Ex Parte McBrearty et al

Board of Patent Appeals and Interferences

Aug 14, 2007

09714725 (B.P.A.I. Aug. 14, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GERALD FRANCIS MCBREARTY
AND JOHNNY MENG-HAN SHIEH
____________________

Appeal 2007-2099
Application 09/714,725
Technology Center 2100
____________________

Decided: August 14, 2007
____________________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT,
and JOHN A. JEFFERY, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-21, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to Web document browsing and enabling
the user to backtrack through the documents the user had passed through
(Specification 2). Appellants provide for linking a selected sequence of
hypertext Web documents into a string and storing the string by creating a
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hyperlink in the first document to the first next document as well as in the
next document to the subsequent next document (Specification 3).
Independent Claim 1 is representative and reads as follows:
1. In a World Wide Web (Web) communication network with
user access via a plurality of data processor controlled interactive
receiving display stations for displaying received hypertext documents
of at least one display page containing embedded hyperlinks to other
hypertext documents accessible from sources on the Web, a system
enabling a user to link and store a sequence of selected hypertext
documents comprising:

means at a receiving display station for designating a received
Web document as a starter document;

means for selecting a subsequently received Web document as a
first next document;

means for creating a hyperlink in said starter document to said
first next document; and

means for storing said starter and next documents at said
receiving display station.

The Examiner relies on the following prior art in rejecting the claims:
Nielsen US 6,021,435 Feb. 1, 2000
Bauersfeld US 6,195,679 B1 Feb. 27, 2001
(filed Jan. 6, 1998)

The Examiner rejected claims 1-4, 6-11, 13-18, 20, and 21 under
35 U.S.C. § 102(e) as anticipated by Bauersfeld and claims 5, 12, and 19
under 35 U.S.C. § 103(a) as being unpatentable over Bauersfeld and Nielsen.
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Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of the Appellants and the
Examiner.
We reverse.

ISSUE
Appellants and the Examiner disagree as to whether Bauersfeld
discloses “means for creating a hyperlink in said starter document to said
first next document.” Appellants contend that the “Forward” and “Back”
buttons of Bauersfeld are not links in any hypertext documents and merely
sequentially move through a sequence of documents (Br. 6). The Examiner
contends that since the “Forward” button uses a user-defined path to keep
track of each page, it is the same as the claimed hyperlink (Answer 7-8).
The issue, therefore, is whether the Examiner erred in rejecting the
claims under 35 U.S.C. §§ 102(e) and 103(a). The issue specifically turns
on whether Bauersfeld anticipates Appellants’ claimed invention by
disclosing “means for creating a hyperlink in said starter document” as the
“Forward” and “Back” buttons depicted in Figures 4-6 of the reference.

FINDINGS OF FACT
Bauersfeld navigates and records Web browsing sessions by
automatically recording all of the Web pages a user visited during a session
and organizes them into paths (col. 1, l. 65 through col. 2, l. 3) that are
stored in a file and made available to a user for viewing (col. 2, ll. 8-12).
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As depicted in Figure 3, the path the user traveled to visit the selected
web pages is represented in a tree or search dialogue to the user (col. 3, ll.
23-32).
Bauersfeld further discloses using “Back” and “Forward” buttons 403
and 404 as a way of traversing the current path (Figures 4-6; col. 3, ll. 51-
65).
The “Back” and “Forward” buttons are disclosed to be parts of the
session history toolbar and used to navigate along any selected path (col. 4,
ll. 5-13) along with drop down menus that display items on the current path
(col. 4, ll. 19-23).

PRINCIPLES OF LAW
A rejection for anticipation requires that the four corners of a single
prior art document describe every element of the claimed invention, either
expressly or inherently, such that a person of ordinary skill in the art could
practice the invention without undue experimentation. See Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946 (Fed. Cir.
1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994).

ANALYSIS
As described above, Bauersfeld’s “Back” and “Forward” buttons are
parts of the session history toolbar and sequence through a series of
documents along a selected path. As such, as argued by Appellants (Br. 6),
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they are not a part of the hypertext document displayed in a session and
merely represent buttons permanently fixed in the toolbar.
We also disagree with the Examiner’s rationale (Answer 8) that since
Bauersfeld’s navigating through a series of web documents in a path
achieves results that appear somewhat similar to the claimed subject matter,
the claimed elements are taught by the reference. As discussed supra, the
claims require that a hyperlink to the next document be created in the starter
document which is not taught by Bauersfeld’s “Back” and “Forward”
buttons. Therefore, as argued by Appellants (Reply Br. 4), while the results
may be equivalent, Bauersfeld does not disclose any of the means and the
methods by which these results are achieved.

CONCLUSION
On the record before us, we find that the Examiner fails to make a
prima facie case that Bauersfeld anticipates claim 1 or other independent
claims which require “creating a hyperlink in said starter document to said
first next document.” Therefore, in view of our analysis above, the
35 U.S.C. § 102 rejection of claims 1-4, 6-11, 13-18, 20, and 21 as
anticipated by Bauersfeld cannot be sustained. Additionally, we do not
sustain the 35 U.S.C. § 103 rejection of claims 5, 12, and 19 over Bauersfeld
and Nielsen as the Examiner has not identified any teachings in Nielsen to
overcome the deficiencies of Bauersfeld discussed above.

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DECISION
The decision of the Examiner rejecting claims 1-4, 6-11, 13-18, 20,
and 21 under 35 U.S.C. § 102 and claims 5, 12, and 19 under 35 U.S.C.
§ 103 is reversed.

REVERSED

KIS

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