Ex Parte Vukas et al

Patent Trial and Appeal Board

Mar 14, 2017

12077671 (P.T.A.B. Mar. 14, 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.
12/077,671 03/19/2008 Dean Vukas P825/ADBS.208489 7150
121363 7590 03/16/2017
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
EXAMINER
NGUYEN, CHAU T
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
03/16/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
kspringer @ shb .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN VUKAS and JOSHUA HATWICH
Appeal 2016-005048
Application 12/077,671
Technology Center 2100
Before, ALLEN R. MacDONALD, JON M. JURGOVAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005048
Application 12/077,671
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1^1, 6, 7, 10-13, 16-19, 21-24, 26, 27, 30-33, 36-39, 41^14, 46, 47,
50-53, 56-59, 61, 63-67, 69-73, and 75-78. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1 and 21 under appeal read as follows (emphasis,
formatting, and bracketing added):
1. A computer-implemented method, the method comprising:
[(A)] receiving one or more requests from a user or a process
that sends requests where the one or more requests identify a resource,
a first web browser, and a first operating system
[(B)] rendering the resource on a server to create a first image
using the identified first web browser and the first operating system;
[(C)] rendering the resource to create a second image using a
second web browser and a second operating system;
[(D)] comparing the created first image and the created second
image to generate a comparison; and
[(E)] responding to the user or the process that sends requests
based on the comparison;
[(F)] wherein comparing the created first and second images
comprises determining a percentage of identical pixels between the
created first and second images, and wherein a result of the
comparison includes the percentage.
21. A non-transitory computer program product, encoded on a
computer-readable storage device medium, operable to cause data
processing apparatus to perform operations comprising:
[(A)] receiving one or more requests from a user or a process
that sends requests where the one or more requests identify a resource,
a first web browser, and a first operating system;
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Application 12/077,671
[(B)] rendering the resource on a server to create a first image
using the identified first web browser and the first operating system;
[(C)] rendering the resource to create a second image using a
second web browser and a second operating system:
[(D)] comparing the created first image and the created second
image to generate a comparison; and
[(E)] responding to the user or the process that sends requests
based on the comparison
[(F)] wherein comparing the created first and second images
comprises determining a percentage of identical pixels between the
created first and second images, and wherein a result of the
comparison includes the percentage.
Rejections
1. The Examiner rejected claims 21, 32, 41, and 52 under 35 U.S.C.
§ 101 for being directed to non-statutory subject matter.1
2. The Examiner rejected claims 1—4, 6, 7, 10, 21—24, 26, 27, 30, 41—
44, 46, 47, 50, 61, 63, 65-67, 69, 71-73, 75, 77, and 78 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination ofBrowsershots.org,
(Feb. 2006)2, Dutta et al. (US 2003/0061283 Al, published Mar. 27, 2003);
and Evoy et al. (US 2003/0053662 Al, published Mar. 20, 2003).3
1 We select claims 21 and 41 as representative. Separate patentability is not
argued for claims 32 and 52. Except for our ultimate decision, the § 101
rejection of claims 32 and 52 is not discussed further herein.
2 Mission Statement (Feb. 2006), http://web.archive.org/web/
2006022220315 8/http://bro wsershots.org/trac/wiki/MissionStatement.
3 We select claim 1 as representative. Separate patentability is not argued
for claims 2^1, 6, 7, 10, 21-24, 26, 27, 30, 41^14, 46, 47, 50, 61, 63, 65-67,
69, 71—73, 75, 77, and 78. Except for our ultimate decision, the § 103(a)
rejection of these claims is not discussed further herein.
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3. The Examiner rejected claims 12, 13, 16—18, 32, 33, 36—38, 52, 53,
56—58, 64, 70, and 76 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Browsershots and Dutta.4
4. The Examiner rejected claims 11, 19, 31, 39, 51, and 59 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Browsershots, Dutta, Evoy, and Bowers (How to Stitch Photos in
Photoshop, Peter Bowers, as indexed by Google Nov. 2006)5.6
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Appellants respectfully point out that Browsershots and
Evoy cannot be combined as their combination would make
Browsershots unsatisfactory for its intended purpose in violation
of MPEP 2143.01(V). Appellants respectfully point out that
MPEP 2141.02(VI) states “[a] prior art reference must be
considered in its entirety, i.e., as a whole, including portions that
would lead away from the claimed invention.” In other words,
the Examiner cannot pick those parts of a reference that are
favorable to his or her position and ignore the other parts that are
unfavorable.
4 We select claim 12 as representative. Separate patentability is not argued
for claims 13, 16—18, 32, 33, 36—38, 52, 53, 56—58, 64, 70, and 76. Except
for our ultimate decision, the § 103(a) rejection of these claims is not
discussed further herein.
5 http://www.photoshopsupport.com/tutorials/peter-bowers/how-to-stitch-
photos.html.
6 We select claim 11 as representative. Separate patentability is not argued
for claims 19, 31, 39, 51, and 59. Except for our ultimate decision, the
§ 103(a) rejection of these claims is not discussed further herein.
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In the case here, the Examiner uses a portion of Evoy to
disclose image differences by pixel comparison. See, e.g., Office
Action dated May 16, 2014, p. 8. Therefore, even though it
might appear the Examiner can make out a prima facie case of
obviousness, the Examiner did not consider Browsershots and
Evoy in their entirety.
App. Br. 10-11 (Appellants’ emphasis omitted, Panel’s emphasis added).
If Browsershots and Evoy are combined, Browsershots
would have to incorporate video objects and video equipment,
which would make Browsershots unsatisfactory for its intended
purpose. In fact, Browsershots would no longer use a browser
or web page in the manner described in Browsershots. A browser
or web page would become incidental or obsolete. The
combination would also change the principal of operation of
Browsershots. There is no effective reason to combine
Browsershots, with its web page for testing a URL with different
web browsers, with Evoy, with its capturing and comparison of
user video images. By combining Browsershots with Evoy,
Browsershots is forced to incorporate a capturing device, such as
a cellular phone or video phone, and a video object such as
MPEG4. Browsershots would also have to get rid of browsers
and web pages, or would only use browsers and web pages to
show video. Therefore, the combination would violate MPEP
2143.01, making it improper to combine Browsershots and Evoy.
App. Br. 12 (Appellants’ emphasis omitted, Panel’s emphasis added).
2. Appellants also contend that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 103(a) because:
Dutta and Evoy also cannot be combined as their combination
would make Dutta unsatisfactory for its intended purpose in
violation of MPEP 2143.01(V). Dutta discloses “a method to
develop and test applications, such as WML/HTML applications,
and in particular web sites, on a multitude of user
agents/browsers at the same time. This method receives and
processes a WML/HTML File or URL pointing to the
WML/HTML File.” See, e.g., Dutta, p. 2 (1 [0023]). If Dutta
was combined with Evoy, Dutta would be forced to incorporate
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video capturing equipment and a video object, which are not
useful in Dutta.
App. Br. 12—13 (Appellants’ emphasis omitted, Panel’s emphasis added).
3. Appellants contend that the Examiner erred in rejecting claim 12
under 35 U.S.C. § 103(a) because:
Browsershots and Dutta, in combination, do not teach, “receiving
one or more requests from a requestor where the requests identify
a resource, a first web browser, and a first operating system.”
The Examiner states the Specification suggests that the system
of the present invention is automatically selecting a server to
perform a request, not the user. . . . The Examiner’s reasoning
that there is an automatic selection of a server is moot because
Appellants’ Specification states, “the requestor is a user such as
a web designer who sends the request to the system...
Alternatively, the requestor is a process...that can send requests
to test various resources.” See, e.g., Specification, p. 5,11. 3-6.
App. Br. 14 (emphasis omitted).
4. Appellants also contend that the Examiner erred in rejecting claim
12 under 35 U.S.C. § 103(a) because:
Browsershots and Dutta, in combination, do not teach
Appellants’ claimed invention of loading a resource into a first
web browser on a first operating system to create a first image
and show the first web browser’s output to a requestor, and
loading the resource into a second web browser on a second
operating system to create a second image and show the second
web browser’s output to the requestor. . . . Dutta does not say a
web site can be evaluated or tested on several browsers and on
multiple platforms. . . . Dutta only says that a web designer
should test on multiple browsers and on multiple platforms.
Dutta says nothing about actually testing on a first browser on
a first operating system and then testing on a second browser on
a second operating system, both on the same server. . . . Dutta
discloses an emulator is used to simulate different browsers to
allow testing of each simulated browser. No actual browser is
used as required by Appellants’ claimed invention. . . . Dutta
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does not test nor use actual browsers. An emulator is not the
same as the actual browser.
App. Br. 14—16 (Appellants’ emphasis omitted, Panel’s emphasis added).
5. Appellants contend that the Examiner erred in rejecting claim 11
under 35 U.S.C. § 103(a) because:
Appellants respectfully point out that Browsershots and
Evoy also cannot be combined as their combination would make
Browsershots unsatisfactory for its intended purpose in violation
of MPEP 2143.01 (V). The reasons provided above for traversing
the rejection of claim[ 1] are applicable here.
App. Br. 16 (emphasis omitted). Appellants repeat this argument for the
combination of Dutta and Evoy. App. Br. 17
6. Appellants contend that the Examiner erred in rejecting claims 21
and 41 under 35 U.S.C. § 101 because “the claims are statutory” and the
Examiner’s statement that a processor and memory are not “hardware per
se” is “not correct.” Reply Br. 4; App. Br. 10; Final Act. 4.
Issues on Appeal
Did the Examiner err in rejecting claims 21 and 41 as being directed
to non-statutory subject matter?
Did the Examiner err in rejecting claims 1,11, and 12 as being
obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellants’ above contentions 1 and 2, we disagree. First, we
are not persuaded because Appellants’ arguments that a combination with
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Evoy would render Browsershots or Dutta “unsatisfactory for its intended
purpose” are premised on requiring a “physical” or “bodily” incorporation of
Evoy’s entire video device security method into the website testing process
of Browshershots or Dutta. This is not the standard. “[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983)); se also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”). Moreover, “[a] reference
must be considered for everything it teaches by way of technology and is not
limited to the particular invention it is describing and attempting to protect.”
EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985)
(emphasis omitted).
Although Appellants point out that Evoy “must be considered in its
entirety” (App. Br. 10), Appellants then consider Evoy only as to its
particular invention. Appellants overlook that considering a reference in its
entirety includes considering all portions of the reference both individually
and collectively. As Appellants correctly point out, one “cannot pick those
parts of a reference that are favorable to his or her position and ignore the
other parts that are unfavorable.” App. Br. 11.
The rejection set forth by the Examiner relied on Evoy for the more
limited disclosure of “determining image differences by pixel comparisons
where a pixel at one location of one image (first image) is compared against
a pixel at the similar location in anther image (second image). . . .” Final
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Act. 7. We agree with the Examiner’s findings as to Evoy. Evoy’s
particular invention may be a video device security method; however, we
conclude that bodily incorporation is not required in combining the
references. Rather, as the Examiner correctly finds, paragraph 21 of Evoy
teaches comparing extracted images. We are not persuaded by Appellants’
argument that Evoy’s comparison of images would have required the type of
bodily incorporation of video equipment that Appellants are suggesting.
As to Appellants’ above contention 5 (which relies by reference on
the arguments of contentions 1 and 2), we disagree for the reasons set forth
above as to contentions 1 and 2.
As to Appellants’ above contention 3, Appellants do not cite to a
particular Examiner finding in the rejection on appeal, and we are unable to
find where in the rejection that the Examiner stated an “automatic selecting”
finding as is being argued by Appellants. See App. Br. 14. We see no
relevance to Appellants’ argument. The Examiner has set forth findings that
Browsershots teaches “receiving, at a server, one or more request from a
requestor where the requests identify a resource, a first web browser, and a
first operating system,” specifically a user submitting a web page address, a
browser name, and an operating system. Final Act. 12. Appellants have not
sufficiently rebutted those findings.
As to Appellants’ above contention 4, we disagree. First, Appellants
are attacking Dutta singly for lacking a teaching of “actual testing on an
actual browser” when the Examiner relied on a combination of references.
Particularly, the Examiner points to Browsershots for this limitation. Final
Act. 12 (“Browsershots discloses receiving, at a server, one or more requests
from a requestor where the requests identify a resource [e.g., a URL], a first
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web browser and a first operating [system], Browsershots discloses
volunteers use a small program to automatically make screenshots of web
pages in their browser and upload the results to the server (page 1 -
Community to the rescue).”). The Examiner then relies on Dutta to disclose
a “web site can be evaluated or tested on several browsers and on multiple
platforms (operating systems)” and “web server testing software is used to
compare the web page outputs (images of the page in different browsers).”
Final Act. 13. It is well established that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. In re Keller, 642 F.2d 413 (CCPA 1981); In re
Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
Second, contrary to Appellants’ argument, Dutta explicitly teaches
using actual browsers as an alternative to the argued browser emulation.
In an alternate embodiment, the invention can have the actual
browser programs loaded in the system to execute the web page
instead of implementing browser emulators.
Dutta 125.
One method to run these pages is to use the browser emulator
programs 47 illustrated in FIG. 4. Another approach would be to
have the actual browser programs stored in the server machine.
Dutta 1 55.
As to Appellants’ above contention 6, “Appellants respectfully submit
the present rejection should be reversed because the claims are statutory.”
App. Br. 9. We agree. First, as to claim 21, the claim recites “[a]
non-transitory computer program product, encoded on a computer-readable
storage device medium.” Emphasis added. The Examiner states that this
rejection can be overcome if claim 21 is amended to read “[a] computer
program product, encoded on a non-transitory computer-readable storage
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device medium.” Final Act. 3. We deem such an amendment to be
unnecessary. Claim 21 as currently written requires the “computer program
product” to be non-transitory. That program product is then required to be
encoded on a computer-readable storage device medium. We deem a
non-transitory computer program product, encoded on a computer-readable
storage device medium, to require that the medium also be non-transitory.
No further amendment is required.
Second, as to claim 41, the claim requires “a processor coupled to a
memory.” The Examiner states “[njowhere in the Specification discloses
that ‘processor’ and/or ‘memory’ are hardware per se. Thus, the recited
system in claim 41 is computer software per se.” Final Act. 4. It has been
recognized in the case law that at least during certain time periods, the
industry understood claim terms such as a “computer readable medium” to
have a meaning which encompasses transitory embodiments.7 However, we
know of no such transitory embodiments of a “processor” or “memory.”
The Examiner cites no such holding, nor does the Examiner provide
sufficient analysis to explain why the industry would have understood a
“processor” or “memory” to encompass transitory embodiments. Rather, the
Examiner presents a conclusory statement that “claim 41 is computer
software per se.” Final Act. 4. We disagree with the Examiner.
7 See Exparte Mewherter, 107 USPQ2d 1857, 1859 (PTAB 2013)
(precedential) (“The broadest reasonable interpretation of a claim drawn to a
computer readable medium (also called machine readable medium and other
such variations) typically covers forms of non-transitory tangible media and
transitory propagating signals per se in view of the ordinary and customary
meaning of computer readable media, particularly when the specification is
silent.”) (citation omitted).
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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 21, 32, 41, and 52 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
(2) The Examiner has not erred in rejecting claims 1—4, 6, 7, 10-13,
16-19, 21-24, 26, 27, 30-33, 36-39, 41^14, 46, 47, 50-53, 56-59, 61, 63-
67, 69-73, and 75—78 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1^1, 6, 7, 10-13, 16-19, 21-24, 26, 27, 30-33, 36-39, 41-
44, 46, 47, 50-53, 56—59, 61, 63—67, 69-73, and 75—78 are not patentable.
DECISION
The Examiner’s rejection of claims 21, 32, 41, and 52 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is reversed.
The Examiner’s rejections of claims 1—4, 6, 7, 10-13, 16—19, 21—24,
26, 27, 30-33, 36-39, 41^14, 46, 47, 50-53, 56-59, 61, 63-67, 69-73, and
75—78 as being unpatentable under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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