Ex Parte Kirkland et al

Board of Patent Appeals and Interferences

Sep 20, 2010

10660013 (B.P.A.I. Sep. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DUSTIN C. KIRKLAND and LILIANA OROZCO
____________________

Appeal 2009-002027
Application 10/660,0131
Technology Center 2100
____________________

Before JOHN A. JEFFERY, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed September 11, 2003. The real party in interest is
International Business Machines Corporation.
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 2009-002027
Application 10/660,013

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 15 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 affirm.

Appellants’ invention relates to a method of searching web pages
within a website (Spec. 5, top). In the words of Appellants:
[A] search may be as follows:
http://www.abc.com[tool expense]. The following
[uniform resource locator] in a table of contents
would be considered a match: https:\\www-
1.abc.com\tools\view\expenses\index.shtml. As
can be seen, the term[s] tool and expense are found
within this [uniform resource identifier (URI)]. As
described above, these matches are with respect to
the URIs and not to content in the Web page itself.
(Spec. 14, top to middle).

The following claim illustrates the claims on appeal:
Claim 1:
1. A method in a data processing system for
searching for Web pages within a Web site, the
method comprising:

receiving a search statement as a result of a
user input, wherein the search statement includes a
universal resource identifier and a regular
expression;

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Application 10/660,013

retrieving universal resource identifiers
associated with the universal resource identifier in
the request to form retrieved universal resource
identifiers;

parsing the retrieved universal resource
identifiers for the regular expression to form
search results; and

returning the search results, wherein the
search results include a list of universal resource
identifiers associated with the Web pages within
the Web site.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schneider US 7,136,932 B1 Nov. 14, 2006
(filed Mar. 21, 2000)

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 15 stand rejected under 35 U.S.C. § 102(e) for being
anticipated by Schneider.
R23: Claim 14 stands rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.

3 Claim 14 was rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter (Non-Final Rej. mailed March 9, 2007, pp. 2 to 4).
The Examiner maintained the rejection in the Final Office Action mailed
August 10, 2007 (p. 2). Although the Examiner’s Answer makes no mention
of the rejection of claim 14 under 35 U.S.C. § 101 (see p. 3, bottom),
Appellants concede that the claim is directed to non-statutory subject matter
(App. Br. 9, middle). Appellants’ acknowledgement is effective waiver of
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R34: Claims 8 to 13 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.

We will review the rejections in the order argued, and as grouped in
the Briefs. We have only considered those arguments that Appellants
actually raised in the Briefs. Arguments that Appellants could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues involve whether Appellants have shown that the Examiner
erred in rejecting the claims under 35 U.S.C. §§ 101 and 102(e). The issue
under 35 U.S.C. § 102(e) specifically turns on whether the Schneider
reference teaches Appellants’ claimed steps of “receiving a search statement
… [that] … includes a universal resource identifier and a regular expression”
(claim 1) and “parsing the retrieved universal resource identifiers for the
regular expression” (claim 1). The issue under 35 U.S.C. § 101 turns on
whether Appellants disclose structures corresponding to the “means for”
language recited in claim 8.

their right to appeal. Notice of Appeal is an appeal of all of the claims
pending in the patent application. (See 37 C.F.R. § 41.31(c).) Accordingly,
we affirm the Examiner’s rejection of claim 14 under 35 U.S.C. § 101.
4 The Examiner raised a new ground of rejection for claims 8 to 13 (Ans. 4).
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a method, apparatus, and computer program
for searching web pages within a website (Spec. 1, top.). Appellants’
method includes parsing universal resource identifiers for a regular
expression (claim 1). Appellants’ disclosure states that “in [a] search, the
[regular] expression is used as a search term to determine whether this term
is present” within a series of universal resource identifiers in a table of
contents (Spec. 14). Regular expressions are defined as “matches … with
respect to the [universal resource identifiers] and not to content in the Web
page itself.” (Id.).
Schneider
2. The Schneider reference teaches searching for web pages within a
website. (See Fig. 13 and col. 30, l. 25.) Schneider’s method involves
searching for character strings in the universal resource identifiers associated
with the web pages (id.). Schneider teaches retrieving “[Uniform Resource
Identifier or URI] generations” based on a user’s input (col. 17, ll. 35 to 44;
col. 30, ll. 22 to 26 and 37 to 45). Schneider further teaches that regular
expressions (e.g., “company” as shown in Fig. 13) are matches with respect
to the universal resource identifiers. (See Fig. 13.)

