Ex Parte Lu et al

Board of Patent Appeals and Interferences

Apr 7, 2008

09500639 (B.P.A.I. Apr. 7, 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 CHUN-MING LU and VINCENT M. LEE
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Appeal 2007-1282
Application 09/500,639
Technology Center 2100
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Decided: April 7, 2008
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Before LANCE LEONARD BARRY, ALLEN R. MACDONALD, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4-12, and 15-24. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
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A. INVENTION
The invention at issue involves forwarding a web address to a pre-
existing uniform resource locator (URL) (Spec. 1). In particular, a captured
domain name and a captured uniform resource identifier (URI) are identified
for a web address. The captured domain name is used to search a data file
for a corresponding domain name that is used to create a forwarding URL
(id. 15). The forwarding URL and the captured URI are used to redirect a
user to a proper web location (id. 16).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows:
1. A method for forwarding a web address to another web address
in a network comprising the steps, performed by a processor, of:
receiving a request destined to a first web address including a domain
name and a uniform resource identifier (URI);
determining a forwarding uniform resource locator (URL) that
corresponds to the domain name, the uniform resource identifier not being
used in determining the forwarding uniform resource locator;
combining the forwarding uniform resource locator (URL) and the
uniform resource identifier (URI) to form a second web address without
changing the uniform resource identifier; and
redirecting the request to the second web address.

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C. REJECTIONS
Claims 1, 9, 10, 12, 20, 21, and 22 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by U.S. Patent No. 5,751,956 (“Kirsch”).
Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kirsch and U.S. Patent No. 5,995,099 (“Horstmann”).
Claims 5 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kirsch, Horstmann, and U.S. Patent No. 6,052,736
(“Ogle”). Claims 6-8, 17-19, and 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kirsch, U.S. Patent No. 5,909,686 (“Muller”),
and U.S. Patent No. 6,321,242 (“Fogg”). Claims 11 and 22 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Kirsch and Fogg.

II. CLAIMS 1, 9, 10, 12, 20, 21, AND 23
Independent claims 1 and 12 recite “determining a forwarding
uniform resource locator (URL) that corresponds to the domain name, the
uniform resource identifier not being used in determining the forwarding
uniform resource locator.” Independent claim 23 is similar to claim 1 and
claim 12 and recites “determine a forwarding uniform resource locator
(URL) that corresponds to the domain name, the uniform resource identifier
not being used in determining the forwarding uniform resource locator.”
The Examiner cites a prior art “system of URL redirection for servers
and clients supporting the 1.5 or later versions of the HTTP protocol” (col.
4, ll. 11-13) and finds that Kirsch discloses “[d]etermining a forwarding
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uniform resource location (URL) that corresponds to the domain name
(Kirsch on col. 4, lines 15-20: the user’s input determines a new URL via the
redirect command)” and “the uniform resource identifier not being used in
determining the forwarding uniform resource locator” (Ans. 5).
Appellants argue that in Kirsch “. . . the forwarding URL does not
correspond to the domain name, but instead corresponds to the URI /dir1”
(App. Br. 6).
In response, the Examiner cites an alternate embodiment of Kirsch
and finds that “Kirsch discloses repeating any path portion of a direct server
specification be repeated as the path portion of the redirected server (column
9, lines 29-32)” (Ans. 12-13).
Here, the Examiner cites a first embodiment (i.e., a system of
redirection supporting the 1.5 or later versions of the HTTP protocol) as
disclosing determining a forwarding URL corresponding to a domain name
but combines this disclosure with a second embodiment (i.e., one
embodiment of the Kirsch invention repeating any path portion of a direct
server specification) for providing determining a forwarding URL without
using a URI. The Examiner finds that Kirsch anticipates claim 1 but does
not demonstrate that Kirsch discloses an embodiment in which each and
every element of the claim 1 is found. “A claim is anticipated only if each
and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987); “The
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identical invention must be shown in as complete detail as is contained in the
. . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir.
1989).
Because the Examiner does not establish that Kirsch discloses an
embodiment in which each and every element of claims 1, 12, or 23 is set
forth, we reverse the rejection of claims 1, 12, and 23, and of claims 9, 10,
20, and 21, which depend therefrom.

III. CLAIMS 4 AND 15
Appellants argue that “the secondary Horstmann, Ogle, Muller and
Fogg reference do not remedy . . . deficiencies of” Kirsch (App. Br. 7).
The Examiner cites Horstmann as disclosing limitations recited in
claims 4 and 15 but does not establish that Horstmann cures the deficits of
Kirsch with regard to claim 1 or claim 12.
We therefore reverse the rejection of claims 4 and 15.

IV. CLAIMS 5 AND 16
Appellants argue that “the secondary Horstmann, Ogle, Muller and
Fogg reference do not remedy . . . deficiencies of” Kirsch (App. Br. 7).
The Examiner cites Horstmann and Ogle as disclosing limitations
recited in claims 5 and 16 but does not establish that Horstmann and/or Ogle
cures the deficits of Kirsch with regard to claim 1 or claim 12.
We therefore reverse the rejection of claim 5 and claim 16.
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V. CLAIMS 11 AND 22
Appellants argue that “the secondary Horstmann, Ogle, Muller and
Fogg reference do not remedy . . . deficiencies of” Kirsch (App. Br. 7).
The Examiner cites Fogg as disclosing limitations recited in claims 11
and 22 but does not establish that Fogg cures the deficits of Kirsch with
regard to claim 1 or claim 12.
We therefore reverse the rejection of claim 11 and claim 22.

VI. CLAIMS 6-8 AND 17-19
Appellants argue that “the secondary Horstmann, Ogle, Muller and
Fogg reference do not remedy . . . deficiencies of” Kirsch (App. Br. 7).
The Examiner cites Muller and/or Fogg as disclosing limitations
recited in claims 6-8 and 17-19 but does not establish that Muller and/or
Fogg cures the deficits of Kirsch.
We therefore reverse the rejection of claims 6-8 and 17-19.

VII. CLAIM 24
Appellants argue that “the secondary Horstmann, Ogle, Muller and
Fogg reference do not remedy . . . deficiencies of” Kirsch (App. Br. 7).
Claim 24 is similar to independent claim 1. However, the Examiner
does not show, let alone argue, that claim 24 would have been obvious to
one of ordinary skill in the art at the time of the invention over Kirsch. The
Examiner asserts that “regarding dependent claim 24, it is a system that is
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capable of executing the method of claim 7, and is rejected under similar
rationale” (Ans. 10) and finds that Fogg discloses limitations recited in claim
7. However, the Examiner does not show that Fogg discloses or renders
obvious the limitations recited in claim 24.
We therefore reverse the rejection of claim 24.

VIII. ORDER
In summary, the rejection of claims 1, 9, 10, 12, 20, 21, and 22 under
§ 102(e) and the rejections of claims 4-8, 11, 15-19, 22, and 24 under
§ 103(a) are reversed.

REVERSED

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