International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardMar 2, 20212019004011 (P.T.A.B. Mar. 2, 2021) Copy Citation 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. 15/044,165 02/16/2016 Eric P. Fried AUS920130299US2 5700 11432 7590 03/02/2021 IBM Corporation - Endicott Drafting Center 11501 Burnet Road Austin, TX 78758 EXAMINER MCGHEE, TRACY M ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 03/02/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): edciplaw@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC P. FRIED Appeal 2019-004011 Application 15/044,165 Technology Center 2100 Before MARC S. HOFF, ELENI MANTIS MERCADER, and JAMES W. DEJMEK, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–7. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest as International Business Machines Corp. (IBM) of Armonk, New York. Appeal Br. Appeal Br. 3. Appeal 2019-004011 Application 15/044,165 2 CLAIMED SUBJECT MATTER The claims are directed to searching web pages, and more specifically, facilitating user tracking and navigating of search results. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method, comprising: automatically generating a hierarchical representation of a navigation order within a web browsing session in conjunction with a traversing of a plurality of websites within the browsing session; flagging individual websites of the plurality of websites to generate a user selected subset of the plurality of websites; displaying a user interface in conjunction with the browser such that the user interface displays a hierarchical representation of the user selected subset and only the user selected subset and provides a traversal control with respect to foe subset in accordance with the hierarchical representation; and traversing the subset utilizing the traversal control. Appeal 2019-004011 Application 15/044,165 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Bauersfeld US 6,189,024 B1 Feb. 13, 2001 Pogodin US 8,402,359 B1 Mar. 19, 2013 IBM - IP.com Prior Art Database Technical Disclosure (IP.com Number: IPCOM000178039D) (January 14, 2009) IBM - IP.com Prior Art Database Technical Disclosure (IP.com Number: IPCOM000179781D) (February 25, 2009) REJECTIONS2 1. Claims 1, 6 and 7 are rejected under AIA 35 U.S.C. § 103 as being unpatentable over IBM - IP.com Prior Art Database Technical Disclosure (IP.com Number: IPCOM000179781D) in view of Bauersfeld et al. (US 6189024 Bl) and further in view of IBM - IP.com Prior Art Database Technical Disclosure (IP.com Number: IPCOM000178039D). 2. Claims 2–5 are rejected under 35 U.S.C. § 102(a)(l) as being anticipated by Pogodin et al. (US 8402359 Bl). Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 6, 7 103 IBM - IP.com Prior Art Database Technical Disclosure ’39, Bauersfeld, IBM - IP.com Prior Art Database Technical Disclosure ’81 2–5 102(a)(1) Pogodin 2 The § 101 rejection ground was withdrawn by the Examiner, and thus, not before us for review. Ans. 6. Appeal 2019-004011 Application 15/044,165 4 OPINION Claims 1, 6 and 7 stand rejected under AIA 35 U.S.C. § 103 Appellant argues inter alia that the Examiner’s reliance on IBM ’39 is misplaced as the reference does not teach “flagging” websites to generate a “user selected” list. Appeal Br. 8. The Examiner finds that IBM ’39 teaches that an indication of the order in which each node has been visited would be displayed (i.e., a flagging) and each element in the linked-list should store sufficient information to be able to give an indication of how recently a particular node has been visited, (i.e. a flagging), for example a time-stamp. Ans. 8 (citing pp. 2–3).3 We agree with Appellant the relied upon reference does not teach or suggest the limitation of “flagging individual websites of the plurality of websites to generate a user selected subset of the plurality of websites” as recited in claim 1. To the extent that IBM ’39 teaches collapsing 11 items to only 6 items to make it easier to locate the relevant term, the information is represented without the user “flagging” the websites to generate a user selected subset of the plurality of websites. See IBM ’39, p. 2. We agree with Appellant that in IBM ’39 the user is not selecting (i.e., flagging) anything from the set of websites that had already been visited. See Reply. Br. 3. We also agree with Appellant that the “book-marking” further described in the Answer, to the extent that it may constitute “flagging,” falls short because the Examiner did not address how this “flagging” produces the 3 The Examiner cites to pages 1–4, we consider this an inadvertent error because the reference only has pages 1–3. Appeal 2019-004011 Application 15/044,165 5 claimed result of a “hierarchical representation of the user selected subset and only the user selected subset and provid[ing] a traversal control with respect to the subset in accordance with the hierarchical representation.” See id. (citing Ans. 8–9). Accordingly, we reverse the Examiner’s rejection of claim 1 and for the same reasons the Examiner’s rejection of claims 6 and 7. Claims 2–5 stand rejected under 35 U.S.C. 102 as being anticipated Although this rejection has not been withdrawn (Ans. 3), the Examiner does not address this rejection in the Answer. The Final Rejection merely addresses the dependent from claim 1, claim limitations 2–5 without addressing how Pogodin anticipates the limitations of independent claim 1 from which claims 2–5 depend. See Final Act. 8–9. Furthermore, the Examiner does not respond to Appellant’s arguments (see Appeal Br. 10). Accordingly, we reverse the Examiner’s rejections of claims 2–5 because the Examiner failed to show anticipation of independent claim 1 from which claims 2–5 depend. CONCLUSION The Examiner’s decision to reject claims 1–7 is REVERSED. Appeal 2019-004011 Application 15/044,165 6 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 7 103 IBM - IP.comPrior Art Database Technical Disclosure ’39, Bauersfeld, IBM - IP.com Prior Art Database Technical Disclosure ’81 1, 6, 7 2–5 102(a)(1) Pogodin 2–5 Overall Outcome 1–7 REVERSED Copy with citationCopy as parenthetical citation