Ex Parte Weber et al

Patent Trial and Appeal BoardMay 3, 2016

11644696 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/644,696 12/22/2006 76058 7590 05/05/2016 YAHOO! INC C/O GREENBERG TRAURIG, LLP MET LIFE BUILDING 200 PARK A VENUE NEW YORK, NY 10166 Karon A. Weber 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 085804-706900 6428 EXAMINER BROWN, SHEREE N ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 05/05/2016 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): mendozae@GTLA W.COM cordesp@gtlaw.com njdocket@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARON A. WEBER, LIANG-YU CHI, and SAMANTHA M. TRIPODI Appeal2014-008077 Application 11/644,696 Technology Center 3600 Before ROBERT E. NAPPI, NORMAN H. BEAMER, and SCOTT B. HOWARD, Administrative Patent Judges. HOW ARD, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 1, 2, 4, 5, 7-14, 21, 23, 25, 27-37, and 39, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants identify Yahoo! Inc. as the real party in interest. App. Br. 3. Appeal2014-008077 Application 11/644,696 THE INVENTION The claimed invention is an overlay generator that analyzes descriptive data from a website, retrieves additional content from a second website, and makes the additional information available via an overlay. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving, by a computing device via a network, from a provider of a website, a webpage of the website, the webpage comprising data that includes descriptive data that conforms to a defined format; in response to receiving the webpage, searching, by the computing device, the data of the webpage to identify the descriptive data; in response to identifying the descriptive data, receiving, by the computing device, the defined format of the descriptive data and identifying, by the computing device, an online data source, separate from the \'l1ebsite and unrelated to the provider of the website, having additional content relevant to the webpage; automatically retrieving by the computing device, additional content from the separate online data source based on the defined format of the descriptive data, the additional content to be provided in an overlay on the webpage; in response to automatically retrieving, over the network, the additional content from the online data source, displaying, by the computing device, the webpage and at least a portion of the additional content on a display device as the overlay of the webpage, such that the additional content is displayed in association with content of the webpage. 2 Appeal2014-008077 Application 11/644,696 REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Arutunian et al. US 2006/0200382 Al Sept. 7, 2006 ("Arutunian '382") Arutunian et al. US 2006/0200384 Al Sept. 7, 2006 ("Arutunian '384") REJECTIONS Claims 1, 2, 4, 5, 7-14, 21, 23, 25, 27-37, and 39 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Arutunian '384 in view of Arutunian '382. Final Act. 10-28. ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments that the Examiner erred. In reaching this decision, we consider all evidence presented and all arguments made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. See 37 C.F.R. Â§ 41.37(c)(l)(vii); see also Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) ("Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue ... the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection."). We disagree with Appellants' arguments regarding the pending claims. 3 Appeal2014-008077 Application 11/644,696 Claims 1, 2, 4, 5, 7-14, 21, 23, 25, 27-34, 36, 37, and 39 Appellants argue Arutunian '384 does not teach or suggest searching the webpage to identify the descriptive data in response to receiving the webpage ("the first in response to limitation") as recited in claim 1. App. Br. 10. Instead, Appellants argue although Arutunian '384 teaches providing an interactive map, "the data ... is merely displayed to the user upon receiving the webpage." Id. Stated differently, Appellants argue claim 1 "requires the search to be carried out when the webpage loads." Reply Br. 2-3.2 During prosecution, claims must be given their broadest reasonable interpretation while reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Contrary to Appellants' arguments, there is nothing recited in claim 1 that limits the claims to searches performed "when the webpage loads;" instead, the only temporal limitation is that it must occur after the webpage is received. See App. Br. 16 (Claims App'x). Because the argument is not commensurate with the scope of the claims, it is unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Instead, we agree with and adopt the Examiner's findings that Arutunian '384 teaches that a search for descriptive data is performed in response to receiving the webpage. Final Act. 11 (citing Arutunian '384, Abstract; Figs. 4A--4D; i-fi-1 4, 33, 44, 45, 60). 2 In framing the issue, Appellants explicitly state that the issue was not "about 'searching' a webpage [or] identifying 'descriptive data."' Reply Br. 2. 4 Appeal2014-008077 Application 11/644,696 Appellants also argue the additional overlay data in Arutunian '384 comes from a user selecting items on a layering tool bar. App. Br. 11; Reply Br. 3--4. Therefore, according to Appellants, because Arutunian '384 "does not disclose and in fact has no need for 'searching the data of the webpage to identify the descriptive data' as recited in [the first in response to limitation of] independent claim[] 1," it does not teach the second in response to limitation of claim 1. Id. Appellants further argue claim 1 requires that "an overlay is generated without any user input." App. Br. 11. We are not persuaded by Appellants' arguments. First, Appellants' argument is premised on the prior art not teaching the first in response to limitation. However, as discussed above, we rejected Appellants' argument that Arutunian '3 84 does not teach the first in response to limitation. Second, we disagree with Appellants' proposed claim construction that there can be no user input. Claim 1 uses the open-ended transitional phrase "comprising" and does not exclude any additional elements or method steps. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, (Fed. Cir. 1997) ("'Comprising' is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim."). Nothing in claim 1 prohibits the use of user input in performing the steps so long as it is in response to "to identifying the descriptive data." See App. Br. 16 (Claims App'x). Further, we note the Specification discloses using user input via toolbar to help in the disclosed method of generating an overlay. Spec. i-f 27; see also Final Act. 7-8. During claim construction, we consult the Specification to help clarify the meaning of claim terms, because the claims 5 Appeal2014-008077 Application 11/644,696 "must be read in view of the specification, of which they are a part." Trading Technologies Int'!, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en bane), ajf'd, 517 U.S. 370 (1996)). As a general rule, "there is a strong presumption against a claim construction that excludes a disclosed embodiment." See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). Contrary to Appellants' argument (App. Br. 12), using the Specification in this manner to understand the scope of the claims is not reading limitations into a claim. Considering the Specification and concluding that the scope of the claim is broad enough to cover at least an embodiment disclosed in the Specification is different from reading a limitation from the Specification into a claim and limiting the claim to only cover that embodiment. Although claim 1 is broad enough to cover a method that generates an overlay without any user input, it is not so limited and is broad enough to also cover the user of user input via a tool bar, such as disclosed in Specification, paragraph 27. Based on the language recited in claim 1 and the description in the Specification, we conclude claim 1 does not exclude any user input. Because the argument is not commensurate with the scope of the claims, it is unpersuasive. See Self, 671 F.2d at 1348. Finally, Appellants argue Arutunian '384 does not teach or suggest the automatically retrieving limitation recited in claim 1. App. Br. 12. Specifically, Appellants argue that the retrieval of additional content in Arutunian '3 84 "is neither automatic nor based on the defined format of the descriptive data." Id. Instead, Appellants argue the overlays in Arutunian 6 Appeal2014-008077 Application 11/644,696 '384 are "driven by the user and based on values of the user interface elements." Id. Additionally, in the Reply Brief, Appellants also assert the Arutunian references do not enable automatic retrieval and discusses, for the first time, the teachings of Arutunian '382. Reply Br. 4 n.1. In the Final Action, the Examiner finds Arutunian '382 teaches automatic retrieval. Final Act. 14 (citing Arutunian '382 i-f 49; claims 1, 17). Additionally, based on the Specification and the claim language, the Examiner concludes that claim 1 does not exclude a user using a toolbar to assist in the identification of additional content to be retrieved. Final Act. 7- 8. We are not persuaded by Appellants' argument. First, in the Appeal Brief, the Appellants do not discuss Arutunian '3 82 or the specific sections (i-f 49; claims 1, 17) cited by the Examiner. See App. Br. 12. "If an appellant fails to present arguments on a particular issue - or, more broadly, on a particular rejection-the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection." Frye, 94 USPQ2d at 1075. To the extent Appellants challenge the findings in the Reply Brief, those arguments are not entitled to consideration because they were not presented for the first time in the opening brief. Optivus Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the reply brief that could have been raised in the opening brief is waived); accord Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (informative) (absent a showing of good cause, the Board is not required to address an argument newly presented in the reply brief that could have been presented in the principal brief on appeal); 37 C.F.R. Â§ 41.41(b)(2) (same). 7 Appeal2014-008077 Application 11/644,696 Second, as discussed above, we disagree with Appellants' claim construction which would exclude any user intervention. Instead, for the reasons given by the Examiner and discussed above, we conclude claim 1 is broad enough to cover both embodiments that use and do not use user inputs. Appellants' argument premised on a narrower claim construction is not persuasive. According! y, we sustain the Examiner's rejection of claim 1, along with the rejections of claims 21 and 31, which are argued on the same grounds, and claims 2, 4, 5, 7-14, 23, 25, 27-30, 32-34, 36, and 39, which are not argued separately. Claim 35 Claim 35 depends from claim 1 and recites "that the webpage does not include a map and the overlay of the at least one webpage comprises a map comprising at least one geographic location." App. Br. 20 (Claims App'x). Appellants argue that Arutunian '384 does not teach that limitation because it teaches a webpage with a map and the information that can be included in the overlay is not a map. App. Br. 13-14; Reply Br. 5. Appellants' argument focuses on the contents of the webpage and the overlay and which one comprises a map. However, our reviewing court has held that nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been found unpatentable based on the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability); King 8 Appeal2014-008077 