Ex Parte Roth

Board of Patent Appeals and Interferences

Apr 23, 2004

09817692 (B.P.A.I. Apr. 23, 2004)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN WILLIAM ROTH
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Appeal No. 2003-1614
Application No. 09/817,692
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ON BRIEF
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Before THOMAS, RUGGIERO, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1-7, 10-13, 15, and 18-22. The appellant
appeals therefrom under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The invention at issue on appeal arranges items displayed in a menu of a
graphical user interface ("GUI") for a computer. A user employing a GUI can interact
with a computer by pointing to menus of items. Menus may be "fixed content" or
"variable content." While the items of a fixed content menu remain the same over time,
the items of a variable content menu change over time. (Spec. at 2.)
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According to the appellant, existing menuing mechanisms arrange menu items
rigidly. Fixed content menus are never rearranged, no matter how often a user selects
or ignores certain items. Variable content menus change only in strict sequence with
the order of past selections such that only recent selections appear on the menu. (Id.)
In contrast, the appellant's invention "provides comprehensive menu
arrangement control by providing several discrete, yet complementary, features." (Id.
at 4.) "Automatic ranking" uses "heuristics" to control the order in which items such as
uniform resource locators ("URLs") are arranged in a menu. Heuristics describe past
use, e.g., frequency of selection, recency of selection, and time-of-day of selection.
Using "manual control" a user can override an automatic ranking by placing a URL at a
specific location (e.g., first), (Appeal Br. at 3), or to specify a time-of-day during which
individual items are to appear near the top of the menu. (Spec. at 4.) Using a "smart
load facility" the user can choose to have a web browser automatically load a selected
web page after initialization or to have the web browser automatically load the web page
that appears at the top of a list of URLs. (Id. at 5.)
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A further understanding of the invention can be achieved by reading the following
claims.
1. A computer system comprising:
a processor;
memory connected to said processor;
a web browser stored in said memory for execution on said
processor, said web browser being used to present an initial web page to
a user and then to present one or more subsequent web pages to said
user, said web browser automatically selecting said initial web page from a
plurality of web pages during initialization of said web browser and
automatically presenting said initial web page to said user after said web
browser has completed initializing, said plurality of web pages including
historical web page selections by said user, said initial web page being
determined via ranking control, said ranking control being selected from
the group consisting of:
automatic ranking control; and
manual ranking control.
2. The computer system of claim 1 wherein said plurality of web pages
make up an ordered list of web pages.
7. A computer system comprising:
a processor;
memory connected to said processor;
a web browser stored in said memory for execution on said
processor; and
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Application No. 09/817,692
a menu for presentation by said program, said menu having a
Uniform Resource Locator (URL) list containing a plurality of URLs, at
least some URLs in said list being arranged based at least in part upon
time of day.
Claims 1-6 stand rejected under 35 U.S.C. § 101 as claiming the same invention
as that of claims 1-5 of U.S. Patent No. 6,266,060 ("Roth"). Claims 7, 13, and 15 stand
rejected under 35 U.S.C. § 102(e) as anticipated by U.S. Patent No. 5,727,129
("Barrett"). Claims 10-12 and 18-22 stand rejected under 35 U.S.C. § 103(a) as obvious
over Barrett and Mark R. Brown ("Brown"), Using Netscape 3 (1996).
OPINION
Our opinion addresses the rejections in the following order:
• double patenting rejection
• anticipation and obviousness rejections.
A. DOUBLE PATENTING REJECTION
Rather than reiterate the positions of the examiner or the appellant in toto, we
address the point of contention therebetween. Observing that "as per claim 1 in the
application 'said initial web page from a plurality of web pages'; and 'said plurality of web
pages make up an ordered list of web pages' (claim 2)," (Final Rej. at 4), the examiner
asserts, "an 'initial web page in the ordered list of web pages' is inherently states [sic]
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that 'a first web page in a list of web pages'." (Id.) The appellant argues, "[c]laim 1 of
U.S. Patent No. 6,226,060 calls for an 'initial web page that is a first web page in a list of
web pages.' Claims 1-5 of the instant application do not include such a limitation. "
(Appeal Br. at 5.)
"A double patenting rejection precludes one person from obtaining more than one
valid patent for either (a) the 'same invention,' or (b) an 'obvious' modification of the
same invention." In re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir.1985).
"[T]he term 'same invention,' in this context means an invention drawn to identical
subject matter." Id., 225 USPQ at 648 (citing In re Vogel, 422 F.2d 438, 164 USPQ
619 (CCPA 1970)). "A good test, and probably the only objective test, for 'same
invention,' is whether one of the claims could be literally infringed without literally
infringing the other. If it could be, the claims do not define identically the same
invention." Vogel, 422 F.2d at 441, 164 USPQ at 622.
Here, independent claim 1 of Roth recites in pertinent part the following
limitations: "automatically selecting said initial web page from a list of web pages during
initialization of said web browser . . . wherein said initial web page is a first web page in
said list of web pages. . . ." Independent claims 2 and 5 of the patent recite similar
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limitations. In summary, the independent claims of Roth require selecting a first web
page from a list of web pages.
In contrast, claim 1 of the instant application recites in pertinent part the following
limitations: "said web browser automatically selecting said initial web page from a
plurality of web pages during initialization of said web browser. . . ." Claims 3 and 5 of
the application recite similar limitations. Claim 2 of the application, which depends from
claim 1, recites in pertinent part the following limitations: "said plurality of web pages
make up an ordered list of web pages." Claims 4 and 6 of the application, which
respectively depend from claims 3 and 5, recite similar limitations. In summary,
although claims 1-6 of the application require selecting a web page from an ordered list
of web pages, the claims do not require that selected web page be the first web page
from the list. Because the claims of the application do not require that the web page
selected be the first web page, we agree with the appellant that "a mechanism could
very well literally infringe one of the rejected claims [of the application] without literally
infringing [c]laim 1 of U.S. Patent No. 6,226,060. . . ." Therefore, we reverse the
statutory double patenting rejection of claims 1-6.
Despite the impropriety of the statutory rejection, obviousness follows ipso facto
from an anticipatory reference. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d
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1A terminal disclaimer may be used to obviate a double patenting rejection based
on obviousness. 37 C.F.R. § 1.130(b) (2003). For his part, the "[a]ppellant would
certainly consider the filing of an appropriate terminal disclaimer should such be
ultimately required by the Examiner." (Appeal Br. at 5.)
1440, 1446, 221 USPQ 385, 390 (Fed. Cir. 1984). "[A] disclosure that anticipates under
Section 102 also renders the claim invalid under Section 103, for 'anticipation is the
epitome of obviousness.'" Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
USPQ 193, 198 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982)). "[A]nticipation is a question of fact." Hyatt, 211 F.3d at
1371, 54 USPQ2d at 1667 (citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814-15
(1869); In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir.
1997)).
Here, because the claims of Roth appear to include all the limitations of claims 1-
6 of the application, the former claims seem to anticipate the latter claims. The
obviousness of claims 1-6 of the application, therefore, would likely follow ipso facto
from the anticipation. In an ex parte appeal, however, "the Board is basically a board of
review — we review . . rejections made by patent examiners." Ex parte Gambogi, 62
USPQ2d 1209, 1211 (Bd.Pat.App. & Int. 2001). Having no double patenting rejection
based on obviousness before us to review, we leave the issue to the examiner and the
appellant.1
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B. ANTICIPATION AND OBVIOUSNESS REJECTIONS
The examiner asserts, "Barrett discloses at column 7, lines 53-55, that 'the date
and time' is directly related to the time stamp to determine the recency to assign priority
based on the time of day (date)." (Examiner's Answer at 4.) He adds, "[f]urthermore,
Barrett discloses in figure 6 a menu having a URL list displaying a plurality of URLs, and
at least some URLs in the list are arranged based on which have been time stamped
recently." (Id.) The examiner further asserts, "Barrett discloses 'the profile' will contain
history of past URLs, and calculating statistics based on date and time (col. 7 lines 35-
67), and the 'Instance Hot List' which includes a ranking weighted by time proximity of
frequency and recency (col. 9 lines 1-8 and col. 10 lines 53-67)." (Id.) Explaining that
his "invention considers time of day (e.g., 11 AM, 3 PM, or 7 AM) and ranks URLs
accordingly," (Reply Br. at 3), the appellant argues, "[t]he Barrett mechanism, on the
other hand, does not account for the fact that it is morning, noon, or night, but instead
looks at the most recently accessed URLs and ranks them accordingly." (Id.)
