Ex Parte Bostick et al

Patent Trial and Appeal Board

Jul 29, 2016

12904779 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/904,779 10/14/2010
37945 7590 08/02/2016
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
James E. Bostick
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.
END920100165US1 6623
EXAMINER
TILLERY, RASHAWNN
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
u-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. BOSTICK, JOHN M. GANCI, JR.,
JOHN P. KAEMMERER, and CRAIG M. TRIM
Appeal2014-005046
Application 12/904, 779
Technology Center 2100
Before ELENI MANTIS MERCADER, JEFFREY A. STEPHENS, and
NORMAN H. BEAMER, Administrative Patent Judges.
Opinion for the Board filed by
Administrative Patent Judge JEFFREY A. STEPHENS.
Dissenting-In-Part Opinion filed by
Administrative Patent Judge ELENI MANTIS MERCADER.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-005046
Application 12/904,779
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1, 2, 4---6, 8-
10, 12, 14, 16, 17, 19, and 21-25, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm in part.
Claimed Subject Matter
The claimed invention generally relates to a system for adjusting
search level detail. (Title.) Claim 1, reproduced below, is illustrative:
1. A method for managing search results, the method
compnsmg:
displaying the search results in a graphical user interface,
the search results including respective universal resource
locators ("URLs") of documents matching search criteria for the
search results, respective names of the documents matching the
search criteria; respective text excerpts from the documents
matching the search criteria, and additional URLs of additional
documents for at least some of the respective, matching
documents, the additional documents related to in subject but not
matching all of the search criteria;
subsequently, in response to user input to provide less
information in the display of the search results, deleting the text
excerpts and the additional URLs from the display of the search
results and continuing to display the respective universal
resource locators ("URLs") of the documents matching the
search criteria, and the respective names of the documents
matching the search criteria.
1 The real party in interest is identified as International Business Machines
Corp. (App. Br. 2.)
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Rejections
Claims 1, 6, 8, 14, 16, and 25 stand rejected under 35 U.S.C. § 103(a)
as obvious over Haveliwala et al. (US 2010/0169297 Al, published July 1,
2010) ("Haveliwala") and Denise (US 7,934,161 Bl, issued Apr. 26, 2011).
(Final Act. 2-5.)
Claims 2, 4, 5, 9, 10, 12, 17, 19, and 21-24 stand rejected under 35
U.S.C. § 103(a) as obvious over Haveliwala, Denise, and Ray et al. (US
2007 /0204232 Al, issued Aug. 30, 2007) ("Ray"). (Final Act. 5-8.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner erred (App. Br. 6-28; Reply Br. 2-38). We agree
with Appellants the Examiner has not shown claims 22, 23, and 25 are
obvious over the cited art. We are not persuaded by Appellants' arguments
as to the remaining claims. For claims 1, 2, 4---6, 8-10, 12, 14, 16, 17, 19,
21, and 24, we adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and set forth in the
Answer (see Ans. 3-7). We highlight and address specific arguments and
findings for emphasis as follows.
Claims 1, 8, and 16
Appellants argue claim 1 as representative of claims 1, 8, and 16.
(App. Br. 6.) Appellants contend Denise does not teach continuing to
display the respective universal resource locators ("URLs '')of the
documents matching the search criteria, and the respective names of the
documents matching the search criteria, as recited in claim 1, because "the
only portion of each of the list of search results 205 in Denise that remains
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after the reformatting steps in Denise is the modified search result title."
(App. Br. 10-11; see also Reply Br. 7-8.)
Appellants' arguments regarding Denise are not persuasive of error in
the rejection, as they do not address the particular findings of the Examiner.
The Examiner finds Denise teaches continuing to display the names of the
documents matching the search criteria, and that it would have been an
obvious matter of design choice to continue displaying URLs of the
documents matching the search criteria also. (Final Act. 3--4 (citing Denise
7:22-36, Figs. 2, 3); Ans. 4--5.) We agree with these findings of the
Examiner, which Appellants have not persuasively challenged.
