Ex Parte Spalink et al

Board of Patent Appeals and Interferences

Oct 27, 2009

09606683 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAN-DIETER SPALINK, BRIAN R. D. GULLETTE,
ANDREW HATCHELL, RANDALL C. NORTMAN,
KEVIN BABYAK, and MICHAEL BABYAK
____________

Appeal 2008-005356
Application 09/606,683
Technology Center 2400
____________

Decided: October 27, 2009
____________

Before LEE E. BARRETT, LANCE LEONARD BARRY, and JOHN A.
JEFFERY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-3, 7, 8, 11, 15, 19, 20, and 23-
26. The Appellants appeal therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).

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INVENTION
The invention at issue on appeal classifies Web sites accessible via the
Internet. More specifically, the invention receives a list of network resource
locators and submits each locator to at least one Web coder, which
determines a classification for that locator. (Spec. 16.)

ILLUSTRATIVE CLAIM
1. A method for classifying information available on a
computer network, the method including:
receiving a list of network resource locators, said list
being created by identifying network resources accessed by
users of the network from use data which is related to resources
accessed by a number of the users of the network;
for each network resource locator of the created list,
sending the network resource locator to a graphical user
interface (GUI) component of at least one Web-coding
workstation connected to the network, and which is separate
from the users of the network;
receiving a selection from at least one Web coder from
the at least one Web-coding workstation, with each selection
representing a classification for the resource identified by the
sent network resource locator, said selection being generated in
response to the Web coder using tools of said GUI component
and in accordance with a predetermined classification system
and
storing the classification in a separate database in relation
to said resource locator and to said at least one Web-coding
workstation.

PRIOR ART
Khan US 6,546,393 B1 Apr. 8, 2003
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REJECTION
Claims 1-3, 7, 8, 11, 15, 19, 20, and 23-26 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Khan.

CLAIMS 1, 3, 7, 8, 15, 19, 20, AND 23-26
When multiple claims subject to the same ground of rejection
are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately.
37 C.F.R. § 41.37(c)(1)(vii). When the patentability of dependent claims is
not argued separately, the claims stand or fall with the claims from which
they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983).

Here, the Appellants argue claims 1, 8, 23, and 24, which are subject
to the same ground of rejection, as a group. (Amended Br. 12-15.) Rather
than arguing the rejection of claims 3 or 7 separately, they rely on their
arguments for the group. (Id. 16.) Therefore, we select claim 1 as the sole
claim on which to decide the appeal of claims 1, 3, 7, 8, 23, and 24.

Furthermore, the Appellants argue claims 15, 19, 20, 25, and 26,
which are subject to the same ground of rejection, as a group. (Id.)
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Therefore, we select claim 15 as the sole claim on which to decide the
appeal of claims 15, 19, 20, 25, and 26.

ISSUE
The Examiner finds that in Khan a "bookmark is received by a staff
editor 'coding station' that determines whether the user categorization is
correct and determines whether to accept the categorization or change the
categorization of the selected bookmark (see col. 11 lines 62-col. 12 . . . .)"
(Ans. 11.) The Appellants argue that "the section referred to bridging
cols. 11 and 12 merely discloses the individual users accessing resources on
the net doing their own categorization, with the categorization being edited
by an editor selected classification, but only after the user has submitted it
with a proposed classification." (Amended Br. 14.) Therefore, the issue
before us is whether the Appellants have shown error in the Examiner's
finding that Khan teaches one Web-coding workstation connected to a
network but separate from the users of the network as required by claim 1
and more than one such station as required by claim 15.

LAW
"[A]nticipation is a question of fact." In re Hyatt, 211 F.3d 1367,
1371-72 (Fed. Cir. 2000) (citing Bischoff v. Wethered, 76 U.S. (9 Wall.)
812, 814-15 (1869); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)).
"[A]nticipation of a claim under § 102 can be found . . . if the prior art
reference discloses every element of the claim." In re King, 801 F.2d 1324,
1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984)).
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FINDINGS OF FACT (FFS)
1. Khan "creat[es] . . . an exemplary website directory 300 of the
present invention derived from bookmarks submitted from users' online
bookmark accounts 302a, 302b, 302c. In the present invention, sites 304
added to the web directory 300 exist as bookmarks 306 in a user's bookmark
set of the user's online bookmark account." (Col. 11, ll. 40-46.) "The user
may choose manual or automatic categorization while adding part or all of
their bookmark." (Id. ll. 59-61.)

