Ex Parte Christfort et al

Patent Trial and Appeal BoardSep 17, 2012

09947910 (P.T.A.B. Sep. 17, 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. 09/947,910 09/05/2001 Jacob Christfort 50277-1689 6425 42425 7590 09/17/2012 HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE 1 Almaden Boulevard Floor 12 SAN JOSE, CA 95113 EXAMINER PATEL, CHIRAG R ART UNIT PAPER NUMBER 2454 MAIL DATE DELIVERY MODE 09/17/2012 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 JACOB CHRISTFORT and JEREMY CHONE ____________ Appeal 2010-000332 Application 09/947,9101 Technology Center 2400 ____________ Decided: July 2, 2012 Before JEAN R. HOMERE, GREGORY J. GONSALVES, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Filed on September 5, 2001. The real party in interest is Oracle International Corporation. (App. Br. 1.) Appeal 2010-000332 Application 09/947,910 2 STATEMENT OF THE CASE In a paper filed August 31, 2012, Appellants request a rehearing under 37 C.F.R. §41.52 from the Opinion of the Board of Patent Appeals and Interferences (hereinafter referred to as the “Board”) dated July 2, 2012. In the Opinion we affirmed the Examiner’s rejection of claims 1-32. Appellants allege that the Board misapprehended or overlooked the requisite factual and legal basis necessary to affirm those rejections. (Req. Reh’g. 2- 11). We summarize Appellants’ principal allegations of error as follows: (1) Appellants allege, with respect to independent claim 1, that the combination of the Tso and Reisman references fails to teach or suggest a method for operating an intermediary which includes an “intermediary locating within the first content a reference to second content” and “based on said reference, the intermediary sending over the network a third request to said second service for the second content and receiving over the network a second reply from the second service that includes the second content” and then “generating combined content at the intermediary based on the first content from said first service and the second content from said second service.” (Id. at 2-7.); (2) Appellants allege, that in a manner similar to claim 1, independent claim 4 recites an intermediary which locates a reference to a second service within first content, and then generates a reply which includes an object associated with the second service which can be subsequently selected by a client to cause the intermediary to retrieve content from the second service. Specifically, Appellants urge that the cited combination of Tso, Reisman and Elsey fails to teach or suggest “generating a second reply at the intermediary based on the first content from said first service, wherein said second reply Appeal 2010-000332 Application 09/947,910 3 includes, based on said reference, an object associated with said second service, wherein said object is generated by the intermediary” and “in response to a selection of said object by said client, the intermediary sending over the network a third request to said second service for the second content and receiving over the network a third reply from the second service that includes the second content.” (Id at 7-9.); and, (3) With regard to independent claim 7, Appellants allege that the steps of “storing, at said intermediary, a record that indicates that said end user requested said first content from said first service” and “reading said record to determine that said first service is said service from which content was requested by said end user” are not taught or suggested by the combination of Tso and Smith. (Id at 9-11.) PRICIPLES OF LAW 37 C.F.R. § 41.52 states: A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section. ANALYSIS We have carefully reviewed the Opinion in light of Appellants’ allegations of errors. We will address those remarks in the order in which they are presented in the Request, and as outlined above. The basis for Appellants’ arguments regarding claim 1 is their assertion that the combination of Tso and Reisman “might yield a modified Appeal 2010-000332 Application 09/947,910 4 version of Tso’s client 1 that has prefetching capabilities along with a DAM for displaying advertisements, but such a modified version of Tso’s client 1 is not an intermediary that performs the recited steps of claim 1.” (Id at 5) The Examiner found that Tso discloses a remotely located intermediary which permits clients to access multiple services. Ans. 3. The only intermediary described within the cited portion of Tso is network device 4, which Tso discloses includes an advertising service provider 5 capable of embedding advertising content into web pages downloaded to a client. The Examiner acknowledged that Tso failed to disclose that the content provided to the client included additional content referenced within first content. Id at 4. For that purpose the Examiner cites Reisman which discloses pre- fetching additional data objects referenced by a first data object. Id. at 4. As noted by Appellants, Reisman discloses such pre-fetching takes place within a client, and not at an intermediary device. Req. Reh’g. 3. In our original analysis we found that the Examiner’s