Ex Parte Ye et al

Board of Patent Appeals and Interferences

May 28, 2009

10097389 (B.P.A.I. May. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ZHOU YE and CALVIN WANG
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Appeal 2008-003867
Application 10/097,389
Technology Center 2400
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Decided:1 May 28, 2009
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 3-19, 21-23, 25, 27-43, 45-47, 49, 51,
and 53-57. Claims 2, 20, 24, 26, 44, 48, 50, and 52 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ invention relates generally to providing requested
information to users. More particularly, Appellants’ invention relates to
providing information to users with a protocol other than the protocol
expected by the service that provides the information. (Spec. 1).
Claims 1, 49, and 56 are separately argued by Appellants and are
illustrative:
1. A method of conducting a session between a
device and a service, comprising the computer-
implemented steps of:

receiving a first message at an intermediary
sent from a client device;

in response to said first message, said
intermediary transmitting a second message to
said service;

receiving at said intermediary a third
message from said service that is in response to
said second message that was transmitted to said
service, wherein said third message is a web
formatted response;

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in response to said third message from said
service, storing at said intermediary:

(c) a set of one or more hyperlinks that were
contained in said third message; and

(d) information for translating reference
values into hyperlinks in said set of one or more
hyperlinks;

transmitting a fourth message to said client
device, wherein said fourth message contains said
reference values but does not contain any
hyperlinks in said set of hyperlinks;

receiving a fifth message from said client at
said intermediary, wherein said fifth message
contains one of said reference values;

in response to said fifth message, locating
said information for translating reference values
into hyperlinks; and

using said information to translate the
reference value in said fifth message to a hyperlink
in said set of one or more hyperlinks.

49. The method of Claim 1 wherein said
intermediary maintains data that reflects the
position of the client in a menu tree associated
with the service.

56. The method of claim 22, wherein the step of
ending said session when said timer ends
comprises releasing the following stored at the
intermediary:

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a) the set of one or more hyperlinks that
were contained in said third message; and

b) the information for translating reference
values into hyperlinks in said set of one or more
hyperlinks.

PRIOR ART
The Examiner relies upon the following references as evidence in
support of the rejections:

Eggleston US 5,771,353 Jun. 23, 1998
Malik US 6,023,701 Feb. 8, 2000
Chen EP 1 168 766 A2 Feb. 1, 2002
Martin US 6,457,060 B1 Sep. 24, 2002
Smethers US 6,560,640 B2 May 6, 2003
Rouse US 6,757,530 B2 Jun. 29, 2004

THE REJECTIONS
1. Claims 1, 3, 11, 15, 18, 21, 25, 27, 35, 39, 42, 45, 49, 54, and 55 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Smethers and Malik.

2. Claims 22, 23, 46, 47, 51, 53, 56, and 57 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Smethers, Malik, and Eggleston.

3. Claims 4-6, 8-10, 12, 28-30, 32-34, and 36 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Smethers, Malik, and Martin.
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4. Claims 7, 13, 31, and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Smethers, Malik, Martin,
and Rouse.

