Ex Parte Tobin et al

Board of Patent Appeals and Interferences

Sep 22, 2010

09873067 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/873,067 06/01/2001 Christopher M. Tobin 50P4053.01 3986
7590 09/23/2010
Blakely, Sokoloff Taylor & Zafman LLP
12400 Wilshire Boulevard
Seventh Floor
Los Angeles, CA 90025
EXAMINER
LEE, TING ZHOU
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
09/23/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTOPHER M. TOBIN, PHILIP MICHAEL ABRAM,
MARC BECKWITT, GREGORY D. GUDORF, KAZUAKI ISO, BRIAN
RAYMOND, and BRIAN M. SIEGEL
____________________

Appeal 2009-001987
Application 09/873,0671
Technology Center 2100
____________________

Before JOHN A. JEFFERY, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed June 1, 2001. Appellants claim the benefit under
35 U.S.C. § 119 of provisional application 60/208,847, filed June 2, 2000.
The real parties in interest are Sony Electronics and Sony Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-001987
Application 09/873,067

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 17 to 40 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 1 to 16
are cancelled.

We affirm the rejections.

Appellants’ invention relates to navigating web pages using an
assistant (Spec. ¶ [0002]). In the words of Appellants:
[T]he navigation assistance application [provides]
information supplemental to that displayed on a
web page. The supplemental information is not
merely additional information that may have been
provided along with the current web page, such as
detailed link information that may appear along the
bottom of a browser display window upon
hyperlink rollover; rather, it is preferably
information stored separately from the web page,
and information that is particularized to the user.
Typically, the information will be provided in a
local database that associates identifiable web
resources to various supplemental information.
Thus, for example, consumer incentive
information related to available resources and
particularly associated to the user can be displayed.
(Id. at ¶ [0026]).

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Application 09/873,067

The following illustrate the claims on appeal:
Claims 17 and 23:
17. A method of displaying supplemental
information particular to a user regarding
displayed web pages for the user, the method
comprising:

identifying a particular product displayed in
a first web page using a device that displays the
first web page to the user;

determining, with the device, whether an
entry corresponding to the particular product
displayed on the first web page is contained in a
database on the device, wherein the database
comprises supplemental information particular to a
user and correlates the supplemental information to
each of a plurality of products, and wherein the
database is separate from the first web page and
the first web page is ordinarily devoid of the
supplemental information; and

displaying supplemental information
correlated to the particular product along with and
separate from the first web page if it is determined
that the database contains an entry for the
particular product.

23. An apparatus for displaying supplemental
information particular to a user regarding
displayed web pages for the user, the apparatus
comprising:

a link assessment module, for identifying a
particular product displayed in a first web page
using a device that displays the first web page to
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Application 09/873,067

the user and determining, with the device, whether
an entry corresponding to the particular product
displayed on the first web page is contained in a
database on the device, wherein the database
comprises supplemental information particular to a
user and correlates the supplemental information to
each of a plurality of products, and wherein the
database is separate from the first web page and
the first web page is ordinarily devoid of the
supplemental information; and

a supplemental information display module,
in communication with the link assessment
module, for displaying supplemental information
correlated to the particular product along with and
separate from the first web page if it is determined
that the database contains an entry for the
particular product.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Harris US 6,014,635 Jan. 11, 2000
Revashetti US 6,230,199 B1 May 08, 2001
(filed Oct. 29, 1999)
Jakobson US 6,697,838 B1 Feb. 24, 2004
(filed May 03, 2000)

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 23 to 28 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
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Application 09/873,067

R2: Claims 17, 18, 21 to 24, 27 to 30, 33 to 36, 39, and 40 stand rejected
under 35 U.S.C. § 103(a) for being obvious over Jakobson in view of
Revashetti.
R3: Claims 19, 20, 25, 26, 31, 32, 37, and 38 stand rejected under
35 U.S.C. § 103(a) for being obvious over Jakobson in view of Revashetti
and Harris.

