Ex Parte Mauldin

Board of Patent Appeals and Interferences

Oct 4, 2002

08937392 (B.P.A.I. Oct. 4, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL L. MAULDIN
____________
Appeal No. 2002-0040
Application No. 08/937,392
____________
ON BRIEF
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Before HAIRSTON, BARRY, and LEVY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 4-6. The appellant appeals therefrom under
35 U.S.C. § 134(a). We reverse.
BACKGROUND
The appellant‘s invention concerns cataloging files found on the Internet. The
appellant asserts that his invention enables entries in a catalog to be created for
Internet files that have not been downloaded for examination. (Appeal Br. at 2.)
Figure 9 of his specification represents the invention. A file 130 downloaded from the
Internet that contains a hypertext link to another document, viz., “ig-care.html,” is
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Application No. 08/937,392
shown. The link has associated link text, which reads "behavior page." The link and
link text may be used to create an entry for an associated file 134 although the latter file
has not been downloaded. (Id.)
A further understanding of the invention can be achieved by reading the following
claim:
6. A method of constructing an entry in a catalog of files stored on
a network, comprising:
downloading files for processing;
saving link text from the downloaded files and address information
associated with said link text; and
using the address information and the link text to create an entry in
the catalog for a file not downloaded for processing.
Claims 4 and 6 stand rejected under 35 U.S.C. § 102(a) as anticipated by Duda
et al. (“Duda”), Content Routing in a Network of WAIS Servers Distributed Computing
Systems, Proceedings of the 14th Int’l Conference on Distributed Computing Systems,
1994, pp. 124-32. Claim 5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Duda.
OPINION
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Application No. 08/937,392
Rather than reiterate the positions of the examiner or appellant in toto, we
address the main point of contention therebetween. The examiner asserts, "Duda et al.
had specifically suggested construction of a global index (See Duda et al. Col. [sic] 127,
lines 5-7).” (Examiner's Answer at 4.) He adds, "there is no difference between
constructing an index and constructing a catalog." (Id.) The appellant argues, "Duda et
al. do not teach the steps of creating an entry in a catalog corresponding to a network
address of a second file which has not been downloaded, and assigning the link text as
a description of the second file." (Appeal Br. at 6.)
“Analysis begins with a key legal question -- what is the invention claimed?”
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, “the Board must give claims their broadest
reasonable construction. . . .” In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000). “Moreover, limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, claim 4 specifies in pertinent part the following limitations: "[a] method of
constructing an entry in a catalog of files stored on a network, comprising . . . a second
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Application No. 08/937,392
file on the network and not downloaded; creating an entry in the catalog corresponding
to a network address of the second file; and assigning the link text as a description of
the second file." Similarly, claim 6 specifies in pertinent part the following limitations:
"[a] method of constructing an entry in a catalog of files stored on a network, comprising
. . . using the address information and the link text to create an entry in the catalog for a
file not downloaded for processing.” Giving the independent claims their broadest,
reasonable construction, the limitations require creating an entry for a file not
downloaded for processing in a catalog of files stored on a network.
“[H]aving ascertained exactly what subject matter is being claimed, the next
inquiry must be into whether such subject matter is novel.” In re Wilder, 429 F2d 447,
450, 166 USPQ 545, 548 (CCPA 1970). “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., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing Structural Rubber Prods. Co. v. Park
Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264, 1270 (Fed. Cir. 1984); Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983);
Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771, 218 USPQ 781, 789 (Fed. Cir.
1983)). “[T]here is no anticipation ‘unless all of the same elements are found in exactly
the same situation and united in the same way . . . in a single prior art reference.’"
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Application No. 08/937,392
Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894, 221 USPQ 669, 673
(Fed. Cir. 1984) (citing Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ
781, 789 (Fed. Cir. 1983).
Here, the examiner’s position that “[a]s per claims 4 and 6, Duda et al. disclosed
the invention,” (Final Rejection at 2), seems to be that all the elements of the
independent claims are found in Duda’s invention. For its part, the reference describes
Duda’s invention as “based on content routing, an architecture that makes use of
content labels for locating and accessing information in large distributed systems.”
Abs., ll. 6-9. The examiner equates the claimed “link text” to Duda’s use of content
labels asserting, “the content label is a link text which corresponds or [sic] a description
of a second file. . . .” (Examiner’s Answer at 4.) Opining that “Duda et al. had
specifically suggested construction of a global index (See Duda et al. Col. 127, lines 5-
7),” (id.), moreover, he asserts, “there is no difference between constructing an index
and constructing a catalog.” (Id.)
Although the reference mentions a global index, the examiner fails to show that
the index is part of Duda’s invention. To the contrary, Duda distinguishes its invention
from the global index. Specifically, “[c]ontent routing based on content labels lies be-
tween the extremes of a global index and sending every query to every server.” P. 127.
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Application No. 08/937,392
The reference even explains why Duda chose not to use a global index for its invention.
Specifically, “the space needed for this approach is prohibitively large, and a global
index is very difficult to keep up to date. In addition, there would still be some need to
organize the heterogeneous data for browsing.” P. 127. Because the global index is
not part of Duda’s invention, the examiner fails to show it is found in exactly the same
situation and united in the same way as the claimed catalog of files stored on a
network. The absence of such a showing "negates anticipation." Kloster Speedsteel
AB v. Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
Therefore, we reverse the anticipation rejection of claims 4 and 6.
“[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicants.” In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). “[T]he factual inquiry whether to combine
references must be thorough and searching.” McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008(Fed. Cir. 2001). “This factual question . .
. [cannot] be resolved on subjective belief and unknown authority.” In re Lee, 277 F.3d
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Application No. 08/937,392
1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). “It must be based on
objective evidence of record.” Id. at 1343, 61 USPQ2d at 1434.
Here, the examiner fails to allege, let alone show objective evidence of, the
desirability of incorporating a global index into Duda’s use of content routing based on
content labels. We will not “resort to speculation,” In re Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 178 (CCPA 1967), about such desirability. Therefore, we reverse the
obviousness rejection of claim 5.
CONCLUSION
In summary, the rejection of claims 4 and 6 under § 102(a) and the rejection of
claim 5 under § 103(a) are reversed.
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Application No. 08/937,392
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
LLB/kis
EDWARD L PENCOSKE
KIRKPATRICK AND LOCKHART
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Application No. 08/937,392
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PITTSBURGH, PA 15222