2. The reference Khan adds the following explanation.

Under manual categorization, the user determines the category 310a,
310b, 310c under which to file a bookmark or a set of bookmarks.
These bookmarks as well as the suggested categorization are reviewed
by the directory's editorial staff for correctness of categorization.
After this screening, the sites are made part of the directory under the
user recommended category or a editor selected classification, and the
user is notified.

(Col. 11, l. 63- col. 12, l. 4.)

3. Khan also includes the following disclosure.

In automatic categorization, the user may specify which part of the
user's bookmark set is to be included in the directory. All unique
links in this set that do not already exist in the directory are then
considered for addition under categories determined by the staff.
With automatic categorization, the user does not have to determine
and submit the appropriate categorization of the submitted
bookmarks."

(Col. 12, ll. 5-12.)

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ANALYSIS
Khan derives a website directory from bookmarks submitted from
users' online bookmark accounts. (FF 1.) The users submit their bookmarks
to the directory's editorial staff for manual or automatic categorization. In
the former case, the editorial staff decides the classification with suggestions
from the users (FF 2); in the latter case, without suggestions therefrom (FF
3). It is uncontested that the editorial staff employs workstations to receive
and classify the bookmarks. We agree with the Examiner's finding that
because "the staff editors that categorize[ ] the bookmarks . . . are not part of
the users, and . . . their role in the system and method is to categorize the
bookmarks" (Answer 11, 12) each computer that a staff editor employs to
"categorize the bookmarks taught by Khan [is] interpreted to be [a] Web-
coding workstation" (id.) as required by claim 1. We find that the plurality
of computers that the staff editors employ, moreover, constitute more than
one such station as required by claim 15.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the Examiner's finding that Khan teaches
one Web-coding workstation connected to a network but separate from the
users of the network as required by claim 1 and more than one such station
as required by claim 15.

CLAIM 2
The Examiner finds that "[t]he list of bookmarks accessed by each
user is a 'list of network resource locators includes one or more Web sites
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accessed by users of the network.'" (Answer 13.) The Appellants argue that
"changes in classifications are made for specific resources for individual
users but there is no overall ranking of public resources accessed by users of
a network from what is termed use data or effectively 'collected network
transaction data'." (Amended Br. 15.) Therefore, the issue before us is
whether the Appellants have shown error in the Examiner's finding that
Khan teaches a list of network resource locators that includes one or more
Web sites accessed by users of the network.

LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be
read into the claims from the specification." In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).

ANALYSIS
The Appellants' argument that "there is no overall ranking of public
resources accessed by users of a network from what is termed use data or
effectively 'collected network transaction data'" (Amended Br. 15) appears
to be based on limitations not in claim 2. Therefore, they cannot be relied on
to show error in the rejection of that claim.

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CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the Examiner's finding that Khan teaches
a list of network resource locators that includes one or more Web sites
accessed by users of the network.

CLAIM 11
ISSUE
The Examiner finds that "Khan teaches . . . a hierarchical taxonomy of
classifications and said selection represents one of said classifications (see
col. 11 lines 45-co1. 12 lines 27 and col. 13 lines 25-55)" (Ans. 6.) The
Appellants argue that "the bookmarks set forth are identified by a
classification. However, this has nothing to do with a hierarchical taxonomy
of classifications." (Amended Br. 16.) Therefore, the issue before us is
whether the Appellants have shown error in the Examiner's finding that
Khan teaches a hierarchical taxonomy of classification.

FINDING OF FACT
4. Khan's "FIG. 4 is a schematic illustration of an exemplary
embodiment of a website directory 300 of the present invention with
sites 304 categorized in user created and defined categories 310a, 310b and
subcategories 312a, 312b. In such an embodiment of the present invention,
a sub-category may be created into which the site is categorized under one of
the categories of the site directory." (Col. 12, l. 56–62.)

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5. Figure 4, which shows the categories and subcategories, follows.

ANALYSIS
Khan's website directory categorized sites in categories and
subcategories. (FFs 4-5.) We agree with the Examiner that the categories
and subcategories constitute a hierarchical taxonomy of classification.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the Examiner's finding that Khan teaches
a hierarchical taxonomy of classification.

DECISION
We affirm the rejection of claims 1-3, 7, 8, 11, 15, 19, 20, and 23-26.

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No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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