We will review the rejections in the order argued, and as grouped in
the Briefs. We have only considered those arguments that Appellants
actually raised in the Briefs. Arguments that Appellants could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues involve whether Appellants have shown that the Examiner
erred in rejecting the claims under 35 U.S.C. §§ 101 and 103(a). The issue
under 35 U.S.C. § 101 specifically turns on whether the claimed “link
assessment module” and claimed “supplemental information display
module” (claim 23) are software per se. The issue under 35 U.S.C. § 103(a)
specifically turns on whether Appellants’ claimed “supplemental
information” (claim 17) is disclosed in the Jakobson or Revashetti
references.

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Appeal 2009-001987
Application 09/873,067

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a method, apparatus, and storage medium
for navigating web pages while accessing supplemental information about
products displayed on a first web page. (See claims 17, 23, 29, and 35.)
Appellants’ method requires storing the supplemental information in a
database separate from the web browser (¶ [0028]). A first web page “is
ordinarily devoid” of the supplemental information (claim 17), which is
particular to a user and correlated with the products (id.). The Specification
discloses that each “module,” as recited in claim 23, is preferably “provided
as software” (Spec. ¶ [0030]).
Jakobson
2. The Jakobson reference discloses navigating web pages while
accessing notes or annotations about information products displayed on one
of the web pages (col. 1, ll. 8 to 13). Jakobson’s notes are stored in a
database separate from the web browser displaying the information products
(col. 3, ll. 29 to 35). In Jakobson, the notes are only displayed when called
from the database (col. 9, ll. 52 to 58). User notes are correlated with the
information products of the web pages (id.).
Revashetti
3. The Revashetti reference discloses customizing products for users
based on the users’ web browsing preferences. (See col. 1, ll. 8 to 11 and 19
to 21; col. 21, ll. 4 to 8.)
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Appeal 2009-001987
Application 09/873,067

Harris
4. The Harris reference discloses a consumer incentive available to a
user and related to an item for purchase (col. 2, ll. 18 to 25; col. 2, l. 53 to
col. 3, l. 6; Ans. 7, middle to bottom).

PRINCIPLE OF LAW
Appellants have the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

ANALYSIS
Argument with respect to the rejection
of claims 23 to 28
under 35 U.S.C. § 101 [R1]

The Examiner rejected the noted claims as non-statutory because the
“link assessment module” and the “supplemental information display
module” are software per se. (See Ans. 3, bottom to 4, top).
Since the Specification supports that each “module” of claim 23 can
be hardware, Appellants argue that the claim is statutory (App. Br. 4, bottom
to 5, top). The Examiner replies that the disclosure specifies Appellants’
“modules” may, however, be limited to only software (Ans. 8; Spec. ¶
[0030]).
“If a claim covers material not found in any of the four statutory
categories, that claim falls outside the plainly expressed scope of § 101 even
if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d
1346, 1354 (Fed. Cir. 2007). A claim to a data structure per se is non-
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Application 09/873,067

statutory. See In re Warmerdam, 33 F.3d 1354, 1360-61 (Fed. Cir. 1994).
Data structures not claimed as embodied in computer-readable media are
descriptive material per se and are not statutory because they are not capable
of causing functional change in the computer (id. at 1361).
We agree with the Examiner. Although claim 23 nominally recites an
“apparatus” in the preamble of the claim (a category of statutory subject
matter under § 101), we nonetheless find that the claim as a whole is
directed to non-statutory subject matter. That is, when construed in light of
the Specification, each recited “module” of claim 23 can be implemented
solely via software as the Examiner indicates (Ans. 3, 8) and is therefore
neither a device, an article of manufacture, or an act being performed (see
id.). Since the “modules” may comprise only software code (FF#1), and not
any actual hardware device or apparatus, the claim as a whole does not
qualify as statutory subject matter under § 101. We thus affirm the rejection
R1.

