Ex Parte Bladel

Patent Trial and Appeal Board

Jun 7, 2017

12757866 (P.T.A.B. Jun. 7, 2017)

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.
12/757,866 04/09/2010 James Bladel 0203 3689
43699 7590 06/09/2017
Go Daddy Operating Company, LLC
14455 NORTH HAYDEN ROAD
SUITE 219
SCOTTSDALE, AZ 85260
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/09/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
inventions@godaddy.com
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES BLADEL
Appeal 2016-004147
Application 12/757,8661
Technology Center 3600
Before BRUCE R. WINSOR, MICHAEL J. STRAUSS, and
MICHAEL J. ENGLE, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1—3, 5—8, 10, 12—20, 22, and 24—26, which constitute all the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
Claims 4, 9, 11,21, and 23 are cancelled. Br. at Claims App’x.
We affirm-in-part.
1 The real party in interest identified by Appellant is Go Daddy Operating
Company, LLC. Br. 1.
2 The Examiner lists claim 21 as rejected (Final Act. 1); however, claim 21
is cancelled (Br. at Claims App’x).
Appeal 2016-004147
Application 12/757,866
STATEMENT OF THE CASE
Appellant’s disclosed invention relates “to online advertising and,
more particularly, . . . [to] enabling Uniform Resource Locator (URL)
shortening based online advertising.” Spec. 13. Claims 1 and 15, which are
illustrative, read as follows:
1. A method, comprising the steps of:
receiving from a user, by at least one server computer
communicatively coupled to a network, a request to
shorten a uniform resource locator resolving to a first
network resource stored on a second server computer,
said request comprising said uniform resource locator;
retrieving at least a portion of said first network resource
from said second server computer using said uniform
resource locator resolving to said first network resource;
parsing, by at least one of said at least one server
computer, said uniform resource locator or said first
network resource into at least one keyword; transmitting,
by at least one of said at least one server computer, at
least one of said at least one keyword to an online
advertisement provider;
receiving, by at least one of said at least one server
computer, at least one online advertisement from said
online advertisement provider, wherein said at least one
online advertisement is relevant to said at least one
keyword; generating, by at least one of said at least one
server computer, a second network resource comprising
said at least a portion of said first network resource
retrieved from said second server computer and at least
one of said at least one online advertisement;
storing, by at least one of said at least one server
computer, said second network resource on a storage
device accessible to said at least one server computer;
2
Appeal 2016-004147
Application 12/757,866
generating, by at least one of said at least one server
computer, a shortened resource locator resolving to said
second network resource stored on said storage device
accessible to said at least one server computer, said
shortened resource locator not resolving to said first
network resource; and
transmitting, by at least one of said at least one server
computer, said shortened resource locater to said user.
15. A method, comprising the steps of:
receiving from a user, by at least one server computer
communicatively coupled to a network, a request to
shorten a uniform resource locator resolving to a first
network resource stored on a second server computer,
said request comprising said uniform resource locator;
parsing, by at least one of said at least one server
computer, said uniform resource locator or said first
network resource into at least one keyword;
generating, by at least one of said at least one server
computer, at least one online advertisement relevant to
said at least one keyword;
generating, by at least one of said at least one server
computer, a second network resource comprising said
first network resource and at least one of said at least one
online advertisement;
storing, by at least one of said at least one server
computer, said second network resource on a storage
device accessible to said at least one server computer;
generating, by at least one of said at least one server
computer, a shortened resource locator resolving to said
second network resource; and
transmitting, by at least one of said at least one server
computer, said shortened resource locater to said user.
The Examiner relies on the following prior art in rejecting the claims
3
Appeal 2016-004147
Application 12/757,866
Zhou et al.
Joao
Kolsy
Galai et al.
US 2001/0037205 Al Nov. 1, 2001
US 2003/0163372 Al Aug. 28, 2003
US 2005/0267872 Al Dec. 1, 2005
US 2007/0136279 Al June 14, 2007
Sarukkai et al. US 2009/0017804 Al Jan. 15,2009
Nicole Lee, 10 links to shorten your links, CNET News (Mar. 20,
2008), http://news.cnet.com/8301-17939_109-9898698-2.html,
accessed Oct. 16, 2012.
