Ex Parte Yach

Board of Patent Appeals and Interferences

May 15, 2008

09728543 (B.P.A.I. May. 15, 2008)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID YACH

Appeal 2008-1454
Application 09/728,5431
Technology Center 2100
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Decided: May 15, 2008
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, C., Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection
of claims 44-74 mailed September 7, 2006. We have jurisdiction under
35 U.S.C. § 6(b).

1 Application filed December 1, 2000. The real party in interest is Research
In Motion Limited.
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Application 09/728,543

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We affirm.

A. INVENTION
Appellant invented a system and method for enabling the browsing of
World Wide Web (WWW) content without the need for a traditional web
browser application operating at the client machine. (Spec., 2.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 44-74. Claims 1-43 are canceled. Claims
44, 55, 64, 65, 73, and 74 are independent claims. Claim 44 is illustrative:
44. A method of browsing content maintained in a page-
rendered language without the use of a page-rendering browser
application on a mobile communication device, comprising:
generating a request for content at the mobile
communication device and transmitting the request to a gateway
coupling the mobile communication device to a data network;
forwarding the content request from the gateway to a
server on the data network where the content is stored in the page-
rendered language;
returning the requested page-rendered content from the
server to the gateway;
translating the page-rendered content into a
programmatic language and generating a corresponding executable
program at the gateway; and
forwarding the executable program to the mobile
communication device which executes the program in order to browse
the requested content.

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C. REFERENCE
The single reference relied upon by the Examiner in rejecting the
claims on appeal is as follows:
Schwartz US 6,473,609 B1 Oct. 29, 2002
(Filed Sep. 14, 1998)

D. REJECTION
The following rejection is before us for review2:
Claims 44-46, 48-52, 55-61, 64-70, 73, and 74 are rejected under
35 U.S.C. § 102(e) as being anticipated by Schwartz.

II. PROSECUTION HISTORY
Appellant appealed from the Final Rejection and filed a second
Appeal Brief (App. Br.) on February 27, 2007. The Examiner mailed an
Examiner’s Answer (Ans.) on June 12, 2007. Appellant filed a Reply Brief
(Reply Br.) on August 9, 2007. The request for an Oral Hearing was timely
waived on March 19, 2008.

2 In the Examiner’s Answer on page 3, the following rejections were
withdrawn: The rejection of claims 44-52, 55-61, 64-70, 73, and 74 under
35 U.S.C. § 102(e) as being anticipated by Lowery (US 6,446,111), or in the
alternative, under 35 U.S.C. § 103(a) as obvious over Lowery in view of
Schwartz (US 6,473,609). In addition, see page 3 of the Answer for the
grounds of rejection that have not been withdrawn by the Examiner, but are
not under review by the Board because they were not argued in Appellant’s
Appeal Brief.
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III. ISSUE
Whether Appellant has shown that the Examiner erred in rejecting
claims 44-46, 48-52, 55-61, 64-70, 73 and 74 as being anticipated by
Schwartz.

IV. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

Claim Construction
1. The Specification does not provide a lexicographic definition for
the terms “interpreter”, “executing”, and “rendering”.
2. The ordinary and usual meaning of “interpreter” is a computer
program that translates an instruction into machine language and executes it
before going to the next instruction. Webster’s Ninth New Collegiate
Dictionary p. 633 (1985)
3. The ordinary and usual meaning of “executing” is to perform
indicated tasks according to encoded instructions. Merriam-Webster’s
Collegiate Dictionary 436 (11th ed. 2005).
4. The ordinary and usual meaning of “rendering” is to direct
the execution of. Webster’s Ninth New Collegiate Dictionary p. 997 (1985)

Schwartz
5. Schwartz discloses that “a mobile device cannot efficiently operate
the browser used by desktop computers to navigate the Internet. . . . There is,
therefore, a great need for a solution that enables mobile devices to freely
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access information on the Internet without providing these computing
resources in the mobile devices.” (Col. 2, ll. 8-15.)
6. Schwartz discloses that “in prior art systems, terminal devices
typically run a local browser such as the one from Netscape™ or
Microsoft™ to interact with the Internet. The present invention, however,
uses an interface engine in a terminal device and a control engine in a proxy
server.” (Col. 10, ll. 54-58.)
7. Schwartz discloses “if working directly with the HDML files, the
terminal (i.e., the mobile device) would require both considerable memory to
cache the HDML files, history and activity states and sufficient computing
power to run a browser to work with the cached HDML files. One aspect
which differentiates the present invention fundamentally from prior art
systems is that the control engine in the link server is responsible for tasks
that require computing resources while the interface engine in the terminal is
only responsible for rendering the screen description data to cause the
display screen to display contents and receive inputs from a user.” (Col. 12,
ll. 43-54.)
8. Schwartz discloses that “the actual data being exchanged between
link server 300 and mobile device 350 is in SDD format, which is typically
binary . . . .” (Col. 10, ll. 3-6.)
9. Schwartz discloses that “[a]ccording to another embodiment, the
message processor does not have a pair of separate message digester and
converter, a markup language file in HDML, compact HTML or XML is
received at the message processor and converted into a corresponding binary
file that is much smaller in size and may be in Imp, cHDML, cHTML, or
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cXML, wherein ‘c’ means stripped, compressed, compiled or converted
version of the corresponding markup files.” (Col. 10, ll. 11-18.)

V. PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California,
814 F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is
patentable over the prior art under 35 U.S.C. § 102 begins with a
determination of the scope of the claim. We determine the scope of the
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction 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).
The properly interpreted claim must then be compared with the prior art.

VI. ANALYSIS
Grouping of Claims
In the Brief, Appellant argues claims 44-46, 48-52, 55-61, 64-70, 73,
and 74 as a group (App. Br. 9-11). In other words, for claims 44-46, 48-52,
55-61, 64-70, 73, and 74, Appellant merely repeat the same arguments.
Thus, the Board selects representative claim 44 to decide the appeal for this
group. 37 C.F.R. § 41.37(c)(1)(vii)(2006). Accordingly, the remaining
claims in this group stand or fall with claim 44. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).

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The Board's Claim Construction
"Our analysis begins with construing the claim limitations at issue."
Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144, at *2 (BPAI 2007).
Claims are given their broadest reasonable construction “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).
To determine whether Schwarz anticipates illustrative claim 44, we
must first determine the scope of the claim. Our reviewing court stated in
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005), cert. denied,
sub nom. AWH Corp. v Phillips, 126 S. Ct. 1332 (2006): The claims, of
course, do not stand alone. Rather, they are part of “a fully integrated
written instrument,” Markman, 52 F.3d at 978, consisting principally of a
specification that concludes with the claims. For that reason, claims “must
be read in view of the specification, of which they are a part.” Id. at 979. As
we stated in Vitronics, the specification “is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.” 90 F.3d at 1582.
We note that Appellant has not identified any specific definition for
the terms “interpreter”, “executing” and “rendering” (FF 1), nor are we
aware of any special definition in the art for these terms. From our review
of the original Specification, we find no express definition of these terms in
the Specification. Therefore, we give the above-mentioned terms their
ordinary and customary definition (FF 2-4).

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The Anticipation Rejection
We now consider the Examiner’s rejection of illustrative claim 44
under 35 U.S.C. § 102(e) as being anticipated by Schwartz.
"Having construed the claim limitations at issue, we now compare the
claims to the prior art to determine if the prior art anticipates those claims."
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002).
Initially, we note that although Appellant argues that the “independent
claims of this application all (emphasis added) require that the page-
rendered code is translated into programmatic code that can be executed at
the mobile device,
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without the use of a page-rendering application,” (App.
Br. 11) Appellant has chosen not to draft all the independent claims as
argued. For example, only independent claims 44 and 73 recite the “without
the use of a page-rendering
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browser application, and independent claim 64
merely recites “without the use of a web browser application.” Independent
claims 55, 65, and 74 do
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not recite “without the use of a page-rendering 15
browser application” nor any other similar language. Therefore, the above-
noted argument has been considered, but applies only to claims containing
the specific limitation.
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Furthermore, we note that while independent claims 44, 64, and 73
recite language related to the “without” clause presented supra, the actual
language used in the claims also include a “browser application”.
Now that we have clarified what is actually being claimed, we next
compare the claims to the prior art.
Regarding claims 44, 64, and 73, Appellant contends that “in order for
Schwartz to anticipate theses claims, the reference must disclose or suggest
the browsing of page-rendered content without an application that renders 26
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the content. This is not possible, however, because the Schwartz reference
repeatedly and consistently indicates that his invention requires a page-
rendering application.” (Reply Br. 4.) We disagree.
Schwartz discloses that there is a need to enable a mobile device to
access information on the Internet without providing a browser in the mobile
device (FF 5). Schwartz also discloses that while prior art mobile devices
run a local browser to interact with the Internet, its mobile device uses an
interface engine (FF 6). Furthermore, Schwartz discloses that the interface
engine in the mobile device is only responsible for rendering the screen
description data, instead of browsing HDML files (FF 7).
In other words, Schwartz discloses avoiding the use of a “browser”
component in its mobile device. Instead, Schwartz uses an interface engine
that renders the data so as to cause the display screen to display content.
Thus, we find that Schwartz reads on the “without the use of a page-
rendering browser application” limitation found in claims 44, 64, and 73.
Regarding the rendering feature of Schwartz, Appellant contends:
The Examiner’s Answer essentially equates these operations
[“rendering” and “executing”], finding that Schwartz’s page-rendering
interface engine, which operates on a data file, is the same as the
claimed functionality of executing or interpreting an executable
program that has been translated from a page-rendered data file into a
programmatic language. These operations, however, are not the same,
and therefore the anticipation rejection over Schwartz should be
reversed.

