Ex Parte Vayssiere

Board of Patent Appeals and Interferences

Jun 1, 2011

11024094 (B.P.A.I. Jun. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JULIEN J.P. VAYSSIERE
____________

Appeal 2009-008562
Application 11/024,094
Technology Center 2100
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-3 and 5-20. Claim 4 has been
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We Affirm-In-Part.

Appeal 2009-008562
Application 11/024,094

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Invention
Appellant’s invention relates generally to computer applications and
systems. More particularly, the invention on appeal is related to search
engines. (Spec. 1).

Claim 1 is illustrative:

1. A method, comprising:

coupling a plurality of clients to a first network;

coupling a search engine to a second network configured
to provide search results in response to search requests; and

coupling an intermediary between the first network and
the second network, configured to:

intercept a first request for search results from a client to
the search engine, wherein the first request includes a search
expression;

intercept search results from the search engine to the
client, wherein the search results include a URL;

intercept a second request for the URL from the client;
and

associate the search expression with the URL.

Appellant appeals the following rejection:
Claims 1-3 and 5-20 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Gross (US 2006/0064411 Mar. 23, 2006).

Appeal 2009-008562
Application 11/024,094

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ISSUE
As a pivotal issue, Appellant has challenged that the sole reference,
Gross, does not qualify as prior art. (App. Br. 9-11). In particular,
Appellant contends that “[t]he rejection of independent claim 1 under 35
U.S.C. § 102(e) based on Gross is improper because the matter cited from
Gross in support of the rejection has no support in the priority documents.”
(App. Br. 9). Appellant avers that independent claims 13 and 16 include
elements similar to claim 1. (App. Br. 11).

Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
Under § 102(e), did the Examiner err in relying on Gross
as prior art in rejecting independent claims 1, 13, and 16?

PRINCIPLES OF LAW
“[A]n applicant is not entitled to a patent if another’s patent discloses
the same invention, which was carried forward from an earlier U.S.
provisional application or U.S. non-provisional application. . . . An
important limitation is that the provisional application must provide written
description support for the claimed invention.” In re Giacomini, 612 F.3d
1380, 1383 (Fed. Cir. 2010).
The 35 U.S.C. 102(e) critical reference date of a U.S. patent or
U.S. application publications and certain international
application publications entitled to the benefit of the filing date
of a provisional application under 35 U.S.C. 119(e) is the filing
date of the provisional application with certain exceptions if the
provisional application(s) properly supports the subject matter
Appeal 2009-008562
Application 11/024,094

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relied upon to make the rejection in compliance with 35 U.S.C.
§ 112, first paragraph.
MPEP § 2136.03 (III.)(bold in original).
FINDINGS OF FACT (FF)
1. The Examiner mapped the claimed “intermediary” to the portal
manager 192 disclosed in Gross at paragraph 44 and depicted
within Figure 1A. (Ans. 13).
2. The present application has an effective filing date of Dec. 28,
2004.
3. Gross was filed on Sep. 22, 2005 and claims the benefit of
priority from provisional applications 60/612,619 (filed on Sep.
22, 2004) and 60/616,044 (filed on Oct. 4, 2004).

ANALYSIS
Claims 1-3 and 5-15
The pivotal issue before us is the eligibility of Gross as prior art under
35 U.S.C. § 102(e) in rejecting independent claims 1 and 13.
We agree with Appellant that the effective filing date of the present
application (FF 2) is before the filing date of Gross. (FF 3). However,
Gross claims priority from two provisional applications. (FF 3). Therefore,
in order to qualify as prior art against the present application, the provisional
application(s) must properly support the subject matter relied upon to make
the rejection in compliance with 35 U.S.C. § 112, first paragraph. See
In re Giacomini, 612 F.3d at 1383; see also MPEP § 2136.03 (III.).
Appellant contends the Portal Manager 192 of Gross that is relied
upon by the Examiner to disclose the claimed “intermediary” coupled
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between the first and second networks (Claims 1 and 13) is not supported in
the earlier filed Gross provisional applications. (Reply Br. 9).
We observe that the Examiner mapped the claimed “intermediary” to
the Portal Manager 192 of Gross (FF 1) for the first time in the “Response to
Argument” section of the Answer. (Ans. 13). Based upon our review of the
record, we agree with Appellant (Reply Br. 9) that the Examiner failed to
establish that the Portal Manager 192 is supported under 35 U.S.C.
§ 112, first paragraph, in either of the earlier filed provisional applications of
Gross. (FF 3). See Ans. 13-14 that we find is silent regarding any discussion
by the Examiner regarding the requisite support.
Therefore, we agree with Appellant, as follows:
To use the Gross publication as prior art requires support in the
earlier-filed applications, as the Gross publication was filed
after the priority date of Appellant’s Application. The
Examiner has offered no support in the ‘619 Provisional or in
the ‘044 Provisional for the Portal Manager 192. Therefore, the
Examiner has failed to make a prima facie case that the
provisional applications properly support the subject matter
relied upon to make the rejection, and the rejection is improper.
(Reply Br. 9).

Thus, for the same reasons argued by Appellant (Id.), we agree that
the Examiner failed to set forth a prima facie case of anticipation regarding
independent claims 1 and 13. Accordingly, we reverse the Examiner’s
anticipation rejection of independent claims 1 and 13, as well as the rejection
of associated dependent claims 2, 3, 5-12, 14, and 15 which stand therewith.

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Claims 16-20
Appellant states that the rejection of independent claim 16 is “based
on the same subject matter as independent claim 1.” (App. Br. 13; see also
Reply Br. 9). However, we observe that claim 16 is silent regarding the
“intermediary” limitation that Appellant argues has no support in either of
the Gross provisional applications (FF 3), as discussed above regarding
independent claim 1. Appellant also fails to address the Examiner’s specific
findings of fact regarding how the Gross reference anticipates independent
claim 16. (Ans. 10-11). Dependent claims 17-20 were not separately argued
by Appellant. (App. Br. 13). Therefore, on this record, we find Appellant
has failed to show reversible error in the Examiner’s prima facie case of
anticipation for claims 16-20 by specifically identifying what the Examiner
did wrong.1 Accordingly, we sustain the Examiner’s rejection of claims 16-
20 under §102(e).

1 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Jung argues that the
Board gave improper deference to the examiner’s rejection by requiring
Jung to ‘identif[y] a reversible error’ by the examiner, which improperly
shifted the burden of proving patentability onto Jung. Decision at 11. This
is a hollow argument, because, as discussed above, the examiner established
a prima facie case of anticipation and the burden was properly shifted to
Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must
identify to the Board what the examiner did wrong . . . .”).

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DECISION
We reverse the Examiner’s § 102 rejection of claims 1-3 and 5-15.
We affirm the Examiner’s § 102 rejection of claims 16-20.

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

ORDER
AFFIRMED-IN-PART

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