Ex Parte 7805025 et al

Patent Trial and Appeal BoardFeb 26, 2016

95000681 (P.T.A.B. Feb. 26, 2016)

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. 95/000,681 08/27/2012 7805025 13557-105153.R1 7654 23363 7590 02/29/2016 Lewis Roca Rothgerber Christie LLP PO BOX 29001 Glendale, CA 91209-9001 EXAMINER CRAVER, CHARLES R ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/29/2016 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 ____________ GOOGLE INC., Requester, v. VEDERI, LLC, Patent Owner ____________ Appeal 2015-001495 Reexamination Control 95/000,681 Patent 7,805,025 B2 Technology Center 3900 ____________ Before DENISE M. POTHIER, ANDREW J. DILLON, and IRVIN E. BRANCH, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.79, Requester has submitted a timely Request for Rehearing dated July 27, 20151 (hereafter the “Request”), requesting rehearing of the June 26, 2015 opinion (hereafter the “Opinion”) 1 See 37 C.F.R. § 1.7. July 26, 2015 was a Sunday. Appeal 2015-001495 Control 95/000,681 Patent 7,805,025 2 that affirmed (1) the Examiner’s rejection of claims 2–6, 8–10, 14–18, 20, 33–36, 56–60, 64–68, and 70–72 of U.S. Patent No. 7,805,025 B2 (“the ’025 patent) and (2) the Examiner’s determination favorable to patentability of claims 24, 26, 28, 29, 37, 38, 41, 42, 44–48, 51–54, 63, 75–84, and 86–88 of the ’025 patent. Opinion (Op.) 2–3, 28. Patent Owner timely submitted Comments in Opposition to the Request for Rehearing (hereafter “PO Comments”) on August 26, 2015. We have reconsidered the Opinion in light of Requester’s discussions in the Request and PO Comments. We find no errors. We therefore decline to change our prior decision for the following reasons. Notably, The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section. 37 C.F.R. §41.79(b)(1). Requester specifically asserts that “the Board erred in determining that Ishida does not teach the Web Page Limitations”2 (Request 3) under the broadest reasonable interpretation. Request 2–8. Additionally, Requester contends that, under either the allegedly proper claim construction or under 2 Requester states that the “Web Page Limitations” are “accessing a web page for the retail establishment; and invoking by the computer system a display of the web page on the display screen.” Request 2. Appeal 2015-001495 Control 95/000,681 Patent 7,805,025 3 the Board’s construction, Ishida teaches the Web Page Limitations. Request 3, 8–12. “Claims are given ‘their broadest reasonable interpretation, consistent with the specification, in reexamination proceedings.’” In re Trans Texas Holdings Corp., 498 F.3d 1290, 1298 (Fed. Circ. 2007) (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed.Cir.1984)). As noted in the Opinion, we considered the Specification of the ’025 patent. We found “a broad but reasonable construction of the disputed phrase [Web Page Limitations] includes invoking a display on the display screen of the web page for the retail establishment accessed.” Op. 26. Requester however asserts that we unreasonably narrowed the construction of the Web Page Limitations based on one embodiment in the ’025 patent. Request 3–4. We are not persuaded. As the Opinion indicates, we considered claim 28 as a whole and found antecedent basis for the phrase, “the web page” in the “invoking” step of Web Page Limitations. That is, we stated Claim 28 first recites, “accessing a web page for the retail establishment” and then further recites “invoking by the computer system a display of the web page on the display screen.” Due to its antecedent basis, we find that the “the web page on the display screen” refers the previously accessed “web page for the retail establishment. Op. 26 (italics added). That is, claim 28 recites “accessing a web page for the retail establishment” and “invoking by the computer system a display of the web page on the display screen.” PO App. Br. 29, Claims App. (italics added); see also PO Comments 6, 8. Appeal 2015-001495 Control 95/000,681 Patent 7,805,025 4 We further consulted the disclosure of the ’025 patent for the broadest reasonable interpretation of the Web Page Limitations, consistent with the specification of the ’025 patent. Id. (citing the ’025 patent 12:53–57). Our claim construction thus is not “based solely on th[e column 12] embodiment.” Request 3. Nor are we confining claim 28 to a single embodiment found in the disclosure of the ’025 patent. See Trans Texas, 498 F.3d at 1299. Rather, we construed the Web Page Limitations considering claim 28 as a whole and consistent with the ’025 patent’s disclosure. Op. 26. Also, as Patent