LAKRITZ, DavidDownload PDFPatent Trials and Appeals BoardAug 30, 201913734161 - (R) (P.T.A.B. Aug. 30, 2019) Copy Citation 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”). Appeal 2017-008125 Application 13/734,161 2 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). Appeal 2017-008125 Application 13/734,161 3 (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) Appeal 2017-008125 Application 13/734,161 4 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 Appeal 2017-008125 Application 13/734,161 5 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. Appeal 2017-008125 Application 13/734,161 6 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 Appeal 2017-008125 Application 13/734,161 7 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 Appeal 2017-008125 Application 13/734,161 8 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. Appeal 2017-008125 Application 13/734,161 9 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 Copy with citationCopy as parenthetical citation