Ex Parte Forbes

Patent Trial and Appeal Board

Oct 31, 2012

11412366 (P.T.A.B. Oct. 31, 2012)

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.
11/412,366 04/27/2006 Stephen K. Forbes 2002-266 / PU05 0434 7857
54472 7590 10/31/2012
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
CHANG, TOM Y
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN K. FORBES
____________

Appeal 2010-005606
Application 11/412,366
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005606
Application 11/412,366
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STATEMENT OF THE CASE
The Patent Examiner finally rejected claims 1-4, 6-14, and 16-28.
Claims 5 and 15 were canceled. (App. Br. 2). Appellant appeals therefrom
under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to a method of locating and accessing a
webpage using a phone number. (See Spec. 1) Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method of acquiring web access information for
accessing a web page of a target entity implemented by an
access terminal, said method comprising:
generating, responsive to user input, a web access
information request;
addressing the web access information request using a
telephone number of the target entity;
sending the web access information request to a web
access information server maintained by the target entity; and
receiving web access information for accessing a web
page of the target entity from the web access information server
in response to the request.
(Disputed limitations emphasized).

REJECTIONS
1. Claims 1-4, 11-14, and 21-23 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by U.S. Patent No. 6,097,793 (“Jändel”).
(Ans. 3-5).
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2. Claims 6-10, 16-20, and 24-28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jändel and U.S. Patent Application Pub.
No. 2002/0073203 A1(“Gilleland”). (Ans. 5-7).

GROUPING OF CLAIMS
Based on Appellant's arguments, we will decide the appeal of the
anticipation rejection of independent claims 1, 11, and 21 on the basis of
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
We address the rejections of the remaining claims separately, infra.

ANALYSIS
CLAIM 1
At the outset, we conclude that Appellant’s arguments urging
patentability are predicated on non-functional descriptive material. Non-
functional descriptive material is not accorded patentable weight.
Specifically, the claimed “web access information request,” “telephone
number,” “web access information,” and “webpage of the target entity,” are
merely arrangements of data that are non-functional descriptive material per
se. As such, claim 1 does not positively recite such claim terms being used
to change or alter any machine or computer function. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir.
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Application 11/412,366
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2006).1 See also MPEP §2111.05, Eighth Edition, Rev. 9, Aug. 2012). In
particular, the claimed feature in Appellant’s argument, “addressing the web
access information request using a telephone number of the target entity”
does not positively recite that the “telephone number” alters any computer or
machine function. (App. Br. 7-9; claim 1).
Even if we assume arguendo that the nonfunctional descriptive
material may be accorded weight, we agree with the Examiner’s finding of
anticipation for claim 1 for the reasons discussed below in sections A and B.
A.
Issue A: Under §102, did the Examiner err in finding that the cited
Jändel reference discloses “addressing the web access information request
using a telephone number of the target entity,” within the meaning of claim
1 (emphasis added), and the commensurate language of independent claims
11 and 21?
Appellant contends that Jändel does not teach the limitation of
“addressing the web access information request using a telephone number of
the target entity,” as recited in claim 1(emphasis added). (Appl. Br. 7-9;
Reply Br. 2-3).
The Examiner finds and we agree:
In the cited section[,] Jä]ndel teaches a publicly accessible
directory where a subscriber calls a target subscriber using the

1 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure includes substantively the same guidance. See
also MPEP §2111.05 Eight Edition, Revision 9, Aug. 2012.)
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telephone number to get the target subscribers AB2 addresses.
Since the phone number is the only piece of information the
subscriber knows, it must be included request sent by the
terminal to get the AB2 addresses. Therefore it is clear that the
query/request is addressed using the telephone of the target
entity/subscriber.
(Ans. 8). We agree with the Examiner that Jändel’s use of the phone
number to address the web information request to retrieve the target entity’s
information discloses the limitation at issue. Specifically, we agree that the
broadest reasonable interpretation of “addressing the web access
information request using a telephone number” (claim 1) (emphasis added)
does not preclude using the phone number in the request to request
information related to the phone number.2 (See Ans. 8).
Appellant further contends that “addressing a query with a phone
number, as understood by those skilled in the art” means that “the query is in
fact directed or routed to the database based on the phone number.” (Reply
Br. 3) (emphasis added). However, we find Appellant’s argument
unavailing because the feature upon which Appellant’s rely –“directed or
routed to the database based on the phone number” – is not recited in the
claim. We decline Appellant’s invitation to read such limitations into the
claims.3

2 Patentability is based upon the claims. “It is the claims that measure the
invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en banc) (citations omitted). “During prosecution . . .
the PTO gives claims their ‘broadest reasonable interpretation.’” In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000)).
3 A basic canon of claim construction is that one may not read a limitation
into a claim from the written description. Renishaw PLC v. Marposs
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B.
Issue B: Under §102, did the Examiner err in finding that the cited
Jändel reference discloses “sending the web access information request to a
web access information server maintained by the target entity,” within the
meaning of claim 1, and the commensurate language of claims 11 and 21?
Appellant contends:
The Examiner nonetheless examines claim 1 as if it recited
entirely different limitations, namely “a web access information
server that stores information maintained by the target entity,”
and insists on this basis that Jä]ndel anticipates each and every
limitation of claim 1 precisely as claimed. This is clear legal
error. Because Applicant’s claim 1 explicitly recites that it is
the server itself which is maintained by the target entity, not the
information contained therein, and because the rejection admits
that the server in Jä]ndel is maintained by the network
operator, not the target subscriber, the anticipation rejection of
claim 1 is improper and should be reversed by the Board.
(Reply Br. 4) (emphasis removed).
We find Appellant’s arguments unpersuasive because we agree with
the Examiner’s broader claim construction:
Since the claims do not recite what is specifically meant by
maintaining the web access information server, maintaining the
information contained in such a server correctly meets the
limitation of the claim. The appellant may have a different
interpretation of the claims but as long as the examiner has
interpreted the claims reasonable as one of ordinary skill in the
art, the interpretation is valid.
(Ans. 10). Specifically, we conclude that the broadest reasonable
interpretation of “server” covers both hardware and/or software components.
Thus, we conclude that the broadest reasonable interpretation of

Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
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“maintain[ing]” a web access information server reads on Jändel’s
maintaining the server’s software, including information. (See Ans. 10).
This is because a server works when both the hardware and the software
(information) are maintained.
For the above reasons we are not persuaded of Examiner’s error.
Notwithstanding Appellant’s arguments, we find the weight of the
evidence supports the Examiner’s finding of anticipation.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and independent claims 11 and 21, which recite commensurate
limitations.

DEPENDENT CLAIMS 2-4, 6-10, 12-14, 16-20, AND 22-28
For the similar reasons discussed above with respect to claim 1, we
conclude that claims 2-4, 6-10, 12-14, 16-20, and 22-28 are directed to non-
functional descriptive material and are thus not accorded patentable weight.
See MPEP §2111.05 Eight Edition, Revision 9, Aug. 2012.
These dependent claims merely recite arrangements of data (e.g.,
messages, header fields, etc.) as non-functional descriptive material per se.
As such, the claims do not positively recite program data that is used to
change or alter any machine or computer function.4
Therefore, for essentially the same reasons discussed above regarding
claim 1, we also sustain the Examiner’s rejections of claims 2-4, 6-10, 12-
14, 16-20, and 22-28.

4 See n.1 supra.
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DECISION
We affirm the Examiner’s rejection of claims 1-4, 11-14, and 21-23
under § 102.
We affirm the Examiner's rejection of claims 6-10, 16-20, and 24-28
under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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