Ex Parte Molander

Board of Patent Appeals and Interferences

Mar 17, 2009

09845537 (B.P.A.I. Mar. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK E. MOLANDER
____________________

Appeal 2008-2589
Application 09/845,537
Technology Center 2100
____________________

Decided:1 March 17, 2009
____________________

Before JOHN C. MARTIN, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals the Examiner’s final rejection of claims 1-5, 7-17,
and 19-26 under 35 U.S.C. § 134 (2002). Claims 6 and 18 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b)(2002).

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE

A. INVENTION
According to Appellant, the invention relates to providing multiple
user-selectable functions from an individual menu item (Spec. 1, ll. 4-8).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method of providing secondary functions from a menu item
graphical control, said method comprising:

including a plurality of graphical components with the menu item
graphical control, each of the graphical components corresponding to a
different programmed function, wherein the menu item graphical control
includes a default area in addition to the plurality of graphical components;

displaying the menu item graphical control with the included
graphical components and the default area, wherein each of the graphical
components are displayed in a position horizontal to the default area;

receiving a selection from a user corresponding to the menu item
graphical control;

invoking a default function in response to the selection corresponding
to the default area of the menu item graphical control; and

in response to the selection corresponding to one of the graphical
components, invoking the programmed function corresponding the selected
graphical component.

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C. REJECTIONS
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
The Google Toolbar reference (herein “the Google Toolbar
reference”) consists of annotated, printed web pages (numbered 1-6 by the
Examiner) describing the Google ToolbarTM. These web pages were
obtained by searching for the term “http://toolbar.google.com” on the
Internet Archive WaybackMachine. The search report (herein
“WaybackMachine report”) bears the URL
http://web.archive.org/web/*/toolbar.google.com and two printed pages,
numbered 7 and 8 by the Examiner.

Claims 1-5, 7-17, and 19-26 stand rejected under 35 U.S.C. § 102(a)
as being anticipated by the teachings of the Google Toolbar reference.
We affirm.

II. ISSUES
Has Appellant shown that the Examiner erred in finding (1) that the
Google Toolbar is a “menu item graphical control” (Claim 1), and thus, the
claims are anticipated by the Google Toolbar reference; (2) that the Google
Toolbar reference is prior art; and (3) that the declaration under 37 C.F.R.
§ 1.131 is ineffective to overcome the Google Toolbar reference?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.

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The Google Toolbar Reference
1. The Google Toolbar includes “Google Search” to access Google
search technology from any web page, “Search Site” (labeled
“Element 3” by the Examiner) to search only the pages of the visited
site, “PageRank” (labeled “Element 2”) to see Google’s ranking of the
current page, “Page Info” to access more information about a page
including similar pages, pages that link back to that page, as well as a
cached snapshot, “Highlight” to highlight search terms as they appear
on the page, and “Word Find” to find search terms wherever they
appear on the page (the Google Toolbar reference at 1, bearing URL
http://web.archive.org/web/http://web.archive.org/web/200102020303
00/http://toolbar.google.com/).
2. The Examiner has labeled the portion of the toolbar that contains the
name “Google” as “Element 1” (the Google Toolbar reference at 1).
3. The Google Toolbar Drop Down Menu is accessible by clicking on
the Google logo within the toolbar to provide different menu functions
(the Google Toolbar reference at 5, bearing URL
http://web.archive.org/web/20010301204533/toolbar.google.com/men
u_help.html).
4. The WaybackMachine search report relied on by the Examiner
includes links dated from February 2, 2001, to January 25, 2004, for
the search “http://toolbar.ggogle.com” (WaybackMachine report at 7).
5. The Examiner stated that the web pages that comprise the Google
Toolbar reference were accessed using “the oldest available link on
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the Wayback Machine to access ‘http://toolbar.google.com/’ which
was 02/02/2001” (Supp. Ans. 2).

