Ex Parte Schroeder

Board of Patent Appeals and Interferences

Nov 27, 2007

09826664 (B.P.A.I. Nov. 27, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL B. SCHROEDER
____________

Appeal 2007-1442
Application 09/826,6641
Technology Center 2100
____________

Decided: November 27, 2007
____________

Before LEE E. BARRETT, ALLEN R. MACDONALD, and CAROLYN D.
THOMAS, Administrative Patent Judges.

THOMAS, C., Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claims 1-49 entered April 19, 2006. We have jurisdiction under
35 U.S.C. § 6(b).

1 Application filed April 5, 2001. The real party in interest is International
Business Machines Corporation.
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We reverse but enter a new ground of rejection as to claims 47-49.
Appellant invented a system, method, and computer readable medium
for creating symbolic links to bookmarks (Appellant’s Specification 1:9-12).
The appeal contains claims 1-49. Claims 1, 9, 21, 30, 36, 41, 47, 48,
and 49 are independent claims. As best representative of the disclosed and
claimed invention, claims 1 and 47 are reproduced below:
1. A method in a data processing system for creating symbolic
links to bookmarks, comprising:
receiving a request to create a new bookmark for a document;
in response to receiving the request, determining whether a
reference bookmark already exists for the document;
if the reference bookmark for the document already exists,
creating a symbolic link; and
linking the symbolic link to the already existing reference
bookmark, wherein a new bookmark is not created.

47. A computer program product, in a computer readable medium,
for creating symbolic links to bookmarks, comprising:
instructions for receiving a request to create a new bookmark
for a document;
in response to receiving the request, instructions for
determining whether a reference bookmark already exists for the document;
instructions for creating a symbolic link if the reference
bookmark for the document already exists; and
instructions for linking the symbolic link to the already existing
reference bookmark, wherein a new bookmark is not created.

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REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Reiter US 5,642,503 Jun. 24, 1997
Bauersfeld US 5,917,491 Jun. 29, 1999
Himmell US 6,037,934 Mar. 14, 2000
Murphy US 6,096,096 Aug. 1, 2000
Shwarts US 6,243,071 B1 Jun. 5, 2001
(filed Nov. 3 1993)
Crandall US 6,321,228 B1 Nov. 20, 2001
(filed Aug. 31, 1999)
Isreal US 6,330,007 B1 Dec. 11, 2001
(filed Dec. 18, 1998)
Khan US 6,427,175 B1 Jul. 30, 2002
(filed Sep. 24, 1999)
Khan US 6,460,038 B1 Oct. 1, 2002
(filed Sep. 24, 1999)

The Examiner entered a Final Rejection on April 19, 2006 with the
following eleven (11) rejections which are before us for review:
(1) Claims 1, 9, 10, 30, 36, 37, 47, and 48 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Khan ‘038 in view of Murphy
and further in view of Shwarts2.

2 The Final Office Action erroneously lists this rejection under 102(e) as
being anticipated by the cited references. The Board views this as a
typographical error.
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(2) Claims 2, 3, 5, 15, 16, and 32 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Khan ‘038, Murphy, and Shwarts and
further in view of Bauersfeld.
(3) Claims 4, 20, and 31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Khan ‘038 in view of Murphy and Shwarts and
further in view of Reiter.
(4) Claims 6, 17, and 33 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Khan ‘038, Murphy, Shwarts, and Bauersfeld,
further in view of Himmel.
(5) Claims 7, 8, 34, and 35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Khan ‘038, Murphy, and Shwarts, further in view of
Isreal.
(6) Claims 11-14, and 38-40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Khan ‘038, Murphy, and Shwarts, further in view of
Crandall.
(7) Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Khan ‘038, Murphy and Shwarts, further in view of Isreal,
further in view of Bauersfeld.
(8) Claims 21, 22, 41, 42, and 49 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Khan ‘038, Murphy and Shwarts,
further in view of Khan ‘175.
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(9) Claims 23-26, and 43-36 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Khan ‘038, Murphy, Shwarts, and Khan ‘175,
further in view of Crandall.
(10) Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Khan ‘038, Murphy, Shwarts, Khan ‘175, and further in
view of Bauersfeld.
(11) Claim 29 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Khan ‘038, Murphy, Shwarts, Khan ‘175, and further in
view of Reiter.
Appellant appealed from the Final Rejection and filed an Appeal Brief
(Br.) on June 27, 2006. The Examiner mailed an Examiner’s Answer
(Answer) on October 5, 2006. No Reply Brief was filed.

