, 31, and 50 with respect to issue 7 on the basis of
claim 2 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that Dutta fails to disclose that the data includes a
table and that Freishtat fails to cure the deficits of Dutta (App. Br. 35-36).
However, Dutta discloses, for example, inserting an advertisement, such as
the phrase “Eat at Joe’s” (Fig. 1) into a video. Construing such text broadly
but reasonably as organized data and a table as organized data, we find that
the inserted text of Dutta includes data from a table. For example, the
inserted text as disclosed by Dutta constitutes a “table” of a single row and a
single column. Appellants have not demonstrated a distinction between a
single row and single column table illustrated in Fig. 1 of Dutta and the
claimed “table.”
Accordingly, we conclude that the Examiner did not err in rejecting
claim 2, and claims 31 and 50, which fall therewith, with respect to issue 7.

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Issue 8
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 27 and 51 with respect to issue 8 on the basis of claim
27 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that Dutta and Freishtat fail to disclose or suggest
replacing data corresponding to a virtual agent. Appellants have not
indicated an explicit definition of the term “virtual agent” in the
Specification. In the absence of a definition, we construe the term “virtual
agent” broadly but reasonably as any entity (i.e., “agent”) that, while
creating an effect, may or may not be physically present (i.e., “virtual”). As
described above, Dutta discloses inserting an advertisement corresponding to
an advertiser into original data and forwarding the modified data (including
the inserted advertisement) to a user. Since the inserted advertisement
corresponds to an advertiser (e.g., “Joe” in Dutta’s example of Fig. 1) and
replaces data in the original data (i.e., the advertisement being data
“corresponding to” the advertiser) and the advertiser is an entity (or “agent”)
that creates an effect (e.g., causes an advertisement to be included in
transmitted data), we disagree with Appellants’ contention that Dutta and
Freishtat supposedly fail to disclose this feature.
Accordingly, we conclude that the Examiner did not err in rejecting
claim 27, and of claim 51, which falls therewith, with respect to issue 8.

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Issue 9
The Examiner finds that claims 54, 57-59, and 62 are directed to “a
computer program comprising software per se” and are therefore directed to
non-statutory subject matter (Ans. 3). Appellants argue that the rejection
“should be reversed because they are based on the false premise that
software cannot fall within one of the numerated classes of statutory subject
matter” (App. Br. 47), that claims 54-57, and 62 “are directed to articles of
manufacture” (id.), and that claims 58 and 59 are “directed to ‘a computer
program product’ [and therefore] are clearly directed to patentable subject
matter.”
Claims 54, 57 and 62 recite a web page produced by a method or
system in which the web page is modified. Claims 58 and 59 recite a
computer product formed by a method in which a web page is modified.
Since claims 54, 57-59, and 62 are product-by-process claims directed to
web pages (or “computer products” formed from web pages) and “[t]he
patentability of a product does not depend on its method of production” In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), claims 54, 57-59, and 62 are
directed to web pages that are merely representations of Hypertext Markup
Language (HTML) code. Claims 54, 57-59, and 62 do not require any
specific function, structure, or activity of the web pages. Rather, the only
requirement recited in the claims is that the web pages be created, the web
pages being a composite of HTML computer code. Since a claim that
recites no more than an abstraction such as software or a data structure does
not fall within any statutory category (Warmerdam, 33 F.3d at 1361), we
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agree with the Examiner and claims 54, 57-59, and 62, which are directed to
no more than a web page containing HTML computer code, are directed to
non-statutory subject matter.
Appellants further argue that “even if [the disputed claims] were
directed to ‘software per se,’ they would still be directed to patentable
subject matter, because software is a type of process” (App. Br. 44). “The
Supreme Court . . . [has] consistently interpreted the statutory term ‘process’
to require action” (In re Nuijten, 500 F.3d at 1355). Since a web page does
not perform an action other than merely existing, we disagree with
Appellants that a web page is a “process.” Nor have Appellants provided a
cogent rationale as to how a web page, as a static representation of a listing
of HTML computer code, constitutes an “action.” In addition, Appellants
have not demonstrated that the HTML code for the recited web page
requires “specific electronic structural elements which impart a physical
organization on the information stored in memory” or constitute “specific
electrical or magnetic structural elements in a memory” In re Lowry, 32 F.3d
1579, 1583-84 (Fed. Cir. 1994).
Claims 56, 60, and 61 recite a system comprising means for receiving,
transmitting, identifying, and modifying data. “The use of the word
‘means,’ which is part of the classic template for functional claim elements,
gives rise to ‘a presumption that the inventor used the term advisedly to
invoke the statutory mandates for means-plus-functions clauses.’” Sage
Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 1427 (Fed. Cir.
1997) (citing York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99
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F.3d 1568, 1574 (Fed. Cir. 1996)). Since claims 56, 60, and 61 recite the
word “means” for functional claim elements, a presumption of a means-plus-
function clause arises and we “must look to the specification and interpret
that language in light of the corresponding structure, material, or acts
described therein, and equivalents thereof, to the extent that the specification
provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193
(Fed. Cir. 1994).
Appellants argue that “a web server at the content provider is a means
for retrieving a copy of the original markup language page and transmitting
that copy” (App. Br. 13) and that “the means for identifying a first of a
plurality of elements to be modified, and the means for modifying the copy
of the original markup language page are both at the annotation server” (id.).
Since the means recited in claims 56, 60, and 61 correspond to specific
computer hardware structures, which we do not find to correspond to
“software per se,” we disagree with the Examiner’s findings with respect to
claims 56, 60, and 61.
Accordingly, we conclude that the Examiner did not err in rejecting
claims 54, 57-59, and 62 under 35 U.S.C. § 101 but that the Examiner erred
in rejecting claims 56, 60, and 61 under 35 U.S.C. § 101.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in:
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1. finding that Dutta discloses modifying Web-page code
according to an operational modification (issue 1);
2. finding that Dutta discloses providing modified-original content
that appears to originate from the content provider from the user’s
perspective (issue 4);
3. finding that Dutta discloses intercepting or redirection of
content (issue 6);
4. finding that Dutta or Freishtat discloses or suggests a data item
comprising a table (issue 7);
5. finding that the combination of Dutta and Freishtat discloses or
suggests a virtual agent (issue 8); and
6. finding that claims 54, 57-59, and 62 are drawn to non-statutory
subject matter (issue 9).
However, the Examiner erred in finding that Dutta discloses Flash
content (issue 2), insertion of executable code configured to monitor for the
user to enter data into a field (issue 3), or inserting JavaScript (issue 5). We
also conclude that the Examiner erred in finding that claims 56, 60, and 61
are drawn to non-statutory subject matter.

DECISION
We affirm the Examiner’s decision rejecting claims 54, 57-59, and 62
under 35 U.S.C. § 101; claims 1, 3-6, 8, 10-16, 18, 19, 22-24, 35-44, 46-48,
and 54-62 under 35 U.S.C. § 102(e); and claims 2, 17, 25-34, 45, and 49-53
under 35 U.S.C. § 103.
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We reverse the Examiner’s decision rejecting claims 7, 9, and 20
under 35 U.S.C. § 102(e), claim 21 under 35 U.S.C. § 103, and claims 56,
60, and 61 under 35 U.S.C. § 101.
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

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