Claims 1—3, 5—8, 10, 12—20, 22, and 24—26 stand rejected under
35 U.S.C. § 112, first paragraph,3 as failing to comply with the written
description requirement. See Final Act. 2—3.
Claims 1—3, 5—8, 10, 12—20, 22, and 24—26 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter, i.e., an
abstract idea. See Final Act. 3^4.
Claims 1—3, 5, and 15—17 stand rejected under 35 U.S.C. § 103(a)4 as
being unpatentable over Galai et al. (“Galai”), Nicole Fee (“Fee”), and
Sarukkai et al. (“Sarukkai”). See Final Act. 4—9.
Claims 6, 7, 18, and 195 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Galai, Fee, Sarukkai, and Kolsy. See Final Act. 9—
3 Re-codified as § 112(a).
4 All prior art rejections are under the provisions of 35 U.S.C. in effect prior
to the effective date of the Feahy-Smith America Invents Act of 2011. Final
5 The summary ground of rejection lists claims 8 and 20 as rejected over
Galai, Fee, Sarukkai, and Kolsy. Final Act. 9. However, a detailed ground
of rejection is only provided rejecting claims 8 and 20 over Galai, Fee,
Sarukkai, and Joao.
10.
Act 2.
4
Appeal 2016-004147
Application 12/757,866
Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Galai, Lee, Sarukkai, and Joao. See Final Act. 10.
Claims 10 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Galai, Lee, Sarukkai, and Zhou et al. (“Zhou”). See Final
Act. 10.
Claims 12—14 and 24—26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Galai, Lee, Sarukkai, and Official Notice. See Final
Act. 11.
Rather than repeat the arguments here, we refer to the Appeal Brief
(“Br.” filed Aug. 24, 2015) and the Specification as amended (“Spec.” filed
Apr. 9, 2010, amended May 16, 2012) for the positions of Appellant and the
Final Office Action (“Final Act.” mailed Mar. 11, 2015) and Examiner’s
Answer (“Ans.” mailed Jan. 6, 2016) for the reasoning, findings, and
conclusions of the Examiner.
PETITIONABLE MATTERS
Appellant alleges the Final Office Action fails to answer Appellant’s
arguments made during prosecution, as required by MPEP § 707.07(f). Br.
8. This Board is empowered to “review adverse decisions of examiners
upon applications for patents.” 35 U.S.C. § 6(b)(1) (emphasis added); see
also 37 C.F.R. § 41.31(a)(1). Other matters, such as whether or not the
Examiner has fully responded to Appellant’s arguments during prosecution
of an application, are reviewable by petition to the Director of the U.S.
Patent and Trademark Office or as delegated by the Director. See 37 C.F.R.
§ 1.181 et seq. Accordingly, allegations that the Examiner has failed to
5
Appeal 2016-004147
Application 12/757,866
respond to the Appellant’s traversals are not before us and will not be
discussed further.
ISSUES
Based on Appellant’s arguments, we discuss the appeal by referring to
claims 1 and 15. The dispositive issues presented by Appellant’s arguments
are as follows:
Does the Examiner err in finding that the limitation “receiving from a
user, by at least one server computer . . ., a request to shorten a uniform
resource locator resolving to a first network resource stored on a second
server computer, said request comprising said uniform resource locator,” as
recited in claim 1 (emphases by Examiner (Final Act. 2)), is not described in
the Specification?
Does the Examiner err in concluding that claim 1 is directed to non-
statutory subject matter, i.e., an abstract idea?
Does the Examiner err in finding the combination of Galai, Lee, and
Sarukkai teaches or suggests
generating, by at least one of said at least one server computer, a
second network resource comprising . . . said first network
resource . . . and at least one of said at least one online
advertisement[, and] storing, by at least one of said at least one
server computer, said second network resource on a storage
device accessible to said at least one server computer [, and]
generating, by at least one of said at least one server computer, a
shortened resource locator resolving to said second network
resource . . ., said shortened resource locator not resolving to
said first network resource[,]
as recited in claim 1 ?
