International Business Machines Corporation

Patent Trials and Appeals Board

Mar 24, 2022

2021000633 (P.T.A.B. Mar. 24, 2022)

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. 13/961,263 08/07/2013 Mathieu Jerome Simon CA920120017US1_8150-0357 5555 112978 7590 03/24/2022 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER MAMILLAPALLI, PAVAN ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 03/24/2022 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 MATHIEU JEROME SIMON and IOSIF VIOREL ONUT _____________ Appeal 2021-000633 Application 13/961,263 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and MATTHEW J. McNEILL, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 21-32. Claims 1-20 are canceled. See Appeal Br. 2. Therefore, the rejections of claims 21-32 are before us on appeal. We have jurisdiction over these pending claims 21-32 under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is IBM Corporation. See Appeal Br. 1. Appeal 2021-000633 Application 13/961,263 2 STATEMENT OF THE CASE2 Introduction Embodiments of Appellant’s claimed subject matter relate generally to “[s]elective processing of items having embedded delay actions.” See Abstract. Representative Independent Claim 21 21. A computer-implemented method of crawling a website using a web crawler, comprising: identifying, within a web page of the website and received from a server, a delay action; capturing an initial document object model of the web page; [L1] executing, after the initial document object model is captured, the delay action; [L2] capturing, after executing the delay action, a subsequent document object model of the web page; comparing the initial document object model to the subsequent document object model; and waiting, upon the initial document object model being equivalent to the subsequent document object model, for a time specified by the delay action. Appeal Br. 22 (Claims App.) (emphasis added regarding disputed dispositive steps L1 and L2). 2 We herein refer to the Final Office Action, mailed January 14, 2020 (“Final Act.”); the Appeal Brief, filed June 8, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed September 29, 2020 (“Ans.”); and the Reply Brief (“Reply Br.”), filed November 2, 2020. Appeal 2021-000633 Application 13/961,263 3 Prior Art Evidence Relied Upon by the Examiner3 Name Reference Date Maykov US 2008/0320498 A1 Dec. 25, 2008 Tuttle US 2009/0216758 A1 Aug. 27, 2009 Tsai US 2012/0131428 A1 May 24, 2012 Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis 21-32 103 Maykov, Tsai, Tuttle Issues and Analysis We have considered all of Appellant’s arguments and any evidence presented. We review appealed rejections for reversible error based upon the arguments and evidence Appellant provides for each issue identified by Appellant. See 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). “[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and 3 All reference citations are to the first-named inventor only. Appeal 2021-000633 Application 13/961,263 4 informative manner as to meet the notice requirement of [35 U.S.C.] § 132.” Jung, 637 F.3d at 1363. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited or waived.4 See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Throughout this opinion, we give the claim limitations the broadest reasonable interpretation (“BRI”) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We highlight and address specific findings and arguments for emphasis in our analysis below. Claim Grouping Group I. Based on Appellant’s arguments and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the rejection of claims 21, 23-25, 27-29, 31, and 32 on the basis of representative claim 21.5 See 4 See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020): It is well established that “[w]aiver is different from forfeiture.” United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two scenarios can have different consequences for challenges raised on appeal, id. at 733-34, and for that reason, it is worth attending to which label is the right one in a particular case. (footnote and internal citations omitted). 5 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of Appeal 2021-000633 Application 13/961,263 5 Appellant’s proposed claim groupings on page 8 of the Appeal Brief, which we adopt. Group II. Based on Appellant’s arguments and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the rejection of dependent claims 22, 26, and 30 on the basis of representative dependent claim 22. Rejection of Independent Claim 21 under 35 U.S.C. § 103 Based on Appellant’s arguments in the Briefs, we focus our analysis on the argued claim 21 method steps, L1 and L2: Issues: Under 35 U.S.C. § 103, did the Examiner err by finding that Maykov, Tsai, and Tuttle collectively teach or suggest the disputed steps of: [L1] executing, after the initial document object model is captured, the delay action; [L2] capturing, after executing the delay action, a subsequent document object model of the web page; Claim 21 (emphasis added). In addition, we consider the issue raised by Appellant as to whether the Examiner has improperly combined the cited Maykov, Tsai, and Tuttle references under 35 U.S.C. § 103. dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2021-000633 Application 13/961,263 6 Claim Construction As an initial issue of claim construction, we agree with Appellant’s observations in the Appeal Brief: The issue raised by Appellant[] does not involve the “broadest reasonable interpretation” of the claim language by the Examiner. The claims explicitly recite a “delay action.” Paragraph [0048] of Markov explicitly describe[s] actions that perform a delay. Both Appellants’ [S]pecification [(¶ 47)] and the teachings of Markov [(¶ 48)] describe a “SetTimeout” call as being an example of such an action. There is no claim construction issue. Appeal Br. 11 (emphasis added). Regarding all claims before us on appeal, to the extent that the scope of any claims on appeal is being construed broader by the Examiner or the Board than the interpretation imputed by Appellant’s arguments in the Briefs, we emphasize that, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Threshold Issue of the Combinability of the Cited