Ex Parte Wilhelm

Board of Patent Appeals and Interferences

Jan 18, 2012

11431685 (B.P.A.I. Jan. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT D. WILHELM
_____________

Appeal 2009-011286
Application 11/431,685
Technology Center 2100
____________

Before CARLA M. KRIVAK, THOMAS S. HAHN, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-10 and 17-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellant’s Figure 1 is reproduced below:

Figure 1 depicts a server 50 which upon request of a client computer
12 provides alternate bookmarks 63 for a respective primary bookmark 39.
Appellant’s Figure 1 and claimed invention are directed to a method
of managing bookmarks by which, in response to a user of client computer
12 hovering a mouse cursor over a primary bookmark 39 (i.e., ibm.com), a
bookmark update program 40 requests from server 50 the current, alternate
bookmarks for the primary bookmark. A server program 60 returns the list
of alternate bookmarks 63 (i.e., IBM zSeries and ibm.com/order) to program
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40 in client computer 12 and displays the alternate bookmarks 63 on monitor
23. See Spec. 9.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for managing bookmarks, said method comprising the steps
of:
a user hovering a cursor over a primary bookmark displayed on a
client computer, and in response, said client computer automatically sending
a request to a server corresponding to said primary bookmark to identify one
or more alternate bookmarks that correspond to said primary bookmark; and
in response to receipt of the identification of said one or more
alternate bookmarks from said server, said client computer displaying said
one or more alternate bookmarks adjacent to said primary bookmark.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bates US 6,088,707 Jul. 11, 2000
Donker US 2004/0107296 A1 Jun. 3, 2004
Stonehocker US 2006/0059225 A1 Mar. 16, 2006
Amazon.com, http://web.archive.org/web/19991013091817/
http://amazon.com/ (Oct. 13, 1999).
The following rejections are before us for review:
1. The Examiner rejected claims 1-7, 17, 18, and 22-25 under 35
U.S.C. § 103(a) as being unpatentable over Bates in view of
Donker.
2. The Examiner rejected claims 8, 10, 19, 21, and 26 under 35
U.S.C. § 103(a) as being unpatentable over Bates in view of
Donker and further in view of Stonehocker.
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3. The Examiner rejected claims 9, 20, and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Bates in view of Donker and
further in view of Amazon.com.

ISSUE
The pivotal issue is whether the Examiner erred in finding that Bates,
alone or in combination with Donker, teaches the limitation of: “a user
hovering a cursor over a primary bookmark displayed on a client computer,
and in response, said client computer automatically sending a request to a
server corresponding to said primary bookmark to identify one or more
alternate bookmarks that correspond to said primary bookmark” as recited in
claim 1.

PRINCIPLES OF LAW
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).