6
Appeal 2016-004147
Application 12/757,866
Does the Examiner err in finding the combination of Galai, Lee, and
Sarakkai teaches or suggests
generating, by at least one of said at least one server computer, a
second network resource comprising said first network resource
and at least one of said at least one online advertisement[,]
storing, by at least one of said at least one server computer, said
second network resource on a storage device accessible to said at
least one server computer[, and] generating, by at least one of
said at least one server computer, a shortened resource locator
resolving to said second network resource[,]
as recited in claim 15?
ANALYSIS
Rejection under § 112, Lirst Paragraph
The Examiner finds that claim 1 fails to meet the written description
requirement of § 112, first paragraph, explaining as follows:
According to the specification (fig. 1, 7), only one server
is disclosed. On fig. 9, the specification disclosed highly-
distributed system embodiment wherein the different modules
run on separate servers or on a single server.
The specification however does not teach receiving by one
server a request to shorten a URL stored on a second server,
retrieving a portion of the network resource from the second
server, generating a second network resource . . . retrieved from
the second server . . . storing by the second server the second
network resource and generating a shortened resource locator
Pinal Act. 3 (ellipses in original). The Examiner further explains as follows
As indicated before the specification teaches receiving a
URL 200 that may resolve to a first network resource 210,
generating a shortened resource locator 300 that may be
7
Appeal 2016-004147
Application 12/757,866
associated with URL 200, transmitting the shortened resource
locator 300 to a first user . . .
Examiner is also aware that applicant’s specification
teaches several servers and that a request from the user (client
computer 760) to shorten a URL (a webpage having the URL
200) is received by a website (navigates to a URL shorting
website 710 and cut and paste the URL 200). . . which may cause
the website to transmit an HTTP request to keyword extraction
module 720 running on the server 700.
However the specification does not teach the request for
the shortened resource locator (URL 200 which resolves to a first
resource 210) is stored in a second server . . . and generating a
second network resource comprising a portion of the first
network resource retrieved from the second server computer . . .
The specification teaches the URL entered at the website
710 and the request sent to one of the servers 700 .. . but failed
to include a server storing the first network resource (URL 200)
and to retrieve part of the URL from the second server.
Pinal Act. 12 (ellipses in original); see also Ans. 2—6.
Appellant contends the Examiner’s findings are based on incorrect
claim interpretations (see Br. 6—7) and that the Specification, as-filed,
discloses that the Appellant had possession of the invention described in
claim 1 (see id. at 8—10; see also id. at 3). We agree with Appellant for the
reasons stated by Appellant.
The written description requirement requires us to determine “whether
the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language.” In re Kaslow, 707 P.2d 1366, 1375
(Led. Cir. 1983) (citations omitted). Thus, “the description must ‘clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
8
Appeal 2016-004147
Application 12/757,866
invented what is claimed.”’ Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (enbanc) (quoting Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562—63 (Fed. Cir. 1991)). “In other words, the test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad, 598
F.3d at 1351.
[T]he [written description] test requires an objective inquiry into
the four comers of the specification from the perspective of a
person of ordinary skill in the art. Based on that inquiry, the
specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the
invention claimed.
Id.
[I]t is the specification itself that must demonstrate possession
[of the claimed invention]. And while the description
requirement does not demand any particular form of disclosure,
Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008), or that the specification recite the
claimed invention in haec verba, a description that merely
renders the invention obvious does not satisfy the requirement,
Lockwood v. Am. Airlines, 107 F.3d 1565, 1571—72 (Fed. Cir.
1997).
Id. at 1352.
There seems to be no dispute that the Specification discloses the
functions described in claim 1, rather the gravamen of the rejection is the
Examiner’s finding that the Specification does not disclose possession of an
invention wherein a request to shorten a URL comprising the URL is
received by “at least one server computer” (claim 1) wherein the URL
9
Appeal 2016-004147
Application 12/757,866
resolves to a “first network resource,” e.g., a website, “stored on a second
server computer.”
We look to Specification Figure 9 (cited at Final Act. 3), reproduced
below, for guidance.
