Ex Parte KulkarniDownload PDFPatent Trial and Appeal BoardJan 22, 201411549023 (P.T.A.B. Jan. 22, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/549,023 10/12/2006 Sarang Kulkarni 2006P57016 US 6291 45113 7590 01/22/2014 Siemens Corporation Intellectual Property Department 170 Wood Avenue South Iselin, NJ 08830 EXAMINER EDWARDS, LINGLAN E ART UNIT PAPER NUMBER 2491 MAIL DATE DELIVERY MODE 01/22/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SARANG KULKARNI ____________ Appeal 2011-013039 Application 11/549,023 Technology Center 2400 ____________ Before JEFFREY S. SMITH, BRUCE R. WINSOR, and LARRY J. HUME, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellant 1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-17, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 The real party in interest identified by Appellant is Siemens Product Lifecycle Management Software Inc. App. Br. 4. Appeal 2011-013039 Application 11/549,023 2 STATEMENT OF THE CASE Appellant’s disclosure relates to Uniform Resource Identifier (URI) 2 redirect methods and more specifically, to time-sensitive URI mapping. Spec. ¶ 1. Claim 1, which is illustrative, reads as follows: 1. A method of supporting legacy URIs, comprising the steps of: receiving a request for a data in a data processing system; initializing said request with at least an expiration identifier by the data processing system; determining, by the data processing system, a redirection type based on a current date, comprising the steps of if said current date is less than said expiration identifier, then use a meta tag redirect; and if said current date is greater than or equal to said expiration identifier, then use a status code redirect; mapping said URI to a redirect-URI by the data processing system according to the determined redirection type. The Examiner relies on the following prior art in rejecting the claims: Subramanian US 2005/0140694 A1 June 30, 2005 Tip of the Day Redirect Based on Time of Day Using JavaScript, Web publication at http://www.devx.com/tips/Tip/13026. dated June 4, 1999 (hereinafter “DevX”). Tutorial - Giving search engine spiders direction with a 301 redirect, Web publication at http://www.tamingthebeast.net/articles3/spiders-301-redirect.htm recorded on archive.org, dated June 4, 2003 (hereinafter “Tamingthebeast”). 2 “Uniform Resource Locator (URL)” is a synonym for “URI.” Spec. ¶ 2. Appeal 2011-013039 Application 11/549,023 3 http://www.seocompany.ca/seo/url-redirect.html, Web publication at http://www.seocompany.ca/seo/url- redirect.htmlrecorded on archive.org dated Sept. 10, 2004 (hereinafter “SEO”). Different forms of redirects: permanent 301, temporary 302, javascript, meta-refresh, Web publication at http://oyoy.eu/huh/redirects/, recorded on archive.org, dated June 11, 2007 (hereinafter “Oyoy”). Claims 1-5, 8-13, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as obvious over DevX, SEO, Tamingthebeast, and Oyoy. Ans. 5-9. Claims 6, 7, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as obvious over DevX, SEO, Tamingthebeast, Oyoy, and Subramanian . Ans. 9-11. Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed May 27, 2011; “Reply Br.” filed Aug. 22, 2011) and the Answer (“Ans.” mailed June 22, 2011) for the respective positions of Appellant and the Examiner. Only those arguments actually made by Appellant have been considered in this decision. Arguments that Appellant did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). ISSUES Were the references cited by the Examiner from the Internet available to the public at a date that makes them prior art to Appellant’s Application? Does DevX, when combined with SEO and Tamingthebeast, teach or suggest “determining . . . a redirection type based on a current date,” as recited in claim 1? Appeal 2011-013039 Application 11/549,023 4 Does DevX, when combined with SEO and Tamingthebeast, teach or suggest an “expiration identifier is a date,” as recited in claim 3? Does DevX, when combined with SEO and Tamingthebeast, teach or suggest an “expiration identifier is a special format,” as recited in claim 4? Does DevX, when combined with SEO and Tamingthebeast, teach or suggest an “expiration identifier is one of a date or a special format,” as recited in claim 5? Is Subramanian analogous art with regard to Appellant’s invention? ANALYSIS AVAILABILITY OF REFERENCES Appellant contends “[t]he various websites may include some date information, but