Owner indicates and as we agree, claims, such as claim 28, do not encompass all disclosed embodiments found in the disclosure of the ’025 patent. PO Comments 8. Requester next argues that “[u]nder the broadest reasonable interpretation, the Web Page Limitations require displaying information relating to a retail establishment on a web page. The Web Page Limitations do not require displaying a retail establishment’s own web page as under the Board’s improperly narrow interpretation . . .” Request 3 (bolding omitted, italics in original), 5. As noted in the Opinion, this argument was previously presented by Requester and has not been overlooked. Op. 25–26 (noting Requester contends “Ishida provides web information ‘as part of the virtual tourist experience’” and that this discussion in Ishida teaches the “invoking” step). Further, as discussed above, we maintain “that the ‘the web page on the display screen’ [limitation that is part of the Web Page Limitations] refers [to] the previously accessed ‘web page for the retail establishment.’” Op. 26. Appeal 2015-001495 Control 95/000,681 Patent 7,805,025 5 We therefore disagree with Requester’s position reiterated in the Request that the recitation to “the web page on the display screen” broadly includes “information relating to a retail establishment” alone (Request 5 (bolding omitted)) without a display of the web page for the retail establishment as recited in claim 28. Requester enlists other portions of the ’025 patent’s disclosure to support a broader claim construction. Request 5–8. Specifically, for the first time on appeal, Requester discusses Figure 16 of the ’025 patent and icons 234 purportedly disclosing two embodiments that read on claim 28. See Request 5–7 (citing the 25 patent 12:48–56, Fig. 16). Requester asserts we ignored or overlooked the “first embodiment” described in column 12, lines 48 through 53. Request 7. We disagree. First, we did not overlook this argument concerning Figure 16 and icons 234 in the ’025 patent, for this position regarding the icons is being asserted by Requester for the first time in the Request. Compare Request 5– 7 with 3PR App. Br. 15–16. Second, as noted above, claims, such as claim 28, need not encompass every embodiment discussed in the ’025 patent’s disclosure, and the discussion at column 12 does not describe another embodiment of the recited “invoking” step of the Web Page Limitations in claim 28. See PO Comments 8. Third, we previously determined there is a difference between displaying information related to a web site for a retail establishment and invoking a display of the web page on the display screen as recited in claim 28. See Op. 26–27 (stating “Ishida's system obtains information from a web page, such as bus stops in Kyoto, and presents that information within its map. See [Ishida 29]. . . . Ishida fails to disclose or Appeal 2015-001495 Control 95/000,681 Patent 7,805,025 6 suggest invoking a display of the retail establishment's web page on the display screen as recited.”). Requester further contends that the icons in the ’025 patent represent retail establishments. Request 7 (citing ’025 patent 12:17–47). We note that this argument is also being raised for the first time on appeal and is not permitted in the request for rehearing. Compare id. with 3PR App. Br. 15–16. Even so, as stated previously, icons that provide information from or related to a web page do not “invoke[] . . . a display of the web page on the display screen” as recited in claim 28. Rather, the related information in Ishida— not the web page itself— is invoked as a display on the display screen. Requester even further contends that our claim construction is inconsistent with and narrower than the Examiner’s. Request 4–5 (citing RAN 73). Concerning claim 28, the Examiner similarly focuses on the antecedent basis in claim 28 and states “Ishida does not disclose accessing a web page for a retail establishment, nor does the reference disclose invoking and displaying said web page [for retail establishment] on the display screen.” RAN 73 (italics added). The Examiner further states that “Ishida merely discloses ‘integrating WEB information’ . . ., though it is not disclosed that this step . . . displays any restaurant web page as the claim requires.” Id. (emphasis added). Thus, contrary to Requester’s assertions, we determine our claim construction in the Opinion is consistent with the Examiner’s. Next, Requester asserts that Ishida teaches the Web Page Limitations. Request 8–12. We addressed this argument in our previous Opinion. Op. Appeal 2015-001495 