SAP SE

Patent Trials and Appeals Board

Mar 15, 2022

2021000889 (P.T.A.B. Mar. 15, 2022)

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. 14/872,662 10/01/2015 Sergej Kirtkow 22135-0849001/141155US 2144 32864 7590 03/15/2022 FISH & RICHARDSON, P.C. (SAP) PO BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER AYAD, MARIA S ART UNIT PAPER NUMBER 2145 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SERGEJ KIRTKOW and MARTIN MOSER Appeal 2021-000889 Application 14/872,662 Technology Center 2100 Before JOSEPH L. DIXON, JOHN A. JEFFERY, and LARRY J. HUME, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20. 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(a) (2020). Appellant identifies the real party in interest as SAP SE. Appeal Br. 4. Appeal 2021-000889 Application 14/872,662 2 CLAIMED SUBJECT MATTER The claims are directed to optimizing software application user interface performance using interactive images. Title. Claim 1, reproduced below, are illustrative of the claimed subject matter: 1. A computer-implemented method comprising: providing, by a server, a user interface (UI) for display on a client computing device as an image, wherein the image comprises a plurality of server rendered interactive elements of the UI; generating, by the server, a UI descriptor describing the plurality of server rendered interactive elements of the UI; compressing, by the server, the image into a compressed image comprising a compressed image format; transferring, by the server, the compressed image and the UI descriptor to the client computing device, wherein the UI is rendered on the client computing device using the compressed image and the UI descriptor, and wherein rendering the UI on the client computing device comprises: generating, by the client computing device, an image map corresponding to the compressed image and the UI descriptor, the image map defining interactive areas of the image; displaying, by the client computing device, the UI using the image map; and for each server rendered interactive element in the displayed UI: rendering, by the client computing device, a corresponding interactive element using the UI descriptor in a background operation while displaying newly created elements of the UI on top of the image map, and replacing, by the client computing device, the server to rendered interactive element in the Appeal 2021-000889 Application 14/872,662 3 displayed UI with the corresponding client- rendered interactive element; receiving, by the server, a request for a dynamically generated interactive element from the client computing device, the request being based on an interactive event received on the rendered UI and associated with an interactive element of the UI described in the UI descriptor; and transmitting, by the server, a dynamically generated interactive element to the client computing device, the dynamically generated interactive element configured to be visible on the UI and to accept input. REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Holland et al. US 2002/0083132 A1 June 27, 2002 Gertzen US 2006/0265662 A1 Nov. 23, 2006 Lakshmanan et al. US 2008/0222273 A1 Sept. 11, 2008 Weber et al. US 2014/0053058 A1 Feb. 20, 2014 Wilde US 2015/0309993 Al Oct. 29, 2015 Rasmussen ‘142 EP 2 560 142 A2 Feb. 20, 2013 REJECTIONS Claims 1, 2, 7-9, 14-16, and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lakshmanan in view of Rasmussen, Wilde, and Gertzen. Final Act. 2. Claims 3-5, 10-12, 17, and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lakshmanan, Rasmussen, Wilde, and Gertzen, as applied to the independent claims 1 (for claims 3-5), 8 (for claims 10-12), and 15 (for claims 17 and 18) above, and further in view of Holland. Final Act. 9. Appeal 2021-000889 Application 14/872,662 4 Claims 6, 13, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lakshmanan in view of Rasmussen, Wilde and Gertzen, as applied to independent claims 1, 8, and 15, above, respectively, and further in view of Weber. Final Act. 12. OPINION 35 U.S.C. § 103 We are bound by the controlling guidance of our reviewing court: “[i]t is the claims that measure the invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citations omitted) (“[T]he name of the game is the claim.”) (emphasis added). “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Appeal 2021-000889 Application 14/872,662 5 “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn, 441 F.3d at 988). The Examiner’s burden of proving non- patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections.”). “A rejection based on section 103 clearly must rest on a factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence does not support Appellant’s position in the record. Accordingly, we sustain each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by the Examiner, and add the following for emphasis only. Claims 1, 8, and 15 With respect to independent claims 1, 8, and 15, Appellant does not set forth separate arguments for patentability for claims 8 and 15. Appeal Br. 12. As a result, we exercise our authority under 37 C.F.R. § 41.37(c)(1)(iv) and group the independent claims selecting independent claim 1 as the representative claim for the group and will address Appeal 2021-000889 Application 14/872,662 6 Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv). Arguments which Appellant could have made but did not make in the Briefs are deemed to be waived/forfeited. See 37 C.F.R. § 41.37(c)(1)(iv). With regard to independent claim 1, we agree with the Examiner and find Appellant’s arguments do not show error in the