10201544 (B.P.A.I. Jul. 20, 2011)

Ex Parte Anonsen et al

Board of Patent Appeals and InterferencesJul 20, 2011

10201544 (B.P.A.I. Jul. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/201,544 07/22/2002 Steven P. Anonsen M61.12-0242 6665 27366 7590 07/21/2011 WESTMAN CHAMPLIN (MICROSOFT CORPORATION) SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER COONEY, ADAM A ART UNIT PAPER NUMBER 2443 MAIL DATE DELIVERY MODE 07/21/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte STEVEN P. ANONSEN, JASON ALAN HUCK, and DANIEL EDWARD SEEFELDT ____________ Appeal 2009-009895 Application 10/201,544 Technology Center 2400 ___________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and CAROLYN D. THOMAS, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 21 and 26-31. Claims 1-20, 22-25, and 32-38 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Appeal 2009-009895 Application 10/201,544 2 Invention Appellants’ invention relates generally to hypermedia links. More particularly, the invention on appeal is directed to managing hypermedia links between objects. (Spec. 1). Independent claim 21 A method of maintaining links between objects comprising: receiving a link request at a link service from a client for links, the link request identifying an object that is a source object in the links; requesting the links from a plurality of providers, the providers selected based on the identified object by accessing a provider register storing register information corresponding to the providers, the register information being indicative of links provided by each of the providers; aggregating links received from the providers in response to the link request, at the link service; and returning the aggregated links to the client. REJECTIONS Claims 21 and 26-29 stand rejected under 35 U.S.C. § 102(e) as anticipated over McKeeth (US Pat. App. Pub. 2003/0105744 A1). Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of McKeeth and Faybishenko (US Pat. 7,013,303 B2). Appeal 2009-009895 Application 10/201,544 3 FINDINGS OF FACT (FF) We adopt the Examiner’s findings in the Answer. Our discussion will be limited to the points of emphasis discussed infra. GROUPING OF CLAIMS Appellants argue claims 21, 26-29 as a group. We select representative claim 21 to decide the appeal for this group. See 37 C.F.R. § 41.37(c)(1)(vii). We consider claim 29 separately (under § 102), and we also consider claims 30 and 31 separately (under § 103). ISSUE Based upon our review of the administrative record, we have determined that the following issue is dispositive in this appeal regarding the anticipation rejection of representative claim 21: Has the Examiner erred by finding that McKeeth discloses: (1) a link request that identifies an object that is a source object in the links, and (2) requesting links from a plurality from a plurality of providers, the providers selected based on the identified object, within the meaning of representative claim 21? Analysis Independent Claim 21 At the outset, we disagree with Appellants that the Examiner’s construction regarding the claim term “object” is overly broad, unreasonable, or inconsistent with the Specification. As pointed out by the Examiner, Appellants’ Specification clearly refers to objects as stored data. Appeal 2009-009895 Application 10/201,544 4 (Ans. 7; see also Spec. 8, ll. 29-30). We also observe that the object- oriented programming aspects imputed by Appellants’ arguments in the Brief (8 et seq.) are not positively recited in the claims (e.g., inheritance, polymorphism, encapsulation, “to name a few” – Br. 8). Regarding the disputed limitation of “a link request that identifies an object that is a source object in the links,” Appellants contend that “[w]here McKeeth provides an information retrieval or query, there is no indication, whatsoever, that McKeeth is requesting links by identifying a source object, which is a source object of the requested links.” (App. Br. 10, ¶2). However, we disagree for essentially the same reasons argued by the Examiner. (Ans. 8). Under a broad but reasonable construction, we conclude that Appellants’ claim 1 does not define or otherwise place any limitation on the scope of the claimed “source object.” Moreover, Appellants’ claim 1 broadly refers to links and objects in an interchangeable manner: “the link request identifying an object that is a source object in the links.” Therefore, on this record, we find Appellants have not demonstrated that the Examiner’s broader claim construction is in error: e.g., see Ans. 7: “[f]or example, the term ‘object’ could also be interpreted as the link pointing to document 210 in the teachings of McKeeth, (see pg. 2, par. 0024).” 1 1 Appellants’ Specification expressly guides that “Query 30 can illustratively be expressed in terms of objects (‘entities’) and properties rather than in terms of tables and columns. The particular manner in which queries are expressed does not form part of the present invention.” (Spec. 9, ll. 19-24)(emphasis added). We interpret this statement as not limiting the invention to an object-oriented database environment. Appeal 2009-009895 Application 10/201,544 5 We also agree that McKeeth discloses “a link request that identifies an object that is a source object in the links” in the description of the user seeking to access “specific data” that is associated with an identified set of links provided by search engine server 108 which responds to the user request to identify the location (i.e., source) of the desired specific