Ex Parte Levergood et alDownload PDFPatent Trial and Appeal BoardJun 26, 201711971361 (P.T.A.B. Jun. 26, 2017) 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. 3057.0020007 4770 EXAMINER WINDER, PATRICE L ART UNIT PAPER NUMBER 2452 MAIL DATE DELIVERY MODE 11/971,361 01/09/2008 Thomas Mark Levergood 26111 7590 06/26/2017 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 06/26/2017 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 THOMAS MARK LEVERGOOD, LAWRENCE C. STEWART, STEPHEN JEFFREY MORRIS, ANDREW C. PAYNE, and GEORGE WINFIELD TREESE Appeal 2016-007853 Application 11/971,361 Technology Center 2400 Before JOHN A. JEFFERY, ERIC B. CHEN, and JUSTIN T. ARBES, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—114. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants’ invention controls access to a content server from clients by, among other things, generating a session identifier (SID) based on an access request received by the content server, where the SID is used by requesting clients to access the server. See generally Spec. 10-11; Fig. 3. See generally Claims 1,2, and 7 are illustrative: Appeal 2016-007853 Application 11/971,361 1. A secure electronic shopping method, comprising: receiving an initial link message from a client computer at a merchant server using a transfer format suitable for communication over the Internet; transmitting a session link message in response to the initial link message back to the client computer via the Internet, the session link message comprising a session identifier used to maintain session state data with respect to an electronic shopping session between the client computer and the merchant server, wherein the session identifier is distinct from identification of the client computer or a user of the client computer, and wherein the initial link message does not include the session identifier; causing the client computer to store the session state data at the client computer; and completing the electronic shopping session between the client computer and the merchant server using the session identifier to identify a series of related requests corresponding to the electron shopping session made by the client computer to the merchant server, and communicating with a payment server to authorize a purchase associated with the shopping session. 2. The method of claim 1, further comprising: transmitting data associated with the shipping session to the payment server; the payment server using the data associated with the shopping session to authorize the purchase associated with the shopping session. 7. The method of claim 2, further comprising: associating the payment server with a plurality of merchant servers; 2 Appeal 2016-007853 Application 11/971,361 wherein the data associated with a shopping session includes data identifying a particular merchant server; and wherein the data transmitted to the payment server includes the merchant identifying data. THE REJECTIONS The Examiner rejected claims 7, 11—15, 25—31, 41—45, 49, 52—58, 64, 65, 68—74, 81, 84—89, 99, 102, 103, 105, and 108-114 under 35 U.S.C. §112, first paragraph as failing to comply with the written description requirement. Non-Final Act. 2.1 The Examiner rejected claims 7, 11—15, 25—31, 41—45, 49, 52—58, 64, 65, 68—74, 81, 84—89, 99, 102, 103, 105, and 108-114 under 35 U.S.C. §112, first paragraph as failing to comply with the enablement requirement. Non-Final Act. 3. The Examiner rejected claims 1, 2, 8, 16, 17, 23, 24, 32—35, 37, 38, 50, 51, 59-62, 66, 75-78, 80, 82, 90-96, 98, 104, 106, and 107 under 35 U.S.C. § 103(a) as unpatentable over Louis Perrochon, Translation Servers: Gateways Between Stateless and Stateful Information Systems, Institut fur Informationssysteme (“Perrochon”),2 Carlin (US 5,694,549; Dec. 2, 1997), and Russell (US 5,455,953; Oct. 3, 1995). Non-Final Act. 5-8. 1 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed July 3, 2014 (“Non-Final Act.”); (2) the Appeal Brief filed July 13, 2015 (“App. Br.”); (3) the Examiner’s Answer mailed June 1, 2016 (“Ans.”); and (4) the Reply Brief filed July 28, 2016 (“Reply Br.”). 2 Although this reference is undated, Appellants do not dispute its qualification as prior art. 3 Appeal 2016-007853 Application 11/971,361 The Examiner rejected claims 3—6, 36, 63, 79, and 97 under 35 U.S.C. § 103(a) as unpatentable over Perrochon, Carlin, Russell, and Crawford (US 5,771,354; June 23, 1998). Non-Final Act. 8-9. The Examiner rejected claims 9, 10, 18—21, 39, 40, 46-48, 67,3 83, 100, and 101 under 35 U.S.C. § 103(a) as unpatentable over Perrochon, Carlin, Russell, and M. G. Lavenant & J. A. Kruper, The Pheonix Project: Distributed Hypermedia Authoring, 1st WWW Conf. (Mar. 1994) (“Lavenant”). Non-Final Act. 9—11. RELATED PROCEEDINGS Appellants inform us of various proceedings related to the present application’s parent patents. App. Br. 3^4. In one of those