Ex Parte Santosuosso

Board of Patent Appeals and Interferences

Aug 14, 2012

10007713 (B.P.A.I. Aug. 14, 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.
10/007,713 11/13/2001 John Matthew Santosuosso ROC920010222US1 6341
46797 7590 08/14/2012
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
NGUYEN, CAM LINH T
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
08/14/2012 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 JOHN MATTHEW SANTOSUOSSO
________________

Appeal 2010-004039
Application 10/007,713
Technology Center 2100
________________

Before ROBERT E. NAPPI, DAVID M. KOHUT, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-36 which stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Birnbaum et al. (US 2002/0143878 A1, October 3, 2002)
(“Birnbaum”) and Smith et al. (US 6,578,078 B1, June 10, 2003) (“Smith”).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Since Appellant contends that the Examiner erred for substantially the
same reasons with respect to claims 1-36, we choose claim 11, as presented
by Appellant, as representative. Claim 11 recites:
11. A computer-readable storage medium, comprising a
program which, when executed by a processor, performs an
operation for updating a database on a server containing
information about a set of web pages, the operation comprising:

receiving a change request from a web browser, the
change request indicating the web browser has detected a
change related to a web page for which information is stored in
the database; and

updating the database based on information contained in
the change request to reflect the detected change.

App. Br. 18.
ISSUES
Appellant argues that the Examiner erred in concluding that claim 11
was unpatentable under 35 U.S.C. § 103(a) as obvious over Birnbaum and
Smith. Appellant advances three arguments in support of this contention.
First, Appellant argues that the Examiner erred because Birnbaum merely
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states that a change in browser activity is monitored, and not a change
related to a web page as recited in claim 11. App. Br. 12. Second,
Appellant maintains that the Examiner erred because Birnbaum teaches that
information regarding a change in the web browser program is received, not
from a web browser, but rather from a mini-application. Id. Third,
Appellant argues that neither Birnbaum nor Smith teaches or suggests the
limitation of claim 11 reciting “receiving a change request from a web
browser, the change request indicating the web browser has detected a
change related to a web page for which information is stored in the
database.” App. Br. 13-14. We are therefore presented with the issue of
whether, on the basis of these arguments, the Examiner erred in rejecting
claim 11 as unpatentable under 35 U.S.C. § 103(a) as obvious over
Birnbaum and Smith.