References Regarding the combinability of Maykov and Tsai, the Examiner finds an artisan would have been motivated to modify Maykov with Tsai to: make the system more efficient to collect links that are generated dynamically but don’t send a request and links that are sent to different web pages depending on different content filled into a dynamic form, thereby improving the information security protection and coverage of the dynamic web page crawling. (Tsai [0011];). Final Act. 7 (emphasis added regarding quotation from paragraph 11 of Appeal 2021-000633 Application 13/961,263 7 Tsai). Regarding the combinability of the Maykov/Tsai combination with Tuttle, the Examiner finds an artisan would have been motivated to modify the Maykov/Tsai combination with Tuttle to: make the system more efficient and provide[] an improved crawler that can search the Internet for specific pieces of information such as, but not limited to, text strings, images, nodes of a document object model, and/or other classes of data objects, which are typically contained within a modern web application. (Tuttle [0018];). Final Act. 9 (emphasis added regarding quotation from paragraph 18 of Tuttle). At the outset, we note that in providing the motivation statements, the Examiner makes specific findings that incorporate direct quotations (shown in italics above) from paragraph 11 of Tsai, and paragraph 18 of Tuttle, respectively.6 See Final Act. 7, 9. But Appellant does not directly address the Examiner’s specific findings of motivation. Id. Nevertheless, Appellant asserts that the Examiner has improperly combined the references, because “Maykov’s purpose of identifying a delay action (i.e., in a script) is to avoid the delay action.” Appeal Br. 9 (emphasis omitted). 6 The presence or absence of a reason “to combine references in an obviousness determination is a pure question of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994, 1000 (Fed. Cir. 1999)). A reason to combine teachings from the prior art “may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved.” WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Appeal 2021-000633 Application 13/961,263 8 We note that the Javascript SetTimeout method executes a function after a specified time period has expired. The well-known use of the SetTimeout method is disclosed in Maykov at paragraph 48, and in Appellant’s Specification at paragraph 47. Such delay functions can be used for a variety of purposes, with predictable results, as is known in the art. See id. Even if we assume arguendo (without deciding) that Maykov’s purpose is different than that claimed by Appellant, our reviewing courts provide clear guidance: “Obviousness is not to be determined on the basis of purpose alone.” In re Graf, 343 F.2d 774, 777 (CCPA 1965). It is sufficient that references suggest7 doing what Appellant did, although the Appellant’s particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 538-39 (CCPA 1967)). For a prima facie case of obviousness to be established, the reference need not recognize the same problem solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). “[N]either the particular motivation nor the avowed purpose of the [Appellant] controls” when performing an obviousness analysis. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). 7 “[T]he question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). See also MPEP § 2123 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-000633 Application 13/961,263 9 But Appellant urges that “the entire intent of Maykov . . . is to avoid the execution delay (i.e., avoiding executing the delay action). Accordingly, Maykov teaches away from the claimed invention by specifically stating not to perform the action being claimed.” Appeal Br. 10 (emphasis omitted). However, the “mere disclosure of alternative designs does not teach away.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted). A “teaching away” requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). See also Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) (“A finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.”). We emphasize that Appellant states in the record: “The claims explicitly recite a ‘delay action.’ Paragraph [0048] of Markov explicitly describe[s] actions that perform a delay. Both Appellants’ [S]pecification [(¶ 47),] and the teachings of Markov [(¶ 48),] describe a ‘SetTimeout’ call as being an example of such an action.” Appeal Br. 11. We note that a reason to combine the cited references need not be supported by a finding that the proposed combination is the preferred, or most desirable, combination over other alternatives. Fulton, 391 F.3d at 1200. One with ordinary skill in the art is not compelled to follow blindly the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984); see also KSR, 550 U.S. at 420-21 (A person with ordinary skill in the art is “a person of ordinary creativity, not an Appeal 2021-000633 Application 13/961,263 10 automaton,” and “in many cases . . . will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). Moreover, Appellant has not demonstrated the Examiner’s combination of Maykov, Tsai, and Tuttle would have been “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) (citing KSR, 550 U.S. at 418). Nor has Appellant provided objective evidence of secondary considerations which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013). Accordingly, for at least these reasons, and on this record, we are not persuaded that the Examiner erred in combining the Maykov, Tsai, and Tuttle references. Independent Claim 21, Limitation L1 [L1] executing, after the initial document object model is captured, the delay action; Claim 21 (emphasis added). Regarding disputed limitation L1 of claim 21, Appellant contends: As described therein, Maykov’s purpose of identifying a delay action (i.e., in a script) is to avoid the delay action. In this regard, reference is made to the Abstract of Maykov, which states “Prior to interpretation, the scripts can be reviewed for delay conditionals, and such statements can be modified for more efficient interpretation” (emphasis added). However, the claimed invention specifically recites “executing . . . the delay action.” Accordingly, the teachings