Ex Parte Weber et al

Patent Trial and Appeal Board

May 3, 2016

11644696 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/644,696 12/22/2006
76058 7590 05/05/2016
YAHOO! INC C/O GREENBERG TRAURIG, LLP
MET LIFE BUILDING
200 PARK A VENUE
NEW YORK, NY 10166
Karon A. Weber
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.
085804-706900 6428
EXAMINER
BROWN, SHEREE N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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):
mendozae@GTLA W.COM
cordesp@gtlaw.com
njdocket@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARON A. WEBER, LIANG-YU CHI,
and SAMANTHA M. TRIPODI
Appeal2014-008077
Application 11/644,696
Technology Center 3600
Before ROBERT E. NAPPI, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4, 5, 7-14, 21, 23, 25, 27-37, and 39, which constitute all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify Yahoo! Inc. as the real party in interest. App. Br. 3.
Appeal2014-008077
Application 11/644,696
THE INVENTION
The claimed invention is an overlay generator that analyzes
descriptive data from a website, retrieves additional content from a second
website, and makes the additional information available via an overlay.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving, by a computing device via a network, from a
provider of a website, a webpage of the website, the webpage
comprising data that includes descriptive data that conforms to
a defined format;
in response to receiving the webpage, searching, by the
computing device, the data of the webpage to identify the
descriptive data;
in response to identifying the descriptive data, receiving,
by the computing device, the defined format of the descriptive
data and identifying, by the computing device, an online data
source, separate from the \'l1ebsite and unrelated to the provider
of the website, having additional content relevant to the
webpage;
automatically retrieving by the computing device,
additional content from the separate online data source based on
the defined format of the descriptive data, the additional content
to be provided in an overlay on the webpage;
in response to automatically retrieving, over the network,
the additional content from the online data source,
displaying, by the computing device, the webpage and at
least a portion of the additional content on a display device as
the overlay of the webpage, such that the additional content is
displayed in association with content of the webpage.
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REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Arutunian et al. US 2006/0200382 Al Sept. 7, 2006
("Arutunian '382")
Arutunian et al. US 2006/0200384 Al Sept. 7, 2006
("Arutunian '384")
REJECTIONS
Claims 1, 2, 4, 5, 7-14, 21, 23, 25, 27-37, and 39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Arutunian '384 in view of
Arutunian '382. Final Act. 10-28.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants. We do not
consider arguments that Appellants could have made but chose not to make
in the Briefs so that we deem any such arguments as waived. See 37 C.F.R.
§ 41.37(c)(l)(vii); see also Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) ("Filing a Board appeal does not, unto itself, entitle an
appellant to de novo review of all aspects of a rejection. If an appellant fails
to present arguments on a particular issue ... the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection."). We
disagree with Appellants' arguments regarding the pending claims.
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Application 11/644,696
Claims 1, 2, 4, 5, 7-14, 21, 23, 25, 27-34, 36, 37, and 39
Appellants argue Arutunian '384 does not teach or suggest searching
the webpage to identify the descriptive data in response to receiving the
webpage ("the first in response to limitation") as recited in claim 1. App.
Br. 10. Instead, Appellants argue although Arutunian '384 teaches
providing an interactive map, "the data ... is merely displayed to the user
upon receiving the webpage." Id. Stated differently, Appellants argue claim
1 "requires the search to be carried out when the webpage loads." Reply Br.
2-3.2
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Contrary to
Appellants' arguments, there is nothing recited in claim 1 that limits the
claims to searches performed "when the webpage loads;" instead, the only
temporal limitation is that it must occur after the webpage is received. See
App. Br. 16 (Claims App'x). Because the argument is not commensurate
with the scope of the claims, it is unpersuasive. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982). Instead, we agree with and adopt the Examiner's
findings that Arutunian '384 teaches that a search for descriptive data is
performed in response to receiving the webpage. Final Act. 11 (citing
Arutunian '384, Abstract; Figs. 4A--4D; i-fi-1 4, 33, 44, 45, 60).
2 In framing the issue, Appellants explicitly state that the issue was not
"about 'searching' a webpage [or] identifying 'descriptive data."' Reply Br.
2.
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Application 11/644,696
Appellants also argue the additional overlay data in Arutunian '384
comes from a user selecting items on a layering tool bar. App. Br. 11; Reply
Br. 3--4. Therefore, according to Appellants, because Arutunian '384 "does
not disclose and in fact has no need for 'searching the data of the webpage to
identify the descriptive data' as recited in [the first in response to limitation
of] independent claim[] 1," it does not teach the second in response to
limitation of claim 1. Id. Appellants further argue claim 1 requires that "an
overlay is generated without any user input." App. Br. 11.