Appellants also contend:
Disclosing removing the search result summary, the related
links, the relevancy ratings, and the search result universal
resource locator; and modifying the search result titles in the
reformatting of list of search results 205, in Denise, is not the
same as changing whether or not related universal resource
locators of search results are displayed in a graphical user
interface concurrent with the display of each of the search results
in response to user input to provide less information in the
display of the search results.
(App. Br. 11; see also Reply Br. 8-9.) We do not agree. Denise teaches
"[i]n reformatting the list of electronic search results 205, result description
information that is associated with the electronic search results has [been]
removed (e.g., the summary, related links, relevancy ratings, and URL have
been removed)." (Denise 7:27-32 (emphasis added); see Final Act. 3.) In
addition, we agree with the Examiner that Denise teaches the claimed user
input because the formatting of the search results occurs in response to user
selection of a search result. (Ans. 3--4 (citing Denise 7:14--43; Fig. 2).)
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Thus, we agree with the Examiner that Denise teaches the disputed
limitations.
Next, Appellants argue the Examiner provides insufficient reasoning
for combining Haveliwala and Denise, and for showing that the step of
responding to user input to provide less information by deleting text excerpts
and additional URLs and continuing to display URLs and names of the
documents matching the search criteria would have been obvious. (App. Br.
12-14; Reply Br. 12-15.) According to Appellants, the Examiner states
purported advantages and assumes a legal conclusion of obviousness but
does not consider whether one of ordinary skill would have recognized the
purported advantage, had a reason to implement the purported advantage,
had the technical skill to combine the references, and also had no reason to
avoid implementing the purported advantage. (App. Br. 13-14.)
The Examiner finds one of ordinary skill in the art would have
modified the user interface of Haveliwala to include Denise's functionality
of removing certain information from the search results display in response
to user input "in an effort to provide a more user-friendly interface that is
intuitive and easy for users to understand" (Final Act. 3), and "in an effort to
conserve screen space by eliminating the display of least relevant
information" (Ans. 5). Appellants state the Examiner's reasoning is
insufficient, but do not persuasively dispute it. Appellants also have not
shown the combination and modifications would have been "uniquely
challenging or difficult for one of ordinary skill in the art." Leapfrog Enters.
V. Fisher-Price, Inc., 498 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)). We agree with the
Examiner's finding one of ordinary skill in the art would have recognized
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the benefits identified by the Examiner, and would, therefore, have been
motivated to combine or modify the references.
We also agree with the Examiner that it would have been an obvious
matter of design choice to continue to display the URLs of documents
matching the search criteria, rather than remove them. (See Ans. 4--5; Final
Act. 4.)2 In particular, Denise teaches that each piece of information recited
in claim 1 is included in the full search results, and teaches that, in
reformatting the results, "[ t ]he amount of information removed may
correspond to a size of the search results portion 305 and preferences of the
user" (Denise 7:34--36). In this case, the finite number of identified,
predictable variations would have led one of ordinary skill in the art to
continue to display the URL that allows the user to access the content of
each search result. See KSR, 550 U.S. at 421.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claims 1, 8, and 16
under 35 U.S.C. § 103(a) as unpatentable over Haveliwala and Denise.
Thus, we sustain the rejection of claims 1, 8, and 16.
Claims 6 and 14
Appellants argue claim 6 as representative of claims 6 and 14. (App.
Br. 14.) Appellants contend the reformatting steps of Denise do not teach
2 We note also that Denise's Figure 3 and the accompanying description
teaches that the search result title is a link that links to the content, and,
therefore, would be understood by one of ordinary skill in the art to be a
URL link. (Denise 7 :22-24 (describing "a formatted list of electronic search
results displayed concurrently with electronic content linked to by an
electronic search result").)