In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe claims at issue to determine their scope. Second, we determine
whether the construed claims are anticipated or would have been obvious.
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1. Claim Construction
"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, "[c]laims are not interpreted in a vacuum, but are
part of and are read in light of the specification." Slimfold Mfg. Co. v. Kinkead Indus.,
Inc., 810 F.2d 1113, 1116, 1 USPQ2d 1563, 1566 (Fed. Cir. 1987) (citing Hybritech Inc.
v. Monoclonal Anti-bodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94-95 (Fed. Cir.
1986); In re Mattison, 509 F.2d 563, 565, 184 USPQ 484, 486 (CCPA 1975)).
Here, claim 7 recites in pertinent part the following limitations: "a menu for
presentation by said program, said menu having a Uniform Resource Locator (URL) list
containing a plurality of URLs, at least some URLs in said list being arranged based at
least in part upon time of day." Claims 13 and 15 recite similar limitations. The
appellant's specification distinguishes "time of day" from "frequency of selection
[and] recency of selection." (Spec. at 4, 25-28.) More specifically, the specification
supports the appellant's assertion that "[t]he phrase time of day is well understood to
refer to a particular time during the day." (Reply Br. at 3.) Reading the limitations in
light of the specification, claims 7, 13, and 15 require arranging URLs into a list based at
least in part upon a particular time during the day.
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2. Anticipation and Obviousness Determinations
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). "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)). "[A]bsence from the reference of any claimed
element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
Here, Barrett discloses "[a] system . . . for use with . . . the Internet World Wide
Web . . . for assisting a user in accessing information stored at remote network sites
based on the user's past history of network usage." Abs., ll. 1-5. Although the first
passage of the reference cited by the examiner mentions a "date and time," col. 7, l. 53,
the date and time relate to recency of selection rather than to time-of-day. Specifically,
"the date and time of the prior downloads, or some suitable indication of how recently
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each download took place, is also obtained, and used later." Col. 7, ll. 51-56
(emphasis added.)
Figure 6 of Barrett, which the examiner also cites, depicts "a simplified example
of a user interface showing information displayed in accordance with the invention. . . ."
Col. 6, ll. 10-11. Although the user interface displays a list of URLs, we see no
evidence therein that the URLs are arranged based at least in part upon a particular
time during the day. To the contrary, the URLs are arranged "based on the decreasing
number of past occurrences." Col. 8, l. 61.
For its part, the second-to-last passage cited by the examiner identifies Web
pages based on frequency of selection or recency of selection rather than on time-of-
day. Specifically, "a Web page likely to be selected is identified. This may be done by
taking the most frequently occurring page, or by other suitable means such as
weighting past occurrences according to how recently they took place." Col. 7, ll. 5-8
(emphases added).
The last passage cited by the examiner describes "an 'Instant Hot List.'" Col. 10,
ll. 54-55. "This is a list of previously visited pages, comparable to the conventional 'hot
list' such as IBM's Quick List, but which includes a ranking based on a suitable factor,
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such as numbers of previous visitations, or visitations weighted by time proximity." Id.
at ll. 55-59. We find that the "number of previous" visitations relates to frequency of
selection rather than time of day. Unsure to what the "time proximity" refers, we will not
engage "speculations and assumptions," in re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962), in interpreting the reference. The absence of arranging URLs
into a list based at least in part upon a particular time during the day negates
anticipation. Therefore, we reverse the anticipation rejection of claims 7, 13, and 15.
"In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would . . . have suggested the
claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781,
783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, the examiner does not allege, let alone show, that the addition of Brown
cures the aforementioned deficiency of Barrett. Absent a teaching or suggestion of
arranging URLs into a list based at least in part upon a particular time during the day,
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we are unpersuaded of a prima facie case of obviousness. Therefore, we reverse the
obviousness rejection of claims 10-12, 21 and 22, and 18-20; which respectively
depend from claims 7, 13, and 15.
CONCLUSION
In summary, the rejection of claims 1-6 under § 101 is reversed. The rejection of
claims 7, 13, and 15 under § 102(e) and the rejection of claims 10-12 and 18-22 under
§ 103(a) are also reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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IBM Corporation
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