proceedings, we reversed the Examiner’s decision to reject the then-pending claims over prior art references different than those at issue here. See Ex parte Levergood, No. 2010-008995 (BPAI July 19, 2012). This appeal is also related to an appeal in Application Serial Number 11/300,245. See Ex parte Levergood, No. 2016-006543 (PTAB 2017). THE REJECTION OF CLAIM 22 We first address a procedural issue. Both Appellants and the Examiner acknowledge that claim 22 is rejected and appealed. See App. Br. 1,9, 14 (noting that the Examiner provided no statutory ground or analysis 3 Although the Examiner omits claim 67 from the statement of the rejection, the Examiner nonetheless includes this claim in the corresponding discussion. Compare Non-Final Act. 9 with id. at 11. Accordingly, we present the correct claim listing here, and deem the Examiner’s error in this regard as harmless. 4 Appeal 2016-007853 Application 11/971,361 for the rejection of claim 22); see also Non-Final Act. 1 (indicating that claims 1—114 are rejected on the Form PTOL-326). But apart from merely indicating that claim 22 is rejected on the Form PTOL-326, nowhere in the Non-Final Rejection or the Answer does the Examiner articulate a ground for rejection for this claim. The Examiner, however, has a duty to give notice of the rejection with sufficient particularity to give Appellants a fair opportunity to respond to that rejection. See 35U.S.C. § 132(a). As the Federal Circuit indicates: [T]he PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in notifying] the applicant . . . [by] stating the reasons for [its] rejection, or objection or requirement, 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. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and quotation marks omitted). Here, the Examiner failed to satisfy 35 U.S.C. § 132 by failing to (1) state the reasons for the rejection, and (2) provide information and references useful in judging the propriety of the rejection. By not satisfying the requisite burden of production to justify the rejection of claim 22 under § 132, the Examiner failed to establish a prima facie case. Accordingly, we do not sustain that rejection. 5 Appeal 2016-007853 Application 11/971,361 THE WRITTEN DESCRIPTION REJECTION Regarding claim 7, the Examiner finds that Appellants’ original disclosure lacks details of the recited shopping session and payment server. Non-Final Act. 2. Although the Examiner acknowledges that Appellants incorporate U.S. Patent No. 5,715,314 (“the ’314 patent”) by reference on page 3 of the Specification, this incorporation is said to be limited to only the “hypertext conventions and related functions of the world wide web” in the ’314 patent—not a shopping cart. Ans. 5. Appellants cite two passages from the ’314 patent that are said to be incorporated in the present application and support the claimed invention. App. Br. 14-15. ISSUE Has the Examiner erred in rejecting claim 7 under § 112, first paragraph by finding that Appellants’ disclosure does not convey with reasonable clarity that Appellants possessed the claimed method, including the limitations pertaining to the recited payment server and shopping session, when the application was filed? This issue turns on whether the disclosure supporting these elements in the ’314 patent was properly incorporated by reference in the present application. ANALYSIS It is undisputed that the shopping session and payment server in claim 7 are not discussed explicitly in the Specification, and that support for these limitations is found only in the ’314 patent. See App. Br. 14—15 (citing ’314 patent, col. 2,11. 19-42 and col. 7,11. 14—30 as supporting the disputed 6 Appeal 2016-007853 Application 11/971,361 limitations); see also Ans. 5 (acknowledging these limitations). Nor is it disputed that the ’314 patent is incorporated, at least in part, in the present application. See id. Rather, this dispute turns on the scope of that incorporation, namely whether the Specification incorporates (1) the entire ’314 patent to include the two above-noted passages that are said to support the shopping session and payment server limitations, or (2) only that part of that patent pertaining to “hypertext conventions and related functions of the world wide web” discussed on page 3 of the Specification. In evaluating the scope of an incorporation by reference, “the standard is whether one reasonably skilled in the art would understand the application as describing with sufficient particularity the material to be incorporated.” Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011); see also Hollmer v. Harari, 681 F.3d 1351, 1357 (Fed. Cir. 2012) (“when the ultimate question implicates the understanding of a person of ordinary skill, such as determining whether the written description requirement is satisfied, ... we have reviewed the incorporation statements from the person of ordinary skill vantage point”); Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (“To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.”). On page 3, lines 17 to 25, Appellants’ original Specification explains that the World Wide Web is based on hypertext and Hypertext Transfer Protocol (HTTP), and that one format to transfer information is via documents created using Hypertext Markup Language (HTML). Notably, 7 Appeal 2016-007853 Application 11/971,361 the original Specification adds that “[t]he hypertext conventions and related functions of the world wide web are described in the appendices of U.S. Patent Application Serial No. 08/328,133 [(“the ’133 application”)], filed on October 24, 1994, by Payne etal. which is incorporated herein by reference.” (emphasis added). As Appellants indicate, this passage was later amended to cite the ’133 application’s corresponding ’314 patent.4 App. Br. 14—15. The sentence now reads: “The hypertext conventions and related functions of the world wide web are described in the appendices of U.S. Patent Application Serial No. 08/328,133, filed on October 24, 1994, issued as U.S. Patent No. 5,715,314 on February 3, 1998, by Payne et al. which is incorporated herein by reference.” To be sure, there is some ambiguity in the sentence containing the above-emphasized passage because the “which” clause on page 3, line 25 of the Specification could be interpreted as incorporating either (1) the entire ’133 application (and its corresponding ’314 patent), or (2) only the hypertext conventions and related functions of the world wide web described in that application’s appendices. This ambiguity is further underscored by the Specification’s stating explicitly that it incorporates other applications’ “entire disclosure[s]” by reference on page 1, lines 8 and 9, yet omits such a statement in connection with the ’133 application and its corresponding ’314 patent on page 3, lines 23 to 25. Nevertheless, we find that one reasonably skilled in the art would understand the “which” clause on page 3, line 25 to refer to the ’133 application (and its corresponding ’314 patent) in its entirety—not just the 4 This amendment was made on April 8, 2011. 8 Appeal 2016-007853 Application 11/971,361 hypertext conventions and related functions of the world wide web described in the application’s appendices as the Examiner suggests. See Ans. 5. First, the phrase “which is incorporated herein by reference” (emphasis added) on page 3, line 25 of the Specification refers to the singular in view of the word “is,” thus suggesting that this phrase is intended to modify the single ’133 application—not the plural “hypertext conventions and related functions of the world wide web . . . described in the appendices” of that application. Otherwise, the “which” clause would have used the word “are” instead of “is” to indicate that these plural appendices are incorporated by reference. Second, our interpretation is consistent with Harari, where the court concluded that the language “[t]he disclosures of the two applications are hereby incorporate[d] by reference” that was at issue in that case was “broad and unequivocal,” and thus incorporated the disclosures in their entireties. See Harari, 656 F.3d at 1335. In Harari, the court distinguished this incorporation from incorporating “relevant portions” of the disclosures, which was held to be limited to the specifically-referenced portions. Id. at 1335—36. Notably, the court held that the incorporation was in its entirety despite discussing specific implementations in the reference to be incorporated. Id. at 1335. Given this holding in light of the record before us, we conclude that Appellants’ Specification incorporates the entire ’133 application and its corresponding ’314 patent by reference. Because it is undisputed that column 2, lines 19 to 42 and column 7, lines 14 to 30 of the incorporated ’314 patent support the present application’s shopping session and payment server limitations in claim 7 (see App. Br. 14—15; Ans. 5), and we agree with Appellants that those portions are incorporated by reference in the instant application, we will not 9 Appeal 2016-007853 Application 11/971,361 sustain the Examiner’s written description rejection of claim 7, and claims 11-15, 25-31, 41—45, 49, 52-58, 64, 65, 68-74, 81, 84^89, 99, 102, 103, 105, and 108—114, which recite similar limitations, for similar reasons. THE ENABLEMENT REJECTION The Examiner finds that Appellants’ disclosure does not enable skilled artisans to make or use the invention recited in claim 7. Final Act. 3; Ans. 5—6. Although the Examiner acknowledges that Appellants’ disclosure enables “charging” generally, it is said to not enable merchant and payment servers and a shopping session involving a shopping cart, where particular messages are exchanged to implement “charging.” Final Act. 3; Ans. 6. Appellants argue that not only did the Examiner fail to make a prima facie case of enablement by failing to address any factors articulated in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), much less all such factors, column 2, lines 19 to 42 and column 7, lines 14 to 30 of the incorporated ’314 patent provide sufficient description to enable skilled artisans to make the claimed invention. App. Br. 15—16. ISSUE Has the Examiner erred in rejecting claim 7 under § 112, first paragraph by finding that Appellants’ disclosure does not enable ordinarily skilled artisans to make or use the claimed method, in particular associating a payment server with plural merchant servers, where (1) data associated with a shopping session includes data identifying a particular merchant server, and (2) data transmitted to the payment server includes the merchant identifying data, without undue experimentation? 10 Appeal 2016-007853 Application 11/971,361 ANALYSIS To determine whether Appellants’ disclosure is enabled, the test is whether ordinarily skilled artisans could make or use the invention from the disclosure coupled with information known in the art without undue experimentation. See United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). Our emphasis underscores the fact that a disclosure may be enabling despite the need for experimentation, so long as that experimentation is not undue. See In re Angstadt, 537 F.2d 498, 504 (CCPA 1976) (emphasis added). Determining whether any necessary experimentation is undue involves considering many relevant factors including, but not limited to: (1) the breadth of the claims; (2) the nature of the invention; (3) the state of the prior art; (4) the level of one of ordinary skill; (5) the level of predictability in the art; (6) the amount of direction provided by the inventor; (7) the existence of working examples; and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Wands, 858 F.2d at 737. Although this is a non-limiting list, all Wands factors need not be reviewed, for they are illustrative—not mandatory. See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991); see also In re Hillis, 484 F. App’x 491, 495 (Fed. Cir. 2012) (unpublished) (“Although the examiner did not specifically cite the Wands factors, and the Board did not expressly identity the factors upon which it relied, it is evident that both the examiner’s analysis and the Board’s analysis were based on the factors most relevant to this case . . . .”). Therefore, to the extent that Appellants’ 11 Appeal 2016-007853 Application 11/971,361 contend that the Examiner erred by not addressing all Wands factors (see App. Br. 16), such a contention is contrary to established precedent and is, therefore, unavailing. In any event, the Examiner not only considers the breadth of the claims in the enablement analysis, but also considers Carlin as presumably reflecting the state of the prior art. See Ans. 6. Therefore, the Examiner’s analysis is based on at least two Wands factors. Nevertheless, we find the Examiner’s enablement rejection problematic on this record. First, the two passages of the ’314 patent that are cited by Appellants as enabling the limitations of claim 7, namely column 2, lines 19 to 42 and column 7, lines 14 to 30 (App. Br. 16), are incorporated by reference into the present application, as noted previously. Given this incorporation in light of the record as a whole, the Wands factors weigh in favor of enablement, including the breadth of the claims. Claim 7 depends from claim 2 which depends from independent claim 1 that recites, in pertinent part, transmitting a session link message responsive to an initial link message received at a merchant server, where the session link message comprises an SID used to maintain session state data with respect to an electronic shopping session between a client computer and the merchant server. Claim 1 also recites, in pertinent part, “communicating with a payment server to authorize a purchase associated with the shopping session.” Claim 2 adds that data associated with the shopping session is transmitted to the payment server that uses this data to authorize the purchase. Claim 7 further adds that the payment server is associated with plural merchant servers, where (1) data associated with a shopping session 12 Appeal 2016-007853 Application 11/971,361 includes data identifying a particular merchant server, and (2) data transmitted to the payment server includes the merchant identifying data. Given these particulars, the breadth of claim 7 weighs in favor of enablement, particularly when the recited limitations are interpreted in light of the Specification, including its incorporated subject matter. Despite the Examiner’s generalization that the claims include more details than “charging the server” (Ans. 6), claim 7 nonetheless specifies a particular transmission of data to a payment server identifying a particular