Ex Parte Snyder

Patent Trial and Appeal Board

Jul 12, 2013

11513423 (P.T.A.B. Jul. 12, 2013)

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

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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
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[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.
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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).

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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).
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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)).

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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).
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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.
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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.

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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

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