there is no evidence of record that these other websites or their purported dates are a true and correct copy of what was publically available on the respective dates.” App. Br. 22; see also Reply Br. 13. We disagree. The following table identifies the evidence of record regarding the availability to the public of the references from the Internet and their content relied on by the Examiner: Appeal 2011-013039 Application 11/549,023 5 Table 1 Reference Evidence reference was available to the public in its present form before the Appellant’s Oct. 12, 2006 filing date Evidence reference was not available to the public in its present form before the Appellant’s Oct. 12, 2006 filing date DevX Reference is “Tip of the Day” for the date June 4, 1999 (DevX; Ans. 4, 12) Reference was saved and indexed by web.archive.org on May 7, 2005 (Internet Archive Wayback Machine; Ans. 12) Reference was retrieved Mar. 2, 2010 (DevX) Reference indicates a “modified date” that matches a retrieval date of May 26, 2011 (App. Br. 22) Reference bears a copyright date of 2010 SEO Reference was saved and indexed by web.archive.org on Sept. 10, 2004 (SEO; Internet Archive Wayback Machine; Ans. 4) Reference bears a copyright date of 2004 (SEO) Reference was retrieved Mar. 2, 2010 (SEO) Tamingthebeast Reference was saved and indexed by web.archive.org on June 4, 2003 (Tamingthebeast; Ans. 4) Reference bears a copyright date of 1999-2003 (Tamingthebeast) Reference was retrieved Mar. 1, 2010 (Tamingthebeast) Appeal 2011-013039 Application 11/549,023 6 Oyoy None Reference was retrieved Mar. 2, 2010 (Oyoy) Reference was saved and indexed by web.archive.org on June 11, 2007 (Oyoy; Internet Archive Wayback Machine; Ans. 5-6) We find there is evidence of record regarding the date the websites and their content, as set forth in the copies relied on by the Examiner, were available to the public. We further find that, weighing the relative values of the evidence, the preponderance of the evidence demonstrates that DevX, SEO, and Tamingthebeast and their respective content were available to the public as of Appellant’s October 12, 2006 filing date (Ans. 2), and, therefore, qualify as prior art against Appellant’s claims. We find that the preponderance of the evidence does not indicate that Oyoy was available to the public prior to Appellant’s filing date. Accordingly, the Examiner’s reliance on Oyoy in rejecting the claims was error. Oyoy was relied on by the Examiner to teach that a “301 permanent redirect signals the search engine that redirection target URL should replace the old one,” (Ans. 7). The Examiner relies on Tamingthebeast for the same teaching: The 301 redirect is the safest way to preserve your ranking. On the next spidering, the search engine robot will obey the rule indicated in your .htaccess file. . . . In the next update, the old file name and path will be dropped and replaced with the new one. Most importantly, the 301 redirect is recognized by the mightiest of search engines – Google. Appeal 2011-013039 Application 11/549,023 7 Tamingthebeast, p. 4. Accordingly, Oyoy is cumulative with Tamingthebeast and the Examiner’s error was harmless error. In discussing Appellant’s further contentions, we place no reliance on the teachings of Oyoy. 3 REJECTION OF CLAIMS 1-5, 8-13, 16, AND 17 UNDER 35 U.S.C. § 103(A) OVER DEVX, SEO, AND TAMINGTHEBEAST Claims 1, 9, and 17 The Examiner finds that DevX teaches or suggests redirecting a request for a URI (i.e., URL) based on a current date. Ans. 6. Appellant contends “DevX doesn't do any redirection based on a current date -- DevX is specifically redirecting based on time of day, without regard to the date.” App. Br. 27. The Examiner explains that time of day and date are both well- known measurements of time, differing only in their “granularity.” Ans. 13- 14. Accordingly, it would have been obvious to one of ordinary skill in the art from DevX’s teaching of making a redirect conditional on time of day to make a redirect conditional on a more granular measurement of time, such as date. Ans. 14. We agree with the Examiner for the reasons stated by the Examiner. One of ordinary skill in the art, who is a person of ordinary creativity and not an automaton, KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007), and whose inferences and creative steps we may consider, id. at 418, would have learned from DevX that URI requests may be conditionally redirected 3 The fact