Ex Parte HopkinsDownload PDFPatent Trial and Appeal BoardJan 16, 201410287177 (P.T.A.B. Jan. 16, 2014) Copy Citation 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. Appeal 2011-001443 Application 10/287,177 2 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. Appeal 2011-001443 Application 10/287,177 3 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. Appeal 2011-001443 Application 10/287,177 4 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.”). Appeal 2011-001443 Application 10/287,177 5 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). Appeal 2011-001443 Application 10/287,177 6 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. Appeal 2011-001443 Application 10/287,177 7 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. Appeal 2011-001443 Application 10/287,177 8 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) Appeal 2011-001443 Application 10/287,177 9 (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”). Appeal 2011-001443 Application 10/287,177 10 (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 …”). Appeal 2011-001443 Application 10/287,177 11 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.” Appeal 2011-001443 Application 10/287,177 12 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. Appeal 2011-001443 Application 10/287,177 13 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). Appeal 2011-001443 Application 10/287,177 14 “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.”). Appeal 2011-001443 Application 10/287,177 15 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 Appeal 2011-001443 Application 10/287,177 16 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. Appeal 2011-001443 Application 10/287,177 17 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 Appeal 2011-001443 Application 10/287,177 18 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 Appeal 2011-001443 Application 10/287,177 19 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, Appeal 2011-001443 Application 10/287,177 20 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. Appeal 2011-001443 Application 10/287,177 21 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. Appeal 2011-001443 Application 10/287,177 22 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.”). Appeal 2011-001443 Application 10/287,177 23 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 Appeal 2011-001443 Application 10/287,177 24 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 Appeal 2011-001443 Application 10/287,177 25 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 Copy with citationCopy as parenthetical citation