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identifying, by one or more processors, a level of detail for displaying the
search results based on a size of the graphical user inteiface on the display
device of the selected data processing system and a number of rules for
determining one of a desired number of search results to display on the
graphical user interface and a desired font size for the search results, as
recited in claim 6. (App. Br. 14--16; Reply Br. 15-18.) As the Examiner
finds (Ans. 6; Final Act. 4), Denise teaches the amount of information
removed in re-formatting search results "may correspond to a size of the
search results portion 305 and preferences of the user" (Denise 7:34--36; see
also Denise Figs. 2, 3). Appellants' repeated citations to almost the entirety
of claim 6 fail to particularly point out which limitations are alleged to be
missing from Denise, and have not persuaded us of error in the rejection.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claims 6 and 14 under
35 U.S.C. § 103(a) as unpatentable over Haveliwala and Denise. Thus, we
sustain the rejection of claims 6 and 14.
Claim 25
Claim 25, which depends from claim 1, recites that the displayed
search results, before the user input to provide less information in the
display, also includes respective text excerpts from the additional
documents, and further comprises deleting the respective text excerpts from
the additional documents from the display of the search results. Appellants
argue the reformatting steps taught in Denise "are not the same as the
features in claim 25 in response to the user input to provide less information
in the display of the search results, for deleting the respective text excerpts
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from the additional documents from the display of the search results." (App.
Br. 17 .) The Examiner finds Denise teaches displaying information based
on the size of the search results portion and user preferences (Final Act. 5),
and does not specifically respond to Appellants' arguments in the Answer
other than to refer to the response regarding "user input" in claim 1 (Ans. 6).
We agree with Appellants the Examiner has not shown Denise teaches
deleting from the display of search results excerpts from additional
documents related to in subject but not matching all of the search criteria.
Thus, we do not sustain the Examiner's rejection of claim 25.
Claims 2, 4, 5, 9, 10, 12, 17, 19, 21, and 24
Claim 2 depends from claim 1 and recites the user input results from a
user moving a moveable graphical control in the graphical user interface,
the moveable graphical control is displayed, by one or more processors,
concurrent with the display of the search results in the graphical user
interface, and the moveable graphical control is one of a slider, a spinner,
and a dial.
Appellants acknowledge Ray teaches a slider bar used to control the
format of displayed search results, and teaches a relatively minimal format
and relatively maximal format with more detail. (App. Br. 19--20 (citing
Ray i-fi-132-33).) Appellants argue, however, that the formatting options in
Ray do not include deleting text excerpts and additional URLs from a
display of search results and continuing to display respective URLs of
documents matching the search criteria, and the respective names of
documents, as required by claim 1. (App. Br. 21.) Ray is not relied on for
the particular claimed formatting options, and is relied on for its teaching of
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a slider bar to control the level of detail included in the display of search
results. (See Final Act. 5-6; Ans. 6-7.) To the extent Appellants argue Ray
does not remedy the alleged deficiencies in the rejection of claim 1, the
arguments are not persuasive because we are not persuaded of error in the
rejection of claim 1, as discussed above. To the extent Appellants argue
independent error in the rejection of claim 2 because Ray does not teach the
formatting options recited in claim 1, Appellants' arguments regarding Ray
alone do not address the combined teachings of Haveliwala, Denise, and
Ray, upon which the rejection is based. Thus, Appellants' arguments
regarding differences between the claimed formatting options and Ray's
formatting options do not persuade us of error in the rejection of claim 2.
Appellants also contend the Examiner provides insufficient reasoning
for combining Ray with Haveliwala and Denise. (App. Br. 21-24.) Similar
to Appellants' arguments with respect to claim 1, Appellants state the
Examiner's reasoning is insufficient, but do not persuasively dispute it. In
this case, where the combination of Haveliwala and Denise teaches altering
the level of detail in a display of search results, and Ray teaches using a
slider bar to alter the level of detail in a display of search results, the
Examiner's findings and reasoning that one of ordinary skill in the art would
have used Ray's slider bar with Haveliwala and Denise "to provide a more
user-friendly interface that is intuitive and easy for users to understand"
(Final Act. 6) are sufficient. In essence, the Examiner finds one of ordinary
skill in the art would have recognized that Ray's slider would provide the
same benefit to Haveliwala and Denise that it provides to the similar system
in Ray. We agree. "[W]hen a patent simply arranges old elements with
each performing the same function it had been known to perform and yields
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no more than one would expect from such an arrangement, the combination
is obvious." KSR, 550 U.S. at 417.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claim 2 under
35 U.S.C. § 103(a) as unpatentable over Haveliwala, Denise, and Ray.
Thus, we sustain the rejection of claim 2, and the rejection of claims 4, 5, 9,
10, 12, 17, 19, 21, and 24, which are not argued separately.
