Ex Parte Benton et alDownload PDFPatent Trial and Appeal BoardNov 20, 201311096844 (P.T.A.B. Nov. 20, 2013) Copy Citation 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. 11/096,844 04/01/2005 Randall S. Benton P/4673-2 4199 2352 7590 11/21/2013 OSTROLENK FABER LLP 1180 AVENUE OF THE AMERICAS NEW YORK, NY 10036-8403 EXAMINER KUDDUS, DANIEL A ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 11/21/2013 PAPER 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 RANDALL S. BENTON and SHIRLEY L. MCMENAMIN/BENTON ____________ Appeal 2011-010213 Application 11/096,844 Technology Center 2100 ____________ Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, 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 rejection of claims 2, 4-10, 12, 14-20, 22, 24, and 27-40. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. In reaching the decision, we have considered only the arguments that Appellants actually raised. Arguments that Appellants did not make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2010). Appeal 2011-010213 Application 11/096,844 2 STATEMENT OF THE CASE The present invention relates to Internet search engine listings. See generally Spec. 1. Claim 27 is illustrative: 27. A computer implemented system for delivering at least one of electronic search engine information and electronic web site uptime information to a plurality of computing devices respectively associated with a plurality of proprietors of web sites, the system comprising: at least one processor that is configured with non-transitory processor readable media and a communication device, wherein the at least one processor is further configured to communicate over a communication network via the communication device; a database provided on the non-transitory processor readable media, wherein the database stores: electronic search engine information representing ranked positions of hyperlinks in lists of hyperlinks; and electronic web site uptime information representing that each of one or more web sites is inactive, further wherein the at least one processor is configured to access the database; and a desktop application tool that is provided by the at least one processor that, when installed on each of at least two of the plurality of computing devices, programs and configures each of the at least two computing devices to at least communicate with the at least one processor over the communication network and to receive electronic information from the at least one processor, wherein the at least one processor is programmed and configured to: receive, from each of the at least two computing devices via the respectively installed desktop application tool, electronic options representing information associated with receiving notifications for a plurality of respective proprietors of one or more web sites; establish a first communication session with a first search engine, and conduct a first search in the first search engine for a first web site respectively associated with a first proprietor of the plurality of proprietors to determine a first ranked position of a respective first hyperlink to the first web site in a first list of hyperlinks provided by Appeal 2011-010213 Application 11/096,844 3 the first search engine in response to the first search performed in the first search engine; establish a second communication session with a second search engine, and conduct a second search in the second search engine for a second web site associated with a second proprietor of the plurality of proprietors to determine a second ranked position of a second hyperlink to the second web site in a second list of hyperlinks provided by the second search engine in response to the second search performed in the second search engine; generate and store in the database first electronic search engine information representing the first ranked position; generate and store in the database second electronic search engine information representing the second ranked position; determine that at least one of the first web site and the second web site is inactive; generate and store in the database electronic web site uptime information representing that the at least one of the first web site and the second web site is inactive; process the electronic first search engine information, the second search engine information and the electronic web site uptime information to be useable by the desktop application tool; determine, based on at least one electronic program option, to transmit at least one of the processed first electronic search engine information and the processed web site uptime information to a first computing device that is provided with the desktop application tool and that is associated with the first proprietor; transmit, via the communication device, to the first computing device provided with the desktop application tool the at least one of the processed first electronic search engine information, and the processed web site uptime information; determine, based on at least one other electronic program option, to transmit at least one of the processed second electronic search engine information and the processed web site uptime information to a second computing device that is provided with the desktop application tool and that is associated with the second proprietor; and transmit to the second computing device the at least one of the processed second electronic search engine information and the processed web site uptime information. Appeal 2011-010213 Application 11/096,844 4 THE REJECTION Claims 2, 4-10, 12, 14-20, 22, 24, and 27-40 are rejected under 35 U.S.C. 103(a) as being unpatentable over Abdelhak (US 2005/0097180 A1), and Singh (US 2002/0165849 Al). See Ans. 3-13. ISSUES Under 35 U.S.C. § 103, has the Examiner erred by finding that Abdelhak and Singh collectively