Figure 9 from the Specification illustrates an embodiment of
Appellant’s invention implemented on a plurality of servers (Spec. 15,
57) and is annotated herein to show the disclosure of the “at least one server
computer” and the “second server computer.”
Figure 9 of the Specification demonstrates that Appellant had
possession of an invention in which the various functions described in the
Specification and illustrated in Figures 1 and 4—8 are performed on a
10
Appeal 2016-004147
Application 12/757,866
plurality of server computers, although each of the server computers is given
the same item number (700). See Spec, ff 52, 57. For clarity, we will
identify the various server computers of Figure 9 by appending the item
number of the module shown as running on the respective server computers.
We note that server 700/710 is illustrated as having website 710, which is
addressable by URL 200 that resolves to a network resource 210 (Spec.
34, 50). In other words, server 700/710 comprises “a first network
resource stored on a second server computer” which is addressed by a URL
(i.e., the URL resolves to the website 710), as annotated above. The same
URL is also received by, for example, the keyword extraction module 720
on server 700/720 and the shortened URL generation module 750 on server
700/750, which together, and collectively with servers 700/730, 700/740,
and 700/800, comprise “at least one server computer communicatively
coupled to a network [770],” as annotated above. See Spec. H 50, 57. The
receipt of the URL by the shortened URL generation module 750 on server
700/750, discloses that the URL received by the “at least one server
computer” is included in a request to shorten the URL.
Therefore, we are persuaded the Examiner erred in finding that the
limitation “receiving from a user, by at least one server computer . . . , a
request to shorten a uniform resource locator resolving to a first network
resource stored on a second server computer, said request comprising said
uniform resource locator,” as recited in claim 1, is not described in the
Specification. Accordingly, we do not sustain the rejection under 35 U.S.C.
§ 112, first paragraph, of claim 1 and claims 2, 3, 5—8, 10, 12—20, 22, and
24—26, which were rejected on the same basis as claim 1.
11
Appeal 2016-004147
Application 12/757,866
Rejection under § 101
The Examiner concludes claim 1 is directed to an abstract idea, which
is non-statutory subject matter. The Examiner explains as follows:
[T]he claims are directed towards advertisement. Generating a
shortened resource locator and including advertisement are
fundamental economic practices and thus, the claims include an
abstract idea. The claims do not include limitations that are
“significantly more” than the abstract idea because the claims do
not include an improvement to another technology or technical
field, an improvement to the functioning of the computer itself,
or meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. Note,
that the limitations, in the instant claims, are done by the
generically recited computer. The limitations are merely
instructions to implement the abstract idea on a computer and
require no more than a generic computer to perform generic
computer functions that are well-understood, routine and
conventional activities previously known to the industry.
Final Act. 4; see also id. at 12—13; Ans. 6—7.
Appellant argues as follows:
The [Final Office Action] states that the claims are directed
towards advertisement. Appellant maintains that this is a gross
overgeneralization. The specification as filed includes the more
accurate purpose of the invention as “systems, methods, and
tools enabling Uniform Resource Locator (URL) shortening
based online advertising.” [Quoting Spec. 13.] The [Final
Office Action] ’s 101 analysis includes a statement that
“[generating a shortened resource locator ... [is a] fundamental
economic practice.” [Quoting Final Act. 4.] This is an incorrect
statement, and is irrational under the Alice standard. [Referring
to Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347
(2014).] URL shortening is a technological, rather than an
economic practice, and cannot be performed in the head of a user
or by using pencil and paper, but instead requires a specialized
machine, programmed to accomplish such technological
endeavors.
12
Appeal 2016-004147
Application 12/757,866
Br. 11 (alterations within quotation from the Final Office Action in original).
We agree with Appellant.
Patent eligibility is a question of law that we review de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
statutorily patentable, the subject matter of an invention must be a “new and
useful process, machine, manufacture, or composition of matter, or [a] new
and useful improvement thereof.” 35U.S.C. § 101. The Supreme Court has
held that there are implicit exceptions to the categories of patentable subject
matter identified in § 101, including (1) laws of nature, (2) natural
phenomena, and (3) abstract ideas. Alice, 134 S. Ct. at 2355. Further, the
Court has “set forth a framework for distinguishing patents that claim [1]
laws of nature, [2] natural phenomena, and [3] abstract ideas from those that
claim patent-eligible applications of those concepts.” Id. (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)).