that we rely on fewer than all of the references the Examiner applied does not, in itself, warrant a new ground of rejection. In re Bush, 296 F.2d 491,496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966). Appeal 2011-013039 Application 11/549,023 8 by comparing a current time parameter to an identifier. For example, in DevX’s example code statement “if ((currentHour < 6) | | (currentHour > 17)) {window.location = nightURL;} else {window.location = dayURL;}” currentHour is a time parameter and each of the values 6 and 17 is an identifier, i.e., an “expiration identifier” as recited in claim 1. See DevX, p. 1. One of ordinary skill in the art would have understood that selecting the units for the time parameter is merely a matter of obvious engineering choice. We note that nothing in the claim precludes the use of more than one expiration identifier or precludes alternating between types of redirects. Appellant contends “DevX . . . does not teach determining a redirection type based on the time of day. Rather, while ‘dayURL’ and ‘nightURL’ are not specifically described at all, they are certainly treated as if they are standard, simple URLs, and certainly of the same ‘type.’” App. Br. 28. Appellant relatedly contends as follows: SEO discusses types of redirects in general, but does not and cannot do this conditionally based on any test with regard to the date or anything else -- these are all types of required redirects/pointers. The types of redirects used in SEO are all discussed as exclusive alternatives, and some advantages of different types of redirects are discussed, but there is no concept at all that different types of redirects may be determined conditionally by the system depending on the date or anything else, as in the current claims. App. Br. 29-30. Appellant similarly argues that Tamingthebeast teaches different types of redirects, but does not teach varying the type of redirect conditionally. App. Br. 30. The Examiner asserts that “[t]he Appellant does not provide a definition for ‘redirection types’ or ‘types’ in the specification. Nowhere in the specification did the Appellant discuss what a ‘redirection type’ is or is Appeal 2011-013039 Application 11/549,023 9 not.” Ans. 16. Claim construction is an issue of law that we review de novo. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). Claims are not to be read in a vacuum, but must be given their broadest reasonable interpretation in light of the Specification as it would be interpreted by ordinary artisans. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). A pertinent dictionary definition is “type . . . n . . . 4 a: qualities common to a number of individuals that distinguish them as an identifiable class . . . d: a particular kind, class, or group.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 1278 (10th ed. 1999). We construe a redirection type to be a kind, class, or group of redirects having common qualities that distinguish them as an identifiable class, and, in particular, in the context of claim 1, a redirection type encompasses the classes of meta tag redirects and status code redirects, but does not encompass individual redirect destination URIs. Accordingly, we agree that DevX does not teach different redirection types, as properly construed. That said, however, the Examiner also relies on SEO and Tamingthebeast to teach redirection types. See Ans. 6-7; see also Bush, 296 F.2d at 496. Appellant concedes that SEO and Tamingthebeast teach different redirection types, but asserts that SEO and Tamingthebeast teach that the redirection types are exclusive alternatives. See App. Br. 29-30. Appellant does not, however, point us to any specific passage of either SEO or Tamingthebeast that indicates that the described redirection types are exclusive alternatives. Therefore, we conclude, on this record, that SEO and Tamingthebeast are, at most, silent as to whether the described redirection types are exclusive alternatives or can be used in combination. Appeal 2011-013039 Application 11/549,023 10 The essence of Appellant’s argument is that although DevX may teach time-conditional redirects it does not teach the use of different redirection types, and although SEO and Tamingthebeast teach different redirection types, they do not teach conditional redirection. Appellant’s argument is unpersuasive because it attacks the references individually rather than addressing the combination articulated