(Reply Br. 6.)
In other words, Appellant essentially contends that Schwartz’s
“rendering” is distinguishable from the claimed “executing”. We disagree
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We find that “rendering” as disclosed by Schwartz is merely directed
to the execution of the Screen Description Data (SDD) (FF 4), instead of
using a page-rendering browser application as negatively recited in the
claims. Schwartz clearly discloses avoiding the use of a browser application
in its mobile device. Thus, we find that Schwartz’s mobile device
“rendering the screen description data” reads on the claimed “mobile
communication device which executes the program.”
Regarding whether Schwartz’s SDD format is a program as claimed,
Appellant contends the following regarding Schwartz:
As these quotations from Schwartz demonstrate, the reference clearly
does not disclose or suggest the possibility of converting page-
rendered code into programmatic code that can be directly executed
by the client device. Rather, in Schwartz, the page-rendered code is
merely converted into a more compact form of smaller or less page-
rendering code segments. The SDD data that is generated by the link
server in the Schwartz reference is still page-rendered code, it is not
programmatic code.
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(App. Br. 9-10: see also Reply Br. 6.)
The Examiner found that the “actual SDD file is transmitted in ‘SDD
format’, which is typically binary (Col. 10, ll. 3-6). Binary files are known
in the art, and they contain data specifically intended to be read by a
computer.” (Ans. 9.)
The Examiner further found:
It is clear that a binary file containing commands that cause the
mobile device to display certain items is an ‘executable program’,
well within the broadest reasonable interpretation of that term. . .
even if the SDD file could not reasonable [sic] be interpreted as an
executable program, which it can, Schwartz also discloses that the
message processor can convert the received page rendered content
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into various compiled formats (at least Col. 10, Lines 10-17). It is
well known in the art that a computer can execute compiled code.
(Ans. 10.)
We agree with the Examiner and further do not find that the language
of independent claim 44 requires the code to be “directly executed” as
argued.
Schwartz discloses that the SDD format transmitted to the mobile
device is typically in binary form and even may be a compiled version of the
corresponding markup files (FF 8-9). Thus, we find that Schwartz’s
disclosed compiled binary version of the SDD format reads on the claimed
“programmatic language”.
Therefore, we do not find that Appellant has shown error in the
Examiner’s rejection of illustrative claim 44. Instead, we find the Examiner
has set forth a sufficient initial showing of anticipation, and Appellant has
not shown that Schwartz lacks the above-noted disputed features of claim
44. Therefore, we affirm the rejection of independent claim 44 and of
claims 45, 46, 48-52, 55-61, 64-70, 73, and 74, which fall therewith.
As for the non-argued separate rejections under Section 103(a) for
claims 47, 53, 54, 62, 63, 71, and 72 (see footnote 2), we note that
arguments which Appellant could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. Thus, we
also pro forma affirm the separate rejections under 103(a) of claims 47, 53,
54, 62, 63, 71, and 72 (see Final Office Action).

VII. CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 44-74.
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Thus, claims 44-74 are not patentable.

VIII. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejections of claims 44-74.
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) (2006).

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AFFIRMED

ce

David B. Cochran
Jones, Day, Reavis & Pogue
North Point
901 Lakeside Avenue
Cleveland OH 44114
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