Ex Parte Sylvain

Patent Trial and Appeal Board

May 23, 2013

11616685 (P.T.A.B. May. 23, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/616,685 12/27/2006 Dany Sylvain 7000-556 2927
27820 7590 05/24/2013
WITHROW & TERRANOVA, P.L.L.C.
100 REGENCY FOREST DRIVE
SUITE 160
CARY, NC 27518
EXAMINER
MCCUE, BRITTANY N
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
05/24/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANY SYLVAIN
____________

Appeal 2010-009740
Application 11/616,685
Technology Center 2100
____________

Before JOHN A. EVANS, LYNNE E. PETTIGREW, and GREGG I.
ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a search server for conducting a
search in response to a web request received from a computing terminal and
delivering a web page, including any search results, back to the computing
terminal in response to the web request. Telecom data obtained by the
search server is used to access supplemental information, which is used to
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retrieve the web page information used to generate the web page. The
supplemental information may be used to select advertisements for the web
page. See generally Spec.¶ [0006]. Claim 1 is illustrative:
1. A method comprising:
receiving a web request from a computing terminal;
accessing supplemental information based on telecom data associated
with a user of the computing terminal;
retrieving web page information in response to a search based on at
least a portion of the supplemental information;
generating a web page comprising the web page information; and
sending the web page to the computing terminal in response to the
web request.

THE REJECTIONS
1. The Examiner rejected claims 1-7, 9-11, 13-17, and 19-21 under
35 U.S.C. § 102(e) as being anticipated by Baluja (US 2007/0239529 Al,
published Oct. 11, 2007, filed Mar. 30, 2006)(“Baluja”). Ans. 3-9.1
2. The Examiner rejected claims 8, 12, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Baluja and Howe (US 2007/0112656
A1, published May 17, 2007, filed Oct. 28, 2005)(“Howe”). Ans. 9-12.
3. The Examiner rejected claims 22-24 under 35 U.S.C. § 103(a) as
being unpatentable over Baluja and further in view of McCormack (US
2002/0188680 A1, published Dec. 12, 2002)(“McCormack”). Ans. 12-14.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed December
28, 2009 (“Br.”); and (2) the Examiner’s Answer mailed April 12, 2010
(“Ans.”).
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ISSUES
1. Under § 102, has the Examiner erred in rejecting claim 1 by
finding that Baluja discloses “accessing supplemental information based on
telecom data associated with a user of the computing terminal”?
2. Under § 103, has the Examiner erred in rejecting claim 22 by
finding that Baluja and McCormack collectively would have taught or
suggested “wherein the telecom data associated with the user is a directory
number or address of the computing terminal of the user”?
3. Under § 103, has the Examiner erred in rejecting claims 23 and 24
by finding that Baluja and McCormack collectively would have taught or
suggested “wherein at least a portion of the telecom data is provided by the
user via a separate web page”?

ANALYSIS
Claims 1-7, 9-11, 13-17, and 19-21 under 35 U.S.C. § 102
Appellant contends the key disputed limitation of claim 1 not shown
in Baluja is “accessing supplemental information based on telecom data
associated with a user of the computing terminal.” Br. 4-5, 9-10. Appellant
points to Baluja as targeting advertising based on called telephone numbers.
Br. 5, 9. Appellant argues that called telephone numbers are not telecom
data “associated with a user” but are associated with the person called. Br.
5, 9-10. The Examiner responds by noting the Baluja user must dial a
number to call a number. Ans. 14. The dialed number is stored and used to
select advertisements to serve on a client device 310, a telephone or
computer. Further, Baluja shows how a stored dialed number is associated
with the person who dialed the number, i.e., the user, by directing
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advertising to the user based on the called number. Ans. 4, 14 (citing
Baluja, ¶¶ [0056] and [0057]).
We agree with the Examiner that Baluja discloses “accessing
supplemental information based on telecom data associated with a user of
the computing terminal.” The support is found in the Examiner’s findings as
already detailed, which we adopt as our own. Fatally to Appellant’s
position, the client device 310 is “associated with the user” for receipt of
“extracted information” derived from the called number. Baluja, ¶ [0056],
ll. 8-14.
The Examiner’s rejection of claim 1 is sustained. Independent claim
19 is of similar scope and is argued as patentable on the same basis as claim
1. The rejection of claim 19 is likewise sustained. Claims 2-7, 9-11, and 13-
17 depend on claim 1 and are not separately argued. The rejections of
claims 2-7, 9-11, and 13-17 are therefore sustained. Claims 20 and 21
depend on claim 19 and are not separately argued. The rejections of claims
20 and 21 are therefore sustained.

Claims 8, 12, and 18 under 35 U.S.C. § 103
Claims 8, 12, and 18 all depend on claim 1 and are argued as
patentable for the same reasons we rejected in connection with claim 1. Br.
11. For the reasons discussed above with respect to claim 1, we sustain the
rejection of claims 8, 12, and 18.

Claim 22 under 35 U.S.C. § 103
Claim 22 depends on claim 1. In addition to arguments we have
addressed in connection with claim 1, Appellant argues patentability of
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claim 22 based on its further limitation of “telecom data associated with the
user is a directory number or address of the computing terminal of the user.”
Br. 11-12. The Examiner relies on McCormack to teach the disputed
limitation. Ans. 13. Specifically, the Examiner finds “McCormack
discloses that the computer the user uses to make a phone call has a PC
telephone having a number associated therewith that may be stored on the
user’s terminal.” Ans. 13 (citing McCormack, ¶¶ 0039 and 0043-0044).
Appellant contends that McCormack does not teach or suggest using
the user’s telephone number to access supplemental information upon which
a search is based. Br. 11. As discussed above, however, the Examiner finds
that Baluja teaches accessing supplemental information based on telecom
data. Appellant’s individual attack on McCormack is not persuasive because
the Examiner’s rejection is based on the combined teachings of Baluja and
McCormack. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Accordingly, we
sustain the rejection of claim 22.

Claims 23 and 24 under 35 U.S.C. § 103
Claims 23 and 24 claim identical subject matter. They have different
dependency, depending on claims 1 and 19 respectively. As to arguments
relative to claims 1 and 19, those have been addressed previously. The
additional limitation of both claims is “at least a portion of the telecom data
is provided by the user via a separate web page.” We agree with the
Examiner that McCormack teaches this limitation. As cited by the
Examiner, McCormack teaches that, after a user clicks on a hyperlink to
activate a click-to-talk communication, the user may receive a webpage
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prompting the user to enter his or her telephone number. McCormack, ¶¶
[0042], [0045].
Appellant contends that neither Baluja nor McCormack teaches
accessing supplemental information based on telecom data provided by the
user via a separate web page. Br. 13. As discussed above, however, the
Examiner finds that Baluja teaches accessing supplemental information
based on telecom data. As with claim 22, Appellant’s individual attack on
the references is not persuasive because the Examiner’s rejection is based on
the combined teachings of Baluja and McCormack. Accordingly, the
rejection of claims 23 and 24 is sustained.

CONCLUSION
The Examiner did not err in rejecting claims 1-7, 9-11, 13-17, and 19-
21 under 35 U.S.C. § 102(e).
The Examiner did not err in rejecting claims 8, 12, 18, and 22-24
under 35 U.S.C. § 103(a).

ORDER
The Examiner’s decision rejecting claims 1-24 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)(iv).

AFFIRMED

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