by the Examiner. “[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. at 425 (citations omitted) (emphasis added). Appellant has failed to persuade us that the Examiner’s rejection of claim 1 was reversible error. Accordingly, we sustain the rejection of claim 1 and claims 9 and 17, which were argued together with claim 1. Claims 2 and 10 Appellant argues claims 2 and 10 relying on the arguments made for claims 1 and 9, from which they respectively depend, and were not otherwise separately argued with particularity. See App. Br. 31. For the reasons discussed above regarding claim 1, we sustain the rejection of claims 2 and 10. Appeal 2011-013039 Application 11/549,023 11 Claims 3 and 11 Appellant argues claims 3 and 11 relying on the arguments made for claims 1 and 9, from which they respectively depend. App. Br. 31. Appellant further contends that DevX does not teach or suggest that the expiration identifier is a date. Id. Parallel to our discussion above with regard to the “current date” limitation of claim 1, DevX teaches an expiration identifier that is a time (e.g., 6 am or 6 pm). See DevX, p. 1. We find that one of ordinary skill in the art would have understood date to merely be different unit of measurement for time, an obvious engineering choice. Therefore, and for the reasons discussed above regarding claim 1, we sustain the rejection of claims 3 and 11. Claims 4 and 12 Appellant argues claims 4 and 12 relying on the arguments made for claims 1 and 9, from which they respectively depend. Appellant further contends as follows: [DevX’s] “currentTime” and “currentHour” variables are not special formats as used in the claims. The claims require a comparison between the current date and the special format expiration indicator -- DevX does not compare “currentTime” or “currentHour” with themselves or each other, and so the claim limitations cannot be met by the proposed combination. . . . . Neither the Examiner's Answer nor the Final Office Action show anything in any special format at all that can be considered an “expiration identifier” and is compared to the current date, as claimed. Reply Br. 20. Appeal 2011-013039 Application 11/549,023 12 The Examiner explains that “[t]he original specification does not provide a definition for “special format”, therefore, any specific format used is a special format.” Ans. 20. We agree with Appellant. We note that Appellant’s Specification states “[t]he expiration identifier can be in a date format, or a special format, such as NOW and NEVER.” Spec. ¶ 26. We give the term “special format” its broadest reasonable interpretation in light of Appellant’s Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), without importing limitations from the Specification into the claims, SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). We conclude that in light of the Appellant’s Specification (see Spec. ¶ 26), a “special format” is any expiration date format that is not a date or time format. DevX’s expiration identifiers, “6” and “17” represent hours of the day and are, therefore, in time format. See DevX, p. 1. Accordingly, the Examiner has not demonstrated that DevX, or any other reference cited with regard to claim 4, teaches a “special format” for an expiration identifier. Therefore, we do not sustain the rejection of claim 4 or claim 12. Claims 5 and 13 Appellant argues claims 5 and 13 relying on the arguments made for claims 1 and 9, from which they respectively depend. Reply Br. 32. Appellant further contends “[t]these claims require that the expiration identifier is one of a date or a special format. This is not taught or suggested by any combination of the cited references, in the context of the remaining limitations of the parent claims.” App. Br. 33. Claim 5 claims the limitations of claims 3 and 4 in the alternative. Giving the claim its broadest reasonable interpretation, we conclude that the Appeal 2011-013039 Application 11/549,023 13 alternative recitation of claim 1 is taught or suggested by the prior art if either recited alternative is taught or suggested by the prior art. As we found above regarding claim 3, DevX teaches or suggests an expiration identifier that is in a date (i.e., time) format. For the reasons discussed above regarding claims 1 and 3, we sustain the rejection of claims 5 and 13. Claims 8 and 16 Appellant argues claims 8 and 16 relying on the arguments made for claim 1. App. Br. 34-35. For the reasons