Ex Parte 5974447 et al

Patent Trial and Appeal BoardNov 13, 2012

90010888 (P.T.A.B. Nov. 13, 2012)

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. 90/010,888 03/05/2010 5974447 0113518.00123US19 5704 22850 7590 11/13/2012 OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER POKRZYWA, JOSEPH R ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/13/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte Motorola Mobility, Inc. ____________________ Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 Technology Center 3900 ____________________ Before RICHARD M. LEBOVITZ, STEPHEN C. SIU, and MICHAEL R. ZECHER, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Patent Owner, Motorola Mobility, Inc., appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1 and 8 of U.S. Patent No. 5,974,447 (“the ‘447 patent”). App. Br. 3. This appeal arose from a request for ex parte reexamination of claims 1 and 8 of the ‘447 patent filed on March 5, 2010. Original claims 2-7 and 9-17 were not subject to this reexamination proceeding. Id. We heard oral arguments from the Patent Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 2 Owner on November 7, 2012, a written transcript of which will be entered into the electronic record in due course. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(b), and 306. We affirm. The Invention Claimed in the ‘447 Patent The invention claimed in the ‘447 patent generally relates to selective call transceivers and, in particular, to retrieving information from a widely distributed information source using a selective call transceiver. Spec. 1:7- 10. Figure 1 of the ‘447 patent is reproduced below. Figure 1 illustrates a communication system 10 that operatively couples a selective call transceiver 18 to a widely distributed information resource 24. Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 3 Spec. 2:19-21. Communication system 10 also comprises a server 22 coupled to the widely distributed information resource 24, wherein the server 22 contains agents for retrieving information customized for the selective call transceiver 18. Id. at 2:22-26. The selective call transceiver 18 is operatively coupled to the widely distributed information resource 24 via paging terminal 20. Id. at 2:26-29. The paging terminal 20 allows selective call transceiver 18 to request information from the server 22, which in turn retrieves the requested information from widely distributed information resource 24 and transmits such information back to selective call transceiver 18. Id. at 2:29-35. Claims on Appeal The original claims on appeal are independent claims 1 and 8. Independent claim 1 was amended in a response filed January 20, 2011. App. Br. 3. The Examiner subsequently entered the amendment to independent claim 1 in the Final Rejection mailed May 26, 2011. Fin. Rej. 2. Independent claim 8 was not amended during this reexamination proceeding. App. Br. 3. Independent claims 1 and 8 read as follows (with underling showing added text relative to the original claims): 1. A method for coupling a selective call transceiver to a widely distributed information source, comprising the steps of: operatively coupling a server to the widely distributed information source, wherein the server contains agents for retrieving predetermined information from the widely Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 4 distributed information source that is customized for a given selective call transceiver; originating, at a communication terminal operatively coupled to the server, a request of the server for such predetermined information to be provided to the selective call transceiver; and retrieving the predetermined information from the widely distributed information source using the agents in the server. Supplemental Claims Appendix—Ans. 21. 8. A communication system for coupling a selective call transceiver to a widely distributed information source, comprises: a server coupled to the widely distributed information source, wherein the server contains agents for retrieving predetermined information customized according to identified capabilities of a requesting selective call transceiver; a paging terminal coupled to the server for allowing the selective call transceiver to request such predetermined information from the server; and a transmitter for transmitting the predetermined information retrieved from the widely distributed information source to the selective call transceiver. Id. Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 5 Prior Art Relied Upon Armando Fox & Eric A. Brewer, Reducing WWW latency and bandwidth requirements by real-time distillation, Computer Networks and ISDN Systems, 28 INT’L J. OF COMPUTER & TELECOMMS. NETWORKING 1445, 1445-56 (1996) [hereinafter “WWW Latency”]. Anupam Joshi et al., Mowser: Mobile Platforms and Web Browsers, (January 22, 1996) (thesis, Perdue University)(on file with the Department of Computer Science) [hereinafter “Mowser”]. Other Evidence The Patent Owner relies on the Declaration of John L. Friend filed on March 5, 2010 (“Friend Decl.”), to indicate the ordinary and customary meaning of the claim term “agent” at the time the ‘447 patent was filed. Friend Decl. ¶¶ 16 and 21. The Rejections Under Appeal 1. Claim 8 was rejected under 35 U.S.C. § 102(a) as being anticipated by WWW Latency.1 Ans. 5; see also Fin. Rej. 11-12. 