10392762 (B.P.A.I. Nov. 22, 2010)

Ex Parte Keohane et al

Board of Patent Appeals and InterferencesNov 22, 2010

10392762 (B.P.A.I. Nov. 22, 2010)

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. 10/392,762 03/19/2003 Susann Marie Keohane AUS920030033US1 8822 7590 11/22/2010 Mark McBurney International Business Machines Corporation Intellectual Property Law Department 11400 Burnet Road, Internal Zip 4054 Austin, TX 78758 EXAMINER PITARO, RYAN F ART UNIT PAPER NUMBER 2174 MAIL DATE DELIVERY MODE 11/22/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte SUSANN MARIE KEOHANE, GERALD FRANCIS MCBREARTY, SHAWN PATRICK MULLEN, JESSICA KELLEY MURILLO, and JOHNNY MENG-HAN SHIEH ____________________ Appeal 2009-004644 Application 10/392,7621 Technology Center 2100 ____________________ Before JAY P. LUCAS, ST. JOHN COURTENAY, III, and CAROLYN D. THOMAS, Administrative Patent Judges. LUCAS, Administrative Patent Judge. DECISION ON APPEAL2 1 Application filed March 19, 2003. The real party in interest is IBM Corp. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-004644 Application 10/392,762 STATEMENT OF THE CASE Appellants appeal from a final rejection of claims 1 to 31 under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). We reverse the rejection. Appellants’ invention relates to a system for bookmarking hyperlinks within received Web documents (claim 1). In the words of Appellants: [A Web] browser is provided with an implementation to maintain a list of the [Universal Resource Locators] of all bookmarked pages. Further, the browser is provided with an implementation to compare the URL of each hyperlink in a received and displayed Web page to the list of URLs of all bookmarked Web pages. (Spec. 12, ll. 17-23). The following illustrates the claims on appeal: Claim 1: 1. In a World Wide Web (Web) communication network with user access via a plurality of data processor controlled interactive receiving display stations for displaying received hypertext documents, transmitted from sources on the Web, including at least one display page containing text, images and a plurality of embedded hyperlinks, each hyperlink being user selectable to access and display a respective linked hypertext document, a system for tracking bookmarking in received Web documents comprising: 2 Appeal 2009-004644 Application 10/392,762 means associated with one of said receiving display stations for bookmarking of selected received Web documents to thereby store, as bookmarks, at said receiving display station, direct links to the sources of said Web documents; means associated with said one receiving display station for comparing said stored bookmarks to hyperlinks in each received Web document to determine if said hyperlinks have been bookmarked; and means, responsive to said means for comparing, for visually distinguishing each bookmarked hyperlink in said received displayed web document. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Gupta US 2004/0205501 A1 Oct. 14, 2004 (filed Nov. 29, 2001) REJECTION The Examiner rejects the claims as follows: Claims 1 to 31 stand rejected under 35 U.S.C. § 102(e) for being anticipated by Gupta. ISSUE The issue is whether Appellants have shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 102(e). The issue specifically turns on whether Gupta teaches Appellants’ claimed “means … for comparing 3 Appeal 2009-004644 Application 10/392,762 said stored bookmarks to hyperlinks in each received Web document to determine if said hyperlinks have been bookmarked.” (Claim 1). FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. Disclosure 1. Appellants have invented a system, method, and program for bookmarking the hyperlinks contained within pages accessed by Web browsers. (See claims 1, 10, 19, and 28.) Gupta 2. The Gupta reference teaches a method of bookmarking Web pages or Web links of pages visited (¶ [0043]). PRINCIPLE OF LAW Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). 4 Appeal 2009-004644 Application 10/392,762 ANALYSIS Arguments with respect to the rejection of claims 1 to 31 under 35 U.S.C. § 102(e) The Examiner has rejected the noted claims for being anticipated by Gupta, pages 3 to 6 of Examiner’s Answer. Appellants argue that the Gupta reference does not teach a “means … for comparing said stored bookmarks to hyperlinks in each received Web document to determine if said hyperlinks have been bookmarked.” (See App. Br. 8, middle). According to Appellants, what is claimed compares each hyperlink in a received Web page to a user’s already bookmarked pages, whereas Gupta merely compares the URL of each received Web page itself (id.). That is, the comparison made by Gupta is not of the hyperlinks within the Web page accessed (id.). We agree with Appellants. We find that Appellants have invented a system, method, and program for bookmarking the hyperlinks contained within pages accessed by Web browsers (FF#1). In contrast, we find that the Gupta reference teaches a method of bookmarking Web pages or Web links of pages visited (FF#2). 5 Appeal 2009-004644 Application 10/392,762 Figure 3 is reproduced below: Figure 3 is a diagrammatic illustration of a display screen showing a Web page with hyperlinks that are unmarked or marked dependent on whether their respective Web pages have been previously bookmarked. We note that Appellants’ Figure 3, shown above, is exemplary of the claimed subject matter. We cannot say that Gupta meets claim 1’s limitation since Gupta would have merely compared the “Address” element of Figure 3 to the saved hyperlinks contained in “Bookmarks 74,” and not to each of the hyperlinks 71, 72, and 73. Accordingly, we reverse. Claims 2 to 31 stand with claim 1. 6 Appeal 2009-004644 Application 10/392,762 CONCLUSION OF LAW Based on the findings of facts and analysis above, we conclude that Appellants have shown that the Examiner erred in rejecting claims 1 to 31. DECISION We reverse the Examiner’s rejection of claims 1 to 31. REVERSED peb MARK MCBURNEY INTERNATIONAL BUSINESS MACHINES CORPORATION INTELLECTUAL PROPERY LAW DEPARTMENT 11400 BURNET ROAD, INTERNAL ZIP 4054 AUSTIN, TX 78758 7