Application 11/644,696 Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any new and unobvious functional relationship between the printed matter and the substrate.'") (citations omitted); see also Ex parte Nehls, 88 USPQ2d 1883, 1889 (BP AI 2008) (precedential) ("[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer- implemented product or process."); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff'd, 191 Fed. App'x 959 (Fed. Cir. 2006) ("[N]onfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art."); Ex parte Curry, 84 USPQ2d 1272, 1274 (BP AI 2005) (informative), aff'd, (Fed. Cir. 2006-1003) (June 12, 2006) ("Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious."). Although we do not disregard any claim limitations and assess the claimed invention as a whole, we follow the Federal Circuit's guidance from Gulack and do not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. Gulack, 703 F.2d at 1385. "The first step of the printed matter analysis is the determination that the limitation in question is in fact directed toward printed matter." In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if it is "claimed for what it communicates." Id. at 850. Because the presence or absence of a map in the webpage or the overlay as recited in claim 35 are being claimed for what they communicate, we find them to be printed material. 9 Appeal2014-008077 Application 11/644,696 If a claim in a patent application claims printed material, "one must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is 'no' is the printed matter owed no patentable weight." Distefano, 808 F.3d at 851. In this case, we find that a webpage that does not contain a map and an overlay which does as opposed to any other type of arrangement-such as a webpage that includes a map and an overlay that does not---does not change or affect any machine function. Although the content of the webpage and overlay will be the basis for what is displayed, the type of data does not functionally change how the web page and overlay are created or used. Thus the presence or absence of a map is merely non-functional descriptive material and the presence or absence of a map cannot be used to give patentable weight to the claim. This is analogous to Curry, where we found the type of data to be nonfunctional descriptive material when it "does not functionally change either the data storage system or communication system used in the method of claim 81." Curry, 84 USPQ2d at 1274 (BPAI 2005). As we recognized in Curry, "if the prior art suggests storing a song on a disk, merely choosing a particular song to store on the disk would be presumed to be well within the level of ordinary skill in the art at the time the invention was made." Id. at 1275. Choosing to use a map as an overlay on a webpage as opposed to a webpage containing a map is no different. Concluding otherwise would result not only in Appellants' specific type of data in the webpage and in the additional content distinguishing over the prior art, but equally would distinguish every other unique type of data used to create the overlay. To give effect to Appellants' argument, we 10 Appeal2014-008077 Application 11/644,696 would need to ignore our reviewing court's concerns with repeated patenting. See King Pharm. Inc., 616 F.3d at 1279 ("The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations."); cf Ngai, 367 F.3d at 1339 ("If we were to adopt Ngai's position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product."). We decline to do so. For the foregoing reasons, we do not give any patentable weight to the presence or absence of a map in either the webpage or the additional content Accordingly, we are not persuaded by Appellants' argument that the Examiner erred in finding claim 35 obvious over the cited prior art. Even if we did give patentable weight to the presence or absence of a map in either the webpage or the additional content, we would still sustain the Examiner's rejection. In an obviousness analysis, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved." Graham v. John Deere Co., 383 U.S. 1, 17 (1966). "Against this background, the obviousness or nonobviousness of the subject matter is determined." Id. In this case, the only issue raised by Appellants regarding the additional limitation of claim 3 5 is not whether the process of creating an overlay is obvious, but whether the prior art teaches the absence of a map on a webpage and the inclusion of a map in an overlay. We find such a modification of an old process using a new source of data to be obvious. In KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), the Supreme Court held that "if a technique has been used to improve one device, and a person 11 Appeal2014-008077 Application 11/644,696 of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." Id. at 417. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." Id. at 416; see also id. at 417 ("If a person of ordinary skill can implement a predictable variation, Â§ 103 likely bars its patentability."); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) ("It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." (citations omitted)). We do not find that the evidence shows having a webpage without a map and an overlay from additional data containing a map "uniquely challenging or difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citingKSR, 550 U.S. at 418). Accordingly, we do not consider Appellants' argument to sufficiently demonstrate the Examiner's rejection is m error. For the reasons discussed above, we sustain the Examiner's rejection of claim 3 5. DECISION For the above reasons, we affirm the Examiner's rejection of claims 1, 2,4,5, 7-14,21,23,25,27-37,and39. 12 Appeal2014-008077 Application 11/644,696 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13