5. Claims 14 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Smethers, Malik, Martin, and
Chen.

6. Claims 16, 17, 19, 40, 41, and 43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Smethers,
Malik, and Rouse.

GROUPING OF CLAIMS
Appellants argue claims 1, 3-19, 21-23, 25, 27-43, 45-47, 51, 53-55,
and 57 as a group. (App. Br. 5-14). We will, therefore, treat claims 3-19,
21-23, 25, 27-43, 45-47, 51, 53-55, and 57 as standing or falling with
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue dependent claims 49 and 56 separately.
We accept Appellants’ grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“Notwithstanding any other provision of this paragraph,
the failure of appellant to separately argue claims which appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.”).
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APPELLANTS’ CONTENTIONS
Regarding representative claim 1, Appellants contend that neither
Smethers nor Malik teaches storing hyperlinks and information for
translating reference values into hyperlinks, in response to receiving a web
formatted response from a service. (App. Br. 5-9). Appellants further
contend that modifying Smethers in the manner proposed by the Examiner
would destroy Smethers as a reference, by rendering Smethers unsuitable for
its intended purpose and would change the principle of operation of
Smethers (App. Br. 9-14).
Regarding claim 49, Appellants contend that “even if Smether[s’]
proxy were to maintain hyperlinks and reference information, Smether[s’]
proxy does not maintain the position of the client in the menu tree.” (App.
Br. 15). In particular, Appellants assert that “[c]laim 49 is not directed
towards data maintained at a client, but rather at an intermediary.” (App.
Br. 16, emphasis in original). Appellants additionally argue that “the list of
bookmarks in the “interface card deck” taught by Smethers cannot be the
claimed menu tree, as the list is not taught by Smethers as having the
claimed structure of a tree.” (Id.). Appellants further argue:
Applicants acknowledge that a particular bookmark in Smethers
might correspond to a service. However, this does not mean
that a menu tree is associated with a particular
service. Further, even if multiple bookmarks in Smethers might
by chance correspond to a particular service, that would not
create any actual association between any menu tree and
the service, as claimed. Therefore, Smethers does not explicitly
or implicitly teach, a menu tree associated with the service.

(App. Br. 16).
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Regarding claim 56, Appellants restate the language of the claim and
assert that “[t]he prior art does not teach or suggest the above limitations.”
Appellants further contend that Smethers cannot be modified to arrive at the
limitations recited in claim 56 “because the very nature of bookmarks is that
they are persistent across sessions.” (App. Br. 17, last paragraph).
Appellants proffer that if Smethers were modified by releasing the
bookmarks when a session ends, then Smethers would be rendered
inoperative for its intended purpose (App. Br. 18, ¶1).

EXAMINER’S FINDINGS
The Examiner responds, as follows:
[T]he primary reference Smethers teaches every step of the
method including the transfer of all of the claimed messages.
Smethers also teaches storing the certain claimed data at
an intermediary. The only thing Smethers fails to teach
explicitly is that this data is stored "in response to said third
message from said service". However, it should be clear that
Smethers does teach the third message as well as the data being
stored at the intermediary. Smethers stores data in response to
messages from the client device instead of in response to
messages from the server that maintains the service. Despite
this, it is maintained that one of ordinary skill in the art
at the time of the applicant's invention would have known that
such data could be stored in response to messages from the
service instead of or in addition to messages from a client (since
it was taught by Malik) and thus the claim language is obvious
over such a combination. Again, since Smethers teaches the
claimed third message as well as the data being stored at the
intermediary, the examiner has looked to a secondary reference

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only to show that the principle of storing this data in response
to the third message was well known in the art. No attempt has
been made to incorporate Malik's entire system into the
teachings of Smethers.

(Ans. 19, emphasis in original).

The Examiner maintains that the limitations argued by Appellants are
taught and/or suggested by the cited combination of references, which the
Examiner further maintains have been properly combined (Ans. 20-26).

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Have Appellants shown that the Examiner erred in finding that
the combination of Smethers and Malik teaches and/or suggests
storing hyperlinks and information for translating reference
values into hyperlinks, in response to receiving a web formatted
response from a service? (See representative claim 1)
2. Have Appellants shown the Examiner erred by improperly
combining the Smethers and Malik references (representative
claim 1), or the Smethers, Malik, and Eggleston references
(claim 56)?
3. Have Appellants shown that the Examiner erred in finding that
the combination of Smethers and Malik teaches and/or suggests
said intermediary maintains data that reflects the position of
the client in a menu tree associated with the service? (See claim
49).
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PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellants’ Brief to show error in
the Examiner’s proffered prima facie case.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

THE SMETHERS REFERENCE
1. Smethers teaches a “compact bookmark identifier” that is
preferably two bytes in size, e.g., a control character indicating
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a bookmark and a number indicating the particular bookmark.
(Col. 12, ll. 41-45).
2. Smethers teaches that “[p]ressing and holding the assigned key
causes wireless device 100 to generate a compact bookmark
identifier which is transmitted to proxy server device 116 in a
compact request for the bookmarked document (or file). (Co. 8,
ll. 44-47).

