Ex Parte Lal

Board of Patent Appeals and Interferences

Jan 30, 2008

10078419 (B.P.A.I. Jan. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AMRISH K. LAL
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Appeal 2007-1506
Application 10/078,419
Technology Center 2100
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Decided: January 30, 2008
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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
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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)).

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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
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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.
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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
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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
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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
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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).

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AFFIRMED

eld

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