Ex Parte Gupta

Board of Patent Appeals and Interferences

May 20, 2009

09997915 (B.P.A.I. May. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BHUPESH GUPTA
____________________

Appeal 2008-4737
Application 09/997,9151
Technology Center 2100
____________________

Decided2: May 21, 2009
____________________

Before: HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
THU A. DANG, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 29, 2001. The real party in interest is
International Business Machines Corporation.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail date (paper delivery) or Notification Date (electronic Delivery).
Appeal 2008-4737
Application 09/997,915

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STATEMENT OF THE CASE
Appellant appeals from a multiple rejection of claims 1 to 33 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to a method and system for
automatically placing bookmarks for web pages into categories and
subcategories. In the words of the Appellant:
An active Web user may access and bookmark a great number
of Web pages within a short span of time. Thus, to easily locate and
access the bookmarked Web pages, the user has to arrange them in the
folder in a logical manner. There are a number of available bookmark
management tools that may be used to achieve this task. However, all
of them require that the user actively manage the folder.

(Spec. 3, ll. 1-7).
A method, system and apparatus for arranging bookmarked
Web pages into categories in a bookmark folder are provided. When
a Web page is to be bookmarked a search is initiated on a Web portal
to determine under which category the Web page may be found. If
the Web page is found into a category, the category is downloaded for
use as a name to a sub-folder into which the bookmark to the Web
page will be stored. If the category is not found, the bookmark to the
Web page will be stored into a default sub-folder and a note may be
sent to the Web portal requesting that the Web page be assigned into a
category. After the Web page is assigned into a category, the category
may be downloaded for use as name to the tagged sub-folder.

(Spec. 30, Abstract).

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Claim 1 is exemplary:
1. A computer implemented method of categorizing bookmarked
Web pages in a bookmark folder comprising the steps of:
determining whether a Web page to be bookmarked has
been assigned a category on a server;
downloading the category if the Web page has been
assigned a category;
creating a sub-folder in the bookmark folder with the
category as a name; and
storing a bookmark to the Web page into the sub-folder.

PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Khan 6,546,393 B1 Apr. 8 2003

REJECTION
The Examiner rejects the claims as follows:
R1: Claims 1 to 33 stand rejected under 35 U.S.C. § 102(e) for
being anticipated by Khan.

Groups of Claims:
The claims will be discussed in the order argued.
Appellant contends that the claimed subject matter is not anticipated
by Khan for failure of that reference to teach claimed limitations. The
Examiner finds that each of the claims is properly rejected.
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Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We affirm the rejection.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 102(e). The issue turns on whether
Khan teaches downloading the category into which a bookmark belongs
(e.g. travel, news) and other claimed elements.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a method and apparatus for organizing
bookmarks of specific user selected web pages into categories in an
automatic manner using the categories provided by Web portals. (Spec.
12, ll. 4-12). Users can create new categories and sub-categories of their
own choosing. (Spec. 13, generally).
2. The reference Khan teaches a system for organizing bookmarks for users
at the server level, adding categories and subcategories chosen by the
users. (Col. 11, l. 63 to col. 12, l. 27).
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PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed Cir. 1999). “In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.” Id. (internal
citations omitted).
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as
recited in the claim, it cannot be said to prove prior invention of
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the thing claimed and, thus, cannot anticipate under 35 U.S.C. §
102.
Net MoneyIN, Inc. v. VeriSign et al., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(emphasis added).
ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellant’s claims
under 35 U.S.C. § 102(e). The prima facie case is presented on pages 3 to 7
of the Examiner’s Answer. In opposition, Appellant presents a number of
arguments.
Arguments with respect to the rejection
of independent claims 1, 9, 17, 25, and 33
under 35 U.S.C. § 102 [R1]

Appellant contends that the Examiner erred in rejecting claims 1, 9,
17, 25, and 33 and the claims dependent thereon for being anticipated by
Khan. (App. Br. 5, top). Appellant discusses the Khan reference, and
recognizes that Khan manually or automatically places web pages sent by a
user to a server into categories represented by bookmark folders on the
server. (App. Br. 5, middle). “However, nowhere in the disclosure does
Khan teach, show or so much as suggest the steps of downloading a category
if it has been determined that a web page to be bookmarked has been
assigned a category on a server,” states the Appellant. (App. Br. 5, bottom)
(underlining and bolding omitted).
We consider the paragraph of Khan starting at column 11, line 63:
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Under manual categorization, the user determines the category
310a, 310b, 310c under which to file a bookmark or a set of
bookmarks. These bookmarks as well as the suggested categorization
are reviewed by the directory's editorial staff for correctness of
categorization. After this screening, the sites are made part of the
directory under the user recommended category or a [sic] editor
selected classification, and the user is notified.

(Col. 11, l. 63 to col. 12, l. 3).
We note in this paragraph that after the editorial staff screens the
proposed categories for web pages, the user is notified of them. (Col. 12, l.
3). We find this notification anticipates the claim limitation, as the category
is downloaded to the user by the server.
Appellant further argues that the Examiner did not indicate where in
the disclosure Khan teaches the step of “creating a subfolder in the
bookmark folder with the category as a name, and storing a bookmark to the
Web page into the sub-folder.” (App. Br. 7, middle) (bolding and italics
omitted). The Examiner has pointed to column 12, lines 60-62 in Khan for
the teaching of creating sub-categories, and we do not find error in using
Khan’s teachings on this point. We also note in Figure 3 of Khan that the
Subcategory 1A, for example, has the category name 1A, taken from the
web sites 1Ai, 1Aii, etc., stored in its subfolder. We thus find the claim
anticipated by Khan on this point.
Finally with respect to claims 6, 14, 22, and 30, Appellant further
contends that Khan “does not teach the step of downloading URLs for Web
pages to be bookmarked. Rather Khan teaches the step of uploading
bookmarks and presumably URLs of pages to be bookmarked.” (App. Br. 7,
bottom). The Examiner points to Figure 11, which does indeed teach
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downloading URL for bookmarks with the category names as claimed.
(Answer 9, top). We additionally point out in the reference Khan, column
12, line 3, and Figure 4 which disclose the downloaded web pages,
categories and bookmarks going to the user.
In short, we do not find that the Appellant has shown error in the
rejection over Khan.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner has not erred in rejecting claims 1 to 33 under 35 U.S.C. §
102(e) over Khan.
DECISION
The Examiner's rejection of claims 1 to 33 [R1] 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)(iv).

AFFIRMED

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