Ex Parte Benton et al

Patent Trial and Appeal Board

Nov 20, 2013

11096844 (P.T.A.B. Nov. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/096,844 04/01/2005 Randall S. Benton P/4673-2 4199
2352 7590 11/21/2013
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
KUDDUS, DANIEL A
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
11/21/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDALL S. BENTON and
SHIRLEY L. MCMENAMIN/BENTON
____________

Appeal 2011-010213
Application 11/096,844
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2, 4-10, 12, 14-20, 22, 24, and 27-40. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
In reaching the decision, we have considered only the arguments that
Appellants actually raised. Arguments that Appellants did not make are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2010).
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STATEMENT OF THE CASE
The present invention relates to Internet search engine listings. See
generally Spec. 1. Claim 27 is illustrative:
27. A computer implemented system for delivering at least one of electronic
search engine information and electronic web site uptime information to a
plurality of computing devices respectively associated with a plurality of
proprietors of web sites, the system comprising:
at least one processor that is configured with non-transitory processor
readable media and a communication device, wherein the at least one
processor is further configured to communicate over a communication
network via the communication device;
a database provided on the non-transitory processor readable media,
wherein the database stores:
electronic search engine information representing ranked
positions of hyperlinks in lists of hyperlinks; and
electronic web site uptime information representing that each of
one or more web sites is inactive,
further wherein the at least one processor is configured to access the
database; and
a desktop application tool that is provided by the at least one
processor that, when installed on each of at least two of the plurality of
computing devices, programs and configures each of the at least two
computing devices to at least communicate with the at least one processor
over the communication network and to receive electronic information from
the at least one processor,
wherein the at least one processor is programmed and configured to:
receive, from each of the at least two computing devices via the
respectively installed desktop application tool, electronic options
representing information associated with receiving notifications for a
plurality of respective proprietors of one or more web sites;
establish a first communication session with a first search
engine, and conduct a first search in the first search engine for a first
web site respectively associated with a first proprietor of the plurality
of proprietors to determine a first ranked position of a respective first
hyperlink to the first web site in a first list of hyperlinks provided by
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the first search engine in response to the first search performed in the
first search engine;
establish a second communication session with a second search
engine, and conduct a second search in the second search engine for a
second web site associated with a second proprietor of the plurality of
proprietors to determine a second ranked position of a second
hyperlink to the second web site in a second list of hyperlinks
provided by the second search engine in response to the second search
performed in the second search engine;
generate and store in the database first electronic search engine
information representing the first ranked position;
generate and store in the database second electronic search
engine information representing the second ranked position;
determine that at least one of the first web site and the second
web site is inactive;
generate and store in the database electronic web site uptime
information representing that the at least one of the first web site and
the second web site is inactive;
process the electronic first search engine information, the
second search engine information and the electronic web site uptime
information to be useable by the desktop application tool;
determine, based on at least one electronic program option, to
transmit at least one of the processed first electronic search engine
information and the processed web site uptime information to a first
computing device that is provided with the desktop application tool
and that is associated with the first proprietor;
transmit, via the communication device, to the first computing
device provided with the desktop application tool the at least one of
the processed first electronic search engine information, and the
processed web site uptime information;
determine, based on at least one other electronic program
option, to transmit at least one of the processed second electronic
search engine information and the processed web site uptime
information to a second computing device that is provided with the
desktop application tool and that is associated with the second
proprietor; and
transmit to the second computing device the at least one of the
processed second electronic search engine information and the
processed web site uptime information.
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THE REJECTION
Claims 2, 4-10, 12, 14-20, 22, 24, and 27-40 are rejected under 35
U.S.C. 103(a) as being unpatentable over Abdelhak (US 2005/0097180 A1),
and Singh (US 2002/0165849 Al). See Ans. 3-13.

ISSUES
Under 35 U.S.C. § 103, has the Examiner erred by finding that
Abdelhak and Singh collectively teach the selected claim limitations
(discussed below) of claim 27?

ANALYSIS
Claim 27
On this record, we find that the Examiner did not err in rejecting claim
27.
Issue 1
Appellants argue that the Examiner unduly eliminates limitations from
the claim, as the Examiner relies on (a) Abdelhak for a portion of a claim
limitation, and (b) Singh for the remaining portion of the claim limitation.
See App. Br. 12-13. Appellants repeat that argument in connection with
many disputed claim limitations. See, e.g., App. Br. 13, 17-18.
Appellants’ argument is unpersuasive because the Examiner rejected
the claims under 35 U.S.C. § 103, not 35 U.S.C. § 102. Obviousness
determination does not require a single reference to teach all of the claimed
limitations. See 35 U.S.C. § 103.

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Issue 2 – web site uptime information
Appellants assert that Abdelhak does not teach the recited electronic
web site uptime information representing that each of one or more web sites
is inactive. See App. Br. 13. Appellants argue that in rendering the
rejections, the Examiner eliminated the essence of the claim limitation “each
of one or more web sites is inactive,” and the cited Abdelhak passage 34
does not teach web site uptime information. See id.
Appellants’ argument is unpersuasive because Appellants do not
adequately rebut the Examiner’s findings. The Examiner finds that
Appellants admitted “web site uptime information” is known in the art. See
Ans. 16; After Final Remarks 11. And Appellants do not dispute the
Examiner’s citing Abdelhak’s paragraph 77 (teaching an internet portal page
can be suspended, and thus the website is inactive) and Singh’s paragraphs
for teaching the recited “web site is inactive” claim term. See Ans. 7-8.
Combining the known art technique with the teachings of Abdelhak (and/or
Singh) would have predictably used prior art elements according to their
established functions—an obvious improvement. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).

Issue 3 – desktop application tool
Appellants assert that Abdelhak does not teach the recited
a desktop application tool that is provided by the at least one
processor that, when installed on each of at least two of the
plurality of computing devices, programs and configures each
of the at least two computing devices to at least communicate
with the at least one processor over the communication network
and to receive electronic information from the at least one
processor.
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See App. Br. 13-14. Appellants argue that some of the cited Abdelhak
passages do not teach the disputed claim limitation.
Again, Appellants’ argument is unpersuasive because Appellants do
not adequately rebut the Examiner’s findings. The Examiner correctly maps
the recited at least one processor to Abdelhak’s personal portal information
processor, and the recited plurality of computing devices to Abdelhak’s user
terminals. See Ans. 18-20; Abdelhak, Figs. 2-3, ¶¶ 3, 13, 15, 38, 46, 49.
The Examiner also correctly maps the recited desktop application tool to
Abdelhak’s user interface, such as the personal Internet portal page design
display screen discussed in Abdelhak’s paragraph 52. See Ans. 18-19;
Abdelhak, 13, 46, 52.

Issue 4 – receiving options via desktop application tool
Appellants assert that Abdelhak’s certain paragraphs do not teach the
recited “receive, from each of the at least two computing devices via the
respectively installed desktop application tool, electronic options
representing information associated with receiving notifications for a
plurality of respective proprietors of one or more web sites.” See App. Br.
14-15.
In response to Appellants’ arguments, the Examiner cites Abdelhak’s
claims and additional paragraphs.1 See Ans. 21-22. Because Appellants do
not dispute the Examiner’s findings based on those Abdelhak paragraphs

1 For this claim limitation (and similarly, other claim limitations), Appellants
do not contend that the Examiner’s citing Abdelhak’s claims and additional
paragraphs constitutes a new ground of rejection.
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and claims, the Examiner’s findings are undisputed. See In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court [or this board] to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art.”).

Issue 5 – establish a first (second) session with
a first (second) search engine
Appellants assert that Abdelhak’s certain paragraphs do not teach the
recited:
establish a first communication session with a first search
engine, and conduct a first search in the first search engine for a
first web site respectively associated with a first proprietor of
the plurality of proprietors to determine a first ranked position
of a respective first hyperlink to the first web site in a first list
of hyperlinks provided by the first search engine in response to
the first search performed in the first search engine.
See App. Br. 15-17.
In response to Appellants’ argument, the Examiner cites additional
Abdelhak paragraphs. See Ans. 22-25. Because Appellants do not dispute
the Examiner’s findings based on those Abdelhak paragraphs, the
Examiner’s findings are undisputed. See Baxter Travenol Labs., 952 F.2d at
391.
Appellants also assert that the Examiner’s citing Singh for the recited
“to determine a first ranked position” and “to determine a first ranked
position” makes little sense. See App. Br. 16.
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Similar to the discussion above with respect to Issue 1, Appellants’
assertion is unpersuasive because Appellants do not present adequate
analysis to persuade us of error.

Issue 6 – generating and storing
first (second) electronic search engine information
Appellants assert that Abdelhak’s paragraphs 48 and 49 do not teach
the recited “generating and storing” electronic search engine information.
See App. Br. 15-17.
In response to Appellants’ argument, the Examiner cites additional
Abdelhak paragraphs. See Ans. 25. Because Appellants do not dispute the
Examiner’s findings based on those Abdelhak paragraphs, the Examiner’s
findings are undisputed. See Baxter Travenol Labs., 952 F.2d at 391. We
adopt the Examiner’s findings and reasoning on page 25 as our own. See
Ans. 25. We emphasize the following: the Examiner correctly finds that the
cited paragraphs teach “generating and storing [information].” See id. And
the Examiner already mapped the remaining portions of the claim
limitations.

