LAKRITZ, David

Patent Trials and Appeals Board

Aug 30, 2019

13734161 - (R) (P.T.A.B. Aug. 30, 2019)

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.
13/734,161 01/04/2013 David LAKRITZ 3132.0050006 1002
26111 7590 08/30/2019
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
SMITH, BENJAMIN J
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID LAKRITZ
____________________

Appeal 2017-008125
Application 13/734,1611
Technology Center 2100
____________________

Before ERIC S. FRAHM, STACY B. MARGOLIES, and
MICHAEL T. CYGAN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant requests rehearing2 of the May 30, 2019, Decision on
Appeal (hereinafter, “Decision”) where we affirmed the rejection of claims
11‒16, 18–25, 27–34, and 36–46 under 35 U.S.C. § 103(a) over the base
combination of Kobayakawa, Barry, and Raggett (Request 1). We have
reconsidered the Decision in light of Appellant’s arguments in the Request
for Rehearing (see Request 2–4), but, for the reasons given below, we do not

1 According to Appellant, the real party in interest is Transperfect Global,
Inc. App. Br. 3.
2 Request for Rehearing Under 37 C.F.R. § 41.52 filed July 30, 2019
(hereinafter, “Request”).
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alter the outcome of our prior Decision finding the claims obvious over the
prior art.

ANALYSIS
Appellant requests the Board consider the new argument made “in
their Reply Brief and at the Oral Hearing arguing that the base combination
of Kobayakawa, Barry, and Raggett does not teach a web server that
‘operates independently’ of the visitor module,”3 since “this particular new
argument was raised responsive to an argument raised in the Examiner’s
Answer, and should have been considered” (Request 2).
The Decision concluded that:
Appellant’s representative, both in the Reply Brief (Reply Br. 8)
and at the Oral Hearing, presented arguments not previously
relied on in the Appeal Brief (see Hr’g Tr. 9:6–11, 10:17–21;
19:6–20:24 (arguing that the base combination of Kobayakawa,
Barry, and Raggett does not teach a web server that “operates
independently” of the visitor module)
(Decision 11–12). Appellant contended in the Reply Brief that the base
combination of Kobayakawa, Barry, and Raggett fails to teach or suggest all
of the limitations recited in claim 11 because, inter alia, ‘“[t]he ability [of
the visitor module] to handle these directives and present dynamic data on
the page requires no alteration to the web server in order to serve cached
multilingual content – an unexpected result, to be sure’ (Reply Br. 8)”

3 Representative independent claim 11 recites, in pertinent part:
11. A method comprising:
receiving, by a visitor module, a request for content served
by a web server, wherein the web server operates independently
of the visitor module . . . .
Claim 11 (emphases added).
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(Decision 13). Even considering Appellant’s new argument on rehearing,
such consideration does not alter the ultimate outcome – that Appellant has
not adequately shown the Examiner erred in concluding claim 11 is obvious
over the base combination of Kobayakawa, Barry, and Raggett. As our
Decision stated:
[W]hile not required to, Appellant has not submitted evidence of
unexpected results that would not naturally and predictably result
from using a proxy server in a translation web browser
environment. Therefore, we are not persuaded by Appellant’s
unsupported statement that processing certain translation
functions in a proxy server (i.e., the recited “visitor module”),
working in tandem with a customer’s existing Web server,
provides a single point of entry for delivering multilingual
content and eliminates the need for complex CGI scripts or
interlinked pages. We also note that this functionality is not
recited in the claim.

Decision 16–17.
In view of the foregoing, we already have considered this issue
peripherally. In any event, whether or not using a proxy server would have
been a design choice is not determinative here, because we found (as
indicated below), that both Kobayakawa and Barry teach the use of a proxy
server:
The Examiner finds (see Ans. 10), and we agree, that both
Kobayakawa (see col. 4, ll. 50–52) (“[a] server may be a proxy
that receives requests from a number of clients and routes the
requests to the appropriate server”) and Barry (Ans. 10, citing
Barry col. 99, ll. 23–39; col. 123, ll. 50–60; col. 142, ll. 33–44)
disclose a proxy server. Although Appellant may be correct that
“Kobayakawa never actually uses the term ‘proxy server’” (Hr’g
Tr. 13:3–4), one of ordinary skill in the art would understand
Kobayakawa’s disclosure as a whole to teach or suggest a
translation proxy (Fig. 3, 110; see Kobayakawa col. 8, ll. 41–67)
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and/or a proxy server for performing translation service
functionality (see, e.g., Kobayakawa col. 4, ll. 50–52).

