Refuah, Aviv

Patent Trials and Appeals Board

Oct 30, 2020

10031794 - (D) (P.T.A.B. Oct. 30, 2020)

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.
10/031,794 01/17/2002 Aviv Refuah NETEX-P4-US (35817) 1240
44702 7590 10/30/2020
OSTRAGER CHONG FLAHERTY & BROITMAN PC
570 LEXINGTON AVENUE
FLOOR 19
NEW YORK, NY 10022
EXAMINER
FIBBI, CHRISTOPHER J
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
jbroitman@ocfblaw.com
lmurrell@ocfblaw.com
patentdockets@ocfblaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AVIV REFUAH
___________

Appeal 2019-003421
Application 10/031,794
Technology Center 2100
____________

Before JASON V. MORGAN, JAMES B. ARPIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) the Examiner’s decision
rejecting claims 89–99, all of the pending claims. Final Act. 2.2 Claims 1–
88 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Spring Ventures Ltd.
Appeal Br. 1.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
June 11, 2018) and Reply Brief (“Reply Br.,” filed March 28, 2019); the
Final Office Action (“Final Act.,” mailed August 9, 2017) and the
Examiner’s Answer (“Ans.,” mailed January 28, 2019); and the
Specification (“Spec.,” filed January 17, 2002). Rather than repeat the
Examiner’s findings and Appellant’s contentions in their entirety, we refer to
these documents.
Appeal 2019-003421
Application 10/031,794

2

STATEMENT OF THE CASE
The recited methods relate “to provid[ing] a straightforward and
uniform method for interacting with computers, preferably utilizing existing
browser interfaces. Preferably the method integrates interfacing to local and
remote computer resources.” Spec., 1:27–30. In some embodiments, the
methods relate “to using a URL field of a browser to enter commands in a
non-URL format.” Id. at 1:31–32.
As noted above, claims 89–99 are pending. Claim 89 is the sole
independent claim, and claims 90–99 depend directly or indirectly from
claim 89. Appeal Br. 13–15 (Claims App.).
Claim 89, reproduced below with disputed limitations emphasized, is
representative.
89. A method of performing an action in a separately-
executing program on a remote target computer in response to
input to a presently executing program on a user’s local
computer, comprising:
employing as the presently executing program on the
user’s local computer a WWW browser having a window with a
designated URL input field and a graphical display area for said
WWW browser;
capturing information input by the user to the URL field
of said WWW browser and differentiating whether it is a
standard URL or a name or other indication of a URL address for
a webpage, or whether the input information is other than an
indication of a URL for a webpage and is instead a command for
an action to be executed by a separately executing program on
the remote target computer, and if it is the latter then
sending the command to a remote processor which is
configured to translate the command into instructions for
execution by the separately executing program on the remote
target computer;
executing the instructions on the remote target computer;
and
Appeal 2019-003421
Application 10/031,794

3

returning to the graphical display area for said WWW
browser running on the user’s local computer a display of a status
of the execution of the instructions by the separately executing
program on the remote target computer.
Id. at 13 (emphases added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references:
Name3 Reference Issued/Publ’d Filed
Estabrook Sam’s Teach Yourself
Microsoft® Internet
Explorer 4 in 24 hours
(1st ed. 1997)
1997 Not
Applicable
Osaku US 6,061,738 May 9, 2000 Oct. 28, 1997
Wells US 6,125,281 Sept. 26, 2000 Mar. 4, 1997
Teare US 6,151,624 Nov. 21, 2000 Feb. 3, 1998
The Examiner rejects claims 89, 90, and 92–97 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Estabrook and Osaku.
Final Act. 2–11. The Examiner also rejects claim 91 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Estabrook, Osaku, and
Wells (id. at 11–13) and claims 98 and 99 under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Estabrook, Osaku, and Teare (id. at
13–15).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the contentions and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)

