Ex Parte Zhang et al

Patent Trial and Appeal Board

Jul 22, 2014

11327644 (P.T.A.B. Jul. 22, 2014)

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.
11/327,644 01/09/2006 Ying Zhang 0026-0194 1970
44989 7590 07/22/2014
HARRITY & HARRITY, LLP
11350 Random Hills Road
SUITE 600
FAIRFAX, VA 22030
EXAMINER
ALLEN, NICHOLAS E
ART UNIT PAPER NUMBER
2167
MAIL DATE DELIVERY MODE
07/22/2014 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 YING ZHANG and JEFFREY KORN

_____________

Appeal 2012-002532
Application 11/327,644
Technology Center 2100
______________

Before BRADLEY W. BAUMEISTER, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002532
Application 11/327,644

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STATEMENT OF CASE
1

Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1, 2, 4-10, 12-26, and 29-39, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

INVENTION
The invention is directed to searching and sharing of the user’s
bookmarks. Spec. 1-2. Claims 1 and 12 are illustrative of the invention and
are reproduced below:
1. A method performed by one or more server devices, the
method comprising:
receiving, by one of the one or more server devices,
bookmarks that identify documents from a user at a first client;
storing the bookmarks in a data structure of a memory
associated with the one or more server devices;
receiving, by one of the one or more server devices, a
request from the user to search the stored bookmarks; and
searching, by a processor associated with the one or more
server devices, a content of a document associated with one of
the stored bookmarks based on the request to search the stored
bookmarks.

1
Our decision will make reference to Appellants’ Reply Brief (“Reply Br.,”
filed Oct. 12, 2011), Appellants’ Appeal Brief (“App. Br.,” filed May 23,
2011), the Examiner’s Answer (“Ans.,” mailed Aug. 15, 2011), and the Final
Rejection (“Final Rej.,” mailed Nov. 23, 2010).
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12. A method performed by one or more server devices, the
method comprising:
receiving, by one of the one or more server devices, an
action request associated with bookmarks from a client
associated with a first user, where the bookmarks identify user
designated documents, and where the action request comprises
a request to share a bookmark with an identified second user;
accessing, by a processor associated with the one or more
server devices, the first user’s bookmark records stored at a
storage device associated with the one or more server devices,
the accessing being performed in response to receiving the
action request; and
acting, by a processor associated with the one or more
server devices, on the bookmark records in a manner specified
by the action request, where the acting on the bookmark records
comprises retrieving a record entry corresponding to the
requested bookmark from the first user’s bookmark records and
storing the record entry in the identified second user’s
bookmark records.

REFERENCES
Badros US 2005/0131866 A1 June 16, 2005
Altaf US 2006/0265381 A1 Nov. 23, 2006

REJECTIONS
Claims 1, 2, 4-10, 12-26, and 31-39 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Altaf. Ans. 4-18.
Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Altaf in view of Badros. Ans. 18-19.

ISSUES
Did the Examiner err in finding Altaf discloses “searching, by a
processor associated with the one or more server devices, a content of a
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document associated with one of the stored bookmarks based on the request
to search the stored bookmarks,” as recited in independent claim 1 and
similarly recited in independent claims 9 and 32?
Did the Examiner err in finding Altaf discloses “a request to share a
bookmark with an identified second user,” and “the acting on the bookmark
record comprises retrieving a record entry corresponding to the requested
bookmark from the first user’s bookmark records and storing the record
entry in the identified second user’s bookmark records,” as recited in
independent claim 12 and similarly recited in independent claim 31?
Did the Examiner err in finding Altaf discloses “provide, to the first
user, at least one first entry box to receive information identifying a
bookmark to share with a second user, and providing a second entry box for
receiving information identifying the second user,” as recited in dependent
claim 32 and similarly recited in independent claim 33?

ANALYSIS
Claims 1, 2, 4-10, 32, 36, and 37 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Altaf

Appellants contend that Altaf fails to describe “searching a content of
a document associated with a stored bookmark,” as recited in claim 1. App.
Br. 14; Reply Br. 5-6. Claims 9 and 32 recite similar features. Claims 2 and
4-8, depend from independent claim 1, claim 10 depends from independent
claim 9, and claims 36 and 37, depend from independent claim 32.
Specifically, Appellants argue that Altaf “[m]erely discloses matching terms
in a search request to terms in the user’s contact bookmarks. A search of the
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user’s contact bookmarks does not correspond to searching the content of a
document associated with a bookmark.” Reply Br. 6.
We agree with Appellants. The Examiner cites to paragraphs 54-55 of
Altaf to disclose this limitation. Ans. 5, 20, 21. However, in these cited
portions Altaf generally discloses a user request that contains a set of terms
that are used by a search engine to search the contacts’ bookmarks that are
already contained on the user’s IM agent, rather than searching a document
associated with a bookmark, as claimed. Absent persuasive evidence or
rationale from the Examiner, we cannot sustain the Examiner’s rejection of
claims 1, 2, 4-10, 32, 36, and 37.

