Ex Parte Zhang

Patent Trial and Appeal Board

Jan 13, 2017

13435704 (P.T.A.B. Jan. 13, 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.
13/435,704 03/30/2012 LINGL. ZHANG CN920110009USl_8150-0683 4577
112978 7590 01/18/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, EL 33498
EXAMINER
BUKHARI, SIBTE H
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
01/18/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LING L. ZHANG
Appeal 2016-004230
Application 13/435,704
Technology Center 2400
Before JOSEPH L. DIXON, JOHN A. EVANS, and JOHN D. HAMANN,
Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 1—20, which constitute all the claims
pending in this application. Br. 5. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.2
1 The Appeal Brief identifies International Business Machines Corporation,
as the real party in interest. App. Br. 3.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed July 9, 2015, “App. Br.”), the Examiner’s
Answer (mailed Nov. 19, 2015, “Ans.”), the Final Action (mailed December
3, 2014, “Final Act.”), and the Amended Specification (filed Dec. 4, 2013,
Appeal 2016-004230
Application 13/435,704
STATEMENT OF THE CASE
The claims relate to a method for sending and requesting a feed into
which processing logic has been added. See Abstract.
Invention
Claims 1, 8, and 15 are independent. An understanding of the
invention can be derived from a reading of exemplary Claim 1, which is
reproduced below with some formatting added:
1. A method comprising:
receiving from a client a request for a feed;
determining content of the requested feed and a type of the
client;
obtaining the content for the requested feed;
according to the determined content of the feed and the
type of the client, augmenting the requested feed with the
executable processing logic; and
sending to the client the feed into which the executable
processing logic has been added.
Reference and Rejection
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as obvious over
Nicholas et al. (US 2008/0126476 Al; May 29, 2008) (“Nicholas”) and
Murren et al. (US 2008/0141139 Al; June 12, 2008) (“Murren”). Final Act.
4~11.
“Spec.”) for their respective details.
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Appeal 2016-004230
Application 13/435,704
ANALYSIS
We have reviewed the rejections of Claims 1—20 in light of
Appellant’s arguments that the Examiner erred. We consider Appellant’s
arguments seriatim, as they are presented in the Appeal Brief, pages 9—22.
Appellant argues Claims 1—20 as a group and contend they are each
patentable in view of the limitations of Claim 1. Br. 13, 14.
Determining content of the requested feed and type of client.
The Examiner finds the Claim 1 recitation: “determining content of
the requested feed and a type of the client,” is taught by Nicholas. Final Act.
4 (citing Nicholas, 1109).
Appellant contends Nicholas teaches the “server provides feed
formatted content including at least one payment marker based on the
request at 304.” Br. 13.
Appellant argues Nicholas teaches a commerce payment marker,
which may “include the price, the user’s EBAY login information, the
seller’s information, an identifier for the particular item up for purchase, or
other information relevant to the purchase.” Id. (citing Nicholas, 1110).
Appellant argues that none of this information is specific to a “client type”
and any client (regardless of type) can submit a request that includes the
information taught by Nicholas. Id. Thus, Appellant contends, Nicholas
fails to teach the type of client. Id.
The Examiner finds Nicholas teaches the client may be a Webserver or
a client computer which may be a desktop, laptop, dumb terminal, PDA, cell
phone, or indeed any web client capable of displaying an interface
technology capable of background data updates. Ans. 13 (citing Nicholas,
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Appeal 2016-004230
Application 13/435,704
11280,380).
In light of the Specification, Appellant contends the claimed “client
type” “refers to the type of a client node or application,” including, but not
limited to, a client a browser or an email client software such as Internet
Explorer®, Lotus Notes®, Mozilla Thunderbird®, a third-party application
requesting a feed such as Google Reader®, or any other application which
subscribes to or requests a feed. Br. 13 (citing Spec., 129). Appellant
argues the various types of clients execute client-specific processing logic.
Therefore, the client type must be determined such that client-specific logic
may be inserted into the response, as claimed. Id.
The Examiner finds the accused limitation broadly claims from the
request to determine the information requested and the type of client that is
requesting the information. Ans. 14. The Examiner finds, however, that the
limitation fails to disclose what type of client is being claimed. Id. The
Examiner finds Nicholas teaches clients such as PDAs and cellphones. Id.
The Examiner finds the request identifies the device type “which is
determination of client type.” Id.
The Examiner is required to give claims their “broadest reasonable
construction,” but the “claims should always be read in light of the
specification” and the broadest reasonable construction rule does not provide
“an unfettered license to interpret claims to embrace anything remotely
related to the claimed invention.” See In re Suitco Surface, Inc., 603 F.3d
1374 (Fed. Cir. 1010). The MPEP makes clear that the intrinsic record (e.g.,
the specification) must be consulted to identify which of the different
possible definitions is most consistent with the invention’s use of the terms.
See MPEP §2111.01 (III) quoting Brookhill-Wilk 1, 334 F.3d at 1300,67
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Appeal 2016-004230
Application 13/435,704
USPQ2d at 113 (“Where there are several common meanings for a claim
term, the patent disclosure serves to point away from the improper meanings
and toward the proper meanings”). In the present case, we fail to find where
the Examiner cites to Appellant’s Specification to support the Examiner’s
construction of the claim term “client type.”
Appellant contends the accused “client type” is a software application
such as Internet Explorer®, Lotus Notes®, Mozilla Thunderbird®, a third-
party application requesting a feed such as Google Reader®, or any other
application which subscribes to or requests a feed. Br. 13 (citing Spec., 1
29). Thus, Appellant has defined “client type” to be software, at least by
implication. “Even when guidance is not provided in explicit definitional
format, the specification may define claim terms by implication such that the
meaning may be found in or ascertained by a reading of the patent
documents.” In Re Abbott Diabetes Care Inc., 696 F.3d 1142, 1150 (Fed.
Cir. 2012) (quoting Iredeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d
1295, 1300 (Fed. Cir. 2004)).
The Examiner finds that Nicholas teaches the request identifies the
device type (e.g., PDAs and cellphones) “which is determination of client
type” clients such as PDAs and cellphones. Ans. 14. However,
identification of the hardware does not identify the software that runs on the
hardware.
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Appeal 2016-004230
Application 13/435,704
DECISION
The rejection of Claims 1—20 under 35 U.S.C. § 103 is REVERSED.
REVERSED
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