Ex Parte 7,644,122 et alDownload PDFPatent Trials and Appeals BoardJun 4, 201395001411 - (D) (P.T.A.B. Jun. 4, 2013) Copy Citation 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. 95/001,411 08/25/2010 7,644,122 FABO-005/00US 5232 66385 7590 06/05/2013 TECHCOASTLAW 2032 Whitley Ave HOLLYWOOD, CA 90058 EXAMINER TON, MY TRANG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/05/2013 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 ____________ FACEBOOK, INC. Requester v. FRANK M. WEYER and TROY K. JAVAHER Patent Owners Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,1221 Technology Center 3900 ____________ Before BIBHU R. MOHANTY, KEVIN F. TURNER, and JOSIAH C. COCKS, Administrative Patent Judges. COCKS, Administrative Patent Judge. DECISION ON APPEAL 1 The patent involved in this inter partes reexamination proceeding (the “’122 Patent”) issued to Frank M. Weyer and Troy K. Javaher on January 5, 2010. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 2 I. STATEMENT OF THE CASE A. SUMMARY Patent Owners Frank M. Weyer and Troy K. Javaher (collectively the “Patent Owner”) appeal under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision2 to reject claims 1-26.3 Third-Party Requester Facebook, Inc. (“Requester”) urges that the Examiner’s decision must be affirmed.4 The Requester also cross-appeals under 35 U.S.C. §§ 134(c) and 315(b) from the Examiner’s refusal to reject claims 4, 10-12, 15-19, and 21- 26 on additional grounds.5 The Patent Owner contends that the Examiner’s refusal in that regard was correct.6 We have jurisdiction under 35 U.S.C. § 6(b)(2). Oral argument was heard on October 17, 2012. A transcript of the argument was entered into the record on December 7, 2012. 2 See Right of Appeal Notice mailed August 19, 2011 (“RAN”), which is incorporated by reference in the Examiner’s Answer mailed January 13, 2012. In discussing the Examiner’s rejections and decisions favorable to patentability, this opinion makes reference to the RAN. 3 See Patent Owner’s Appeal Brief filed October 20, 2011 (“PO App. Br.”) and Rebuttal Brief filed February 2, 2013 (“PO Reb. Br.”). 4 See Requester’s Respondent Brief filed November 21, 2011 (“Req. Resp. Br.”). 5 See Requester’s Cross-Appeal Brief filed November 7, 2011 (“Req. App. Br.”) and Rebuttal Brief filed February 13, 2012 (“Req. Reb. Br.”). 6 See Patent Owner’s Respondent Brief filed November 30, 2011 (“PO Resp. Br.”). Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 3 B. RELATED PROCEEDINGS We are informed that the ’122 Patent is involved in litigation styled Weyer et al. v. MySpace et al., Civil Action No. CV 10-00499 MRP (FFMx) in the United States District Court for the Central District of California, which has been stayed (administratively dismissed) pending the outcome of this reexamination. (PO App. Br., 1.) C. THE INVENTION The invention of the ’122 Patent relates to the field of online communications (’122 Patent, 1:20-24) and encompasses methods “for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” (Id. at ll. 58-61.) Claims 1 and 26 are independent claims. Claim 1 is reproduced below:7 1. A method for providing individual online presences for each of a plurality of members of a group of members by a server comprising the steps of: 7 There is disparity between the listing of the claims which appears in Claims Appendix of Patent Owner’s Appeal Brief and the listing of the claims in the Claims Appendix of Requester’s Cross-Appeal Brief. According to the Patent Owner, the last amendment to the claims was filed on November 16, 2010. (PO App. Br., 2.) The Requester “agrees with the PO’s statement if the Status of Amendments.” (Req. Resp. Br., 1.) The amendment includes a complete listing of claims 1-26. Neither party’s claims appendix provides a listing of claims which corresponds to the claims as they appear in that amendment. We understand the listing of the claims in the above-noted amendment to be the correct listing of the claims that are before us in this appeal. This opinion, therefore, makes reference to the November 16, 2010 Amendment (“2010 PO Amend.”) when reproducing claim language. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 4 maintaining a database comprising information associated with each of said plurality of members at a database system connected to said server; allotting individual URLS to each of said plurality of members by associating an individual URL with each individual member of said plurality of members in said database system; associating an individual home page for each said individual member of said plurality of members with said individual URL allotted to said individual member in said database system, said individual home page comprising information from said database associated with said individual member; a first control for submitting a comment about said individual member; and a second control separate from said first control for sending a message other than said comment to said individual member; receiving by said server an online request for said individual URL from a requesting source; providing said individual home page by said server to said requesting source. (2010 PO Amend., 2.)8 D. THE PRIOR ART 1. Patent Owner’s Appeal The following prior art is involved in Patent Owner’s Appeal: Shane 5,793,972 Aug. 11, 1998 de Hond 5,796,395 Aug. 18, 1998 8 In this opinion, the claims appearing the Patent Owner’s 2010 Amendment have been reproduced without status identifiers or underlining. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 5 Chandra 6,085,242 July 4, 2000 O’Neal 6,711,154 Mar. 23, 2004 Judith S. Donath, “Sociable Information Spaces,” MIT Media Laboratory, June 20, 1995 (“Donath”). Robertson et al., “Web-Based Collaborative Library Research,” US West, 1997 (“Robertson”). Ben Sawyer and Dave Greely, Creating GeoCities Websites, Muska & Lipman Publishing, 1998 (“GeoCities”). ICQ™ Ver. 98 a User’s guide, Mirablis, Ltd., 1998 (“ICQ98a”). Peter Weverka and Michael Taylor, ICQ for Dummies, IDG Books Worldwide, Inc., 1999 (“ICQ”). 2. Requester’s Cross-Appeal In addition to the prior art noted above in connection with the Patent Owner’s Appeal, the Requester relies on the following prior art: Standard for the format of ARPA Internet Text Messages, RFC # 822, August 13, 1982) (“RFC 822”). David J. Coleman et al., (Information Access and Network Usage in the Emerging Spatial Information Marketplace, Journal of the Urban and Regional Information Systems Associated, Vol. 9, No. 1, (Spring 1997)(“Coleman”). Brad Hill, Yahoo! For Dummies, (August 1999) (“Yahoo!”) Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 6 E. THE INVOLVED REJECTIONS 1. Patent Owner’s Appeal The Examiner adopted the following grounds of rejection under 35 U.S.C. § 102: (1) Claims 1-15 as anticipated by GeoCities; (2) Claims 1-4, 6-9, and 12-14 as anticipated by ICQ; (3) Claims 1-5, 7-9, 11, and 13-15 as anticipated by de Hond; (4) Claims 1-3, 7-9, and 11 as anticipated by Robertson; (5) Claims 1, 2, 8, 13, and 14 as anticipated by ICQ 98a; (6) Claims 18-25 as anticipated by GeoCities; (7) Claims 16, 20 and 22-25 as anticipated by ICQ; (8) Claims 20, 23, and 24 as anticipated by de Hond; (9) Claims 20, 22, and 26 as anticipated by Robertson; The Examiner adopted the following grounds of rejection under 35 U.S.C. § 103(a): (10) Claims 1-15 as unpatentable over GeoCities and de Hond; (11) Claims 1-15 as unpatentable over ICQ and de Hond; (12) Claims 1-5, 7-9, 11, and 13-15 as unpatentable over de Hond and Chandra; Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 7 (13) Claims 1-5, 7-9, 11, and 13-15 as unpatentable over de Hond and Shane; (14) Claims 1-5, 7-9, 11 and 13-15 as unpatentable over Donath and de Hond; (15) Claims 1-5, 7-9, 11, and 13-15 as unpatentable over ICQ 98a and de Hond; (16) Claim 17 as unpatentable over ICQ and O’Neal. The Examiner adopted the following ground of rejection under 35 U.S.C. § 112: (17) Claims 16 and 17 as failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. 2. Requester’s Cross-Appeal The Examiner declined to adopt the following grounds of rejection under 35 U.S.C. § 102: (18) Claims 5, 10, 11, and 15 as anticipated by ICQ; (19) Claims 4 and 12 as anticipated by ICQ 98a; (20) Claims 4 and 12 as anticipated by Robertson; (21) Claim 19 as anticipated by ICQ 98a; (22) Claim 22 as anticipated by ICQ 98a; (23) Claims 23-25 as anticipated by ICQ 98a; Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 8 (24) Claim 25 as anticipated by de Hond; (25) Claim 26 as anticipated by GeoCities; (26) Claim 26 as anticipated by ICQ 98a; The Examiner declined to adopt the following grounds of rejection under 35 U.S.C. § 103(a): (27) Claim 16 as unpatentable over ICQ and O’Neal; (28) Claims 16 and 17 as unpatentable over GeoCities and O’Neal; (29) Claims 16 and 17 as unpatentable over Robertson and O’Neal; (30) Claim 18 as unpatentable over GeoCities and RFC 822; (31) Claim 18 as unpatentable over ICQ and RFC 822; (32) Claim 18 as unpatentable over ICQ 98a and RFC 822; (33) Claim 18 as unpatentable over de Hond and RFC 822; (34) Claim 18 as unpatentable over Robertson and RFC 822; (35) Claim 19 as unpatentable over ICQ, RFC 822, and GeoCities; (36) Claim 19 as unpatentable over ICQ 98a, RFC 822, and GeoCities; (37) Claim 19 as unpatentable over de Hond, RFC 822, and GeoCities; (38) Claim 19 as unpatentable over Robertson, RFC 822, and GeoCities; Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 9 (39) Claim 21 as unpatentable over GeoCities and Coleman; (40) Claim 21 as unpatentable over ICQ and Coleman; (41) Claim 21 as unpatenable over ICQ 98a and Coleman; (42) Claim 21 as unpatentable over de Hond and Coleman; (43) Claim 21 as unpatentable over Robertson and Coleman; (44) Claims 23-25 as unpatentable over GeoCities and Yahoo!; (45) Claims 23-25 as unpatentable over ICQ, and Yahoo!; (46) Claims 23-25 as unpatentable over ICQ 98a and Yahoo!; (47) Claims 23-25 as unpatentable over de Hond and Yahoo!; (48) Claim 26 as unpatentable over GeoCities; (49) Claim 26 as unpatentable over ICQ 98a; and (50) Claim 26 as unpatentable over Robertson. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 10 II. ANALYSIS A. PATENT OWNER’S APPEAL By our count, the Examiner entered; (a) nine grounds of rejection based on anticipation under 35 U.S.C. § 102 (numbered (1)-(9) in this opinion); (b) seven grounds of rejection based on obviousness under 35 U.S.C. § 103(a) (numbered (10)-(16)); and (c) one ground under 35 U.S.C. § 112 (numbered (17)). The Patent Owner submits that the Examiner has not established an appropriate prima facie basis for any of those rejections. We observe also that the Patent Owner contends that it has provided sufficient evidence directed to “secondary indicia of non-obviousness” so as to outweigh the above-noted rejections premised on obviousness. (PO App. Br.7-8; PO Reb. Br. 5-6.) 1. Initial Matter At the outset, we observe that the Patent Owner, in its Rebuttal Brief, contends that the Examiner’s Answer contains a procedural irregularity requiring that, pursuant to § 2677 of the Manual of Patent Examination Procedure, “the proceeding must be remanded to the Examiner.” (PO Reb. Br. 3.) According to the Patent Owner, that irregularity follows from the statement appearing in the Examiner’s Answer that the grounds of rejection set forth in the RAN are incorporated by reference and are maintained by the Examiner. (Id. at 1-2; see also Ans., 1.) In that regard, the Patent Owner is of the view that the Answer does not address adequately the patentability arguments it has submitted in support of the claims, and in doing so “the Examiner fails to raise even a prima facia [sic] case of” the unpatentability of the involved claims. (Id. at 2.) Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 11 The Patent Owner’s contention is misplaced. We understand the Examiner’s Answer and its incorporation by reference of the RAN as constituting the Examiner’s response to the arguments raised by the Patent Owner in its Appeal Brief. The remedy to any such insufficiency of argument by the Examiner would be reversal based on the unpersuasiveness of the argument. Given that the appeal at hand has been fully briefed by the parties and the Office has set forth its position as reflected in the Examiner’s Answer, it is the Board’s obligation, pursuant to 35 U.S.C. §§ 6(b)(2), 134(b) and 315(a), to now decide the appeal. Accordingly, we turn to the evaluation of the claim rejections which have given rise to the Patent Owner’s Appeal. 2. Claim Construction In assessing the merits of the rejections that are before us, we find it necessary to interpret the claims. In particular, we must ascertain whether the methods of claims 1 and 26 require that each and every step contained therein must be performed by an interface server computer. The Patent Owner submits that an interface server computer is so required to perform each and every step (PO App. Br., 5-6), whereas the Requester takes an opposing position. (Req. Resp. Br., 2-3). Each of claims 1 and 26 includes multiple similar steps which make up their respective recited methods. Of those claims steps, several expressly recite that the particular step is performed “by said interface server.” (2010 PO Amend., 2 and 6.) There is no dispute that those steps must be performed by a server. Instead, the dispute centers on the other steps of the claims which do not individually associate a server with performing the Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 12 particular step. The Patent Owner’s position that the steps are performed by a server is based on language appearing in each preamble of claims 1 and 26. In particular, the preamble of each of claims 1 and 26 is reproduced below: A method for providing individual online presences for a [sic] each of a plurality of members of a group of members by an interface server computer comprising the steps of: (Id.) The Patent Owner contends that given the above-noted recitation that the method is generally performed “by an interface server computer,” every associated step that makes up the method must necessarily be performed by that server. (PO App. Br., 5-6.) In challenging that contention, the Requester urges that the “by an interface server computer” recitation in the preamble does not limit the claims in the manner proposed by the Patent Owner. (Req. Resp. Br., 2-3). After careful consideration of the record before us, we are persuaded that the Requester’s position is correct. As noted by the Requester, each of claims 1 and 26 includes explicit recitation that certain steps within the body of the claim are performed either “by an interface server” or “by said interface server computer,” whereas other steps include no such recitation. (See 2010 PO Amend., 2, 5-6.) That some steps individually recite that their performance is accomplished by the server computer, and others do not, suggests that all the steps need not be performed by the server computer. The Patent Owner, citing to the Manual of Patent Examining Procedure § 2110.02, contends that the preambles of the claims are “necessary to give life, meaning, and vitality” to the claims, and should therefore be construed as part of the balance of the claims. (PO App. Br., 5.) However, even assuming that is true, the contention is misplaced. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 13 During reexamination, claims are given their broadest reasonable construction consistent with the specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). That the preamble of each of claims 1 and 26 specifies that the method is generally performed “by an interface server computer” does not mean that all steps need be so performed. In that regard, the method reasonably is understood as being performed by the server computer if at least some of the steps are executed by that component. If the Patent Owner intended that each step be carried out by the interface server computer, it was the Patent Owner’s opportunity and responsibility to remove ambiguity in that regard by way of amendment to the claims. See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Indeed, the ’122 Patent itself conveys the following with respect to contemplated components which may perform particular described functions: [A]lthough certain functions have been described herein as being provided by an interface server computer, those functions may be provided by one or more other devices. (’122 Patent, 13:57-58.) Thus, the ’122 Patent contemplates that devices other than an interface server computer may perform functions of the invention described therein. We are cognizant of the Patent Owner’s contention that the above- noted portion of the ’122 Patent recitation describes alternative embodiments that have been “expressly disavowed” through the recitation of “by an interface server computer” in the preambles of claims 1 and 26. (PO Reb. Br., 3-4.) However, the contention does not account for the broadest reasonable interpretation of the phrase “by an interface server computer” Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 14 appearing in the preamble. As discussed, above the methods of claims 1 and 26 are understood reasonably as being performed “by an interface server computer” if at least some of the steps are performed by that component. After consideration of the respective positions of the parties, and for the foregoing reasons, we construe the phrase “by an interface server computer” in the preamble of claims 1 and 26 as not requiring that all recited steps are performed by an interface server computer. In that regard, and with particular reference to those claims, we conclude that the recited “maintaining…,” “allotting…,” and “associating…” steps need not be performed by an interface server computer. With respect to the remaining terms of the claims, we observe that during reexamination there is a “heavy presumption” that a claim term is given its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Indeed, the ordinary and customary meaning as would be understood by one with ordinary skill in the art usually applies unless an inventor has acted as his or her own lexicographer and has set forth a special meaning for a claim term. Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). Furthermore, in some cases, the ordinary meaning of claim language to one of ordinary skill in the art is readily apparent even to lay judges such that claim construction “involves little more than the application of the widely accepted meaning of commonly understood words.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Here, the inventors of the ’122 Patent have not acted as their own lexicographers. There is also no dispute as between the parties or the Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 15 Examiner as to the meaning of any claim terms beyond the “by an interface server” of the preambles of claims 1 and 26. Accordingly, we construe all terms of the claims involved in this appeal as having their ordinary and customary meaning as would be understood by one with ordinary skill in the art. 3. The 35 U.S.C. § 112 Rejection The Examiner rejected claims 16 and 17 as failing to comply with the written description requirement of § 112, first paragraph. (RAN, 44.) Claim 16 depends ultimately from claim 1. Claim 17 depends from claim 16. Claim 16 adds the step of “sending by said server a message to a telephone of said individual member in response to receiving said message entered into said message entry interface.” (Req. App. Br., 32.) In rejecting claims 16 and 17, the Examiner “incorporate[s]” into the RAN “pages 8 and 9 of third party’s comments.” (RAN, 44.) We understand the “comments” as being those submitted by Requester on December 16, 2010.9 According to the comments, claim 16 encompasses more in scope than is described in the specification of the ’122 Patent. In particular, citing to column 8, lines 63-67 of the’122 Patent, Requester contends that “[t]he written description makes clear that the alleged invention is capable of sending an email message to a telephone only when no fax number for the member is present in the database.” (2010 Req. Com., 8) (emphasis in original.) Column 8, lines 63-67 reads: 9 See “Requester’s Comments on Patent Owner’s Response in Inter Partes Reexamination of U.S. Patent No. 7,644,122” filed December 16, 2010 (“2010 Req. Com.”). Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 16 If no fax number for the recipient is found in the contact information obtained from the contact data base at step 545, the e-mail message is converted to a voice message at step 550 and delivered as a voice message to the recipient’s telephone number at step 554. The above-quoted portion describes an embodiment of the invention of the ’122 Patent in which, given a particular circumstance, i.e., no fax number for a recipient is found, an e-mail message is converted to a voice message and delivered to a recipient’s telephone number. The ’122 Patent also describes the conversion process with respect to the above-noted embodiments as well as “more embodiments.” (’122 Patent, 8:67-9:2.) That process is laid out at columns 9 and 10 and is illustrated in Figure 7. To satisfy the written description requirement of 35 U.S.C. § 112, an applicant must convey with reasonable clarity to those skilled in the art that he or she was in possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). One shows “possession” of the invention by describing the invention using such descriptive means as words, structures, and figures. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Furthermore, a single disclosed embodiment may provide written description support for a generic claim that encompasses more embodiments. Bilstad v. Wakalopulous, 386 F.3d 1116, 1124 (Fed Cir. 2004). Here, as noted above, the ’122 Patent discloses one embodiment in which a particular factual scenario gives rise to the conversion of an e-mail to voice message conversion and delivery of that message to a telephone, i.e., the absence of a fax number. However, while that particular Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 17 embodiment accounts for the absence of a fax number, it is not apparent that the process as described at columns 9 and 10 and Figure 7 would be different in the circumstance in which a fax number is present. That is, those columns and that Figure do not set forth that either the absence or the presence of a fax number has any impact on the operation of converting an e-mail to a voice mail message and the subsequent delivery of the message to a recipient’s telephone number. Moreover, the ’122 Patent also conveys that other embodiments may also employ that operation. We do not discern that those additional contemplated embodiments would have been understood as requiring the absence of a fax number to the exclusion of all other scenarios. Upon review of the record before us, we are not persuaded that the ’122 Patent lacks adequate written description of the content of claims 16 and 17 so as to convey that the inventors did not have possession of that content. We, therefore, reject Requester’s argument to the contrary. We do not sustain Examiner’s decision to reject claims 16 and 17 under 35 U.S.C. 112, first paragraph. 4. The Anticipation Rejections The nine anticipation rejections (numbered (1)-(9) in this opinion) involved in the Patent Owner’s Appeal are applied to claims 1-2510 and incorporate each of GeoCities, ICQ, de Hond, Robertson and ICQ 98a. 10 No anticipation rejection was adopted for claim 26. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 18 a. GeoCities The Examiner adopted rejections of claims 1-15 and 18-25 as anticipated by GeoCities (rejections numbered (1) and (6) in this opinion). GeoCities is a “guide” directed to the creation of Web sites. In that regard, the guide presents a series of Chapters describing various tools available for Web site development. (See Geocities “Contents” section.) The Patent Owner challenges the Examiner’s finding of anticipation. According to the Patent Owner, GeoCities does not disclose that a server performs all the steps set forth in the claims (id. at 8), and also that it lacks certain features of each of claims 1, 2, 3, 8, 9, 12, 18, 19, 21, and 2311 (id. at 9-12; 28-30). i. Claim 1 At the outset, we observe that claim 1 does not require that all features of the claim need be performed by a server. Thus, the Patent Owner’s blanket assertion (PO App. Br., 8) that GeoCities is deficient as an anticipatory disclosure because it allegedly does not disclose servers performing every step of the claims is misplaced. As discussed above, claim 1 does not require that certain steps, such as the “allotting” and “associating” steps appearing therein, must be performed by any particular component, such as a server. Therefore, the Patent Owner’s argument alleging that GeoCities does not set forth a server so performing those steps is unavailing. (See PO Reb. Br., 6) 11 No separate patentability arguments are advanced for claims 4-7, 10, 11, 13-17, 20, 22, 24, and 25. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 19 The Patent Owner also contends that GeoCities lacks disclosure of the “first control” and “second control” of claim 1. (PO App. Br., 8-9.) The Examiner pointed to a component termed “My Guestbook” as forming a first control and a component termed “E-Mail Me” as forming the second control. (RAN, 6.) As is disclosed in GeoCities, those two components are tools or buttons appearing on a member’s web page and provide certain functionality when selected. (GeoCities, 193.) Specifically, “My Guestbook” is a feature that “allows visitors to leave you messages as well as comments and feedback about your site,” and “E-Mail Me” is button that “allows visitors to e-mail you directly at the e-mail address of your choice.” (Id.) There is no dispute that the “My Guestbook” control provides the functionality of “for submitting a comment about said individual member” as laid out in claim 1. Neither is there any dispute that the “E-mail Me” control allows “for sending a message other than said comment to said individual member.” Rather, the underlying basis of the Patent Owner’s argument is that those controls are something that may be “chosen,” or are “optional,” and which are not included on a member’s home page by “default.” (PO App. Br., 8-9.) Evidently, according to the Patent Owner, if the controls are optional, or not provided by default, then GeoCities cannot anticipate claim 1. The argument, however, is misguided. Even if GeoCities does express that a feature may optionally be included, that does not mean that the reference somehow lacks disclosure of the feature. Indeed, that the control is expressed as an available option to be, or not be, selected is disclosure of both the presence and the absence of the feature. It Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 20 is not somehow a lack of disclosure of the feature as urged by the Patent Owner. Anticipation is established when a single prior art reference discloses all elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). After a careful evaluation of the record before us, including the content of GeoCities’ disclosure and the arguments submitted by the Patent Owner, we are unpersuaded that GeoCities lacks disclose of all the features of claim 1. Accordingly, we sustain the rejection of claim 1 as anticipated by GeoCities. ii. Claims 4-7, 10, 11, 15, 17, 20, and 22 Claims 4-7, 10, 11, 15, 17, 20, and 22 ultimately depend on, and are argued collectively with, claim 1. The Patent Owner has not shown error in the Examiner’s rejection of those dependent claims. We also sustain the rejection of claims 4-7, 10, 11, 15, 17, 20, and 22 as anticipated by GeoCities. iii. Claim 2 Claim 2 depends from claim 1 and adds the limitation “further comprising the step of providing by said interface server computer a message entry interface in response to activation of said second control.” (2010 PO Amend., 2.) In rejecting claim 2, the Examiner finds that GeoCities discloses, at pages 271-274, that selection of the “E-mail me” feature, i.e., the second control, activates Netscape and Outlet Express programs that operate to provide a message entry interface. (RAN, 7.) The Examiner also concludes that GeoCities discloses a “Web server” as an interface server computer that so provides the message entry interface. (Id.; Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 21 see also 5.) The Requester echoes the position of the Examiner. (Req. Resp. Br., 5-7.) The Patent Owner has a different view. In particular, the Patent Owner urges that the Netscape or Outlook Express programs run on the member’s own computer and the message entry interfaces they provide are thus not “by a server.” (PO App. Br., 10.) There is no disagreement among the Patent Owner, the Examiner, and the Requester that it is programs disclosed in GeoCities that allow for the creation of a message entry interface in response to activation of a control. There is also no disagreement that, as a part of GeoCities’ disclosure, there exists a user or member’s computer and a server computer component accessible via the Internet or “Web.” As noted above, the question is what GeoCities discloses with regard to which one of those computer devices provides the message entry interface arising from selection of the “E-mail me” feature. In reviewing GeoCities’ disclosure, we are of the opinion that it does not provide a definitive answer to the above-noted question. We are cognizant of the Requester’s position that other portions of GeoCities describe that a “special program” residing on a Web server processes certain HTML forms that also serve as message entry interfaces. (Req. Resp. Br., 6, citing GeoCities at pp. 235-240.) However, lacking from those additional portions of GeoCities is suitable disclosure that selecting the “E-mail Me” control also enlists the functionality of a program on the GeoCities web server. It is, however, the specific “Email Me” control that the Examiner has relied upon as the second control required by claim 2 in urging anticipation. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 22 “[T]he hallmark of anticipation is prior invention,” which means that to anticipate, a reference must not only disclose “all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Here, even if a skilled artisan may apply GeoCities’ teachings with respect to providing HTML forms via a Web server to other functional aspects of its communication system, that is, in our view, insufficient to establish that GeoCities itself conveys the same functionality with respect to its “E-mail Me” feature. See Net MoneyIN, Inc. 545 F.3d 1359 at 1371 (For anticipation, “it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.”) For the foregoing reasons, we are of the opinion that the Examiner has not established adequately that GeoCities discloses all the limitations of dependent claim 2 so arranged in the manner required by the claim. Accordingly, we do not sustain the Examiner’s rejection of claim 2 as anticipated by GeoCities. iv. Claims 8, 12-14, 18, and 19 Claims 8 and 12-14 depend from claim 2. Claims 18 and 19 depend from claim 8. Claims 8, 12-14, 18, and 19 thus require all the limitations of claim 2. Because we are not persuaded that GeoCities discloses every limitation required by claim 2, we also do not sustain the rejection of claims 8 and 12-14 as anticipated by GeoCities. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 23 v. Claims 3 and 9 Claim 3 depends from claim 1 and adds the feature “further comprising the step of providing by said interface server computer a comment entry interface in response to activation of said first control.” (2010 PO Amend., 2.) Claim 9 depends from claim 3 and is argued based on the content of claim 3. In rejecting claim 3, the Examiner relied on GeoCities’ “Guestbook” feature. (RAN, 8.) As discussed above, that feature is disclosed as a selectable link that allows for a visitor to a member’s Web site to provide messages and comments about the site. (See GeoCities, 193.) The dispute with respect to claim 3 is similar in nature to the dispute arising in connection with claim 2. Namely, the Patent Owner contends that the comment entry interface generated by selecting GeoCities’ “Guestbook” is not one provided by the interface server computer. (PO App. Br., 10.) The Examiner and the Requester do not agree with that contention. Although the Examiner generally contends that GeoCities’ Web servers perform the function attributed to the “Guestbook” feature, the Examiner does not point to content of GeoCities in support of that contention. The portions of GeoCities on which the Examiner relies makes clear that the “Guestbook” control allows for comment entry (see GeoCities, 193 and 196-197.) However, simply put, those portions do not provide elucidation as to which component actually provide the particular functionality. As we observed above with respect to claim 2, although a skilled artisan may appreciate from the content of GeoCities as a whole that Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 24 a Web server is an option for so providing the pertinent functionality, that is insufficient to establish that GeoCities itself anticipates claim 3. Accordingly, we do not sustain the rejection of claims 3 and 9 as anticipated by GeoCities. vi. Claim 21 Claim 21 depends from claim 1 and adds the limitation: “wherein said individual home page further comprises a third control separate from said first and second controls for providing a map indicating a location of said member.” (2010 PO Amend, 5.) The Examiner points to GeoCities’ disclosure at page 95 and 139 of a “Link” as forming the required third control. (RAN, 45.) In challenging the Examiner’s rejection, the Patent Owner makes the following argument: The “Link” disclosed by GeoCities is not found on any home page associated by the GeoCities servers with the URL of a member, but is a link that a member can manually add to a web page created by the member. (PO App. Br., 29) (emphasis in original). The basis of the Patent Owner’s arguments stems from the following disclosures in Geocities: Link Choosing Link asks you to select a Web address, a file in your directory, or an e-mail address that you would like to link to. First, you must select an object that you want to be the link (what visitors will click upon) and then click on the Link button. (GeoCities, 95.) The above-quoted portion of GeoCities appears in a section describing a “GeoBuilder” tool that is used by a member in creating and designing their home page. (See id. at 89.) The “Link” feature is an option Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 25 to a member for adding a particular selectable object or link on the home page. As such an object, the “Link” is understood readily as a control appearing on the home page and presented for selection by a visitor to the page. The Patent Owner’s argument is misplaced that the “Link” is not the required third control because a member in designing their page must initially take action to enable the functionality. Once the “Link” is established it thereafter appears on the home page. Claim 21 does not somehow preclude the act of adding such a Link to the home page, as is suggested by the Patent Owner. We are not persuaded of error in the Examiner’s rejection of claim 21 as anticipated by GeoCities. We sustain the rejection. vii. Claims 23-25 Claim 25 depends from claim 24 and claim 24 depends from claim 23. Claim 23 depends from claim 1 and adds the feature: “providing by said interface server computer a user interface comprising a member search data entry area for receiving search data for a member of said group of members.” (2010 PO Amend., 5.) The Examiner relies in-part on GeoCities’ disclosure at page 208. That page describes a “GeoCities Search Box” feature that may be added to a Web page. The page also describes the procedures that a member goes through to implement the functionality of the “GeoCities Search Box” onto their page. Those procedures include initial action by a member, such as applying HTML code to the Web page. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 26 As with claim 21, the Patent Owner postulates that claim 23 is not anticipated by GeoCities because of the initial actions necessary by a user in importing the “Search Box” functionality onto a Web page. (See PO App. Br., 30.) The Patent Owner’s argument, however, is unpersuasive. Claim 23 does not preclude action by a member in designing their Web page to incorporate the “Search Box” feature on the page. We reject Patent Owner’s argument in that regard. Accordingly, we sustain the rejection of claims 23-25 as anticipated by GeoCities. b. ICQ The Examiner rejected claims 1-4, 6-9, 12-14, 16, 20 and 22-25 as anticipated by ICQ (rejections numbered (2) and (7) in this opinion). ICQ is characterized as a “guide” conveying information with respect to the computer program “ICQ.” (ICQ Introduction.) “ICQ” is understood as an acronym or abbreviation for “I seek you.” (id. at Chapter 1, p. 7.) By way of introduction, the ICQ reference generally summarizes its content as follows: Everybody uses ICQ to chat and exchange messages. We’ll show you how to do the conventional stuff. And we’ll also tell you about the 101 other ICQ features. For example, we’ll show you how to find people in the ICQ community who share your interests, exchange files and other items with ICQ members, and search the Internet from ICQ. We’ll show you how to maintain your privacy and still reach into every corner of ICQ. (Id. at Introduction.) The Patent Owner argues dependent claims 4, 6, 7, 9 and 20 collectively with independent claim 1. The Patent Owner submits separate arguments for each of claims 2, 3, 12, 16, 22, and 23. Claims 8, 13, and 14 ultimately depend from claim 2, claim 9 depends from claim 3, and Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 27 claims 24 and 25 ultimately depend from claim 23. We consider the claims in the following groupings: (1) claims 1, 4, 6, 7, and 20; (2) claims 2, 8, 13, and 14; (3) claims 3 and 9; (4) claim 12; (5) claim 16; (6) claim 22; and (7) claims 23-25. i. Claims 1, 4, 6, 7, and 20 In rejecting claim 1 based on ICQ, the Examiner assesses in detail where ICQ discloses the features required by the above-noted claims. (E.g., RAN 12-17.) In challenging the Examiner’s assessment of ICQ, the Patent Owner argues that certain features of claim 1 are absent from ICQ. In particular, Patent Owner contends that ICQ does not disclose that specific steps required by claim 1 are performed “in said database system.” (PO App. Br., 13.) In the rejections proposed by the Requester and adopted by the Examiner, ICQ’s disclosure of a “Message Archive” is equated with the database set forth in claim 1. (See RAN, 12.) Pointing to content of ICQ at page 260, the Examiner submits that the Message Archive performs steps of claim 1. (Id.) The Patent Owner argues that there is a distinction between ICQ’s Message Archive and the required database in that the Message Archive is urged as software “maintained on the user’s computer” and “not on the ICQ servers.” (PO App. Br., 13) (emphasis in original). According to the Patent Owner, that is a difference which distinguishes ICQ’s disclosure over the requirements of claim 1. On this record, we do not agree. As is evident from the Patent Owner’s Rebuttal Brief, the Patent Owner is of the view that claim 1 requires that the database be “maintained by the claimed server” and that ICQ’s Message Archive is not so Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 28 maintained. (See PO Reb. Br., 8) (emphasis in original). Yet, as discussed supra, we conclude that the “maintaining the database. . .” step of claim 1 is not tethered to operation of an interface server computer or other particular computer. In reviewing the record, ICQ’s “Message Archive,” as described for instance beginning on page 260, is understood reasonably as performing the steps of claim 1 directed to the database system. That is the position which is advocated by the Examiner and the Requester. (See RAN, 12; Req. Resp. Br., 8.) That the Message Archive may be maintained, in part or in whole, on a user’s computer rather than in some other location, such as an interface server computer, is of no moment. In other words, even assuming that ICQ’s Message Archive is maintained on the user’s computer, that itself does not render ICQ’s disclosure as beyond the scope of claim 1. We are thus unpersuaded by the Patent Owner’s argument. The Patent Owner also takes the position that claim 1’s requirement of a “control” that allows for the submission of a comment about an individual member (expressed in claim 1 as a “first control”) is lacking from ICQ. (PO App. Br., 13-14.) In accounting for that control, the Examiner relies on ICQ’s disclosure of a “Guestbook” option for the submission of comments. (RAN 13, citing ICQ pp. 203-204.) ICQ’s “Guestbook” is disclosed as a screen that constitutes “a place where visitors to a site can enter their names, other information, and perhaps a comment or two about the site.” (ICQ, 203-204.) As shown, for instance, at Figure 11-6 on page 200 of ICQ, the “Guestbook” may be accessed from the “My Personal Communication Center” of a member’s “My Personal ICQ Homepage.” We thus share the view of the Examiner and the Requester Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 29 (Req. Resp. Br., 8-9) that ICQ’s “Guestbook” constitutes a control associated with and accessed from an individual home page and allows for comment submission. According to the Patent Owner, ICQ’s “Guestbook” is not the required control because it is not “on the individual home page” and is instead a feature that is instead something added “to a different web-like page.” (PO App. Br., 14, emphasis removed; see also PO Reb. Br., 8-9.) The Patent’s argument is misplaced. The claims do not require that the control be “on” the home page. Indeed, the claims do not require any particular association of the first control with the home page. Moreover, even were we to assume that claims do require that the control be located “on” the homepage, that is what is disclosed in ICQ. As noted above, the reference sets forth, for instance at page 200, that the Guestbook feature is an available tool that is located on, and accessed from, the member’s homepage. We reject the Patent Owner’s argument to the contrary. We have considered the Patent Owner’s arguments, but for the foregoing reasons we are not persuaded that they show error in the Examiner’s rejection of claims 1, 4, 6, 7, and 20. In light of the record before us, we sustain the rejection of claims as anticipated by ICQ. ii. Claims 2, 8, 13, and 14 Claims 8, 13, and 14 ultimately depend from claim 2. As discussed above, claim 2 adds to claim 1 the feature: “further comprising the step of providing by said interface server computer a message entry interface in response to activation of said second control.” (2010 PO Amend., 2.) According to the Examiner and the Requester, the above-noted limitation of Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 30 claim 2 is disclosed at page 163 in connection with the “My Email Express” hyperlink that allows for sending of an email message. (RAN, 14; Req. Resp. Br., 9.) In challenging the anticipation rejection of claim 2, the Patent Owner is of the view that ICQ “does not disclose the server providing a message entry interface [.]” (PO App. Br., 15) (emphasis in original). Specifically, the Patent Owner argues that the “My Email Express” option in ICQ is provided by a user’s own computer rather than by the “interface server” and, as a result, the “by said interface server computer” aspect of claim 2 is absent from the disclosure of ICQ at page 163. (PO App. Br., 13-14; PO Reb. Br., 9-10.) Having reviewed the respective positions of the Examiner (and Requester) and the Patent Owner, we are unpersuaded that the portion of ICQ on which the Examiner relies discloses the features required by claim 2. In that regard, it simply is not evident where ICQ sets forth that the operability associated with the “My Email Express” control is accomplished by the interface server computer itself. The discussion of “My Email Express” at page 163 does not convey that the specific function of that component is performed by an interface server computer. We are cognizant of the Requester’s view that because the software that creates the “My Email Express” control may initially be downloaded from the ICQ servers, that is sufficient to meet claim 2. (Req. Resp. Br., 9.) We, however, do not share that view. Claim 2 expressly requires that the message entry interface is provided by the interface server computer “in response to activation of said second control.” It does not follow that an Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 31 initial download of software from the ICQ server which ultimately creates the “My Email Express” on a user’s computer control means that a message interface is provided by the server computer “in response to” activation of that control. Accordingly, on the record before us, we are unpersuaded that the Examiner has established adequately that ICQ discloses all the features of claim 2. We, therefore, do not sustain the rejection of claims 2, 8, 13, and 14 as anticipated by ICQ. iii. Claims 3 and 9 Claim 9 depends from claim 3. Claim 3 depends from claim 1 and adds the feature: “further comprising the step of providing by said interface server computer a comment entry interface in response to activation of said first control.” (2010 PO Amend, 2.) The dispute between the parties with respect to claim 3 is similar in nature to that discussed above in connection with claim 2. Namely, claim 3 similarly requires that a comment entry interface is provide “by said interface server computer” in response to the activation of a control, in this case, a first control. The Examiner relied upon ICQ’s disclosure of a “Guestbook” control option as constituting the first control. (RAN, 14.) As discussed above in connection with claim 1, we agree with the Examiner that ICQ’s “Guestbook” constitutes a first control that provides a comment entry interface. However, similar to our analysis above with respect to claim 2, we are unpersuaded that the operation of the “Guestbook” control is necessarily performed “by said interface server computer.” Although the Examiner has made that assertion, lacking from the record Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 32 before us is suitable underlying support for the assertion. In that regard, it is not apparent that the “Guestbook” functionality set forth, for instance, at pages 203 of ICQ is accomplished by the interface server computer. As that is an express requirement of claim 3, we do not sustain the Examiner’s rejection of claim 3 or claim 9 as anticipated by ICQ. iv. Claim 12 Claim 12 ultimately depends from claim 2. As discussed above with respect to claim 2, we find that the Examiner has not established sufficiently that ICQ discloses the features required by claim 2. Accordingly, for the same reason, we do not sustain the rejection of claim 12 as anticipated by ICQ. v. Claim 16 Claim 16 depends from claim 8 which depends from claim 2. The Examiner has not accounted appropriately for the features of claim 2. We do not sustain the rejection of claim 16 as anticipated by ICQ. vi. Claim 22 Claim 22 depends from claim 1 and adds the feature “wherein said individual home page further comprises a link to a homepage of said interface server computer.” (2010 PO Amend., 5.) Thus, the claim requires that an individual’s home page incorporate a link to a homepage of the interface server computer. The Examiner contends that the above-noted feature is satisfied by disclosure in ICQ at page 162 directed to a “My ICQ” link (RAN, 48), which is reproduced below: Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 33 My ICQ: Links visitors can click (if they are ICQ members) to add you to their Contact lists, invite you for a chat, and learn about you in the White pages. We do not discern where the above-quoted portion sets forth that the link of a homepage is one characterized as being “of said interface server computer.” The Examiner provides no elucidation in that regard. The Requester generally takes the position that the reference in claim 22 of “a homepage” encompasses any homepage, including that of the “My ICQ” link. (Req. Resp. Br., 16.) That position, however, neglects to account for the requirement that the homepage which is linked must be one regarded as “of said interface server computer.” In that regard, simply linking to any homepage does not suffice. For the foregoing reasons, we do not sustain the rejection of claim 22 as anticipated by ICQ. vii. Claims 23-25 Claim 23 depends from claim 1 and adds the limitation: “providing by said interface server computer a user interface comprising a member search data entry area for receiving search data for a member of said group of members.” (2010 PO Amend., 5.) The Examiner points to Figure 7-1 at page 108 of ICQ as disclosing that feature. (RAN, 48.) ICQ’s Figure 7-1 depicts a “ICQ Global Directory Search Engine” that allows for the entry of data in connection with a particular user or member, i.e., a member search data entry area. Lacking from Figure 7-1, or other associated description of the Figure, however, is suitable explanation conveying that it is the interface server computer so providing the data entry Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 34 area. Neither the Examiner nor the Requester directs us to any other disclosure in ICQ setting forth that the reference contemplates that it is the interface server computer providing the content of claim 23. We do not sustain the rejection of claims 23-25 as anticipated by ICQ. c. de Hond The Examiner rejected claims 1-5, 7-9, 11, 13-15, 20, 23, and 24 as anticipated by de Hond. The Patent Owner argues claims 3-5, 7, 9, 11, 13- 15, 20, 23, and 24 collectively with claim 1. The Patent Owner submits separate arguments for each of claims 2 and 8. i. Claims 1, 3-5, 7, 9, 11, 13-15, 20, 23, and 24 Claim 1 includes the following steps: allotting individual URLS to each of said plurality of members by associating an individual URL with each individual member of said plurality of members in said database system. associating an individual home page for each said individual member of said plurality of members with said individual URL allotted to said individual member in said database system[.] (2010 PO Amend, 2.) According to the Patent Owner, the above-quoted steps require that it is a server that must operate to allot the URLs to members and associates individual home pages with the URLs. (PO App. Br., 15-16.) The Patent Owner concludes that de Hond thus does not disclose the above-noted steps of claim 1. We do not agree. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 35 At the outset, we do not agree that the allotting and associating actions set forth in claim 1 need be performed by any particular component, such as a server. In that regard, the claim does not impose restrictions as to how or by what entity the URLs are allotted or individual home pages are associated with the URLs. de Hond is directed to systems for designing databases and for displaying results of database searches. (de Hond, 1:8-12.) As a part of the system, a Web page is generated for each user that takes on the appearance of a virtual “house” composed of a series of graphical icons and which is accessible via the Internet. (E.g., see id. at Abstract; 3:35-60; Fig. 10.) A “URL” is understood by those of ordinary skill in the art as an address or location for a Web page on the World Wide Web, i.e., the Internet. (E.g., see id. at 9:47-50.) The generation of individual Web accessible pages or virtual “houses” in de Hond for the users of its system is understood readily as conveying that a web location or “URL” has been allocated or allotted to each virtual “house.” Furthermore, with respect to the “associating” step, we observe that, as noted by each of the Examiner (RAN, 20) and the Requester (Req. Resp. Br., 10), de Hond discloses that, in one disclosed embodiment, “a link” to a user’s home page may be added to the user’s “house.” (de Hond, 8:56-57.) That a link to a homepage is added to a user’s virtual “house” conveys readily that an individual home page is associated with the Web location or URL that identifies the “house” in the manner that is required by claim 1. The Patent Owner also contends that de Hond lacks disclosure of the “first control” that is required by claim 1. The Examiner relies on de Hond’s component 126 as constituting a first control that allows for the submission Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 36 of a “comment(chat)” about an individual member. (RAN, 19.) Component 126 is described as an icon which may be “selected” by a user for opening a “chat box” and which allows contact and communicate with the “owner” of the virtual house. (de Hond, 10:21-31.) The Patent Owner attempts to draw some distinction between the “chat” box disclosed in de Hond and a “comment” as required by claim 1. To that end, the Patent Owner alleges that a “chat control” is not a “control for submitting a comment” stating: As one of skill in the art knows, a “chat control” is not a “control for submitting a comment”, as claimed. A “comment” is a statement that about [sic] a member that is stored and is visible to subsequent members who visit a member’s web page. A “chat” is a real time conversation that is not stored and not visible to subsequent members who visit the member’s web page. (PO App. Br., 16.) The Patent Owner does not explain meaningfully how it arrives at its purported distinction between “chat” and “comment.” Neither does it offer suitable evidence in support of that alleged distinction. Indeed, the alleged support is the very content of de Hond noted above concerning the functionality of de Hond’s icon 126 in allowing contact and communication with the owner of the “house.” (Id. at 16-17.) We are not persuaded by the Patent Owner’s speculative position that the contact and communication functions attributed to the chat box accessed via icon 126 is somehow distinguished from the “comment” submission set forth in claim 1. Lastly, the Patent Owner also argues that de Hond lacks disclosure of the step in claim 1 of “receiving by said interface server an online request for said individual URL from a requesting source.” (See id. at 17; 2010 Amend., 2.) That argument is also unpersuasive. de Hond conveys that a Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 37 user of its system may request access to a particular virtual house through a search or query submitted to server 12. (de Hond, 10:7-11:48; Fig. 10.) A request submitted to server 12 for access to a virtual house would have been appreciated by a skilled artisan as a request for the Web location, i.e., the URL. Upon consideration of the record, and for the foregoing reasons, we do not discern that de Hond lacks disclosure of any features required by independent claim 1 or dependent claims 3-5, 7, 9, 11, 13-15, 20, 23, and 24. Accordingly, we sustain the rejection of those claims as anticipated by de Hond. ii. Claim 2 Claim 2, which depends from claim 1, requires that a message entry interface is provided by an interface server computer in response to the activation of a second control. In rejecting claim 2, the Examiner relies on content of de Hond at column 10, lines 32-35. (RAN, 19.) That portion of de Hond describes an “icon” 128 appearing on a screen depicted, for instance, at Figure 10, which allows a user to send an e-mail to the owner of a “house” by selecting or clicking the icon. According to the Patent Owner, the e-mail functionality that arises by selecting icon 128 is not disclosed in de Hond as being attributed to a server. (PO App. Br., 17-18.) de Hond discloses that “Figs. 6-16 illustrate screens generated by the server 12 in one specific embodiment of the invention, in which the Internet is used to connect the server 12 to the clients.” (de Hond, 8:58-60.) Thus, the screen of Figure 10 which depicts icon 128 is one that is “generated” by server 12, and it is from that screen that clicking the icon provides an e-mail Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 38 interface, i.e., a message entry interface. Although, the Patent Owner characterizes de Hond’s disclosure as being limited to functionality of a user’s local computer rather than a server, the Patent Owner does not adequately account for the above-noted disclosure of de Hond. It simply is not evident why a server which generates the screen on which icon 128 resides does not “provide” the icon and its associated functionality. In light of the record before us, we are persuaded that de Hond discloses all the features of claim 2. We sustain the rejection of that claim as anticipated by de Hond. iii. Claim 8 Claim 8 depends from claim 2 and adds the limitation: “further comprising the step of receiving by said interface server computer a message entered into said message entry interface.” In rejecting claim 8, the Examiner makes reference to de Hond at column 12, lines 21-25. (RAN, 21.) The noted portion of de Hond is reproduced below: FIG. 15 illustrates a screen using which a user can check his or her e-mail. The screen includes a graphical representation 146 of a mailbox, an area 148 where new mail items are listed or indicated, and an area 150 where items that already have been read are listed or indicated. Thus, the above-noted portion describes the content of de Hond’s Figure 15 illustrating a screen by which a user may check their e-mail. Like claim 2, the Patent Owner is generally of the view that de Hond does not describe that it is a “server” which performs the functions set forth in claim 8. (PO App. Br., 18.) Yet, as discussed above, de Hond clearly sets forth that server 12 may generate the noted screen. (de Hond, 8:57-59.) In Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 39 generating the screen, server 12 is understood reasonably as providing the message entry interface that is associated with the screen. The Patent Owner does not address de Hond’s disclosure concerning the role of server 12 in creating the screen that is depicted in Figure 15. The Patent Owner also does not explain why a message that is inputted into the message entry interface so generated by the screen is not understood as being received in some fashion by the server. Accordingly, after due consideration of the arguments presented by the Patent Owner, we are unpersuaded that de Hond lacks disclosure of the features set forth in claim 8. We, therefore, sustain the rejection of claim 8 as anticipated by de Hond. d.. Robertson The Examiner rejected claims 1-3, 7-9, 11, 20, 22, and 26 as anticipated by Robertson. Robertson is a paper titled “Web-Based Collaborative Library Research.” The paper describes a system facilitating interaction between a company’s employees and library researchers through a company’s intranet. (Robertson, Abstract.) Claims 1 and 26 each require the following steps: allotting individual URLS to each of said plurality of members by associating an individual URL with each individual member of said plurality of members in said database system. associating an individual home page for each said individual member of said plurality of members with said individual URL allotted to said individual member in said database system[.] Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 40 (2010 PO Amend, 2.) According to the Examiner, those steps are disclosed in Robertson at page 155, column 1, lines 3-4 of the first full paragraph in that column. (RAN, 24.) That paragraph of Robertson is reproduced below: Staff members and library clients both have their own areas on the website which they can get to by clicking the “Staff” or “Clients” book icons. Each staff member and each client has his or her own page. Researchers and clients can get to a list of ongoing research from their individual pages. They can also get from their pages to details of their research usage to date. Clients can use their pages to initiate research requests. The lines of the above-noted paragraph referenced by the Examiner express merely that staff members and clients have their own page coupled with disclosure that “ongoing research” may be accessed from individual pages. Although the Examiner and the Requester (Req. Resp. Br., 12) generally contend that such disclosure satisfies the pertinent “allotting” and “associating” steps that are required by claims 1 and 26, we are not persuaded that the contentions are correct. It is not apparent how the noted statements in Robertson convey that individual URLs have been allotted to multiple members of a database system and individual home pages are associated with the allotted URLs, as is required by the claims. Accordingly, after due consideration of the respective positions of the Patent Owner and the Examiner (and Requester), we are not persuaded that Robertson is properly viewed as an anticipatory disclosure for claims 1 and 26. We, therefore, do not sustain the rejections of those claims or dependent claims 2, 3, 7-9, 11, 20, and 22 as anticipated by Robertson. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 41 e. ICQ 98a The Examiner rejected claims 1, 2, 8, 13, and 14 as anticipated by ICQ 98a. In reviewing the disclosure in ICQ 98a, we observe that it is similar to the disclosure of ICQ. That is a position also shared by the Patent Owner. (PO App. Br., 22.) i. Claim 1 In connection with claim 1, the Patent Owner makes essentially the same arguments that it did with respect to the anticipation rejection involving ICQ. Having reviewed the record, including the assessment of the content of ICQ 98a provided by the Examiner (RAN, 28-30) and the Requester (Req. Resp. Br., 13-14), and for largely the same reasons discussed above in conjunction with ICQ, we are persuaded that ICQ 98a anticipates claim 1. Accordingly, we sustain the rejection. ii. Claims 2, 8, 13, and 14 With respect to the rejection of claim 2, we observe that the Examiner focuses on content of ICQ 98a appearing on page 248 and directed to a feature termed “E-Mail Express.” (RAN, 30.) The functionality and configuration of ICQ 98a’s “E-mail Express” is similar to that of ICQ’s “My E-mail Express.” As discussed above, we were not persuaded that ICQ’s “My E-mail Express” performed the steps “by said interface server computer.” (See supra.) We are similarly not persuaded when it comes to ICQ 98a’s “E-Mail Express.” Accordingly, we do not sustain the rejection of claim 2 as anticipated by ICQ 98a. We also do not sustain the anticipation rejection of claims 8, 13 and 14, which ultimately depend from claim 2. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 42 5. The Obviousness Rejections The Examiner adopted seven grounds of rejection based on obviousness (numbered (10)-(16) in this opinion). In particular, claims 1-15 were rejected over: (10) GeoCities and de Hond; and (11) ICQ and de Hond. Claims 1-5, 7-9, 11, and 13-15 were rejected over: (12) de Hond and Chandra; (13) de Hond and Shane; (14) Donath and de Hond; and (15) ICQ 98a and de Hond. Claim 17 was rejected over (16) ICQ and O’Neal. a. Grounds (10)-(15) All of these involved rejections include one or more of GeoCities, de Hond, ICQ, and ICQ 98a. The Patent Owner’s arguments challenging these rejections are, in large part, premised on assertions that each of those references does not disclose features of claim 1. (See PO App. Br., 25-27.) As discussed above, we are not in agreement with the Patent Owner in that regard. A prima facie case of obviousness is established when the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). As we are not persuaded that any of GeoCities, de Hond, ICQ, and ICQ 98a is deficient in disclosing the subject matter claim 1, we are also not persuaded that the Examiner has failed to present a prima facie case of obviousness as to that claim. We note that with respect to claim 2, we determined that each of GeoCities, ICQ, and ICQ 98a does not convey disclosure of features required by that claim. We also made such a determination as to claim 3 in connection with the rejections involving GeoCities and ICQ. In that regard, we concluded that although the references disclose the presence of an Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 43 interface server computer and also first and second controls, it was not apparent that it was the servers “providing” a message or comment entry interface in response to activation of those controls so as to anticipate those claims. (See supra.) The involved rejections here, however, are based on obviousness. In an obviousness analysis, it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Thus, even if the prior art is not explicit that a server computer performs the steps required by claims 2 and 3, that does not end the obviousness inquiry. GeoCities, ICQ, de Hond, and ICQ 98a readily convey that a server computer interacts or interfaces with a user’s computer to provide functional content on a Web page. For instance, GeoCities expresses that a “special program” residing on a Web server processes certain HTML forms that also serve as message entry interfaces. (GeoCities, 237.) Similarly, de Hond conveys that it is a server that generates content of a user’s Web page. (de Hond, 8:58-60.) It is apparent also that functions, such as those specified in claim 2 and 3 in which a message entry interface is provided upon activation of controls, are performed by a computer. Furthermore, none of the references specifies that any one particular computer must be operable to perform those functions to the exclusion of some other computer. Review of content of the involved prior art reveals that the level of ordinary skill in the art is sufficiently high to allocate computer resources Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 44 with the goal of providing Internet-based communication systems, such those disclosed in each of GeoCities, de Hond, ICQ and ICQ 98a. A person of ordinary skill in the art, who is also one of ordinary creativity, KSR Int’l Co., 550 U.S. at 421, would have appreciated that the computers that are the Web server computers are viable options for performing the steps required by claims 2 and 3. Indeed, in our view, a skilled artisan reasonably would have had such an appreciation with respect to all of the steps that are required by claims 1-15. We have thoroughly reviewed the record before us. In that regard, we have assessed the content of the prior art and carefully evaluated the respective positions of the Patent, the Examiner, and the Requester. Based on our review, we conclude that an adequate prima facie case of obviousness has been established in connection with the rejections numbered in this opinion as (10)-(15). b. Ground (16) ICQ and O’Neal Claim 17 stands rejected over ICQ and O’Neal. Claim 17 depends from claim 16 which, in turn, depends from claim 8. Claims 16 and 17 are reproduced below: 16. The method of claim 8 further comprising the step of sending by said interface server computer a message to a telephone of said individual member in response to receiving said message entered into said message entry interface. 17. The method of claim 16 wherein said message sent by said interface server computer to said telephone comprises a voice message. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 45 (2010 PO Amend., 4.) Thus, claim 17 requires that in response to a message entered into the message entry interface, a voicemail message is sent to a telephone. ICQ discloses that a server computer may send a message to an “Internet telephony session.” (ICQ, 280-281.) Although during prosecution of this inter partes reexamination proceeding, the Requester has likened an Internet telephony session to a telephone, we share the Patent Owner’s view that such a session is not a “telephone” per se (see PO App. Br., 30-31). In that regard, ICQ expresses that although an “Internet telephony session” operates “like a telephone,” it is an application associated with a computer rather than an actual telephone. (See ICQ, 275.) However, the Requester and the Examiner have also pointed to O’Neal as accounting for the features of claim 17 pertaining to sending a voicemail message to a telephone. O’Neal is directed to an “apparatus and method for device independent messaging notification.” (O’Neal, Title.) O’Neal describes a system in which a Web server notifies a user when a message sent to the user has been received. (O’Neal, Abstract.) O’Neal also describes that a “text/speech converter” forms part of the system. A portion of O’Neal is reproduced below explaining the operation of the text/speech converter: The text/speech converter 426 provides the ability to convert text, such as email, into digital audio format, or audio format into text. Operationally, this allows a user to have email converted to voice information for delivery to a telephone, for example. (O’Neal, 8:60-64.) In light of the above-noted disclosure in O’Neal, the Requester (Req. Resp. Br., 17) and the Examiner (RAN, 52-53) contend that a person of ordinary skill in the art would have realized that a telephone is Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 46 type of communication device that is also available to relay voice messages that have been converted from text. Those contentions are persuasive. We are cognizant of the Patent Owner’s assertion that no “legitimate motivation” has been articulated for combining the teachings of ICQ and O’Neal. (PO Reb. Br., 19.) We, however, do not agree with that assertion. ICQ discloses a communication system designed such that parties may communicate with one another via various messaging tools. O’Neal provides that such messaging tools known and available in the art include conversion of a text based message into an audio format, such as a voice message, for delivery to a telephone. In addressing design needs in the art, a skilled artisan has good reason to pursue the options that are known and within his or her technical grasp. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Here, a person of ordinary skill in the art would have adequate reason to incorporate into ICQ’s system a known communication format that involves the delivery of a voice mail message to a telephone, as is disclosed in O’Neal. The Patent Owner’s position to the contrary is unpersuasive. We conclude that the Examiner has established an adequate prima facie case of the obviousness of claim 17 based on the teachings of ICQ and O’Neal. c. Secondary Considerations of Non-Obviousness Once the Examiner has established a prima facie case of obviousness the burden shifts to the Appellant to come forward with argument or evidence of secondary considerations of non-obviousness that would overcome that prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 47 Cir. 1992). Here, the Patent Owner contends that it has provided evidence in the record tending to show the commercial success of the claimed invention. (PO App. Br., 7-8; PO Reb. Br., 5-6.) The Patent Owner makes the following representations in its Appeal Brief regarding the evidence on which it relies: [T]he evidence that ties the claimed invention to the requester’s commercial success was included in the RAN itself (paragraph G of requesters response (incorporated in the RAN) and owners Motion for Summary Judgment attached thereto (Exh. Q). Further it is common knowledge that the commercial success of requester is a result of users being able to send messages to and post comments about member on member’s home pages using the claimed invention. (PO App. Br., 7-8.) In its Rebuttal Brief, the Patent Owner also makes reference to “admissions” by the Requester allegedly made in the Requester’s “IPO (“Initial Public Offering”) prospectus filed on February 1, 2012, which is available from the Security and Exchange Commission’s website at www.sec.gov. (“Prospectus”).” (PO Reb. Br., 5.) Those alleged “admissions” are directed apparently to general statements concerning a commercial product of the Requester and constitute the following statements: Our mission is to make the world more open and connected. People use Facebook to say connected with their friends and family, to discover what is going on in the world around them, and to share and express what matters to them to the people they care about. * * * Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 48 Our users generated an average of 2.7 billion Likes and Comments per day during the three months ended December 31, 2011. (Id.) Thus, the “evidence” on which the Patent Owner relies to make out its non-obviousness position based on commercial success is: (1) some portion of the RAN; (2) the Patent Owner’s Motion for Summary Judgment in District Court (Ex. Q); (3) a general statement of “common knowledge”; and (4) alleged statements made by the Requester in a “Prospectus” that is not of record in this proceeding. Commercial success is relevant only if it flows from the merits of the invention claimed. Sjolund v. Musland, 847 F.2d 1573, 1582, 6 USPQ2d 2020, 2028 (Fed. Cir. 1988). Furthermore, a “nexus” is required between the merits of the claimed invention and any objective evidence of nonobviousness offered, if that evidence is to be given substantial weight enroute to a conclusion on obviousness. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539, 218 USPQ 871, 879 (Fed. Cir. 1983); See also Ormco Corp. v. Align Tech., Inc. 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) (“Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.”) Moreover, “if the commercial success is due to an unclaimed feature of the device, the commercial success is irrelevant. So too if the feature that creates the commercial success was known in the prior art, the success is not pertinent.” Ormco Corp., 463 F.3d at 1312; see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“[Commercial] success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention-as Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 49 opposed to the economic and commercial factors unrelated to the quality of the patented subject matter.” At the outset, it is not apparent from the record before us on what factual basis the Patent Owner concludes that actual commercial success of some product has resulted. In that regard, lacking from the record in this proceeding is credible evidence demonstrating the extent of commercial success that the Patent Owner basis its position of non-obviousness due to secondary considerations. For instance, a primary consideration in demonstrating actual commercial success are if sales of the claimed invention have produced a substantial share of the marketplace. See In re Huang, 100 F.3d at 140. Here, lacking from the record is what share of the marketplace has been acquired due to the claimed invention of the ’122 Patent. In any event, also notably lacking from the record is establishment of a “nexus” between the invention of the Patent Owner’s claims and any commercial success. The Patent Owner’s general and unsubstantiated assertion pertaining to “common knowledge” that commercial success of a product of the Requester is due to the claimed invention simply is unavailing. So too is the Patent Owner’s reliance on alleged statements made by Requester that its commercial product is successful in allowing friends and family to “stay connected.” Even were we to assume that the statements are evidence in this proceeding, it is not apparent what nexus is established with the claimed invention through a general theory of “connection” between persons. The prior art, as has been assessed above, is replete with disclosure of communication systems available over the Internet Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 50 that allow for persons to remain “connected” through various known communication tools. There is no suitable evidence of record tending to establish that any commercial success attributed to the Requester is due to the claimed features of the Patent Owner’s invention. We have duly considered the Patent Owner’s position that it has established non-obviousness based on evidence of commercial success. In that regard, we have weighed the evidence offered by the Patent Owner in support of its position alongside the evidence of obviousness of claims 1-5 and 17. On balance, we conclude that the strong evidence of obviousness outweighs the weak evidence of non-obviousness. d. Conclusion – Obviousness In conclusion, we sustain the obviousness rejections numbered (10)- (16) in this opinion. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 51 B. REQUESTER’S CROSS-APPEAL At issue with respect to the Requester’s Cross-Appeal is the Examiners decision not to adopt eight grounds of rejection based on anticipation (numbered (18)-(26) in this opinion) and twenty-five grounds based on obviousness (numbered (27)-(50)). 1. The Non-Adopted Anticipation Rejections The anticipation rejections that were not adopted involve each of ICQ, ICQ 98a, Robertson, de Hond and GeoCities. a. ICQ The Examiner declined to adopt proposed rejections of claims 5, 10, 11, and 15 as anticipated by ICQ. i. Claim 10 Claim 10 is dependent on claim 9, which is dependent on claim 3. As discussed above, we do not sustain the rejection of claim 3 and 9 as anticipated by ICQ. Accordingly, we do not find that the Examiner erred in declining to reject claim 10 as anticipated by ICQ. We sustain the Examiner’s decision not to adopt the proposed rejection of claim 10 as anticipated by ICQ. ii. Claim 5 Dependent claim 5 is reproduced below: 5. The method of claim 1 wherein said individual home page further comprises rating information associated with said individual member. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 52 (2010 PO Amend., 3.) Thus, claim 5 requires that an individual’s home page comprises “rating information” associated with the member. In declining to reject claim 5 as anticipated by ICQ, the Examiner contends that ICQ does not disclose “rating information” about a member which is conveyed via a comment. (RAN, 36-37.) The Patent Owner agrees with the Examiner. (PO Resp. Br., 2-3.) The Requester maintains that the required rating information is supplied via ICQ’s “Guestbook” feature, which is a feature associated with the individual’s home page. (Req. App. Br., 7; Req. Reb. Br., 2.) We agree with the Requester. As pointed out by the Requester, ICQ discloses that its “Guestbook” feature allows for submission of comments by a visitor of a member’s Web page directed to “what visitors like and don’t like” about the page. (ICQ, 203.) While the Patent Owner characterizes that disclosure as directed to information about a member’s Web site and something distinguished from rating information associated with a member (PO Resp. Br., 2), the Patent Owner does not explain meaningfully on what basis it draws a distinction. A visitor’s assessment as to what he or she likes or dislikes about the Web page of a given member is considered reasonably as rating information “associated” with the member. In that regard, the term “associated” is of suitable breadth that it does not, in our view, convey a restriction on the specified information so as to exclude the informational content of comments which is contemplated in ICQ. Furthermore, as discussed above in conjunction with ICQ as applied in anticipating claim 1, we find that the Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 53 “Guestbook” is a feature that is viewed reasonably as part of a member’s Web page. In light of the record before us, we are not persuaded that the Examiner was correct in declining to adopt the rejection of claim 5 as anticipated by ICQ that was proposed by the Requester in its Request for Inter Partes Reexamination. We, therefore, do not sustain the Examiner’s decision not to adopt that rejection. Our decision effectively constitutes a new ground of rejection and is hereby designated as such. See 37 C.F.R. § 41.77(b). iii. Claims 11 and 15 Claims 11 and 15 also introduce steps concerning “rating information.” Those claims are reproduced below: 11. The method of claim 7 further comprising the step of receiving by said interface server computer rating information entered into said rating entry interface. * * * 15. The method of claim 1 further comprising the step of displaying rating information for said individual member by said interface server computer on said individual home page. (2010 PO Amend., 3-4.) The Examiner declined to reject claims 11 and 15 as anticipated by ICQ on the basis that it lacks disclosure of entering rating information into an entry interface. (RAN, 37.) As discussed above with respect to claim 5, we do not agree with the Examiner in that regard. Comments expressing what a visitor likes or dislikes about a member’s Web page are understood reasonably as constituting rating information. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 54 The Patent Owner also argues that the Examiner’s decision should be maintained on the theory that ICQ’s “Guestbook” does not form part of an individual member’s Web page. (PO Resp. Br., 2-3.) As we have discussed supra, we do not agree with that argument. After evaluation of the record, we do not sustain the Examiner’s decision not to adopt the anticipation rejection of claims 11 and 15 based on ICQ as was proposed by the Requester in its Request. Our decision constitutes a new ground of rejection of claims 11 and 15. See 37 C.F.R. § 41.77(b). b. ICQ 98a The Examiner decided not to reject claims 4, 19, and 22-26 as anticipated by ICQ 98a. (Rejections numbered in this opinion as (19), (21), (22), (23), and (26).) i. Claims 12 and 19 Claims 12 and 19 depend from claim 8, which depends on claim 2. As noted supra, we do not sustain the rejection of claims 2 or 8 as anticipated by ICQ. Correspondingly, we do not discern error in the Examiner’s decision not to reject claims 12 and 19 as so anticipated. We sustain the decision. ii. Claim 4 Claim 4 is dependent on claim 1. Claim 4 adds the feature: “wherein said individual home page further comprises a link to an existing website of said individual member.” (2010 PO Amend., 2.) In deciding not to reject claim 4, the Examiner offers the following statements: Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 55 As to claim 4, while ICQ 98a discloses a link to ICQ websites of said individual use, ICQ 98a fails to disclose a link to an existing (i.e., non-ICQ) website of said individual user. Accordingly, ICQ 98a fails to disclose each and every limitation of claim 4 and does not anticipate the claim. (RAN, 41.) Thus, the Examiner seemingly imposes a “non-ICQ” restriction upon the “existing website” limitation of claim 4. It is not apparent, however, on what basis the Examiner does so. We do not discern why the “existing website” may not be one that is associated in some context with ICQ. In that regard, we share the Requester’s view that there is no requirement in the claim or in the specification of the ’122 Patent that the “existing website” need be provided by an entity other than ICQ. (See Req. App. Br., 8.) The Requester directs us to content of ICQ 98a disclosing that a link characterized as “view my ICQ page” may be supplied and provides a link which accesses a website that is in existence. (Id.; see also ICQ 98a, 254.) Although the Patent Owner takes the position that the above-noted link somehow does not link to an “existing website” (PO Resp. Br., 3), we are not persuaded that the Patent Owner’s position is correct. Accordingly, for the foregoing reasons, we do not sustain the Examiner decision not to adopt the Requester’s proposed rejection of claim 4 as anticipated by ICQ 98a. Our decision constitutes a new ground of rejection of claims 11 and 15. See 37 C.F.R. § 41.77(b). iii. Claim 22 It is not evident where in the record the Examiner has addressed or otherwise considered the Requester’s proposed rejection of claim 22 as Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 56 anticipated by ICQ 98a. Claim 22 depends from claim 1 and adds the following limitation: “wherein said individual home page further comprises a link to a homepage of said interface server computer.” (2010 PO Amend., 5.) As discussed above, we sustain the Examiner’s decision to reject claim 1 as anticipated by ICQ 98a. The Requester provides the following explanation with respect to claim 22: ICQ Ver. 98a further discloses an individual home page that further comprises a link to a homepage of the interface server computer. ICQ Ver. 98a discloses a series of tools provided by ICQ for building personal homepages. One of these tools is a button entitled “User for User” which, when clicked, brings the user to an ICQ homepage providing help. (See ICQ Ver. 98a, p. 259 (“User For Use – Use this button if you own a site that provides ICQ-related help.”); id. at p. 267 (”You can create an ICQ-web link which is stored on your home page.”).) For at least these reasons, therefore, Claim 22 should be rejected as anticipated by ICQ Ver. 98a. (Req. App. Br., 27.) We agree with the Requester’s assessment of the “User for User” feature that is set forth in ICQ 98a and also conclude that it is a link to a homepage of the server. The Patent Owner contends that ICQ 98a fails to account for the requirements of claim 22 because the noted “User for User” button is a feature that is “manually” added by a user during the creation of their homepage. (PO Resp. Br., 14.) The Patent Owner’s contention, however, is misplaced. That the link may be added initially added by a user to their homepage at one phase of a page’s construction does not mean that the link, once added, is somehow deficient to constitute a link to a homepage of a server. We reject the Patent Owner’s contention. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 57 To the extent that the Examiner decided not to adopt the above-noted rejection of claim 22 as anticipated by ICQ 98a, we do not sustain that decision. Our decision constitutes a new ground of rejection of claim 22. See 37 C.F.R. § 41.77(b). iv. Claims 23-25 As discussed above, claim 23, on which claims 24 and 25 depend, requires that an “interface server computer” provides “a user interface comprising a member search data entry area for receiving search data for a member of said group of members.” (2010 PO Amend., 5.) The Requester contends that content of ICQ 98a concerning a “Home Page Gallery” and a “Personal ICQ Page” account for the features of claims 23-25. (Req. App. Br., 28.) We are not persuaded that the Requester has established that ICQ 98a anticipates claims 23-25. That is, the Requester did not direct us to disclosure in ICQ 98a setting forth that it is an interface server computer providing the content of claim 23. The Examiner did not adopt a rejection of claims 23-25 as anticipated by ICQ 98a. We sustain the Examiner’s decision. iv. Claim 26 Claims 26 is an independent claim. Although claim 26 is, in many respects, similar in scope to claim 1, claim 26 deviates from claim 1 in specifying that the step of “creating an individual home page” for each member is accomplished, specifically, “without assistance of said member.” (2010 Amend., 5.) We do not discern that the Examiner has addressed the Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 58 proposed rejection of claim 26 as anticipated by ICQ 98a. It is the requirement that the member provides no “assistance” in the creation of the member’s individual home page that lies at the heart of the dispute between the Requester and the Patent Owner as to whether the above-noted rejection should have been made. In accounting for the “without assistance” aspect of claim 26, the Requester relies on the content of ICQ 98a at page 263 concerning description of “Services for List Masters.” (Req. App. Br., 15; Req. Reb. Br., 9.) The Patent Owner submits that the list of services disclosed at page 263 does not include the creation of an individual member’s home page in a manner that is without assistance from the member. (PO Resp. Br., 7-9.) It is clear that the services that page 263 of ICQ 98a attributes to the “List Master” functionality are generally contemplated as the creation of ICQ pages. (“Build an ICQ Page, enables you to create an ICQ page and submit it to the people at ICQ.”) However, much less clear is whether ICQ 98a itself contemplates that the disclosed pages are an individual member’s home page created without the assistance of the member. That, however, is what is unequivocally required by claim 26. Although the Requester is of the view that required disclose lies somewhere on page 263, the Requester neglects to support adequately that view. A person of ordinary skill in the art may, through intuition or common sense, conclude that a “List Master” in creating an ICQ page may derive that another member’s home page may be created without their input. However, that inquiry is not one properly undertaken when resolving anticipation. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 59 Therefore, we are not persuaded that claim 26 is anticipated by ICQ 98a. We sustain the Examiner’s decision not to enter a corresponding ground of rejection. c. Robertson The Examiner did not adopt rejection of claims 4 and 12 as anticipated by Robertson. Claims 4 and 12 ultimately depend from claim 1. As noted above, we are not persuaded that claim 1 is rejected properly as anticipated by Robertson. Therefore, we sustain the Examiner’s decision not to reject claims 4 and 12 as anticipated by Robertson. d. de Hond The Requester proposed a rejection of claim 25 as anticipated by de Hond. Claim 25 depends from claim 24, which depends from claim 23, which depends from claim 1. The Examiner adopted rejections of claims 1, 23, and 24 as anticipated by de Hond but did not adopt a corresponding rejection of claim 25. The record is less than clear as to why the Examiner did not adopt such a rejection of claim 25. As noted above, we sustain the rejections of claims 24, 23, and claim 1 as anticipated by de Hond. Claim 25 adds the limitation: “further comprising the step of: providing by said server links to individual home pages of a plurality of said members identified by said server as possible matches for said search data received in said search data entry area.” (2010 Amend., 5.) The Requester submits that the feature added by claim 25 is set forth in de Hond at columns 5 and 6. (Req. App. Br., 29.) Those portions of de Hond disclose a “search procedure” in which a user or visitor may attempt to make connection with one or more users, i.e., “residents.” (de Hond, 5:30-40.) That search Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 60 procedure entails the input of various personal information about the resident, such as gender, age, and zip code. (Id. at 5:41-47.) de Hond’s server 12 queries a database of the system and matches persons or residents who meet the criteria called for in the search procedure. (Id. at 5:48-57.) The residents that match the criteria are then displayed to the visitor as “thumbnails” of houses arranged along a virtual “street.” (Id. at 6:34-36.) The Requester and the Patent Owner dispute whether de Hond’s “thumbnails” constitute the “links to individual home pages of a plurality of said members” required by claim 25. According to the Requester, they are. (Req. App. Br., 29.) According to the Patent Owner, they are not. (PO Resp. Br., 14.) We agree with the Requester. As shown, for instance in Figure 10, de Hond characterizes the screen display that is a resident’s house as being a “Homepage.” Thumbnail icons that may be selected to deliver a visitor, in a virtual context, to a resident’s “house” that is expressed as being a “Homepage” are, in our view, appreciated readily as links to individual home pages of a plurality of members. We observe also that de Hond expressly contemplates that in an embodiment of its invention “a link to the resident’s home page (if he has one) is added to his house.” (de Hond, 8:56-57.) Therefore, for the foregoing reasons, we are not persuaded by the Patent Owner that claim 25 presents content that distinguishes the claim from the disclosure of de Hond. Accordingly, we are of the opinion that the Examiner should have adopted the rejection of claim 25 as anticipated by de Hond as was proposed by the Requester. Because the Examiner seemingly decided not to adopt such a rejection, we do not sustain the Examiner’s Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 61 decision. Our decision constitutes a new ground of rejection of claim 25. See 37 C.F.R. § 41.77(b). e. GeoCities The Requester contends that GeoCities anticipates claim 26. At issue again with respect to that claim is the requirement that an individual member’s home page be created “without assistance of said member.” The Requester points to discussion in GeoCities directed to the creation of “fan pages” that are Web pages created, for instance, by fans of celebrities, where the content of the page is directed to the celebrity. (Req. App. Br., 14-15; Req. Reb. Br., 8-9.) The Patent Owner submits that such “fan pages” are not an individual member’s home page created without assistance by the member. (PO Resp. Br., 6-7.) After careful consideration, we agree with the Patent Owner. It is simply not apparent that the “fan pages” disclosed in GeoCities account for the requirement of claim 26 in connection with the creation of an individual member’s home page. The Examiner did not adopt an anticipation of claim 26 based on GeoCities. We sustain the Examiner’s decision not to adopt such a rejection. 2. The Non-Adopted Obviousness Rejections The Requester submits that various grounds of rejection proposed in connection with claims 16-19, 21, and 23-26 (Grounds of Rejection numbered in this opinion as (27)-(50).) Neither the RAN nor the Examiner’s Answer indicates that any of those rejections have been adopted by the Examiner. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 62 a. Ground (27) – ICQ and O’Neal The Requester proposed that claim 16 should be rejected over ICQ and O’Neal. As discussed above in connection with Ground (16), we have concluded that claim 17 is properly rejected as unpatentable over ICQ and O’Neal. Claim 17 depends from claim 16. For similar reasons set forth supra with respect to claim 17, we are persuaded that claim 16 should also have been rejected. Accordingly, we conclude that the Examiner should have entered the ground of rejection proposed by the Requester pertaining to claim 16 as unpatentable over ICQ and O’Neal. Our decision in that regard constitutes a new ground of rejection. See 37 C.F.R. § 41.77(b). b. Ground (28) – GeoCities and O’Neal This ground was proposed by the Requester for claims 16 and 17. As discussed above, claim 16 depends from claim 8 and adds a step directed to sending a message to a telephone in response to entry of a message into a message entry interface. Claim 17 adds to claim 16 that the message is a voice message. With respect to the GeoCities and O’Neal combination, we have considered the Requester’s arguments in favor of an obviousness determination (Req. App. Br., 21-22; Req. Reb. Br., 10) and the Patent Owner’s arguments in opposition to such a determination (PO Resp. Br., 12). Throughout this opinion, we have relayed our view as to the disclosure of GeoCities and what one with ordinary skill in the art would have understood from that disclosure. In that regard, we are satisfied that a skilled artisan would have regarded claim 8 as obvious based on the Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 63 teachings of GeoCities. We are also satisfied that O’Neal discloses the features added by claims 16 and 17. In particular, O’Neal makes clear that message entered into a message entry interface, e.g., e-mail, may desirably be converted into a voice message for delivery to a recipient. (O’Neal, 6:35-65.) O’Neal also describes that delivery of the voice message may be to a telephone. (Id. at 8:60-64.) A person of ordinary skill and creativity in the art would have recognized that conversion of a text-based based message in to an audio voice message provides a beneficial flexibility in message delivery that would apply to a variety of communication systems involving message entry and delivery, such as that of GeoCities. Accordingly, we share the Requester’s view that it would have been obvious to combine O’Neal’s teachings with those of GeoCities to obtain the flexibility in messaging arising from text to speech conversion. For the foregoing reasons, we are persuaded that claim 16 and 17 would have been obvious based on GeoCities and O’Neal. Because the Examiner did not adopt that ground of rejection as proposed by the Requester, we do not sustain the Examiner’s decision. Our decision that the rejection should have been applied to claims 16 and 17 constitutes a new ground of rejection. See 37 C.F.R. § 41.77(b). c. Ground (29) - Robertson and O’Neal The Requester also proposed a ground of rejection for claim 16 and 17 based on Robertson and O’Neal (29). Those claims ultimately depend on claim 1. As we have conveyed above, we are not persuaded that Robertson discloses the “allotting…” and “associating…” steps of claim 1. The Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 64 Requester’s proposed rejection based on Robertson and O’Neal is not offered to remedy those deficiencies in Robertson. Accordingly, we conclude that the proposed rejection of claims 16 and 17 based on Robertson and O’Neal does not account sufficiently for the features of those claims. The Examiner did not enter a rejection of claim 16 and 17 based on Robertson and O’Neal. We sustain that decision. d. Grounds (30)-(33) Proposed grounds (30)-(33) are directed to claim 18 and involve each of GeoCities, ICQ, ICQ 98a and de Hond taken with RFC 822. Claim 18 is reproduced below: The method of claim 8 further comprising the step of sending by said interface server computer an e-mail message to an existing e-mail address for said individual member in response to receiving said message entered into said message entry interface, said e-mail message comprising a reply-to address created by said interface. (2010 PO Amend., 4.) As we have explained in this opinion, we are satisfied that each of GeoCities, ICQ, ICQ 98a, and de Hond either anticipate or render obvious claim 8. As set forth above, claim 18 adds features pertaining to transmission of an e-mail to an e-mail address upon receipt of a message entered into a message entry interface, where the e-mail address includes a “reply-to” address created by the interface. The Requester points to RFC 822 as accounting for those added features. (Req. App. Br., 22-23.) We have evaluated the above-noted grounds of rejection. The Patent Owner argues that the Requester has not established that the prior art on Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 65 which it relies shows that a “reply-to address” is created by a server. We do not agree. (PO Resp. Br., 12.) In our view, the Patent Owner’s argument does not take into account appropriately the level of skill in this art and what a person of ordinary skill in the art would have understood. In that regard, the references demonstrate suitably that a server computer is an available computing component to perform operations associated with a computer, such as the creation of a “reply-to” address in an e-mail as set forth in RFC 822. One with ordinary skill would have recognized reasonably that the various server computers disclosed in the art would have been available and viable components for generating a reply-to address for an e-mail message. We have fully considered the Patent Owner’s arguments, but conclude that claim 18 would have been obvious based on the prior art applied in each of grounds (31)-(34). The Examiner decided not to adopt those grounds as proposed by the Requester. We do not sustain that decision. Our decision constitutes a new ground of rejection of claim 18. See 37 C.F.R. § 41.77(b). e. Ground (34) – Robertson and RFC 822 The Requester also proposed that this ground of rejection should have been made for claim 18. However, as noted above, we do not discern how Robertson accounts for certain features of claim 1, on which claim 18 depends. The Requester does not attempt to make up for those deficiencies in conjunction with its proposed ground based on Robertson and RFC 822. Therefore, we conclude that the proposed rejection of claim 18 based on Robertson and RFC 822 does not account for all the features required by Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 66 those claims. The Examiner’s decision not to enter a rejection of claim 18 based on Robertson and RFC 822 is sustained. f. Grounds (35)-(37) Proposed grounds (35)-(37) are directed to claim 19 and involve each of ICQ, ICQ 98a and de Hond taken with RFC 822 and GeoCities. Claim 19 is reproduced below: 19. The method of claim 8 further comprising the step of sending by said interface server computer an e-mail message to an existing e-mail address for said individual member in response to receiving said message entered into said message entry interface, said e-mail message comprising information about a service provided by said interface server computer. (2010 PO Amend., 4.) The Patent Owner’s challenge to each of the proposed grounds noted above rests on the contention that the Requester has not established that the operations set forth in claim 19 would have been understood by a skilled artisan as being accomplished by a server. (PO Resp. Br., 13.) We do not agree. For reasons similar to those that we have articulated elsewhere in this opinion, we conclude that a person of ordinary skill in the art would have appreciated that the server computers set forth in each of ICQ, ICQ 98a, and de Hond would have been suitable options for performing the step of claim 19. Accordingly, we do not sustain the Examiner’s decision not to enter a rejection of claim 19 based on each of ICQ, ICQ 98a, and de Hond taken with RFC 822 and GeoCities. Our decision constitutes a new ground of rejection of claim 19. See 37 C.F.R. § 41.77(b). Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 67 g. Ground (38) - Robertson, RFC 822, and GeoCities The Requester also proposes this ground of unpatentability for claim 19. As discussed supra, however, we conclude that Robertson lacks certain features required by claim 1, on which claim 19 ultimately depends. The Requester, however, does not explain how those features are accounted for in connection with the combination of Robertson, RFC 822, and GeoCities. Therefore, we sustain the Examiner’s decision to enter the Requester’s proposed rejection of claim 19 based on a combination of those references. h. Grounds (39)-(42) Proposed grounds (39)-(42) are directed to claim 21 and involve each of ICQ, ICQ 98a and de Hond taken with Coleman. Claim 21 depends from claim 1 and adds the feature “wherein said individual home page further comprises a third control separate from said first and second controls for providing a map indicating a location of said member.” (PO 2010 Amend., 5.) The Requester relies on Coleman to account for the third control feature of claim 21. In particular, the Requester points to disclosure in Coleman relating to graphical maps accessible via a Web page known as “MapQuest” and operable to transmit maps to a user on demand. (Req. App. Br., 26.) The Patent Owner does not dispute that Coleman discloses a control that allows for providing a map to a user as required by claim 21 or that Coleman’s teachings may be implemented onto the systems set forth in each of ICQ, ICQ 98a, and de Hond. Rather, the Patent Owner urges that the requirement that the control, as a third control, be separate from the first Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 68 and second controls is absent from the involved prior art. (PO Resp. Br., 13.) We are not persuaded that the Patent Owner is correct. In that regard, we are of the opinion that a skilled artisan reasonably would have recognized that in applying Coleman’s teachings concerning graphical maps, the tool or control used to access those maps may be distinct or separate from the first and second controls disclosed in each of ICQ, ICQ 98a, and de Hond. Those first and second controls are separately selectable tools which enable different functionality that need not somehow subsume controls that provide other content, such as one dedicated to transmitting map information. We have considered the Patent Owner’s argument but are not persuaded that claim 21 introduces limitations that are distinguished from the teachings of the prior art. We do not sustain the Examiner’s decision not to enter rejections of claim 21 based on each of ICQ, ICQ 98a, and de Hond taken with Coleman. Our decision constitutes a new ground of rejection of claim 21. See 37 C.F.R. § 41.77(b). i. Ground (43) – Robertson and Coleman As discussed supra, claim 1 requires limitations that are not disclosed in Robertson, and claim 19 depends from claim 1. The Requester does not explain how those missing features are suggested in its proposed combination of Robertson and Coleman. We sustain the Examiner’s decision not to enter a rejection of claim 21 based on those references. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 69 j. Grounds (44)-(47) Proposed grounds (44)-(47) are directed to claims 23-25 and involve each of GeoCities, ICQ, ICQ 98a, and de Hond taken with Yahoo!. Claims 23-25 ultimately depend on claim 1 and add features in connection with providing a user interface with a search entry area (claim 23), identifying a plurality of members as possible matches for the search data (claim 24) and providing links to individual home pages for the plurality of members (claim 25). The Requester contends that the steps of claims 23-25 are disclosed in the prior art. The Patent Owner does not urge that the steps are unknown, but rather bases its challenge on the theory that the prior art does not disclose that an interface server computer performs the steps. (PO Resp. Br., 14-15.) We have considered the Patent Owner’s argument but do not find it persuasive. As expressed throughout this opinion, we conclude that a person of ordinary skill in the art would have understood that the server computers in each of GeoCities, ICQ, ICQ 98a, and de Hond may perform computing functions associated with the operation of Internet based communication systems. We conclude that Examiner should have adopted the rejections of claims 23-25 proposed by the Requester and involving each of GeoCities, ICQ, ICQ 98a, and de Hond taken with Yahoo!. We do not sustain the Examiner’s decision not to enter those rejections. Our decision constitutes new grounds of rejection of claims 23-25. See 37 C.F.R. § 41.77(b). Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 70 k. Grounds (48) and (49) The Requester proposes that independent claim 26 is unpatentable over Geocities and also over ICQ 98a. Claim 26 is similar to claim 1 but, as noted above, adds an additional restriction in connection with its step of creating an individual home page. Specifically, claim 26 requires that the member’s home page is created “without assistance of said member.” (2010 PO Amend., 5.) Although we have concluded that GeoCities and ICQ 98a do not anticipate claim 26 (see supra), we do not reach the same conclusion in connection with the obviousness inquiry. It is abundantly clear from the disclosures of GeoCities and ICQ 98a that it is known in the art that a home page may be created for an individual member. The references convey that there are a myriad of functional and aesthetic options available for the design of the home page. While GeoCities and ICQ 98a may themselves generally contemplate that the individual member provides input or assistance in so designing their home page, there is no requirement imposed that the member must in all circumstances provide such input. A person of ordinary skill and creativity in the art readily would have understood that a Web page may be designed on a member’s behalf without assistance by the member. We share the Requester’s viewpoint that the limitation set forth in claim 26 concerning a member’s home page creation “without assistance” by the member imparts patentability to the claim over the prior art. In our view, the Examiner should have entered grounds of rejection of claim 26 as obvious over each of GeoCities and ICQ 98a. We, therefore, do not sustain Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 71 the Examiner’s decision not enter such rejections. Our decision constitutes new grounds of rejection of claim 26. See 37 C.F.R. § 41.77(b). l. Ground 50 – Robertson The Requester also proposed that claim 26 is unpatentable over Robertson. Claim 26 requires the same “allotting” and “associating” steps required by claim 1. As discussed supra, we do not discern that Robertson accounts for those steps. The Requester does not explain how those deficiencies in Robertson are cured. The Examiner did not enter a rejection of claim 26 based on Robertson. The Examiner’s decision in that regard is sustained. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 72 III. CONCLUSION A. PATENT OWNER’S APPEAL As a result of our assessment of the Patent Owner’s Appeal, we reach the following conclusions with respect to the Examiner’s decisions to adopt the proposed rejections: (1) Claims 1-15 as anticipated by GeoCities: Affirmed as to claims 1, 4-7, 10, 11, and 15; Reversed as to claims 2, 3, 8, 9, and 12-14. (2) Claims 1-4, 6-9, and 12-14 as anticipated by ICQ: Affirmed as to claims 1, 4, 6, and 7; Reversed as to claims 2, 3, 8, 9, 12-14, 16, and 22-25. (3) Claims 1-5, 7-9, 11, and 13-15 as anticipated by de Hond: Affirmed. (4) Claims 1-3, 7-9, and 11 as anticipated by Robertson: Reversed. (5) Claims 1, 2, 8, 13, and 14 as anticipated by ICQ 98a: Affirmed as to claim 1; Reversed as to claims 2, 8, 13, and 14. (6) Claims 18-25 as anticipated by GeoCities: Affirmed as to claims 20-25; Reversed as to claims 18 and 19. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 73 (7) Claims 16, 20 and 22-25 as anticipated by ICQ: Affirmed as to claim 20; Reversed as to claims 16 and 2-25. (8) Claims 20, 23, and 24 as anticipated by de Hond: Affirmed. (9) Claims 20, 22, and 26 as anticipated by Robertson: Reversed. (10) Claims 1-15 as unpatentable over GeoCities and de Hond: Affirmed. (11) Claims 1-15 as unpatentable over ICQ and de Hond: Affirmed. (12) Claims 1-5, 7-9, 11, and 13-15 as unpatentable over de Hond and Chandra: Affirmed. (13) Claims 1-5, 7-9, 11, and 13-15 as unpatentable over de Hond and Shane: Affirmed. (14) Claims 1-5, 7-9, 11 and 13-15 as unpatentable over Donath and de Hond: Affirmed. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 74 (15) Claims 1-5, 7-9, 11, and 13-15 as unpatentable over ICQ 98a and de Hond: Affirmed. (16) Claim 17 as unpatentable over ICQ and O’Neal: Affirmed. (17) Claims 16 and 17 as failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph: Reversed. B. REQUESTER’S CROSS-APPEAL With respect to the Requester’s Cross-Appeal, we reach the following conclusions in connection with the Examiner’s decisions not to adopt the proposed grounds of rejection12: (18) Claims 5, 10, 11, and 15 as anticipated by ICQ: Affirmed as to claim 10; Reversed as to claims 5, 11, and 15. (19) Claims 4 and 12 as anticipated by ICQ 98a: Affirmed as to claim 12; Reversed as to claim 4. 12 Any reversal of the Examiner’s decision not to enter a proposed ground of rejection constitutes a new ground of rejection under 37 C.F.R. § 41.77(b). Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 75 (20) Claims 4 and 12 as anticipated by Robertson: Affirmed. (21) Claim 19 as anticipated by ICQ 98a: Reversed. (22) Claim 22 as anticipated by ICQ 98a: Reversed. (23) Claims 23-25 as anticipated by ICQ 98a: Affirmed. (24) Claim 25 as anticipated by de Hond: Reversed. (25) Claim 26 as anticipated by GeoCities: Affirmed. (26) Claim 26 as anticipated by ICQ 98a: Affirmed. (27) Claim 16 as unpatentable over ICQ and O’Neal: Reversed. (28) Claims 16 and 17 as unpatentable over GeoCities and O’Neal: Reversed. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 76 (29) Claims 16 and 17 as unpatentable over Robertson and O’Neal: Affirmed. (30) Claim 18 as unpatentable over GeoCities and RFC 822: Reversed. (31) Claim 18 as unpatentable over ICQ and RFC 822: Reversed. (32) Claim 18 as unpatentable over ICQ 98a and RFC 822: Reversed. (33) Claim 18 as unpatentable over de Hond and RFC 822: Reversed. (34) Claim 18 as unpatentable over Robertson and RFC 822: Affirmed. (35) Claim 19 as unpatentable over ICQ, RFC 822, and GeoCities: Reversed. (36) Claim 19 as unpatentable over ICQ 98a, RFC 822, and GeoCities: Reversed. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 77 (37) Claim 19 as unpatentable over de Hond, RFC 822, and GeoCities: Reversed. (38) Claim 19 as unpatentable over Robertson, RFC 822, and GeoCities: Affirmed. (39) Claim 21 as unpatentable over GeoCities and Coleman: Reversed. (40) Claim 21 as unpatentable over ICQ and Coleman: Reversed. (41) Claim 21 as unpatenable over ICQ 98a and Coleman: Reversed. (42) Claim 21 as unpatentable over de Hond and Coleman: Reversed. (43) Claim 21 as unpatentable over Robertson and Coleman: Affirmed. (44) Claims 23-25 as unpatentable over GeoCities and Yahoo!: Reversed. (45) Claims 23-25 as unpatentable over ICQ, and Yahoo!: Reversed. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 78 (46) Claims 23-25 as unpatentable over ICQ 98a and Yahoo!: Reversed. (47) Claims 23-25 as unpatentable over de Hond and Yahoo!: Reversed. (48) Claim 26 as unpatentable over GeoCities: Reversed. (49) Claim 26 as unpatentable over ICQ 98a: Reversed. (50) Claim 26 as unpatentable over Robertson: Affirmed. C. SUMMARY OF CLAIM STATUS In summary: 1. Claims 1-15 and 20-25 remain rejected; and 2. Claims 4, 5, 11, 15-19, 21, 23-25, and 26 stand rejected on newly adopted grounds. This opinion contains new grounds of rejection, In particular, in connection with the Requester’s Cross-Appeal, the above-noted reversals of the Examiner’s decision not to adopt claim rejections constitute new grounds of rejection pursuant to 37 C.F.R. § 41.77(b). That section provides that “[a]ny decision which includes a new ground of rejection pursuant to this Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 79 paragraph shall not be considered final for judicial review.” Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. … Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 80 is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board's opinion reflecting its decision to reject the claims and the patent owner's response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all patent owner responses and requester comments, is required. The Examiner, after the Board’s entry of a patent owner response and requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board’s rejection is maintained or has been overcome. The proceeding will then be returned to the Board together with any comments and reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 81 AFFIRMED-IN-PART; REVERSED-IN-PART Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 82 PATENT OWNER: TECHCOASTLAW 2032 WHITLEY AVE HOLLYWOOD CA, 90058 THIRD-PARTY REQUESTER: HEIDI KEEFE COOLEY LLP 3175 HANOVER STREET PALO ALTO, CA 94304 cu Copy with citationCopy as parenthetical citation