Ex Parte Eruhimov

Board of Patent Appeals and Interferences

May 15, 2007

10423307 (B.P.A.I. May. 15, 2007)

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for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte VICTOR ERUHIMOV
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Appeal 2007-0471
Application 10/423,307
Technology Center 2100
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Decided: May 15, 2007
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Before JAMES D. THOMAS, ALLEN R. MACDONALD, and
JEAN R. HOMERE, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-30 are
rejected. However, the rejections of claims 1-4, 7, 10-17, 20-27, and 30, are
not argued and we affirm these rejections as a matter of form.1

1 Contrary to Appellant’s statement (Reply Br. 1), claims 1-30 are the
subject of this appeal. See the Notice of Appeal filed by Appellant on April
28, 2006. Appellant’s statement (Br. 5) does not change this fact.
Appeal 2007-0471
Application 10/423,307

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INVENTION
Appellant invented a method, system, and a medium for automatically
generating a path to an item depending on its access history.
(Specification 1).
Claims 1, 5 and 8 are representative of the claimed invention and are
reproduced as follows:
1. A method comprising:
detecting a number of times an item is accessed; and
automatically generating a more direct path to the item based at least
in part on how often the item is accessed.

5. The method of claim 1 including generating a more direct path
further based at least in part on the manner in which the item is accessed.

8. The method of claim 1 including providing a more direct path to an
item based on the number of times it is accessed and the number of
interfaces that must be used in order to access said item.

REFERENCES
The references relied on by the Examiner are as follows:
Gifford US 5,301,314 Apr. 5, 1994
Horvitz US 6,233,570 May 15, 2001
Clifton-Bligh US 2003/0050906 A1 Mar. 13, 2003
(Filed Dec. 28, 1999)
REJECTIONS
Claim 5 stands rejected under 35 U.S.C. § 102 as being anticipated by
Gifford.
Claims 1-4, 6, 11-16, and 21-26 also stand rejected under 35 U.S.C.
§ 102 as being anticipated by Gifford.
Claims 7, 17, and 27 stand rejected under 35 U.S.C. § 103 as being
obvious over the combination of Gifford and Horvitz.
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Claims 8, 9, 18, 19, 28, and 29 stand rejected under 35 U.S.C. § 103
as being obvious over the combination of Gifford and Clifton-Bligh.
Claims 10, 20, and 30 also stand rejected under 35 U.S.C. § 103 as
being obvious over the combination of Gifford and Clifton-Bligh.
Throughout our opinion, we make references to the Appellant’s briefs,
and to the Examiner’s Answer for the respective details thereof.2
OPINION
With full consideration being given to the subject matter on appeal,
the Examiner’s rejections and the arguments of the Appellant and the
Examiner, for the reasons stated infra, we affirm the Examiner’s rejection of
claims 1-6, 11-16, and 21-26 under 35 U.S.C. § 102, we affirm the
Examiner’s rejection under 35 U.S.C. § 103 of claims 7, 10, 17, 20, 27, and
30 under 35 U.S.C. § 103, and we reverse the Examiner’s rejection of claims
8, 9, 18, 19, 28, and 29 under 35 U.S.C. § 103.
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I. Whether Appellant has established the Examiner erred in rejecting
claim 5 under 35 U.S.C. § 102.
It is our view, after consideration of the record before us, that the
disclosure of Gifford does fully meet the invention as recited in claim 5.
Accordingly, we affirm.
It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).

2 Appellant filed an Appeal Brief on May 30, 2006. Appellant filed a Reply
Brief on August 22, 2006. The Examiner mailed an Examiner’s Answer on
July 17, 2006.
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With respect to dependent claim 5, Appellant argues that Gifford “has
nothing to do with generating a more direct path based on the manner in
which an item is accessed” (Br. 11.). We disagree.
Gifford describes generating a more direct path (“the most useful of
documents [ ] are listed first” Col. 4, ll. 36-37) based on the manner in which
an item is accessed (“ranks and presents the most frequently used
Documents” Col. 4, ll. 30-31).
Therefore, we will sustain the Examiner’s rejection under
35 U.S.C. § 102.
II. Whether Appellant has established the Examiner erred in rejecting
claims 8, 9, 18, 19, 28, and 29 under 35 U.S.C. § 103.
It is our view, after consideration of the record before us, that the
evidence relied upon and the level of skill in the particular art would not
have suggested to one of ordinary skill in the art the invention as set forth in
claims 8, 9, 18, 19, 28, and 29. Accordingly, we reverse.
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The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966), stated that three factual inquiries underpin any
determination of obviousness:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy.
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In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
Examiner can satisfy this burden by showing some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., No. 04-1350, 2007 WL 1237837 at
13, 82 U.S.P.Q.2d 1385, 1396 (Apr. 30, 2007) (citing In re Kahn, 441 F.3d
977, 988, 78 USPQ2d 1329 (Fed. Cir. 2006)). Only if this initial burden is
met does the burden of coming forward with evidence or argument shift to
the Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also
Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration
of all the pertinent evidence and arguments. “In reviewing the [E]xaminer’s
decision on appeal, the Board must necessarily weigh all of the evidence and
argument.” Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board
must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are
deemed to support the agency’s conclusion.” In re Lee, 277 F.3d 1338,
1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to dependent claims 8, 9, 18, 19, 28, and 29, Appellant
argues Clifton-Bligh “teaches nothing about generating different paths to an
item based on the number of interfaces that must be used” (Br. 11) and “does
not change the way an item is accessed” (Br. 12). We agree.
We recognize that the Examiner relies on Gifford to teach generating
different paths to an item based on the number uses, and Gifford does
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change the way an item is accessed. Further, Clifton-Bligh teaches counting
the number of click (links) required to reach a file (web page).
With respect to why it would have been obvious to combine the
references to generate different paths based on the number of interfaces
used, the articulated reasoning of the Examiner (Answer 7) points to a
motivation to combine at Paragraph 0022 of Clifton-Bligh. However, the
cited motivation relates to “displaying” rather that the claimed “generating”
and the Examiner fails to articulate why Paragraph 0022 would lead one to
modify the “generating” of Gifford based on the number of interfaces used
to access an item (i.e., how difficult it is to access an item). At most we
have before us a conclusory statement using Paragraph 0022 and rejections
on obviousness grounds cannot be sustained by mere conclusory statements.
KSR Int’l. v. Teleflex Inc., No. 04-1350, 2007 WL 1237837 at 13, 82
U.S.P.Q.2d 1385, 1396 (Apr. 30, 2007) (citing In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329 (Fed. Cir. 2006)).
Therefore, we will not sustain the Examiner’s rejection under 35
U.S.C. § 103 for the same reasons as set forth above.
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OTHER ISSUES
The Board brings to Appellant’s and the Examiner’s attention the
following prior art reference:
Hochmuth US 6,377,286 B1 Apr. 23, 2002
We leave it to the Examiner to determine if Hochmuth and similar prior art
describes the limitations recited in claims 8, 9, 18, 19, 28, and 29.
CONCLUSION
In view of the foregoing discussion, we have sustained the rejection
under 35 U.S.C. § 102 of claims 1-6, 11-16, and 21-26, we have sustained
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1 the rejection under 35 U.S.C. § 103 of claims 7, 10, 17, 20, 27, and 30, and
we have not sustained the rejection under 35 U.S.C. § 103 of claims 8, 9, 18,
19, 28, and 29.
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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)(1)(iv).

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AFFIRMED-IN-PART

tdl/ce

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