Ex Parte Holte

Patent Trial and Appeal Board

Apr 29, 2016

12598909 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/598,909 03/23/2010
120944 7590 05/03/2016
Andrews Kurth LLP
Attention: Intellectual Property - Patent Docket
450 Lexington A venue
New York, NY 10017
FIRST NAMED INVENTOR
Bjorn Holte
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
189255.US.02-32920-215963 4651
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
ptony@ andrewskurth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BJORN HOLTE
Appeal 2014-004675
Application 12/598,909
Technology Center 3600
Before DEBRA K. STEPHENS, MICHAEL R. ZECHER, and
BRUCE R. WINSOR, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).
STATEMENT OF THE INVENTION
According to Appellant, the claims are directed to a computer-
accessible medium, method, and system for assisting in navigating the
Appeal2014-004675
Application 12/598,909
internet (Abstract). Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A computer-accessible medium having stored thereon
computer executable instructions for displaying one or more
menus to assist with navigation of a web site, wherein, when a
computer arrangement executes instructions, the computer
arrangement is configured to:
(a) receive first information from a client which is
associated with the web site;
(b) obtain second information relating to a link structure
of the web site;
( c) provide third information for generating at least one of
a menu-based structure or a hierarchal structure as a function of
the second information; and
( d) identify and/ or separate web page links and web page
content associated with the web site,
wherein the second information is at least one of generated
or obtained independently from one or more processors
associated with the web site, and wherein the at least one of the
menu-based structure or the hierarchal structure comprises a
plurality of items.
RELATED APPEAL
We previously decided an appeal in related U.S. Patent Application
11/364,393 on February 14, 2012. See Exparte Holte, No. 2011-008820,
2012 WL 601096 (BPAI 2012) (non-precedential) (reversing the Examiner's
obviousness rejections).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is listed as follows:
Tu
Cross
US 2004/0027391 Al
US 2006/0287858 Al
2
Feb. 12,2004
Dec. 21, 2006
Appeal2014-004675
Application 12/598,909
REJECTIONS 1
Claims 1, 8, 11, 18, and 21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Tu (Final Act. 5).
Claims 2-7, 12-17, 22, and 23 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Tu and Cross (Final Act. 6-10). 2
Claims 9, 10, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tu, Cross, and Official Notice (Final Act. 10-11).
ISSUE
35 US.C. § 102(b): Claims 1, 8, 11, 18, and 21
Appellant argues its invention is not anticipated by Tu (App. Br. 16-
20). The issue presented by the arguments is:
Issue: Has the Examiner erred in finding Tu discloses "wherein the
second information is at least one of generated or obtained independently
from one or more processors associated with the web site" as recited in
independent claim 1, and commensurately recited in independent claims 11
and 21?
ANALYSIS
1 The rejection of claims 11-20 under 35 U.S.C. § 101 (Final Act. 2-3), has
been withdrawn by the Examiner (Ans. 8-9).
2 We note the Examiner included claim 11 in the heading of this obviousness
rejection (Final Act. 6). However, claim 11 is not addressed in this
obviousness rejection but, is instead addressed in the rejection under 35
U.S.C. § 102(b). Thus, we consider its inclusion a harmless typographical
error.
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Application 12/598,909
Appellant argues Tu does not disclose "obtain[ing] second
information relating to a link structure of the web site" and "wherein the
second information is at least one of generated or obtained independently
from one or more processors associated with the web site," as recited in
independent claim 1, and commensurately recited in independent claims 11
and 21 (App. Br. 16-20). Appellant contends Tu discloses web site 20
comprises computer code 22 which may be linked to a web server at web
site 20 (id. at 17). However, Appellant argues, although Tu discloses an
algorithm 23 in the computer code 22 enables a user 12 to navigate the
linked web-page system according to a hierarchical menu structure, Tu does
not teach the menu site is generated independently from the processor
associated with the web site (id. at 17-18). Moreover, Appellant asserts
that, although Tu states the computer code may be linked to a web server,
that does not mean the computer code may not be linked to a web server (id.
at 18). Tu has no description, Appellant argues, of the computer code not
being linked to the web server, but instead, in all references, links the
computer code to the webserver (id.). Appellant further contends, if the
computer code does not have to be run by the webserver as the Examiner
finds, Tu has no disclosure of any mechanism that can run that computer
code (id. at 19).
Tu states "[ t ]he web site 20 comprises, or is coupled to as shown in
FIG. 1, a computer code 22 which may be linked to a web server at the web
site 20" (Tu i-f 7 6) (emphasis omitted). Thus, the Examiner finds Tu does not
make the associated web server a compulsory means for generating the
menu (Ans. 9). According to the Examiner, because Tu discloses the
computer code may or may not be linked to the web server, the computer
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Appeal2014-004675
Application 12/598,909
code may be easily associated with another server at a different location not
directly linked to web site 20 (id.).
We are persuaded by Appellant's argument. Anticipation is
established only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a claimed
invention, as well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. App. Dig. Data Sys., Inc., 730