Claims 12-26, 31, 34, and 35 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Altaf

We have reviewed the Examiner’s rejections in light of the
Appellants’ contentions that the Examiner has erred. For claims 12-26, 31,
34, and 35 we disagree with the Appellants’ conclusions. We adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Rej. 6-11 and 14-15) and (2) the
reasons set forth by the Examiner in the Examiner’s Answer (Ans. 23-28) in
response to the Appellants’ Appeal Brief. We highlight the following
arguments for emphasis.
Appellants contend that Altaf fails to describe “the action request
comprises a request to share a bookmark with an identified second user,”
and “retrieving a record entry corresponding to the requested bookmark
from the first user’s bookmark records and storing the record entry in the
identified second user’s bookmark records,” as recited in claim 12. App. Br.
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17-20; Reply Br. 10. Claim 31 recites similar features. Claims 13-26,
depend from independent claim 12 and claims 34 and 35 depends from
independent claim 31.
We are not persuaded by Appellants’ argument. Altaf describes a
system and method for a plurality of contacts to set permissions or privileges
for one bookmark or a plurality of bookmarks that the contact wishes to
share with other persons, which reads on a request to share a bookmark with
an identified second user. Altaf ¶¶ 47-48, Fig. 7. We find that this explicitly
describes the limitations Appellants alleged Altaf fails to describe.
Accordingly, we do not find this argument to be persuasive.
Appellants further state that Altaf does not disclose or suggest,
“retrieving a record entry corresponding to the requested bookmark from the
first user’s bookmark records and storing the record entry in the identified
second user’s bookmark records,” as recited in claim 12. App. Br. 19-20;
Reply Br. 10. Claim 31 recites similar features. Appellants, however,
merely recite the rejection set forth by the Examiner and state that the cited
prior art reference does not describe the disputed limitation. App. Br. 19-20;
Reply Br. 10. We do not find these statements to be tantamount to
arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).
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Furthermore, we find that Altaf describes a system and method for
adding shared bookmarks to user’s IM category, which discloses the
limitation of retrieving a record entry corresponding to the requested
bookmark from the first user’s bookmark records and storing the record
entry in the identified second user’s bookmark records. Altaf ¶ 49, Fig. 7.
As such, we do not find this argument to be persuasive.
Accordingly, we sustain the Examiner’s rejection of claims 12-26, 31,
34, and 35.

Claims 33, 38, and 39 stands rejected under 35 U.S.C. § 102(e) as
anticipated by Altaf

Appellants contend that Altaf fails to describe “providing at least one
first entry box to receive information identifying a bookmark to share with
the second user, and providing a second entry box for receiving information
identifying the second user,” as recited in claim 33. App. Br. 27; Reply Br.
14. Claims 38 and 39 depend from independent claim 33.
We agree with Appellants. The Examiner cites to IM agent window
500 and Shortcut Area 506 of Figure 5 and paragraphs 46-47 of Altaf to
disclose this limitation. Ans. 16. These cited portions of Altaf are silent as
to a “first entry box” and a “second entry box.” The Examiner has not
provided a sufficient evidence or rationale to illustrate how the cited portions
of Altaf expressly, implicitly or inherently describe on the first entry box and
the second entry box
2
.

2
No obviousness rejection under 35 U.S.C. § 103(a) was raised on appeal.
Accordingly, we only address the anticipation rejection that is before us on
appeal. We leave it to the Examiner to determine whether claims 33, 38, and
39 are obvious over Altaf.
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Accordingly, we do not sustain the Examiner’s rejection of claims 33,
38, and 39.

Claims 29 and 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Altaf and Badros

Appellants did not present separate arguments with regard to rejection
of dependent claims 29 and 30. Appellants instead argue that the teachings
of Badros do not overcome the deficiencies of Altaf that Appellants argued
in relation to independent claim 12. Arguments not made are considered
waived. Therefore, we do not find error in the Examiner’s rejection of
dependent claims 29 and 30 for the reasons set forth supra in relation to
independent claim 12.

CONCLUSION
The Examiner erred in rejecting claims 1, 2, 4-10, 32, 36, and 37.
The Examiner did not err in rejecting claims 12-26, 29-31, 34, and 35.
The Examiner erred in rejecting claims 33, 38, and 39.

DECISION
The rejection of claims 1, 2, 4-10, 32, 33, and 36-39 is not sustained.
The rejections of claims 12-26, 29-31, 34, and 35 are sustained.
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-IN-PART
kis