Ex Parte Kendall et al

Board of Patent Appeals and Interferences

Jul 31, 2012

10510057 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SCOTT ALLAN KENDALL and
WANDA GREEN THOMPSON
____________________

Appeal 2010-003765
Application 10/510,057
Technology Center 2400
____________________

Before JAMESON LEE, JOSEPH F. RUGGIERO, and JUSTIN T. ARBES,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-21, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).1
We reverse and enter a new ground of rejection.
The claims are directed to a method, system, and computer program
for saving user settings for a particular web page and automatically applying
those settings the next time the user accesses the web page. Claim 1 is
exemplary:
1. A method of communicating electronic information
using a browser, the method comprising the steps of:
a. invoking the browser in a display device;
b. accessing a web page in response to a viewer
specifying a URL in the browser;
c. retrieving a viewer adjustable setting for the URL from
a memory;
d. applying the retrieved viewer adjustable setting to the
web page;
e. automatically saving a current state of the viewer
adjustable setting in the memory in response to a signal for
exiting the web page; and
f. automatically applying the current state of the viewer
adjustable setting to the web page a next time the web page is
accessed.

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed April 13, 2009) and Reply Brief (“Reply Br.,” filed November 23,
2009), and the Examiner’s Answer (“Ans.,” mailed September 28, 2009) and
Final Rejection (“Final Rej.,” mailed November 13, 2008).
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REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Duperrouzel (US 7,149,982 B1, filed December 30, 1999;
issued December 12, 2006). Ans. 3-12.

ISSUE
Appellants argue on pages 4-7 of the Appeal Brief and pages 2-5 of
the Reply Brief that the Examiner’s rejection of independent claims 1, 5, 11,
and 16 is in error. These arguments present us with the following issue: did
the Examiner correctly determine that Duperrouzel would have taught or
suggested “automatically saving a current state of the viewer adjustable
setting in the memory in response to a signal for exiting the web page,” as
recited in claim 1 and similarly recited in claims 5, 11, and 16?

