Ex Parte Nielsen et al

Patent Trial and Appeal Board

Oct 29, 2014

10827056 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JIM R. NIELSEN and MIKE ALEXANDER
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Appeal 2012-0032531
Application 10/827,0562
Technology Center 2400
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Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–33 and 52–54. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 23, 2011) and Reply Brief (“Reply Br.,” filed December 7, 2011), and
the Examiner’s Answer (“Ans.,” mailed October 7, 2011).
2 The real party in interest, identified by Appellants, is Hewlett-Packard
Development Company, LP. App. Br. 3.
Appeal 2012-003253
Application 10/827,056

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CLAIMED INVENTION
Appellants’ claimed invention “relates generally to computer software
and, more particularly, to electronic mail and embedded universal resource
locator links” (Spec. 1, ll. 7–10).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for directing a recipient of an e-mail to a
web site, the method comprising:
providing a redirect server executing a redirect
application based on a servlet architecture;
creating an e-mail with an embedded link, wherein the
embedded link comprises a link to the redirect server and link
attributes that allow the redirect server to determine a current
web site associated with the embedded link;
sending the e-mail to a recipient;
receiving the e-mail at the recipient’s data processing
system;
responsive to the recipient selecting the embedded link,
sending link attributes from the recipient’s data processing
system to the redirect server;
receiving the link attributes at the redirect server;
determining, at the redirect server, the universal resource
locator for the current web site associated with the embedded
link;
sending the universal resource locator from the redirect
server to the recipient; receiving the universal resource locator
at the recipient’s data processing system; and
retrieving, at the recipient’s data processing system, the
contents from the current web site utilizing the universal
resource locator received from the redirect server, wherein
changes to the location of the web site made after the e-mail has
been sent to the recipient do not effect [sic] the ability of the
recipient to access the web site.

Appeal 2012-003253
Application 10/827,056

3
REJECTIONS
Claims 1–15, 17–20, 22–25, 27–33, and 52–54 are rejected under
35 U.S.C. § 103(a) as unpatentable over Reznick (US 2003/0014539 A1,
pub. Jan. 16, 2003) and Mandal (US 2004/0024854 A1, pub. Feb. 5, 2004).
Claims 16, 21, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Reznick, Mandal, and Official Notice.

ANALYSIS
Claims 1–15, 17–20, 22–25, 27–33, and 52–54
Appellants argue claims 1–15, 17–20, 22–25, 27–33, and 52–54 as a
group (App. Br. 12–15). We select claim 1 as representative. The
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
Addressing the rejection of claim 1 in the Appeal Brief, Appellants
quote the claim language and paragraph 53 of Reznick, and argue that none
of paragraphs 53 through 62 of Reznick teaches or suggests the quoted
limitations of claim 1; Appellants also assert that the quoted limitations are
not disclosed or suggested by Mandal (App. Br. 13–14).
As the Examiner observes “the limitations alleged to be missing from
Reznick are nearly the entirety of claim 1, and Appellants have failed to
explain how the claim limitations differ from the disclosure of
Reznick . . . .” (Ans. 14), and, thus, failed to present a separate argument for
patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii)
as requiring “more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
Appeal 2012-003253
Application 10/827,056

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elements were not found in the prior art”). The Examiner also explains that
Mandal was relied on only for its teaching of “using the well[-]known
‘Struts’ framework to construct applications, and was not relied upon to
teach the argued features” (Ans. 15).
Appellants specifically argues, for the first time, in the Reply Brief,
that the Examiner has failed to establish a prima facie case of obviousness
with respect to claim 1 because neither Reznick nor Mandal discloses or
suggests that changes to the location of the website made after the e-mail has
been sent to the recipient do not affect the recipient’s ability to access the
website, i.e., “wherein changes to the location of the web site made after the
e-mail has been sent to the recipient do not effect [sic] the ability of the
recipient to access the web site,” as recited in claim 1 (Reply Br. 2–4).
The Rules do not require the Board to take up a belated argument first
set forth in the Reply Brief, absent a showing of good cause. See, e.g.,
Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative). Here,
however, the Examiner addressed this aspect of the claim at page 15 of the
Answer.
Reznick discloses that an XID code embedded, e.g., in an email, is
received by a redirection server (element 106 in Figure 1), and used by the
redirection server to identify the website to which the user should be
redirected, i.e., the target URL associated with the XID code, as stored in the
XID system database at the redirection server (see, e.g., Reznick ¶¶ 25–27
and 53). We agree with the Examiner that the email, as disclosed in
Reznick, contains only the XID code, which is later correlated to the website
at the redirection server. Therefore, changes to the location of the website
that occur after the email has been sent may be accounted for at the
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Application 10/827,056

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redirection server; as such, the changes do not affect the ability of the
recipient to access the website, which meets the claim language (Ans. 15).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejection
of claims 2–15, 17–20, 22–25, 27–33, and 52–54, which stand or fall with
claim 1.
Claims 16, 21, and 26
Claims 16, 21, and 26 depend from independent claims 13, 18, and
23, respectively. Appellants do not present any argument for the separate
patentability of dependent claims 16, 21, and 26 except to assert that “these
dependent claims are also allowable over the cited reference[s]” (App.
Br. 15). Therefore, we sustain the Examiner’s rejection of claims 16, 21,
and 26 under 35 U.S.C. § 103(a) for the same reasons as set forth above with
respect to the independent claims.

DECISION
The Examiner’s rejections of claims 1–33 and 52–54 under 35 U.S.C.
§ 103(a) are affirmed.
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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