Ex Parte Kaars

Board of Patent Appeals and Interferences

Mar 30, 2009

09900335 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PETER BERNHARD KAARS
____________

Appeal 2008-3994
Application 09/900,335
Technology Center 2400
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Decided:1 March 30, 2009
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Before LEE E. BARRETT, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

1 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 2008-3994
Application 09/900,335

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellant’s invention relates to sending or distributing electronic
content over a data network. More particularly, Appellant’s invention is
directed to e-mail communications. (Spec. para. [001]).

Independent claim 1 is illustrative:

1. A method of controlling communication of content
information from a sender to a receiver via a data network,
comprising:

verifying with a plurality of sources throughout the data
network whether the content information is available from at
least one of the sources other than the sender;

contacting a search engine if the content information is
available from the at least one source, wherein the search
engine determines a location within the data network of the at
least one source of the content information and returns an
updateable index listing each of the sources of a copy of content
information; and

substituting for the content information a pointer to the
location of the at least one source based on the updateable index
of sources returned by the search engine.

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Prior Art
Zabetian US 6,327,656 B2 Dec. 4, 2001
Jones US 2002/0188841 Dec. 12, 2002

Examiner’s Rejections
1. Claims 1-3 and 7-11 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Jones.
2. Claims 4-6 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Jones in view of Zabetian.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1 and 4. See 37 C.F.R. § 41.37(c)(1)(vii).

APPELLANT’S CONTENTIONS
Appellant contends that Jones fails to disclose verifying with a
plurality of sources throughout the data network whether the content
information is available from at least one of the sources other than the
sender, as recited in claim 1. (App. Br. 6).
Appellant contends that Jones fails to disclose the limitation of
substituting for the content information a pointer to the location of the at
least one source based on the updateable index of sources returned to the
search engine. (Reply Br. 3).

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Application 09/900,335

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues flow from the Appellant’s contentions
and the Examiner’s findings:
1. Has Appellant shown that the Examiner erred in determining
that Jones discloses verifying with a plurality of sources throughout the data
network whether the content information is available from at least one of the
sources other than the sender?
2. Has Appellant shown that the Examiner erred in determining
that Jones discloses substituting for the content information a pointer to the
location of the at least one source based on the updateable index of sources
returned to the search engine?

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Claim Construction
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
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disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832 (Fed. Cir. 1990).
Obviousness
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

Jones
1. Jones discloses a watermark detector that may be used to
extract a watermark bearing a content identifier, and possibly content type
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Application 09/900,335

tags that are used as input for a search to find related content or information
about the content. (Para. [0038]).
2. Jones discloses that a web searching agent reports back to a
searchable database. (Para. [0042]).
3. Jones discloses that the searchable database is accessed by the
search engine. (Para. [0043]).
4. Jones discloses a context index that has a searchable index of
key words and content tags that are associated with file pointers of files that
match the description of the key words/content tags. (Para. [0042]).
5. Jones discloses that file pointers provide the location of the
corresponding files on the computer network. (Id.).

ANALYSIS
Anticipation rejection of claims 1-3 and 7-11
We consider the Examiner’s rejection of claim 1 as being anticipated
by Jones.
Issue 1
As discussed above, Appellant contends that Jones fails to disclose
verifying whether the content information is available from at least one
source other than the sender. (Emphasis added). Appellant contends that
Jones describes that the sources that are searched are the senders of the
content, thereby teaching away from the invention as claimed. (App. Br. 7).