3 All reference citations are to the first named author or inventor only.
Appeal 2019-003421
Application 10/031,794

4

(precedential). The Examiner and Appellant focus their findings and
contentions on claim 89, so do we. See, e.g., Appeal Br. 5–12; Ans. 3–6.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Unless
otherwise indicated, we adopt the Examiner’s findings in the Final Office
Action and the Answer as our own and add any additional findings of fact
for emphasis. We address the rejections below.
ANALYSIS
A. Claim Construction
Claim 89, the sole independent claim, is written in conditional form.
Specifically, claim 89 recites:
capturing information input by the user to the URL field
of said WWW browser and differentiating whether it is a
standard URL or a name or other indication of a URL address for
a webpage, or whether the input information is other than an
indication of a URL for a webpage and is instead a command for
an action to be executed by a separately executing program on
the remote target computer, and if it is the latter then . . . .
Appeal Br. 13 (Claims App.) (emphases added). Due to this language, the
“sending,” “executing,” and “returning” steps recited after the phrase “if it is
the latter then” do not need to be performed unless “the input information is
other than an indication of a URL for a webpage and is instead a command
for an action to be executed by a separately executing program on the remote
target computer.” Id.; see Ex parte Schulhauser, Appeal 2013-007847, 2016
WL 6277792, at *3 (PTAB Apr. 28, 2016) (precedential). Thus, claim 89
covers at least two methods, one in which the prerequisite condition for the
“sending,” “executing,” and “returning” steps is met and one in which the
prerequisite condition for those steps is not met. See Schulhauser, 2016 WL
6277792, at *4. Consequently, if the first condition is met, namely, the
Appeal 2019-003421
Application 10/031,794

5

“information input by the user to the URL field of said WWW browser” is
“a standard URL or a name or other indication of a URL address for a
webpage” (Appeal Br. 13 (Claims App.)), the Examiner does not need to
present evidence of the obviousness of the remaining method steps of
claim 89 that are not required to be performed under the claim’s a broadest
reasonable interpretation. Id. This construction of independent claim 89
applies to dependent claims 90–99.
B. Obviousness Over Estabrook and Osaku
As noted above, the Examiner rejects claim 89 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Estabrook and Osaku.
Final Act. 2–7. In particular, the Examiner finds that Estabrook teaches or
suggests the “employing” step and the first alternative of the “capturing”
step. Id. at 2–3 (citing Estabrook, pgs. 83, 84, 132, Figs. 6.4, 9.5). With
regard to the second alternative of the “capturing” step, and the steps
conditional on the second alternative’s occurrence, the Examiner finds
Osaku teaches or suggests those limitations. Id. at 3–6 (citing Osaku, 8:13–
39, 13:62–14:43, Figs. 6, 13). Further, the Examiner finds that a person of
ordinary skill in the relevant art at the time of the invention would have had
reason to combine the teachings of Estabrook and Osaku to achieve the
recited methods of claim 89. Id. at 6–7 (citing Osaku, 1:51–55, 14:35–38).
Appellant contends the Examiner errs for two reasons. Appeal Br. 3;
Reply Br. 1–2. First, Appellant contends that “the Final Rejection does not
include a reading of the prior art of record on Appellant’s pending claim 89,
but instead reads the prior art on unamended claim 89.” Appeal Br. 3.
Second, Appellant contends “the Final Rejection does not identify where in
the prior art of record there is disclosure of a remote processor that translates
Appeal 2019-003421
Application 10/031,794

6

a command from a local computer into instructions for execution by a
remote target computer, as recited in Appellant’s claim 89.” Id. For the
reasons given below, we find neither of Appellant’s reasons persuasive of
Examiner error.
With regard to the first reason, Appellant contends, “in a
communication filed on April 25, 2017, Appellant amended independent
claim 89 extensively, but Section 3 of the Final Rejection reads the prior art
on unamended claim 89.” Appeal Br. 6. In particular, Appellant contends,
For example, page 4 of the Final Rejection quotes Appellant’s
unamended claim 89 by reciting “translating the non-URL-
indicating input information into a format as a command for an
action to be executed by the separately executing program on the
remote computer”. However, the actual corresponding limitation
in amended claim 89 reads as follows: “sending the command to
a remote processor which is configured to translate the command
into instructions for execution by the separately executing
program on the remote target computer”. Comparison of other
purported claim language quoted in the Final Rejection with
other limitations in amended claim 89 reveals additional
discrepancies.
Reply Br. 2–3.
Nevertheless, the Examiner finds,
The Final Rejection dated 09 August 2017 is definitively made
against the amended claims submitted by Appellant on 25 April
2017. Within the rejection of independent claim 89, the claim
limitations presented as bullet items (a), (b), (c), (d), (e) and (f)
are direct, word-for-word, copies of the amended limitations as
Appellant presented in the 25 April 2017 claim set.
Ans. 3. After comparing claim 89 as it appears in Appellant’s Claims
Appendix (Appeal Br. 13 (Claims App.)) to the portions of claim 89 quoted
in the Final Office Action (Final Act. 2–6), Appellant is incorrect in this
Appeal 2019-003421
Application 10/031,794

