Ex Parte Kinoshita et al

Patent Trials and Appeals BoardJun 10, 2014

12344336 - (D) (P.T.A.B. Jun. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte TAKAFUMI KINOSHITA and EIZO TSUKADA ________________ Appeal 2012-000806 Application 12/344,336 Technology Center 2400 ________________ Before: JENNIFER D. BAHR, MICHAEL L. HOELTER and LYNNE H. BROWNE, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000806 Application 12/344,336 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to computer systems, and more particularly to social user script service by service proxy.” Spec. para. [0001]. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A computer-implemented method for social user script service by service proxy, comprising: storing a plurality of user scripts; associating the plurality of user scripts with one or more models, wherein the one or more models can be specified in a user preference setting; receiving a request from a user for an electronic document; selecting based on one or more criteria one or more user scripts from the plurality of user scripts associated with one or more models set for the user and one or more conditions under which said one or more user scripts are executed; embedding said one or more selected user scripts into a requested electronic document; and transmitting the requested electronic document with the embedded user scripts to the user. EVIDENCE RELIED ON BY THE EXAMINER Eichstadt US 2003/0023754 A1 Jan. 30, 2003 Messing US 2003/0126134 A1 Jul. 3, 2003 Appeal 2012-000806 Application 12/344,336 3 THE REJECTIONS ON APPEAL Claims 1, 2, 4-7, 10, 11, and 13-20 are rejected under 35 U.S.C. § 102(b) as being anticipated by Eichstadt. Ans. 4. Claims 3, 8, 9, and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Eichstadt and Messing. Ans. 7. ANALYSIS The rejection of claims 1, 2, 4-7, 10, 11, and 13-20 as being anticipated by Eichstadt Appellants present separate arguments for each of the three independent claims, i.e., claims 1, 10, and 18. App. Br. 7-9. Appellants also group together and present separate arguments for dependent claims 4 and 13 (App. Br. 9-10), claims 7 and 16 (App. Br. 10), and claims 2, 5, 6, 11, 14, 15, 17, 19, and 20. (App. Br. 10). We address each of the three independent claims separately and we also address dependent claims 4, 7, and 2 separately in the order argued. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 1 Claim 1 includes the limitation of “storing a plurality of user scripts” and also the limitation of “selecting based on one or more criteria one or more user scripts from the plurality of user scripts.” The Examiner finds these limitations as disclosed in paragraphs [0011], [0012], [0027], and [0039] of Eichstadt. Ans. 4-5, 9-10. Appellants contend that “Eichstadt et al. does not disclose or suggest to ‘select’ a ‘user script’ from a plurality of user scripts, for instance, based on user registration information.” App. Br. 8. In making this contention, Appellants first acknowledge that Eichstadt “appear[s] to disclose that a ‘registered user may participate in a session, request, receive and view web-pages having the inventive script code Appeal 2012-000806 Application 12/344,336 4 incorporated therein.’” App. Br. 8 referencing Eichstadt para. [0011]. However, Appellants contend that Eichstadt “appears to insert its fixed script code into a web page for a user who is registered” and that Eichstadt “does not disclose or suggest to ‘select’ (choose) which script to insert based on the user's registration information.” App. Br. 8. We first note that the claim limitation in question is directed to the selection of a user script but that this limitation is silent as to selection by whom or what or, that such selection is accomplished via any particular criteria. App. Br. 13, Claims App’x. Paragraph [0011] of Eichstadt discusses the user registration process which includes “user-specific data such as” the “web-pages to be accessed.” Paragraph [0039] discusses the example of a registered user wishing “to view his/her tax forms” such that when the tax forms are transmitted “for display by the user’s Internet browser, the script code 400 is added to the web-page 300.” Eichstadt paragraph [0039] also teaches that “[w]hen the user navigates to another web-page,” the script code associated with the former page “is erased from RAM 22 and is no longer available to the user’s browser. In that way, the script code 400 is provided only in connection with a predetermined web- page 300.” In view of the teachings of these paragraphs [0011] and [0039], the Examiner finds that “[e]ach web-page the user is registered to access includes a particular script code incorporated on it.” Ans. 9. The Examiner also finds that Eichstadt further addresses a plurality of scripts. Ans. 4 referencing Eichstadt para. [0027]. In