Ex parte WECKER

Board of Patent Appeals and Interferences

Apr 13, 1998

08004016 (B.P.A.I. Apr. 13, 1998)

Application for patent filed January 15, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALAN J. WECKER
_____________
Appeal No. 96-2021
Application 08/004,0161
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING and TORCZON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's final rejection of claims 29-38, which
Appeal No. 96-2021
Application 08/004,016
2
constituted all the claims remaining in the application. An
amendment after final rejection was filed on April 24, 1995 and
was entered by the examiner. This amendment amended claims 29
and 34, cancelled claims 31-33 and 36-38, and added claims 39 and
40. Consequently, this appeal is directed to the rejection of
claims 29, 30, 34, 35, 39 and 40.
The claimed invention pertains to a method and apparatus
for providing hypertext link services within a data processing
system. More particularly, the invention is directed to the
display of a marker along with a hypertext link indicator which
indicates whether the information associated with the hypertext
link indicator has previously been displayed. The date and time
of a previous utilization of the information associated with the
link indicator can be displayed by actuating the marker on the
display without having to display the information associated with
the link indicator.
Representative claim 29 is reproduced as follows:
29. A method of providing hypertext link services within
a data processing system having a display, said method comprising
the data processing implemented steps of:
displaying a hypertext document within said display;
graphically displaying at least one hypertext link
indicator within said hypertext document, said hypertext link
indicator indicating an existence of an additional unit of
information;
Appeal No. 96-2021
Application 08/004,016
3
graphically displaying in association with said at least
one hypertext link indicator within said hypertext document a
marker indicating a previous display of said additional unit of
information;
selectively displaying said additional unit of
information within said display in response to a selection of
said hypertext link indicator by a user of said data processing
system; and
selectively displaying utilization data indicating a date
and time of a first utilization by said user with respect to said
additional unit of information within an information window
within said display in response to a selection of said marker by
a user of said data processing system, wherein said utilization
data may be visually accessed by a user without display of said
additional unit of information.
The examiner relies on the following reference:
Nielsen, “The Art of Navigating Through Hypertext,”
Communications of the ACM, Vol. 33, No. 3 (March 1990), pages
297-310.
Claims 29, 30, 34, 35, 39 and 40 stand rejected under 35
U.S.C. § 103. As evidence of obviousness the examiner offers
Nielsen taken alone.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
Appeal No. 96-2021
Application 08/004,016
4
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner's
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner's answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 29, 30, 34, 35, 39 and 40. Accordingly, we reverse.
Appellant has indicated that for purposes of this appeal
the claims will stand or fall together in the following two
groups: Group I has claims 29, 30, 34 and 35, and Group II has
claims 39 and 40 [brief, page 4]. Consistent with this
indication appellant has made no separate arguments with respect
to any of the claims within each group. Accordingly, all the
claims within each group will stand or fall together. Note In re
King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In
re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Accordingly, we will only consider the rejection against claims
29 and 39 as representative of all the claims on appeal.
Appeal No. 96-2021
Application 08/004,016
5
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
Appeal No. 96-2021
Application 08/004,016
6
We consider first the rejection of claim 29 as
unpatentable over the teachings of Nielsen. Nielsen was cited by
appellant as representative of the prior art. Like the claimed
invention, Nielsen teaches a method for providing hypertext link
services in a data processing system. Nielsen teaches that a
marker (footprint) can be displayed along with the link indicator
to indicate that the information associated with the link has
previously been visited. Nielsen also teaches that the marker
can be gradually faded to indicate the amount of time which has
passed since the link was last visited. Nielsen also teaches
that the actual time since a link was last visited can be
displayed whenever the link is actually visited.
Claim 29 recites that a date and time of a first
utilization of the link is displayed upon the selective user
actuation of a marker associated with the link without having to
actually go to the new location. It is the position of the
examiner that the faded version of the footprints in Nielsen
implicitly reveals date and time information, and the selective
display of such information upon user request would have been an
obvious design choice because such modification “presents no
novel or unexpected results and solves no stated problem”
[answer, pages 4-5]. Appellant argues that Nielsen teaches away
Appeal No. 96-2021
Application 08/004,016
7
from the selective display of date and time information without
display of the link information because Nielsen only reveals
specific time data when the link location is actually visited
[brief, pages 5-6].
We are of the view that this record does not support the
examiner’s assertion that the modifications which must be made to
Nielsen to arrive at the claimed invention are a matter of
obvious design choice. The invention of claim 29 allows the user
to selectively obtain specific information regarding date and
time of a previous visit without having to revisit the site.
Nielsen only gives a crude indication of a previous visit which
must be interpreted by the user. Thus, one problem solved by
appellant’s invention is that the user does not have to be
skilled in determining how much time corresponds to a given
amount of fade in the marker. Although we recognize that there
are similarities between the claimed invention and Nielsen, the
claimed invention provides advantages for the user which simply
are not suggested by the teachings of Nielsen. In fact, the
modification of Nielsen to selectively display the faded markers
would serve no purpose and would make Nielsen less useful.
Appeal No. 96-2021
Application 08/004,016
8
Since we agree with appellant that this record does not
support the examiner’s rejection, we do not sustain the rejection
of claim 29 and claims 30, 34 and 35 which are grouped therewith.
We now consider the rejection of claim 39 as
unpatentable over the teachings of Nielsen. Claim 39 is
essentially the same as claim 29 except that data concerning a
most recent utilization of a link is displayed rather than data
of the first utilization as recited in claim 29. Although the
markers in Nielsen are more closely related to a most recent
utilization rather than a first utilization, Nielsen still does
not teach the selective display of a date and time for reasons
noted above. The invention of claim 39 also provides advantages
which are not suggested by the teachings of Nielsen. Therefore,
we also do not sustain the rejection of claims 39 and 40 based on
this record.
In summary, we have not sustained the examiner’s
rejection of the claims under 35 U.S.C. § 103. Therefore, the
decision of the examiner rejecting claims 29, 30, 34, 35, 39 and
40 is reversed.
REVERSED
Appeal No. 96-2021
Application 08/004,016
9
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Andrew J. Dillon
Felsman, Bradley, Gunter & Dillon, LLP
Suite 350, Arboretum Point
9505 Aroretum Boulevard
Austin, TX 78759