Ex Parte Berry

Board of Patent Appeals and Interferences

May 13, 2008

10045111 (B.P.A.I. May. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD EDMOND BERRY
____________________

Appeal 2007-3628
Application 10/045,1111
Technology Center 2100
____________________

Decided: May 13, 2008
____________________

Before ALLEN R. MACDONALD, JAY P. LUCAS, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals from a final rejection of claims 1 to 12, 16 to 21, 23
to 35, 39 to 44, and 46 under authority of 35 U.S.C. § 134. Claims 13 to 15,

1 Application filed January 10, 2002. The real party in interest is
International Business Machines Corporation.

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22, 36 to 38, and 45 are cancelled. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to a method and system for
automatically purging a search engine index of broken or out-of-date links.
In the words of the Appellant:
The present invention provides a method, apparatus, and
computer instructions for pruning search engine indices. A
notification is received from a client browser that a Web page
retrieval error occurred for a Web page or that the Web page no
longer contains selected keywords. In response to receiving the
notification, the Web page is automatically deleted from the search
engine indices. This automatic deletion may occur upon receiving the
notice from the browser or after receiving some threshold number of
notifications from browsers.

(Spec. 5, top).
Claim 1 and Claim 43 are exemplary:
1. A method in a data processing system for pruning search engine
indices, the method comprising:

receiving a notification by a search engine from a client browser that a
Web page retrieval error occurred for a Web page or that the Web page no
longer contains selected keywords; and

automatically deleting the Web page from the search engine indices in
response to receiving the notification.

43. A computer program product in a computer readable medium for
pruning search engine indices, the computer program product comprising:

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first instructions for receiving by a search engine a notification from a
client browser that a Web page retrieval error occurred for a Web page or
that the Web page no longer contains selected keywords; and

second instructions for automatically deleting the Web page from the
search engine indices in response to receiving the notification.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Glass US 6,253,204 B1 Jun. 26, 2001
Steele US 2003/0191737 A1 Oct. 09, 2003
(filed Dec. 18, 2000)

Rejections:
R1: Claims 43, 44, and 46 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.
R2: Claims 1 to 12, 16 to 21, 23 to 35, 39 to 44, and 46 stand rejected
under 35 U.S.C. § 103(a) for being obvious over Glass in view of Steele.
Appellant contends that the claimed subject matter is not rendered
obvious by Glass in combination with Steele, for reasons to be discussed
more fully below. The Examiner contends that each of the claims is
properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments which Appellant could have made but chose not to
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make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2006).2

We affirm.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. §§ 101 and 103(a). The first issue is
dependent on whether a computer program embodied in a volatile signal is
statutory. The second issue turns on whether Glass, in view of Steele, teach
a method and system for pruning search engine indices as claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a method and system (hereinafter method) for
eliminating entries in search engine indices pointing to deleted, out-of-
date or dead pages. (Spec., 1 top; 4, top). According to this method,

2 Appellant has not presented any substantive arguments directed separately
to the patentability of the dependent claims or related claims in each group,
except as will be noted in this opinion. In the absence of a separate
argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

