Ex Parte LalDownload PDFBoard of Patent Appeals and InterferencesJan 30, 200810078419 (B.P.A.I. Jan. 30, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte AMRISH K. LAL ____________ Appeal 2007-1506 Application 10/078,419 Technology Center 2100 ____________ Decided: January 30, 2008 ____________ Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and LANCE LEONARD BARRY, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2007-1506 Application 10/078,419 Appellant’s claimed invention relates to the detection and correction of broken hypertext links embedded in documents on a web site. A request is sent to a link checking service to check the status of a resource corresponding to the hypertext link. Upon receipt of a response to the request indicating a changed location of the resource, the document is changed to indicate the changed location of the resource. (Specification 5). Claim 1 is illustrative of the invention and reads as follows: 1. A system for correcting links to resources in a network, comprising: a link checking service unit associated with a first group of resources and configured for determining if a location of a resource among the first group of resources has changed; and a link correction service unit configured for sending a request to the link checking service to determine validity of a link, receiving a response indicating a status of the link, and modifying a document containing the link based on the received response. The Examiner relies on the following prior art references to show unpatentability: Glass US 6,253,204 B1 Jun. 26, 2001 Laiho WO 00/46696 Aug. 10, 2000 Claims 1-30, all of the appealed claims, stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Glass in view of Laiho. Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the Briefs and Answer for the respective details. Only those arguments actually made by Appellant have been considered in this decision. Arguments which Appellant could have made but chose not to 2 Appeal 2007-1506 Application 10/078,419 make in the Briefs have not been considered and are deemed to be waived [see 37 C.F.R. § 41.37(c)(1)(vii)]. ISSUE Under 35 U.S.C § 103(a), with respect to appealed claims 1-30, would one of ordinary skill in the art at the time of the invention have found it obvious to combine Glass and Laiho to render the claimed invention unpatentable? PRINCIPLES OF LAW In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[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.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 3 Appeal 2007-1506 Application 10/078,419 ANALYSIS Independent claim 1 With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of appealed independent claim 1 based on the combination of Glass and Laiho, Appellant’s arguments in response assert a failure to set forth a prima facie case of obviousness since all of the claimed limitations are not taught or suggested by the applied prior art references. Appellant’s arguments initially focus on the contention that, in contrast to the claimed invention, the relied upon Glass reference does not provide a link checking service unit that is “associated with a first group of resources” that includes a requested file. According to Appellant (Br. 16), the return of a “file not found” message in Glass does not result from any determination by any server structure associated with a group of resources that might include a requested file but, rather, results from a “time-out” determination made on the client requesting side. We do not find this argument of Appellant to be persuasive. While Appellant is correct that in one disclosed embodiment (Figure 10) of Glass the “file not found” message is a result of a time-out determination made at the client requester, other described embodiments of Glass disclose that a determination is made at the server as to whether a “file not found” message is to be returned. As one example, Glass discloses at column 4, lines 58-61 the generation of a “file not found” message as a result of the determined inability of the server to find a requested document. We also find to be without merit Appellant’s further contention (Br. 17; Reply Br. 5-6) that, while a “file not found” message is returned in Glass if the location of a requested file has changed, the receipt of such a “file not 4 Appeal 2007-1506 Application 10/078,419 found” message does not necessarily indicate that a file location has changed. As argued by Appellant, the receipt of a “file not found” message in Glass could result from other determinations made by Glass such as a server being down, extreme network traffic congestion, retrieval failure within a predetermined time limit, etc. In our view, however, Appellant’s arguments are not commensurate with the scope of independent claim 1. As also alluded to by the Examiner (Ans. 14), the language of independent claim simply does not preclude other determinations being made besides the recited determination of the location of a resource being changed. In other words, the generation by Glass of a “file not found” message based on a determination that a resource file location has changed, as recognized by Appellant, satisfies the claimed feature notwithstanding the fact that other determinations are also made by Glass that result in a “file not found” message. With respect to the applied Laiho reference, we find, from our discussion and analysis of the Glass reference, that any disclosure of a resource location change feature by Laiho is not necessary for a proper rejection of claim 1 since Glass already discloses this feature. Nevertheless, we find Appellant’s arguments (Br. 17-18; Reply Br. 6-7) with respect to the Laiho reference, which mirror those made with respect to Glass, to be unpersuasive. Appellant does correctly characterize the disclosure of Laiho which is summarized at Laiho’s page 7 and illustrated in the Figure 2 flow chart of Laiho. As described by Laiho, in one situation, when a requested resource can not be found, a correction message is returned to the requester. In another situation, a correction message is returned to the file requester along with a new resource location if the location has changed. 