We are not persuaded by Appellants' arguments. First, Appellants'
argument is premised on the prior art not teaching the first in response to
limitation. However, as discussed above, we rejected Appellants' argument
that Arutunian '3 84 does not teach the first in response to limitation.
Second, we disagree with Appellants' proposed claim construction
that there can be no user input. Claim 1 uses the open-ended transitional
phrase "comprising" and does not exclude any additional elements or
method steps. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, (Fed.
Cir. 1997) ("'Comprising' is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim."). Nothing in
claim 1 prohibits the use of user input in performing the steps so long as it is
in response to "to identifying the descriptive data." See App. Br. 16 (Claims
App'x).
Further, we note the Specification discloses using user input via
toolbar to help in the disclosed method of generating an overlay. Spec. i-f 27;
see also Final Act. 7-8. During claim construction, we consult the
Specification to help clarify the meaning of claim terms, because the claims
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"must be read in view of the specification, of which they are a part."
Trading Technologies Int'!, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed.
Cir. 2010) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967,
979 (Fed. Cir. 1995) (en bane), ajf'd, 517 U.S. 370 (1996)). As a general
rule, "there is a strong presumption against a claim construction that
excludes a disclosed embodiment." See In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011).
Contrary to Appellants' argument (App. Br. 12), using the
Specification in this manner to understand the scope of the claims is not
reading limitations into a claim. Considering the Specification and
concluding that the scope of the claim is broad enough to cover at least an
embodiment disclosed in the Specification is different from reading a
limitation from the Specification into a claim and limiting the claim to only
cover that embodiment. Although claim 1 is broad enough to cover a
method that generates an overlay without any user input, it is not so limited
and is broad enough to also cover the user of user input via a tool bar, such
as disclosed in Specification, paragraph 27.
Based on the language recited in claim 1 and the description in the
Specification, we conclude claim 1 does not exclude any user input.
Because the argument is not commensurate with the scope of the claims, it is
unpersuasive. See Self, 671 F.2d at 1348.
Finally, Appellants argue Arutunian '384 does not teach or suggest
the automatically retrieving limitation recited in claim 1. App. Br. 12.
Specifically, Appellants argue that the retrieval of additional content in
Arutunian '3 84 "is neither automatic nor based on the defined format of the
descriptive data." Id. Instead, Appellants argue the overlays in Arutunian
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'384 are "driven by the user and based on values of the user interface
elements." Id. Additionally, in the Reply Brief, Appellants also assert the
Arutunian references do not enable automatic retrieval and discusses, for the
first time, the teachings of Arutunian '382. Reply Br. 4 n.1.
In the Final Action, the Examiner finds Arutunian '382 teaches
automatic retrieval. Final Act. 14 (citing Arutunian '382 i-f 49; claims 1, 17).
Additionally, based on the Specification and the claim language, the
Examiner concludes that claim 1 does not exclude a user using a toolbar to
assist in the identification of additional content to be retrieved. Final Act. 7-
8.
We are not persuaded by Appellants' argument. First, in the Appeal
Brief, the Appellants do not discuss Arutunian '3 82 or the specific sections
(i-f 49; claims 1, 17) cited by the Examiner. See App. Br. 12. "If an
appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection-the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection." Frye, 94
USPQ2d at 1075. To the extent Appellants challenge the findings in the
Reply Brief, those arguments are not entitled to consideration because they
were not presented for the first time in the opening brief. Optivus
Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (argument raised for the first time in the reply brief that could have
been raised in the opening brief is waived); accord Ex parte Borden, 93
USPQ2d 1473, 1473-74 (BPAI 2010) (informative) (absent a showing of
good cause, the Board is not required to address an argument newly
presented in the reply brief that could have been presented in the principal
brief on appeal); 37 C.F.R. § 41.41(b)(2) (same).
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Second, as discussed above, we disagree with Appellants' claim
construction which would exclude any user intervention. Instead, for the
reasons given by the Examiner and discussed above, we conclude claim 1 is
broad enough to cover both embodiments that use and do not use user
inputs. Appellants' argument premised on a narrower claim construction is
not persuasive.
According! y, we sustain the Examiner's rejection of claim 1, along
with the rejections of claims 21 and 31, which are argued on the same
grounds, and claims 2, 4, 5, 7-14, 23, 25, 27-30, 32-34, 36, and 39, which
are not argued separately.
Claim 35
Claim 35 depends from claim 1 and recites "that the webpage does not
include a map and the overlay of the at least one webpage comprises a map
comprising at least one geographic location." App. Br. 20 (Claims App'x).
Appellants argue that Arutunian '384 does not teach that limitation because
it teaches a webpage with a map and the information that can be included in
the overlay is not a map. App. Br. 13-14; Reply Br. 5.
