Obviousness

Here is a detailed analysis of the obviousness of U.S. Patent 5,742,768 based on the cited prior art.

Obviousness Analysis under 35 U.S.C. § 103

This analysis evaluates whether the claimed invention in U.S. Patent 5,742,768 would have been obvious to a Person Having Ordinary Skill in the Art (PHOSITA) at the time of the invention, which has a priority date of July 16, 1996. A PHOSITA in this context would be a programmer with experience in web development, including HTML, and familiarity with emerging technologies like the Java programming language and applets.

The core inventive concept of the '768 patent is the use of an executable applet, downloaded with a web page, to create and manage a menu embedded within the web page itself. This menu provides multiple hyperlinks that can be revealed through a single user action (e.g., a mouse-over), thereby overcoming the standard "one link, one action" paradigm of conventional HTML.

The primary prior art references cited by the patent examiner are:

• U.S. Patent 5,572,643 to Judson (filed Oct. 19, 1995), hereafter "Judson."
• A Usenet post by John C. Dhabolt titled "Re: Help with Menus" dated June 13, 1996, hereafter "Dhabolt."

Analysis of Independent Claim 1

Claim 1: A method for providing a web page having an embedded menu to a web browser, comprising: receiving a request for a web page; packaging the web page and an applet; and transmitting them to the browser, wherein the applet creates and manages an embedded menu with a plurality of links accessible through one action in the displayed web page.

An argument for obviousness can be constructed by combining the general knowledge of how applets worked in 1996 with the teachings of Judson and Dhabolt.

1. Receiving, Packaging, and Transmitting Web Page and Applet: These steps describe the fundamental operation of a web server delivering a web page containing an applet. By 1996, with the release of Java and its integration into browsers like Netscape Navigator, this client-server process was well-understood and constituted standard practice for web developers. This is background knowledge a PHOSITA would possess.

2. Applet Creates and Manages an Embedded Menu with a Plurality of Links: This is the crux of the claim.

   • Judson (US 5,572,643) discloses a "Web browser with dynamic display of information objects during linking." Judson teaches improving the user experience by providing more information during navigation. While it doesn't explicitly describe a multi-link menu triggered by a single mouse-over, it addresses the same problem as the '768 patent: the inefficiency of linear, one-to-one linking in HTML. Judson's solution involves dynamically displaying related information, establishing a clear motivation to use available technologies to present navigational options more efficiently.
   • Dhabolt, a Usenet posting from just one month before the '768 patent's filing date, provides a critical piece of the puzzle. The discussion "Help with Menus" was part of an ongoing public conversation among developers about how to implement user interface elements like menus using the new Java language within a web page. These discussions included creating pop-up menus that could contain lists of selectable items (which could be links). The very existence of this public query and discussion demonstrates that the idea of creating menus within a web browser's context was not only contemplated but was an active area of development in the art.

Motivation to Combine: A PHOSITA, aware of the navigational shortcomings of HTML as identified by Judson, would have been motivated to find a better way to present users with multiple links. The emerging Java applet technology was the clear tool for adding such dynamic functionality that HTML lacked. Upon encountering public discussions like Dhabolt, which concerned the specific implementation of menus using Java, the PHOSITA would have found a direct path to a solution. Combining Judson's goal (more efficient navigation) with the specific technique being discussed in the art (Java menus, as seen in Dhabolt) would lead directly to an applet that generates a menu of links. Placing this menu "embedded" in the page, rather than in a separate OS-level window, would be a natural design choice to keep the user experience contained within the browser context. Therefore, the combination of known applet functionality, the problem outlined in Judson, and the solution path discussed in Dhabolt would render the invention of Claim 1 obvious.

Analysis of Independent Claim 9

Claim 9: A method for displaying a web page having an embedded menu, comprising: downloading a web page and an applet; displaying the web page; and executing the applet, the applet creating and managing an embedded menu with a plurality of links accessible through one action.

This claim recites the client-side (browser) method corresponding to the server-side method of Claim 1. The obviousness argument is parallel and equally strong.

1. Downloading, Displaying, and Executing: This describes the standard operation of an applet-capable web browser in 1996. It was a fundamental, non-inventive process.

2. Applet Creating and Managing an Embedded Menu: As argued for Claim 1, a PHOSITA would be motivated by the problem space (inefficient navigation, per Judson) to apply the known capabilities of Java applets. The public discussion in Dhabolt shows that the specific concept of creating menus with Java was known and being actively pursued in the art. Executing an applet that performs this function is the direct and predictable result of combining these known elements.

Therefore, Claim 9 would have been obvious for the same reasons as Claim 1.

Analysis of Independent Claim 16

Claim 16: A host system executing a web server... comprising: a data storage device storing a web page and an associated applet... a memory device... and a processor... executing code for the web server such that the web server is operable to: receive a request... package the web page and the applet... and transmit the web page and the applet... such that the applet creates and manages an embedded menu...

This claim rephrases the method of Claim 1 in the form of a system (a server). The patentability of a system claim rises and falls with the underlying method it is configured to perform. Since the method described in Claim 1 would have been obvious by combining the teachings of Judson and Dhabolt with the general knowledge of a PHOSITA, a standard computer system (processor, memory, storage) programmed to execute this obvious method would itself be obvious. No special or non-standard hardware is claimed; the claim rests entirely on the functionality of the software, which has been shown to be obvious.

Conclusion

The independent claims of U.S. Patent 5,742,768 appear vulnerable to an obviousness challenge under 35 U.S.C. § 103. The patent addresses a known problem in the art—the limitations of linear HTML navigation—that prior art like Judson had already sought to solve. The specific solution of using a Java applet to create a menu was a topic of public discussion among developers, as evidenced by the Dhabolt Usenet post. A person having ordinary skill in the art in mid-1996 would have been motivated to combine the known functionality of applets with the ideas circulating in the development community to create the claimed embedded menu system as a direct and predictable solution to a well-known problem.