Ex Parte Ashton et al

Patent Trial and Appeal Board

Nov 13, 2013

11618289 (P.T.A.B. Nov. 13, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/618,289 12/29/2006 Wesley Scott Ashton ROBASH0002 5576
7590 11/14/2013
Roy Roberts
1337 A St. NE
Washington, DC 20002
EXAMINER
LE, MICHAEL
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
11/14/2013 PAPERPAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WESLEY SCOTT ASHTON, RAMA ROBERTS, and
ROY ROBERTS
____________

Appeal 2011-004714
Application 11/618,289
Technology Center 2100
____________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4-9, and 15-18. Claims 2 and 3 are cancelled, and
claims 10-14, 19, and 20 are withdrawn. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

Appeal 2011-004714
Application 11/618,289

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STATEMENT OF THE CASE
The present invention relates to operating an internet search engine
and seeking authorization to copy and subsequently reproduce content from
a web site. See generally Spec. 1. Claim 1 is illustrative:
1. A method of obtaining authority for copying content from a website
accessible on an internet, comprising the steps of:
(a) searching the internet with a web crawler of a search engine to
identify publicly-accessible content on a website and one or more flags
associated with the content, wherein each flag provides an authority level for
copying and subsequent reproduction of a portion or all of the associated
content, and wherein the one or more flags reside in one or more files that
are separate from the content; and
(b) copying content from the website to a database associated with the
search engine, in accordance with the authority level of the one or more
flags.

THE REJECTIONS
Claims 1, 4-6, 8, 9, and 15-18 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Tadayon (US 6,973,445). See Ans. 3-6.
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over
Tadayon. See Ans. 6.

Appeal 2011-004714
Application 11/618,289

3
ISSUE
The dispositive issue raised by Appellants’ arguments is:1
Under 35 U.S.C. § 102, has the Examiner erred by concluding that
Tadayon discloses a web crawler as recited in claim 1?
ANALYSIS
On this record, we find that the Examiner erred in rejecting claim 1.
The Examiner finds that
Tadayon discloses a search engine that searches a database
which contains the content available in the system, which is
distributed across the Internet. Tadayon at col. 8, lines 1-3.

Ans. 8; see also Ans. 3, 7-8.

Tadayon’s column 8, lines 1 through 7 state:

The obtained summary can be used for review purposes, for a
database searched by a search engine, to direct the other users
to the original book for further information. Demarcated
words or other portions of the content data can be used for
indexing a search engine using keywords/phrases selected by
author 110 or publisher 120 as opposed to keywords determined
by the search engine.

Tadayon, col. 8, ll. 1-7 (emphasis added).

We agree with Appellants that the cited Tadayon passage does not
disclose a web crawler. See Reply Br. 2. Tadayon does not state and
therefore, it is unclear whether the disclosed search engine necessarily
includes a web crawler. While the disclosed search engine may include a
web crawler as contended by the Examiner, it may be a local search engine

1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
Appeal 2011-004714
Application 11/618,289

4
instead and excludes a web crawler. As a result, the Examiner has not
presented sufficient basis for the rejection under 35 U.S.C. § 102.
Accordingly, we do not sustain the Examiner’s rejection of claim 1,
and claims 4-9, and 15-18, which were rejected on the same ground.
We note that although the Examiner rejected claim 7 under 35 U.S.C.
§ 103, the obviousness rejection is not directed toward the disputed web
crawler claim limitation.

DECISION
The Examiner’s decision rejecting claims 1, 4-9, and 15-18 is
reversed.

REVERSED

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