Issue 7 – determine that at least one of the first web site
and the second web site is inactive
Appellants assert that Abdelhak’s paragraph 34 does not teach the
recited “determine [] at least one of the first web site and the second web
site[.]” See App. Br. 17-18. Appellants also argue that the Examiner
improperly eliminates the claim limitation “is inactive,” and that Singh’s
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paragraph 62 and 162 teach “inactive links” instead of an inactive website.
See App. Br. 17-18, 22-23.
We disagree. First, the Examiner finds—and Appellants do not
dispute—that Abdelhak’s paragraph 77 teaches that an internet portal page
can be suspended. See Ans. 7, 25. One skilled in the art would understand
that when an internet portal page is suspended, that website is inactive.
Therefore, Abdelhak teaches the recited claim limitation “[a] website is
inactive.”
Second and alternatively, the Examiner finds that Singh’s paragraphs
201 and 272 teach web sites and “inactive” links. Therefore, the Examiner
correctly finds that Singh teaches the claim elements “web site” and “is
inactive.” See Ans. 7-8, 25-26.

Issue 8 – process the electronic first search engine information . . . .
In response to Appellants’ argument, the Examiner cites additional
Abdelhak paragraphs. See Ans. 26. Because Appellants do not dispute the
Examiner’s findings based on those Abdelhak paragraphs, the Examiner’s
findings are undisputed. See Baxter Travenol Labs., 952 F.2d at 391.
In addition, we note that this claim limitation includes many claim
elements we discussed above. For similar reasons discussed above, we
disagree with Appellants’ arguments (App. Br. 18). We adopt the
Examiner’s reasoning and findings on page 26 of the Answer as our own.
We emphasize that the cited paragraphs teach processing [information] (see,
e.g., Abdelhak’s paragraph 53).

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Issues 9 -12 (corresponding to Appellants’ Issues 9-12)
For each of the claim limitations associated with Issues 9-12, the
Examiner cites additional Abdelhak paragraphs in response to Appellants’
arguments. See Ans. 26-30. Because Appellants do not dispute the
Examiner’s findings based on those Abdelhak paragraphs, the Examiner’s
findings are undisputed. See Baxter Travenol Labs., 952 F.2d at 391.
In addition, the claim limitations include many claim elements we
discussed above. For similar reasons discussed above, we disagree with
Appellants’ arguments (App. Br. 18-21), and agree with the Examiner’s
conclusions. We adopt the Examiner’s reasoning and findings on pages 26-
30 of the Answer as our own. See Ans. 26-30.

Issue 13 – Singh and New Arguments Raised In the Reply Brief
Appellants assert that Singh does not teach various recited claim
elements. See App. Br. 21-23; see also Reply Br. 4-5.2
Appellants’ assertion is unpersuasive because Appellants have not
presented adequate evidence to demonstrate that Singh does not teach the
disputed claim elements.
In the Reply Brief and for the first time, Appellants belatedly argue
that it is improper to modify Abdelhak as proposed by the Examiner, and
that Abdelhak teaches away from the claimed invention. See Reply Br. 2-4.
Appellants have waived such arguments since they are untimely. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been

2 Appellants’ arguments about the claim element “web site is inactive” are
discussed above.
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made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.”).
We also note that Appellants’ belated arguments (Reply Br. 2-4) are
unpersuasive. The Examiner finds—and Appellants do not dispute—that
both Abdelhak and Singh are in the same field of endeavor. See Ans. 32.
The Examiner has provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
combine the teachings of Abdelhak and Singh. See Ans. 7-8, 32-33. The
proposed modification of Abdelhak’s system would have predictably used
prior art elements according to their established functions—an obvious
improvement. See KSR, 550 U.S. at 417.
Appellants’ arguments are also unpersuasive because it is well settled
that “a determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements.” In
re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is
the test for obviousness whether a secondary reference’s features can be
bodily incorporated into the structure of the primary reference. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Finally, Appellants have not provided adequate analysis and therefore,
have not persuaded us that Abdelhak teaches away from the claimed
invention. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (“A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)
(“[A] reference will teach away if it suggests that the line of development
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flowing from the reference’s disclosure is unlikely to be productive of the
result sought by the applicant.”).
Accordingly, we sustain the Examiner’s rejection of claim 27, and
associated dependent claims, which Appellants do not separately argue.

Claim 28 and Associate Dependent Claims

Appellants do not provide analysis countering the Examiner’s
rejection of claim 28 and associated dependent claims.
To the extent that claim 28 recites claim limitations identical or
similar those discussed above with respect to claim 27, our analysis
regarding claim 27 applies to those claim limitations.
Therefore, we sustain the Examiner’s rejection of claim 28 and
associated dependent claims.

DECISION
The Examiner’s decision rejecting claims 2, 4-10, 12, 14-20, 22, 24
and 27-40 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD