Ex Parte Kraemer

Board of Patent Appeals and Interferences

Jun 25, 2012

10256632 (B.P.A.I. Jun. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/256,632 09/27/2002 Keith M. Kraemer 2222.1530001 8378
26111 7590 06/26/2012
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HUYNH, THU V
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
06/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEITH M. KRAEMER
____________

Appeal 2009-010320
Application 10/256,632
Technology Center
____________

Before, SCOTT R. BOALICK, THOMAS S. HAHN,
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejections of:
Claims 1-20, 22, 41-68, and 77-81 under 35 U.S.C. § 112 as failing to
comply with the written description requirement;
Claims 1-10, 15-17, 22, 41-50, 55-57, and 87-93 under 35 U.S.C. § 103(a)
as unpatentable over US Patent 6,266,681 B1 (Guthrie), in view of US Patent
6,226,642 B1 (Beranek), US Patent 6,297,819 B1 (Furst), and US Patent 5,970,472
(Allsop);
Claims 11, 12, 51, and 52 under 35 U.S.C. § 103(a) as unpatentable over
Guthrie in view of Beranek, Furst, and Allsop in further view of US Patent
5,966,697 (Fergerson);
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Claims 13, 14, 53, and 54 under 35 U.S.C. § 103(a) as unpatentable over
Guthrie in view of Beranek, Furst, and Allsop in further view of US Patent
6,266,649 B1 (Linden);
Claims 18 and 58 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in
view of Beranek, Furst, and Allsop in further view of US Patent 6,643,624 B2
(Philippe);
Claims 19 and 59 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in
view of Beranek, Furst, and Allsop in further view of US Patent 6,128,655
(Fields);
Claims 20 and 60 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in
view of Beranek, Furst, and Allsop in further view of Fields;
Claim 61 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in view of
Beranek;
Claims 62-68 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in view
of Beranek, in further view of Furst; and
Claims 69-86 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in view
of Beranek and Furst.
We affirm the rejections of claims 1-20, 22 and 41-93 under 35 U.S.C.
§ 103(a).
We affirm the rejection of claims 1-20, 22, 61- 68 and 77- 81under 35
U.S.C. §112 ¶ 1.
We reverse the rejection of claims 41-60 under 35 U.S.C. § 112 ¶ 1.

STATEMENT OF THE CASE
Appellant’s invention concerns a method, system and apparatus for
retrieving a webpage from an independent source, extracting information about the
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webpage and, in response to the extracted information, modifying the webpage to
include a toolbar. (Spec. p. 2, l. 31 - p. 3, l. 6). The toolbar can have commands
related to the subject matter of the webpage. The specification discloses the
invention in the context of a gift registry, in which a potential gift recipient can add
a product webpage to the potential recipient’s register by requesting the page and
clicking on an “add to register” command on the toolbar appearing on the modified
page. A gift purchaser can request the product webpage and click on a “purchase”
command on the toolbar on the modified page. (Spec. p. 1, ll. 3-5, p. 5, ll. 6-29).
However, the claims are not limited to a gift registry.
Claim 1 is illustrative and is reproduced below with disputed limitations
emphasized:

1. A computer implemented method comprising:

receiving a request for one or more product webpages, each of the one or
more product webpages being associated with a respective product and
corresponding to an independent vendor;

retrieving the one or more product webpages from an independent source;

extracting a location and structural information associated with each of the
one or more product webpages;

automatically modifying each of the one or more product webpages to
provide a toolbar within each of the one or more product webpages responsive to
the location and structural information being extracted, the toolbar (i) having at
least one command associated with the product and (ii) being substantially
identical to toolbars of others of the one or more product webpages when more
than one product webpages is modified; and

presenting the modified one or more product webpages.

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THE REJECTIONS
The rejections are detailed on pages 3-31 of the Examiners Answer. For
convenience, we address the rejections under 35 U.S.C. § 103(a) as grouped in the
Brief on Appeal (App. Br. 16-17). We address the rejection under 35 U.S.C. § 112
¶ 1 separately.

ISSUES

Did the Examiner err in applying Guthrie, Beranek and Furst to reject all the
pending claims (claims 1-20, 22, and 41-93) as unpatentable under 35 U.S.C.
§ 103(a)?
Did the Examiner err in rejecting claims 1-20, 22, 41-68, and 77-81 as
failing to comply with the written description requirements of 35 U.S.C. § 112 ¶ 1
because there is no disclosure to support a single request for more than one
webpage?
We address the claims as grouped by Appellant.

REJECTIONS UNDER 35 U.S.C. § 103(a)

I. Rejection of Claims 1-10, 15-17, 22, 41-50, 55-57, and 69-93 under
35 U.S.C. § 103(a)
Contentions
The Examiner finds that Guthrie teaches modifying/reformatting a webpage
(e.g., an HTML document) by parsing and identifying tags and locations in the
webpage to insert codes in order to provide an interface component for the users.
(Ans. 35). The Examiner states that Guthrie does not explicitly disclose extracting
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the location and structural information. (Ans. 6). The Examiner combines Guthrie
with Beranek, which provides a filter mechanism to insert different codes based on
extracted tags before passing the modified web document to the user browser for
display. (Ans. 35). Noting that Furst discloses a retail registry application tool, the
Examiner relies on Furst to disclose adding third party application tools so that
application tool icons appear on the bar of the browser to allow the user to interact.
(Ans. 35).
The crux of Appellant’s argument against the combination of these
references turns on Furst’s teaching of a system that “enables the user to find at
every website additional functionality that is independent of the website.”
(emphasis by Appellant). (App. Br. 26, Reply Br. 7-8). Appellant contends that
Furst’s principle of operation requiring the provision of a toolbar to be independent
of the website is different from Beranek’s method, which dynamically alters the
HTML of a web document dependent upon the characteristics of the web
document (Reply Br. 8, emphasis by Appellant), so there is no motivation to
combine the references.
Appellant advanced no specific arguments concerning Allsop, except to state
that Allsop does not remedy the deficiencies of the other references alone or in
combination. (App. Br. 28)

Analysis
The claims at issue broadly cover a computer implemented method for
modifying product webpages to provide a substantially identical toolbar within
each of the product webpages. The claims recite retrieving the product webpages
from an independent source, extracting location and structural information (of the
product webpages), automatically modifying the webpages with a toolbar having at
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least one command associated with the product, and presenting the modified
webpages. Patentability of the dependent claims over the references in the
rejections addressed in this section is not separately argued.(App. Br. 28). .
Guthrie teaches the add-on user interface being displayed only under certain
conditions, e.g., when the component is not already displayed by the browser
application (col. 3, ll. 24-30), as is the case in the modified webpage of the present
claims. Guthrie also teaches that the add-on user interface can be a toolbar, e.g.,
the weather toolbar shown in Fig. 3. Stating that Guthrie does not explicitly teach
extracting location and structural information as claimed, the Examiner relies on
Beranek to teach modifying Guthrie to extract such information and to insert new
code to reformat the webpage by inserting different HTML code based on
extracted tags. (Ans. 6, 35).
Nothing in the claims argued by Appellant precludes the use of a third party
application program to modify the product webpages or carry out the commands.
The claims argued by Appellant merely recite modifying the webpage to add a
substantially identical toolbar to each of the product webpages to allow the user to
execute associated commands. Thus, we find no error in the Examiner’s reliance
on Furst to teach adding to Guthrie’s interface icons that appear on the toolbar of
the browser to allow the user to access third party application tools which carry out
certain functions or commands. (Ans. 35).
Appellant argues that Furst teaches “a principle of operation requiring the
provision of the toolbar to be independent of the website” while Benarek describes
dynamically altering the characteristics of the HTML of a web document
dependent on the characteristics of the web document. (Reply Br. 8-9, emphasis by
Appellant). The fact that the claimed toolbar is substantially the same for each
different product webpage indicates that the claimed toolbar itself is independent
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of the claimed product webpages, as Appellant notes is taught by Furst. To the
extent Appellant is arguing that Furst and Guthrie cannot be combined with
Beranek because Furst does not require a toolbar at every website, i.e., the
provision of a toolbar is independent of the website (Reply 7-8), we note: (i) Furst
teaches a system that creates web pages which parallel or shadow actual web pages
(col. 4, ll. 66-67) and a user interface that takes the form of an icon bar, which is
always displayed to the user while browsing the web (col. 4, ll. 27-32); (ii) the
passage that Appellant cites from Furst teaches this capability at every website
(col. 2, ll. 58-60) and (iii) Furst teaches a gift registry application in which the user
clicks on an icon on the icon bar (which is always displayed) when the context is a
webpage corresponding to or displaying the desired gift (col. 12, l. 66 - col. 13, l.
15). Thus, Furst discloses clicking the icon on the toolbar is a command
associated with the product.
Contrary to Appellant’s position, we see no reason why Beranek cannot be
combined with Guthrie and Furst. Beranek deals with extracting location and
structure information about the website so that code can be inserted before or after
certain tags, whether or not the code to be inserted is a command to activate
functionality that is independent of the website.
Appellant has not demonstrated that the Examiner erred in relying on
Beranek to disclose extracting location and structure information to modify
Guthrie’s webpage interface to include a toolbar, such as the weather toolbar
taught by Guthrie (Fig. 3) or the icon bar taught by Furst (col. 4, ll. 26-29), whether
or not clicking on the icon activates a third party application independent of the
webpage, as taught by Furst. Therefore, we affirm the Examiner’s rejections of
claims 1-10, 15-17, 22, 41-50, 55-57, and 69-93.

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II. Rejection of Claim 61under 35 U.S.C § 103(a).
Contentions
Claim 61 recites instructions to be executed by a processor. Like the method
recited in claim 1, claim 61 recites causing the processor to automatically modify
each of the webpages to insert a substantially identical toolbar, responsive to the
location and structural information being extracted from the webpage. Unlike
claim 1, claim 61 does not recite the toolbar including a command associated with
a product.
Appellant argues the Examiner’s admission that Guthrie does not explicitly
disclose extracting location and structural information means that Guthrie cannot
provide a toolbar responsive to such extracted information. (App. Br. 30).
The Examiner further cites Beranek to teach parsing and extracting a tag to
insert new code before or after the extracted tag. (Ans. 25). Appellant asserts that
Beranek does not describe a device that obtains structural information from an
HTML tag, but parses web documents to determine if certain tags are to be
removed. (Reply Br. 11). Although Appellant’s assertion that Beranek “just
completely removes the HTML tag” improperly is made for the first time in the
Reply Brief, we will address it here nevertheless. Appellant cites Bernarek (col. 9,
l. 7 - col. 11, l. 61) to support this contention.

Analysis
In contrast to Appellant’s position that Guthrie cannot provide a toolbar
responsive to extracted location and structural information, we note that Guthrie
teaches installing a system to properly parse and interpret an HTML document
such that an injectable component can be generated. (col. 6, ll. 10-23). Guthrie
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further teaches that the injectable component can be a toolbar, e.g., a weather
forecast toolbar. (col. 3, ll. 45-48).
The Examiner cites Beranek to disclose extracting tags and tag location to
insert the HTML before or after the tag. (Ans. 6). In contrast to Appellant’s
assertion that Beranek just removes HTML tags, we note the following text in
Beranek:
Column 10, lines 21-27:
According to the present invention, the caching proxy
includes a filtering mechanism 229 for receiving a Web
document formatted according to HTML, identifying the
HTML tags (such as described above), re-formatting the
Web document by modifying one or more characteristics
of original HTML, and then passing the modified Web
document to the browser for display. (emphasis added)

Column 11, lines 3-10:

…by way of example only, the caching proxy 225 is
used to control the foreground and background colors, to
override font types and sizes, to control display geometry
… to embed sounds, animations, videos and/or other
files, to add/remove/reconfigure frames on the page
and/or to control text/table formatting.

Column 11, lines 13-17

This routine begins at step 160 with the extraction of an
HTML tag from the Web document being parsed. At
step 162, a test is run to determine whether the tag is to
be removed or replaced. (emphasis added)

Column 11, lines 47-53
… the routine continues at step 170 to test whether a
new HTML tag is to be inserted before or after the HTML
tag extracted at step 160. If so, the routine branches to
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step to step 172. At step 172, the new tag may be
inserted, for example, to embed one or more of the
following types of data: sounds, images, special purpose
plug-ins to perform space reservation on the page … or
other HTML data to support re-formatting. (emphasis
added).
The above text, taken from the portion of Beranek cited by Appellant,
clearly contradicts Appellant’s contention that Beranek discloses just removing
HTML tags and supports the Examiner’s finding that Beranek discloses extracting
a tag to insert new code before or after the extracted tag. Appellant has not
demonstrated that the Examiner erred in combining Guthrie and Beranek as the
basis for rejecting claim 61. Therefore, we affirm the rejection of claim 61 and
dependent claims 62-68 which were not separately argued. (App. Br. 31, 32).
Should there be further prosecution, we note that the broadest reasonable
interpretation of the recited computer readable medium carrying one or more
sequences of instructions for execution by one or more processors could
encompass transitory propagating signals, which are non-statutory subject matter
under In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). See also¸1351 OG
212 (Feb. 23, 2010).

III. Rejection of Claims 11-14, 18-20, 51-54, 58-60, and 62-68 under 35
U.S.C. 103(a)
Appellant contends that all pending dependent claims are allowable for
being dependent from allowable independent claims. (App. Br. 32). Appellant
makes no further arguments distinguishing over any of the other references cited
by the Examiner (Fergerson, Linden, Philippe, and Fields). Since we affirm the
Examiner’s rejections of the independent claims and Appellant advances no further
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arguments, we affirm the Examiner’s rejections of the remaining claims.

REJECTION UNDER 35 U.S.C. § 112 ¶ 1
Claims 1-20, 22, 41-68, and 77-81 stand rejected under 35 U.C.S. § 112 ¶ 1
on the basis that there is no written description of receiving a request for “one or
more” webpages from a user because the specification discloses one product
webpage requested from one request. (Ans. 3).
As originally filed, claim 1 recited “receiving a request for a product
webpage from a user, the product webpage being associated with a product and an
independent vendor…” (emphasis added). Amended claim 1, which is the subject
of this appeal, recites “… receiving a request for one or more product webpages,
each of the one or more product webpages being associated with a respective
product and corresponding to an independent vendor….” In the amendment,
Appellant retained the language “a request” while amending from “a product
webpage” to “one or more product webpages.” Changing the language from “a” to
“one or more” in one instance and not the other has meaning and changes the scope
of the claim.
Appellant cites North American Vaccine, Inc. v. American Cyanamid Co., 7
F.3d, 1571 (Fed. Cir. 1993). Appellant points out that North American Vaccine
mentions that the use of “a” in a claim can mean “one or more.” However, North
American Vaccine also states that “[w]hen the meaning of a claim term is in doubt,
we look to the specification for guidance.” Id. at 1576.
Appellant’s citation to the mere use of “a” in the specification to support the
argument that “a” means “one or more” in the claims is inconsistent with North
American Vaccine. (App. Br. 22). In North American Vaccine the court found no
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indication in the patent specification that the inventors intended “a” to have other
than its normal singular meaning. Id.
Because claim 1 recites modifying the requested webpage, the request for
one or more webpages in the claim does not refer to an Internet search engine
request, which returns links to multiple webpages, as suggested by Appellant
(Reply Br. 4). Referring to the portion of the specification which discloses that a
user accesses the enhanced functionality server 100 and browses vendor and
product pages normally, Appellant cites to paragraph [0037] of the Appellant’s
published patent application which states that enhanced functionality server 100
“receives the requests for product webpages.” (Reply Br. 4) (emphasis by
Appellant). Written in the plural, this paragraph contains no mention of a single
request for more than one webpage. Although Appellant’s argue that the
specification describes a gift registry which includes products from more than one
retailer, (App. Br. 22), Appellant does not point to any part of the specification that
describes a single request for more than one webpage, as appears to be the plain
meaning of amended claim 1. Therefore, we affirm the rejection of the claim 1 and
other claims which use this language, i.e., claims 1-20, 22, 61-68, and 77-81.
Appellant argues that the Examiner’s separate rejection of claim 19 under 35
U.S.C. § 112 ¶ 1 (Ans. 3-4) is improper because the language which the Examiner
cites as the basis for rejecting claim 19 was present in the claim as originally filed.
(App. Br. 24). Although we agree that the Examiner erred in stating that the
specific limitation in claim 19 was not supported by the claim as originally filed,
claim 19 depends from claims reciting other features which are not supported by
the written description and the rejection of claim 19 under 35 U.S. C. § 112 ¶ 1 is
affirmed.
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We now turn to claims 41-60, which use different language. We note that
original claim 41 recited “…presenting a list of product webpages to the user…
receiving a request for a particular product webpage…” Amended claim 41 recites
“presenting a list of one or more product webpages, each of the …receiving a
request for a particular one of the one or more product webpages…” (emphasis
added). Since the recited request is for a particular one of the one or more
webpages, the meaning of amended claim 41 does not depart from the meaning of
the claim as originally filed, i.e., a single request for a single (particular one)
webpage. We therefore reverse the Examiner’s rejection of claims 41-60 under 35
U.S.C. § 112 ¶ 1.
Appellant argues that the Examiner’s separate rejection of claim 59 under 35
U.S.C. § 112 ¶ 1 (Ans. 3-4) is improper because the language which the Examiner
cites as the basis for rejecting claim 59 was present in the claim as originally filed.
(App. Br. 24). We agree. We therefore conclude that the Examiner erred in
rejecting claim 59 for not having a written description of these limitations and we
reverse this rejection.

CONCLUSION
Rejections under 35 U.S.C. § 103(a)
We conclude that the Examiner did not err in the any of the rejections under
35 U.S.C. § 103(a). Specifically the Examiner did not err in rejecting:
Claims 1-10, 15-17, 22, 41-50, 55-57, and 87-93 under 35 U.S.C. § 103(a)
as unpatentable over US Patent 6,266,681 B1 (Guthrie), in view of US Patent
6,226,642 B1 (Beranek), US Patent 6,297,819 B1 (Furst), and US Patent 5,970,472
(Allsop);
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Claims 11, 12, 51, and 52 under 35 U.S.C. § 103(a) as unpatentable over
Guthrie in view of Beranek, Furst, and Allsop in further view of US Patent
5,966,697 (Fergerson);
Claims 13, 14, 53, and 54 under 35 U.S.C. § 103(a) as unpatentable over
Guthrie in view of Beranek, Furst, and Allsop in further view of US Patent
6,266,649 B1 (Linden);
Claims 18 and 58 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in
view of Beranek, Furst, and Allsop in further view of US Patent 6,643,624 B2
(Philippe);
Claims 19 and 59 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in
view of Beranek, Furst, and Allsop in further view of US Patent 6,128,655
(Fields);
Claims 20 and 60 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in
view of Beranek, Furst, and Allsop in further view of Fields;
Claim 61 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in view of
Beranek;
Claims 62-68 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in view
of Beranek, in further view of Furst; and
Claims 69-86 under 35 U.S.C. § 103(a) as unpatentable over Guthrie in view
of Beranek and Furst.

Rejections under 35 U.S.C. § 112 ¶1
We conclude that the Examiner did not err in rejecting claims 1-20, 22, 61-
68, and 77-81 for lack of written description under 35 U.S.C. § 112 ¶1.
We conclude that the Examiner erred in rejecting claims 41-60 for lack of
written description under 35 U.S.C. § 112 ¶ 1.
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ORDER
The rejections of claims 1-20, 22, and 41-93 under 35 U.S.C. § 103(a) are
AFFIRMED.
The rejections of claims 1-20, 22, 61-68, and 77-81 under 35 U.S.C. § 112
¶ 1 are AFFIRMED.
The rejections of claims 41-60 under 35 U.S.C. § 112 ¶ 1 are REVERSED.
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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