Ex Parte Rodefer et alDownload PDFPatent Trial and Appeal BoardOct 30, 201410305126 (P.T.A.B. Oct. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BENJAMIN RODEFER and NATHAN PERKINS ____________________ Appeal 2012-006730 Application 10/305,1261 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final Rejection of claims 4, 37, 38, 54, and 55, which have been twice rejected. Appellants have previously canceled claims 1–3, 5–36, and 39–53. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real-parties-in interest are the inventors, Benjamin Rodefer and Nathan Perkins. App. Br. 2. Appeal 2012-006730 Application 10/305,126 2 STATEMENT OF THE CASE2 The Invention Appellants' invention relates to a method of simultaneously accessing computer networks and data sources. Abstract. Exemplary Claim Claim 4, reproduced below, is representative of the subject matter on appeal (emphasis added to disputed limitation): 4. A method of accessing target sources, said method comprising the steps: (a) selecting at least one of said target sources to be accessed; (b) running a target parsing tool of said at least one of said target sources when parsing is required; (c) determining that a history list related to search data contains entered search data; (d) adding the search data to the top of the history list when the search data is not already in the history list; and (e) moving the search data to the top of the history list when the search data is already in the history list. 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed July 29, 2011); Reply Brief ("Reply Br.," filed Jan. 17, 2012); Examiner's Answer ("Ans.," mailed Nov. 16, 2011); Non-Final Office Action ("Non- Final Act.," mailed Dec. 9, 2010); and the original Specification ("Spec.," filed Nov. 27, 2002). Appeal 2012-006730 Application 10/305,126 3 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Wynn et al. ("Wynn") US 6,667,751 B1 Dec. 23, 2003 Wassom et al. ("Wassom") WO 99/34306 (PCT/US98/27465) July 8, 1999 Rejections on Appeal3 Claims 4, 37, 38, 54, and 55 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wynn and Wassom. Ans. 5. GROUPING OF CLAIMS Based on Appellants' arguments (App. Br. 8–11), we decide the appeal of the rejection of claims 4, 37, 38, 54, and 55 on the basis of representative claim 4. ISSUE Appellants argue (App. Br. 8–11; Reply Br. 4–6) the Examiner's rejection of claims 4, 37, 38, 54, and 55 under 35 U.S.C. § 103(a) as being obvious over the combination of Wynn and Wassom is in error. These contentions present us with the following issue: 3 We note the Examiner mistakenly indicates "Claims 4, 37–38 and 54–55 are rejected under 35 U.S.C. 102(e) as being unpatentable over Wynn et al. (US Patent 6,667,751) hereinafter Wynn, and in view of Wassom et al. (PCT/US98/27465) hereinafter Wassom." Non-Final Act. 3; and see Ans. 5 (emphasis added). It is clear from the detailed rejection (Non-Final Act. 3 et seq.; and Ans. 5 et seq.) the rejection is actually for obviousness under § 103, and Appellants respond and argue accordingly. App. Br. 8 et seq. Appeal 2012-006730 Application 10/305,126 4 Did the Examiner err in finding the cited prior art combination teaches or suggests the limitation of "selecting at least one of said target sources to be accessed," as recited in claim 4? ANALYSIS We only consider those arguments actually made by Appellants in reaching this decision, and we do not consider arguments which Appellants could have made but chose not to make in the Briefs so that any such arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii). We disagree with Appellants' arguments with respect to claims 4, 37, 38, 54, and 55, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth by the Examiner in the Examiner's Answer in response to Appellants' arguments. However, we highlight and address specific findings and arguments regarding claim 4 for emphasis as follows. Appellants contend, "[t]he applied art does not disclose or suggest at least, 'selecting at least one of said target sources to be accessed,' as recited in claim 4." App. Br. 8. Appellants base their contention on the belief "that there is no selection of a target source in Wynn," because "only keywords are being entered in Wynn, and not target sources." App. Br. 9. Appellants further argue, even assuming Wynn's search engine teaches the recited "target sources," such a teaching is still deficient because claim 4 "recites that at least one target source is selected," because "clearly there is no teaching or suggestion of the selection of a search engine in Wynn." App. Br. 10. Appeal 2012-006730 Application 10/305,126 5 In the Reply Brief Appellants state, "[t]he application defines a 'target source' as e.g., a search engine/website," and contend Wynn does not teach or "suggest a program that allows a selection of one among several, or multiple target sources/search engines to search at substantially the same time for a given input search criteria e.g., as claimed and described at ¶ 34 of the specification." Reply Br. 4. Appellants further argue, "Wynn describes a search field and is unrelated to selecting a target source." Reply Br. 5. We first find Appellants' arguments (Reply Br. 4) are not commensurate with the scope of claim 4, because claim 4 recites "selecting at least one of said target sources to be accessed," and does not require multiple search engines to search at substantially the same time, as alleged by Appellants. The Examiner points out, and we agree, Wynn teaches the disputed limitation in multiple ways: (1) entering a URL in location bar 34 (Ans. 9–10 (citing Wynn Table 1, col. 4, ll. 22–30; and Fig. 4)); (2) user entry of keywords into a search engine form (Ans. 10 (citing col. 4, ll. 28– 29)); (3) "select an item from the list and click to access" (Ans. 10 (citing Wynn col. 9, ll. 4–12)); and (4) user selection of banner ad (52) which causes the web browser to select a hyperlink which leads to a home page for another search engine, i.e., another target source. Ans. 10 (citing Wynn col. 4, ll. 35–41; Fig. 6). Further to the Examiner's finding in (1) above, we find Wynn's location bar 34 in Figure 4 can be used to access a search engine, e.g., Google®, which Appellants state is equivalent to a target source, as claimed. Appeal 2012-006730 Application 10/305,126 6 By choosing a particular search engine to use, the user is "selecting" the target source. Appellants appear to be reading limitations from the Specification into the claims. "We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Therefore, we decline to read limitations from the Specification into the claims. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 4, nor do we find error in the Examiner's resulting legal conclusion of obviousness. For the same reasons, we sustain the rejection of claims 37, 38, 54, and 55, which fall with claim 4. REPLY BRIEF To the extent Appellants advance new arguments in the Reply Brief (Reply Br. 4–6) not in response to a shift in the Examiner's position in the Answer, we note that "[a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief . . . is waived."). Appeal 2012-006730 Application 10/305,126 7 CONCLUSION The Examiner did not err with respect to the obviousness rejection of claims 4, 37, 38, 54, and 55 under 35 U.S.C. § 103(a) over the prior art combination of record, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 4, 37, 38, 54, and 55. 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) (2011). AFFIRMED msc Copy with citationCopy as parenthetical citation