Ex Parte Kulkarni

Patent Trial and Appeal Board

Jan 22, 2014

11549023 (P.T.A.B. Jan. 22, 2014)

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.
11/549,023 10/12/2006 Sarang Kulkarni 2006P57016 US 6291
45113 7590 01/22/2014
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
EDWARDS, LINGLAN E
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
01/22/2014 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 SARANG KULKARNI
____________

Appeal 2011-013039
Application 11/549,023
Technology Center 2400
____________

Before JEFFREY S. SMITH, BRUCE R. WINSOR,
and LARRY J. HUME, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant
1
appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-17, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1
The real party in interest identified by Appellant is Siemens Product
Lifecycle Management Software Inc. App. Br. 4.
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2
STATEMENT OF THE CASE
Appellant’s disclosure relates to Uniform Resource Identifier (URI)
2

redirect methods and more specifically, to time-sensitive URI mapping.
Spec. ¶ 1. Claim 1, which is illustrative, reads as follows:
1. A method of supporting legacy URIs, comprising
the steps of:
receiving a request for a data in a data processing system;
initializing said request with at least an expiration
identifier by the data processing system;
determining, by the data processing system, a redirection
type based on a current date, comprising the steps
of
if said current date is less than said expiration
identifier, then use a meta tag redirect; and
if said current date is greater than or equal to said
expiration identifier, then use a status code
redirect;
mapping said URI to a redirect-URI by the data
processing system according to the determined
redirection type.

The Examiner relies on the following prior art in rejecting the claims:
Subramanian US 2005/0140694 A1 June 30, 2005
Tip of the Day Redirect Based on Time of Day Using
JavaScript, Web publication at http://www.devx.com/tips/Tip/13026.
dated June 4, 1999 (hereinafter “DevX”).
Tutorial - Giving search engine spiders direction with a 301
redirect, Web publication at
http://www.tamingthebeast.net/articles3/spiders-301-redirect.htm
recorded on archive.org, dated June 4, 2003 (hereinafter
“Tamingthebeast”).

2
“Uniform Resource Locator (URL)” is a synonym for “URI.” Spec. ¶ 2.
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http://www.seocompany.ca/seo/url-redirect.html, Web
publication at http://www.seocompany.ca/seo/url-
redirect.htmlrecorded on archive.org dated Sept. 10, 2004 (hereinafter
“SEO”).
Different forms of redirects: permanent 301, temporary 302,
javascript, meta-refresh, Web publication at
http://oyoy.eu/huh/redirects/, recorded on archive.org, dated June 11,
2007 (hereinafter “Oyoy”).

Claims 1-5, 8-13, 16, and 17 stand rejected under 35 U.S.C. § 103(a)
as obvious over DevX, SEO, Tamingthebeast, and Oyoy. Ans. 5-9.
Claims 6, 7, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
obvious over DevX, SEO, Tamingthebeast, Oyoy, and Subramanian . Ans.
9-11.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed May 27, 2011; “Reply Br.” filed Aug. 22, 2011) and the Answer
(“Ans.” mailed June 22, 2011) for the respective positions of Appellant and
the Examiner. Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

ISSUES
Were the references cited by the Examiner from the Internet available
to the public at a date that makes them prior art to Appellant’s Application?
Does DevX, when combined with SEO and Tamingthebeast, teach or
suggest “determining . . . a redirection type based on a current date,” as
recited in claim 1?
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Does DevX, when combined with SEO and Tamingthebeast, teach or
suggest an “expiration identifier is a date,” as recited in claim 3?
Does DevX, when combined with SEO and Tamingthebeast, teach or
suggest an “expiration identifier is a special format,” as recited in claim 4?
Does DevX, when combined with SEO and Tamingthebeast, teach or
suggest an “expiration identifier is one of a date or a special format,” as
recited in claim 5?
Is Subramanian analogous art with regard to Appellant’s invention?