view of the above, Appellants do not make clear how Eichstadt’s insertion of a script code into a registered user’s web page is not a “selection” of a script code, or that such “selection” is not Appeal 2012-000806 Application 12/344,336 5 from a plurality of script codes as claimed and asserted. Appellants’ contention is not persuasive. Appellants also recite the “associating” step (as well as repeat the “selecting” step above) and contend that “Eichstadt et al. does not disclose or suggest, ‘selecting’ let alone based on ‘one or more user scripts from the plurality of user scripts associated with one or more models set for the user’” without further explanation. App. Br. 8. It is unclear whether the focus of this contention is again the selection of “one or more user scripts from the plurality of user scripts” as previously discussed, or the scripts being “associated with one or more models set for the user,” or both. In any event, regarding the former contention and as indicated supra, the Examiner has indicated where Eichstadt discloses support for the selection “from the plurality of user scripts” limitation. Ans. 4-5, 9-10. Regarding Appellants’ latter contention, claim 1 recites “associating the plurality of user scripts with one or more models, where the one or more models can be specified in a user preference setting” (emphasis added). Here, the Examiner discusses Eichstadt’s registration process and the “web pages wishing to be accessed” by the user (see Eichstadt para. [0011]) finding that “[t]he registration data file serves as the model used to retrieve the web pages the user has requested.” Ans. 10. The Examiner further finds that Eichstadt’s proxy server, in turn, “parses the web page and adds the script code to the web page.” Ans. 10; see also Eichstadt para. [0039]. Appellants do not otherwise explain how or why these findings by the Examiner are in error or have been improperly applied. In short, Appellants do not persuasively explain how these teachings in Eichstadt fail to disclose the “selecting” step “let alone based on ‘one or more user scripts from the plurality of user scripts Appeal 2012-000806 Application 12/344,336 6 associated with one or more models [i.e., the registration data files] set for the user.’” App. Br. 8. Appellants’ contention is not persuasive. Furthermore, in a similar situation where Appellants recite the limitation in question and assert that the cited art lacks this teaching, our reviewing court has stated that “the Board reasonably interpreted Rule 41.37 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.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Following that guidance here, in addition to our discussion supra, we are not persuaded of Examiner error by Appellants’ contention. Appellants also address this “selecting” limitation in the Reply Brief stating that Eichstadt’s paragraphs [0011] and [0039] fail to teach this limitation because “Eichstadt does not ‘select’ scripts; rather, Eichstadt discloses adding ‘the script code’”1. Reply Br. 2-3. According to Appellants, “Eichstadt does not have ‘a plurality of user scripts’ to select from.” Reply Br. 3. However, not only does the Examiner rely on a different paragraph of Eichstadt, i.e., paragraph [0027], as disclosing this “plurality” limitation, see Ans. 4 (which paragraph Appellants do not address), we further note that Appellants do not challenge the Examiner’s finding regarding the registration data file serving as the model (Ans. 10). Instead, Appellants contend that Eichstadt’s addition of a script is not the same as the selection of a script. Reply Br. 3. In this matter, Appellants do not further explain how an addition of a script is not a selection of a script as 1 Appellants also contend that “Eichstadt does not have ‘a plurality of user scripts’ to select from, let alone, ‘associated with one or more models set for the user’ as claimed” (Reply Br. 3) which has previously been addressed and found wanting. Appeal 2012-000806 Application 12/344,336 7 recited in claim 1 and further, Appellants’ asserted difference is not otherwise self-evident from the record. Appellants’ conclusory contention is not persuasive. In view of the above, we sustain the Examiner’s rejection of independent claim 1. Claim 10 Claim 10 includes the limitation of a service proxy processor that “selects one or more user scripts that are associated with one or more user attributes specified in the user registration information.” See also App. Br. 9. Appellants again acknowledge that “Eichstadt et al. discussed above appears to insert a fixed script into a web page for those users who are registered for that web page” but that Eichstadt nevertheless lacks this claim limitation. App. Br. 9. No further explanation is forthcoming and Appellants also do not contend that Eichstadt fails