Examiner’s factual findings or legal conclusion of obviousness of representative independent claim 1. As a result, we find that Appellant has not shown that the Examiner provided insufficient factual finding, or that the Examiner has provided insufficient rational underpinning to support the legal conclusion of obviousness of independent claim 1 and independent claims 8 and 15 containing similar limitations. With regards to the representative independent claim 1, the Examiner provides a detailed rejection addressing the individual teachings of the four prior art references, and the Examiner provides some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Final Act. 3-8. Appellant also argues that the combination of prior art references does not teach or suggest the claimed limitations as the Examiner has applied prior art references. Appeal Br. 10-18. We note that Appellant acknowledges the grounds of rejection as based upon the combination of the Lakshmanan, Rasmussen, Wilde, and Gertzen references, but Appellant does not provide a description of the Lakshmanan reference. Appeal Br. 12. We find Appellant’s arguments with respect to independent claim 1 only address the Rasmussen, Wilde, and Appeal 2021-000889 Application 14/872,662 7 Gertzen references, but does not provide a description of the Lakshmanan reference applied as the primary reference by the Examiner. Appeal Br. 12- 15. We further note that Appellant does not provide specific and particular arguments to the Lakshmanan reference, and Appellant does not provide a description of the Lakshmanan reference throughout the Appeal Brief and Reply Brief. We find that each of the Appellant’s arguments generally address the teachings of the secondary references and then concludes that the references teachings are “different than” the proffered claimed limitations. For example, Appellant argues that at least the cited portions of Rasmussen appear to be silent as to a UI descriptor describing the plurality of server rendered interactive elements of the UI. Instead, the cited portions of Rasmussen describe generation of digital map images based on geographical data for a given area (Rasmussen, , ¶ [0009]). That is, even if assumed in arguendo (which the Appellant does not concede) that the entire map of Rasmussen corresponds to the claimed compressed image, the digital map of Rasmussen is generated based on geographical data for a given area, which is different than generating, by the client computing device, an image map corresponding to the compressed image and the UI descriptor, as recited in claims 1, 8, and 15. Appeal Br. 15-16 (Bolding added). Appellant further argues that “the tile- based map image of Rasmussen represents a section of the entire image that is being displayed at a time based on size constrictions, which is different than the image map defining interactive areas of the image, as recited in claims 1, 8, and 15.” Appeal Br. 16 (emphasis added). Appellant also argues: Appeal 2021-000889 Application 14/872,662 8 That is, the rendering process of Wilde is based on querying of data related to images on the webpage or sections of html, which is different than rendering, by the client computing device, a corresponding interactive element using the UI descriptor in a background operation while displaying newly created elements of the UI on top of the image map, as recited in claims 1, 8, and 15. Moreover, at least the cited portions of Wilde appear to be silent as to a UI descriptor describing the plurality of server rendered interactive elements of the UI, as recited in claims 1, 8, and 15. Appeal Br. 17 (Bolding added). Appellant argues: That is, in response to receiving a client request, the server of Gertzen dynamically updates to the GUI elements using a “LINK” tag pointing to a Cascading Style Sheet (CSS) that contains the styles for GUI components, which is different than receiving, by the server, a request for a dynamically generated interactive element from the client computing device, the request being based on an interactive event received on the rendered UI and associated with an interactive element of the UI described in the UI descriptor, as recited in claims 1, 8, and 15. Moreover, at least the cited portions of Gertzen appear to be silent as to a UI descriptor describing the plurality of server rendered interactive elements of the UI, as recited in claims 1, 8, and 15. Consequently, at least the cited portions of Gertzen have also not been shown to teach or suggest transmitting, by the server, a dynamically generated interactive element to the client- computing device, the dynamically generated interactive element configured to be visible on the UI and to accept input. Appeal Br. 18 (Bolding added). The Examiner finds that [f]or all three arguments addressed above with respect to rejection A, [the] Examiner respectfully notes that Appellant merely points out what the claims recite and generally asserts that what each of the secondary, tertiary, and quaternary references Appeal 2021-000889 Application 14/872,662 9 teaches is different than the claim limitations. Appellant only refers to specific limited portions of citations included in the rejection and does not articulate what gap exists between the teachings of the cited references and the claim limitations. [The] Examiner respectfully notes that, in order to rebut a prima facie case of unpatentability, Appellant must distinctly and clearly point out the specific distinctions believed to render the claims patentable over the applied reference. See 37 C.F.R. § 1.11 l(b); see also 37 C.F.R. § 