The Supreme Court’s analysis in Alice follows the two-part analysis set forth
in Mayo\ (1) determine whether the claim is directed to an abstract idea; and
(2) if an abstract idea is present in the claim, determine whether any element,
or combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the abstract idea itself. See Alice, 134 S.
Ct. at 2356.
Claim 1 is directed to a “method,” i.e., a process, which is one of the
four statutory classes. Following the Court’s guidance, we turn to the first
step of the Mayo!Alice analysis to determine if the claim is directed to one of
the judicial exceptions, i.e., an abstract idea.
Claim 1 is much like a claim considered by our reviewing court in
DDR Holdings, LLCv. Hotels.com L.P., 773 F.3d 1245, 1249-50 (Fed. Cir.
13
Appeal 2016-004147
Application 12/757,866
2014) (reproducing claim 19 of US 7,818,399 Bl). In the present
application, claim 1 is addressed to providing relevant on-line advertising in
combination with the content of a requested webpage. See Spec. 14, Fig. 3.
Like claim 1, the claim considered by the DDR court was addressed to
combining commercial content in a webpage. Unlike the claim addressed in
DDR, however, the insertion of relevant advertising into underlying content
is a well-known business challenge, encountered, for example, in traditional
ink-on-paper publishing. Therefore, claim 1 does not “address a business
challenge . . ., particular to the Internet,” id. at 1257, and is directed to an
abstract idea under MayolAlice step 1.
Nevertheless, applying Mayol Alice step 2 to the claim demonstrates
that claim 1 recites elements that ensure the claim amounts to significantly
more than the abstract idea itself. See Alice, 134 S. Ct. at 2358. As with the
claim considered in DDR, claim 1 “specifies] how interactions with the
Internet are manipulated to yield a desired result-...-a result that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.” DDR, 773 F.3d at 1257. In particular, claim 1 recites that
in response to the request (e.g., the click of a hyperlink) for a network
resource (e.g. a web page), a new network resource is created combining the
requested network resource with pertinent advertising, and a new shortened
URL is created that addresses (resolves to) the new network resource. Thus,
“the limitations of the claims, taken individually, recite generic computer,
network and Internet components, none of which is inventive by itself,” but
“an inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.” BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349-50 (Fed. Cir.
14
Appeal 2016-004147
Application 12/757,866
2016). Furthermore, claim 1 does not attempt preempt every way of
automating the combination of advertising into a network resource, rather
claim 1 “recitefs] a specific way to automate the creation of a composite web
page.” DDR, 773 F.3d at 1259. Therefore, claim 1 includes “additional
features” that ensure the claims are “more than a drafting effort designed to
monopolize [an abstract idea].” Alice, 134 S. Ct. at 2357.
We are persuaded of error in the rejection of claim 1 under 35 U.S.C.
§101. Accordingly, we do not sustain the rejection under 35 U.S.C. § 101,
of claim 1 and claims 2, 3, 5—8, 10, 12—20, 22, and 24—26, which were
rejected on the same basis as claim 1.
Rejections under § 103(a)
Claim 1
Appellant contends that Galai teaches displaying relevant advertising
together with a requested web page and Sarukkai teaches inclusion of
advertising in pre-existing web pages. Br. 14 (citing Galai 86; Sarukkai
1 61). Appellant contends that although both Lee and Sarukkai teach
shortening URLs, in both cases the shortened URL addresses the same
network resource as the original longer URL. Br. 15 (citing Sarukkai
10070).
Appellant contends as follows:
In the present claims, in contrast to the cited references,
content is first retrieved from a first network resource stored on
the “second server computer.” That content is then combined
with relevant advertising content, and the resulting combination
is stored in a location on the “at least one server computer” in the
form of a second network resource. A shortened resource locator
is then generated, where the shortened resource locator points to
the second network resource. The “uniform resource locator”
15
Appeal 2016-004147
Application 12/757,866
and the “shortened resource locator,” therefore, resolve to
different network resources stored on different server computers.
