Ex Parte Gupta

Board of Patent Appeals and Interferences

Jan 26, 2009

09997960 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BHUPESH GUPTA
____________

Appeal 2008-2678
Application 09/997,960
Technology Center 2100
____________

Decided: January 26, 2009
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellant’s invention relates to an apparatus and method of linking
sub-folders in a bookmark folder. In one embodiment, a copy of bookmarks
stored in a first sub-folder is created and stored in a second sub-folder (Spec.
4:3-11). In another embodiment, all bookmarks stored in the first sub-folder
are copied into the second sub-folder (Spec. 4:3-11). All bookmarks
originally stored in the second sub-folder are assembled into a first group
and the bookmarks copied into the second sub-folder are assembled into a
second group in the second sub-folder such that when the second sub-folder
is opened only the bookmarks in the second sub-folder are displayed, the
bookmarks in the first group being highlighted to distinguish the bookmarks
in the first group from the bookmarks in the second group (Spec. 13:5-11;
19:17-26; 21:5-11).

Representative Claims
1. A computer implemented method of linking a first sub-folder to a
second sub-folder in a bookmark folder comprising the steps of:
creating a copy of bookmarks stored in the first sub-folder; and
storing the copy into the second sub-folder.

25. A computer implemented method of linking a first sub-folder to a
second sub-folder in a bookmark folder comprising the steps of:
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copying all bookmarks stored in the first sub-folder into the second
subfolder; and
assembling all bookmarks originally stored in the second sub-
folder into a first group and the bookmarks copied into the second
sub-folder into a second group in the second sub-folder such that
when the second subfolder is opened only bookmarks are
displayed, the bookmarks in the first group being highlighted to
distinguish the bookmarks in the first group from the bookmarks in
the second group.

Prior Art
The Examiner relies on the following references as evidence of
unpatentability.
Khan U.S. 6,546,393 B1 Apr. 8, 2003

Webopedia.com definition of highlight, available at:
http://www.webopedia.com/TERM/H/highlight.html (Sept. 1, 1996)
(hereinafter “Web Definition of Highlight”).

Microsoft, About Microsoft FrontPage screen shots 1-7 (Dec. 31,
1999) (hereinafter “FrontPage”).

Examiner’s Rejections
Claims 1-24 stand rejected under 35 U.S.C. §103 as being
unpatentable over FrontPage and Khan. Claim 25 stands rejected under 35
U.S.C. §103 as being unpatentable over FrontPage, Khan, and Web
Definition of Highlight.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1 and 25. See 37 C.F.R. § 41.37(c)(1)(vii).
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ISSUES
(1) Has Appellant shown that the Examiner erred in finding that the
combination of FrontPage and Khan teaches creating a copy of bookmarks
stored in the first sub-folder and storing the copy into a second sub-folder as
recited in claim 1?
(2) Has Appellant shown that the Examiner erred in finding that the
combination of FrontPage, Khan and web definition teaches that when the
second sub-folder is opened only bookmarks are displayed as recited in
claim 25?

FINDINGS OF FACT
1. A bookmark allows a user to store Web addresses or Uniform
Resource Locators (URLs) of Web pages, that are to be later re-visited, into
a folder (Spec. 2:19-24).
2. FrontPage shows sub-folder 1 that stores a link to
“new_page_2.htm” (Page 2).
3. FrontPage shows sub-folder 2 that stores links to “reqdtoc.htm”
and “status.htm” (Page 2).
4. The link in sub-folder 1 can be copied and stored in sub-folder
2 (Pages 3-4).
5. When sub-folder 2 is opened, the links from sub-folders 1 and 2
are displayed (Pages 6-7).
6. The link in sub-folder 2 that was copied from sub-folder 1 is
distinguished from the original links in sub-folder 2 by the sub-folder 1
heading (Pages 6-7).
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7. FrontPage does not explicitly use the term “bookmarks” to
describe the links in sub-folders 1 and 2 (Ans. 3).
8. Khan teaches that a bookmark is a saved link to a Web site that,
when selected, accesses the linked Web site (col. 14, ll. 44-48; Fig. 6, 610,
612).
9. Web Definition of Highlight teaches that highlighting makes an
object on a display screen stand out by displaying it in a different mode from
other objects.
10. Displaying a bookmark in a highlighted fashion encompasses
any manner of distinguishing the bookmark from other bookmarks (Spec.
22:13-16).
11. One way of distinguishing copied bookmarks from original
bookmarks is to place the copied bookmarks under a title (Spec. 19:17-26).

PRINCIPLES OF LAW
Claim Interpretation
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re American Academy of Science Tech Center, 367 F.3d
1359, 1364 (Fed. Cir. 2004) (citations omitted). The Office must apply the
broadest reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002)).

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Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).

ANALYSIS
I. Section 103 rejection of claims 1-24
Appellant contends that copying a first sub-folder into a second sub-
folder is not the same as creating a copy of bookmarks stored in the first sub-
folder and storing the copy into the second sub-folder. Appellant illustrates
this contention by stating that FrontPage displays the original content of the
second sub-folder and the first sub-folder, and in contrast, the claimed
invention displays both the original bookmarks of the second sub-folder and
the copied bookmarks (Br. 5). However, displaying both the original
bookmarks of the second sub-folder and the copied bookmarks is not recited
in claim 1 and there is no basis for reading this element into claim 1.
Appellant further contends that FrontPage does not teach the steps of
creating a copy of bookmarks stored in a first sub-folder and storing the
copy in a second sub-folder (Br. 5). This contention does not respond to the
rejection that the Examiner made. The Examiner found that FrontPage
creates a copy of links stored in a first sub-folder and stores the copy in a
second sub-folder (Ans. 3). The Examiner further found that a person of
ordinary skill in the art at the time of invention would have recognized, after
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reading Khan, that the links are bookmarks (Ans. 3-4). We agree with the
Examiner’s findings (FF 2-8).
Appellant has not provided any response to this prima facie case made
by the Examiner. In fact, Appellant has not said anything about the Khan
reference, or the combination of FrontPage and Khan, other than “[s]ince the
Microsoft FrontPage Screen Shots reference is used in combination with
Khan to reject the claims, Applicants [sic] submit that the claims are
allowable” (Br. 5).
Furthermore, Appellant’s description of a bookmark (FF 1) is met by
the links to .htm files shown by FrontPage (FF 2-3). Creating a copy of
bookmarks stored in the first sub-folder is disclosed by FrontPage (FF 4).
Storing the copy into the second sub-folder is disclosed by FrontPage (FF 4).
Therefore, Appellant has failed to rebut the Examiner’s prima facie
case for obviousness of the subject matter of claim 1 over FrontPage and
Khan. We sustain the rejection of claim 1. Claims 2-24 fall with claim 1.

II. Section 103 rejection of claim 25
Appellant contends that the Examiner did not assert that any of the
references teaches the limitations that only bookmarks are displayed when
the second sub-folder is opened (Br 6).
Claim 25 recites “when the second sub-folder is opened only
bookmarks are displayed, the bookmarks in the first group being highlighted
to distinguish the bookmarks in the first group from the bookmarks in the
second group.”
The Examiner found that FrontPage, on pages 6 and 7, shows that
when the second sub-folder is opened only bookmarks are displayed, the
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bookmarks in the first group being delineated from the bookmarks in the
second group by the “sub-folder 1” heading (Ans. 9-10). The Examiner
further found that a person of ordinary skill in the art at the time of invention
would have distinguished the bookmarks in the first group by highlighting
them instead of placing them under the “sub-folder 1” heading for the
benefit of visually differentiating the first and second groups of bookmarks
as suggested by the Web Definition of Highlight (Ans. 9).
Appellant’s assertion that “it is clear from page 7 of the Microsoft
FrontPage Screen Shots reference that the first sub-folder is also displayed
when the second sub-folder is opened” (Br. 6) does not respond to the
Examiner’s finding that the sub-folder 1 heading is displayed to distinguish
the bookmarks in the first group from the bookmarks in the second group,
nor does it respond to the Examiner’s finding that distinguishing the two
groups of bookmarks by using highlighting instead of a sub-folder heading
would have been obvious.
Furthermore, Appellant’s description of a bookmark (FF 1) is met by
the links to .htm files shown by FrontPage (FF 2-3). The term “bookmarks
in the first group being highlighted” is broad enough to include placing the
bookmarks in the first group under a title, such as sub-folder 1, to distinguish
the bookmarks in the first group from the bookmarks in the second group
(FF 10-11). Appellant’s examples of highlighting a bookmark (FF 10-11) is
met by the copied bookmark placed under a title as shown by FrontPage (FF
6). Therefore FrontPage teaches “when the second sub-folder is opened
only bookmarks are displayed, the bookmarks in the first group being
highlighted to distinguish the bookmarks in the first group from the
bookmarks in the second group” as recited in claim 25.
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Appellant has failed to rebut the Examiner’s prima facie case for
obviousness of the subject matter of claim 25 over FrontPage, Khan and
Web Definition of Highlight. We thus sustain the rejection of claim 25.

CONCLUSIONS OF LAW
(1) Appellant has not shown that the Examiner erred in finding that
the combination of FrontPage and Khan teaches creating a copy of
bookmarks stored in the first sub-folder and storing the copy into a second
sub-folder as recited in claim 1.
(2) Appellant has not shown that the Examiner erred in finding that
the combination of FrontPage, Khan and Web Definition of Highlight
teaches that when the second sub-folder is opened only bookmarks are
displayed as recited in claim 25.

DECISION
The Examiner’s § 103 rejection of claims 1-24 over FrontPage and
Khan is affirmed. The Examiner’s § 103 rejection of claim 25 over
FrontPage, Khan and web definition 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).

AFFIRMED
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