merchant server to authorize a purchase associated with a shopping session. And despite the Examiner’s conclusory assertion that “further details are not easily determined by the ‘314 patent” (Ans. 6), we agree with Appellants that (1) column 7, lines 14 to 30 discuss an exemplary implementation involving a payment-based transaction between a payment computer, buyer computer, and merchant, and (2) column 2, lines 19 to 42 discuss an exemplary shopping cart implementation. App. Br. 16. This incorporated disclosure weighs in favor of enablement, for it provides working examples related to the recited shopping session and associated data transmission. That the present application and cited prior art references reflect a relatively high skill level in the field of computer science further weighs in favor of enablement. Even assuming, without deciding, that some experimentation would have been required at the time of the invention to make or use the invention recited in claim 7, there is no evidence on this record to prove that such experimentation would have been undue given the relatively high skill level in the art and the state of the art at that time which, 13 Appeal 2016-007853 Application 11/971,361 as noted below, reflected knowledge and implementation of secure electronic shopping techniques. Leaving aside the fact that the Examiner’s statement that Carlin’s “charging” is based on requesting users’ accounts is not supported by any citations from that reference (see Ans. 6), Carlin nonetheless explains that it was known for computers to provide on-line purchasing functions and shopping areas where subscribers could order products through a service provider, as well as bill subscribers via a multi-provider on-line system. See Carlin, col. 3,11. 17—23; col. 4,11. 48—50; col. 5,11. 20—26. Perrochon likewise refers to electronic shopping functionality where the user can browse through a catalog, select items, and submit a completed order. Perrochon 4—5. The’314 patent also explains that, in 1993, a network sales system including buyer and merchant computers as well as a payment computer were known in the art. ’314 patent, col. 1,11. 18—35 (discussing U.S. Patent Application No. 08/168,519). In this known system, after the buyer computer sends a purchase message to a merchant computer, the merchant computer (1) sends a payment order to the payment computer that authorizes the purchase, and (2) sends an authorization message to the merchant computer that then sends the product to the buyer. Id. Given this then-known electronic shopping functionality, the state of the art at the time of Appellants’ invention reflected knowledge and implementation of secure electronic shopping techniques, including transmitting data associated with shopping sessions identifying particular merchants involved in those transactions. Accordingly, the state of the art at the time of Appellants’ invention weighs in favor of enablement. That this computer-based art was reasonably predictable likewise weighs in favor of enablement. 14 Appeal 2016-007853 Application 11/971,361 Therefore, we will not sustain the Examiner’s enablement rejection of claim 7, and claims 11—15, 25—31, 41—45, 49, 52—58, 64, 65, 68—74, 81, 84—89, 99, 102, 103, 105, and 108—114, which recite similar limitations, for similar reasons. THE REJECTION OVER PERROCHON, CARLIN, AND RUSSELL The Examiner finds that Perrochon discloses various elements recited in claim 1 including receiving an initial link message from a client computer at a merchant server (i.e., back-end server), and transmitting a session link message responsive to the initial link message back to the client computer via the Internet, which is said to be taught by the functionality of Perrochon’s Translation Server. Non-Final Act. 5. Although the Examiner acknowledges that Perrochon does not communicate with a payment server to authorize a purchase or use an SID in a session link message, the Examiner cites Carlin and Russell, respectively, for teaching these limitations in concluding that the claim would have been obvious. Id. at 6. Appellants argue that not only does the Examiner fail to address various recited limitations, but the Examiner’s reliance on Russell’s client- based functionality is misplaced because it does not involve requests made to a server, let alone responses to those requests. App. Br. 11, 17—18. As such, Russell is said to be at odds with transmitting a session link message responsive to an initial link message back to the client computer via the Internet as claimed. Id. at 18. Perrochon is said to suffer from the same deficiency because Perrochon’s Translation Server—not the back-end information server—manages sessions with the client. Reply Br. 3^4. Appellants add that not only does Perrochon teach away from using its 15 Appeal 2016-007853 Application 11/971,361 Translation Server in a system involving a merchant server, the Examiner fails to provide any rationale to combine Perrochon’s different embodiments. Id. at 4—8. Appellants also argue that the Examiner’s “perfunctory” obviousness rejections of claims 32—35, 37, 38, 50, 51, 59-62, 66, 75—78, 80, 82, 90-96, 98, 104, 106, and 107 are so uninformative that Appellants are prevented from explaining effectively how the claims are patentable over the rejections. App. Br. 12—13. Appellants add that not only did the Examiner create an entirely unsubstantiated “within the scope” standard in connection with the obviousness rejections, many claims have distinguishing features for which the Examiner failed to provide relevant references that teach or suggest these features. Id. at 13—14. ISSUES Under § 103, has the Examiner erred by finding that Perrochon, Carlin, and Russell collectively would have taught or suggested: (1) (a) transmitting a session link message comprising an SID responsive to an initial link message back to a client computer via the Internet, and (b) using the SID to identify a series of related requests corresponding to an electronic shopping session made by the client computer to a merchant server as recited in claim 1 ? (2) the limitations of claims 32—35, 37, 38, 50, 51, 59-62, 66, 75—78, 80, 82, 90-96, 98, 104, 106, and 107? 16 Appeal 2016-007853 Application 11/971,361 ANALYSIS Claims 1, 2, 8, 16, 17, 23, and 24 We begin by noting, as do Appellants, that the Examiner’s obviousness rejection of claim 1 does not address two limitations, namely (1) “wherein the session identifier is distinct from identification of the client computer or a user of the client computer, and wherein the initial link message does not include the session identifier,” and (2) “using the session identifier to identify a series of related requests corresponding to the electronic shopping session made by the client computer to the merchant server.” See Non-Final Act. 5—6 (omitting these limitations). Accord App. Br. 11 (noting this deficiency). The Examiner’s obviousness rejection is, therefore, problematic for this reason alone. As noted previously, the Examiner has a duty to give notice of the rejection with sufficient particularity to give Appellants a fair opportunity to respond to that rejection. See 35 U.S.C. § 132(a); see also Jung, 637 F.3d at 1362. Here, the Examiner failed to satisfy 35 U.S.C. § 132 by failing to (1) explain why the two above-noted limitations are taught or suggested by the cited references, let alone provide the requisite facts supporting the conclusion that the claim would have been obvious to enable a meaningful assessment of the propriety of the rejection with respect to those limitations. By not satisfying the requisite burden of production to justify the obviousness rejection of claim 1 under § 132, the Examiner failed to establish aprima facie case. Accordingly, we do not sustain that rejection for that reason alone. 17 Appeal 2016-007853 Application 11/971,361 Even assuming, without deciding, that Russell teaches that a series of related requests rely on a related SID data structure as the Examiner asserts (Ans. 7), and that this statement relates to the “using the session identifier” limitation in claim 1, the Examiner still fails to address adequately the first missing limitation noted above, namely that the SID is distinct from identification of the client computer or a user of the client computer, and that the initial link message does not include the session identifier. Nor will we speculate in that regard here in the first instance on appeal. Nevertheless, it is apparent from the rejection and the Examiner’s Answer that the Examiner relies on Russell for a limited purpose, namely that SIDs are known in the art, and that providing an SID in the Perrochon/Carlin shopping system would have been obvious. See Non-Final Act. 6 (citing Russell, col. 5,11. 43—53); Ans. 6—7. Given this limited reliance on Russell, Appellants’ contentions regarding Russell’s alleged shortcomings pertaining to transmitting a session link message responsive to the initial link message back to the client computer via the Internet, where the initial link message is received at a merchant server (App. Br. 18) are not germane to the limited purpose for which Russell was cited. Rather, Perrochon was cited for teaching those limitations. See Non-Final Act. 5 (citing Perrochon § 3.2, Fig. 5). Still, this apparently limited reliance on Russell does not relieve the Examiner of the duty to (1) address all recited limitations in the rejection, including the two omitted limitations involving the SID noted above, and (2) articulate facts and a reasoned explanation to support the Examiner’s obviousness conclusion with respect to the claim. To the extent that the Examiner’s position is based on Russell for teaching or suggesting the two 18 Appeal 2016-007853 Application 11/971,361 above-noted