Ex Parte Levergood et al

Patent Trial and Appeal Board

Jun 26, 2017

11971361 (P.T.A.B. Jun. 26, 2017)

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:
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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;
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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.
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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.
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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.
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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
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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,
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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.
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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
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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?
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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’
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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
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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,
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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.
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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
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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?
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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.
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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
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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
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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
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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.
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