ANALYSIS
Appellant first argues that Birnbaum does not teach or suggest a
change related to a web page, as recited in claim 11, but rather teaches
merely the detection of changes in a web browser. App. Br. 12. Appellant
points to Birnbaum’s recitation that the mini-application “monitors for
predetermined changes in the web browser program on the first computing
device” as support for the contention that Birnbaum merely states that a
change in browser activity is monitored, and not a change related to a web
page. Id.
The Examiner answers that Birnbaum teaches that the information
that is detected can be new information entered by the user, such as a new
web address, information entered into a form by the user, etc. Ans. 8 (citing
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Birnbaum, pg. 5, ¶ [0067]). The Examiner explains that such information is
change related to a web page because the user used a web browser to enter
information (such as a web page address); indeed, such a web page is
displayed so the user can enter information. Id. Consequently, according to
the Examiner, entry of information made by the user is change related to a
web page. Id.
We find the Examiner’s reasoning that Birnbaum teaches or suggests
change related to a web page persuasive and adopt it as our own.
Appellant next argues that the limitation in claim 11 reciting
“receiving a change request from a web browser, the change request
indicating the web browser has detected a change related to a web page for
which information is stored in the database” is neither taught nor suggested
by Birnbaum, because Birnbaum teaches that information regarding a
change in the web browser program is received from the mini-application
and not a web browser. App. Br. 13. According to Appellant, Birnbaum
teaches that the first user’s computing device receives a mini-application and
that “the mini-application monitors for predetermined changes in the web
browser program on the first computing device.” Id. (quoting Birnbaum, pg.
5, ¶ [0065]). Therefore, Appellant explains, Birnbaum teaches that the mini-
application, not the web browser, monitors for predetermined changes. App.
Br. 13.
The Examiner answers that Fig. 4 of Birnbaum discloses a web
browser in each computing device, and that Fig. 2A discloses that
information regarding a change is detected from a web browser (step 103A -
103B). Ans. 9. Furthermore, responds the Examiner, Birnbaum teaches that
each mini-application uses a web browser. Id. The Examiner points out that
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Birnbaum refers to the “customer's browser” and “agent's browser” and that
“any change occurring at the customer's browser will also occur at the
agent's browser.” Id. (quoting Birnbaum, pg. 5, ¶ [0080]). Therefore,
according to the Examiner, the information regarding a change in a web
browser program is received from a web browser.
We find the Examiner’s reasoning with respect to this argument
persuasive and adopt it as our own. Although claim 11 recites that the
claimed invention receives a change request from a web browser; that does
not preclude the possibility that such a change related to a web page may be
relayed from the web browser to the claimed invention via a mini-
application. As we have explained above, the change related to a web page
may be information entered on a web page by a user. Since it is this
information that is relayed as a change request from the web page, we find
that Birnbaum teaches or suggests that receiving a change request from a
web browser, the change request indicating the web browser has detected a
change related to a web page for which information is stored in the database.
Finally, Appellant argues that neither Birnbaum nor Smith teaches or
suggests the limitation of claim 11 reciting “receiving a change request from
a web browser, the change request indicating the web browser has detected a
change related to a web page for which information is stored in the
database.” App. Br. 13-14. Appellant rejects the Examiner’s finding that
the memory in the agent browser is represented as a database that can be
used to store new information because, according to Appellant, “database” is
well known to those skilled in the art as a structured repository for data that
is accessible by a defined query language, such as SQL. App. Br. 13.
Furthermore, Appellant argues that Smith does not teach or suggest the
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limitation at issue because Smith teaches the use by a user of a Referential
Preservation Engine (RPE) to record changes in a database when the address
of a website is moved or deleted. Id.
The Examiner does not explicitly address the latter argument in his
Answer.1 However, in the Final Office Action rejecting claim 11, the
Examiner states that although Birnbaum does not clearly teach that the
database is updated in response to the request, Smith discloses a method for
update a web address in the server in response to a request comprising
updating a database in response to receiving a change request from a
browser. Final Office Action, November 13, 2001, pg. 4. Specifically, the
Examiner notes that a change request corresponds to the command from the
author to move or delete a page and that because the author can use a
computer to issue the command; the command is therefore issued from a
browser. Final Office Action, November 13, 2001, pg. 4-5. Consequently,
the Examiner concluded, it would have been obvious to a person of ordinary
skill in the art at the time of the invention to combine the teachings and
suggestions of Smith with those of Birnbaum to provide an up-to-date
database in response to a user request from a web browser. Final Office
Action, November 13, 2001, pg. 5.
We agree with the Examiner’s reasoning in and adopt it as our own.
It would have been obvious to an artisan of ordinary skill in the

1 The Examiner notes that “memory in the agent browser is represented as a
‘database’ that can be used to store new information such as cookie or new
information in its memory.” Ans. 9. Although we are skeptical that the
definition of “database” is as narrow as Appellant suggests, we need not
address this issue because we find claim 11 obvious over the combination of
Birnbaum and Smith.
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contemporaneous art to combine the teachings and suggestions of Smith
concerning updating a web address in the database in response to a request
with those of Birnbaum concerning receiving a change request from a web
browser, the change request indicating the web browser has detected a
change related to a web page. Claim 11 is, therefore, obvious over the
combination of Smith and Birnbaum.
For the reasons set forth above, we conclude that the Examiner did not
err in rejecting claim 11 as unpatentable under 35 U.S.C. § 103(a) as
obvious over Birnbaum and Smith.

CONCLUSION
Appellant has not persuasively shown that the Examiner erred in
rejecting claim 1-36 under 35 U.S.C. §103(a).

DECISION
The Examiner’s rejection of claims 1-36 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).
AFFIRMED

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