Ex Parte De Mes

Patent Trial and Appeal Board

Mar 18, 2013

10809575 (P.T.A.B. Mar. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ARJAN DE MES
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Appeal 2010-010444
Application 10/809,5751
Technology Center 2100
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Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corporation.
Appeal 2010-010444
Application 10/809,575

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 34, 35, 37-39, 41, 46, 47, 49-51, and 53,
which are all the claims remaining in the application. Claims 1-33, 36, 40,
42-45, 48, and 52 are cancelled. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to creating a searchable
personal browsing history. See Abstract.
Claim 34 is illustrative:
34. A method for displaying a web browsing history, said
method comprising the steps of:
displaying, in response to a search request for recently
visited web sites received from a web browser within a client
computer connected to a computer network, a list of names of web
sites visited by a user of said client computer, said list of names of
said web sites recently visited being displayed on a display screen of
said client computer in an order based on a time since last visit by said
user to a respective web site of said recently visited web sites
displayed in said list; and
displaying next to each of said names of said web sites, a
respective graphic having an intensity that corresponds to a respective
time since last visit by said user to said each of said web sites
displayed to provide an ordered web site name list display;
wherein said ordered web site name list display consists
essentially of said list of names of said web sites in a chronological
order based on a respective time since last visit by said user and said
respective graphic next to a respective name of a respective web site
having an intensity that corresponds to said respective time since last
visit by said user.
Appeal 2010-010444
Application 10/809,575

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Appellant appeals the following rejection2:
Claims 34, 35, 37, 46, 47, and 49 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Sommerer (US Patent Pub. 2004/0003351
A1, Jan. 1, 2004), Pentikaninen (US Patent Pub. 2004/0073713 A1, Apr. 15,
2004), and Van Der Meulen (US Patent Pub. 2002/0129164 A1, Sep. 12,
2002).

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R. §
41.37(c)(1)(vii).

2 The Appeal Brief in the “Status of the Claims” section states “[c]laims 34,
35, 37, 46, 47, and 49 are Appealed” (App. Br. 1). We have previously held
that when an appellant is silent in the notice of appeal as to the specific
claims appealed (e.g., appeals generally from the “final office action”) and
then clearly states in the appeal brief that some of the finally- or twice-
rejected claims are not being pursued in the appeal, the appellant should
cancel those claims not pursued. See Ex Parte Ghuman, 88 USPQ2d 1478,
1480 (BPAI 2008) (precedential). In the present appeal, Appellant’s Notice
of Appeal failed to identify any specific claims from which the appeal was
taken. Further, the “Grounds of Rejection to be Reviewed on Appeal”
section only lists the prior art rejection of claims 34, 35, 37, 46, 47, and 49,
(App. Br. 6), and the remainder of the Appeal Brief is consistent with
Appellant’s intention in the status of the claims not to pursue the appeal for
claims 38, 39, 41, 50, 51, and 53. Because the Appeal Brief has
demonstrated a clear intent not to pursue the appeal as to all the rejected
claims, we have no jurisdiction in this appeal as to the rejections of claims
38, 39, 41, 50, 51, and 53. Consequently, we will only decide the appeal of
the rejection of claims 34, 35, 37, 46, 47, and 49. Accordingly, upon
acquiring jurisdiction of this application, the Examiner is advised to cancel
the non-appealed claims, i.e., claims 38, 39, 41, 50, 51, and 53.
Appeal 2010-010444
Application 10/809,575

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ANALYSIS
Claims 34, 35, 37, 46, 47, and 49
Issue: Did the Examiner err in finding that the combined teachings of
the cited art teach and/or suggests displaying next to each of said names of
said web sites, a respective graphic having an intensity that corresponds to
a respective time since last visit, as claimed in claim 34?

Appellant contends that neither Sommerer, Pentikainen, nor Van Der
Meulen “disclose or suggest different shade intensities to indicate respective
times since last visit by the user to a web site” (App. Br. 10).
The Examiner found that “Sommerer discloses that the search result
can be presented in sequential format as a list of visits to the resource pages
in the order of access time” (Ans. 17), that Pentikainen discloses “the
browsing history stored in the form of a table viewable in a sorting order
based on last visited page by a user” (id. at 18), and that Van Der Meulen
discloses “displaying next to each bookmark a visual indicator such as a
graphical gauge that can show three different filling levels” (id. at 19). The
Examiner further found that “one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references” (id. at 20). We agree with the Examiner.
Appellant’s arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
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the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” (citations
omitted) (emphasis added)). This reasoning is applicable here.
Specifically, Sommerer discloses displaying navigational history trails
of resource pages in sequential format in the order of access time (see ¶
[0037]), Pentikaninen discloses accessing a browsing history which may
include the URLs which have been browsed over a specified period of time
(see ¶ [0100]), and Van Der Meulen discloses that visual indicators, i.e.,
graphical gauges, are displayed next to each bookmark (see ¶ [0048]). In
other words, while Van Der Meulen’s “graphic indicator” represents levels
(i.e., intensities) of the validity of the paths associated with the URLs, the
Examiner reasoned that such graphical indicators could have been used to
represent “time since last visits” given the teachings in Pentikainen and in
Sommerer regarding displaying URLs history lists in the time order of page
access and Van Der Meulen’s teachings of bookmarks which may expire
over time and a graphical indicator relating to the same. We agree.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results,”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), especially if the
combination would not be “uniquely challenging or difficult for one of
ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Here, we
find that modifying the indicators of Van Der Muelen to indicate “time” as
opposed to “validity” is a predictable result given that Van Der Muelen’s
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validity indicators are based on a timed indicator “i.e., expired URLs,” and
has not be shown to be difficult to do.
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding the argued limitations in the combined
disclosure of Sommerer, Pentikainen, and Van Der Meulen, the Examiner’s
35 U.S.C. § 103(a) rejection of representative independent claim 34 is
sustained. We also sustain the rejection of claims 35, 37, 46, 47, and 49 for
essentially the same reasons.

DECISION
We affirm the Examiner’s § 103 rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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