ISSUES
The issue is whether Appellant has shown that the Examiner erred in
rejecting representative claim 1 based on obviousness? The issue
specifically turns on whether it would have been obvious to create a
symbolic link if the reference bookmark for a document already exists.

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

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Murphy
1. Murphy describes that “the virtual document root is fundamentally
composed of a symbolic link (symlink) to any one of the mounted compact
discs in order to provide access to the common files.” (Col. 9, ll. 16-19.)
2. Murphy further describes that “the virtual document root of the
present invention is further comprised of a toolbox directory composed of
symlinks to files and directories on the compact discs. These symlinks are
static links which are created when the portable, off-line, Web site is created
during the installation of the present invention. . . . the installation of the
present invention happens in the background and is, thus, hidden from the
end-user.” (Col. 9, ll. 25-36.)

Embodiments of Appellant’s Invention
3. At page 15, lines 3-9, of the Specification, Appellant states that
“[e]xamples of computer readable media include . . . transmission-type
media, such as digital and analog communications links, wired or wireless
communications links using transmission forms, such as, for example, radio
frequency and light wave transmissions.”

PRINCIPLES OF LAW
The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18
(1966), stated that three factual inquiries underpin any determination of
obviousness:
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Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As
indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984). The Examiner can satisfy this burden by showing
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness. KSR Int’l. v. Teleflex Inc., 127 S.Ct. 1727,
1741 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Only if
this initial burden is met does the burden of coming forward with evidence
or argument shift to the Appellant. Oetiker, 977 F.2d at 1445. See also
Piasecki, 745 F.2d at 1472.
Rejections on obviousness grounds cannot be sustained by mere
conclusory statements. KSR, 27 S.Ct. at 1741 (citing Kahn, 441 F.3d at
988).
An obviousness analysis commences with a review and consideration
of all the pertinent evidence and arguments. “In reviewing the [E]xaminer’s
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decision on appeal, the Board must necessarily weigh all of the evidence and
argument.” Oetiker, 977 F.2d at 1445. “[T]he Board must not only assure
that the requisite findings are made, based on evidence of record, but must
also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002).
Further, a rejection based on section 103 must rest upon a factual
basis rather than conjecture, or speculation. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.” In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). See also Lee, 277 F.3d at 1344 and
Kahn, 441 F.3d at 988.
The scope of patentable subject matter under section 101 is broad, but
not infinitely broad. “Congress included in patentable subject matter only
those things that qualify as ‘any … process, machine, manufacture, or
composition of matter, or any … improvement thereof….”’ In re
Warmerdam, 33 F.3d 1354, 1358 (Fed. Cir. 1994) (quoting 35 U.S.C.
§ 101) (emphasis added). Thus, “[d]espite the oft-quoted statement in the
legislative history of the 1952 Patent Act that Congress intended that
statutory subject matter ‘include anything under the sun that is made by
man,’[citation omitted], Congress did not so mandate.” Id.

