Ex Parte Bostick et alDownload PDFPatent Trial and Appeal BoardJul 29, 201612904779 (P.T.A.B. Jul. 29, 2016) Copy Citation 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.) 2 Appeal2014-005046 Application 12/904,779 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 3 Appeal2014-005046 Application 12/904,779 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).) 4 Appeal2014-005046 Application 12/904,779 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 5 Appeal2014-005046 Application 12/904,779 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").) 6 Appeal2014-005046 Application 12/904,779 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 7 Appeal2014-005046 Application 12/904,779 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 8 Appeal2014-005046 Application 12/904,779 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 9 Appeal2014-005046 Application 12/904,779 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) 10 Appeal2014-005046 Application 12/904,779 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 11 Appeal2014-005046 Application 12/904,779 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 12 Appeal2014-005046 Application 12/904,779 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 13 Appeal2014-005046 Application 12/904,779 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. 14 Appeal2014-005046 Application 12/904,779 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. 15 Appeal2014-005046 Application 12/904,779 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. 16 Copy with citationCopy as parenthetical citation