Ex Parte Melton et al

Patent Trial and Appeal Board

Sep 30, 2016

12712011 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121712,0ll 02/24/2010 Don Melton
132324 7590 10/04/2016
Fernando & Partners, LLP
228 Hamilton Ave., 3rd Floor
Palo Alto, CA 94301
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
27753-50007C2 1815
EXAMINER
HUTTON, NAN
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
10/04/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mail@fernando-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DON MELTON and BAS ORDING
Appeal2015-002918
Application 12/712,011
Technology Center 2100
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR, and
JEFFREYS. SMITH, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the Final Rejection of claims 1-13 and 19-28
under 35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35
U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to systems and methods for organizing data
items. Specification 1.
Representative Claim (disputed limitations emphasized)
1. A method of organizing a history of previously visited web pages, the
method comprising the acts of:
Appeal2015-002918
Application 12/712,011
analyzing, by a browser application executed by one or more
processors, each of a plurality of web pages retrieved from one or more web
servers by dynamically identifying a plurality of keywords that occur a
number of times greater than a predetermined threshold within each of the
plurality of web pages to determine a subject matter of each of the plurality
of web pages, wherein the keywords are dynamically identified based on
their occurrence without predefining;
recording, by the browser application, a location information, wherein
the location information comprises a resource location information for each
of the plurality of web pages;
organizing, by the browser application, the previously visited web
pages into a plurality of subjects in accordance with the determined subject
matter, wherein the plurality of subjects are derived from the identified
keywords; and
presenting the history of previously visited web pages to the user by
1• 1 • • , I' l',1 1 1• ,. • 1 1• 1. 1
azsptayzng a user zmer1ace OJ rne orowser apptzcanon znctuazng a grapnzcat
representation depicting a plurality of stacks representing the plurality of
subjects to the user, each stack associated with a respective subject of
previously visited web pages, and each depicted stack including a thumbnail
image of each web page in the depicted stack.
Rejections on Appeal
Claims 1-4, 6-11, 13, 19-22, 24 and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Beadle (U.S. Patent Number 7,167,901;
issued January 23, 2007; Bates (U.S. Patent Number 6, 100,890; issued
August 8, 2000), Miller (U.S. Patent Application Publication Number
2002/0010718 Al; published January 24, 2002 and Baker (U.S. Patent
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Application 12/712,011
Application Publication Number 2002/0047856 Al; published April 25,
2002). Final Rejection 2-8.
Claims 5, 12 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beadle, Bates, Miller, Baker and Kulkarni (U.S. Patent
Number 6,310,630 Bl; published October 30, 2001). Final Rejection 9.
Claims 26-28 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Beadle, Bates, Miller, Baker and Carson, Jr. (U.S. Patent
Application Publication Number 2006/0161534 Al; published July 20,
2006). Final Rejection 10.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed July 21, 2014), the Reply Brief (filed
December 18, 2014), the Answer (mailed October 20, 2014) and the Final
Rejection (mailed February 21, 2014) for the respective details. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs.
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. 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 in response to Appellant's Appeal Brief, except where
noted.
Appellants argue the Examiner's obviousness rejection of independent
claims 1, 8 and 19 is improper because the Beadle/Bates/Miller/Baker
combination fails to disclose the claimed invention. Appeal Brief 8. The
Examiner finds Beadle teaches analyzing a plurality of web pages to
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Application 12/712,011
determine subject matter of each web page by employing a browser
application to identify unique and frequently recurring keywords to define
content. Final Rejection 3. The Examiner acknowledges Beadle does not
disclose organizing previously visited webpages into a plurality of subjects
wherein the subjects are derived from identified keywords. Final Rejection
3. The Examiner relies upon Bates to address Beadle's noted discrepancy
because "Bates discloses this limitation in that the system uses the browser
application to organizes the bookmark-list (web pages lists) into
subject folders based on the identified keywords of each web page)." Final
Rejection 4. The Examiner concludes:
[I]t would have been obvious to one of ordinary skill in the art at
the time of the invention was made to modify the teachings of
Beadle with the teachings of Bates for the purpose of allowing
users to browse through related topics regardless of the presented
order of topics, hence avoiding users to move sequentially from
one topic to another and enabling users to improve information
gathering capability and avoiding users to remember the URL of
document.
Final Rejection 4.
Appellants contend "the [E]xaminer has presumed that Beadle's
history list would be automatically sorted just like Bates' bookmark folders.
Appeal Brief 12. Appellants further contend "such a combination would not
disclose 'organizing a history of previously visited web pages,' because an
ordinary person skilled in the art would appreciate a 'history' of previously
visited web pages is different than bookmarking web pages." Appeal Brief
12. Appellants' arguments are not persuasive.
An ordinarily skilled artisan could reasonably imply that because a
user has bookmarked a web page, the bookmarking provides an indication of
a past visited web site and in tum provides a selective historic view of web
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Application 12/712,011
pages visited. However, such inference is not necessary because Beadle
discloses, "Although only a bookmarks list and a history list are depicted in
FIGS. 2A and 2B, keywords may be employed with any type ofhotlist, and
the techniques for selecting keywords may be employed regardless of the
type of hotlist in which an entry is created." Beadle, column 5, lines 17-21.
Beadle discloses keywords are generated the same way for both the
bookmark and history lists. The Examiner finds Bates discloses "that the
system uses the browser application to organizes [sic] the bookmark-list
(web pages lists) into subject folders based on the identified keywords of
each web page)." Answer 4. We agree with the Examiner's findings
because Bates discloses manipulating history data from visited websites, and
therefore it would have been obvious to modify Beadle based upon the
teachings of Bates as required by the independent claims. 1
Appellants' argument that Beadle teaches away from "organizing
'previously visited web pages .... in accordance with the determined subject
matter,' contrary to the examiner's assertion" is likewise not persuasive. 2
1 "The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
2 "A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006) (citations and internal quotation marks omitted). See also In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely disclosing
more than one alternative does not teach away from any of these alternatives
if the disclosure does not criticize, discredit, or otherwise discourage the
alternatives).
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Application 12/712,011
Appellants' argument that the combination of Beadle, Baker and Miller is
improper because "Baker's stacks of images are generated by a web server
and not the client browser" and therefore cannot be applied to a browser
application as claimed is not persuasive. 3
We affirm the Examiner's obviousness rejection of independent
claims 1, as well as, independent claims 8 and 19 commensurate in scope.
Appellants contend "there is no disclosure that teaches or suggests
Bates' or Beadle's generated lists provide 'presenting the history ...
comprises presenting the plurality of stacks through a user interface
comprising a scroll bar operable to scroll through the stack of web page
thumbnails ... , ' as claimed. (emphasis added)" and therefore the
obviousness rejection of claim 2 is improper. Appeal Brief 18. We do not
find Appellants' arguments persuasive because we did not find the Beadle,
Baker and Miller combination deficient in regard to claim 1 's obviousness
rejection. Therefore we sustain the Examiner's obviousness rejection of
dependent claim 2. See Final Rejection 6.
Appellants contend "the [E]xaminer in hindsight has combined
Carson with the above stated combination claiming that claim 26 is rendered
obvious. However, the examiner has failed to provide an articulated
reasoning with rational underpinning why a person or ordinary skill in the
3 The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the st1ucture of the primmy
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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art would combine a web page crawler to identify sponsored listings into a
history/bookmarking system." Appeal Brief 19-20. We do not find
Appellants' argument persuasive because the Examiner can employ
permissible hindsight to combine references to ascertain the claimed
invention. Further, the Examiner articulated reasoning with rational
underpinning to combine the references. 4 See Final Rejection 10. We
sustain the Examiner's obviousness rejection of dependent claim 26.
Appellants argue in regard to claim 4, "a person of ordinary skill in
the art would appreciate that a drop down, by its very nature, comprises text
and icons, and not Miller's thumbnails (which represents a shortcut to a
specific document with a thumbnail and not an icon)." Appeal Brief 21.
Appellants further argue that "Appellant is unaware of any drop down menu
of any browser application (in any operating system), that uses a plurality of
thumbnails (cf. icons, see Miller at para. [0023], lines, 9-16 [distinguishing
between icons and thumbnails])." Appeal Brief21. However, we do not
find Appellants' argument persuasive because the Examiner relied upon both
Miller and Bates to modify Beadle's interface wherein Bates discloses using
a well-known pull down or drop down menu. See Final Rejection 7. We
sustain the Examiner's rejection of dependent claim 4. We also sustain the
Examiner's rejection of dependent claims 3, 5-7, 9-13, 20-25, 27 and 28 not
separately argued.
4 The Examiner can satisfy the test for obviousness by showing some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. KSR Int'!. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (citing In re Kahn, 441 F.3d at 988).
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Application 12/712,011
DECISION
The Examiner's obviousness rejections of claims 1-13 and 19-28 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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