data. (See McKeeth, para. [0024]; see also the Examiner’s discussion in the first paragraph of page 9 of the Answer). Because Appellants’ arguments regarding the second disputed element of claim 21 are premised upon McKeeth not disclosing the first element (which we did not find persuasive, as discussed above), Appellants have not shown the Examiner’s findings are in error regarding the second disputed element, i.e., “that the links are requested from a plurality of link providers wherein ‘the providers [are] selected based on the individual object by accessing a provider register . . . .’” (App. Br. 10, ¶3). Appellants additionally contend that McKeeth provides “no teaching or suggestion of the features of requesting links from a plurality of providers wherein the providers are selected based on the identified object.” (App. Br. 10-11). However, we find persuasive the Examiner’s explanation that the content servers are the claimed providers. (Ans. 9, ¶1). We observe the plural content servers 104 that are clearly shown in McKeeth’s Figures 1 and 2. We also observe that Appellants have not filed a Reply Brief in further response to the Examiner’s specific findings. 2 2 “Silence implies assent.” Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 572 (1985)). Appeal 2009-009895 Application 10/201,544 6 Appellants premise their final argument (that “McKeeth fails to teach or suggest the feature of ‘aggregating links received from the providers in response to the request’” − id. at 11) on the previous argument regarding the “plurality of providers” which we did not find persuasive. For essentially the same reasons argued by the Examiner, as discussed above, we find Appellants have not met their burden of showing reversible error in the Examiner’s prima facie case of anticipation for representative claim 21. 3 Therefore, we sustain the §102 rejection of claim 1, and claims 26-28 (not argued separately) which fall therewith. See 37 C.F.R. §41.37(c)(1)(vii). Dependent claim 29 Claim 29 recites: “the link represents an action and further comprising: returning an indication that the link provider has taken the action to the client.” Appellants contend that “[p]aragraph 0024 of the McKeeth reference does not teach or suggest that links could be actions. Further, McKeeth does not teach that when the links are an action, an indication that the link provider has taken the action should be returned to the client.” (App. Br. 11). 3 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Jung argues that the Board gave improper deference to the examiner’s rejection by requiring Jung to ‘identif[y] a reversible error’ by the examiner, which improperly shifted the burden of proving patentability onto Jung. Decision at 11. This is a hollow argument, because, as discussed above, the examiner established a prima facie case of anticipation and the burden was properly shifted to Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must identify to the Board what the examiner did wrong . . . .”). Appeal 2009-009895 Application 10/201,544 7 However, we find persuasive the Examiner’s argument on pages 10- 11 of the Answer that explains that McKeeth clearly teaches that the link represents an action. The Examiner also finds an inherent disclosure4 in McKeeth regarding the limitation of “returning an indication that the link provider has taken the action to the client” (claim 29) “since the document 210 returned to the client is an indication that the link provider has taken [an] action [in response] to the request from the client.” (Ans. 11). We again observe that Appellants have not filed a Reply Brief in further response to the Examiner’s specific findings.5 Therefore, for essentially the same reasons argued by the Examiner in the Answer (11), we find Appellants have not met their burden of showing reversible error in the Examiner’s prima facie case of anticipation for dependent claim 29. 6 Accordingly, we sustain the §102 rejection of dependent claim 29. 4 “[A] prima facie case of anticipation [may be] based on inherency.” In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a prima facie case of anticipation has been established, the burden shifts to the Appellant to prove that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). See also In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990). 5 See n.2 supra. 6 See n.3 supra. Appeal 2009-009895 Application 10/201,544 8 Dependent claims 30 and 31 (§ 103) Appellants have not presented any substantive arguments directed separately to the patentability of these claims that stand rejected under §103 over the combination of McKeeth and Faybishenko.7 (App. Br. 11-12). Because we did not find Appellants’ arguments persuasive regarding claim 21 (from which claims 30 and 31 depend), Appellants have not shown the Examiner’s legal conclusion of obviousness is in error. Therefore, we sustain the Examiner’s obviousness rejection of claims 30 and 31 for the same reasons discussed supra regarding independent claim 21. See 37 C.F.R. § 41.37(c)(1)(vii). 7 See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)(“Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue − or, more broadly, on a particular rejection − the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”)(precedential). Appeal 2009-009895 Application 10/201,544 9 DECISION We affirm the Examiner’s decision rejecting claims 21 and 26-29 under §102. We affirm the Examiner’s decision rejecting claims 30 and 31 under §103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED tkl