IV. PRINCIPLES OF LAW
35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharm.Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) “In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.” Id. (citations omitted).
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). "[T]he PTO gives
claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (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 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
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Electronic publication as prior art
An electronic publication, including an on-line database or Internet
publication, is considered to be a “printed publication” within the meaning
of 35 U.S.C. § 102(a) and (b) provided the publication was accessible to
persons concerned with the art to which the document relates. See In re
Wyer, 655 F.2d 221, 227 (CCPA 1981) (“Accordingly, whether information
is printed, handwritten, or on microfilm or a magnetic disc or tape, etc., the
one who wishes to characterize the information, in whatever form it may be,
as a ‘printed publication’ * * * should produce sufficient proof of its
dissemination or that it has otherwise been available and accessible to
persons concerned with the art to which the document relates and thus most
likely to avail themselves of its contents” (citations omitted)).
Prior art disclosures on the Internet or on an on-line database are
considered to be publicly available as of the date the item was
publicly posted. Absent evidence of the date that the disclosure was
publicly posted, if the publication itself does not include a publication
date (or retrieval date), it cannot be relied upon as prior art under 35
U.S.C. 102(a) or (b).

MPEP § 2128.
Declaration under 37 C.F.R § 1.131
§ 1.131 Affidavit or declaration of prior invention:
(a) When any claim of an application . . . is rejected, the inventor of
the subject matter of the rejected claim . . . may submit an appropriate
. . . declaration to establish invention of the subject matter of the
rejected claim prior to the effective date of the reference or activity on
which the rejection is based. . . .

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(b) The showing of facts shall be such, in character and weight, as to
establish [1] reduction to practice prior to the effective date of the
reference, or [2] conception of the invention prior to the effective date
of the reference coupled with due diligence from prior to said date to a
subsequent [actual] reduction to practice or to the filing of the
application [i.e., a constructive reduction to practice]. Original
exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the . . . declaration or their absence must
be satisfactorily explained.

A declaration submitted pursuant to Rule 131 is evaluated on its
merits by considering the evidence relied upon in light of the arguments
made explaining why the evidence is sufficient. The Board has broad
discretion as to the weight to be given the evidence. In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); In re Inland Steel, Co.,
265 F.3d 1354, 1366 (Fed. Cir. 2001).

V. ANALYSIS
Appellant provides the same arguments with respect to the rejection of
claims 1-5, 7-17, and 19-26. Therefore, we select independent claim 1 as
being representative of the cited claims. 37 C.F.R. § 41.37(c)(1)(vii).

The Claims are Anticipated by the Google Toolbar Reference
Appellant argues that “[t]he Google Toolbar does not disclose
multiple user-selectable functions from an individual menu item” and “[i]n
effect, the Google Toolbar becomes another toolbar that can be used from
another web page” and “is therefore not a ‘menu item graphical control,’ as
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required by the claims” (App. Br. 7). Appellant further notes that, although
the drop down menu [shown on the Google Toolbar reference at 5] includes
menu items, “[n]one of the menu items shows a ‘menu item graphical
control’ containing ‘a plurality of graphical components,’” as required by the
claims (id.).
However, the Examiner finds that “‘menu item graphical control’ is
never specifically defined in the specification” (Ans. 8), and that “a toolbar
is considered a menu item graphical control because it controls menu items”
wherein “[e]ach of the menu items on the toolbar correspond to a different
programmed function (i.e. ‘search site’ and ‘search’); furthermore there is a
drop down sub-menu for even more options” (id. at 8-9). In particular, the
Examiner reads the recited “menu item graphical control” on the Google
Toolbar, the recited “default area” on Element 1, and reads the recited
plurality of graphical components on Elements 2 and 3 (id. at 3). Thus, we
determine in this Appeal whether Appellant has shown that the Examiner
erred in reading the recited “menu item graphical control” on the Google
Toolbar.
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184.
Appellant’s claim 1 simply does not place any limitation on what the
term “menu item graphical control” means, includes or represents.
Furthermore, as the Examiner finds, “‘menu item graphical control’ is never
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specifically defined in the specification” (Ans. 8). We therefore agree with
the Examiner’s finding that “a toolbar is considered a menu item graphical
control because it controls menu items” wherein “[e]ach of the menu items
on the toolbar correspond to a different programmed function (i.e. ‘search
site’ and ‘search’); furthermore there is a drop down sub-menu for even
more options” (id. at 8-9). Thus, we will not narrowly construe “menu item
graphical control” to mean a “menu item,” as the Appellant contends.
The Google Toolbar reference includes a toolbar which includes
graphical components such as “Google Search,” “Search Site,” and
“PageRank” which correspond to functions such as searching or ranking (FF
1-2), wherein Google Toolbar Drop Down Menu is accessible by clicking on
the Google logo within the toolbar to provide different menu functions (FF
3).
We find an artisan would have understood the Google Toolbar of the
Google Toolbar reference to be a “menu item graphical control” (Claim 1)
which comprises a plurality of graphical components such as “Google
Search,” “Search Site,” and “PageRank.”
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in finding that the Google Toolbar described in the Google
Toolbar reference includes all of the limitations recited in claim 1.