limitations, we cannot say on this record, nor will we speculate in that regard here in the first instance on appeal. Nevertheless, we find unavailing Appellants’ contention that Perrochon is deficient because its Translation Server—not the back-end information server—manages sessions with the client. Reply Br. 3^4. Although claim 1 recites that an initial link message from a client computer (presumably mapped to the “front-end” computer in Perrochon’s Figure 5) is received at a “merchant server” (presumably Perrochon’s “back-end” server), nothing in the claim precludes translating or relaying such a message to the back-end server via an intermediate Translation Server. So even assuming, without deciding, that Perrochon’s Translation Server manages sessions with the client as Appellants contend (Reply Br. 4), there is nonetheless a link established between the client computer and the back end, albeit indirectly via the Translation Server. Appellants’ contention, then, that Perrochon’s back-end server is not used for session management (Reply Br. 3 4) is, therefore, unavailing and not commensurate with the scope of the claim. Nor do we agree that Perrochon teaches away from the recited electronic shopping method contrary to Appellants’ assertion. Reply Br. 4—6. Although commercial service providers were not easily able to bill the user due to the existence of a Translation Server as Appellants indicate (Reply Br. 5 (citing Perrochon § 6.3)), that does not mean that these providers were unable to bill the user under these conditions. Rather, this passage merely means that the providers could not do so easily. This disadvantage may well be outweighed by the advantages of using Translation Servers noted in Perrochon. See Perrochon § 6.2 (noting various 19 Appeal 2016-007853 Application 11/971,361 benefits of Translation Servers including reducing costs by upgrading character-based user interfaces to graphical user interfaces in lieu of redesigning the system, reducing cost in providing new services, etc.). Such considerations amount to an engineering trade-off well within the skill level of ordinarily skilled artisans. Therefore, we find that ordinarily skilled artisans, upon reading Perrochon, would not be discouraged from following the path set out in the claim, or would be led in a direction divergent from Appellants’ path to teach away from the claimed approach. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks omitted). Appellants’ contention that the Examiner fails to provide any rationale to combine Perrochon’s different embodiments (Reply Br. 6—8) is likewise unavailing, for the Examiner’s rejection relies solely on the embodiment where full state information is provided to the browser—not just the key as in a different embodiment. See Non-Final Act. 6 (citing Perrochon § 4.3.1). To the extent the Examiner also relies on the key-based embodiment in responding to Appellants’ arguments in the Examiner’s Answer (see Ans. 3, 6), we deem any error associated with this reliance as harmless, for the rejection relies solely on the other embodiment in Perrochon’s Section 4.3.1. Nevertheless, due to the previously-noted deficiencies in the rejection, we are persuaded that the Examiner erred in rejecting (1) independent claim 1; (2) independent claims 32, 59, 75, and 90 which recite commensurate limitations; and (3) dependent claims 2, 8, 16, 17, 23, 24, 33—35, 37, 38, 50, 51, 60-62, 66, 76-78, 80, 82, 91-96, 98, 104, 106, and 107 for similar reasons. Because this issue is dispositive regarding our reversing the 20 Appeal 2016-007853 Application 11/971,361 Examiner’s rejection of these claims, we need not address Appellants’ other associated arguments.5 THE OTHER OBVIOUSNESS REJECTIONS Because the Examiner has not shown that the additional cited prior art cures the foregoing deficiencies regarding the rejection of the independent claims, we will not sustain the obviousness rejections of claim 3—6, 9, 10, 18-21, 36, 39, 40, 46-48, 63, 67, 79, 83, 97, 100, and 101 (Non-Final Act. 8—11) for similar reasons. CONCLUSION The Examiner erred in rejecting (1) claim 22; (2) claims 7, 11—15, 25— 31, 41—45, 49, 52-58, 64, 65, 68-74, 81, 8^U89, 99, 102, 103, 105, and 108— 114 as failing to comply with the written description and enablement requirements under § 112, first paragraph; and (3) claims 1—6, 8—10, 16—21, 23, 24, 32-40, 46-48, 50, 51, 59-63, 66, 75-80, 82, 83, 90-98, 100, 101, 104, 106, and 107 under § 103. DECISION We reverse the Examiner’s decision rejecting claims 1—114. REVERSED 5 We note, however, that the Examiner’s sole basis for rejecting claims 32— 35, 37, 38, 50, 51, 59-62, 66, 75-78, 80, 82, 90-96, 98, 104, 106, and 107 as “within the scope” of claims 1,2, 8, 16, 17, 23, and 24 (Non-Final Act. 8) is likewise problematic under § 132 as Appellants indicate. App. Br. 12—14. 21 Copy with citationCopy as parenthetical citation