THE MALIK REFERENCE
3. Malik teaches that “a user may select the bookmark menu once
again to save the skeleton page or hyperlink listing itself 501 in
the bookmark file . . . .” (Col. 7, ll. 50-52).
4. Malik teaches that “[i]n the hyperlink retrieval embodiment, the
network assembles only the available hyperlinks for
presentation to the user. The user may then select from the
presented hyperlinks . . . .” (Col. 2, ll. 32-34).

ANALYSIS

ISSUE 1
We decide the question of whether Appellants have shown the
Examiner erred in finding that the combination of Smethers and Malik
teaches and/or suggests storing hyperlinks and information for translating
reference values into hyperlinks, in response to receiving a web formatted
response from a service. (See representative claim 1)
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We find at least the Malik reference clearly teaches storing
hyperlinks, as follows: “a user may select the bookmark menu once again to
save the skeleton page or hyperlink listing itself 501 in the bookmark file
. . . .” (FF 3, emphasis added). We find at least the Smethers reference
teaches and/or suggests information for translating reference values into
hyperlinks. In particular, Smethers teaches a “compact bookmark identifier”
that is preferably two bytes in size, e.g., a control character indicating a
bookmark and a number indicating the particular bookmark. (FF 1). We
find Smethers’ “compact bookmark identifier” (i.e., information for
translating reference values into hyperlinks) is necessarily stored on the
wireless client device and the proxy server device, consistent with the
description in Smethers at column 12, lines 32-60.
Regarding the limitation of storing . . . in response to receiving a web
formatted response from a service, we find Appellants have not persuasively
traversed the Examiner’s findings, reproduced here in pertinent part for
convenience:
The only thing Smethers fails to teach explicitly is that this data
is stored "in response to said third message from said service".
However, it should be clear that Smethers does teach the third
message as well as the data being stored at the intermediary.
Smethers stores data in response to messages from the client
device instead of in response to messages from the server that
maintains the service. Despite this, it is maintained that one of
ordinary skill in the art at the time of the applicant's invention
would have known that such data could be stored in response to
messages from the service instead of or in addition to messages
from a client (since it was taught by Malik) and thus the claim
language is obvious over such a combination.

(Ans. 19).
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In particular, Appellants argue that “Malik’s client does not store
hyperlinks in response to receiving the target page from the network” (App.
Br. 8, ¶3, underlining in original). However, we note that Malik teaches that
“[i]n the hyperlink retrieval embodiment, the network assembles only the
available hyperlinks for presentation to the user. The user may then select
from the presented hyperlinks . . . .” (FF 4).
We find that assembling available hyperlinks for presentation to the
user inherently requires at least storage in a display buffer. Therefore, we
find Malik teaches and/or suggests storing hyperlinks in response to
receiving a web formatted response from a service (i.e., network).
Moreover, we agree with the Examiner that one of ordinary skill in
the art would have known and found it obvious that data could be stored in
response to messages from a service instead of or in addition to messages
from a client.2 (Ans. 19). Therefore, in light of our discussion above
regarding both references, we find the combination of Smethers and Malik
teaches and/or suggests storing hyperlinks and information for translating
reference values into hyperlinks, in response to receiving a web formatted
response from a service. (See representative claim 1)

2 “[U]nless more ingenuity and skill were required in making or applying
the said improvement than are possessed by an ordinary mechanic
acquainted with the business, there is an absence of that degree of skill and
ingenuity which constitute the essential elements of every invention.”