teach the selected claim limitations (discussed below) of claim 27? ANALYSIS Claim 27 On this record, we find that the Examiner did not err in rejecting claim 27. Issue 1 Appellants argue that the Examiner unduly eliminates limitations from the claim, as the Examiner relies on (a) Abdelhak for a portion of a claim limitation, and (b) Singh for the remaining portion of the claim limitation. See App. Br. 12-13. Appellants repeat that argument in connection with many disputed claim limitations. See, e.g., App. Br. 13, 17-18. Appellants’ argument is unpersuasive because the Examiner rejected the claims under 35 U.S.C. § 103, not 35 U.S.C. § 102. Obviousness determination does not require a single reference to teach all of the claimed limitations. See 35 U.S.C. § 103. Appeal 2011-010213 Application 11/096,844 5 Issue 2 – web site uptime information Appellants assert that Abdelhak does not teach the recited electronic web site uptime information representing that each of one or more web sites is inactive. See App. Br. 13. Appellants argue that in rendering the rejections, the Examiner eliminated the essence of the claim limitation “each of one or more web sites is inactive,” and the cited Abdelhak passage 34 does not teach web site uptime information. See id. Appellants’ argument is unpersuasive because Appellants do not adequately rebut the Examiner’s findings. The Examiner finds that Appellants admitted “web site uptime information” is known in the art. See Ans. 16; After Final Remarks 11. And Appellants do not dispute the Examiner’s citing Abdelhak’s paragraph 77 (teaching an internet portal page can be suspended, and thus the website is inactive) and Singh’s paragraphs for teaching the recited “web site is inactive” claim term. See Ans. 7-8. Combining the known art technique with the teachings of Abdelhak (and/or Singh) would have predictably used prior art elements according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Issue 3 – desktop application tool Appellants assert that Abdelhak does not teach the recited a desktop application tool that is provided by the at least one processor that, when installed on each of at least two of the plurality of computing devices, programs and configures each of the at least two computing devices to at least communicate with the at least one processor over the communication network and to receive electronic information from the at least one processor. Appeal 2011-010213 Application 11/096,844 6 See App. Br. 13-14. Appellants argue that some of the cited Abdelhak passages do not teach the disputed claim limitation. Again, Appellants’ argument is unpersuasive because Appellants do not adequately rebut the Examiner’s findings. The Examiner correctly maps the recited at least one processor to Abdelhak’s personal portal information processor, and the recited plurality of computing devices to Abdelhak’s user terminals. See Ans. 18-20; Abdelhak, Figs. 2-3, ¶¶ 3, 13, 15, 38, 46, 49. The Examiner also correctly maps the recited desktop application tool to Abdelhak’s user interface, such as the personal Internet portal page design display screen discussed in Abdelhak’s paragraph 52. See Ans. 18-19; Abdelhak, 13, 46, 52. Issue 4 – receiving options via desktop application tool Appellants assert that Abdelhak’s certain paragraphs do not teach the recited “receive, from each of the at least two computing devices via the respectively installed desktop application tool, electronic options representing information associated with receiving notifications for a plurality of respective proprietors of one or more web sites.” See App. Br. 14-15. In response to Appellants’ arguments, the Examiner cites Abdelhak’s claims and additional paragraphs.1 See Ans. 21-22. Because Appellants do not dispute the Examiner’s findings based on those Abdelhak paragraphs 1 For this claim limitation (and similarly, other claim limitations), Appellants do not contend that the Examiner’s citing Abdelhak’s claims and additional paragraphs constitutes a new ground of rejection. Appeal 2011-010213 Application 11/096,844 7 and claims, the Examiner’s findings are undisputed. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Issue 5 – establish a first (second) session with a first (second) search engine Appellants assert that Abdelhak’s certain paragraphs do not teach the recited: establish a first communication session with a first search engine, and conduct a first search in the first search engine for a first web site respectively associated with a first proprietor of the plurality of proprietors to determine a first ranked position of a respective first hyperlink to the first web site in a first list of hyperlinks provided by the first search engine in response to the first search performed in the first search engine. See App. Br. 15-17. In response to Appellants’ argument, the Examiner cites additional Abdelhak paragraphs. See Ans. 22-25. Because Appellants do not dispute the Examiner’s findings based on those Abdelhak paragraphs, the Examiner’s findings are undisputed. See Baxter Travenol Labs., 952 F.2d at 391. Appellants also assert that the Examiner’s citing Singh for the recited “to determine a first ranked position” and “to determine a first ranked position” makes little sense. See App. Br. 16. Appeal 2011-010213 Application 11/096,844 8 Similar to the discussion above with respect to Issue 1, Appellants’ assertion is unpersuasive because Appellants do not present adequate analysis to persuade us of error. Issue 6 – generating and storing first (second) electronic search engine information Appellants assert that Abdelhak’s paragraphs 48 and 49 do not teach the recited “generating and storing” electronic search engine information. See App. Br. 15-17. In response to Appellants’ argument, the Examiner cites additional Abdelhak