Ex Parte Hopkins

Patent Trial and Appeal Board

Jan 16, 2014

10287177 (P.T.A.B. Jan. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER D. HOPKINS
____________

Appeal 2011-001443
Application 10/287,177
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant filed a Request for Rehearing (herein “Request”) under 37
C.F.R. § 41.52 from our Decision on Appeal (herein “Decision”). Req.
Reh’g, p. 1. The Request appeals the Decision’s new ground of rejection
under 37 C.F.R. § 41.50(b) and seeks an oral hearing. Id. We maintain the
rejection and deny oral hearing.
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APPELLANT’S INVENTION
Appellant’s invention – “Offline Simulation of Online Session
between Client and Server” (Spec. 1, ll. 1-2 (title)) – is described with
reference to an “online session” and “offline session.” Spec. 2, ll. 5-32. The
online session is summarized as follows:
During an online session, the data and the functional logic that
is invoked to manipulate the data reside on the remote server.
As such, the user transmits instructions to view, create, update,
delete, or otherwise modify portions of data through the local
interface and subsequently through the underlying network.
These instructions are ultimately received at the remote server,
which then invokes the proper functional logic to perform the
instructions in order to manipulate the data.
Spec. 2, ll. 8-13. The offline session is summarized as follows:
In preparation for simulating an online session when the
client is offline, when the client is online, it imports at least a
subset of the data that resides at the remote server.
Furthermore, the client imports at least a subset of the
functional logic used to manipulate the data as an embedded
portion of a format or document that is capable of being
interpreted and performed by the local interface. To initiate an
offline session, the user invokes the local interface (as in the
online session). However, rather than accessing the remote
server, the local interface accesses local documents formatted
with the embedded functional logic. As in the online session,
the user transmits instructions to view, create, update, delete, or
otherwise modify portions of data through the local interface.
However, rather than transmitting the instructions through an
underlying network, the local interface invokes the embedded
functional logic in the documents to manipulate the imported
data in response to the instructions.
Spec. 2, ll. 14-24.
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Claim 1 is reproduced below.
1. A method for simulating, at a client, an online database
session between the client and a remote server when the client
is offline, the remote server including data organized into a
database and functional database server logic, the method
comprising:
providing, by the client while the client is online, a local
interface to a database application residing on the remote
server, the functional database server logic responding to
instructions received from the local interface of the client by
manipulating data in the database;
determining, while the client is online,
at least a subset of the data from the database, wherein
the subset is selected according to criteria for conducting an
offline session, and
at least a subset of the functional database server logic
for manipulating the subset of the data in an offline session
conducted only when the client is not connected to the server;
importing the at least a subset of the data and the
functional database server logic into at least one document,
wherein the functional database server logic is embedded into
the at least one document in a format capable of being used by
the local interface; and
simulating, only so long as the client is offline, an online
session with the database application by invoking the embedded
functional database server logic to manipulate the data imported
into the client so as to enable the local interface to respond to
instructions received through the local interface as if the client
and the remote server were in an online session.
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REJECTION
The Decision rejects claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Perinpanathan. Dec’n 6-10.
PERINPANATHAN
The following findings of fact (FF) are taught or suggested by
Perinpanathan as a whole.1
FF1. Perinpanathan addresses two deficiencies of online database
sessions; e.g., online sessions by which a traveling retail buyer
places an order with a supplier and traveling customer support
staff members enter related data to a head office server.
Perinpanathan ¶ 3. The first deficiency is unpredictable
disruptions of wireless online connections. Id. The second
deficiency is that, if multiple users share data, a collated record
of the data is created only after each user has connected to the
database server. Id. at ¶ 5.
FF2. Perinpanathan’s system addresses the first deficiency by
providing “online and offline interaction” and addresses the
second deficiency by providing a collaborated use of data
among multiple users. Id. at ¶¶ 6, 26-54 (online and offline
interaction), 55-95 (collaborated use); abst.

1 Appellant contends: “Saying that Perinpanathan ‘suggests’ … amounts to
admitting that it ‘fairly teaches’ less than the Decision reaches to find.” Req.