ANALYSIS
We select claim 1 as representative of claims 1-21, as Appellants
argue independent claims 1, 5, 11, and 16 together and do not present
arguments for any of the dependent claims. See App. Br. 4-7; 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellants do not dispute that Duperrouzel teaches saving a current
state of a viewer adjustable setting in memory, as required by claim 1, but
argue that the reference does not do so “in response to a signal for exiting
the web page.” App. Br. 4-7; Reply Br. 2-5. Appellants assert that the user
in Duperrouzel instead must click a “Take a Snapshot” menu option to save
the current web page settings (e.g., panel size, scroll bar positions) during
operation of the web browser program. See App. Br. 5; Duperrouzel, col.
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11, ll. 44-54, Fig. 9. The Examiner, however, found that it would have been
obvious to modify Duperrouzel to automatically save the current settings
when exiting a web page:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the teachings of
[Duperrouzel] to automatically save the settings of the web site
upon leaving the web site, for subsequent automatic recall of
the settings when the website is re-visited in the future. One
would have been motivated to do so to minimize human
intervention for a comfortable user experience, allowing the
settings configured prior to exiting the web page to be
automatically saved. Various autosave mechanisms have been
used in a plurality of systems for a comfortable user experience
and fast-recovery of data.
The Examiner asserts that broadly providing an
automatic means to replace a manual activity which
accomplishes the same results is not sufficient to distinguish
over the prior art.
Ans. 12-13 (citing In re Venner, 262 F.2d 91, 95 (CCPA 1958)).
Appellants argue that Duperrouzel does not suggest the desirability of
such a modification because the user must affirmatively click a menu option
to save the current settings. App. Br. 5. In addition, there are “significant
advantages” to automatically saving settings on exit, such as “reduc[ing]
processor overhead by reducing the number of save operations it must
perform” and “allow[ing] users to focus on navigating the web page without
having to remember to save their preferred settings for the web page before
exiting the same,” which Duperrouzel does not disclose according to
Appellants. App. Br. 5-6. Finally, Appellants contend that the distinction
between Duperrouzel and claim 1 is not simply a matter of manual versus
automatic operation as the Examiner suggests, but rather “a timing issue,
namely the issue of when user settings for a web page should be saved.”
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App. Br. 7.
Based on the record before us, we agree with Appellants.
Duperrouzel teaches saving a current state of a viewer adjustable setting in
memory, but requires an affirmative step by the user (clicking the “Take a
Snapshot” menu option) to do so. See Duperrouzel, col. 11, ll. 49-54. As
Appellants point out, Duperrouzel is silent as to when that step occurs and
therefore would not have reasonably suggested saving settings at the time of
exiting a web page. See App. Br. 7. Further, in Duperrouzel, settings may
never be saved because it is up to the user to click the “Take a Snapshot”
menu option. Saving settings “in response to a signal for exiting the web
page,” by contrast, avoids the need for the user to click a menu option and
ensures that settings are automatically saved, regardless of whether the user
took the affirmative step to save them. Thus, even if the Examiner is correct
that “[v]arious auto-save mechanisms” were known in the prior art to
minimize human intervention and allow for a better user experience (Ans.
13), due to its particular features Duperrouzel alone would not have
suggested to a person of ordinary skill in the art saving a viewer adjustable
setting “in response to a signal for exiting the web page.” Accordingly, we
do not sustain the rejection of claims 1-21.
We find, however, that automatically saving settings on exit was a
well-known feature in the prior art and within the knowledge of an
ordinarily skilled artisan at the time of Appellants’ invention, particularly in
the context of computer software programs. For example, High (US
5,873,109), issued February 16, 1999, describes a method “for displaying the
text of an electronic document on a screen for reading by a user in real
time.” High, col. 1, ll. 7-10. The user is able to alter the “legibility
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characteristics of the displayed words,” such as the “font type, size, color,
display speed and other characteristics,” and is able to set a preference to
“save settings on exit.” High, col. 6, ll. 58-63; col. 14, ll. 13-14. Similarly,
Agrusa (US 7,003,558 B2), filed October 15, 1999 and issued February 21,
2006, is directed to a process control software package that allows the user
to change various settings and set an option “to save the then current setting
on exit by checking the box Save settings on exit 772” shown in Figure 18.
Agrusa, col. 1, ll. 16-19; col. 14, l. 64-col. 16, l. 3; Figs. 17-18.
Based on the teachings of High and Agrusa, changing the saving
mechanism in Duperrouzel to save the current settings on exiting a web page
(e.g., on exiting the software program) rather than when the user clicks the
“Take a Snapshot” menu option would have been a simple substitution
within the skill of an ordinarily skilled artisan and would have yielded the
predictable result of the user’s settings being automatically saved. We also
see no reason why automatically saving the user’s settings on exit would
have been uniquely challenging or otherwise beyond the level of ordinarily
skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (an improved product in the art is obvious if that “product
[is] not [one] of innovation but of ordinary skill and common sense”). A
person of ordinary skill in the art would have had reason to combine
Duperrouzel with High and Agrusa, for instance, to allow settings to be
changed in real time and saved for the next time the user accesses the web
page in the browser. See, e.g., High, col. 4, ll. 39-63.
We also note, as the Examiner did, that broadly providing an
automatic way to replace a manual activity, which accomplished the same
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result, is not sufficient to distinguish over the prior art. See Ans. 13; In re
Venner, 262 F.2d 91, 95 (CCPA 1958). Thus, to the extent Appellants’
alleged distinction over Duperrouzel is the automatic (rather than manual)
saving of settings, the distinction is not patentable. As to the alleged timing
of the saved settings (on exiting a web page rather than after receiving input
from the user), we do not find it to be a nonobvious distinction either, as the
combination of Duperrouzel, High, and Agrusa teaches the claimed timing
for the reasons explained above.
Given the Examiner’s analysis of the remaining elements of the
claims under 35 U.S.C. § 103(a) (Ans. 3-12) and our analysis above, claims
1-21 are unpatentable under 35 U.S.C. § 103(a) over the combination of
Duperrouzel, High, and Agrusa. We designate this as a new ground of
rejection.

CONCLUSION
Appellants have persuaded us of error in the Examiner’s decision to
reject claims 1-21 under 35 U.S.C. § 103(a). We enter a new ground of
rejection for claims 1-21.2

2 We have decided the appeal before us. However, should there be further
prosecution of claims 16-21, which recite a “computer program embodied on
a computer readable medium” and comprising various “code segment[s],”
the Examiner’s attention is directed to 35 U.S.C. § 101 and U.S. Patent &
Trademark Office, Interim Guidance for Determining Subject Matter
Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg.
43,922 (July 27, 2010); David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010);
and U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009,
Footnote continued on next page.
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DECISION
For the above reasons, the rejection of claims 1-21 under 35 U.S.C.
§ 103(a) is reversed. We newly reject claims 1-21 under 35 U.S.C. § 103(a)
as being unpatentable over Duperrouzel in view of High and Agrusa.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 CFR § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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).

REVERSED
37 C.F.R. § 41.50(b)
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available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf.