Ex Parte SnyderDownload PDFPatent Trial and Appeal BoardJul 12, 201311513423 (P.T.A.B. Jul. 12, 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. 11/513,423 08/31/2006 Russell Snyder 098888-6989 1591 23524 7590 07/15/2013 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER ALAM, SHAHID AL ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 07/15/2013 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 RUSSELL SNYDER ____________ Appeal 2013-007323 Application 11/513,423 Technology Center 2100 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-007323 Application 11/513,423 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 25-31 and 47-63. (App. Br. 2). Claims 1-24 and 32-46 were cancelled during prosecution. (Id.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. INVENTION The reissue application on appeal is directed to: A search engine manages the indexing of web page contents and accepts user selection criteria to find and report hits that meet the search criteria. The inventive search engine has an associated crawler function[,] wherein display images of the web pages are rendered and stored as snapshots, preferably when the pages are indexed. The search engine reports search results by composing an html page with links to the corresponding page hits and containing snapshot reduced size graphic images showing the web pages as they appeared when fetched and stored as snapshots. (Snyder (US 6,643,641 B1), abstract). Claim 25, reproduced below, is representative of the claimed subject matter: 25. A system comprising: [L1] a fetching agent configured to receive a website file via at least one network interface, wherein the website file is associated with a web page; [L2] a rendering agent configured to generate, based on the website file, a visual representation file that represents a rendered appearance of the web page and to compress the visual representation file of the web page into a reduced image file, wherein the reduced image file represents a reduced-size rendered appearance of the web page; and Appeal 2013-007323 Application 11/513,423 3 [L3] a memory, configured to store the reduced image file and at least one network address associated with a network location of the website file. (Disputed limitations emphasized and labeled as L1-L3). REJECTIONS 1. The Examiner rejected claims 25-31 and 47-63 under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Takemoto (US 6,335,742 B1) and Geaghan (US 5,790,114). (Final Rejection (mailed April 24, 2012), 6). 2. The Examiner rejected claim 63 under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Takemoto, Geaghan, and Call (US 6,154,738). (Final Rejection, 10). ANALYSIS In this decision, we have considered only those arguments actually made by Appellant. Arguments which Appellant could have made but did not make in the Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv)(2012). Regarding the rejections of all but dependent claims 54, 56, 58, 61, and 63 (reversed infra), 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 set forth by the Examiner in the Answer in response to arguments made in Appellant’s Appeal Brief. (Ans. 3-8). We highlight and address specific findings and arguments below. Appeal 2013-007323 Application 11/513,423 4 Independent Claims 25, 30, 31, 50, and 60 Based on Appellant’s arguments, we decide the appeal of the rejection of independent claims 25, 30, 31, 50, and 60 on the basis of claim 25.1 See 37 C.F.R. § 41.37(c)(1)(iv). Claim 25 Issue: Under § 103, did the Examiner err in finding the cited references, either alone or in combination, would have taught or suggested limitations L1-L3: [L1] a fetching agent configured to receive a website file via at least one network interface, wherein the website file is associated with a web page; [L2] a rendering agent configured to generate, based on the website file, a visual representation file that represents a rendered appearance of the web page and to compress the visual representation file of the web page into a reduced image file, wherein the reduced image file represents a reduced-size rendered appearance of the web page; and [L3] a memory, configured to store the reduced image file and at least one network address associated with a network location of the website file[,] within the meaning of representative claim 25? (Disputed limitations emphasized and labeled as L1-L3). 1 We note the Examiner has not made a rejection based upon the recapture rule, but do not find any discussion in the administrative record regarding this issue. In the event of further prosecution, the Examiner should evaluate whether all the material limitations added to patented claim 19 during the original prosecution history are found in the pending reissue claims. The recapture test was recently clarified by the Federal Circuit. See In re Shahram Mostafazadeh, 643 F.3d 1353 (Fed. Cir. 2011); In re Youman, 679 F.3d 1335 (Fed Cir. 2012). Appeal 2013-007323 Application 11/513,423 5 Regarding limitation L1 (receiving a website file), Appellant contends Takemoto’s mention of “browser software applications” (col. 1, ll. 16-17) “fails to provide any indication that the ‘files’ received from ‘RAM 19’ include a ‘website file ... associated with a web page,’ as claimed.” (App. Br. 14). However, we observe the Examiner’s final rejection relies not only on the teachings and suggestions inTakemoto, but also on Appellant’s admitted prior art: With respect to claim 25, 30, 31, 50 and 60, Takemoto teaches receiving a website file (Internet has been used: see column 1, lines 16 - 18; Internet can be World Wide Web: see support in Applicant’s Admitted prior art, column 1: a search engine is a useful facility for browsing the Internet or World Wide Web) via at least one network interface (column 5, lines 45-47). . .[.] (Final Rejection, 6) (emphasis added). Appellant’s Specification (US 6,643,641, “BACKGROUND OF THE INVENTION” section) expressly describes “[w]eb pages” (col. 1, l. 11), Uniform Resource Location References (URLs) (i.e., the network location of the website file) (col. 1, ll. 31-32), and a database (storage) which identifies the addresses of web pages that meet the search criteria (col. 2, ll. 53-54). Thus, Appellant has not traversed the complete basis for the Examiner’s rejection, which also relies on Appellant’s admitted prior art.2 2 See 37 C.F.R. § 1.104(c)(3)(“In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.”); see also MPEP § 2129 (Rev. 9, August 2012). Appeal 2013-007323 Application 11/513,423 6 Regarding limitation L2, Appellant contends Takemoto does not disclose "generating a visual representation file that represents an appearance of the web page based on the website file." We disagree with Appellant and find Takemoto discloses: thumbnails of image files contained in the selected folder are displayed in the thumbnail display area 500 (step S5). In this case, when the thumbnails have already been created and stored in the management file 17, the thumbnails stored can be read out to achieve a high-speed display. If no thumbnail has yet been created, new thumbnails are created and displayed. (Col. 9, ll. 50-54; emphasis added). Therefore, Takemoto teaches generating reduced size images of image files/content. Appellant additionally contends “Takemoto fails to provide any indication the ‘selected image file’ is a ‘website file’ associated with a web page,’ as claimed.” (App. Br. 17). We find this argument is predicated on the type of the data (web page content) which is non-functional descriptive material intended for human viewing.3 3 See MPEP § 2111.05(III) (“where the claim as a whole is directed [to] conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists. For example, a claim to a memory stick containing tables of batting averages, or tracks of recorded music, utilizes the intended computer system merely as a support for the information. Such claims are directed toward conveying meaning to the human reader rather than towards establishing a functional relationship between recorded data and the computer.”) (Emphasis added)). Appeal 2013-007323 Application 11/513,423 7 Assuming arguendo the web site data content may be given patentable weight, we also agree with the Examiner’s findings that Takemoto’s thumbnails (col. 2, l. 63) would have taught or suggested the claimed generating, based on the website file, of a visual representation file that represents a rendered appearance of the web page, when combined with the web site teachings of Appellant’s Specification (US 6,643,641, “BACKGROUND OF THE INVENTION” section). (See Ans. 6-7; claim 25). The Examiner relies on the secondary Geaghan reference (cols. 2, ll. 14-21, 4, ll. 16-17) for teaching or suggesting generating a reduced-size file. (Ans. 6-7). Geaghan teaches a "snapshot may be created either by the user or automatically by the application software to allow creation of an image which is the composite of all graphical user inputs . . . ." (Geaghan, col. 2, ll. 14-21). Regarding the particular data type or content of the recited “visual representation file” (claim 25), Appellant’s arguments are again predicated on non-functional descriptive material intended for human viewing (i.e., a visual image representation of a website file). Such non- functional descriptive material is not entitled to patentable weight because it is not positively recited as changing or altering any computer or machine function.4 See also n.3 supra. 4 The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). Appeal 2013-007323 Application 11/513,423 8 Disputed limitation L3 is shown below with the corresponding teachings relied on: [L3] a memory, configured to store the reduced image file [reduced web site image] and at least one network address [URL] associated with a network location of the website file[.] (Claim 25). Regarding limitation L3, we find Appellant’s description in the “BACKGROUND OF THE INVENTION” section of a database (storage) which identifies the addresses of web pages that meet the search criteria (US 6,643,641, col. 2, ll. 53-54), evidences the disputed L3 limitation would have been known to an artisan at the time of Appellant’s invention, when Appellant’s admitted prior art is combined with the teachings and suggestions of Takemoto and Geaghan, as proffered by the Examiner. (Final Rejection, 6-7). Moreover, we additionally find Takemoto discloses storage of thumbnails and addresses in Figures 4 and 17, and Figure 5 of Geaghan discloses storing snapshots and location information in an index. Dependent Claims 54, 56, 58, 61, and 63 Illustrative dependent claim 54 recites: 54. The system of claim 25, wherein the memory is further configured to cross reference the reduced image file with the at least one network address. Claims 56, 58, and 61 recite commensurate limitations. The Examiner relies on column 16, lines 45 to 49 of Takemoto to support the rejection of claim 54. (Final Rejection, 9). The Examiner relies on column 16, lines 10-34 (Takemoto) to support the rejection of claims 56, See also MPEP § 2111.05. Appeal 2013-007323 Application 11/513,423 9 58, and 61. (Final Rejection, 10). Referring to Takemoto (col. 16), Appellant contends that “determining whether a data file is associated with a keyword [(col. 16, ll. 46-47)] is not the same as ‘cross referencing [an] image file with [a] network address, as claimed.” (App. Br. 22). We agree with Appellant that the cited sections of Takemoto in column 16 do not teach or fairly suggest the claimed “cross referenc[ing] [of] the reduced image file with the at least one network address,” within the meaning of claim 54, and the commensurate limitations of claims 56, 58, and 61. Therefore, we reverse the § 103 rejections of claims 54, 56, 58, and 61 (first-stated rejection), and associated dependent claim 63 (second-stated rejection) which depends from reversed claim 54. REMAINING DEPENDENT CLAIMS Appellant advances no separate arguments for the remaining dependent claims. (App. Br. 18). Therefore, these remaining dependent claims fall with the base claim (25, 30, 31, 50, or 60) from which they depend. Appeal 2013-007323 Application 11/513,423 10 DECISION We affirm the Examiner’s rejection of claims 25-31 and 47-53, 55, 57, 59, 60, and 62 under § 103. We reverse the Examiner’s rejections of claims 54, 56, 58, 61, and 63 under § 103. No time period for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). ORDER AFFIRMED-IN-PART llw Copy with citationCopy as parenthetical citation