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ISSUE 2
We decide the question of whether Apellants have shown the
Examiner erred in finding that the Examiner erred by improperly combining
the Smethers and Malik references (representative claim 1), or the Smethers,
Malik, and Eggleston references (claim 56).
We have considered Appellants’ arguments that modifying Smethers
in the manner proposed by the Examiner would destroy Smethers as a
reference by rendering it unsatisfactory for its intended purpose and
changing its principle of operation (App. Br. 9-14). However, we note that
the Examiner looks to the secondary Malik reference to show that the
principle of storing data in response to a message was well known in the art.
(Ans. 19, ¶1).
We find Appellants’ arguments are premised upon bodily
incorporating the secondary Malik reference into the primary Smethers
reference. Thus, it is our view that Appellants’ arguments do not take into
account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”).

Dunbar v. Myers, 94 U.S. at 197 (1876) (citing Hotchkiss v. Greenwood, 52
U.S. 248, 267 (1850)).
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We note that in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art” and discussed
circumstances in which a patent might be determined to be obvious. Id. at
401, 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966)). The
Court reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 401, 416. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 401, 417.
Here, we find the Examiner’s proffered combination of Smethers and
Malik (and Smethers, Malik, and Eggleston) is merely a combination of
familiar elements (i.e., messages, hyperlinks, and reference values, (and a
timer, claim 56)) according to known methods that yields a predictable
result.
Moreover, Appellants have provided no evidence to show that
combining the respective familiar elements of the cited references in the
manner proffered by the Examiner was “uniquely challenging or difficult for
one of ordinary skill in the art” (see Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)).
Accordingly, we find Appellants have not shown the Examiner erred by
improperly combining the cited references.

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ISSUE 3
We decide the question of whether Appellants have shown the
Examiner erred in finding that the combination of Smethers and Malik
teaches and/or suggests said intermediary maintains data that reflects the
position of the client in a menu tree associated with the service. (See claim
49).
Appellants contend, inter alia, that “the list of bookmarks in the
‘interface card deck’ taught by Smethers cannot be the claimed menu tree, as
the list is not taught by Smethers as having the claimed structure of a tree.”
(App. Br. 16). However, we find Appellants have not defined in the claim
language or in the Specification exactly the specific structure of a tree.
Turning to Appellants’ Specification for context, we find Menus 204 and
208 are shown as lists of restaurants (Spec. 11). Therefore, we find
Appellants’ arguments unavailing and sustain the Examiner’s rejection of
claim 49 as being unpatentable over the combination of Smethers and Malik
for essentially the same reasons argued by the Examiner in the Answer (Ans.
25, ¶1).

Claim 56
Regarding claim 56 (argued separately), Appellants merely restate the
language of the claim and assert that “[t]he prior art does not teach or
suggest the above limitations.” (App. Br. 17, last paragraph). We note that
a statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii).
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However, Appellants further contend that Smethers cannot be
modified to arrive at the limitations recited in claim 56 “because the very
nature of bookmarks is that they are persistent across sessions.” (App. Br.
17, last paragraph). Appellants proffer that if Smethers were modified by
releasing the bookmarks when a session ends, then Smethers would be
rendered inoperative for its intended purpose (App. Br. 18, ¶1).
In response, we find Appellants arguments are again premised upon a
bodily incorporation of the cited references, as discussed supra. We note
that the Examiner merely relies on the tertiary Eggleston reference for
teaching a timer for ending a session (Ans. 25, ¶2). Therefore, we find
Appellants’ arguments unavailing and sustain the Examiner’s rejection of
claim 56 as being unpatentable over the combination of Smethers, Malik,
and Eggleston for essentially the same reasons argued by the Examiner in
the Answer (Ans. 25, ¶2).

CONCLUSION
Based on the findings of facts and analysis above, Appellants have
not established that the Examiner erred in rejecting claims 1, 3-19, 21-23,
25, 27-43, 45-47, 49, 51, and 53-57 as being obvious over the cited prior art
under 35 U.S.C. §103(a).

DECISION
The Examiner’s decision rejecting claims 1, 3-19, 21-23, 25, 27-43,
45-47, 49, 51, and 53-57 under 35 U.S.C. § 103(a) is affirmed.

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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)(1)(iv).

AFFIRMED

pgc

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