Argument with respect to the rejection
of claims 17, 18, 21 to 24, 27 to 30, 33 to 36, 39, and 40
under 35 U.S.C. § 103(a) [R2]

The Examiner rejected the noted claims as being obvious over the
Jakobson and Revashetti references, pages 4 to 6.
Appellants argue that modifying Jakobson’s notes to include
Revashetti’s product advertisements changes Jakobson’s principle of
operation, thus obviating the prima facie case of obviousness (App. Br. 5,
bottom).
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Application 09/873,067

We agree with the Examiner’s conclusion of obviousness for the
following reasons.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference,” but rather “what the combined teachings of those references
would have suggested.” In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(emphasis added).
We find that Appellants have not identified any particular principle
that would be changed in Jakobson, nor have Appellants’ identified how the
Examiner’s proffered combination would change that principle.
We carefully considered the Briefs, the Answer, the cited portions of
Jakobson and Revashetti, and indeed the entire references. Despite
Revashetti’s disclosure of customizing products to specific users based on
the users’ web browsing preferences (see FF#3), we concentrate on
Jakobson for the operative elements of exemplary claim 17. (See In re Bush,
296 F.2d 491, 496 (CCPA 1961) (in sustaining a multiple reference rejection
under 35 U.S.C. § 103(a), the Board may rely on one reference alone
without designating it as a new ground of rejection).)
We find that Appellants have invented a method, apparatus, and
storage medium for navigating web pages while accessing supplemental
information about the products displayed on a first web page (FF#1).
Appellants’ method requires storing the supplemental information in a
database separate from the web browser (id.). The “first web page” of claim
17 “is ordinarily devoid” of the supplemental information (id.). The
supplemental information is particular to a user and correlated with the
products (id.).
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Application 09/873,067

In comparison, the Jakobson reference discloses navigating web pages
while accessing notes or annotations (i.e., Appellants’ claimed
“supplemental information”) about the information products (Appellants’
claimed “products”) on one of the web pages (FF#2). Jakobson’s notes are
stored in a database separate from the web browser (id.). In Jakobson, the
notes are only displayed when called from the database (id.). That is,
Jakobson’s web page is “ordinarily devoid,” as claimed, of the notes (the
claimed “supplemental information”).
Reading the claim language broadly but reasonably, see In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989), we interpret Appellants’ “products”
(claim 17) as being similar to Jakobson’s displayed information products
(e.g., documents about intellectual property). We note no Phillips-type3
definition specifically limiting Appellants’ claimed “products” to items for
sale or manufacture (Spec. 2 to 17). Moreover, in light of a boom in the
information services industries at the time the claimed invention was made
(i.e., June 2001), we find that a person of ordinary skill in the computer arts
would have recognized the Jakobson web pages describing intellectual
property as “products,” as claimed.
For all of the above-stated reasons, we find Appellants have not
demonstrated error in the obviousness rejection R2.

3 “[O]ur cases recognize that the specification may reveal a special definition
given to a claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor’s lexicography governs.”
Phillips v. AWH Corp., 415 F.3d 1303, 1329 (Fed. Cir. 2005) (en banc)
(internal citations omitted).

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Appeal 2009-001987
Application 09/873,067

Argument with respect to the rejection
of claims 19, 20, 25, 26, 31, 32, 37, and 38
under 35 U.S.C. § 103(a) [R3]

The Examiner rejected the noted claims as being obvious over the
Jakobson, Revashetti, and Harris references, page 6.
Dependent claim 19 recites, in relevant part, “wherein the second web
page correlates to a purchasable item, and the supplemental information
includes a consumer incentive available to the user and relating to the
purchaseable item, the consumer incentive being obtained from the database
and not being ordinarily evident from the web page.”
Appellants argue that since Harris discloses providing a discount
credit based transition network, Harris cannot meet the limitations of claim
19 (App. Br. 6, middle to bottom).
Appellants merely paraphrase the claim language in forming the
above-stated argument (App. Br. 6, middle to bottom). In doing so, we find
Appellants have not demonstrated the non-obvious distinctions over the
cited prior art in accordance with In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991). Accordingly, we affirm the rejection R3.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not demonstrated that the Examiner erred in the rejections
R1 to R3 of claims 17 to 40.

DECISION
We affirm the Examiner’s rejections R1 to R3 of claims 17 to 40.
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Appeal 2009-001987
Application 09/873,067

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

peb

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