ANALYSIS
AVAILABILITY OF REFERENCES
Appellant contends “[t]he various websites may include some date
information, but there is no evidence of record that these other websites or
their purported dates are a true and correct copy of what was publically
available on the respective dates.” App. Br. 22; see also Reply Br. 13.
We disagree. The following table identifies the evidence of record
regarding the availability to the public of the references from the Internet
and their content relied on by the Examiner:
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Table 1
Reference Evidence reference was
available to the public in
its present form before the
Appellant’s Oct. 12, 2006
filing date

Evidence reference was
not available to the public
in its present form before
the Appellant’s Oct. 12,
2006 filing date
DevX Reference is “Tip of the
Day” for the date June 4,
1999 (DevX; Ans. 4, 12)
Reference was saved and
indexed by web.archive.org
on May 7, 2005 (Internet
Archive Wayback Machine;
Ans. 12)

Reference was retrieved
Mar. 2, 2010 (DevX)
Reference indicates a
“modified date” that
matches a retrieval date of
May 26, 2011 (App. Br.
22)
Reference bears a
copyright date of 2010
SEO Reference was saved and
indexed by web.archive.org
on Sept. 10, 2004 (SEO;
Internet Archive Wayback
Machine; Ans. 4)
Reference bears a copyright
date of 2004 (SEO)

Reference was retrieved
Mar. 2, 2010 (SEO)

Tamingthebeast Reference was saved and
indexed by web.archive.org
on June 4, 2003
(Tamingthebeast; Ans. 4)
Reference bears a copyright
date of 1999-2003
(Tamingthebeast)

Reference was retrieved
Mar. 1, 2010
(Tamingthebeast)

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Oyoy None

Reference was retrieved
Mar. 2, 2010 (Oyoy)
Reference was saved and
indexed by web.archive.org
on June 11, 2007 (Oyoy;
Internet Archive Wayback
Machine; Ans. 5-6)

We find there is evidence of record regarding the date the websites
and their content, as set forth in the copies relied on by the Examiner, were
available to the public. We further find that, weighing the relative values of
the evidence, the preponderance of the evidence demonstrates that DevX,
SEO, and Tamingthebeast and their respective content were available to the
public as of Appellant’s October 12, 2006 filing date (Ans. 2), and,
therefore, qualify as prior art against Appellant’s claims. We find that the
preponderance of the evidence does not indicate that Oyoy was available to
the public prior to Appellant’s filing date. Accordingly, the Examiner’s
reliance on Oyoy in rejecting the claims was error.
Oyoy was relied on by the Examiner to teach that a “301 permanent
redirect signals the search engine that redirection target URL should replace
the old one,” (Ans. 7). The Examiner relies on Tamingthebeast for the same
teaching:
The 301 redirect is the safest way to preserve your
ranking. On the next spidering, the search engine robot will
obey the rule indicated in your .htaccess file. . . . In the next
update, the old file name and path will be dropped and replaced
with the new one. Most importantly, the 301 redirect is
recognized by the mightiest of search engines – Google.
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Tamingthebeast, p. 4. Accordingly, Oyoy is cumulative with
Tamingthebeast and the Examiner’s error was harmless error.
In discussing Appellant’s further contentions, we place no reliance on
the teachings of Oyoy.
3

REJECTION OF CLAIMS 1-5, 8-13, 16, AND 17 UNDER 35 U.S.C. § 103(A)
OVER DEVX, SEO, AND TAMINGTHEBEAST
Claims 1, 9, and 17
The Examiner finds that DevX teaches or suggests redirecting a
request for a URI (i.e., URL) based on a current date. Ans. 6. Appellant
contends “DevX doesn't do any redirection based on a current date -- DevX
is specifically redirecting based on time of day, without regard to the date.”
App. Br. 27. The Examiner explains that time of day and date are both well-
known measurements of time, differing only in their “granularity.” Ans. 13-
14. Accordingly, it would have been obvious to one of ordinary skill in the
art from DevX’s teaching of making a redirect conditional on time of day to
make a redirect conditional on a more granular measurement of time, such as
date. Ans. 14.
We agree with the Examiner for the reasons stated by the Examiner.
One of ordinary skill in the art, who is a person of ordinary creativity and
not an automaton, KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007),
and whose inferences and creative steps we may consider, id. at 418, would
have learned from DevX that URI requests may be conditionally redirected

3
The fact that we rely on fewer than all of the references the Examiner
applied does not, in itself, warrant a new ground of rejection. In re Bush,
296 F.2d 491,496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA
1966).

