11273379 (P.T.A.B. Jun. 8, 2015)

Ex Parte Cheshire

Patent Trial and Appeal BoardJun 8, 2015

11273379 (P.T.A.B. Jun. 8, 2015)

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. 11/273,379 11/12/2005 Stuart D. Cheshire 04860.P3614 4122 45217 7590 06/08/2015 APPLE INC./BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP 1279 OAKMEAD PARKWAY SUNNYVALE, CA 94085-4040 EXAMINER ROSTAMI, MOHAMMAD S ART UNIT PAPER NUMBER 2156 MAIL DATE DELIVERY MODE 06/08/2015 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 STUART D. CHESHIRE ________________ Appeal 2012–012244 Application 11/273,379 Technology Center 2100 ________________ Before, JEFFREY S. SMITH, JOHN G. NEW, and DANIEL N. FISHMAN, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-012244 Application 11/273,379 2 Appellant has filed a Request for Rehearing (hereinafter “Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of March 9, 2015 (hereinafter “Decision”). The Decision affirmed the Examiner’s final rejection of claims 34, 35, 52–63, 66–72, and 83–85 as unpatentable under 35 U.S.C. § 103(a) as follows: 1. We affirmed the Examiner’s rejection of claims 34, 35, 52-54, 56, 58, 59, 61, 62, 66–68, 70, 71, and 83–85 as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Leahy et al. (US 2006/0021031 Al, January 26, 2006) (“Leahy”), Rounthwaite et al. (US 2006/0225136 Al, October 5, 2006) (“Rounthwaite”), and Reno et al. (US 2005/0172229 Al, August 4, 2005) (“Reno”). 2. We affirmed the Examiner’s rejection of claims 55, 57, 60, 63, 69, and 72 as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Leahy, Rounthwaite, Reno, and Soroca (US 2007/0219963 Al, September 20, 2007) (“Soroca”). Decision 8. In the Request, Appellant seeks reconsideration of our Decision affirming the Examiner’s rejection of claim 35 under 35 U.S.C. § 103(a). Specifically, Appellant presents the argument that the Board erred by failing to consider claim 35, which Appellant contends is argued separately from claim 34. Request 2. Independent claim 34 recites: 34. A non-transitory machine-readable medium storing executable program instructions to cause a data processing Appeal 2012-012244 Application 11/273,379 3 system to perform a method of processing data, the method comprising: classifying a source of a URL (Uniform Resource Locator) as at least one of trustworthy if the source of the URL includes alphanumeric user input or untrustworthy, and recording automatically, in response to classifying that the source is trustworthy, a representation of the URL into a list of trusted URLs. App. Br. 24. Claim 35 depends from claim 34 and recites: 35. The non-transitory machine-readable medium as in claim 34 wherein a source is trustworthy if it is one of: (a) typed by a user; and (b) spoken, and recognized by the data processing system, by the user. Id. Appellant argues that the Board erred in not considering separately the limitations of claim 35 (including the incorporated limitations of claim 34) which recites: “classifying a source of a URL (Uniform Resource Locator) as at least one of trustworthy if the source of the URL includes alphanumeric user input or untrustworthy, and recording automatically, in response to classifying that the source is trustworthy, a representation of the URL into a list of trusted URLs” (as recited in claim 34) and “wherein a source is trustworthy if it is one of (a) typed by a user; and (b) spoken, and recognized by the data processing system, by the user.” Request 2. Appellant argues that the Examiner found Reno teaches: “[a]t block 204, the user sends a request for a resource. As those skilled in the art appreciate, this may involve typing a URL into an address window of a Appeal 2012-012244 Application 11/273,379 4 browser.” Request 3 (citing Final Act. p. 8, ll. 7-9). Appellant points out that Reno further teaches: “[i]n some such examples, the link is to an untrusted source. In others, the link is to a trusted source….” Id. (citing Office Action, e.g., page 7, lines 13-20). Thus, Appellant contends, Reno teaches the typing of a URL can result in a source being considered either trustworthy or untrustworthy. Id. In contrast, argues Appellant, claim 35 recites “wherein a source is trustworthy if it is one of: (a) typed by a user.” Request 3. Appellant points, by way of example, to the Specification, which recites: “[f]or example, if the source is a user’s typing of the URL into a Web browser's address field …, then the URL is added automatically, by the system, into the history list of trusted URLs…”). Id. In other words, argues Appellant, typing a URL into a Web browser’s address field results in a source being considered trustworthy, and not either trustworthy or untrustworthy.1 Id. Furthermore, Appellant argues, the combination of Leahy, Rounthwaite, and Reno fails to disclose “wherein a source is trustworthy if it is one of (a) typed by a user; and (b) spoken, and recognized by the data processing system, by the user.” Request 3 (emphasis in original). Appellant contends the Examiner failed to show that the combined cited prior art references teach or suggest “wherein a source is trustworthy if it is one of: ... (b) spoken, and recognized by the data processing system, by the user,” as recited in claim 35. Id. at 4. We are not persuaded by Appellant’s arguments. Claim 35 depends from claim 34 and incorporates the limitation of the latter thereby. We 1 This is argument is identical to that previously presented by Appellant for both claims 34 and 35 in the Appeal Brief. See App. Br. 13–14, 15–16. Appeal 2012-012244 Application 11/273,379 5 explained our reasoning why we affirmed the Examiner’s finding that claim 34 is unpatentable under 35 U.S.C. § 103(a) and Appellant may not simply seek to reargue that conclusion under the guise of a request for rehearing of a separate dependent claim. With respect to the limitation of claim 35 reciting “typed by a user,” the panel explicitly determined “Reno teaches or suggests the limitation of claim 34 reciting “classifying a source of a URL (Uniform Resource Locator) as at least one of trustworthy if the source of the URL includes alphanumeric user input.” Decision 7. We agree with the Examiner’s finding that a person of ordinary skill would have appreciated “alpahanumeric user input” can include typing, which suggests the claim term “typed by a user.” Ans. 6. As to the limitation of claim 35 reciting “spoken, and recognized by the data processing system, by the user,” having already found that the combined cited prior art teaches the alternative method, i.e., “typed by a user” we need not consider it further. See, e.g., Ex parte Katz, 2010-006083, 2011 WL 514314, *4 (BPAI 2011) (non- precedential). CONCLUSION We have considered the arguments raised by Appellant in the Request, but find none of these arguments persuasive that our original Decision was in error. We have addressed Appellant’s arguments with respect to claim 35, however, it is our view that Appellant has not identified any points that the Board has misapprehended or overlooked. We are still of the view that the Examiner did not err in reaching the legal conclusion of obviousness, based upon the record before us in the original appeal. We Appeal 2012-012244 Application 11/273,379 6 have therefore reconsidered our Decision but decline to grant the relief requested. This Decision on Appellant’s “Request for Rehearing” is deemed to incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1). DECISION We have granted Appellant’s request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. 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). See also 37 C.F.R. § 41.52(b). REHEARING DENIED dw