Reh’g 7. The Decision properly states “suggest” to denote an inference. Cf.,
In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom”). There is no proscription
against stating a reference “suggests” – as opposed to expressly describes – a
particular feature. Cf., Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 299 (Fed. Cir. 1985) (“[T]he Rothrock reference as a
whole suggested that water was retained during the reaction process.”).
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FF3. Perinpanathan summarizes a solution to the first deficiency as
follows:
The invention provides a … system … which may,
during online communications, retrieve content and an
online/offline agent tailored to the retrieved content, the
computing device being used and the interactive application
desired. Once retrieved, the content is stored in memory and
the online/offline agent commences execution. The
computing device may go offline while a user ... interacts
with the content and a tracking agent portion of the
online/offline agent tracks and stores the user’s interactions.
At any point the device may go back online (as a result of,
for example, a user’s selection or instruction, auto-discovery
of network connection/channel availability, etc.) and
communicate with a synchronization server – a device
adapted to receive and interpret tracking data.
Id. at ¶ 7.2
FF4. Perinpanathan’s first embodiment addresses the first deficiency
and includes a user device (UD), agent repository (AR), content
server (CS), synchronization server (SS), and at least one
online/offline agent (OOA). Id. at ¶¶ 15-18, 26, 37, 44; Figs. 1-
6.
FF5. The AR and/or CS provide at least one OOA to the UD. Id. at
¶¶ 28-29.
FF6. The CS also receives UD requests for remote content,
assembles responsive content (e.g., forms, applications, website
data, and content-specific OOA’s), and provides the content to
the UD. Id. at ¶¶ 29, 37, 50.
FF7. Perinpanathan suggests importing the content and a content-
specific OOA to the UD via an HTML document, in two

2 Unless stated otherwise, all ellipses and bracketed text herein have been
added (i.e., are not original text of a quotation).
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respects. First, Perinpanathan teaches: “As will be appreciated,
an OOA may be downloaded (or uploaded) using protocols
such as, for example, HTTP, FTP, proprietary socket based
methods, or the like.” Id. at ¶ 28. Second, Perinpanathan
teaches that the imported content can include a content-specific
OOA (id.) and be transmitted to the UD via an HTML page. Id.
at ¶ 50.
FF8. The SS receives “tracked data” of the UD (e.g., a record of the
UD’s interactions with imported content) and, in response,
synchronizes the corresponding remote data. Id. at ¶ 30. The
SS “may be part of … back-end systems for processing tracked
information and ultimately delivering the desired service to the
UD” (e.g., “customer relationship management systems,
expense processing systems, billing systems,…central
directories/repositories or the like”). Id.
FF9. The AR, CS, and SS may communicate with each other via
“intermediate systems such as a common database and/or back-
end processing system that deliver the desired services to a
UD[.]” Id. at ¶ 31. The AR, CS, and SS may also be co-
located as a single server. Id. at ¶¶ 31-32.
FF10. An OOA may include three agents – a tracking agent (TA),
content agent (CA), and synchronization agent (SA). Id. at ¶
28.
FF11. In response to a UD request for content (e.g., from an
“interactive application” of the UD), the CA selectively
retrieves either imported content from the UD cache or remote
content from the CS. Id. at ¶ 42. “[A]fter any necessary
content has been retrieved from a remote source[, the] UD …
will go ‘offline’ (i.e., terminating or suspending an open
communications session …).” Id. at ¶ 50.
FF12. The TA tracks UD interactions with imported content and
stores the tracked data in the UD cache. Id. at ¶ 40.
FF13. The SA provides the tracked data to the SS. Id. at ¶ 41.
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STANDARD OF REVIEW
Appellant must establish that the rejection does not present a prima
facie case of unpatentability because of (i) failing to meet the notice
requirement of 35 U.S.C. § 132, or (ii) erring with respect to “either … an
underlying finding of fact upon which the final conclusion of obviousness
was based … [or] the reasoning used to reach the legal conclusion of
obviousness.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(addressing the notice requirement); quoting Ex Parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (addressing the Board’s standard of
review).3
To prevail, an argument establishing an error must also demonstrate
resulting prejudice. As explained by the Federal Circuit:
[T]o prevail the appellant must not only show the existence of
error, but also show that the error was in fact harmful because it
affected the decision[.] See Munoz v. Strahm Farms, Inc., 69
F.3d 501, 504 (Fed.Cir.1995) (“The correction of an error must
yield a different result in order for that error to have been
harmful and thus prejudice a substantial right of a party.”); see
also Palmer v. Hoffman, 318 U.S. 109, 116, 63 S. Ct. 477, 87 L.
