Ex Parte Beck et alDownload PDFPatent Trial and Appeal BoardApr 30, 201310322679 (P.T.A.B. Apr. 30, 2013) Copy Citation 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. Appeal 2010-010862 Application 10/322,679 2 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; Appeal 2010-010862 Application 10/322,679 3 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.”). Appeal 2010-010862 Application 10/322,679 4 “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 Appeal 2010-010862 Application 10/322,679 5 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 Appeal 2010-010862 Application 10/322,679 6 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 Appeal 2010-010862 Application 10/322,679 7 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 Appeal 2010-010862 Application 10/322,679 8 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. Appeal 2010-010862 Application 10/322,679 9 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 Appeal 2010-010862 Application 10/322,679 10 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 Appeal 2010-010862 Application 10/322,679 11 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 Appeal 2010-010862 Application 10/322,679 12 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. Appeal 2010-010862 Application 10/322,679 13 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. gvw Copy with citationCopy as parenthetical citation