F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721F.2d1540, 1554 (Fed. Cir. 1983), cert. denied, 469 U.S.
851(1984). Here, we are persuaded Tu does not disclose, expressly or under
the principles of inherency, the second information is generated or obtained
independently from one or more processors associated with the web site.
Although Tu states the web site 20 comprises, or is coupled to, a computer
code 22 which may be linked to a web server at the web site 20 (Tu i-f 76),
we agree with Appellant that this does not disclose, expressly or inherently,
the second information is generated or obtained independently from the web
server associated with the web site, i.e., no other processor or memory is
described as generating or storing the computer code.
The Examiner's determination that "it is obvious to make a
component or process separable"; therefore, separation of the menu
generation process from the process associated with the web site is an
obvious modification incapable of distinguishing the claim for patentability
(Ans. 9--10) is misplaced as the Examiner has rejected independent claims 1,
11, and 21 for anticipation by Tu. Thus, we do not consider whether an
ordinarily skilled artisan would have found it obvious to modify the system
of Tu to include a second, separate processor.
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Application 12/598,909
Accordingly, we are not persuaded Tu discloses the invention as
recited in independent claims 1, 11, and 21. Dependent claims 8 and 18
stand with their respective independent claims. Therefore, we are
constrained by this record to reverse the rejection of claims 1, 8, 11, 18, and
21under35 U.S.C. § 102(b) for anticipation by Tu.
35 US.C. § 103(a): Claims 2-7, 12-17, 22, and 23 and Claims 9, 10, 19,
and 20
Claims 2-7, 12-17, 22, and 23 each depend from one of independent
claims 1, 11, and 21. The Examiner has not shown Cross cures the
deficiencies of Tu; therefore, claims 2-7, 12-17, 22, and 23 stand with their
respective independent claims. Claims 9, 10, and 19 each depend from one
of independent claims 1 and 11. Similarly, the Examiner has not shown how
Cross and/or Official Notice cures the deficiencies of Tu; therefore, claims
9, 10, 19, and 20 stand with their respective independent claims,
Accordingly, we do not sustain the rejections of(l) claims 2-7, 12-17, 22,
and 23 under 35 U.S.C. § 103(a) for obviousness over Tu and Cross; and (2)
claims 9, 10, 19, and 20 under 35 U.S.C. § 103(a) for obviousness over Tu,
Cross, and Official Notice.
REJECTION OF CLAIMS 1-10 UNDER 37 C.F.R. § 41.50(b)
We make the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b).
Rejection:
Claims 1-10 are rejected under 35 U.S.C. § 101.
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Application 12/598,909
Claims 1-10 recite "[a] computer-accessible medium having stored
thereon computer executable instructions." However, the Specification is
devoid of any definition of "computer-accessible medium" and specifically
any definition or description that excludes a signal propagation medium or
transitory medium. Thus, applying the broadest reasonable interpretation,
the recited "computer-accessible medium" encompasses transitory
propagating signals.
Signals are unpatentable under§ 101. In re Nuijten, 500 F.3d 1346,
1355 (Fed. Cir. 2007). The United States Court of Appeals for the Federal
Circuit indicated: "[a] transitory, propagating signal like Nuijten's is not a
'process, machine, manufacture, or composition of matter.' Those four
categories define the explicit scope and reach of subject matter patentable
under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject
matter." Nuijten, 500 F.3d at 1357. According to U.S. Patent & Trademark
Office (USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments ... embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. Such claims ... should be rejected under 35
U.S.C. [§] 101, for at least this reason.
For example, machine readable media can encompass non-
statutory transitory forms of signal transmission, such as, a
propagating electrical or electromagnetic signal per se. See In re
Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007).
Manual of Patent Examining Procedures ("MPEP") § 2106(1) (9th Ed., Rev.
9, Nov. 2015) (emphasis added).
The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer [readable] medium ... typically covers forms of non-
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Application 12/598,909
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media .... When the broadest reasonable interpretation
of a claim covers a signal per se, the claim must be rejected under
35 U.S.C. § 101 as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); see also Ex Parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (holding
that the recitation of "storage" in a claim to a computer readable medium
does not, in itself, preclude the claim from encompassing a transitory
medium).
Therefore, we conclude claims 1-10 are not directed toward statutory
subject matter under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1, 8, 11, 18, and 21 under 35
U.S.C. § 102(b) as being anticipated by Tu is reversed.
The Examiner's rejection of claims 2-7, 12-17, 22, and 23 under 35
U.S.C. § 103(a) as being unpatentable over Tu and Cross is reversed.
The Examiner's rejection of claims 9, 10, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Tu, Cross, and Otlicial Notice is
reversed.
In a new ground of rejection, we reject claims 1-10 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2012). Section 41.50(b) of Title 37 of the Code of
Federal Regulations provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
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Application 12/598,909
Section 41.50(b) also provides that the Appellant, WITHfN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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