Ed. 645 (1943) (“He who seeks to have a judgment set aside
because of an erroneous ruling carries the burden of showing
that prejudice resulted.”).
In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (Gechter v. Davidson,
116 F.3d 1454, 1457 (Fed. Cir. 1997)).

3 Appellant may also submit evidence of secondary considerations of non-
obviousness. See Frye, 94 USPQ2d at 1075.
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ANALYSIS
Principle Argument
Appellant characterizes the claimed invention as an “online
sometimes simulated” implementation that operates primarily online but, if
and while pushed offline, simulates the online operations. Req. Reh’g 1.
Appellant contrastingly characterizes Perinpanathan’s invention as an
“offline sometimes synchronized” implementation that operates primarily
offline but, if and while online, synchronizes with other online devices. Id.
In Appellant’s words:
Claim interpretation or, perhaps, clarification of “simulating an
online database session only so long as the client is offline”
would readily distinguish over the reference, which teaches a
prior generation Palm/SynchML technology of offline content
interaction followed by limited synchronization of data entered
while offline. We refer below to these technologies by the
shorthands online sometimes simulated and offline sometimes
synchronized.
Id. (original emphasis).
The alleged distinction is not claimed. See In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts … are not
commensurate with the claim scope and are therefore unpersuasive.”). That
is, the claimed invention is not restricted to an “online sometimes simulated”
implementation. Rather, as to online operation and offline simulation, claim
1 recites:
(a) “method for simulating, at a client, an online database
session” (preamble)
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(b) “providing, by the client while the client is online, a local
interface, the … server logic responding to … the local
interface … by manipulating data in the database”
(c) “remote server including ... functional database server
logic ... responding to instructions received from the local
interface”
(d) “determining, while the client is online, ... a subset of the
data from the database ... and ... a subset of the functional
database server logic”
(e) “importing the ... subset[s] of the data and the functional
database server logic”4 and
(f) “simulating, only so long as the client is offline, an
online session with the database application by invoking
the … [imported] server logic to manipulate the
[imported] data … so as to enable the local interface to
respond to instructions … as if the client and the remote
server were in an online session”
Because the claim preamble directs the recited steps to simulating of
an online database session, not to conducting of an online database session,
none of the claim steps are construed as requiring performance of an online
database session. Rather, recitations (a) and (f) are properly construed as
requiring offline simulation of an online database session. Recitations (b) to

4 The bracketed “[s]” of the quoted importing step corrects a clear error of
reciting “subset” instead of “subsets.” Under a strict interpretation of the
importing step, the claimed invention would import the subset of the data
and the entirety of the server logic. However, as a whole and especially in
light of determining respective subsets of data and logic, the claimed
invention clearly imports the subset of data and subset of logic. Cf., Novo
Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003)
(allowing a claim correction that “is not subject to reasonable debate based
on consideration of the claim language and the specification”).
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(e) are properly construed as requiring online operations for performing the
offline simulation.
For example, recitation (b) is construed as reciting an online
transmission of synchronization instructions by a client interface and, in
response, a remote manipulation of database data by a corresponding
server’s logic. See Dec’n 8; cf., Spec., 7, ll. 14-29. Recitation (f) is
construed as reciting a strictly offline simulation of an online database
session between the interface and server and, as part thereof, a client-side
manipulation of an imported subset of the data by an imported subset of the
logic.5
In short, claim 1 does not require performance of an online database
session.
Appellant’s Additional Arguments
In addition to the argument addressed above, Appellant presents
further arguments addressed below. The Request lists the additional
arguments within an “Enumerated Grounds” section (Req. Reh’g 2-3) and
then addresses each ground in subsequent sections “II.A-I” (id. at 3-13).
The following analyses address the enumerated grounds to the extent that
corresponding arguments are presented by sections “II.A-I.” See Frye, 94
USPQ2d at 1075 (“If an appellant fails to present arguments on a particular
issue …[,] the Board will not … unilaterally review those uncontested

5 Unless stated otherwise, “claimed simulating” herein denotes the claimed
invention’s simulating step (i.e., “simulating, only so long as the client is
offline, an online session with the database application …); not the claimed
invention (i.e., “method for simulating, at a client, an online database session
…”).
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aspects of the rejection.”). The arguments are addressed section-by-section
and under corresponding headings “A” to “I” below. Arguments self-
evidently addressed with respect to a prior section are not re-addressed.
A
Appellant argues that the rejection “does not explicitly interpret online
database session or simulating an online database session and makes no
reference to the Specification for these terms.” (Req. Reh’g 4). Appellant
further argues that the Specification’s description of online and offline
sessions “constrains the broadest reasonable interpretation of [the claimed]
‘simulating, only so long as the client is offline, an online session.’” Id.
(citing Spec. 4-6).
Appellant incorrectly contends, in light of claim construction case law
(Req. Reh’g 4), that a prima facie case of unpatentability must set forth each
claim restriction’s broadest reasonable interpretation. Cf., Jung, 637 F.3d at
1362 (refuting that “the prima facie case requirement is procedurally flawed
unless the examiner provides an ‘[o]n-the-record showing of a reasonable,
broadest reasonable claim construction’”). Rather:
[T]he prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production. …
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant … [by] stating the reasons for [its]
rejection … together with such information and references as
may be useful in judging of the propriety of continuing the
prosecution of [the] application.” … That section “is violated
when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds
for rejection.”
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Id. (citations, quotations, original brackets, and original ellipses omitted).
Thus, a rejection can provide sufficient notice under § 132 – that is,
can present a prima facie case of unpatentability – by conveying the prior art
features and/or disclosures found to teach each claim restriction. See id.
(“The examiner clearly conveyed his understanding that Jung’s well-charge-
level controller was broad enough to encompass Kalnitsky’s ‘controller
340,’ and the specific column and line cites to the prior art reference would
have put any reasonable applicant on notice of the examiner’s rejection.”).
With respect to the claimed simulating, the rejection provides
sufficient notice by finding that the “very objective of Perinpanathan’s
invention is to simulate an online database session between a client and
remote servers.” Dec’n 6 (citing Perinpanathan, Abst.). Sufficient notice
was also provided by finding that “Perinpanathan’s invention simulates an
online database session in principally two respects” (id.), as follows.
First, remote database servers download a requisite amount of
database content to a connected client (e.g., download an online
retailer’s entire website catalog), particularly such that the
client, if unexpectedly pushed offline (e.g., due to network
instability), can continue to seamlessly interact with the content
as though the connection were maintained. Perinpanathan,
abstract; ¶¶ 3 and 50.
Second, the client’s offline changes to the downloaded content
are tracked such that, when the connection resumes, the servers
can duplicate the changes on the corresponding data stored by
the servers’ database. Id. at ¶¶ 28-33.
Id. In light of at least the above findings, the rejection clearly conveys that
the claimed simulating is construed as broad enough to read on client-side
importing, manipulating, and synchronizing of content.
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Appellant’s argument does not demonstrate an error in the above
interpretation of the claimed simulating. Rather, without explanation, the
argument states that the rejection fails to elaborate a broadest reasonable
interpretation of the claimed simulating in view of cited Specification
descriptions of online and offline sessions. The argument thus constitutes a
mere allegation of patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[T]he Board reasonably interpreted [37 C.F.R. §
41.37(c)(1)(vii)]6 to require more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”); Jung, 637 F.3d at
1365 (affirming because the applicant “merely argued that the claims
differed from [the prior art], and chose not to proffer a serious explanation of
this difference”); In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant[.]”); 37 C.F.R. § 41.37(c)(1)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”).
Note that, despite Appellant’s failure to present (much less support
with evidence) a meaning of “simulate” and/or “online database session” for
consideration, we have nonetheless again reviewed the cited Specification
disclosures for expressly and implicitly required meanings. The disclosures
present non-limiting descriptions of online and offline sessions that share an
interface and logic for a relational database. Spec. 4, l. 11 – 6, l. 20. The
disclosures do not present a definitive meaning of “simulating” and/or

6 Now 37 C.F.R. § 41.37(c)(iv).
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“online database session,” much less a corresponding disclaimer of claim
scope. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“[T]he PTO
should only limit the claim based on the specification … when those sources
expressly disclaim the broader definition.”); Howmedica Osteonics Corp. v.
Wright Medical Technology, Inc., 2010 WL 1372176 (2010)(explaining a
claimed invention is not restricted by the invention’s disclosed objectives);
see also Spec. 8, ll. 23-24 (“The various embodiments … should be
considered as merely illustrative of the present invention.”).
Note also that, even assuming arguendo the Specification presents
required meanings of “simulating” and/or “online database session,” a
merely nonfunctional descriptive meaning would not patentably distinguish
the claimed invention over Perinpanathan. The Board has put applicants on
notice that descriptions of data, for example, are not entitled to patentable
weight unless the resulting claim restriction “functionally affect[s] the
process … by changing the efficiency or accuracy or any other
characteristic.” Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008)
(precedential); see also Ex parte Mathias, 84 U.S.P.Q.2d 1276, 1277 (BPAI
2005) (informative). Here, the term “simulating” appears to constitute a
mere description of the offline session’s look and feel; not a functional
restriction of the claimed invention.7 Likewise, the term “database” appears

7 The term “simulating” may also constitute an indefinite description of
similarity (i.e., indefinite degree of similarity) between the claimed
invention and an online database session. Cf., Seattle Box Co. v. Industrial
Crating & Packing Inc., 731 F.2d 818, 826, 221 USPQ 568 (Fed. Cir. 1984)
(“When a word of degree is used the district court must determine whether
the patent’s specification provides some standard for measuring that
degree.”).
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to merely describe the data’s storage without restricting how the data is
processed. See Nehls, 88 USPQ2d at 1888 (“[T]he method is carried out the
same way regardless of which specific sequences are included in the
database.”); Mathias, 84 U.S.P.Q.2d at 1279 (“Common situations involving
nonfunctional descriptive material are: … a process that differs from the
prior art only with respect to nonfunctional descriptive material that cannot
alter how the process steps are to be performed to achieve the utility of the
invention.”); cf. In re Lowry, 32 F.3d 1579, 1580-81 (Fed. Cir. 1994)
(according to patentable weight the claimed “data objects” in view of their
“hierarchical” and “pointing” relationships that formed an “arrangement …
facilitat[ing] software operations.”).
B
Appellant argues that Perinpanathan does not disclose manipulating of
an online database followed by an offline simulation of manipulating the
online database. Req. Reh’g 4. The argument is not commensurate in scope
with the claimed invention. Claim 1 does not require manipulating of an
online database followed by offline simulation thereof. Claim 1 rather
requires:
 online providing of the client’s local interface to a database
application of a remote server, which includes data and logic
that manipulates the data in response to the local interface;
 determining, while online, respective subsets of the data and
logic
 importing the subsets of data and logic to the client; and
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 offline simulating of an online session with the database
application by invoking the imported logic to manipulate the
imported data.
As shown above, the claimed providing (which manipulates an online
database) is not expressly recited as occurring before the claimed simulating
(which simulates manipulating of the online database). See Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001)
(“Unless the steps of a method actually recite an order, the steps are not
ordinarily construed to require one. However, such a result can ensue when
the method steps implicitly require that they be performed in the order
written.”). And because the claimed providing recites a synchronization of
the online database (as discussed supra in the “Principal Argument”
section), the claimed providing is clearly not implicitly required to occur
before the claimed simulating.
C
Appellant argues that the rejection “[r]eaches [b]eyond [w]hat
Perinpanathan [f]airly [t]eaches” as to a “common database” of the AR, CS
and SS. Req. Reh’g 6 (citing Dec’n 7). According to Appellant:
The Decision mistakenly applies a broadest reasonable
interpretation-like approach to the single use of the word
“database” in paragraph 31 of the reference. ... Mention of “a
common database” in this passage describes possible backend
communications among AR, CS and SS and does not disclose
communication between the client and a database.
Id. Appellant’s argument mischaracterizes the rejection and Perinpanathan,
as follows.
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The argument mischaracterizes the rejection as finding that
Perinpanathan’s UD conducts an online database session with the common
database. Rather, the rejection finds that Perinpanathan’s description of the
AR, CS, TS, and common database suggest the claimed server’s
configuration of “including data organized into a database . . . and functional
database server logic.” Dec’n 7. The rejection particularly states:
Perinpanathan’s above-noted servers AR, CS, SS may reside on
a remote network device and collectively manage an in-
common database servicing the client device UD[.] Id. at ¶¶
31-32. In these respects, because the three servers AR, CS, SS
and in-common database may all reside on a remote network
device, Perinpanathan suggests a remote server including data
organized into a database (the in-common database) and
functional database server logic (the three servers AR, CS, SS).
Id. Thus, as shown above, the rejection particularly finds that the AR, CS,
TS, and common database suggest a single remote server including (i) an
AR, CS, and TS constituting server logic as claimed, and (ii) a common
database constituting a database as claimed.
The argument mischaracterizes the common database as being used
merely for communications between the AR, CS, and SS. Rather, the
common database also delivers the “desired services” to the UD. FF9. Note
that, in light of the database delivering remote content (the “desired
services”) to the UD and being common to the AR, CS, and SS, the rejection
reasonably finds that Perinpanathan suggests the servers as managing the
database (i.e., retrieving and synchronizing the content) for the UD.
Appellant further argues:
[T]he Decision cites paragraph 29 for the proposition that
“content server CS downloads database content to the client’s
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cache.” But paragraph 29 does not mention any “database.”
The content referenced in paragraph 29, such as “games,
MP3/MP4 files, MPEG4 video, hyper-video, online/offline
agents, etc.” does not match the content of an online database,
as that term is used in our Application.
Req. Reh’g 7. Contrary to Appellant’s argument, Perinpanathan’s cited
disclosures do not describe the remote content as being restricted to “games,
MP3/MP4 files, …” and other such data. Rather, the cited disclosures
describe the remote content as also encompassing data of “customer
relationship management systems, expense processing systems, billing
systems, loyalty management systems, central directories/repositories or the
like.” FF8. Note that customer relations management (CRM) data is of the
exact type managed by Appellant’s disclosed invention. See Spec. 1, l. 14 –
2, l. 3.
D
Appellant argues that the rejection’s “[o]verlooking the [t]hree
[a]rchitectures that [e]mbody Perinpanathan’s [o]nline/[o]ffline [a]gent
[r]esults in [f]ailing to [c]ompare the OOA [t]echnology [t]aught by the
[r]eference to the [t]echnology [c]laimed.” Req. Reh’g 7. The rejection
does not overlook Perinpanathan’s OOA architectures. Rather, the rejection
focuses on Perinpanathan’s retrieving, manipulating, and synchronizing of
remote content – i.e., “online and offline interaction” (FF2) – as performed
by the first embodiment of Figures 1-6 (FF4). Dec’n 6-10. Appellant
presents no reason why the rejection’s findings are undermined by
Perinpanathan’s other teachings.
Note that Perinpanathan addresses two deficiencies of online database
sessions. The first deficiency is unpredictable disruptions of a UD wireless
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connection. FF1-2. The second deficiency is that, if multiple users share
data, a collated record of each interaction with the data is created only after
each user has connected to the server. Id. The rejection focuses on
Perinpanathan’s solution to the first deficiency; that is, the solution to online
disruptions. Cf., Dec’n 6-10; FF3-4. Appellant’s invention also addresses
such disruptions. Spec. 1, ll. 35-39.
E
Appellant argues that Perinpanathan’s OOA cannot simulate an online
database session unless the OOA engages in an online database session.
Req. Reh’g 8. In Appellant’s words: “It follows that the OOA does not
simulate an online database session, because the OOA never engages in an
online database session.” Id.
The argument fails to present a meaning of “simulate” and/or “online
database session” whereby, because the OOA does not conduct an online
database session, “[i]t follows that the OOA does not simulate an online
database session.” Id. Indeed, Appellant fails to present any meaning of
“simulating” and/or “online database session,” much less evidence of a
required meaning that distinguishes the claimed invention over
Perinpanathan.