Control 95/000,681 Patent 7,805,025 7 25–27. Based on either the Board’s or the Requester’s claim construction, Requester specifically contends that Ishida not only teaches displaying information related to retail establishments but also displaying web pages belonging to the retail establishments. Request 9–11. For support, Requester asserts that people register their pages to their digital city and shopkeepers can have their associated web page linked to the digital city shown in Ishida. Request 10 (citing Ishida 28–293). Requester further indicates Ishida teaches the shopkeeper can update its web page and Figure 5 that shows the locations of web pages, asserting these additional teachings in Ishida teach displaying the retail’s establishment’s own web page. Request 10–11 (citing Ishida 28–29). We find this argument unavailing. First, some of the arguments, such as those concerning updating the web page and Figure 5 in Ishida, are being raised for the first time in the Request. In the briefs, for example, Requester discusses Ishida teaches (1) “providing Web information as part of the virtual tourist experience that allows users to access the geographical indexed websites” (3PR App. Br. 15), registering web pages (id.), “integrat[ing] ‘information from various private companies such as the availability of parking lots, restaurant tables, and so on” (id. (quoting Ishida 29–30)), and “allow[ing] users to ‘use real-time information to make a plan for daily shopping’” (3PR App. Br. 15–16 (quoting Ishida 30)). Now, 3 As noted in the Opinion, Ishida is numbered pages 23 through 35. See Op. 4 and Request 1 n.1. Requester however numbers these pages sequentially in the Request using pages 2, 3, and 6–8. Request 8–11; PO Comments 9 n. 2. For purposes of this opinion, we presume that page 2 corresponds to page 24, page 3 corresponds to page 25, and so on. Appeal 2015-001495 Control 95/000,681 Patent 7,805,025 8 Requester is contending further that shopkeepers can update their pages and that the geographic locations associated with registered web pages display the retail establishment’s web page. Request 10–12. Such new arguments not raised in the briefs are not permitted and could not have been overlooked or misapprehended. 37 C.F.R. § 41.79(b)(1). To the extent the arguments were previously presented (Request 11 (discussing 3PR App. Br. 15–164)), we are not persuaded that such information invokes “a display of the web page [for the retail establishment]” as recited in claim 28 based on our claim construction as discussed above and in our previous Opinion. Op. 27. That is, Ishida does not articulate that the web page for a retail establishment is invoked as a display. Rather, as understood, Ishida teaches presenting information obtained from a web page— not the web page itself— within its maps. Id. (citing Ishida 29); PO Comments 10–11. Moreover, shopkeepers having their associated web page linked to the digital city and having people register their pages to their digital city do not establish sufficiently that a display of the shopkeepers web pages are invoked as recited in claim 28. Rather, Ishida suggests linking information on the web pages to its map in order to display the information. See Op. 27 (stating “Ishida’s system obtains information from a web page, such as bus stops in Kyoto, and presents that information within its map. See [Ishida 29].”); see PO Comments 11–13. 4 Based on the quote, we presume Requester intended to refer to pages 15 and 16 of its brief and not page 12 as stated in the Request. Request 11. Appeal 2015-001495 Control 95/000,681 Patent 7,805,025 9 For the above reasons, Requester has not demonstrated that we misapprehended or overlooked any points that were raised by Requester in its briefs. 37 C.F.R. § 41.52. We have considered the arguments raised by Requester in the Request, but the arguments are not persuasive to find that the original decision was in error. Based on the record before us now and in the original appeal, we are still of the view that the Examiner did not err in confirming claims 24, 26, 28, 29, 37, 38, 41, 42, 44–48, 51–54, 63, 75–84, and 86–88 of the ’025 patent. We have granted the Request to the extent that we have reconsidered our decision of June 26, 2015, but we deny the request with respect to making any changes therein. REHEARING DENIED Appeal 2015-001495 Control 95/000,681 Patent 7,805,025 10 ack FOR PATENT OWNER: CHRISTIE, PARKER & HALE, LLP PO BOX 29001 Glendale, CA 91209-9001 FOR THIRD-PARTY REQUESTER: STEPTOE & JOHNSON LLP 1330 CONNECTICUT AVENUE N.W. WASHINGTON, DC 20036