Ex Parte Malik

Patent Trial and Appeal Board

Feb 13, 2015

11188933 (P.T.A.B. Feb. 13, 2015)

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.
11/188,933 07/25/2005 Dale Malik 040256 2165
38516 7590 02/13/2015
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
STORK, KYLE R
ART UNIT PAPER NUMBER
2144
MAIL DATE DELIVERY MODE
02/13/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DALE MALIK1
____________

Appeal 2012-005104
Application 11/188,933
Technology Center 2100
____________

Before ULRIKE W. JENKS, TINA E. HULSE, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

HULSE, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to
annotated information management systems. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the Real Party in Interest as AT&T Intellectual
Property I, LP. (Br. 1.)
Appeal 2012-005104
Application 11/188,933

2
STATEMENT OF THE CASE
The claimed invention relates to “methods and systems for creating,
integrating, and managing a user-defined annotation to an electronic file
and/or to an electronic communications address associated with electronic
information.” (Spec. ¶ 3.)
Claims 1–20 are on appeal. (Br. 2.)
Claim 1 is illustrative and is reproduced below:
1. A method, comprising:
querying a database stored in memory for a search
term;
receiving search results for the search term;
retrieving an electronic file associated with a search
result, the electronic file associated with an
Internet Protocol address and comprising data of a
website;
presenting the website by a processor in a portion of a
graphical user interface;
receiving annotation data in a data entry field of the
graphical user interface; and
storing the annotation data within the data of the
website.
Claims 1, 4, and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leo Spork.2 (Ans. 4–6.)
Claims 12 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leo Spork and Spielberg.3 (Id. at 6–7.)
Claims 2, 3, 7, and 9–11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Leo Spork and Zee.4 (Id. at 7–9.)

2 Leo Spork, US 2006/0168125 A1, published July 27, 2006.
3 Spielberg, US 2002/0129057 A1, published Sept. 12, 2002.
Appeal 2012-005104
Application 11/188,933

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Claims 13–15, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Leo Spork, Spielberg, and Zee. (Id. at 9–11.)
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leo Spork and Eintracht.5 (Id. at 11.)
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leo Spork, Zee, and Blair.6 (Id. at 11–12.)
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leo Spork, Spielberg, and Eintracht. (Id. at 12.)
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leo Spork, Spielberg, Zee, and Guturu.7 (Id. at 13.)
DISCUSSION
Upon considering the evidence of record and each of Appellant’s
contentions, we find that the preponderance of evidence on this record
supports the Examiner’s conclusions that the subject matter of claims 1–20
is unpatentable as obvious over the cited references.
For emphasis only, we note that we agree with the Examiner that Leo
Spork discloses storing annotation data within the data of the website, as
required by independent claims 1, 7, and 12. (Ans. 14.) We also agree with
the Examiner that Appellant has not explained how the combination of Leo
Spork and Spielberg teach away from the claimed invention. (Id. at 15–16.)
In particular, Appellant has failed to explain how the addition of Spielberg’s
annotation button necessarily eliminates Leo Spork’s “principle of
operation.” (Id.) Accordingly, we sustain the Examiner’s rejections of each

4 Zee, US 2003/0065642 A1, published Apr. 3, 2003.
5 Eintracht et al., US 6,687,878 B1, issued Feb. 3, 2004.
6 Blair et al., US 2002/0007373 A1, published Jan. 17, 2002.
7 Guturu et al., US 6,581,075 B1, issued June 17, 2003.
Appeal 2012-005104
Application 11/188,933

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of the appealed claims for the reasons set forth in the Answer (Ans. 4–17),
which we incorporate herein by reference.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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