Google Toolbar is Prior art
In the Reply Brief, Appellant adds the argument that “there is
absolutely no publication date on the Google reference whatsoever” and
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that, “because a publication date does not appear on the Google Toolbar
reference, the earliest date that can be relied upon by the Examiner is
October 24, 2004 (the retrieval date of the reference)” after the filing date of
the application (Reply Br. 3). However, the Examiner responds that “[t]he
date of the reference is imbedded within the URL (i.e. 20010202…)” (Supp.
Ans. 3) and that “[t]he Examiner used the oldest available link on the
WaybackMachine to access ‘http://toolbar.google.com/’ which was
02/02/2001’” (id. at 2). Thus, we determine on this Appeal whether
Appellant has shown that the Examiner erred in finding that the Google
Toolbar reference was published prior to Appellant’s application filing on
April 30, 2001.
We generally agree with the Examiner’s finding that the Google
Toolbar reference is prior art beginning at page 2 of the Supplemental
Answer.
As noted above, the Examiner finds that the content relied upon in
Google Toolbar was available on a website as early as February 2, 2001, as
set forth by the URL of the website as well as the cached link listed on the
internet archive website, as determined by the WaybackMachine (Supp.
Ans. 2, FF 4-5). Because the number sequence “20010202” in the URL that
appears at the top of page 1 of Google Toolbar is consistent with the
Examiner’s assertion that page was obtained by using the February 2, 2001
WaybackMachine link, this evidence prima facie establishes that page 1 was
publicly available on that date.
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However, we also note that the URLs at the tops of pages 2-6 do not
contain that same date sequence. Instead, the URLs on pages 2-4 contain the
sequence “20010208” (February 8, 2001) and the URLs on pages 5-6
contain the sequence “20010301” (March 1, 2001). Although the Examiner
apparently inadvertently erred in indicating that these pages were publicly
available on February 2, 2001, their dates still precede Appellant’s April 30,
2001, filing date.2
Though Appellant contends that “there is absolutely no publication
date on the Google reference whatsoever” (Reply Br. 3), Google Toolbar is
considered to be a “printed publication” within the meaning of 35 U.S.C. §
102(a) and (b) since it was accessible on-line prior to April 30, 2001. See In
re Wyer, 655 F.2d at 227. That is, though Appellant quotes MPEP § 2128 in
relevant part as follows: “If the publication does not include a publication
date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C.
102(a) or (b), although it may be relied upon to provide evidence regarding
the state of the art” (Reply Br. 4, bolding and italics omitted), that language
appeared in previous versions of § 2128 and has been replaced with the
following language: “>Absent evidence of the date that the disclosure was
publicly posted, if< the publication >itself< does not include a publication
date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C.