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by comparing a current time parameter to an identifier. For example, in
DevX’s example code statement “if ((currentHour < 6) | | (currentHour >
17)) {window.location = nightURL;} else {window.location = dayURL;}”
currentHour is a time parameter and each of the values 6 and 17 is an
identifier, i.e., an “expiration identifier” as recited in claim 1. See DevX, p.
1. One of ordinary skill in the art would have understood that selecting the
units for the time parameter is merely a matter of obvious engineering
choice. We note that nothing in the claim precludes the use of more than
one expiration identifier or precludes alternating between types of redirects.
Appellant contends “DevX . . . does not teach determining a
redirection type based on the time of day. Rather, while ‘dayURL’ and
‘nightURL’ are not specifically described at all, they are certainly treated as
if they are standard, simple URLs, and certainly of the same ‘type.’” App.
Br. 28. Appellant relatedly contends as follows:
SEO discusses types of redirects in general, but does not and
cannot do this conditionally based on any test with regard to the
date or anything else -- these are all types of required
redirects/pointers. The types of redirects used in SEO are all
discussed as exclusive alternatives, and some advantages of
different types of redirects are discussed, but there is no concept
at all that different types of redirects may be determined
conditionally by the system depending on the date or anything
else, as in the current claims.
App. Br. 29-30. Appellant similarly argues that Tamingthebeast teaches
different types of redirects, but does not teach varying the type of redirect
conditionally. App. Br. 30.
The Examiner asserts that “[t]he Appellant does not provide a
definition for ‘redirection types’ or ‘types’ in the specification. Nowhere in
the specification did the Appellant discuss what a ‘redirection type’ is or is
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not.” Ans. 16. Claim construction is an issue of law that we review de
novo. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed.
Cir. 2009). Claims are not to be read in a vacuum, but must be given their
broadest reasonable interpretation in light of the Specification as it would be
interpreted by ordinary artisans. Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc). A pertinent dictionary definition is “type
. . . n . . . 4 a: qualities common to a number of individuals that distinguish
them as an identifiable class . . . d: a particular kind, class, or group.”
MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 1278 (10th ed. 1999). We
construe a redirection type to be a kind, class, or group of redirects having
common qualities that distinguish them as an identifiable class, and, in
particular, in the context of claim 1, a redirection type encompasses the
classes of meta tag redirects and status code redirects, but does not
encompass individual redirect destination URIs. Accordingly, we agree that
DevX does not teach different redirection types, as properly construed.
That said, however, the Examiner also relies on SEO and
Tamingthebeast to teach redirection types. See Ans. 6-7; see also Bush, 296
F.2d at 496. Appellant concedes that SEO and Tamingthebeast teach
different redirection types, but asserts that SEO and Tamingthebeast teach
that the redirection types are exclusive alternatives. See App. Br. 29-30.
Appellant does not, however, point us to any specific passage of either SEO
or Tamingthebeast that indicates that the described redirection types are
exclusive alternatives. Therefore, we conclude, on this record, that SEO and
Tamingthebeast are, at most, silent as to whether the described redirection
types are exclusive alternatives or can be used in combination.
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The essence of Appellant’s argument is that although DevX may teach
time-conditional redirects it does not teach the use of different redirection
types, and although SEO and Tamingthebeast teach different redirection
types, they do not teach conditional redirection. Appellant’s argument is
unpersuasive because it attacks the references individually rather than
addressing the combination articulated by the Examiner. “[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.” In re Keller, 642
F.2d 413, 426 (CCPA 1981).
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. 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.