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ANALYSIS
It is undisputed that Shwarts teaches “determining whether a
bookmark already exists” (Br. 17) and Kahn teaches “the creation of a
bookmark where a command is received to create a bookmark” (Br. 17).
According to the Examiner, “Murphy discloses the use of symbolic
links.” (Answer 4.) However, Appellant contends that “Murphy teaches a
method of creating symbolic links to information on mounted compact discs.
Murphy does not teach or suggest creating a symbolic link if the reference
bookmark for the document already exists and linking the symbolic link to
the already existing reference bookmark, wherein a new bookmark is not
created.” (Br. 19.) We agree with Appellant.
While Murphy discloses symbolic links (FF 1), we find that Murphy’s
creation of such “symbolic links” are not tied to any pre-condition or
request, as set forth in the present invention. For example, instead of
creating a symbolic link if a bookmark already exists, Murphy merely
creates symlinks to files and directories on a compact disc when the portable
web site is created (FF 2). As such, Murphy does not rely upon a request to
create a symbolic link nor does Murphy looks for a condition to be met first.
In Murphy, there is no connection between an already existing bookmark
and the symlink (Answer 16). In other words, the creation of Murphy’s
“symlinks” are not based on an “if” condition nor a request to create a
symbolic link. Instead, Murphy’s symlinks are done in the background,
hidden from the end-user (FF 2). In addition, as conceded by the Examiner,
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we also find that both Kahn ‘038 and Shwarts fail to teach providing
symbolic links to bookmarks (Answer 15).
As such, we reverse rejection (1) as listed supra pertaining to
representative claim 1 and the claims grouped therewith. As for rejections
(2) – (11) listed supra, because all the claims share the feature surrounding
pre-existing bookmarks and the creation of symbolic links based on either a
pre-condition being met or a request being made as discussed supra,
rejections (2) –(11) are also reversed.
Therefore, we will not sustain and will instead reverse the Examiner’s
rejection under 35 U.S.C. § 103 for the same reasons as set forth above.

NEW GROUND OF REJECTION
In addition to reversing the Examiner’s rejection of claims 1-49, this
decision, pursuant to our authority under 37 C.F.R. § 41.50(b), contains a
new ground of rejection.
Claims 47-49 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Claim 47 reproduced supra, is representative.
Specifically, claim 47 is directed to “[a] computer program product, in
a computer readable medium . . . ” and Appellant explicitly discloses that
“computer-readable media include . . . transmission-type media, such as
digital and analog communications links . . . ” (FF 3).

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We find that Appellant’s description of a ‘computer readable media’
implicates intangible signals despite the absence of such term in the
description.
That said, the issue, quite simply, is whether a claimed computer
readable media that is broad enough to include transmission-type media – a
media that includes intangible signals – is statutory subject matter. The
Federal Circuit recently held that an intangible signal is not statutory subject
matter because it does not fall within any of the four categories of statutory
subject matter. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). In
this instance, claim 47 includes both statutory subject matter (signals stored
on a tangible medium) and non-statutory subject matter (intangible signals in
a transmission medium). According to recent proposed USPTO interim
guidelines, it must be amended to recite solely statutory subject matter.3
Even if an intangible signal could be considered to be an article of
manufacture, however, we find that such a signal does not operate as the
claimed computer readable media. Claim 47, for example, recites a
computer readable medium having instructions for causing a computer to
execute a method. As a result, it is our view that the computer cannot

3 See also “Interim Guidelines for Examination of Patent Applications for
Patent Subject Matter Eligibility,” 1300 Off. Gaz. Pat. Office 142, Annex
IV(C)(2)(Nov. 22, 2005) (“[A] claim that can be read so broadly as to
include statutory and nonstatutory subject matter must be amended to limit
the claim to a practical application.”).

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perform the claimed functions while the instructions are within a carrier
wave or a signal. In other words, the information, while in the transmission
medium, is unavailable to the computer for performing the functions recited
in claim 47.
For the above reasons, we find that claims 47-49 recite non-statutory
subject matter. The “medium” of claims 48 and 49 share the same
interpretations as discussed supra for “medium” in claim 47. For the
reasons supra, we conclude that claims 48 and 49 are also directed to non-
statutory subject matter.
37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

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CONCLUSIONS
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-49 as being unpatentable under 35 U.S.C. § 103(a).

DECISION
In view of the foregoing discussion, we reverse the Examiner’s
rejection of claims 1-49.
Under 37 C.F.R. § 41.50 (b), we have entered a new ground of
rejection against claims 47-49 under § 101.
Since we have entered a new ground of rejection against claims 47-49,
our decision is not a final agency action.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

REVERSED
37 C.F.R. § 41.50(b)

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