paragraphs. See Ans. 25. Because Appellants do not dispute the Examiner’s findings based on those Abdelhak paragraphs, the Examiner’s findings are undisputed. See Baxter Travenol Labs., 952 F.2d at 391. We adopt the Examiner’s findings and reasoning on page 25 as our own. See Ans. 25. We emphasize the following: the Examiner correctly finds that the cited paragraphs teach “generating and storing [information].” See id. And the Examiner already mapped the remaining portions of the claim limitations. Issue 7 – determine that at least one of the first web site and the second web site is inactive Appellants assert that Abdelhak’s paragraph 34 does not teach the recited “determine [] at least one of the first web site and the second web site[.]” See App. Br. 17-18. Appellants also argue that the Examiner improperly eliminates the claim limitation “is inactive,” and that Singh’s Appeal 2011-010213 Application 11/096,844 9 paragraph 62 and 162 teach “inactive links” instead of an inactive website. See App. Br. 17-18, 22-23. We disagree. First, the Examiner finds—and Appellants do not dispute—that Abdelhak’s paragraph 77 teaches that an internet portal page can be suspended. See Ans. 7, 25. One skilled in the art would understand that when an internet portal page is suspended, that website is inactive. Therefore, Abdelhak teaches the recited claim limitation “[a] website is inactive.” Second and alternatively, the Examiner finds that Singh’s paragraphs 201 and 272 teach web sites and “inactive” links. Therefore, the Examiner correctly finds that Singh teaches the claim elements “web site” and “is inactive.” See Ans. 7-8, 25-26. Issue 8 – process the electronic first search engine information . . . . In response to Appellants’ argument, the Examiner cites additional Abdelhak paragraphs. See Ans. 26. Because Appellants do not dispute the Examiner’s findings based on those Abdelhak paragraphs, the Examiner’s findings are undisputed. See Baxter Travenol Labs., 952 F.2d at 391. In addition, we note that this claim limitation includes many claim elements we discussed above. For similar reasons discussed above, we disagree with Appellants’ arguments (App. Br. 18). We adopt the Examiner’s reasoning and findings on page 26 of the Answer as our own. We emphasize that the cited paragraphs teach processing [information] (see, e.g., Abdelhak’s paragraph 53). Appeal 2011-010213 Application 11/096,844 10 Issues 9 -12 (corresponding to Appellants’ Issues 9-12) For each of the claim limitations associated with Issues 9-12, the Examiner cites additional Abdelhak paragraphs in response to Appellants’ arguments. See Ans. 26-30. Because Appellants do not dispute the Examiner’s findings based on those Abdelhak paragraphs, the Examiner’s findings are undisputed. See Baxter Travenol Labs., 952 F.2d at 391. In addition, the claim limitations include many claim elements we discussed above. For similar reasons discussed above, we disagree with Appellants’ arguments (App. Br. 18-21), and agree with the Examiner’s conclusions. We adopt the Examiner’s reasoning and findings on pages 26- 30 of the Answer as our own. See Ans. 26-30. Issue 13 – Singh and New Arguments Raised In the Reply Brief Appellants assert that Singh does not teach various recited claim elements. See App. Br. 21-23; see also Reply Br. 4-5.2 Appellants’ assertion is unpersuasive because Appellants have not presented adequate evidence to demonstrate that Singh does not teach the disputed claim elements. In the Reply Brief and for the first time, Appellants belatedly argue that it is improper to modify Abdelhak as proposed by the Examiner, and that Abdelhak teaches away from the claimed invention. See Reply Br. 2-4. Appellants have waived such arguments since they are untimely. See 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 2 Appellants’ arguments about the claim element “web site is inactive” are discussed above. Appeal 2011-010213 Application 11/096,844 11 made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). We also note that Appellants’ belated arguments (Reply Br. 2-4) are unpersuasive. The Examiner finds—and Appellants do not dispute—that both Abdelhak and Singh are in the same field of endeavor. See Ans. 32. The Examiner has provided articulated reasoning with a rational underpinning as to why one skilled in the art would have found it obvious to combine the teachings of Abdelhak and Singh. See Ans. 7-8, 32-33. The proposed modification of Abdelhak’s system would have predictably used prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. Appellants’ arguments are also unpersuasive because it is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Finally, Appellants have not provided adequate analysis and therefore, have not persuaded us that Abdelhak teaches away from the claimed invention. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[A] reference will teach away if it suggests that the line of development Appeal 2011-010213 Application 11/096,844 12 flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.”). Accordingly, we sustain the Examiner’s rejection of claim 27, and associated dependent claims, which Appellants do not separately argue. Claim 28 and Associate Dependent Claims Appellants do not provide analysis countering the Examiner’s rejection of claim 28 and associated dependent claims. To the extent that claim 28 recites claim limitations identical or similar those discussed above with respect to claim 27, our analysis regarding claim 27 applies to those claim limitations. Therefore, we sustain the Examiner’s rejection of claim 28 and associated dependent claims. DECISION The Examiner’s decision rejecting claims 2, 4-10, 12, 14-20, 22, 24 and 27-40 is affirmed. 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 ELD Copy with citationCopy as parenthetical citation