Id. at 425 (citations omitted) (emphasis added).
Appellant has failed to persuade us that the Examiner’s rejection of
claim 1 was reversible error. Accordingly, we sustain the rejection of claim
1 and claims 9 and 17, which were argued together with claim 1.
Claims 2 and 10
Appellant argues claims 2 and 10 relying on the arguments made for
claims 1 and 9, from which they respectively depend, and were not
otherwise separately argued with particularity. See App. Br. 31. For the
reasons discussed above regarding claim 1, we sustain the rejection of
claims 2 and 10.
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Claims 3 and 11
Appellant argues claims 3 and 11 relying on the arguments made for
claims 1 and 9, from which they respectively depend. App. Br. 31.
Appellant further contends that DevX does not teach or suggest that the
expiration identifier is a date. Id. Parallel to our discussion above with
regard to the “current date” limitation of claim 1, DevX teaches an
expiration identifier that is a time (e.g., 6 am or 6 pm). See DevX, p. 1. We
find that one of ordinary skill in the art would have understood date to
merely be different unit of measurement for time, an obvious engineering
choice.
Therefore, and for the reasons discussed above regarding claim 1, we
sustain the rejection of claims 3 and 11.
Claims 4 and 12
Appellant argues claims 4 and 12 relying on the arguments made for
claims 1 and 9, from which they respectively depend. Appellant further
contends as follows:
[DevX’s] “currentTime” and “currentHour” variables are not
special formats as used in the claims. The claims require a
comparison between the current date and the special format
expiration indicator -- DevX does not compare “currentTime” or
“currentHour” with themselves or each other, and so the claim
limitations cannot be met by the proposed combination.
. . . .
Neither the Examiner's Answer nor the Final Office Action
show anything in any special format at all that can be considered
an “expiration identifier” and is compared to the current date, as
claimed.
Reply Br. 20.
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The Examiner explains that “[t]he original specification does not
provide a definition for “special format”, therefore, any specific format used
is a special format.” Ans. 20.
We agree with Appellant. We note that Appellant’s Specification
states “[t]he expiration identifier can be in a date format, or a special format,
such as NOW and NEVER.” Spec. ¶ 26. We give the term “special format”
its broadest reasonable interpretation in light of Appellant’s Specification, In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), without importing
limitations from the Specification into the claims, SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). We conclude that
in light of the Appellant’s Specification (see Spec. ¶ 26), a “special format”
is any expiration date format that is not a date or time format. DevX’s
expiration identifiers, “6” and “17” represent hours of the day and are,
therefore, in time format. See DevX, p. 1. Accordingly, the Examiner has
not demonstrated that DevX, or any other reference cited with regard to
claim 4, teaches a “special format” for an expiration identifier.
Therefore, we do not sustain the rejection of claim 4 or claim 12.
Claims 5 and 13
Appellant argues claims 5 and 13 relying on the arguments made for
claims 1 and 9, from which they respectively depend. Reply Br. 32.
Appellant further contends “[t]these claims require that the expiration
identifier is one of a date or a special format. This is not taught or suggested
by any combination of the cited references, in the context of the remaining
limitations of the parent claims.” App. Br. 33.
Claim 5 claims the limitations of claims 3 and 4 in the alternative.
Giving the claim its broadest reasonable interpretation, we conclude that the
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alternative recitation of claim 1 is taught or suggested by the prior art if
either recited alternative is taught or suggested by the prior art. As we found
above regarding claim 3, DevX teaches or suggests an expiration identifier
that is in a date (i.e., time) format.
For the reasons discussed above regarding claims 1 and 3, we sustain
the rejection of claims 5 and 13.
Claims 8 and 16
Appellant argues claims 8 and 16 relying on the arguments made for
claim 1. App. Br. 34-35. For the reasons set forth above regarding claim 1,
we sustain the rejection of claims 8 and 16.