41.37(c)(l)(iv) (2012) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Ans. 9-10. We agree with the Examiner that Appellant’s argument generally cites the references and repeats the claim language with a general conclusion that the teachings are “different than” the claim limitations. We find Appellant’s arguments to be general arguments without specific arguments for patentability. Furthermore, because Appellant does not address the teachings of the primary reference (Lakshmanan) which teaches and suggests the use of a “compressed image and the UI descriptor,” being generated and transferred to the client, Appellant’s arguments to each of the secondary references treats those references in isolation from the format and content of the “compressed image and the UI descriptor.” See Final Act. 3; Ans. 4-10. In the Reply Brief, Appellant quotes the Answer and generally concludes that the cited portions are “different than” the claim limitations Appeal 2021-000889 Application 14/872,662 10 and each of the additional prior art references does not cure the acknowledged deficiency in the base combination. Reply Br. 2-5. Appellant additionally contends, for the first time in the Reply Brief, that the Wilde and Gertzen references teach away from the claimed features. Reply Br. 3-4. Appellant argues that “Wilde that teach away from the claimed features of ‘rendering, by the client computing device, a corresponding interactive element using the UI descriptor in a background operation while displaying newly created.’” Reply Br. 3 (emphasis omitted). Appellant further argues the Answer also appears to ignore portions of Gertzen that teach away from the claimed features of ‘receiving a request for a dynamically generated interactive element from the client computing device, the request being based on an interactive event received on the rendered UI and associated with an interactive element of the UI described in the UI descriptor,’ even though they were discussed in the Brief. Reply Br. 4 (emphasis omitted). Because Appellant did not raise that argument in the opening brief and good cause has not been shown why it should be considered, we will not consider this argument. 37 C.F.R. § 41.41(b)(2) (2021); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Additionally, Appellant did not present any rebuttal evidence or argument in the Reply Brief to the Examiner’s finding that Appellant individually arguing the prior art references and presenting statements which Appeal 2021-000889 Application 14/872,662 11 merely point out what a claim recites which will not be considered as specific arguments for separate patentability of the claim. Ans. 9. In the Reply Brief, we note that the Appellant continues to argue the references individually, and Appellant addresses the Rasmussen, Wilde, and Gertzen references in isolation from the teachings of the Lakshmanan reference, but Appellant does not substantively provide arguments directed to the Lakshmanan reference which is relied upon to teach or suggest the first 4 limitations of the claimed invention. See generally Reply Br. 2-5; Final Act. 3-4. We disagree with Appellant’s arguments and find that the Examiner has made appropriate factual findings and set forth a rational underpinning to support the conclusion of obviousness. We also find that Appellant has not specifically addressed any of the Examiner’s stated motivations for the combination of the individual prior art references and merely contends that each of the teachings is “different than” the claim limitations. As a result, Appellant has not shown error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1. In the absence of sufficient persuasive evidence or argument to the contrary, we find the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness and are unpersuaded by Appellant’s contention that the Examiner’s combination of references is inadequate or improper. Accordingly, Appellant has not shown error in the Examiner’s factual findings or conclusion of obviousness, and we sustain the rejection of claim 1. Appeal 2021-000889 Application 14/872,662 12 Dependent claims 2, 7, 9, 14, 16, and 20 Appellant generally contends that claims 2, 7, 9, 14, 16, and 20 are patentable over Lakshmanan, Rasmussen, Wilde, and Gertzen references and relies upon the arguments advanced with respect to independent claims 1, 8, and 15. Because we did not find error in the Examiner’s obviousness rejection of representative independent claim 1, we find Appellant’s general argument to be unpersuasive of error, and we sustain the rejection of the dependent claims. Claims 3-6, 10-13, and 17-19 Appellant generally contends that claims 3-6, 10-13, and 17-19 are patentable over Lakshmanan, Rasmussen, Wilde, Gertzen, Holland, and/or Weber references and relies upon the arguments advanced with respect to independent claims 1, 8, and 15. Because we did not find error in the Examiner’s obviousness rejection of representative independent claim 1, we find Appellant’s argument general argument to be unpersuasive of error , and we sustain the rejection of the dependent claims. CONCLUSION We sustain the Examiner’s obviousness rejections of claims 1-20. Appeal 2021-000889 Application 14/872,662 13 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 7-9, 14-16, 20 103 Lakshmanan, Rasmussen, Wilde Gertzen 1, 2, 7-9, 14-16, 20 3-5, 10-12, 17, 18 103 Lakshmanan, Rasmussen, Wilde Gertzen, Holland 3-5, 10-12, 17, 18 6, 13, 19 103 Lakshmanan, Rasmussen, Wilde Gertzen, Weber 6, 13, 19 Overall Outcome 1-20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED