International Business Machines Corporation

Patent Trials and Appeals Board

Apr 2, 2021

2020005645 (P.T.A.B. Apr. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/614,653 02/05/2015 Nicholas L. Brust CAM920140002US2_8150-0543 1917
112978 7590 04/02/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
NAZAR, AHAMED I
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS L. BRUST, BERNADETTE A. CARTER,
JOSHUA M. SMALL, and MICHAEL K. SODOMSKY

Appeal 2020-005645
Application 14/614,653
Technology Center 2100
____________

Before JOHN A. EVANS, JUSTIN BUSCH, and
JOHN P. PINKERTON, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject Claims 9–20, which are all of the claims
pending in the present application. Appeal Br. 1–2; see also id. at 16–18,
Claims App. Appellant states that “Claims 1-8 have been cancelled.” Id. at
2. We have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.
We REVERSE.2

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as IBM
Corporation. Appeal Br. 1.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (“Appeal Br.”) and Claims Appendix (“Claims
App.”), filed March 4, 2020; the Examiner’s Answer (“Ans.”), mailed June
12, 2020; the Reply Brief (“Reply Br.”), filed July 28, 2020; the Final Office
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Application 14/614,653

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STATEMENT OF THE CASE
Related Appeals
Appellant states that “[a]n appeal is concurrently being filed in related
U.S. Application No. 14/292,841” (“the ’841 application”). Appeal Br. 1.
The Board mailed a decision for Appeal 2019-006154 of the ’841
application on March 24, 2021.
Claimed Subject Matter
The claims relate to “logging interactions between scripts and a
markup language document” in which “interactions between the markup
language document and one or more methods of a script are monitored.”
Spec. ¶ 14.
Claims
Claims 9 and 17 are independent. Claim 9 is illustrative and
reproduced below with some formatting added:
9. A system, comprising:
a processor programmed to initiate executable operations
comprising:
loading a markup language document into a browser,
wherein the markup language document comprises a plurality of
markup language elements;
detecting a call from within the markup language
document to a method specified by a script;
determining a markup language element of the markup
language document modified by execution of the method; and

Action (“Final”), mailed November 15, 2019; and the Specification
(“Spec.”), filed February 5, 2015, for their respective details.

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storing log data comprising a name of the modified
markup language element in association with a name of the
method.
Appeal Br. 16, Claims App.
References and Rejections on Appeal
Claims 9–20 stand provisionally rejected under the doctrine of
obviousness-type double patenting as being unpatentable over Claims 1–8 of
the ’841 application. Final Act. 2–4.
Claims 9, 10, and 12–20 stand rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Wenig et al. (US 2011/0320880 A1; published Dec. 29,
2011) (“Wenig”). Id. at 4–9.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Wenig and Volk et al. (US 2015/0052108 A1; published Feb. 19, 2015)
(“Volk”). Id. at 9–10.
ANALYSIS
CLAIMS 9–20: OBVIOUSNESS-TYPE DOUBLE PATENTING
In provisionally rejecting Claims 9–20 under the doctrine of
obviousness-type double patenting, the Examiner relies on Claims 1–8 of the
’841 application. Final Act. 2–4. In response, Appellant does not
substantively rebut the rejection, but instead states that “[t]his rejection is
not the subject of the present appeal,” and that “Appellants will make a
determination as to the filing of a Terminal Disclaimer upon indication of
allowable subject matter.” Appeal Br. 3 n.1. Appellant has not filed a
terminal disclaimer, nor has the Examiner withdrawn the provisional
rejection.
“Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections.” Ex parte Jerg, Appeal No.
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Application 14/614,653