ANALYSIS
Appellant argues that Bates, alone or in combination with Donker,
does not teach: “a user hovering a cursor over a primary bookmark displayed
on a client computer, and in response, said client computer automatically
sending a request to a server corresponding to said primary bookmark to
identify one or more alternate bookmarks that correspond to said primary
bookmark” (Br. 6-12).
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We are not persuaded by Appellant’s argument. We agree with the
Examiner’s finding (Ans. 15) that Bates teaches, in response to a user
hovering a cursor 519 over a primary bookmark or hyperlink/URL to a
webpage (i.e., “Acme Stock Price”), additional information is displayed
close to it in a window 520 (Fig. 24).
We also agree with the Examiner (Ans.15) that Donker teaches a
search engine providing alternative bookmarks/hotlinks to a primary
bookmark/hotlink when a user hovers a mouse over the primary bookmark
and displays the alternative bookmarks to the user (see ¶¶ [0035], [0037]).
We further agree with the Examiner’s finding (Ans. 20) that Donker’s
system: “automatically searches for cached copies in the selected search
engine using the desired, originally selected hyperlink URL address as input
information for the search of finding cached alternative web pages” (¶
[0054] (emphasis added)). Donker further explains that the cached URL is
an alternative web page (¶¶ [0054], [0058]).
Thus, the teachings of Bates in view of Donker illustrate that with a
mouse-over a hyperlink/bookmark (see Bates, Fig. 24; Donker, ¶ [0035]) the
client computer sends information to a server by using a search engine
server (see Donker, ¶¶ [0053], [0054]), where the search engine server
identifies alternative web pages by providing URL identifiers/bookmarks to
those alternative web pages so that a user can select an alternative
bookmark/URL (see Donker, ¶ [0058]).
We further agree with the Examiner’s motivation and conclusion that it
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to modify the bookmark status pop-up window
as taught by Bates by displaying alternative bookmarks/hotlinks to a user as
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taught by Donker in order to save time “by avoiding the time consuming,
tedious and inefficient tasks of manually clicking on a hotlink . . . to find out
that . . . the desired page is slow, the page has been deleted, updated or taken
offline” (see Donker, ¶ [0035]).
Appellant further argues that the “document” of Bates is not a
bookmark, but a document file and the “status information” of Bates is the
status of the document such as the date of last update or name of last person
to access the document, and is not an alternate bookmark (Br. 7).
Appellant’s Specification refers to a bookmark file listing hyperlinks
corresponding to URLs of webpages in a pull down menu and Appellant
points to this disclosure as a distinction over the cited prior art (id.).
Appellant asserts that Donker’s search would have to be performed prior to
the user hovering the mouse over the primary bookmark and thus, the search
for the alternate bookmarks would not be done in response to hovering a
mouse over the primary bookmark (Br. 9-10). Appellant also argues that
Donker does not teach that the alternate bookmarks are displayed adjacent
the primary bookmark (Br. 10).
We do not agree with Appellant. First, we agree with the Examiner’s
finding (Ans. 17) that Bates (col. 19, l. 60–col. 20, l. 4) teaches a “tracked
list” which lists a plurality of tracked documents in the form of
URLs/hyperlinks to the tracked documents. We agree with the Examiner
that a list of hyperlinks/URLs is a bookmarked file since those
hyperlinks/URLs have been saved/stored/bookmarked for later usage by the
user of the browser (Ans. 17). We also agree with the Examiner’s finding
(id.) that Bates explicitly teaches that the “tracked list” can be organized like
a conventional bookmark list (col. 19, l. 66).
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Second, Bates teaches that upon the user hovering the mouse over the
primary URL/bookmark the system dynamically provides alternate URLs by
forwarding the badly performing webpage to a search engine for providing
availability of alternate cache copies of the primary URL/bookmark (see ¶¶
[0035]-[0037]). Accordingly, we do not agree with Appellant’s argument
that the search for the alternate bookmarks would not be done in response to
hovering a mouse over the primary bookmark (Br. 9-10).
Third, Appellant argues that Donker does not teach alternate
bookmarks displayed adjacent the primary bookmark (Br. 10). However, the
Examiner relied on Bates, not on Donker, for the teaching of information
being displayed adjacent the primary bookmark in response to the hovering
mouse (Bates, Fig. 24). One cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
references. See Keller, 642 F.2d at 426. Accordingly, the Examiner
correctly relied on Bates for the teaching of displaying information next to
the primary bookmark and on Donker for the teaching of the particular type
of information being displayed (i.e., alternate bookmarks).
Finally, regarding Appellant’s argument that it “would not have been
obvious in view of Donker et al. to provide alternates to bookmarks because
bookmarks have traditionally been viewed as fixed links, like a fixed paper
bookmark in a hard copy book” (Br. 9 (emphasis omitted)), we adopt the
Examiner’s response (Ans. 18). The Examiner states:
The Appellant’s description/definition of a bookmark is fairly
narrow and does not appear as a limitation in the claim.
Although the Appellant has stated in their arguments that they
want the bookmark to be a fixed link; the limitation that a
bookmark has to be a fixed link does not appear as a limitation
in independent claim 1. As to the description of a “fixed paper
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bookmark”, it is unclear as to what the Appellant means as a
“fixed paper bookmark”. When reading a large novel, a
bookmark is used and is placed in the book to “bookmark” that
page. At a later time, after reading more of the novel, the same
paper bookmark is then used to “bookmark” a different page.
Thus the paper bookmark is not a “fixed link”. If the Appellant
was referring to a bookmark for a manual where the bookmark
points to certain laws, rules, or statutes then it should be noted
that those “fixed paper bookmarks” do change over time when
updates or revisions are made to the manual.
Id.
Accordingly, we affirm the Examiner’s rejection of claim 1 and the
rejections of claims 2-10 and 17-26 for the same reasons.

CONCLUSION
The Examiner did not err in finding that the combination of Bates
with Donker teaches the limitation of: “a user hovering a cursor over a
primary bookmark displayed on a client computer, and in response, said
client computer automatically sending a request to a server corresponding to
said primary bookmark to identify one or more alternate bookmarks that
correspond to said primary bookmark” as recited in claim 1.

ORDER
The decision of the Examiner to reject claims 1-10 and 17-26 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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