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March 13, 2006

Generating Claim Construction

Michael Scroggie et al filed 09/401,198, and have had a hell of a time with prosecution, so bad they had to take it all the way to the court of appeals (CAFC 05-1370). The '198 claims go to generating a web page. Given that, what do you suppose the limitation "generating page data" means? The patent office examiner and appeals board couldn't get a clue.

Claim 41 is one of the independent claims under appeal.

41. A computer implemented method for generating a web page, said method comprising the steps of:
transmitting a prompt for personal information from a main computer to a personal computer over a computer network;
transmitting personal information data from said personal computer to said main computer over said computer network in response to said prompt; and
generating page data defining a web page based upon said personal information data.

The patent appeals board used 5,933,811 (Angles) as anticipatory prior art, rejecting under §103(a).

In the decision on appeal, the Board relied solely on Angles as establishing a prima facie case of obviousness of claims 41-67.1 In general, Angles discloses a system and method for delivering customized electronic advertisements in an interactive communication system. The Board found that the first two elements of representative claim 41, i.e., the two transmitting steps, were clearly taught or suggested by Angles. Scroggie does not disagree. Additionally, the Board found that the examiner had not explained where, in Angles, the third element, “generating page data defining a web page based upon said personal information data” was either taught or suggested. The Board, however, found that column 4, lines 7-9, of Angles discloses that advertisements sent to a consumer’s computer may contain hyper-links to other information and that the “hyper-links typically direct the user’s Internet browser to access different websites on the Internet.” Board Decision, slip op. at 5. Thus, the Board concluded that since the advertisements sent to a consumer in Angles are based on personal information of the consumer and the hyper-links in the advertisement lead to a web page which is generated from some page data, “one may fairly interpret this disclosure as a teaching of ‘generating page data defining a web page based upon said personal information.’” Board Decision, slip op. at 8.

Every prosecutor identifies with this sort of lameness - examiner rejection without decent explanation: "the Board found that the examiner had not explained where, in Angles, the third element, “generating page data defining a web page based upon said personal information data” was either taught or suggested." The CAFC ruling also noted another instance where the examiner possessed all the logic facilities of a pithed frog in rejecting claims 32-40 without adequate reason or explanation, but the board caught that, so claims 32-40 were not on appeal.

On Scroggie’s request for rehearing, the Board reaffirmed its conclusion that Angles teaches the third limitation of claim 41, “generating page data defining a web page based upon said personal information.” The Board reiterated that “if the advertisements, which are sent to a consumer based on personal information, are said to be ‘page data’ (i.e., the advertisement page contains data including a hyperlink) and the hyperlink (the hyperlink defining a web page since clicking on this hyperlink will send the user to that web page) in that page data is directed to a certain web page, it can be reasonably said that Angles generates page data defining a web page based on personal information, as claimed.” Ex parte Scroggie, Appeal No. 2004-0738, Paper No. 33, slip op. at 3-4 (B.P.A.I. Feb. 10, 2005).

For a refresher, here's the legal setup for the appeals court.

Obviousness is a legal question based on underlying factual findings. See e.g., In re Mayne, 104 F.3d 1339, 1341 (Fed. Cir. 1997). What a reference teaches, including whether it teaches toward or away from the claimed invention, is a question of fact. Para-Ordnance Mfg. v. SGS Imps. Int’l, 73 F.3d 1085, 1088 (Fed. Cir. 1995). This court upholds the Board’s factual findings unless they are unsupported by substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).

Claim construction, however, is a question of law reviewed de novo on appeal. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). Since during prosecution, claims must be given their “broadest reasonable interpretation,” this court reviews the Board’s interpretation of disputed claim language to determine whether it is “reasonable” in light of all the evidence before the Board. In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997).

In a nutshell, Scroggie argues that putting a hyperlink in an advertisement email (as Angles disclosed) doesn't constitute the claimed "generating page data defining a web page," nor does the user clicking on that link, because the web page to which the link refers already exists, and thus the page is not generated according to personal data sent by the link clicker (the email reader).

Scroggie contends that the Board incorrectly concluded that Angles teaches or suggests limitations defined by claims 41-67. He argues that a hyper-link is not a web page, but rather a logical address which is clearly known on the Internet. With respect to claims 41-49, he asserts that the inclusion of hyper-links in the advertisement sent to the consumer does not generate page data (i.e., result in page data being generated). Consequently, when a consumer clicks on the hyper-link, it does not result in “generating page data defining a web page based upon said personal information data,” as recited in claim 41. This is so because the page data, contemplated by the hyper-links in the advertisements disclosed in Angles, already exist in the server computer having the logical address specified in the hyper-link. Scroggie contends that “[w]hen the user clicks [on] the link in the advertisement, his computer sends a prompt to the corresponding address, and the computer at that address responds with a data file . . . [i.e., a web page], based upon data pre-existing at that computer.” (Appellant’s Br. 17.) Thus, Scroggie asserts that the Board erred in finding that Angles discloses this limitation because it does not teach or suggest “generating page data defining a web page based upon said personal information data.”

The Director of the United States Patent and Trademark Office (the “Director”) asserts that Angles teaches selecting custom advertisements to send to a consumer based on a consumer’s personal information and that those custom advertisements can contain hyper-links. The Director argues that since the hyper-links are custom-selected and included in the electronic page that shows up on the user’s screen, they are “page data.” Also, since the hyper-links provide a direct link to a web page, they can reasonably be said to be “page data” that “define a web page” as required by the claims. Additionally, the Director argues that there is no limitation in the claim that prevents the customized page data from “preexisting,” rather the only requirement of the claim is that it be customized for that consumer. Thus, when the disclosure in Angles teaches “selecting” customized advertisements which contain hyper-links to other web pages, this is sufficient to teach the “generating page data” element of claims 41-49.

Earth to PTO, come in. Here's the limitation under review: "generating page data defining a web page based upon said personal information data". How could a preexisting page be generated?

We disagree. The term “generating page data” means that the page data is “generated,” not merely “selected.” Both the Board and the Director apply an unreasonable construction to the term “generating page data” such that Angles, which teaches “selecting” advertisements which contain hyper-links can somehow teach or suggest “generating.” Generating does not imply a mere selection of pre-existing page data, but rather the creation or origination of such data. Therefore, the Board’s construction of “generating page data” was unreasonable and its conclusion that Angles teaches that limitation is thus unsupported by substantial evidence.

Judge Mayer, in dissent, agreed with the board: "There is no limitation in the ’198 application that prevents the term “generating” from being interpreted to allow preexisting customized page data, so long as the page data that is “generated” for the consumer is based on his specific user information, as done in Angles."

Of course, the sophomoric error in Mayer's thinking is that you don't examine the application, you examine the claims. Further, you examine the claims holistically, and thus, reading the claimed process, the majority opinion is indubitably correct.

The other claim construction issue under review went with the other way (against Scroggie), because of inherent ambiguity in defining what "personalized" could mean.

Posted by Patent Hawk at March 13, 2006 3:04 PM | Prosecution


So a web server generating web page data for transmission over the Internet (whether the web page includes the hyperlink or whether the web page was transmitted after selection of the hyperlink) to a web client (browser) does not read on "generating page data defining a web page"? So my favorite website does not generate web data in http protocol format for transmission to my browser over the Internet when I select a web page because some of the non-http data (e.g., high level text content) was prestored? So my graphics card does not generate display data because the source content for the display data (e.g., a file), which simply lacks the low level monitor display data independently generated by my graphics card, is stored somewhere on my computer?


Posted by: patentsoldier at March 14, 2006 6:46 PM