Ex Parte Beck et al

Patent Trial and Appeal Board

Apr 30, 2013

10322679 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDRE BECK, VOLKER HILT,
and MARKUS ANDREAS HOFMANN
____________

Appeal 2010-010862
Application 10/322,679
Technology Center 2400
____________

Before JOHN A. JEFFERY, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

Opinion dissenting filed by McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-4, 6-15, 17, 18, 27, 29, and 30. Claims 5, 16, 19-26,
28, 31, and 32 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellants’ invention searches received Web pages for contact
information and automatically modifies the pages to include associated
links. See generally Abstract.
Claim 1 is illustrative:
1. A method comprising the steps of:
receiving a Web page from a Web server;
searching independently of the Web server within the received
Web page to locate contact information associated with a point of
contact, the Web page lacking an embedded link associated with the
point of contact, wherein the contact information is at least one of a
telephone number, an e-mail address, an instant messaging address,
an alphanumeric name and address, and an SIP address that is
associated with the point of contact;
automatically modifying the Web page, without intervention by
an end-user, through automatic insertion of a first embedded link in
the Web page in association with the located contact information;
automatically determining from the contact information,
without intervention by the end-user, at least one other address, not
located within the Web page, for establishing communication with
the point of contact; and
automatically modifying the Web page, without intervention by
the end-user, through automatic insertion of at least one second
embedded link in the Web page which when activated by the end-user
facilitates electronic and / or telephonic communication between
the end-user and the point of contact at the determined at least one
other address, wherein the at least one second link is displayed
subsequent to selection and activation of the first link by the end-user.

THE REJECTIONS
1. The Examiner rejected claims 1-4, 6-10, 12-15, 17, and 18 under
35 U.S.C. § 103(a) as unpatentable over Mitreuter (US 2003/0055887 A1;
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Mar. 20, 2003), Hershenson (US 6,938,067 B2; Aug. 30, 2005; filed Sept. 5,
2002), and Elsey (US 2002/0055351 A1; May 9, 2002). Ans. 4-14.1
2. The Examiner rejected claims 27 and 29 under 35 U.S.C. § 103(a)
as unpatentable over Hershenson and Elsey. Ans. 14-18.
3. The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Hershenson, Elsey, and Jacobs (US 2002/0016645 A1;
Feb. 7, 2002). Ans. 18-19.
4. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Mitreuter, Hershenson, Elsey, and Anupam (US 6,535,912
B1; Mar. 18, 2003; filed Aug. 31, 1999). Ans. 19-20.

THE OBVIOUSNESS REJECTION OVER MITREUTER, HERSHENSON, AND ELSEY
The Examiner finds that Mitreuter searches a received web page to
locate contact information, but does not automatically modify the page by
automatically inserting first and second embedded links as claimed, but cites
Hershenson as teaching this feature. Ans. 4-7. The Examiner also
acknowledges that Mitreuter and Hershenson do not automatically determine
from the contact information at least one other address, not located within
the Web page, for establishing communication with the point of contact, but
cites Elsey as teaching this feature in concluding that the claim would have
been obvious. Ans. 7-8, 20-24. According to the Examiner, after the user
selects a particular listed phone number in Figure 5, Elsey’s server
automatically determines whether it is a valid dialable number (i.e., an

1 Throughout this opinion, we refer to the Appeal Brief filed February 16,
2010 (“Br.”) and the Examiner’s Answer mailed March 31, 2010 (“Ans.”).
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“other address”), and then generates an icon or link on the page to facilitate a
call. Id.
Appellants argue that Elsey’s determining whether a listed number in
the Edit Graphical User Interface (GUI) is dialable does not teach or suggest
determining, from the number, an other address not located within that GUI.
Br. 12-14. Appellants add that Elsey teaches away from this automatic
determination by emphasizing manual intervention to protect personal
contact data privacy. Br. 15.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Mitreuter, Hershenson, and Elsey collectively would have taught or
suggested automatically determining from the contact information, without
intervention by the end-user, at least one other address, not located within a
received Web page, for establishing communication with the point of
contact?

ANALYSIS
We begin by noting that Appellants do not dispute the Examiner’s
findings regarding Mitreuter and Hershenson (Ans. 5-6) in connection with
representative claim 1. See Br. 12-15. Notably, Appellants do not dispute
the Examiner’s findings that Hershenson (1) determines from contact
information at least one other address for establishing communication with
the point of contact, and (2) automatically modifies the web page by
automatically inserting at least one second embedded link in the page which,
when activated by the end-user, facilities electronic and/or telephonic
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communication between that user and the point of contact at the determined
at least one other address. Ans. 6.
Rather, Appellants dispute the Examiner’s reliance on Elsey (Ans 7-8)
for automatically determining from the contact information at least one other
address, not located within the Web page, for establishing communication
with the point of contact. Br. 12-15. Accordingly, we confine our
discussion to that reference. See Br. 12-15.
The Examiner relies on Elsey’s “direct connect” feature that enables
users to establish telephone connections to numbers listed in a stored
directory (e.g., the “My Contacts” folder 405 which can be viewed in the
Edit GUI in Figure 5) via voice over IP (VoIP) connections over a network.
Ans. 7-8, 20-24; Elsey ¶¶ [0063], [0088-89]; Figs. 4-5. After the user selects
a particular listed phone number in Figure 5, Elsey’s personalized
information server 28 automatically determines whether it is a valid dialable
number, and then generates an icon or link on the page (e.g., telephone icon
1007). Elsey ¶ [0089]; Figs. 5, 15 (steps 2103, 2109). When the user selects
the icon to call the valid number, the server transmits the phone number to
the browser 809 which (1) invokes a VoIP application, and (2) passes the
received phone number to that application which then establishes a VoIP
connection to the phone number over the Internet. Elsey ¶ [0089]; Figs. 5,
15 (step 2112).
Based on this functionality, we see no error in the Examiner’s position
that Elsey’s server automatically determines at least one other address not
located within the Web page without end-user intervention, namely a
dialable number. Notably, a confirmed dialable number in Elsey is distinct
from one that is not so confirmed and, in that sense, represents an address to
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the dialable number via a particular Internet-based routing scheme. As
noted above, upon determining that a user-selected number is valid and
dialable , Elsey’s server automatically generates a link to the VoIP
application and its associated connection to the phone number over the
Internet after the user selects that number. Skilled artisans would recognize
that to route the call to the dialable number via the Internet, this Internet-
based connection includes “other addresses,” such as those pertaining to the
VoIP application, associated components, and Internet protocols. These
automatic determinations and links to other addresses not on the received
Web page associated with dialable numbers amply teach the recited
automatic address determination. That Elsey’s server automatically
generates an icon on the Edit GUI to indicate this “other address” to
facilitate the call (Elsey ¶ [0089]) only bolsters the Examiner’s position that
this “other address” was not previously located on the Web page.
Based on this functionality, we see no error in the Examiner’s position
that Mitreuter, Hershenson, and Elsey collectively would have taught or
suggested automatically determining from the contact information, without
intervention by the end-user, at least one other address, not located within a
received Web page, for establishing communication with the point of
contact.
Although Elsey’s process is initially triggered by the user’s manually
selecting a particular listed number, nothing in the claim precludes the
server’s automatically determining whether the number is dialable and its
associated address after this selection. See CollegeNet, Inc. v.
ApplyYourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005) (affirming
construction of “automatically” to mean “once initiated, the function is
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performed by a machine, without the need for manually performing the
function” because a machine still performs the claimed functions without
manual operation, although a human may initiate or interrupt the process)
(emphasis added). Appellants’ arguments regarding the user’s involvement
in maintaining privacy of personal contact data as teaching away from the
recited automatic address determination (Br. 15) are unavailing and not
commensurate with the scope of the claim.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-4, 6-10, 12-15, 17, and 18 not
separately argued with particularity.

THE OBVIOUSNESS REJECTION OVER HERSHENSON AND ELSEY
We also sustain the Examiner’s rejection of claim 29 reciting, in
pertinent part, for each intercepted Web page, examining the page to
determine whether to search it for instances of contact information that lack
associated embedded links. Even assuming, without deciding, that
Hershenson’s system searches every received Web page to identify phone
numbers and create associated links as Appellants contend (Br. 16; citing
Hershenson, col. 2, ll. 51-63; col. 3, ll. 16-42), we still see no error in the
Examiner’s reliance on this functionality for teaching the disputed
limitation. Ans. 17-18, 24-27.
Nothing in the claim precludes Hershenson’s searching received Web
pages for telephone numbers lacking links (i.e., before their conversion)
which implicitly involves the system determining whether to search those
examined pages. This determination is likewise based at least partly on
examining those pages, at least to the extent that the system identifies those
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pages as received Web pages. Nor does the claim preclude Hershenson’s
examining a received Web page to determine whether to further search the
page for additional telephone number strings that have not been selected and
analyzed after determining that a selected number is not in a particular
format. See Hershenson, col. 3, ll. 30-36; Fig. 2A (steps 255 (“NO”
option”); 270 (“YES” option). Appellants’ arguments regarding Hershenson
searching every page (Br. 16) are therefore unavailing and not
commensurate with the scope of the claim.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 29, and claim 27 not separately argued with
particularity.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 11
and 30. Ans. 18-20. Appellants do not separately argue these claims apart
from their dependency from independent claims 1 and 27 (Br. 15) which we
find unpersuasive for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 1-4, 6-15, 17, 18, 27, 29,
and 30 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-4, 6-15, 17, 18, 27, 29,
and 30 is affirmed.
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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).

AFFIRMED
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McKEOWN, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority’s affirmance of the rejections
of independent claims 1 and 27 and dependent claims 2-4, 6-15, 17, 18, 29,
and 30.
The majority, in the analysis above, concludes that the Elsey’s
confirmed dialable number is an “other address” and that a skilled artisan
would recognize that there are “other addresses” associated with routing a
call to the confirmed dialable number through an internet based connection,
such as those pertaining to the VoIP application, associated components, and
Internet protocols. See supra at p. 5. I respectfully disagree.
First, Elsey’s direct connect feature determines whether or not a
telephone number is valid dialable number. App. Br. 13-14 (citing ¶89);
Ans. 20. In my opinion, this merely provides additional information about
the address, Bob’s listed telephone number, but does not provide at least one
other (or different) address as required by claim 1. Notably, in Elsey the
communication endpoint for the contact, Bob, remains the same, no other
address or communication endpoint is determined. See Elsey at Fig.5 and
¶89. In other words, when a user selects the generated icon or link to the
confirmed dialable number, the user is still connected to the contact, Bob,
through the originally listed telephone number.
Second, in my opinion, a skilled artisan would not recognize that
intermediary communication addresses associated with routing the call or
facilitating communication with the confirmed dialable number, such as
those pertaining to the VoIP application, associated components, and
Internet protocols, would be within the scope of the claimed “other address.”
Here, the claim language and the specification, as set forth below, define that
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the claimed at least one other address refers to a contact address or a
communication endpoint where the point of contact may be contacted or
reached.
For example, claim 1 recites that a second link is added to the web
page that “facilitates electronic and/or telephonic communication between
the end-user and the point of contact at the determined at least one other
address.” App. Br. 18 (emphasis added). Thus, the claimed at least one
other address is an address where the point of contact may be contacted or
reached, not an address associated with routing the call. Further, claim 1
distinguishes between determining the at least one other address and
modifying the web page to include a link used to facilitate communicate
with the other address.
Likewise, the Specification consistently and repeatedly identifies an
address as a communication endpoint or location where the point of contact
may be reached. See e.g., Specification at p. 7, ll. 10-14 (“The potential
point of contact information included in the Web page can be, for example,
but are not limited to, a name and street address, a phone number, an email
address, an Instant Messaging address, an SIP address, or any other
identification of a potential communication endpoint.)(emphasis added);
p. 10, ll. 8-12 (In response to that selection, directory service server 112 then
returns to browser 103 what might be multiple addresses for electronically or
telephonically communicating with the identified contact, such as, for
example, a telephone number, an email address, an Instant Messaging, or an
SIP address.”); p. 23, ll. 13-16 (For example, the grammar could be designed
to identify employee identification numbers within a Web page from which
a point of contact, such as a telephone number or an email address could be
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readily determined.”) ; and p. 4, ll. 8-13 (“If the click-to-contact service
cannot uniquely identify the telephonic or electronic address of the contact
from the contact information contained in the Web page (e.g., if the contact
information consists only of a name and address.), then a choice of different
contact addresses that are associated with the contact information in the Web
page can be provided to the user to select from”). Thus, in my opinion, it is
unreasonable to construe the claimed “other address” to include addresses
associated with routing a call to the confirmed dialable number, such as
addresses pertaining to the VoIP application, associated components, and
Internet protocols.
For the forgoing reasons, it is my opinion that the Examiner and the
majority incorrectly concludes that the Elsey’s confirmed dialable number is
an “other address” and that a skilled artisan would recognize that there are
“other addresses” associated with routing a call to the confirmed dialable
number, such as addresses pertaining to the VoIP application, associated
components, and Internet protocols.
Finally, while the majority notes that the Appellants do not dispute the
Examiner’s findings regarding Hershenson, the Examiner does not rely on
Hershenson for teaching the claimed limitation of determining at least one
other address, not located within the Web page. See Ans. 6-7. Moreover,
Hershenson only teaches creating links for each listed address, namely one
link for the listed telephone number and one link for the listed fax number.
Hershenson at col. 2, ll. 52-57 and Fig. 1. Hershenson does not cure the
deficiencies of Elsey because it does not teach determining at least one other
address, not located within the Web page, as required by claim 1.
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I therefore respectfully dissent from the majority’s affirmance of the
rejections of independent claims 1 and 27 and dependent claims 2-4, 6-15,
17, 18, 29, and 30.

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