Ex Parte Dietz

Board of Patent Appeals and Interferences

Jul 14, 2004

09456076 (B.P.A.I. Jul. 14, 2004)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TIMOTHY ALAN DIETZ
__________
Appeal No. 2003-0726
Application 09/456,076
__________
ON BRIEF
__________
Before KRASS, RUGGIERO, and NAPPI, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-29, which are all of the claims pending in the present
application.
The claimed invention relates to providing indexed web page
contents to a search engine database. A web page is accessed by
Appeal No. 2003-0726
Application No. 09/456,076
2
a user and a temporary copy of the web page is stored on the user
accessible device which accesses the web page. Indexing
information corresponding to the content of the accessed web page
is automatically recorded at the user accessible device, the
indexing information being thereafter transmitted from the device
to a remote storage device which provides the search engine
database.
claim 1 is illustrative of the invention and reads as
follows:
1. A method for providing indexed web page contents to a
search engine database, said method comprising the steps of:
providing user access to a web page from a temporary copy of
said web page which is stored on a device which accesses said web
page and which is accessible to said user; in response to each
user request for a web page;
automatically recording indexing data at said device from
said temporarily stored copy of said accessed web page, wherein
said indexing data corresponds to contents of said accessed web
page; and
transmitting said indexing data from said device to a remote
data storage device which provides a search engine database.
The Examiner relies on the following prior art:
Rosenzweig US 2001/0023476 A1 Sep. 20, 2001
(Published U.S. Patent App.) (effectively filed Aug. 21, 1997)
Claims 1-29, all of the appealed claims, stand finally
rejected under 35 U.S.C. § 102(e) as being anticipated by
Rosenzweig.
Appeal No. 2003-0726
Application No. 09/456,076
1 The Appeal Brief was filed July 18, 2002 (Paper No. 9). In response
to the Examiner’s Answer dated August 14, 2002 (Paper No. 10), a Reply Brief
was filed October 22, 2002 (Paper No. 12), which was acknowledged and entered
by the Examiner as indicated in the communication dated October 30, 2002
(Paper No. 13).
3
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1, the final Office
action, and Answer for the respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner and the evidence of
anticipation relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the Rosenzweig reference does not fully meet the invention
as set forth in claims 1-29. Accordingly, we reverse.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Appeal No. 2003-0726
Application No. 09/456,076
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Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to each of the appealed independent claims 1,
9, 11, 18, 21, and 26, the Examiner attempts to read the various
limitations on the disclosure of Rosenzweig. In particular, the
Examiner directs attention (page 3, final Office action mailed
May 7, 2002, Paper No. 6) to paragraphs 9, 49, 58-72, 77, and 78
of the disclosure of Rosenzweig.
Appellant’s arguments in response assert a failure of
Rosenzweig to disclose every limitation in the appealed claims as
is required to support a rejection based on anticipation. After
reviewing the Rosenzweig reference in light of the arguments of
record, we are in ultimate agreement with Appellant’s position as
expressed in the Briefs.
At the outset, however, we note that we do not agree with
Appellant’s arguments directed to the claimed feature of
automatically recording indexing data at a user accessible device
from a temporarily stored copy of an accessed web page “wherein
said indexing data corresponds to contents of said accessed web
page.” In Appellant’s view (Brief, pages 6 and 7; Reply Brief,
page 2), the caching schemes disclosed by Rosenzweig which store
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Application No. 09/456,076
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temporary copies of a web page dependent on criteria such as
frequency or duration of access to a particular web page, do not
index data which corresponds to the content of an accessed web
page as claimed.
We agree with the Examiner, however, that the embodiment
disclosed by Rosenzweig in which a particular web page provides
indexing to other locations within the same web page satisfies
the automatic indexing requirement of the appealed claims. As
illustrated in Figure 4 of Rosenzweig with accompanying
disclosure at paragraph 57, the cached copy of the accessed web
page 400 has links 410 at the top of the page which provide an
index to other locations within the web page, these indexing
links clearly corresponding to the contents of the web page.
While we found the above argument of Appellant to be without
merit, we do find to be persuasive Appellant’s arguments (Brief,
page 7; Reply Brief, page 2) directed to the claimed feature,
present in all of the independent claims, of “transmitting said
indexing data from said device to a remote data storage device
which provides a search engine database.” We recognize that the
Examiner has expanded his position on this claimed feature by
directing attention to paragraphs 49 and 91 in Rosenzweig
(Answer, page 4). We find nothing, however, in either of these
paragraphs, or elsewhere in Rosenzweig, that would support the
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Application No. 09/456,076
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Examiner’s position. Rosenzweig, at paragraph 49, merely
indicates that web pages may have been accessed as a result of
the use of an Internet search engine, while paragraph 91 suggests
that, instead of caching web pages on a local client computer,
caching may be provided by a network server. It seems apparent
to us that merely storing web pages on a network server rather
than a client computer does not satisfy the claimed requirement
of transmitting indexing data from the user accessible device,
i.e., Rosenzweig’s client computer, to the remote data storage
device (Rosenzweig’s network server) which provides a search
engine database.
In view of the above discussion, in order for us to sustain
the Examiner’s rejection, we would need to resort to
impermissible speculation or unfounded assumptions or rationales
to supply deficiencies in the factual basis of the rejection
before us. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968), rehearing
denied, 390 U.S. 1000 (1968). Accordingly, since all of the
claim limitations are not present in the disclosure of
Rosenzweig, we do not sustain the Examiner’s 35 U.S.C. § 102(e)
rejection of appealed independent claims 1, 9, 11, 18, 21, and
26, nor of claims 2-8, 10, 12-17, 19, 20, 22-25, and 27-29
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Application No. 09/456,076
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dependent thereon. Therefore, the decision of the Examiner
rejecting claims 1-29 is reversed.
REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT NAPPI )
Administrative Patent Judge )
JFR/dal
Appeal No. 2003-0726
Application No. 09/456,076
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