Ex Parte Page et al

Board of Patent Appeals and Interferences

Jan 9, 2012

10095413 (B.P.A.I. Jan. 9, 2012)

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.
10/095,413 03/12/2002 David R. Page GB920010092US1 (207) 6015
46320 7590 01/09/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
CHOUDHURY, AZIZUL Q
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
01/09/2012 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 DAVID R. PAGE and BIRGIT SCHMIDTWESCHE
____________

Appeal 2009-006818
Application 10/095,413
Technology Center 2400
____________

Before JOSEPH L. DIXON, JOHN A. JEFFERY, and
DEBRA K. STEPHENS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-19. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Appeal 2009-006818
Application 10/095,413

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A. INVENTION
The invention at issue on appeal relates to a technique that is provided
for bookmarking web pages via computer program code downloaded from
the web site itself, rather than via a web browser. Preferably, the technique
is implemented via an icon within the web site, whereby clicking on the icon
allows a user to bookmark pages directly. (Spec. 17).

B. ILLUSTRATIVE CLAIM
Claim 10, which further illustrates the invention, follows.
10. A method of retrieving a web page, said web page
comprising an associated plurality of frames, content data and
context data, for use in a distributed data processing system,
said distributed data processing system comprising:
a server computer and a client computer, said web page
being stored on said server computer and transmitted over a
network to said client computer, said method comprising the
steps of:
associating a bookmark with said web page;
retrieving said bookmark;
in response to retrieving said bookmark, causing said
web page and said associated plurality of frames, said content
data and said context data to be displayed, wherein
said bookmark includes an address of the web page and,
separate from the address, information to retrieve the content
data and/or context data of the web page.

C. REFERENCES
The Examiner relies on the following references as evidence:
Andrew US 6,567,104 B1 May 20, 2003
Nakamura US 6,496,829 B1 Dec. 17, 2002
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Nielsen US 5,963,964 Oct. 5, 1999

D. REJECTIONS
Claims 1-3, 5-7, 10-12, 14-16, and 19 are rejected under 35 U.S.C.
102(b) as being anticipated by Nielsen.
Claims 8, 9, 17, and 18 are rejected under 35 U.S.C. 103(a) as being
unpatentable over by Nielsen in view of Andrew.
Claims 4 and 13 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nielsen in view of Nakamura.

PRINCIPLES OF LAW
Anticipation under §102
Appellants have the opportunity 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).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

Obviousness under §103
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
Appeal 2009-006818
Application 10/095,413

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550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which
constitutes the foundation of the right to obtain a patent . . .
unless more ingenuity and skill were required in making or
applying the said improvement than are possessed by an
ordinary mechanic acquainted with the business, there is an
absence of that degree of skill and ingenuity which constitute
the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v.
Greenwood, 52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited
with approval by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).

ANALYSIS
At the outset, we agree with Appellants’ frustration with respect to the
Examiner's delay in responding to Appellants’ arguments regarding the
anticipation rejection when the Examiner reopened prosecution to modify
only the obviousness rejection. Procedurally, we note that it is desirable
when the Examiner reopens prosecution to respond to all of Appellants'
pending arguments to further the prosecution. During this prosecution, we
note that the Examiner did not clearly express responses to Appellants'
pending arguments when the prosecution was reopened which could have
further advanced the prosecution.
We agree with the Examiner's anticipation rejection and adopt the
Examiner's findings as our own. The Examiner explains that the visual
bookmark is equivalent to the claimed bookmark. The Examiner states that:
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The Nielsen art teaches an Internet bookmark containing both
an image (equivalent to the claimed information) and a URL
(equivalent to the claimed address) for retrieving an associated
web page (see column 4, lines 44-49 and lines 59-63, Nielsen).
It is under this rationale that the examiner believes the claim
limitation lacks novelty in light of the Nielson art.

(Ans. 9). We agree with the Examiner that Nielsen teaches the claimed
method steps. With respect to the wherein clause concerning the content of
bookmark, the image is clearly separate from the address of the bookmark.
Moreover, the name given to the data/“information,” is not entitled to
weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883,
1887-90 (BPAI 2008) (precedential) (discussing non-functional descriptive
material). Similarly, although we agree with the Examiner that Nielsen
describes a bookmark “includes an address of the web page and, separate
from the address, information to retrieve the content data and/or context data
of the web page,” what the information is called is not entitled to patentable
weight, as the “information” of representative claim 10 affects neither the
functionality of the recited methods nor the structure or function of any
underlying apparatus implied by the method.
At most, the only functional or structural change related to the
“information” may be in claims 1and 19, but Appellants elected to group all
claims as standing or falling together and did not argue the "means"
limitations separately. Appellants do not provide any separate arguments
traversing the Examiner’s anticipation rejection of independent claims 1 and
19 over Nielsen. Therefore, we consider these arguments waived. See Hyatt
v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the appellant fails to
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contest a ground of rejection to the Board, section 1.192(c)(7) [(now section
41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of
that ground of rejection. . . . [T]he Board may treat any argument with
respect to that ground of rejection as waived.”).
With respect to Appellants’ arguments, Appellants contend that the
Examiner has not established "information" found in the teachings of
Nielsen is used to retrieve the content and/or context data of the webpage.
(Reply Br. 2). As discussed above, we note that Appellants’ claims do not
expressly limit how the address and information are used by the system or
method steps to retrieve the webpage. Therefore, Appellants' arguments do
not distinguish over the combination of the visual image and the address as
taught by Nielsen. Therefore, we sustain the rejection of independent claim
10, independent claims 1 and 19 grouped therewith and their respective
dependent claims 2, 3, 5-7, 11, 12, and 14-16.

Obviousness

With respect to claims 4, 8-9, 13, 17, and 18, Appellants rely
upon the arguments advanced with respect to independent claim 10
based upon anticipation. Since we found Appellants’ argument
unpersuasive of error in the Examiner's showing of anticipation, we
similarly sustain the rejection of representative claims 4 and 8.

CONCLUSION
For the aforementioned reasons, Appellants have not shown that the
Examiner erred in the anticipation rejection of independent claim 10.
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VII. ORDER
We affirm the anticipation rejection of claims 1-3, 5-7, 10-12, 14-16,
and 19; and we affirm the obviousness rejections of claims 4, 8-9, 13, 17,
and 18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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