Claims 22 and 23
Claim 22, which depends directly from claim 21 and indirectly from
claims 2 and 1, recites an additional step of filtering, by one or more
processors, the search results to remove any of the search results that do not
have the level of detail that is specified in the step recited in claim 21. The
Examiner finds Denise teaches the filtering step of claim 22 in reformatting
the list of search results by removing the summary and related links. (Final
Act. 7 (citing Denise 7:22-36, Figs. 2, 3).) We interpret claim 22 to require
that all information related to search results without a specified level of
detail are removed from the display. We agree with Appellants' argument
that Denise's reformatting of results by removing only certain information
related to search results is not the same as filtering results to remove results
that do not have a specified level of detail. (See App. Br. 25.) Although the
Examiner also finds Denise teaches filtering search results in accordance
with various parameters (Ans. 8 (citing Denise 36:33---61)), the Examiner has
not shown any of these parameters include whether the search results have a
particular level of detail. Thus, we agree with Appellants (see Reply Br. 32)
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that the additional portions of Denise cited in the Answer also do not show
the reference teaches the filtering step as recited in claim 22.
Accordingly, we do not sustain the rejection of claim 22 under
35 U.S.C. § 103(a) as unpatentable over Haveliwala, Denise, and Ray, and
we do not sustain the rejection of claim 23, which recites results that are
filtered as in claim 21 and is rejected on the same basis.
CONCLUSION
We sustain the Examiner's rejection of claims 1, 6, 8, 14, and 16
under 35 U.S.C. § 103(a) as obvious over Haveliwala and Denise.
We sustain the Examiner's rejection of claims 2, 4, 5, 9, 10, 12, 17,
19, 21, and 24 under 35 U.S.C. § 103(a) as obvious over Haveliwala,
Denise, and Ray.
We do not sustain the rejections of claim 22, 23, and 25.
DECISION
We affirm the Examiner's decision to reject claims 1, 2, 4---6, 8-10,
12, 14, 16, 17, 19, 21, and 24. We reverse the Examiner's decision to reject
claims 22, 23, and 25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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MANTIS MERCADER, Administrative Patent Judge, dissenting-in-part.
I join the majority in affirming the Examiner's rejection of claims 1,
2, 4---6, 8-10, 12, 14, 16, 17, 19, 21, and 24. However, I respectfully dissent
from the majority's opinion reversing the Examiner's rejection of claims 22,
23, and 25.
The Examiner finds that Denise teaches displaying search results
related to a user entered search query (Figs. 3 and 4) and filtering the results
in accordance with various parameters (col. 36, 11. 33---61) (Ans. 8). The
Examiner's cited section (col. 36, 11. 33-61) addresses filtering search results
based on relevancy and threshold assignment (see col. 36, 11. 26-60). Claim
22 recites "filtering" to "remove any search results that do not have the level
of detail" and claim 23 similarly recites "the search results received from the
search engine have been filtered, by the search engine, to remove any of the
search results that do not have the level of detail (claims 22 and 23).
With respect to claims 22 and 23, Appellants in their Reply Brief
address the reformatting aspect which addresses the level of detail of the
displayed results but do not address the Examiner's finding regarding the
filtering of search results based on relevancy other than to acknowledge that
Denise teaches organizing search results based on relevancy (see Reply Br.
32).
One skilled in the art at the time of the invention would have been
faced with a limited number of alternative solutions regarding organizing
and displaying search results from a search engine. One such option would
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be to either display search results of low relevancy (i.e., low level of detail)
or filter them out based on a threshold.
In an obviousness analysis, it is not necessary to find precise teachings
directed to the specific subject matter claimed because inferences and
creative steps that a person of ordinary skill in the art would employ can be
taken into account. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). In this regard, "[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421. Given the finite or
limited number of predictable solutions of either filtering out the low level
detail search results or not filtering them out, ordinary skilled artisans would
have had good reasons to pursue these alternative options within their
technical grasp based on Denise's teaching of using filtering to
accommodate a user's preference. Accordingly, I would have affirmed the
Examiner's rejection of claims 22 and 23.
Claim 25 recites "deleting the respective text excerpts from the
additional documents from the display of the search results" (claim 25).
Appellants argue in their Reply Brief that claim 25 does not merely state that
less information is provided as a result of user input, but rather, that claim 25
recites "deleting the respective text excerpts from the additional documents
from the display of the search results" (see Reply Brief 20). The Examiner
cited to Denise's teaching of the amount of information removed
corresponding to user preference (see col. 7, 11. 22-36) and the teaching of
re-formatting by deleting the summary and related links (col. 7, 11. 22-36;
Figs. 2, 3) (Ans. 4). Appellants do not seem to argue that Denise does not
teach deleting information, but rather, that the specific type of information
(i.e., text excerpts) is not being deleted. The type of information being
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deleted (i.e. text excerpts as opposed to a summary) constitutes
nonfunctional descriptive material. Our reviewing Court held that
nonfunctional descriptive material cannot lend patentability to an invention
that would have otherwise been anticipated by the prior art. In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004). Cf In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (noting that when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability). King Pharm., Inc. v.
Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he relevant
question is whether 'there exists any new and unobvious functional
relationship between the printed matter and the substrate."') (citations
omitted).
The claimed "text excerpts" differs from the prior art only in the type
of information content being deleted and not displayed. It has been
repeatedly held that an Applicant cannot create a novel product by attaching
printed matter to it, even ifthat printed matter itself is new. See, e.g., Ngai.
Thus, adding instructions to a kit that describe a method of using it does not
make the kit patentable over the same kit with a different set of instructions.
There are cases in which the descriptive material can form a functional
relationship with the underlying substrate. For example, in In re Miller, the
addition of printed matter to the outside of a cup permitted an otherwise
ordinary cup to be used like a measuring cup to half recipes. The printed
matter in Miller served as a computing or mathematical recipe conversion
device permitting a cook to perform calculations automatically with no
further thought.
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However, the claim before us is more like the claim in Ngai than
Miller. The fact that the particular information to be deleted is text excerpts
as opposed to summary does not change the product. It merely describes a
new, nonfunctional feature for a product that already exists.
To agree with Appellants' reasoning would mean that different types
of information being removed for display is sufficient to warrant a separate
patent even if the remainder of the invention is unchanged. This would
result not only in Appellants' distinguishing over the prior art, but equally
over other type of information being deleted for display. To give effect to
Appellants' claimed distinction, ignores our reviewing Court's concerns
with repeated patenting. The rationale behind this prior art rejection is
preventing the repeated patenting of essentially a known product by the mere
inclusion of non-functional descriptive material. King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("The rationale
behind this line of cases is preventing the indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated
limitations.") Cf In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) ("If we
were to adopt Ngai's position, anyone could continue patenting a product
indefinitely provided that they add a new instruction sheet to the product.").
I agree with the Examiner that the prior art teaches removing or deleting
information for display based on user preferences. Any argued difference
between the prior art and the claimed invention is simply a substitution of
one piece ofNFDM (i.e., summary) for another piece ofNFDM (i.e., text
excerpts), which does not change the functioning of the "display".
Therefore, I would have affirmed the Examiner's rejection of claim 25.
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For the reasons stated above, I respectfully dissent from the majority's
opinion of reversing the Examiner's rejection of claims 22, 23, and 25.
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