Br. 14. We do not agree that the second network resource is required to be
stored on a different server computer from that on which the first network
resource is stored. Claim 1 merely recites that the second network resource
is stored “on a storage device accessible to said at least one server
computer” (emphasis added). Appellant proffers no explanation as to why,
for example, in Figure 9 of the Specification the storage of server 700/710
(i.e., the “second server computer” where the first network resource is
stored) is not “accessible to” each of servers 700/720, 700/730, 700/740,
700/750, and 700/800 (i.e., the “at least one server computer”) by way of
network 770. We do agree, however, that claim 1 recites that the first and
second network resources are addressed (resolved to) by different URLs.
The Examiner responds that the use of different servers is not
disclosed in Appellant’s Specification (Ans. 9, 11—12), which we found to
be in error for the reasons discussed above. The Examiner further points to
Galai’s teaching of returning the addresses of on-line advertisements with a
requested web page, combined with Surakkai’s teaching of shortening a link
and storing a mapping of the original link to the shortened link (Final Act
15—16 (citing Galai 84—86; Surakkai item 320) but does not explain how
this teaches that the shortened URL resolves to the second network resource
but not to the first network resource. The Examiner does not otherwise
respond to Appellant’s contention that the references do not teach or suggest
“said shortened resource locator not resolving to said first network
resource.” See generally Ans. 7—12; see also Final Act. 4—6, 13—16.
Based on the record before us, we are constrained to conclude that the
16
Appeal 2016-004147
Application 12/757,866
Examiner has failed to establish that the combination of Galai, Lee, and
Surakkai teach or suggest all of the limitations of claim 1. Accordingly, we
do not sustain the rejections under 35 U.S.C. § 103(a) of claim 1 and claims
2, 3, 5—8, 10, and 12—14, which depend from claim 1.
Claim 15
Appellant makes substantially the same arguments for independent
claim 15 as for claim 1. Compare Br. 15—16 (claim 15), with id. at 14—15
(claim 1). Appellant contends as follows:
In the present claims, in contrast to the cited references,
content is first retrieved from a first network resource stored on
the “second server computer.” That content is then combined
with relevant advertising content, and the resulting combination
is stored in a location on the “at least one server computer” in the
form of a second network resource. A shortened resource locator
is then generated, where the shortened resource locator points to
the second network resource. The “uniform resource locator”
and the “shortened resource locator,” therefore, resolve to
different network resources stored on different server computers.
Br. 16. We are not persuaded of error.
As discussed above regarding claim 1, we conclude that the language
of claim 15 reciting “storing, by at least one of said at least one server
computer, said second network resource on a storage device accessible to
said at least one server computer” (emphasis added) does not require that the
second network resource be stored on a different server computer from that
on which the first network resource is stored. Furthermore, unlike claim 1,
claim 15 does not require that the shortened URL not resolve to the first
network resource.
Therefore, because Appellant’s arguments are not consistent with the
language of claim 15, we are unpersuaded of error in the rejection of claim
17
Appeal 2016-004147
Application 12/757,866
15. Accordingly, we sustain the rejections under 35 U.S.C. § 103(a) of
independent claim 15 and claims 16—20, 22, and 24—26, which depend from
claim 15 and were not separately argued with particularity.
CONCLUSION
On the record before us, (1) the rejection under 35 U.S.C. § 112, first
paragraph, of claims 1—3, 5—8, 10, 12—20, 22, and 24—26 is not sustained; (2)
the rejection under 35 U.S.C. § 101 of claims 1—3, 5—8, 10, 12—20, 22, and
24—26 is not sustained; (3) the rejections under 35 U.S.C. § 103(a) of claim
1—3, 5—8, 10, and 12—14 are not sustained; and (4) the rejections under 35
U.S.C. § 103(a) of claims 15—20, 22, and 24—26 are sustained.
DECISION
The decision of the Examiner to reject claims 15—20, 22, and 24—26 is
affirmed.
The decision of the Examiner to reject claims 1— 3, 5—8, 10, and 12—
14 is reversed.
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) (2014). See
37 C.F.R. §§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
18