2. Claims 1 and 8 were rejected under 35 U.S.C. § 102(a) as being anticipated by Mowser. Ans. 5; see also Fin. Rej. 7-10. 1 The Examiner withdrew the rejection of claim 1 under 35 U.S.C. § 102(a) as being anticipated by WWW Latency. Ans. 3 and 5. Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 6 The Examiner’s Findings and Conclusions 1. The Examiner finds that WWW Latency’s Pythia proxy server is implemented in Perl language structure that is otherwise known as a scripting language or executable program code. Ans. 8 (citing pgs. 1454-55). The Examiner finds that WWW Latency’s Pythia proxy server invokes this executable program code on behalf of the client browser to achieve a number of predetermined goals, including: (1) real-time distillation and refinement; (2) transcoding to a representation understood directly by the client; and (3) knowledge of client display constraints that allows content to be optimized for rendering on the client. Ans. 8-9 (citing pg. 1455, col. 2). Therefore, consistent with the broadest reasonable interpretation of an “agent” presented by Appellant in the Friend Declaration, the Examiner finds that WWW Latency’s Pythia proxy server includes software that functions as the “agents” recited in independent claim 8. Ans. 11. 2. The Examiner finds that Mowser’s proxy server is a modified version of a Hypertext Transfer Protocol (hereinafter “HTTP”) server written in Perl language structure that is otherwise known as scripting language or executable program code. Ans. 11 (citing pg. 6, col. 1). The Examiner finds that Mowser’s proxy server invokes this executable program code on behalf of a mobile host (hereinafter “MH”) in order to allow the web server to take into account the limits and preferences of the MH, such that “the proxy server can modify the file before sending it to the MH.” Id. (citing pg. 4, col. 2). Therefore, consistent with the broadest reasonable interpretation of an “agent” Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 7 presented by Appellant in the Friend Declaration, the Examiner finds that Mowser’s Mobile Support Station (hereinafter “MSS”) contains both a cache and proxy server, which in turn function as the “agents” recited in independent claims 1 and 8. Ans. 10-11. Appellant’s Contentions 1. Appellant contends that WWW Latency’s cached image data is not “predetermined information” as recited in independent claim 8 because it is not transmitted from a widely distributed information source. App. Br. 5-6. Further, Appellant references Mr. Friend’s testimony in his written declaration in which he provided a definition of an “agent” and asserts that the “agents” recited in independent claim 8 are contained in the server for achieving a predetermined goal—namely retrieving predetermined information. App. Br. 6 (emphasis omitted). Appellant argues that WWW Latency’s alleged agents do not retrieve predetermined information upon invocation, and have no preconceived goal relative to predetermined information. Id. In other words, Appellant asserts that the claimed “agents” have a predetermined goal of retrieving predetermined information, whereas the mechanisms of WWW Latency have a predetermined goal of “real-time distillation and refinement.” App. Br. 6; Reply Br. 2-3. In addition, Appellant contends that while the proxy aspects of WWW Latency demonstrate executable functionality, these features do not properly identify the claimed “agents” because they pass through HTTP GET requests on behalf of the requesting device. App. Br. 6-7. Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 8 2. Appellant contends that Mowser’s proxy server, which is coded in executable language such as PERL, simply passes on communications to another device. App. Br. 7. Appellant argues that relaying such communications does not describe the operation of agents contained in a server for retrieving predetermined information, as required by independent claims 1 and 8. Id. Further, Appellant contends that because Mowser’s HTTP GET communication originates in the MH to retrieve specified information, such information is not retrieved by an agent contained in the server that has a preconceived goal. App. Br. 8; Reply Br. 3-4. Appellant alleges that even if Mowser’s default uniform resource locator (hereinafter “URL”) or homepage constitutes the claimed “predetermined information,” Mowser discloses that the HTTP GET request of the MH—not a server retrieval agent—operates to retrieve the URL or homepage. App. Br. 8; Reply Br. 6. II. ISSUES 1. Did the Examiner error in determining that WWW Latency describes “[a] server [that] contains agents for retrieving predetermined information customized according to identified capabilities of a requesting selective call transceiver[,]” as recited in independent claim 8? 2. Did the Examiner error in determining that Mowser describes “[a] server [that] contains agents for retrieving predetermined information from [a] widely distributed information source that is customized for a given Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 9 selective call transceiver[,]” as recited in independent claim 1, and similarly recited in independent claim 8? III. ANALYSIS Claim Construction We begin our analysis by first considering the scope and meaning of the claim term “agent,” which must be given its broadest reasonable interpretation consistent with Appellant’s disclosure in the ‘447 patent. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that during examination “claims must be interpreted as broadly as their terms reasonably allow”). Upon reviewing the Specification of the ‘447 patent, we agree with the Examiner that it does not set forth a special definition for the claim term “agent.” Ans. 15-16. Therefore, we look to its ordinary and customary meaning. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (claim terms are “generally given their ordinary and customary meaning”). Appellant presents the Friend Declaration as evidence that an “agent” would be understood by an ordinarily skilled artisan to mean an executable computer program that is invoked on behalf of another entity to achieve a predetermined goal. App. Br. 5; see also Friend Decl. ¶¶ 16 and 21. The Examiner accepts the definition of an “agent” offered by Mr. Friend. Ans. 8-9 and 10-11. In addition, the Examiner cites to two prior art Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 10 references—Civanlar2 and Chow3—that interchange the term “agent” with a proxy type server. Ans. 14-15. The Examiner indicates that those prior art references serve as evidence that a proxy type server can act as an “agent.” Id. Consequently, we adopt Mr. Friend’s definition as the broadest reasonable interpretation of the claim term “agent.” With this claim construction in mind, we turn to the merits of the Examiner’s anticipation rejections. 35 U.S.C. § 102(a) Rejection—WWW Latency Claim 8 of the ‘447 Patent Based on the record before us, we do not discern error in the Examiner’s anticipation rejection of independent claim 8, which recites, inter alia, “[a] server [that] contains agents for retrieving predetermined information customized according to identified capabilities of a requesting selective call transceiver[.]” In formulating the anticipation rejection of independent claim 8, the Examiner relies upon WWW Latency’s Figure 2. Ans. 7-8; see also Fin. Rej. 10-11. Figure 2 is reproduced below. 2 U.S. Patent No. 6,298,120 B1, issued October 2, 2001 (filed June 28, 1996). 3 U.S. Patent No. 6,029,175, issued February 22, 2000 (filed June 7, 1996). Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 11 Figure 2 illustrates a Phythia proxy server, which serves as a conduit betweeen the client browser and a widely distributed information source such as the Internet. Pg. 1449, cols. 1-2. Further, WWW Latency discloses that the current implementation of Pythia is unoptimized Perl. Pg. 1455, col. 1. We agree with the Examiner that the Perl language structure invoked on WWW Latency’s Pythia proxy server constitutes scripting language or executable program code. Ans. 8-9. It does not appear that Appellant disputed this determination. Therefore, WWW Latency’s Pythia proxy server contains executable program code that retrieves requested or predetermined image data from the Internet (see, e.g., the Joint Photographics Expert Group (“JPEG”) image disclosed on pg. 1449, col. 2) and, subsequently, distills and refines such an image according to the identified capabilities of a given client. In particular, we find that the executable program code invoked on behalf of WWW Latency’s Pythia proxy server achieves numerous goals, including Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 12 distilling and refining image data (pg. 1455, col. 2) and, therefore, properly accounts for the claimed “agents.” Thus, the Examiner’s determination that WWW Latency describes the disputed claim limitation is supported by the evidence. Ans. 7-9. We are not persuaded by Appellant’s argument that WWW Latency’s cached image data does not amount to the “predetermined information” recited in independent claim 8 because it is not transmitted from a widely distributed information source. App. Br. 5-6. While WWW Latency discloses that the Pythia proxy server caches a copy of image data locally to minimize latency (pg. 1454, col. 2), WWW Latency also discloses that web browsers generally employ a proxy server to obtain documents or images from the appropriate server on a client’s behalf (pg. 1449, col. 1). In this case, WWW Latency’s Pythia proxy server performs the function of retrieving image data from the Internet (pg. 1449, cols. 1-2) prior to caching the image data locally in order to minimize latency (pg. 1454, col. 2). Once the client requests to distill and refine this image data (pg. 1453-54), WWW Latency’s Pythia proxy server retrieves the predetermined image data from the cache, distills and refines the image data (pg. 1453, cols. 1-2), and then transmits it to the client (pg. 1454, col. 1). The relevant portions of independent claim 8 recite “retrieving predetermined information” and “the predetermined information retrieved from the widely distributed information source.” The scope and breadth of independent claim 8 does not preclude storing image data transmitted from the Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 13 Internet in a cache prior to retrieving such predetermined data from the cache. As such, we agree with the Examiner that WWW Latency’s cached image data constitutes the claimed “predetermined information.” Ans. 16-17. Next, we are not persuaded by Appellant’s argument that the claimed “agents” have a predetermined goal of retrieving predetermined information, whereas the mechanisms of WWW Latency have a predetermined goal of “real- time distillation and refinement.” App. Br. 6; Reply Br. 2-3. WWW Latency discloses the Pythia proxy server achieves three important goals, one of which is “[r]eal-time distillation and refinement.” Pg. 1455, col. 2. WWW Latency also discloses that the Pythia proxy server achieves the following two goals: (1) “[t]ranscoding to representation understood directly by the client may improve rendering on the client or result in a representation that can be transmitted more efficiently[;]” and (2) “[k]nowledge of client display constraints allows content to be optimized for rendering on the client.” Id. In light of our analysis supra, we find that the executable program code invoked on behalf of WWW Latency’s Pythia proxy server properly accounts for the claimed “agents” because it achieves any one of the three goals—all of which satisfy our claim construction because they the fall within the purview of a predetermined goal. We therefore sustain the Examiner’s rejection of independent claim 8 of the ‘447 patent under 35 U.S.C. §102(a) as being anticipated by WWW Latency. Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 14 35 U.S.C. § 102(a) Rejection—Mowser Claims 1 and 8 of the ‘447 Patent Based on the record before us, we do not discern error in the Examiner’s anticipation rejection of independent claim 1, which recites, inter alia, “[a] server [that] contains agents for retrieving predetermined information from [a] widely distributed information source that is customized for a given selective call transceiver[.]” We also do not discern error in the Examiner’s anticipation rejection of independent claim 8, which recites a similar claim limitation. In formulating the anticipation rejection of independent claims 1 and 8, the Examiner relies upon Mowser’s Figure 1. Ans. 10; see also Fin. Rej. 7-8. Figure 1 is reproduced below. Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 15 Figure 1 illustrates a MH coupled to an MSS, which in turn contains two servers: (1) a proxy server that serves files based on preferences; and (2) a caching server that stores the preferences for the MH. Pg. 2, col. 2-pg. 3, col. 1. Mowser discloses that all communication between the MS and the World Wide Web (“WWW”) is done through the MSS. Pg. 3, col. 1. Further, Mowser discloses that the proxy server is a modified version of an HTTP server written in Perl. Pg. 6, col. 1. We agree with the Examiner that the Perl language structure invoked on Mowser’s proxy server constitutes scripting language or executable program code. Ans. 11. It does not appear that Appellant disputed this determination. Thereforewe find that Mowser’s proxy server contains executable program code that retrieves predetermined information for the MH from the WWW (see, e.g., the GET requests disclosed on pg. 6, col. 1), and customizes such information according to the identified preferences of the MH (id.). In particular, we find that the executable program code invoked on behalf Mowser’s proxy server achieves the goal of allowing the MH to set its own preferences (pg. 2, col. 2) and, therefore, properly accounts for the claimed “agents.” Thus, the Examiner’s determination that Mowser describes the disputed claim limitation is supported by the evidence. Ans. 9-11. We are not persuaded by Appellant’s argument that because Mowser’s HTTP GET communication originates in the MH to retrieve specified information, such information is not retrieved by an agent contained in a server that has a preconceived goal. App. Br. 8; Reply Br. 3-4. Mowser discloses that Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 16 once the preference file of the MH is stored in the cache server, the proxy server starts the browsing session by loading the default URL or homepage defined in the preference file. Pg. 4, col. 2. After the proxy server retrieves the default URL or homepage defined in the preference file from the WWW, Mowser discloses that all subsequent HTTP GET requests are handled by the proxy server. Id. In light of our analysis supra, we find that the executable program code invoked on behalf of Mowser’s proxy server properly accounts for the claimed “agents” because it retrieves the predetermined URL or homepage from a widely distributed information resource such as the WWW. By retrieving the predetermined URL or homepage from the WWW, the executable program code invoked on behalf of Mowser’s proxy server achieves the goal of customizing information for the MH based on the default values stored in the preference file. Pg. 2, col. 2; pg. 4, col. 1. We therefore sustain the Examiner’s rejection of independent claims 1 and 8 of the ‘447 patent under 35 U.S.C. §102(a) as being anticipated by Mowser. IV. DECISION The Examiner’s decision to reject independent claim 8 of the ‘447 patent under 35 U.S.C. § 102(a) as being anticipated by WWW Latency is affirmed. The Examiner’s decision to reject independent claims 1 and 8 of the ‘447 patent under 35 U.S.C. § 102(a) as being anticipated by Mowser is also affirmed. Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 17 Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED KMF Appeal 2012-009476 Reexamination Control 90/010,888 U.S. Patent No. 5,974,447 18 For Patent Owner: OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, P.C. 1940 Duke Street Alexandria, VA 22314 For Third Party Requester: WILMER CUTLER PICKERING HALE AND DORR, LLP 1875 Pennsylvania Avenue, NW Washington, D.C. 20006