7

contention. The Examiner compares the teachings of the applied references
to the language of amended claim 89.
With regard to the second reason, Appellant contends:
Close scrutiny of the cited extracts and figures from Osaku finds
no mention of a system having a remote processor that translates
commands into instructions and then sends those instructions to
a remote target computer. On the contrary, Figure 6 of Osaku
shows a conversion database 102 (i.e., a remote processor) that
communicates only with the client computer 100; whereas
Figure 13 of Osaku discloses an embodiment in which translation
is performed by an “internal” message aliasing process 274,
wherein “internal” means internal to the client computer, not at a
remote processor. This internal service program monitors the
user input (see Osaku, col. 13, lines 52-57), converts the user
input to an alias message string (see Osaku, col. 14, lines 13-14),
and then sends the alias message string properly formatted to
command a database (i.e., remote target computer). Thus neither
the Figure 6 embodiment nor the Figure 13 embodiment of
Osaku disclose or suggest a system having a remote processor
that translates commands into instructions and then sends those
instructions to a remote target computer for execution.
Appeal Br. 10–11 (italics added); see Reply Br. 3.
Nevertheless, this contention refers to the “sending” step of claim 89.
Appeal Br. 13 (Claims App.). As noted above, this step is reached only if it
is first determined that “the input information is other than an indication of a
URL for a webpage and is instead a command for an action to be executed
by a separately executing program on the remote target computer.” Id. If
instead, it is determined that the information input is “a standard URL or a
name or other indication of a URL address for a webpage,” the method need
not reach the “sending” step. Id.
Appellant does not contend that Estabrook fails to teach or suggest the
first alternative of claim 89, or that Osaku fails to teach the second
Appeal 2019-003421
Application 10/031,794

8

alternative. See Appeal Br. 9–11; Reply Br. 3. Because the “sending” step,
as well as the “executing” and “returning” steps, are conditional on the
determination that the information input by the user is the second alternative,
we are persuaded that claim 89 is obvious over the combined teachings of
Estabrook and Osaku when the information input by the user is the first
alternative. Cf. Schulhauser, 2016 WL 6277792, at *5 (“Based on the
manner in which claim 1 is written, the modified method of Kramer would
literally infringe claim 1 by virtue of its performance of only the ‘collecting,’
‘comparing,’ and ‘triggering’ steps.”).
We are not persuaded the Examiner errs in determining that the
methods, recited in claim 89, are obvious over the combined teachings of
Estabrook and Osaku. Appellant does not challenge the rejection of
dependent claims 90 and 92–97 separately, and we are not persuaded the
Examiner errs in rejecting those claims. Consequently, we sustain the
Examiner’s obviousness rejection of claims 89, 90, and 92–97.
C. Obviousness Over Estabrook and Osaku in Combination with Wells
or Teare
As noted above, the Examiner also rejects claim 91 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Estabrook, Osaku, and
Wells (id. at 11–13) and claims 98 and 99 under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Estabrook, Osaku, and Teare (id. at
13–15). Appellant does not challenge the rejections of these dependent
claims separately from its challenge to their base claim; instead, Appellant
relies solely on its contentions with respect to claim 89 to overcome the
obviousness rejections of these claims. See Appeal Br. 11; Reply Br. 4. For
the reasons given above, we are persuaded that the Examiner shows that
Appeal 2019-003421
Application 10/031,794

9

claims 89 and 904 are obvious over the combined teachings of Estabrook and
Osaku. On this record, we determine that the Examiner also shows claims
91, 98, and 99 are obvious over the combined teachings of Estabrook and
Osaku with those of Wells or Teare. Consequently, we are persuaded that
the Examiner does not err in rejecting claims 91, 98, and 99, and we sustain
the obviousness rejections thereof.
DECISION
1. The Examiner does not err in rejecting:
a. claims 89, 90, and 92–97 as obvious over the combined teachings
of Estabrook and Osaku;
b. claim 91 as obvious over the combined teachings of Estabrook,
Osaku, and Wells; and
c. claims 98 and 99 as obvious over the combined teachings of
Estabrook, Osaku, and Teare.
2. Thus, on this record, claims 89–99 are not patentable.

4 Claim 91 depends from independent claim 89 via intervening claim 90;
claims 98 and 99 depend directly from independent claim 89. Appeal
Br. 13–15 (Claims App.).
Appeal 2019-003421
Application 10/031,794

10

CONCLUSION
We affirm the Examiner’s rejections of claims 89–99.
In summary:
Claims
Rejected
35 U.S.C.
§
Basis/Reference(s) Affirmed Reversed
89, 90, 92–
97
103(a) Estabrook, Osaku 89, 90, 92–
97

91 103(a) Estabrook, Osaku,
Wells
91
98, 99 103(a) Estabrook, Osaku,
Teare
98, 99
Overall
Outcome
89–99
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.
§ 1.136(a)(1)(iv).

AFFIRMED