2 It is apparent from the URLs that pages 2-4 were retrieved by using
WaybackMachine.com to search for “toolbar.google.com/button_help.html”
and that pages 5-6 were retrieved using a search for
“toolbar.google.com/menu_help.html,” which we have confirmed. We
attach those search reports hereto.
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102(a) or (b)*>. However<, it may be relied upon to provide evidence
regarding the state of the art” (MPEP § 2128, 8th ed, rev. 7, July 2008).
As set forth by MPEP § 2128, prior art disclosures on the Internet are
considered to be publicly available as of the date the item was publicly
posted, which, in this case, includes the dates of February 2, 2001,
February 8, 2001, and March 1, 2001.
Appellant’s argument that the Examiner’s reliance on the URLs and
the WaybackMachine report is improper because the dates therein are
hearsay (Suppl. Reply Br. 2) is also unconvincing. See In re Epstein,
32 F.3d 1559, 1565 (Fed. Cir. 1994) (“The inapplicability of hearsay
evidence rules in ex parte PTO examination is appropriate in light of the
purpose and reason for the hearsay rule”).
Consequently, the Appellant has not met his burden of proving that
the Examiner erred in relying on Google Toolbar as a reference or in finding
that Google Toolbar is an anticipatory reference under 35 U.S.C. § 102(e).

The Declaration under 37C.F.R. 1.131 is Ineffective
to overcome Google Toolbar

The Examiner also finds that the declaration under 37 C.F.R. § 1.131
“is ineffective to overcome the Google Toolbar reference” (Ans. 9). Thus,
we also determine on this Appeal whether the declaration under 37 C.F.R.
§ 1.131 is ineffective to overcome Google Toolbar.
We generally agree with the Examiner’s findings in the Answer
starting with page 9 of the Answer. We agree with the Examiner that the
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declaration is on its face legally insufficient. In particular, we find that the
declaration fails to address each claim element and explain why the
declaration and accompanying Exhibit A prove the alleged conception and
diligence. Instead, the declaration (in paragraph 2) states, without
elaboration, only the following regarding conception and diligence:
2. Prior to February 2, 2001, I conceived of, in the United States
of America, the invention described and claimed in the subject
application. I further showed diligence from the date of
conception to the filing date of the subject application.
Conception and diligence to filing is evidenced by the
following:
a) I submitted IBM Invention disclosure Form RSW8-2000-
0109, attached as Exhibit A hereto, which describes the
invention described and claimed in the subject application.
b) Each of the dates deleted form Exhibit A is prior to February
2, 2001.
c) I worked diligently with a patent attorney in order to file the
subject application on April 30, 2001.

As to conception, the declaration does not explain how Exhibit A,
which is an Invention Disclosure Form, proves conception of each claim
limitation. Consequently, the facts recited in the declaration are insufficient
to establish conception of any of the individual elements of the instant
claims before the date of the reference.
As to diligence, the declaration does not identify acts demonstrating
that diligence began before the reference date and continued to Appellant’s
April 30, 2001, filing date, as required to satisfy 37 C.F.R. § 1.131(b).
Consequently, the declaration and accompanying argument are insufficient
to establish the requisite diligence.
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Appellant has therefor failed to show that the Examiner erred in
holding that the declaration under 37 C.F.R. § 1.131 is ineffective to
overcome Google Toolbar.

CONCLUSIONS
(1) Appellant has not shown that the Examiner erred in finding that
claims 1-5, 7-17, and 19-26 are anticipated by the teachings of Google
Toolbar.
(2) Claims 1-5, 7-17, and 19-26 are not patentable.

DECISION
We affirm the Examiner's decision rejecting claims 1-5, 7-17, and 19-
26 under 35 U.S.C. § 102(a).
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

msc

IBM CORPORATION - RSW (JVL)
C/O VAN LEEUWEN & VAN LEEUWEN
P.O. BOX 90609
AUSTIN TX 78709-0609
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Enter Web Address:
http://
All Take Me Back Adv. Search Compare Archive Pages

Searched for http://toolbar.google.com/button_help.html 376 Results

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Enter Web Address:
http://
All Take Me Back Adv. Search Compare Archive Pages

Searched for http://toolbar.google.com/menu_help.html 174 Results

Note some duplicates are not shown. See all.
* denotes when site was updated.
Material typically becomes available here 6 months after collection. See FAQ.
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