Ex Parte Bates et al

Board of Patent Appeals and Interferences

Oct 5, 2009

11121225 (B.P.A.I. Oct. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARY LEE BATES and PAUL REUBEN DAY

_____________

Appeal 2009-000346
Application 11/121,225
Technology Center 2600
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Decided: October 5, 2009
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-000346
Application 11/121,225

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final
rejection of claims 1-10, 13, 20, 21, and 25-31. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ claimed invention is directed to web based document printing
(Spec. 2:4-5). A print index is obtained and user selected uniform resource
locators (URLs) are identified in the print index (Spec. 2:5-7). The URLs in the
print index are sequentially printed (Spec. 2:7).
Claim 1, reproduced below, is representative of the subject matter on appeal:
1. A method for implementing web based document printing comprising the
steps of:
obtaining a print index; said print index explicitly specified by a web based
document originator; and
identifying uniform resource locators (URLs) in said print index; and
printing said URLs in said print index.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Nielsen US 5,991,514 Nov. 23, 1999

The following rejections are before us for review:
The Examiner rejected claims 1-10, 13, 20, 21, and 25-31 under 35 U.S.C.
§ 102(e) as being anticipated by Nielsen.
Initially, we note that although Appellants nominally argue claims 2, 7, 13,
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21, 25, and 31, separately (Br. 20-24, 26-27), Appellants essentially reiterate the
claim limitations and do not provide any substantive analysis or explanation as to
how or why these limitations are not anticipated by Nielsen. Simply pointing out
what a claim requires with no attempt to point out how or why the claims
patentably distinguish over the prior art does not amount to a separate argument for
patentability. 37 C.F.R. § 41.37(c)(1)(vii) (2004). See also In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987). Thus, we only address the specific arguments
presented, and we do not address Appellants’ mere recitation of claim limitations
which are without any corresponding argument.1
Claims 1 and 27 were separately argued. We address these claims
separately. Claims 2-10, 13, 20, 21, and 25-26, and 28-31 stand or fall with claims
1 and 27. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).

ANTICIPATION
ISSUE
With respect to claim 1, Appellants argue that the print index as taught and
claimed is explicitly specified by a web based document originator, and is used for
identifying uniform resource locators (URLs) in the print index (App. Br. 18).
Appellants argue that the printing element of Nielsen is provided in a given page to
be printed, and either identifies one next page to print after the given page or that
the given page is the last page to be printed (App. Br. 18). Appellants assert that

1 Only arguments made by Appellants have been considered in this decision.
Arguments which Appellants could have made but chose not to make in the Brief
have not been considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
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the printing element of Nielsen can not be specified by a web based document
originator for use in identifying uniform resource locators (URLs) in said print
index, as recited in independent claim 1 (App. Br. 18). Appellants further argue
that the printing element of Nielsen includes a single URL at most, and cannot be
used for identifying uniform resource locators (URLs) as required by the print
index used in the method for implementing web based document printing as taught
by Appellants and recited in independent claim 1 (App. Br. 18).
With respect to claim 27, Appellants further argue that in Nielsen to enable a
user to deselect and rearrange URLs requires changing each print element in each
page to print (App. Br. 26).
Regarding claim 1, the Examiner responds that Nielsen teaches that the path
determines where the hypertext pages are stored and
obtained under the above directory in the server (col. 3, ll. 17-18) (Ans. 8). The
Examiner further finds that the originator is defined here as the author (col. 3 ll.
12-13) who sets up the hypertext pages in the server (Ans. 8).
The Examiner further finds that the author or in this case originator adds
META tags to the HEAD of each page and therefore indexes the pages (col. 3, ll.
12-14) (Ans. 8). The Examiner finds that each META tag content would be any
URL, and thus, every META tag added to the head of each page would represent a
URL (col. 3, ll. 15-20) (Ans. 8). Accordingly, the Examiner concludes that the
plurality of META tags would represent the plurality of URLS and therefore the
whole index of URLs (Ans. 8).
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Regarding claim 27, the Examiner finds that Nielsen teaches in Figures 5A
through 5D “rearranging or deselecting” pages to be printed (col. 5 lines 30-44)
(Ans. 9).
Thus, the pivotal issues are whether Appellants have shown that the
Examiner erred in finding that Nielsen teaches a print index specified by a Web
based originator identifying uniform resource locators as required by claim 1 and
allowing a user to “deselect and rearrange” URLs as recited in claim 27.

FINDINGS OF FACT
The following findings of fact (FF) supported by a preponderance of the
evidence:
1. Nielsen teaches that the author of a set of hypertext pages for distribution
over the web adds a META tag to the HEAD section of each page indicating
what web page is the next web page to print in the hypertext of this web
page (col. 3, ll. 11-14).
2. Nielsen teaches that an example of a META tag is wherein the value of
CONTENT attribute is a Uniform Resource Locator (URL) that specifies the
next page to print (col. 3, ll. 14-22).
3. Nielsen further teaches that the CONTENT can be “any” valid URL
including a pointer to information in another directory or on another server
(col. 3, ll. 26). Furthermore, Nielsen teaches that relative URLs are
permissible (col. 3, ll. 29-33).
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4. Nielsen teaches in Figures 5A through 5D allowing the user the options of
rearranging the sequence of hyperspacial pages to be printed or deselecting
pages to be printed by omitting pages in a sequence of pages to be printed
(col. 5 lines 30-44).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. Inc., v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
At the outset, we note that we agree with the Examiner’s findings of fact and
line of reasoning and we adopt them as our own. We add the following primarily
for emphasis.
Nielsen teaches that the author of a set of hypertext pages for distribution
over the web adds a META tag to the HEAD section of each page indicating what
web page is the next web page to print in the hypertext of this web page (FF 1).
Nielsen teaches that an example of a META tag is wherein the
value of CONTENT attribute is a Uniform Resource Locator (URL) that specifies
the next page to print (FF 2). Nielsen further teaches that the CONTENT can be
“any” valid URL including a pointer to information in another directory or on
another server (FF 3). Furthermore, Nielsen teaches that relative URLs are
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permissible (FF 3). Accordingly, Nielsen teaches that the author (i.e., originator)
by adding META tags to web pages provides the directory to URL documents to
be printed. Furthermore, Nielsen clearly teaches that there could be a plurality of
URLs printed because “any” URL can be printed, even ones in other servers linked
with a pointer.
With respect to claim 27, we also agree with the Examiner (Ans. 9) that
Nielsen teaches in Figures 5A through 5D allowing the user the options of
rearranging the sequence of hyperspacial pages to be printed or deselecting pages
by omitting pages in a sequence of pages to be printed (i.e., “rearranging or
deselecting” pages to be printed) (FF 4).
For the foregoing reasons, we sustain the Examiner’s rejection of claims 1
and 27, and claims 2-10, 13, 20, 21, and 25-26, and 28-31.

CONCLUSION
Under 35 U.S.C. § 102, Appellants have not shown that the Examiner erred
in finding that Nielsen teaches a print index specified by a Web based originator
identifying uniform resource locators as required by claim 1 and allowing a user to
“deselect and rearrange” URLs as recited in claim 27, and claims 2-10, 13, 20, 21,
and 25-26, and 28-31 which fall with claims 1 and 27.

ORDER
The decision of the Examiner to reject claims 1-10, 13, 20, 21, and
25-31 is affirmed.
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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

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