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when an Internet browser requests a web page, and an error is returned
instead, the browser sends a message to the search engine informing it of
such. (Spec., 16, bottom). The search engine has been adapted to receive
such messages (Spec., 16, top), and upon receipt of a certain number of
them will delete the Web page from the search engine indices. (Spec.,
17, middle). The method includes the search engine doing some
checking on its own before deleting the page. (Spec., 22, top).
2. The invention of the Appellant is extended to include performing a
similar action on browser bookmarks, removing them if they are linked to
Web pages that cannot be retrieved. (Spec., 22, l. 18+).
3. Appellant has included claims 43, 44, and 46, drawn to embodiments in
which a computer program performing this method is stored on a
computer readable medium. (Spec., 24, l. 9). Such media include, inter
alia, “digital and analog communication links, wired or wireless
communications links using transmission forms, such as, for example,
radio frequency and light wave transmissions.” (Spec., 24, l. 10+).
4. The reference Glass, though antedating somewhat modern browsers,
nonetheless provides a method and system to report broken links to the
referencing servers. (Col. 1, l. 18). In Column 4, line 28, is described the
retrieval of a first document 1 (e.g., a Google response page) that
contains links to other web pages. In the patent’s example, the user
requests a link in document 1 that should cause the retrieval of document
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2. If document 2 is not available, for any of the reasons itemized in
Column 4, lines 41 to 52, including the document being absent, then an
error message is sent to the client (or the client generates an error
message). (Col. 4, l. 63). That error message is used to construct a
second message indicating a broken link, (Col. 5, l. 15), which second
message is sent “to the site which originated the page containing the
broken link (340)”. (Id.) When that second message is received by the
server that presented the message with the broken link (“document 1”
above), it modifies the document 1 to indicate that the link is in error.
(Col. 5, l. 43). That error indication about the bad link is stored on the
server that produced the document. (Col. 5, l. 58). A database keeps
records of the number of attempts to connect through that broken link.
(Col. 7, l. 23). A plurality of reports is needed for action beyond a
warning. (Col. 7, l. 65). If a sufficient number of messages about a link
being broken is received, then those broken links are deleted from the
server, “purged to avoid the accumulation of useless information.” (Col.
8, l. 40).
5. Steele presents a more modern system, including a proper browser, that
also checks for bad links. (¶[0095], [0125]). Of special interest is the
mention of checking on bad links in bookmarks. (¶[0125]).
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PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
“To reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness. . . . On appeal to
the Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.” [citations removed]
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
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Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Furthermore, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
With regard to the issue of whether it is obvious to use a more modern
technology in substitution for an older one, we take guidance from the recent
Leapfrog Enterprises, Inc. v. Fisher Price, Inc. and Mattel, Inc.:
“Thus, we bear in mind that the goal of the claim 25 device was to
allow a child to press a switch associated with a single letter in a word
and hear the sound of the letter as it is used in that word. …
Accommodating a prior art mechanical device that accomplishes that
goal to modern electronics would have been reasonably obvious to
one of ordinary skill in designing children’s learning devices.
Applying modern electronics to older mechanical devices has been
commonplace in recent years.” Leapfrog Enterprises, Inc v. Fisher
Price, Inc. and Mattel, Inc., 485 F.3d 1157, 1161, (Fed. Cir. 2007).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellant’s
claims under 35 U.S.C. §§ 101 and 103. The prima facie case is presented
on pages 3 to 8 of the Examiner’s Answer.
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In opposition, Appellant presents arguments on both issues. The first
argument addresses the issue of statutory subject matter under 35 U.S.C.
§ 101. The issue is no longer in question. Claims 43, 44, and 46 recite a
computer readable medium encoded with a computer program. In the
Specification, page 24 (See FF#3) the Appellant defines computer readable
media as including a data signal embodied in a carrier frequency wave.
Such a claim for computer instructions embodied in a signal only is
not considered by this office to be statutory under 35 U.S.C. § 101.3 This
policy has recently been confirmed by the Court of Appeals for the Federal
Circuit in In re Nuijten. “A transitory, propagating signal like Nuijten's is
not a ‘process, machine, manufacture, or composition of matter.’ Those four
categories define the explicit scope and reach of subject matter patentable
under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject
matter.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). The Examiner
did not err in rejecting claims 43, 44, and 46 under 35 U.S.C. § 101.
Appellant contends that Examiner erred in rejecting claims 1 to 12, 16
to 21, 23 to 35, 39 to 44, and 46 under 35 U.S.C. § 103(a). Reviewing the

3 See, e.g., In re Nuijten, 500 F.3d 1346, 1359 (Fed. Cir. 2007). Ex Parte
Hartmann, No. 2006-1607, 2006 WL 2700810, at 4 (BPAI 2006) (non-
precedential). 'Signals' are not statutory subject matter. See also "Interim
Guidelines for Examination of Patent Applications for Patent Subject Matter
Eligibility," 1300 Off. Gaz. Pat. Office 142, Annex IV(c) (Nov. 22, 2005).

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findings of facts cited above, we find the claimed elements of exemplary
Claim 1 present in the Glass reference. Broken link message #340 serves as
notification to the server from the client browsing program that a Web page
retrieval error occurred. After a number of such messages, the offending
Web page is deleted from the search engine indices. See the detailed
explanation in (FF#4) above. Steele, which is directed to a similar system
that addresses the same problem, broken web links, adds the teachings of a
more modern browser and explicitly mentions broken links in bookmarks. It
would be obvious, in view of KSR and Leapfrog (cited above) to combine
these teachings to modernize the system of Glass, as claimed.
Appellant argues that Glass does not disclose “receiving a notification
by a search engine from a client browser that a Web page retrieval error
occurred for a Web page . . .”. (Br., 16, bottom). We see such a notice
stored on the server in Glass. (Col. 5, l. 58+).
Appellant argues that Steele does not “disclose or suggest
‘automatically deleting the Web page from the search engine indices in
response to receiving the notification’ as recited in claim 1.” (Br., 18, top).
However, Glass does, in column 8, line 40.
Appellant argues that the references cannot be properly combined.
(Br., 18, middle). We disagree, as mention above on this page.
Finally, with respect to claims 11, 26, and 34, Appellant argues that
the combination of references does not teach a second type of notification
from a browser that at least one search term is absent from the Web page.
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(Br., 19, bottom). We note that one of the triggers for an error message in
Glass is the absence of the Web document, which is an extreme case of a
search term being absent. In these claims the “second type” of notification
is a subset of the first type (a generic retrieval error), and thus need not be
differentiated.
In short, we do not find Appellant’s arguments persuasive of
demonstrating error in the Examiner’s rejection under 35 U.S.C. § 103.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 43, 44, and 46 under 35 U.S.C.
§ 101 and claims 1 to 12, 16 to 21, 23 to 35, 39 to 44, and 46 under
35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of all the pending claims is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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