Ex Parte Egendorf et alDownload PDFPatent Trial and Appeal BoardJun 11, 201310348610 (P.T.A.B. Jun. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/348,610 01/21/2003 Andrew Egendorf 7785-0678_NC2002 8682 92384 7590 06/11/2013 AT&T Legal Department - G&G Attention: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER PHAM, KHANH B ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 06/11/2013 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 ANDREW EGENDORF, NORTON GREENFELD, and EUGENE PETTINELLI ____________ Appeal 2011-002216 Application 10/348,610 Technology Center 2100 ____________ Before JEFFREY S. SMITH, JEREMY J. CURCURI, and JENNIFER L. McKEOWN, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002216 Application 10/348,610 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 80-117, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Representative Claim 80. A method for searching for publications via the Internet, comprising: creating an index of publications and corresponding URL addresses, the publications as indexed comprising publications available via the Internet, the publications having first content at a first time when the publications are indexed; receiving a request to search for a publication via the Internet by using search criteria received with the request; searching the index of publications using the search criteria to produce a first set of URL addresses corresponding to publications meeting the search criteria; searching publications available at the first set of URL addresses including at least one publication that has changed and at least one publication that has not changed, wherein the searching is performed using the search criteria used to produce the first set of URL addresses, at least one of the publications having a second content at a second time when the publications are searched, the second content being different from the first content, differences in content in publications at the first set of URL addresses at the first time and the second time resulting from changes to the publications between the first time and the second time; wherein searching the publications obtains a second set of URL addresses corresponding to publications that meet the search criteria at the second time, and wherein the second set of URL addresses (i) does not include any URL address that is not available at the second time, and (ii) does not include any URL address corresponding to a publication which, at the second time, no longer meets the search criteria; and responding to the request to search for publications by providing at least one URL address from the second set of URL addresses. Appeal 2011-002216 Application 10/348,610 3 Prior Art Brandli US 5,701,469 Dec. 23, 1997 Schneider US 2003/0110161 A1 Jun. 12, 2003 Examiner’s Rejections Claims 80-117 stand rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. Claims 80-117 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Schneider and Brandli. ANALYSIS Rejection under 35 U.S.C. § 112, first paragraph Appellants contend that the limitation “searching publications available at the first set of URL addresses including at least one publication that has changed and at least one publication that has not changed” recited in claim 80 is supported by paragraphs 175-177 of Appellants’ Specification. App. Br. 7-8. The Examiner finds that this limitation does not prevent the possibility that all publications have changed or that none of the publications have changed. According to the Examiner, if all of the publications have changed, or if none of the publications have changed, then this limitation will not be performed. Ans. 10-11. Appellants have narrowed the scope of this limitation to exclude searching publications available at a set of URL addresses, where all the available publications have changed, or where none of the available publications have changed. But the Examiner has not persuasively explained why excluding a search of publications where all or none of the Appeal 2011-002216 Application 10/348,610 4 available publications have changed is not supported by Appellants’ Specification. We find “searching publications available at the first set of URL addresses including at least one publication that has changed and at least one publication that has not changed” supported by paragraphs 175-177 of Appellants’ Specification for the reasons given by Appellants in the Appeal Brief and the Reply Brief. We do not sustain the rejection of claims 80-117 under 35 U.S.C. § 112, first paragraph. Rejection under 35 U.S.C. § 103 Appellants contend that Brandli teaches searching publications that have changed, but does not teach searching publications that include at least one publication that has changed and at least one publication that has not changed. App. Br. 9-12. The Examiner finds that the scope of claim 80 does not require searching both changed and unchanged publications. Ans. 12. Appellants respond that since claim 80 recites that changed and unchanged publications are available, and available publications are searched, then claim 80 requires unchanged publications to be searched. Reply Br. 4. We agree with the Examiner. Claim 80 recites “searching publications available at the first set of URL address including at least one publication that has changed and at least one publication that has not changed.” Claim 80 does not require searching all publications. In particular, claim 80 does not require searching both at least one publication that has changed and at least one publication that has not changed. Claim 80 merely requires searching publications available at a set of URL addresses, where the publications available at the set include at least one publication Appeal 2011-002216 Application 10/348,610 5 that has changed and at least one publication that has not changed. Appellants’ contention is not commensurate with the scope of the claim. We sustain the rejection of claim 80 under 35 U.S.C. § 103. Appellants do not present arguments for separate patentability of claims 81- 98, which fall with claim 80. Appellants present arguments for the patentability of claims 99-117 similar to those presented for claim 80 which we find unpersuasive. DECISION The rejection of claims 80-117 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement is reversed. The rejection of claims 80-117 under 35 U.S.C. § 103(a) as being unpatentable over Schneider and Brandli 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED gvw Copy with citationCopy as parenthetical citation