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We find Appellant’s “teaching away” argument is misplaced, because
the Examiner has rejected the claims under 35 U.S.C. § 102. Our reviewing
court has determined that “[t]eaching away is irrelevant to anticipation.”
Seachange International, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir.
2005).
We note that claim 1 requires a verification that “the content
information is available from at least one of the sources other than the
sender,” and no other functions/steps are recited within the claimed
“verifying step.” We further note that the watermarks described in Jones
perform the claimed verification step by searching a plurality of sources,
(i.e., other networks and/or domains as well as the eventual source). (See FF
1). Thus, it is our view that according to Jones, there are several sources that
have the desired content, apart from the eventual source (sender) of the
desired content (i.e., a source other than the sender).
Appellant further contends that because Jones fails to disclose
verifying a source other than the sender, that Jones also fails to disclose the
conditional step of contacting a search engine if the content is available from
the at least one source. (App. Br. 8). We disagree, because as stated above,
Jones does in fact verify that the content is available from a source other
than the eventual sender of the content. Thus, Jones discloses that the search
engine is contacted after the searchable database is queried. (FF 2-3). The
eventual source of the content is returned as a result of the query. (FF 4).
Thus, we find that Jones discloses the conditional step of contacting the
search engine if the content information is available from the at least one
source.
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Issue 2
As stated above, Appellant contends that Jones fails to disclose
substituting for the content information a pointer to the location of the at
least one source based on the updateable index of sources returned to the
search engine. More specifically, Appellant argues that there is no
substitution of the content with a pointer to the location of the at least one
source. (Reply Br. 3)
We note that Jones teaches the use of file pointers (FF 5). However,
we find that the claimed pointer is not positively recited in the claim as
being used to access content information, or any other information. Thus,
we find Appellant’s argument unpersuasive regarding the claimed pointer
because Appellant’s argument would require us to give patentable weight to
nonfunctional descriptive material (i.e., a pointer that performs no function
as claimed). The content of nonfunctional descriptive material is not entitled
to weight in the patentability analysis. Cf. In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (“Lowry does not claim merely the information content of a
memory. . . . Nor does he seek to patent the content of information resident
in a database.”). See also Ex parte Nehls (BPAI Jan. 28, 2008), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf; Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent Examining
Procedure (MPEP) § 2106.01 (Eighth ed., Rev. 7, July 2008).

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For at least the aforementioned reasons, we find Appellant has not
shown that the Examiner erred in rejecting representative claim 1.
Accordingly, we sustain the Examiner’s rejection of claims 1-3 and 7-11 as
being anticipated by Jones.
Obviousness rejection of claims 4-6
We next consider the Examiner’s rejection of claims 4-6 as being
unpatentable over Jones and Zabetian. We note that Appellant’s arguments
essentially state that claims 4-6 are allowable based on their dependence
from claim 1. (App. Br. 10-11). Thus, Appellant urges the patentability of
claims 4-6 based on the arguments we found unpersuasive regarding claim
1, as previously discussed. Accordingly, we find that Appellant has not
shown that the Examiner erred in rejecting claims 4-6. We sustain the
Examiner’s rejection of claims 4-6 as being unpatentable over Jones and
Zabetian.
REPLY BRIEF
We note that the Reply Brief should be used to respond to points of
argument raised by the Examiner in the Answer and not as a means for
presenting new arguments. See Optivus Tech., Inc. v. Ion Beam Applications
S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (an issue not raised in an opening
brief is waived). While we have fully considered Appellant’s responses in
the Reply Brief, we decline to address any new arguments not originally
presented in the principal Brief. With respect to all claims before us on

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appeal, arguments which Appellant could have made but chose not to make
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir.
2004).

CONCLUSION
Appellant has not shown that the Examiner erred in determining that
Jones discloses verifying with a plurality of sources throughout the data
network whether the content information is available from at least one of the
sources other than the sender.
Appellant has not shown that the Examiner erred in determining that
Jones discloses substituting for the content information a pointer to the
location of the at least one source based on the updateable index of sources
returned to the search engine.

DECISION
The Examiner’s rejection of claims 1-3 and 7-11 under 35 U.S.C.
§ 102(e) is affirmed.
The Examiner’s rejection of claim 4-6 under 35 U.S.C. § 103(a) is
affirmed.

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

pgc

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