proposed combination of Tso and Reisman suggested the claimed features argued by Appellants in their Appeal Brief and in their Request For Rehearing by yielding a modified version of Tso’s network device 4 which includes the pre-fetching capabilities disclosed within Reisman. (Op. 5-6) We find that the ordinarily skilled artisan, upon reading these references would note the use of an intermediary (network device 4) within Tso that can add additional content to a requested web page and the known practice of pre-fetching second content referenced within first content, as taught by Reisman. We find that as it is well known to examine requested first content for references to second content contained therein which may be pre-fetched, albeit at the Appeal 2010-000332 Application 09/947,910 5 client level, and it is also known that an intermediary device (Tso’s network device 4) can add additional content to a requested web pages, the Examiner’s proposed combination to yield an intermediary device that finds a reference to second content contained therein and pre-fetches that second content is merely a “combination of familiar elements according to known methods” which “is likely to be obvious when it does no more than yield predictable results,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007). We are therefore satisfied that the combination of Tso and Reisman teaches or suggests the claimed features argued by Appellants of an “intermediary locating within the first content a reference to second content” and “based on said reference, the intermediary sending over the network a third request to said second service for the second content and receiving over the network a second reply from the second service that includes the second content” as set forth in our original opinion. Regarding claim 4, Appellants argue that like claim 1, claim 4 recites that when a reference is located to second content, within the first content, rather than prefetching that second content, an object is included in the content provided which may then be selected by the client to initiate a request for the second content. Appellants argue that Elsey, cited by the Examiner to suggest such an object, does not disclose “in response to a selection of said object by said client, the intermediary sending over the network a third request to said second service for the second content and receiving over the network a third reply from the second service that includes the second content” as required by claim 4. Appellants specifically argue that the data retrieved in response to selection of the hyperlink is not Appeal 2010-000332 Application 09/947,910 6 retrieved over a network, is not “remote” relative to server 28 and is not provided by server 28 of Elsey. Req. Reh’g. 8. We find Appellants’ arguments unpersuasive. As noted in our original opinion, the Examiner only relies on Elsey for the disclosure therein of the preparation of a “hyperlink” (an object) and retrieving content in response to selection thereof. The “remote” nature of the data retrieved, the retrieval of that data over a network and the nature of the element performing the retrieval are disclosed within the other references cited by the Examiner. (Tso and Reisman). As we noted in our original opinion, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Finally, with regard to claim 7, Appellants argue that Tso and Smith fail to teach or suggest the steps of “storing, at said intermediary, a record that indicates that said end user requested said first content from said first service” and “reading said record to determine that said first service is said service from which content was requested by said end user.” Specifically, Appellants argue that Smith, relied upon by the Examiner for disclosing the storing and reading of a record which indicates the service from which an end user requested content, fails to meet the claimed features of determining which service the client had previously requested. Req. Reh’g. 10-11. Once again we find the Appellants have attacked the references individually where the Examiner’s rejection is based upon a combination of references. As noted in our original opinion, the citation of Smith by the Examiner was relied upon to suggest the claimed features of “storing, at said Appeal 2010-000332 Application 09/947,910 7 intermediary, a record that indicates that said end user requested said first content from said first service” and “reading said record to determine that said first service is said service from which content was requested by said end user.” Nothing within those particular limitations requires the aforementioned storing and reading steps to track which service the client had previously requested. The Examiner expressly relies upon Tso for those features, as set forth in the Answer at pages 10-11. Consequently, we are unconvinced of error regarding claim 7 in our original opinion. CONCLUSION In conclusion, based upon the foregoing, we have granted Appellants’ Request to the extent we have reconsidered our Decision, but we deny Appellants’ request to make any change therein. REQUEST FOR REHEARING-DENIED pgc