set forth above regarding claim 1, we sustain the rejection of claims 8 and 16. REJECTION OF CLAIMS 6, 7, 14, AND 15 UNDER 35 U.S.C. § 103(A) OVER DEVX, SEO, TAMINGTHEBEAST, AND SUBRAMANIAN The Examiner finds that “Subramanian and DevX as well as the other references cited are all analogous art because they are from the same field of endeavor for computer programming.” Ans. 24. Appellant contends the Examiner erred in relying on Subramanian because Subramanian has nothing to do with URLs, URIs, or redirects, and is, therefore, non- analogous art. App. Br. 23. We agree with Appellant. Whether a prior art reference is analogous to the claimed invention such that it qualifies as prior art for a rejection under 35 U.S.C. § 103 is a question of fact. Innovention Toys, LLC v. MGA Entm't., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). In KSR, the Supreme Court “direct[ed] us to construe the scope of analogous art broadly.” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (citing KSR, 550 U.S. at 402); see KSR, 550 U.S. at 417, 420. In an obviousness analysis, Appeal 2011-013039 Application 11/549,023 14 [t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Determining whether art is in the same field of endeavor as Appellant’s claimed invention “requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention's subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” Bigio, 381 F.3d at 1325. Although the Examiner is correct that the Examiner’s claimed invention and the cited references are all broadly directed to computer programming (Ans. 24), Subramanian diverges substantially from the “the embodiments, function, and structure of [Appellant’s] claimed invention,” Bigio, 381 F.3d at 1325, and the other cited prior art. Appellant’s invention and the DevX, SEO, and Tamingthebeast references are in the field of locating websites on the Internet. See, e.g., Spec. ¶ 2. Subramanian, on the other hand, is in the field of combining media types such as 2D, 3D, video, audio, text, and imaging. See Subramanian, Abstract. Therefore, we find that Subramanian is not from the same field of endeavor as Appellant’s invention and does not meet the first test for analogous art. Accordingly, the Examiner erred in finding that Subramanian is analogous art by virtue of being from the same field of endeavor. Turning to the second test for analogous art, “[a] reference is reasonably pertinent if, even though it may be in a different field from that Appeal 2011-013039 Application 11/549,023 15 of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” Klein, 647 F.3d at 1348 (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). Subramanian is concerned with “output[ting] complex graphics and audiovisual data in an efficient manner” (see Subramanian, ¶ 0006). One of ordinary skill in the art faced with the problem of “combin[ing] . . . redirect techniques [to] (1) provide[] the user with a redirect notification for a period of time, and (2) automatically redirect[] the user following the expiration of the time period” (Spec. ¶ 7), would not have been reasonably expected to look to the Subramanian’s graphics and audiovisual processing for help. In other words, one of ordinary skill in the art would not have found Subramanian’s teachings reasonably pertinent to Appellant’s problem; Subramanian does not meet the second test for analogous art. We note that the Examiner’s finding that “Subramanian teaches using a special time value for representing a special point in time, one of ordinary skill in the art would recognize that such representation can be applied in any programming environment for representing time when ‘time’ is involved” (Ans. 24) is little more than a restatement of the rejection made by the Examiner and does not explain why Subramanian is reasonably pertinent to the Appellant’s problem of combining re-direct techniques. Accordingly, the Appellant has persuaded us that the Examiner erred in finding Subramanian to be analogous art. Therefore, we do not sustain the rejection of claims 6, 7, 14, and 15, which were rejected relying on the teachings of Subramanian. Appeal 2011-013039 Application 11/549,023 16 ORDER The decision of the Examiner to reject claims 1-3, 5, 8-11, 13, 16, and 17 is affirmed. The decision of the Examiner to reject claims 4, 6, 7, 12, 14, and 15 is reversed. 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART kis Copy with citationCopy as parenthetical citation