Ex Parte Madril et al

Board of Patent Appeals and Interferences

Apr 24, 2012

10281082 (B.P.A.I. Apr. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT JOHN MADRIL JR. and
SHELL STERLING SIMPSON
____________

Appeal 2010-000643
Application 10/281,082
Technology Center 2400
____________

Before DENISE M. POTHIER, GREGORY J. GONSALVES, and
MICHAEL R. ZECHER, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000643
Application 10/281,082

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-25, 29-41, and 43. (App. Br. 1.)1 Claims 26-28, 42, 44, and 45
were cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. A method of providing a web based link to edit a
document, comprising:
deriving a reference to the document; and
placing a hyperlink containing the reference on a
preview page of the document.

The Examiner rejected claims 1-12, 15, 29-31, 34, 41, and 43 under
35 U.S.C. § 102(e) as being anticipated by Shima (U.S. Patent No.
7,050,192 B2 (filed May 18, 2001)). (Ans. 3-8.)2
The Examiner rejected claims 13, 14, 32, and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Shima in view of Barnes (U.S. Patent
Application Publication No. 2003/0212762 A1 (filed May 8, 2002)). (Ans.
8-9.)
The Examiner rejected claims 16-18, 21-25, 35-37, and 40 under 35
U.S.C. § 103(a) as being unpatentable over Quinn (U.S. Patent Application
Publication No. 2003/0028850 A1 (filed Aug. 21, 2002)) in view of Shima.
(Ans. 9-13.)
The Examiner rejected claims 19, 20, 38, and 39 under 35 U.S.C.

1 All references to the Appeal Brief are to the Appeal Brief filed on June 10,
2009.
2 All references to the Answer are to the Answer mailed on August 4, 2009.
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Application 10/281,082

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§ 103(a) as being unpatentable over Quinn, Shima, and Barnes. (Ans. 13.)

ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Should the claim term “reference to a document” recited in claim 1
and similarly recited in each of the other independent claims be construed to
include a reference to content stored externally?

ANALYSIS
We disagree with Appellants’ conclusion regarding the Examiner’s
rejection of each of the independent claims. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 3-27) in response to arguments made in the
Appellants’ Appeal Brief and Reply Brief.3 We also concur with the
conclusion reached by the Examiner. We highlight and address specific
findings and arguments regarding the construction of claim terms involving
references to a document.
The Examiner found that Shima discloses the claim term “reference to
the document,” as recited in claim 1 and as similarly recited in each of the
other independent claims (i.e., claims 7, 8, 9, 10, 16, 22, 29, 35, 41, and 43).
(Ans. 3-27.) As explained by the Examiner, Shima discloses a Web page

3 All references to the Reply Brief are to the Reply Brief filed on September
23, 2009.
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area C1 containing data relating to weather information at a district in Japan
called the Nagano Prefecture. (Ans. 15; Shima col. 5, ll. 51-52; FIG. 5.)
The Web page area contains a hyperlink C2 to “the contents of the weekly
weather forecast on the Nagano Prefecture. (Shima, col. 5, ll. 58-61.) The
Examiner found that this hyperlink to content qualifies as the claimed
“reference . . . to the document.” (Ans. 15.)
All of Appellants’ arguments contesting the Examiner’s rejections of
each of the independent claims are based on their belief that the Examiner
erred in construing the claim term “reference to the document” as well as
similar claim terms to encompass a hyperlink to externally-stored content.
(App. Br. 10-21.) For example, Appellants argue that claim 1 requires a
reference that “refers to the actual document that is the subject of the claim.”
(Id. at 10.) Appellants argue that Shima “does not ‘derive a reference to the
document’ as is recited in claim 1; it merely contains a hyperlink not to the
document, but to external content to populate the document.” (Id. at 11.)
Similarly, with respect to independent claim 7, Appellants argue that the
claimed URL “is not a URL to external content; it is a URL for the actual
document of the preamble.” (Id.) In other words, Appellants argue that the
claim terms relating to a reference to a document should be construed as a
reference to a single document stored entirely at one location. (See App. Br.
9-21.)
Our reviewing Court, however, requires us to give a claim its broadest
reasonable meaning consistent with the specification. In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). And under that standard, the claim term
“reference to the document” along with similar claim terms should not be
narrowly construed as a reference to a single document stored at one
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location. Rather, the claimed “document” may be broadly, but reasonably
construed to encompass content from different locations. Accordingly,
under the proper claim construction, Shima’s hyperlink to weather content
for the Nagano Prefecture qualifies as the claimed “reference to the
document.” For these reasons as expressed more fully by the Examiner
(Ans. 3-27), we sustain the Examiner’s rejections of independent claims 1, 7,
8, 9, 10, 16, 22, 29, 35, 41, and 43. We also sustain the rejections of the
dependent claims on appeal because Appellants did not set forth any
separate patentability arguments for these claims. (See App. Br. 9-21; Reply
Br. 4-10.)

DECISION
We affirm the Examiner’s decision rejecting claims 1-25, 29-41, and
43.
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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