PRINCIPLE OF LAW
Appellants have the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).
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ANALYSIS
Arguments with respect to the rejection
of claims 1 to 15
under 35 U.S.C. § 102(e) [R1]

The Examiner rejected the noted claims as being anticipated by the
Schneider reference, pages 5 to 10.
Appellants argue:
“Nowhere does [Schneider’s column 18] teach or
even suggest the feature of ‘receiving a search
statement as a result of a user input, wherein the
search statement includes a universal resource
identifier and a regular expression.’ Rather
Schneider teaches that the input is either a domain
name or IP address or search request, but not
both.”
(App. Br. 13, middle).

The Examiner replies that the “receiving” step is taught in Figure 13
and at column 30, line 25 of Schneider.
We find unconvincing Appellants’ argument that the claimed step of
“receiving a search statement … [that] … includes a universal resource
identifier and a regular expression” is not met. We disagree because
Appellants’ argument incorrectly posits that the claimed “search statement”
must be read on Schneider’s “input 210 [that] may include either an IP
address or a domain name” (Schneider, col. 18, ll. 46-47; App. Br. 12,
middle). We find that Appellants’ claimed “search statement” reads on
“URI generations” in Schneider. The cited portion of the patent shows that
when a user of Schneider’s system inputs a search term (e.g., “company,” as
cited by the Examiner for the claimed “regular expression”), “URI
generations” that include the term “company” are output (Appellants’
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Application 10/660,013

claimed “receiving” step) to the user (FF#2). The “URI generations” created
for the user are the same as Appellants’ claimed “search statement.” Thus,
Appellants have not demonstrated error in the rejection R1 in this regard.
Next, Appellants argue that none of the cited portions of Schneider
teach the “parsing … for the regular expression,” as required by claim 1
(App. Br. 16, middle). The Examiner finds that the “parsing” step of claim 1
is taught in column 30 at lines 30 to 42 of Schneider (Ans. 6, top).
We disagree with Appellants for the following reasons. Appellants do
not limit what “parsing” means, includes, or represents (Spec. 1 to 19).
Reading the claim language broadly but reasonably, see In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989), we interpret the claimed “parsing” step as reading
on a search for character strings in the URI’s of web pages. (See Spec. 5,
top to middle.) Since Schneider teaches searching (Appellants’ claimed
“parsing”) of universal resource identifiers containing search terms entered
as user input (Appellants’ claimed “regular expressions”), we find
Appellants’ “parsing” step is met by the reference.
Appellants contend that since Schneider is directed to domain name
aliasing, the reference necessarily fails to teach the claimed “retrieving” and
“parsing” steps of claim 1 (App. Br. 16, middle to bottom).
We find unconvincing Appellants’ argument. Whether Schneider
solves the same problem in the document search-and-retrieval arts as the
claimed invention is not the issue. Rather, the test for anticipation is
whether all of the claim limitations are met by the reference. (See Perricone
v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (holding that
in rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that
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Application 10/660,013

discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation.”
For all of the above-stated reasons, Schneider fully anticipates
Appellants’ claim 1. Accordingly, we find Appellants have not
demonstrated error in the rejection R1.
In accordance with 37 C.F.R. § 41.37(c)(1)(vii), Appellants made
separate arguments concerning claim 15 (App. Br. 18, middle). Appellants
argue that Schneider fails to teach “sending a request … to retrieve a table of
contents [that] comprises universal resource identifiers associated with the
universal resource identifier in the received request,” as required by claim 15
(App. Br. 18, middle). However, upon review of Schneider’s teachings, we
adopt and endorse the Examiner’s findings regarding claim 15. We refer
Appellants to the “Response to Arguments” section of the Answer for
further details (Ans. 13, bottom to 14, middle).

Arguments with respect to the rejection
of claims 8 to 13
under 35 U.S.C. § 101 [R3]

The Examiner added a new ground of rejection under 35 U.S.C. § 101
of claims 8 to 13. The Examiner rejected the claims as software per se.
Appellants respond for the first time to the new ground in the Reply Brief
(Rep. Br. 1 to 3), arguing that at least one hardware structure corresponds to
each means recited in claim 8 (id. at 2, top to middle). We agree with
Appellants’ argument that sufficient structure corresponding to the “means
for” claim is disclosed in the Specification. Accordingly, we reverse the
rejection R2 of claims 8 to 13.
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In contradistinction, we note that we affirm the rejection R2 of claim
14 because Appellants failed to argue for the claim. (See footnote supra.)

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in the anticipation rejection R1 of claims 1 to 15.
Since Appellants opted not to argue the 35 U.S.C. § 101 rejection R2 of
claim 14, we conclude that Appellants have not demonstrated Examiner
error. Appellants have demonstrated error in the 35 U.S.C. § 101 rejection
R3 of claims 8 to 13.

DECISION
We affirm the Examiner’s anticipation rejection R1 of claims 1 to 15.
We affirm the 35 U.S.C. § 101 rejection R2 of claim 14. We reverse the
Examiner’s 35 U.S.C. § 101 rejection R3 of claims 8 to 13.

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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