to disclose a “service proxy processor” as found by the Examiner. Ans. 5-6 referencing Eichstadt paras. [0011] and [0012]. Again, following the lead of our reviewing court, “a naked assertion that the corresponding elements were not found in the prior art” is not persuasive. Lovin, 652 F.3d at 1357. We sustain the Examiner’s rejection of claim 10. Claim 18 Claim 18 includes the step of “selecting, based on one or more criteria including at least user attribute, one or more user scripts from the plurality of user scripts.” See also App. Br. 9. Appellants contend that “Eichstadt et al. does not select a script based on user attribute” and, focusing on Eichstadt paragraphs [0011] and [0039], contend that “[t]hose paragraphs of Eichstadt et al. do not disclose to provide choices of different user scripts for inserting Appeal 2012-000806 Application 12/344,336 8 into a web page.” App. Br. 9. As indicated supra, Eichstadt paragraph [0011] discusses the user registration process and teaches that “[e]ach user may enter certain user-specific data such as … attributes for drawing (e.g., line type and color), and web-pages to be accessed.” As also discussed supra, the Examiner did not rely on paragraph [0011] or [0039] for disclosing a plurality of scripts but instead, the Examiner relied on Eichstadt para. [0027] for disclosing this feature (Ans. 4) which Appellants do not dispute. The Examiner also addressed Eichstadt para. [0012] (Ans. 5) which further elaborates on the added script and how it may vary depending on its desired function. Based on the above, Appellants’ contentions are not persuasive of Examiner error. We sustain the Examiner’s rejection of claim 18. Claim 4 Claim 4 depends from claim 1 and Appellants initially contend that “[t]he above reasons are believe[d] to suffice to support that Eichstadt et al. does not anticipate” this claim. App. Br. 9. Appellants also contend that “Eichstadt et al. therein does not disclose or suggest that a script is selected based on a ‘role’ of the user” and that according to Appellants’ invention, “different scripts are inserted in the web page depending on who the requesting user is.” App. Br. 9; see also Reply Br. 3. Here, with respect to claim 4, the Examiner additionally references Eichstadt paragraph [0028] in addition to those previously relied on. Ans. 11. Paragraphs [0011] and [0028] both discuss the registration process and how registered users may access web pages which are tailored based on “user-specific data.” See, e.g., Eichstadt para. [0011]. Paragraph [0039] discusses the example where the user is a “tax consultant.” Paragraph [0012] discusses a user having the role Appeal 2012-000806 Application 12/344,336 9 of a “teacher” while others have the role of “students.” As the registration process clearly involves “user-specific data,” there is no indication in Eichstadt that each of these different users would view a web page having the same script as Appellants appear to indicate. In other words, Appellants have not shown that Appellants’ insertion of different scripts into the web page depending on the user is any different from Eichstadt’s process. As such, Appellants’ contentions are not persuasive that the Examiner erred in finding that “script codes are added to web pages based on the registration status and information of the user.” Ans. 11. Accordingly, Appellants’ contention that Eichstadt “does not disclose or suggest that a script is selected based on a ‘role’ of the user” is not persuasive. Claim 7 Claim 7 depends from claim 1 and includes the additional limitation of “looking up registration information associated with the user and selecting one or more scripts that the user registered.” Appellants’ contend that “Eichstadt et al. does not disclose or suggest that a user register for a specific script.” App. Br. 10. Here, the Examiner relies on Eichstadt’s registration process disclosed in paragraph [0011] as disclosing this limitation. Ans. 7, 11. The Examiner also references Eichstadt’s paragraph [0039] which states that a script code associated with a web page is erased when the user navigates to another web-page and “[i]n that way, the script code 400 is provided only in connection with a predetermined web-page 300.” Ans. 11. Appellants provide no indication or other explanation as to why the Examiner’s analysis is erroneous or that these paragraphs of Eichstadt fail to teach this limitation. Accordingly, we do not find Appellants’ contention persuasive. Appeal 2012-000806 Application 12/344,336 10 Claim 2 Claim 2 depends from claim 1 and Appellants contend that claim 2 is allowable “[a]t least by virtue of [its] dependency.” Appellants’ contention is not persuasive. In summary, we sustain the Examiner’s rejection of claims 1, 2, 4-7, 10, 11, and 13-20 as being anticipated by Eichstadt. The rejection of claims 3, 8, 9, and 12 as being unpatentable over Eichstadt and Messing Claim 3 and 12 depend from independent claims 1 and 10 respectively and include the additional limitation that the user script includes “at least information script, feedback script, update script, or failure script or combinations thereof.” In other words, this additional limitation is understood to require at least one of these script types, but not all. The Examiner additionally relies on the teachings of Messing as disclosing a plurality of such recited scripts and particularly “failure script” and “update script”. Ans. 8. The Examiner finds that it would have been obvious “to combine the teachings of Eichstadt with the teachings of Messing to receive failure and update information regarding scripts, because it will allow debugging of the failed script.” Ans. 8. Appellants contend that “Messing et al. does not make up for [that] which Eichstadt et al. lacks” (App. Br. 10) but we are not persuaded of any deficiency in the teachings of Eichstadt which is in need of curing. Appellants also contend that Eichstadt lacks the additional limitation directed to “information script” (see App. Br. 11) but as indicated supra, not all of the additionally recited script types are required by claims 3 and 12; and further, the Examiner relies on Messing for disclosing some of the Appeal 2012-000806 Application 12/344,336 11 recited script types. Ans. 8. Addressing Messing, Appellants acknowledge that Messing “discloses a ‘failure analysis module’ that ‘analyzes the failure of a data harvesting script and determines why the script failed.” App. Br. 11. However, Appellants contend that this identified “section does not disclose or suggest a ‘feedback script’” and further that this “section also does not disclose or suggest an ‘update script.’” App. Br. 11. As stated supra, claims 3 and 12 do not require that all the different script types be disclosed, only one; and even though Appellants’ acknowledge Messing’s disclosure of a “failure analysis module,” Appellants contend that this “does not disclose or suggest a ‘failure script for showing occurrence of failure to a support’ as claimed in claims 3 and 12.” App. Br. 11. Cited paragraph [0028] of Messing (Ans. 8) teaches “failure analysis module 218 in financial analysis system 212 analyzes the failure of a data harvesting script and determines why the script failed.” This same paragraph also states that “[t]he failure analysis module 218 assists a user in identifying the reason for the script failure.” In view of these teachings, Appellants’ contention that, at a minimum, Messing fails to “disclose or suggest a ‘failure script for showing occurrence of failure to a support’ as claimed in claims 3 and 12” (App. Br. 11) is not persuasive. In other words, we are not persuaded that the Examiner’s combination of Eichstadt and Messing, and the reasons provided for such combination, are in error. We sustain the Examiner’s rejection of claims 3 and 12 as unpatentable over Eichstadt and Messing. Regarding dependent claims 8 and 9 which are argued together (App. Br. 11-12), Appellants contend that “because Eichstadt et al. and Messing et al. do not disclose or suggest every element claimed in their base claim 1, Appeal 2012-000806 Application 12/344,336 12 those claims are believed to be unobvious over Eichstadt et al. and Messing et al.” App. Br. 11. The Examiner has provided separate findings and rationales for the rejection of claim 8 (Ans. 8-9) and claim 9 (Ans. 9). However, Appellants contend “that a person of ordinary skill in the art would not have considered it obvious to modify the disclosures of Eichstadt et al. and Messing et al. to arrive at the pending [dependent] claims.” App. Br. 12. Appellants do not explain how or why this might be the case and have not provided any evidence in support of this allegation, which is also not otherwise self-evident from the record. We are instructed by our reviewing court that “[a]ttorney[] arguments in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and conclusory statements which are unsupported by factual evidence are entitled to little probative value). Appellants further contend that “there is no reason to combine the references as the Examiner does” (App. Br. 12) but Appellants do not indicate or explain how the reasons provided by the Examiner (see Ans. 8 for claim 8 and Ans. 9 for claim 9) are unreasonable or otherwise lack “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In summary, Appellants’ contentions are not persuasive of Examiner error and accordingly, we sustain the Examiner’s rejection of claims 3, 8, 9, and 12 as being obvious over Eichstadt and Messing. Appeal 2012-000806 Application 12/344,336 13 DECISION The Examiner’s rejections of claims 1-20 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tkl