Appellants' argument focuses on the contents of the webpage and the
overlay and which one comprises a map. However, our reviewing court has
held that nonfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been found unpatentable based on the
prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive material
is not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability); King
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Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
("[T]he relevant question is whether 'there exists any new and unobvious
functional relationship between the printed matter and the substrate.'")
(citations omitted); see also Ex parte Nehls, 88 USPQ2d 1883, 1889 (BP AI
2008) (precedential) ("[T]he nature of the information being manipulated
does not lend patentability to an otherwise unpatentable computer-
implemented product or process."); Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative), aff'd, 191 Fed. App'x 959 (Fed. Cir. 2006)
("[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art."); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BP AI 2005) (informative), aff'd, (Fed.
Cir. 2006-1003) (June 12, 2006) ("Nonfunctional descriptive material cannot
render nonobvious an invention that would have otherwise been obvious.").
Although we do not disregard any claim limitations and assess the claimed
invention as a whole, we follow the Federal Circuit's guidance from Gulack
and do not give patentable weight to printed matter absent a new and
unobvious functional relationship between the printed matter and the
substrate. Gulack, 703 F.2d at 1385.
"The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter." In re
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if
it is "claimed for what it communicates." Id. at 850. Because the presence
or absence of a map in the webpage or the overlay as recited in claim 35 are
being claimed for what they communicate, we find them to be printed
material.
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If a claim in a patent application claims printed material, "one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is 'no' is the printed
matter owed no patentable weight." Distefano, 808 F.3d at 851. In this
case, we find that a webpage that does not contain a map and an overlay
which does as opposed to any other type of arrangement-such as a
webpage that includes a map and an overlay that does not---does not change
or affect any machine function. Although the content of the webpage and
overlay will be the basis for what is displayed, the type of data does not
functionally change how the web page and overlay are created or used.
Thus the presence or absence of a map is merely non-functional descriptive
material and the presence or absence of a map cannot be used to give
patentable weight to the claim.
This is analogous to Curry, where we found the type of data to be
nonfunctional descriptive material when it "does not functionally change
either the data storage system or communication system used in the method
of claim 81." Curry, 84 USPQ2d at 1274 (BPAI 2005).
As we recognized in Curry, "if the prior art suggests storing a song on
a disk, merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art at the time
the invention was made." Id. at 1275. Choosing to use a map as an overlay
on a webpage as opposed to a webpage containing a map is no different.
Concluding otherwise would result not only in Appellants' specific
type of data in the webpage and in the additional content distinguishing over
the prior art, but equally would distinguish every other unique type of data
used to create the overlay. To give effect to Appellants' argument, we
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would need to ignore our reviewing court's concerns with repeated
patenting. See King Pharm. Inc., 616 F.3d at 1279 ("The rationale behind
this line of cases is preventing the indefinite patenting of known products by
the simple inclusion of novel, yet functionally unrelated limitations."); cf
Ngai, 367 F.3d at 1339 ("If we were to adopt Ngai's position, anyone could
continue patenting a product indefinitely provided that they add a new
instruction sheet to the product."). We decline to do so.
For the foregoing reasons, we do not give any patentable weight to the
presence or absence of a map in either the webpage or the additional content
Accordingly, we are not persuaded by Appellants' argument that the
Examiner erred in finding claim 35 obvious over the cited prior art.
Even if we did give patentable weight to the presence or absence of a
map in either the webpage or the additional content, we would still sustain
the Examiner's rejection. In an obviousness analysis, "the scope and content
of the prior art are to be determined; differences between the prior art and
the claims at issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved." Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
"Against this background, the obviousness or nonobviousness of the subject
matter is determined." Id.
In this case, the only issue raised by Appellants regarding the
additional limitation of claim 3 5 is not whether the process of creating an
overlay is obvious, but whether the prior art teaches the absence of a map on
a webpage and the inclusion of a map in an overlay. We find such a
modification of an old process using a new source of data to be obvious. In
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), the Supreme Court
held that "if a technique has been used to improve one device, and a person
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of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." Id. at 417. "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." Id. at 416; see also id. at 417
("If a person of ordinary skill can implement a predictable variation, § 103
likely bars its patentability."); In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997) ("It is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable." (citations
omitted)). We do not find that the evidence shows having a webpage
without a map and an overlay from additional data containing a map
"uniquely challenging or difficult for one of ordinary skill in the art."
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citingKSR, 550 U.S. at 418). Accordingly, we do not consider
Appellants' argument to sufficiently demonstrate the Examiner's rejection is
m error.
For the reasons discussed above, we sustain the Examiner's rejection
of claim 3 5.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
2,4,5, 7-14,21,23,25,27-37,and39.
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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
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