REJECTION OF CLAIMS 6, 7, 14, AND 15 UNDER 35 U.S.C. § 103(A) OVER
DEVX, SEO, TAMINGTHEBEAST, AND SUBRAMANIAN
The Examiner finds that “Subramanian and DevX as well as the other
references cited are all analogous art because they are from the same field of
endeavor for computer programming.” Ans. 24. Appellant contends the
Examiner erred in relying on Subramanian because Subramanian has
nothing to do with URLs, URIs, or redirects, and is, therefore, non-
analogous art. App. Br. 23. We agree with Appellant.
Whether a prior art reference is analogous to the claimed invention
such that it qualifies as prior art for a rejection under 35 U.S.C. § 103 is a
question of fact. Innovention Toys, LLC v. MGA Entm't., Inc., 637 F.3d
1314, 1321 (Fed. Cir. 2011). In KSR, the Supreme Court “direct[ed] us to
construe the scope of analogous art broadly.” Wyers v. Master Lock Co.,
616 F.3d 1231, 1238 (Fed. Cir. 2010) (citing KSR, 550 U.S. at 402); see
KSR, 550 U.S. at 417, 420. In an obviousness analysis,
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[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004).
Determining whether art is in the same field of endeavor as
Appellant’s claimed invention “requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention.” Bigio, 381 F.3d at 1325.
Although the Examiner is correct that the Examiner’s claimed invention and
the cited references are all broadly directed to computer programming (Ans.
24), Subramanian diverges substantially from the “the embodiments,
function, and structure of [Appellant’s] claimed invention,” Bigio, 381 F.3d
at 1325, and the other cited prior art. Appellant’s invention and the DevX,
SEO, and Tamingthebeast references are in the field of locating websites on
the Internet. See, e.g., Spec. ¶ 2. Subramanian, on the other hand, is in the
field of combining media types such as 2D, 3D, video, audio, text, and
imaging. See Subramanian, Abstract. Therefore, we find that Subramanian
is not from the same field of endeavor as Appellant’s invention and does not
meet the first test for analogous art. Accordingly, the Examiner erred in
finding that Subramanian is analogous art by virtue of being from the same
field of endeavor.
Turning to the second test for analogous art, “[a] reference is
reasonably pertinent if, even though it may be in a different field from that
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of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem.” Klein, 647 F.3d at 1348 (quoting In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992)). Subramanian is concerned with
“output[ting] complex graphics and audiovisual data in an efficient manner”
(see Subramanian, ¶ 0006). One of ordinary skill in the art faced with the
problem of “combin[ing] . . . redirect techniques [to] (1) provide[] the user
with a redirect notification for a period of time, and (2) automatically
redirect[] the user following the expiration of the time period” (Spec. ¶ 7),
would not have been reasonably expected to look to the Subramanian’s
graphics and audiovisual processing for help. In other words, one of
ordinary skill in the art would not have found Subramanian’s teachings
reasonably pertinent to Appellant’s problem; Subramanian does not meet the
second test for analogous art.
We note that the Examiner’s finding that “Subramanian teaches using
a special time value for representing a special point in time, one of ordinary
skill in the art would recognize that such representation can be applied in
any programming environment for representing time when ‘time’ is
involved” (Ans. 24) is little more than a restatement of the rejection made by
the Examiner and does not explain why Subramanian is reasonably pertinent
to the Appellant’s problem of combining re-direct techniques.
Accordingly, the Appellant has persuaded us that the Examiner erred
in finding Subramanian to be analogous art. Therefore, we do not sustain
the rejection of claims 6, 7, 14, and 15, which were rejected relying on the
teachings of Subramanian.

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ORDER
The decision of the Examiner to reject claims 1-3, 5, 8-11, 13, 16, and
17 is affirmed.
The decision of the Examiner to reject claims 4, 6, 7, 12, 14, and 15 is
reversed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

kis