Decision 14.
Even considering the design choice issue, we agree with the Examiner
that it would have been a design choice to incorporate the functionality and
behavior of a server into a proxy server, based on the needs and constraints
of the system, and that any server could have interpreted commands
embedded in the contents of a web page. See Ans. 9–10. The teachings of
Kobayakawa and Barry support the Examiner’s findings (see Ans. 10 citing
Kobayakawa, col. 4, ll. 50–52 and Barry col. 99, ll. 23–39; col. 123, ll. 50–
60; col. 142, ll. 33–44).
With regard to Appellant’s argument in the Rehearing Request that
the ‘“new and unexpected result’ of the independent operation of web server
and visitor module––namely, ‘[t]he ability to handle these directives and
present dynamic data on the page requires no alteration to the web server in
order to serve cached multilingual content – an unexpected result, to be
sure.’ (Reply Br. [] 8)” (Request 3–4), this argument is unpersuasive for at
least two reasons.
First, claim 11 does not recite that “no alteration to the web server” is
required “in order to serve cached multilingual content” as argued. Instead,
claim 11 merely recites that the “the web server operates independently of
the visitor module” (claim 11)(emphasis added).
With regard to the limitation “the web server operates independently
of the visitor module” (claim 11),4 Appellant cites (see App. Br. 5) to Figure

4 The “operates independently” limitation was added to all independent
claims, claims 11, 20, and 29, by amendment on July 22, 2013 (see
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2 (showing visitor module 202 and web server 203 in a network
environment (see Spec. 4:19–20)), and page 25, line 28 through page 26,
line 27 of the Specification, as providing support for this limitation.5
Figure 2 shows “a block schematic diagram of the placement of the
Visitor module in a network environment according to the invention” (Spec.
4:19–20), and also shows a web server 203 connected to the visitor module
202. And, the visitor module 202 is described at page 6, line 27 through
page 7, line 15 of the Specification as “work[ing] in tandem with a
customer’s existing Web server 203” (Spec. 6:27–28) (emphasis added),6
and not “requir[ing] no alteration to the web server in order to serve cached
multilingual content” as argued by Appellant.
Page 25, line 28 through page 26, line 27 of the Specification describe
an operating mode, called a test mode, of the WebPlexer, which Appellant
describes as “a preferred embodiment of the invention” (see Spec. 24:22–24,
25:23–26). The WebPlexer is “configured to support two modes of
operation, ‘test mode’ and production mode’” (Spec. 25:25–26). See also

Amendment filed July 22, 2013, pp. 3, 5, 7), with no explanation for
how/why this limitation is supported by the originally filed Specification
(see generally Amendment filed July 22, 2013, pp. 12–21). None of the
originally filed claims contained this limitation (see Spec. 122–123 (original
claims 1–10)).
5 As to the “operates independently” limitation recited in remaining
independent claims 20 and 29, Appellant also cites to Figure 2 and page 25,
line 28 through page 26, line 27 of the Specification, as providing support
for these commensurate limitations.
6 The Examiner, according to Appellant (see Amendment filed July 22,
2013, p. 13, fn. 1), also notes this functionality, i.e., of the visitor module
working in tandem, or together – not independently, with the web server.
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Spec. 25:28–26:30 (describing test mode); Spec. 26:32–27:27 (describing
production mode).
The WebPlexer is described by Appellant as the “preferred
embodiment of the invention” (Spec. 24:23), and is illustrated in Figure 1
(see Spec. 4:16–17). Appellant describes (see Spec. 4:16–17; 6:13–14; see
also Spec. 24:22–24 (describing the preferred embodiment of the
WebPlexer)) the WebPlexer as consisting of the three components shown in
Figure 1: (1) visitor module 101 (see Figs. 1–3; Spec. 4:16–23, 6:19–8:19);
(2) developer module 102 (see Figs. 4, 5; Spec. 4:25–29, 8:20–13:5); and (3)
workflow manager module 103 (Figs. 6–12; Spec. 4:31–5:17, 13:7–23:26).
Appellant describes the functioning of “the preferred embodiment of the
invention called ‘WebPlexer’” (Spec. 24:23–24) at pages 24 through 120 of
the Specification, which Appellant describes as “an excerpt of a user manual
describing the Visitor and Developer modules” (Spec. 24:22–23).
The description of the test mode of the preferred embodiment of the
WebPlexer (see Spec. 25:28–26:30) is silent as to the ability of the visitor
module to handle directives and present dynamic data on the page, and doing
so without requiring any alteration to the web server in order to serve cached
multilingual content as argued by Appellant. In other words, Appellant’s
description of the test mode operation of the WebPlexer (which includes the
visitor module 202) does not explain how the web server 203 operates
independently of the visitor module 203. Additionally, Appellant does not
point to any other portions of the Specification that warrant reading such a
requirement into the claims. Therefore, the argument that “no alteration to
the web server” is required “in order to serve cached multilingual content”
(Request 3–4 citing Reply Br. 8) is not commensurate with the scope of
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claim 11, and Appellant has not adequately shown the originally filed
Specification describes the meaning of “operates independently” in relation
to the operations between and among the web server and visitor module.
Second, as our original Decision stated: “[W]hile not required to,
Appellant has not submitted evidence of unexpected results that would not
naturally and predictably result from using a proxy server in a translation
web browser environment” (Decision 16).
The burden of demonstrating unexpected results rests on the party
asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (Appellant bears the burden
of showing that the claimed invention imparts unexpected results). Further,
the showing of unexpected results must be commensurate in scope with the
claims. See In re Peterson, 315 F.3d 1325, 1330–31 (Fed. Cir. 2003).
Finally, unexpected results must be established by factual evidence. See
Geisler, 116 F.3d at 1470–71.
In the instant case, Appellant relies on the statements in the
Specification that “‘the need for complex CGI scripts or interlinked
pages’” is eliminated (Reply Br. 8 citing Spec. 8:2–6), and “[b]y placing
this processing on the visitor module, ‘[w]eb site publishers can serve all
their multilingual content through a single point of entry using the
Visitor module,’ which ‘works in tandem with a customer’s existing
Web server’” (Reply Br. 8 citing Spec. 6:21–28). Notably, these features
are not recited in claim 11, and Appellant’s assertions that these features
are a result of an independently operating web server are unsupported.
In other words, Appellant has not created a nexus between the “operates
independently” limitation in claim 11, and the features of the visitor
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module described in the Specification and relied on in the new
arguments — namely, that the visitor module provides a single point of
entry for delivering multilingual content and eliminates the need for
complex CGI scripts or interlinked pages. Appellant has not shown how the
visitor module operating independently of the web server (as claimed)
“requires no alteration to the web server” as argued (Request 3–4 citing
Reply Br. 8).
Further, Appellant has provided no evidence on this record to support
the assertion of new and unexpected results, apart from mere conclusory
statements. It is well settled that mere lawyer’s arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. Geisler, 116 F.3d at 1470; In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984).
Moreover, Appellant does not provide evidence, such as by way of
affidavit or declaration, to establish that one of ordinary skill in the art
would understand that “operating independently” as recited in claim 11
would encompass or eliminate the functionality as described in the
Specification (see Spec. 6:21–28, 8:2–6). Rather, only attorney argument
was presented regarding the unexpected results (see Reply Br. 8; Request 3–
4).
In view of the foregoing, even considering Appellant’s new arguments
presented in the Reply Brief and at Oral Hearing concerning the web
server’s ability to operate independently of the visitor module (see Reply Br.
8; Hr’g Tr. 9:6–11, 10:17–21; 19:6–20:24), Appellant still has not
adequately shown error in the Examiner’s determination of obviousness.
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In summary, on the record before us, we find the new arguments, even
when considered, unpersuasive of the non-obviousness of claim 11 for the
reasons clarified above.

CONCLUSION
For the reasons stated above, we have granted Appellant’s Request
for Rehearing to the extent that we have (i) reconsidered our Decision dated
July 30, 2019; and (ii) considered Appellant’s new argument that the base
combination of Kobayakawa, Barry, and Raggett does not teach a web
server that “operates independently” of the visitor module, but we deny
Appellant’s request to reverse the rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

DENIED