4
2011-000044, 2012 WL 1375142, at *3 (BPAI Apr. 13, 2012) (informative);
Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). We
therefore decline to reach this rejection and, instead, leave it to the Examiner
to consider whether, in the event of further prosecution, the rejection should
be maintained. Cf. Manual of Patent Examining Procedure (“MPEP”)
§§ 804.I.B, 822.01 (9th ed., Rev. 07.2015, Oct. 2015).
CLAIMS 9, 10, 12–20: ANTICIPATION BASED ON WENIG
Claim 9 recites, in relevant part, “detecting a call from within the
markup language document to a method specified by a script.” Appeal Br.
16, Claims App. Appellant contends the Examiner erred in finding Wenig
discloses this limitation. Appeal Br. 9–10; Reply Br. 2–5. For the reasons
discussed below, we agree with Appellant that the Examiner erred.
The Examiner finds Wenig discloses the “detecting a call” limitation
because Wenig describes a user interface (“UI”) event monitor that may
detect events caused by the client on the web page by attaching listeners to
web page elements such as to fields in different web pages. Final Act. 5
(citing Wenig ¶¶ 33–34, 47–48, 95, 112). The Examiner explains that
[t]he UI event monitor detect event/interaction/call with a
webpage UI element, wherein the event may be keyboard
character entry, mouse click, mouse movement, etc. This
indicates that the UI event monitor utilizing a listener may be the
method specified by JavaScript to provide detection to
event/call/interaction on the webpage UI elements.
Id. at 6.
Among other arguments, Appellant contends the Examiner’s findings
are unsupported because they are “based upon the Examiner’s
reinterpretation of the teachings of Wenig - not based upon [what] Wenig
actually teaches.” Appeal Br. 9. In particular, Appellant asserts that none of
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Wenig’s “‘UI events 34’ that are being monitored for and captured by the UI
event monitor 16. . . . correspond to the claimed ‘a call from within the
markup language document to a method specified by a script,’” nor has “the
Examiner . . . explained how any of these UI events 34 correspond to the
limitations at issue.” Id. at 10 (citing Wenig ¶¶ 33–34).
We are persuaded that the Examiner erred. Wenig’s “UI event
monitor 16, in one example, is a JavaScript application that is downloaded to
the browser operated by client 14 via a Hyper Text Markup Language
(HTML) tag.” Wenig ¶ 33. UI event monitor 16 may monitor and capture
UI events 34 by attaching listeners to elements (such as fields) in the web
page. Id. ¶ 112. Wenig further describes that UI events 34 may result from
user interactions with the web page, including keyboard character entries,
mouse movements, and mouse clicks. Id. ¶ 27. For example, as shown in
Figure 1 of Wenig, UI event monitor 16 can detect when a user enters
characters into fields 20A and 20B or selects different elements in web page
18. Id. ¶ 34; see also id. ¶ 78. UI event monitor 16 can also detect when the
user selects fields in the web page that cause other web pages to be
displayed, connect to other web links, or change the state of web session 50.
Id. ¶ 34; see also id. ¶ 78.
The Examiner presents no persuasive evidence, however, that
Wenig’s UI event monitor—or any of its associated functionalities—
discloses or suggests detecting a call from within Wenig’s web page to a
JavaScript method. Moreover, even if these disclosures of Wenig were to
suggest executing a call to a function upon user interaction with a web page,
the record lacks sufficient evidence of Wenig’s UI event monitor, or some
other element, “detecting” the call. The Examiner therefore has not
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adequately shown that Wenig’s UI event monitor or its associated
functionality discloses or suggests “detecting a call” as claimed.
Nor do any of the Examiner’s additional findings fill the gaps in the
Examiner’s rejection. In the Answer, the Examiner additionally cites
Wenig’s disclosure that “web page logic 58 may call . . . web application
43” and finds:
The occurrence of one or more UI event would send a call to
the web page logic to perform a function. The call, which may
be communicated via a listener associated with each field of
web page HTML, may be sent/transmitted to the webpage logic
58 “based on the information entered into fields 52 and 54” and
the method/function performed by the JavaScript application
may . . . “download additional zip code information that fills in
an additional drop down menu 55 in web page 44” as illustrated
in fig. 2.
Ans. 3–4 (citing Wenig ¶ 40); see also id. at 3 (additionally citing Wenig
¶¶ 27, 33–34, 41, 47–48, 77–78, 95, 112). The Examiner then cites Wenig’s
disclosure that web page logic may move into a second state after a user
enters UI events into the web page (for example, selecting or typing data
into a field) and finds:
Here, the call would be received by the web page logic 206
when selection of field ID1 (CLICK ID1), type data into the
selected field ID1 (TYPE ID1), and select button field B1
(CLICK B1), then the web page logic 206 would perform
function/method by transitioning from FORM F1 (state 208) to
FORM F2 (state 210) as illustrated in fig. 9.
Id. at 4 (citing Wenig ¶¶ 78, 80).
These additional disclosures show that Wenig’s web page logic may
monitor changes in the web page’s document object model (“DOM”) or
perform a function based on information entered into fields on a web page:
for example, the web page logic may transition into another state or call a
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web application to download additional information that fills in the web
page. Wenig ¶¶ 40, 78. While these portions of Wenig may disclose
executing a call from within a portion of web page logic 58 to web
application 43 on server 42, the Examiner provides insufficient evidence and
explanation to show that Wenig discloses or suggests “detecting”—as
opposed to merely executing—a call.
We therefore agree with Appellant that the Examiner erred in finding
Wenig discloses “detecting a call from within the markup language
document to a method specified by a script,” as recited in Claim 9.
Accordingly, constrained by this record, we decline to sustain the
Examiner’s § 102(a)(1) rejection of independent Claim 9 as anticipated by
Wenig. We also decline to sustain the Examiner’s § 102(a)(1) rejection of
independent Claim 17, which recites a similar limitation for which the
Examiner relies on the same defective findings. See Final Act. 4–7; Ans. 3–
4. We likewise decline to sustain the Examiner’s § 102(a)(1) rejection of
dependent Claims 10, 12–16, and 18–20, for which the Examiner relies on
the same defective findings. See Final Act. 7–9; Ans. 9–10.
CLAIM 11: OBVIOUSNESS BASED ON WENIG AND VOLK
Claim 11, which depends from Claim 9, recites: “The system of claim
9, wherein the processor is further programmed to initiate executable
operations comprising: storing an image comprising the markup language
element.” Appeal Br. 16, Claims App.
The Examiner rejects Claim 11 as obvious over the combination of
Wenig and Volk. Final Act. 9–10. Appellant contends the Examiner erred
for the same reasons “previously advanced in traversing the imposed
rejection of claim 9 under 35 U.S.C. § 102 for anticipation based upon
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Wenig.” Appeal Br. 13. Appellant also asserts that “[t]he secondary
reference to Volk does not cure the argued deficiencies of Wenig.” Id.
In rejecting Claim 11, the Examiner relies on the same defective
findings as those described above for Claim 9. Final Act. 10 (“As per
dependent claim 11, Wenig discloses detecting and storing script based
events, as noted above.”). Nor do the Examiner’s additional findings and
rationale for Claim 11—which relate to Volk’s “taking a snapshot of the
element in relation to the event and adding the snapshot to the log record”—
fill the gaps in the Examiner’s rejection of Claim 9. See id. (citing Volk,
Abstract, ¶ 11).
Therefore, we decline to sustain the Examiner’s § 103 rejection of
Claim 11.
CONCLUSION
We decline to reach the Examiner’s provisional rejection of Claims 9–
20 under the doctrine of obviousness-type double patenting.
We reverse the Examiner’s rejection of Claims 9, 10, and 12–20 under
35 U.S.C. § 102(a)(1).
We reverse the Examiner’s rejection of Claim 11 under 35 U.S.C.
§ 103.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
9–20
Provisional
Obviousness-type
Double Patenting3

9, 10, 12–20 102(a)(1) Wenig 9, 10, 12–20
11 103 Wenig, Volk 11
Overall
Outcome 9–20

REVERSED

3 As explained above, we do not reach this rejection per Ex parte Jerg and
Ex parte Moncla.