Ex Parte Rodefer et al

Patent Trials and Appeals Board

Oct 30, 2014

10305126 - (D) (P.T.A.B. Oct. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BENJAMIN RODEFER and NATHAN PERKINS
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Appeal 2012-006730
Application 10/305,1261
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
Rejection of claims 4, 37, 38, 54, and 55, which have been twice rejected.
Appellants have previously canceled claims 1–3, 5–36, and 39–53. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real-parties-in interest are the inventors,
Benjamin Rodefer and Nathan Perkins. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants' invention relates to a method of simultaneously accessing
computer networks and data sources. Abstract.
Exemplary Claim
Claim 4, reproduced below, is representative of the subject matter on
appeal (emphasis added to disputed limitation):
4. A method of accessing target sources, said method
comprising the steps:
(a) selecting at least one of said target sources to be
accessed;
(b) running a target parsing tool of said at least one of
said target sources when parsing is required;
(c) determining that a history list related to search data
contains entered search data;
(d) adding the search data to the top of the history list
when the search data is not already in the history list; and
(e) moving the search data to the top of the history list
when the search data is already in the history list.

2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
July 29, 2011); Reply Brief ("Reply Br.," filed Jan. 17, 2012); Examiner's
Answer ("Ans.," mailed Nov. 16, 2011); Non-Final Office Action ("Non-
Final Act.," mailed Dec. 9, 2010); and the original Specification ("Spec.,"
filed Nov. 27, 2002).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Wynn et al.
("Wynn")
US 6,667,751 B1 Dec. 23, 2003
Wassom et al.
("Wassom")
WO 99/34306
(PCT/US98/27465)
July 8, 1999
Rejections on Appeal3
Claims 4, 37, 38, 54, and 55 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Wynn and Wassom. Ans. 5.
GROUPING OF CLAIMS
Based on Appellants' arguments (App. Br. 8–11), we decide the
appeal of the rejection of claims 4, 37, 38, 54, and 55 on the basis of
representative claim 4.
ISSUE
Appellants argue (App. Br. 8–11; Reply Br. 4–6) the Examiner's
rejection of claims 4, 37, 38, 54, and 55 under 35 U.S.C. § 103(a) as being
obvious over the combination of Wynn and Wassom is in error. These
contentions present us with the following issue:

3 We note the Examiner mistakenly indicates "Claims 4, 37–38 and 54–55
are rejected under 35 U.S.C. 102(e) as being unpatentable over Wynn et al.
(US Patent 6,667,751) hereinafter Wynn, and in view of Wassom et al.
(PCT/US98/27465) hereinafter Wassom." Non-Final Act. 3; and see Ans. 5
(emphasis added). It is clear from the detailed rejection (Non-Final Act. 3 et
seq.; and Ans. 5 et seq.) the rejection is actually for obviousness under
§ 103, and Appellants respond and argue accordingly. App. Br. 8 et seq.
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Did the Examiner err in finding the cited prior art combination teaches
or suggests the limitation of "selecting at least one of said target sources to
be accessed," as recited in claim 4?
ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellants' arguments with respect to claims 4, 37,
38, 54, and 55, and 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 and rebuttals set forth by the Examiner in the Examiner's
Answer in response to Appellants' arguments. However, we highlight and
address specific findings and arguments regarding claim 4 for emphasis as
follows.
Appellants contend, "[t]he applied art does not disclose or suggest at
least, 'selecting at least one of said target sources to be accessed,' as recited
in claim 4." App. Br. 8. Appellants base their contention on the belief "that
there is no selection of a target source in Wynn," because "only keywords
are being entered in Wynn, and not target sources." App. Br. 9.
Appellants further argue, even assuming Wynn's search engine teaches the
recited "target sources," such a teaching is still deficient because claim 4
"recites that at least one target source is selected," because "clearly there is
no teaching or suggestion of the selection of a search engine in Wynn."
App. Br. 10.
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In the Reply Brief Appellants state, "[t]he application defines a 'target
source' as e.g., a search engine/website," and contend Wynn does not teach
or "suggest a program that allows a selection of one among several, or
multiple target sources/search engines to search at substantially the same
time for a given input search criteria e.g., as claimed and described at ¶ 34 of
the specification." Reply Br. 4. Appellants further argue, "Wynn describes
a search field and is unrelated to selecting a target source." Reply Br. 5.
We first find Appellants' arguments (Reply Br. 4) are not
commensurate with the scope of claim 4, because claim 4 recites "selecting
at least one of said target sources to be accessed," and does not require
multiple search engines to search at substantially the same time, as alleged
by Appellants.
The Examiner points out, and we agree, Wynn teaches the disputed
limitation in multiple ways: (1) entering a URL in location bar 34
(Ans. 9–10 (citing Wynn Table 1, col. 4, ll. 22–30; and Fig. 4)); (2) user
entry of keywords into a search engine form (Ans. 10 (citing col. 4, ll. 28–
29)); (3) "select an item from the list and click to access" (Ans. 10 (citing
Wynn col. 9, ll. 4–12)); and (4) user selection of banner ad (52) which
causes the web browser to select a hyperlink which leads to a home page for
another search engine, i.e., another target source. Ans. 10 (citing Wynn
col. 4, ll. 35–41; Fig. 6).
Further to the Examiner's finding in (1) above, we find Wynn's
location bar 34 in Figure 4 can be used to access a search engine, e.g.,
Google®, which Appellants state is equivalent to a target source, as claimed.
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By choosing a particular search engine to use, the user is "selecting" the
target source.
Appellants appear to be reading limitations from the Specification into
the claims. "We have cautioned against reading limitations into a claim
from the preferred embodiment described in the specification, even if it is
the only embodiment described, absent clear disclaimer in the specification."
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Therefore, we decline to read limitations from the Specification into the
claims.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 4, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. For the same reasons, we sustain
the rejection of claims 37, 38, 54, and 55, which fall with claim 4.
REPLY BRIEF
To the extent Appellants advance new arguments in the Reply Brief
(Reply Br. 4–6) not in response to a shift in the Examiner's position in the
Answer, we note that "[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived." Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief . . . is waived.").
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CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 4, 37, 38, 54, and 55 under 35 U.S.C. § 103(a) over the prior art
combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 4, 37, 38, 54, and
55.
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) (2011).
AFFIRMED

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