Appellant further argues that the rejection “misapprehends the
relationship of the OOA to AR, CS, and SS” by finding that (i) the UD
conducts an online database session with the AR, CS, and SS (ii) and the
OOA replaces the AR, CS, and SS. Id. at 9. In doing so, Appellant explains
that the “OOA depends on all three of these servers.” Id. at 9.
The argument mischaracterizes the rejection as finding that the OOA
simulates an online database session between the UD and servers (AR, CS,
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SS) without operating in conjunction with the servers. Rather, the rejection
reads the claimed logic on the AR, CS, SS, and OOA (Dec’n 7) and reads
the claimed logic subset on the OOA (id. at 9). And, in doing so, the
rejection finds that the OOA constitutes “functional database server logic,”
as claimed, insofar as allowing the UD to retrieve, manipulate, and
synchronize content in lieu of conducting an online database session with the
servers (AR, CS, SS). Id. (“[T]he purpose of the OOA’s is to allow the
client’s interaction with the downloaded database content in lieu of
rendering and manipulating the content via the servers AR, CS, SS.”); Id.
see also FF10-13. Appellant presents no argument that the AR, CS, SS, and
OOA do not constitute “functional database server logic” as claimed. In
fact, Appellant does not even present a required meaning of “functional
database server logic.”8
We acknowledge the rejection incorrectly interprets the OOA as a
temporary countermeasure to unexpected disruptions of an online database
session between the UD and servers (AR, CS, SS); i.e., as operating during
disruptions to such an online database session. Upon further consideration,
it is now clear that Perinpanathan’s AR, CS, SS, and OOA collectively
replace the background art’s online database sessions; that is, no online
database sessions are performed. FF11 (confirming that the UD retrieves all
needed content and then suspends online communication). Nonetheless, the
rejection does not hinge on any teaching or suggestion of the UD conducting

8 Note that, for reasons explained supra in section “A,” a merely
nonfunctional descriptive meaning would not patentably distinguish the
claimed invention over Perinpanathan.
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an online database session, particularly because the claimed invention does
not conduct an online database session (discussed supra in section “B”).
We also acknowledge the rejection, as a result of the above
misinterpretation, incorrectly concludes that it would have been obvious to
impart any specialized functionality to the OOA that would be used by the
AR, CS, and/or SS to alter remote content. Dec’n 9. Nonetheless, the
rejection does not hinge on any teaching or suggestion of the OOA including
a functionality of the AR, CS, or SS. Rather, the rejection stands on a
finding that: the AR, CS, SS, and OOA constitute, as claimed, logic that
manipulates data of an online database; and the OOA also constitutes, as
claimed, an imported subset of the logic that manipulates imported data.9
Note that the OOA teaches the claimed logic subset’s manipulation of data
at least insofar as retrieving imported content from the UD cache in response
to the UD interactive application. See FF13; see also Spec. 2, ll. 8-13
(stating a “view” instruction will invoke logic to manipulate data); Random
House Webster’s Unabridged Dictionary 1159 (2d ed. 2001) (defining
“manipulate” as “to handle, manage, or use”).

9 The rejection clearly reads the claimed logic on the AR, CS, SS, and OOA
and reads the logic subset on the OOA. As a few examples, in addressing
the claimed “remote server including data organized into a database . . . and
functional database server logic,” the rejection finds: “Perinpanathan
suggests a remote server including data organized into a database (the in-
common database) and functional database server logic (the three servers
AR, CS, SS)[;]” and that “the OOA’s also constitute functional database
server logic – particularly providing database server functionality to the
client when offline – but are downloaded to the client from the … AR and
… CS.” Dec’n 7. In addressing the step of “determining … at least a subset
of the functional database server logic …,” the rejection finds that the “AR
provides the client with ‘content specific downloads’ of OOA’s.” Dec’n 9.
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F
Appellant argues that “there is no teaching in Perinpanathan to move
AR, CS and SS logic into the OOA or into an HTML or XML document
along with database records.” Req. Reh’g 9-10. According to Appellant:
The Decision relies on a two-step argument: that the
OOA embodies the “functional database server logic” of AR,
CS, SS servers when offline; and that the AR, CS, SS
“functional database logic” could be further moved into an
HTML or XML document along with database records.
….
[W]e see no way to transfer the so-called “functional database
server logic” of AR, CS, SS servers into an HTML or XML
document along with database records, because there is no
teaching of how the AR, CS, SS functionalities could be
performed by an HTML or XML document.
Id. at 10.
The argument mischaracterizes the rejection as proposing to import
logic of the AR, CS, and SS to the UD via an HTML document. Rather, the
rejection concludes that it would have been obvious to package
Perinpanathan’s content and OOA (particularly a “content-specific OOA”)
within a single HTML document imported to the UD. Dec’n 9
(“Perinpanathan’s downloaded database content can be comprised of HTML
and XML documents[.] [T]he downloaded database content can include
OOA’s[.]”); id. at 10 (“[I]t would have been obvious to download database
content … [and] content-specific OOA’s … within an HTML or XML
document.”).
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G
Appellant argues that the rejection presents no rationale to replace
Perinpanathan’s OOA architectures by importing content and logic to the
UD via an HTML document. Req. Reh’g 10. Appellant particularly states:
The Decision, at 10, makes the legal error of not
discussing: What would make it obvious to a person of
ordinary skill in the art to replace the three OOA architectures
disclosed by Perinpanathan with the technology claimed?
Relying only on the Application being examined to modify the
primary reference, the Decision does not cite any prior art
teaching to package both “data and ... functional database server
logic ... embedded” in a document.
Id.
The argument mischaracterizes the rejection as proposing to modify
Perinpanathan’s OOA architectures. Rather, as explained supra in section
“F,” the rejection concludes that it would have been obvious to package
Perinpanathan’s imported content and OOA within an HTML document.
Though not expressly stated, the rejection clearly reasons that it would have
been common sense to pair requested content and a content-specific OOA
within the same HTML page.
The argument mischaracterizes the rejection as relying on Appellant’s
Specification for a rationale to modify Perinpanathan’s teachings. Rather,
the rejection cites Appellant’s Specification as evidence that embedding
Perinpanathan’s content and an OOA within a single HTML page was
within the skill in the art. Dec’n 10.
We acknowledge that the Specification was misinterpreted,
particularly insofar as finding that the statement “[a]s is known to those
skilled in the art” extended to the next sentence stating “functional logic 120
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may be embedded in a document utilizing a markup language.” Req. Reh’g
13, fn. 7 (addressing Spec. 6, ll. 1-4). Nonetheless, Perinpanathan alone
presents sufficient evidence that embedding content and an OOA was within
the skill in the art, in two respects. First, Perinpanathan teaches that an OOA
may be loaded to a UD via protocols such as HTTP. FF7. Second,
Perinpanathan teaches that imported content can include an OOA (FF6) and
be transmitted from the CS to the UD via an HTML page (FF5, 7). Note
Appellant does not argue that embedding of Perinpanathan’s content and
OOA within a single HTML document was beyond the skill in the art.
H
Appellant argues that implementing the claimed invention within
Perinpanathan’s system would impermissibly change a principle of the
system’s operation. Req. Reh’g 12. According to Appellant:
The pattern of operation needed to read on claim 1 would
require Perinpanathan’s client to manipulate a database during
an online database session, then to simulate to a user, only as
long as the client is offline, behavior of the online session.
Adopting this pattern of operation would change the principle
operation indicated by Perinpanathan’s figures 4 and 7-25. It
would change the technology from offline sometimes
synchronized using SynchML to the claimed online database
session sometimes simulated. This changed principle of
operation is an impermissible basis for rejection.
Id. (case law citation omitted). The rejection does not propose to transform
Perinpanathan’s system from an “offline sometimes synchronized”
implementation to an “online . . . sometimes simulated” implementation.
Rather, as discussed supra in sections “F” and “G,” the rejection concludes
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that it would have been obvious to import Perinpanathan’s remote content
and OOA to the UD via an HTML document.
I
Appellant argues that the rejection mistakenly characterizes
Appellant’s Specification as “[a]dmit[ting] that the [c]laimed [c]ombination
was [w]ithin the [l]evel of [s]kill in the [a]rt.” Req. Reh’g 12. For the
reasons expressed supra in section “G,” the argument is persuasive but does
not establish a prejudicial error.
CONCLUSION
In view of the foregoing, Appellant’s Request for Rehearing and oral
hearing are denied.
DENIED

tj