5 Appeal 2007-1506 Application 10/078,419 Appellant contends, however, that when only a correction message is returned in Laiho, the requester can not determine if the requested file has moved to a new location or is simply a result of, for example, a typographical error in the file name. According to Appellant, therefore, there is no indication from the return of the correction message in Laiho that the location of a requested file has necessarily changed. As with our previous discussion with regard to Glass, however, Appellant’s argument with respect to Laiho is not commensurate with the scope of appealed claim 1. In our view, Laiho’s determination that a file location has changed, indicated by the return of the new file location along with a correction message, satisfies the claimed file location change feature. In other words, the fact that Laiho may make other determinations which result in only a correction message being returned is not precluded by the language of claim 1. We also find to be without merit Appellant’s argument (Br. 18-19; Reply Br. 7-9) that the Examiner has not provided a proper basis for the proposed combination of Glass and Laiho. We simply find no error, and there are no convincing arguments to the contrary from Appellant, in the Examiner’s finding (Ans. 4, 15, and 16) that Laiho’s teaching of providing an actual correction to a broken link would be recognized by the skilled artisan as an obvious enhancement to the broken link identification disclosure of Glass. We are also unpersuaded by Appellant’s contention (Reply Br. 8-9) that, because of the divergent solutions to solving a broken link problem proposed by the Glass and Laiho references, any combination of Laiho with Glass would render the system of Glass unsatisfactory for its intended 6 Appeal 2007-1506 Application 10/078,419 purpose. We do not interpret the Examiner’s position as suggesting the bodily incorporation of the link correction structure of Laiho into the broken link indication structure of Glass. Rather, it is Laiho’s teaching of the advantages of providing an actual correction to an occurrence of a broken link that is relied on for the proposed combination. For the above reasons, since it is our opinion that the Examiner has established a prima facie case of obviousness based on the combination of Glass and Laiho which has not been overcome by any convincing arguments from Appellant, the Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1, as well as dependent claims 2 and 3 not separately argued by Appellant, is sustained. Independent claims 4, 13, and 14 We also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of separately argued claims 4, 13, and 14, as well as the rejection of dependent claims 5-9 and 30 not separately argued by Appellant. Appellant’s arguments (Br. 19; Reply Br. 9) have merely repeated the language of the “changed location” feature of claims 4, 13, and 14 along with a general unsupported allegation that such feature is not present in the applied Glass and Laiho references. Such arguments are not persuasive in convincing us of any error in the Examiner’s stated position (Ans. 5, 7, 8). We find no error in the Examiner’s reliance on the cited portions of Glass (col. 4, l. 56-col. 5, l. 62 and col. 6, ll. 12-43) as corresponding to the claimed changed location indication feature. We also again refer to our earlier discussion in which we concluded that Glass does in fact provide a 7 Appeal 2007-1506 Application 10/078,419 disclosure of changing the appearance of a resource location indicator link in a document based on a determination of a change in the resource location. Claims 10-12 The Examiner’s obviousness rejection of these claims based on the combination of Glass and Laiho is sustained as well. We find no convincing arguments from Appellant that persuade us of any error in the Examiner’s stated position (Ans. 7 and 16) regarding the “document repository” requirements of claims 10-12. We also find a disclosure in Laiho of web server (7 and 8) repositories for storing document resource locations as well as corrected document resource locations. Claims 15-29 We also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of these claims based on the combination of Glass and Laiho. Appellant’s arguments, alleging a reliance by the Examiner on improper hindsight reasoning, reiterate those made against previously discussed claim 1 which attack the basis for the Examiner’s proposed combination of Glass and Laiho. We find such arguments to be unpersuasive for all of the reasons discussed supra. In our view the Examiner’s proffered combination of Glass and Laiho reasonably teaches and/or suggests Appellant’s claimed invention in terms of familiar elements that would have been combined by an artisan having common sense using known methods to achieve a predictable result. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Leapfrog 8 Appeal 2007-1506 Application 10/078,419 Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 127 S. Ct. at 1739-40 (2007)). CONCLUSION In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a) rejections of all of the claims on appeal. Therefore, the decision of the Examiner rejecting claims 1-30 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2006). 9 Appeal 2007-1506 Application 10/078,419 AFFIRMED eld SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON DC 20037 10 Copy with citationCopy as parenthetical citation