of Maykov are fundamentally different than the claimed invention. Appeal Br. 9. Appeal 2021-000633 Application 13/961,263 11 To the extent that Maykov may be directed to a different purpose than Appellant’s claimed invention, we have fully addressed this issue supra. And as noted above, Appellant acknowledges that both the Specification (at paragraph 47) and Maykov (at paragraph 48) describe the use of the same “setTimeout” method that performs a delay function when executed. On this record, and based upon a preponderance of the evidence, we agree with and adopt the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding limitation L1 of independent claim 21.8 Independent Claim 21, Limitation L2 [L2] capturing, after executing the delay action, a subsequent document object model of the web page; Claim 21 (emphasis added). Regarding disputed limitation L2 of claim 21, Appellant contends: The claims refer to capturing, after executing the delay action, a subsequent document object model of the web page. However, Tsai only generically refers to a “triggering events” - not a delay action. During a previous office action the Examiner has asserted that the “term ‘delay action’ . . . is overly broad.” However, a triggering event is not inherently (i.e., necessarily) a delay action. The triggering event of Tsai appears to be an event that triggers the generation of a new link path for a user to click or a web page link correspond to data provided to a form by a user. The Examiner presents no 8 See Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed. Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not expressly make any independent factual determinations or legal conclusions,” because it had expressly adopted the examiner’s findings). Appeal 2021-000633 Application 13/961,263 12 support for a finding that one having ordinary skill in the art would consider these to be a “delay action,” as claimed. Appeal Br. 12. But the Examiner relies upon Maykov for teaching the delay action: “Such delays (delay action) can be set through mechanisms such as the ‘SetTimeout’ property of a document object.” Final Act. 6 (citing Maykov ¶ 48). And nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Because Appellant’s arguments are directed to attacking the cited references individually, and not to the combined teachings and suggestions, as found by the Examiner (see Final Act. 5-9), on this record, we are not persuaded the Examiner erred. Accordingly, we sustain the Examiner’s rejection of representative independent claim 21, and grouped claims 23-25, 27-29, 31, and 32 (not argued separately), which fall with claim 21 under Group I. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-000633 Application 13/961,263 13 Group II Dependent Claims 22, 26, and 30 Representative dependent claim 22 recites: “The method of claim 21, wherein the delay action is identified from the initial document object model.” The Examiner finds that claim 22 is taught or suggested by Maykov at paragraph 35. See Final Act. 18. Appellant disagrees with the Examiner’s findings regarding claim 22: The Examiner’s analysis refers to a passage that teaches “the script analyzer can utilize a Document Object Model (DOM) 260 to provide a response 275 to a request 270 from one or more of the scripts being analyzed.” Utilizing a DOM (document object model) to provide a response to a request from a script does not teach or suggest identifying a delay action from a DOM. As claimed, the delay action is in the DOM and it is identified. As taught by Maykov, the DOM is used to respond to a script (i.e., the alleged delay action). These are not comparable. Thus, Maykov fails to teach the limitations at issue in dependent claim 22. Appeal Br. 19. In response, the Examiner further explains the basis for the rejection in the Answer: as shown in [] Maykov, “The script analyzer 44, as will be described further below, can utilize various mechanisms to analyze any scripts contained within the web page data received via communication 230 from the crawler 42.” And “the script analyzer can utilize a Document Object Model (DOM) 260 to provide a response 275 to a request 270 from one or more of the scripts being analyzed.” Ans. 11 (citing Maykov ¶ 35). Appeal 2021-000633 Application 13/961,263 14 The Examiner finds that “Maykov is capable of executing a script identified within a document object model.” Id. We note that paragraph 37 of Maykov describes, in pertinent part: some commands may require reference to the DOM 260. For example, a script requesting the relationship between two DOM objects may not be able to be responded to properly without building the DOM 260. In such a case, the script analyzer 44 can provide the web page data to the browser 250 via communication 240, and request that the browser generate the DOM 260 from the data. Once the DOM 260 is generated, the script analyzer 44 can reference the DOM when it receives a request 270 from a script that it is evaluating, and can thereby provide an accurate response 275 to the script. Given this description (id.), and given our discussion of the setTimeout Javascript method supra, we find the claim 22 limitation “wherein the delay action is identified from the initial document object model” would merely be a combination of familiar elements according to known methods that would do no more than yield predictable results. See KSR, 550 U.S. at 416. Because we find a preponderance of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness, we sustain the Examiner’s rejection of representative dependent claim 22, and grouped dependent claims 26 and 30 (not argued separately), which fall with representative claim 22 under Group II. See 37 C.F.R. § 41.37(c)(1)(iv); see also Appeal Br. 8 (i.e., we adopt Appellant’s proposed claim grouping). Appeal 2021-000633 Application 13/961,263 15 CONCLUSION Under 35 U.S.C. § 103, the Examiner did not err in concluding that claims 21-32 would have been obvious, at the time of Appellant’s invention, over the collective teachings and suggestions of the cited Maykov, Tsai, and Tuttle references. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21-32 103 Maykov, Tsai, Tuttle 21-32 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED