Ex Parte Elsaesser et alDownload PDFPatent Trial and Appeal BoardApr 25, 201311168551 (P.T.A.B. Apr. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte THOMAS ELSAESSER and LIANE ENGEL ____________________ Appeal 2010-011850 Application 11/168,551 Technology Center 2100 ____________________ Before DAVID M. KOHUT, BRYAN F. MOORE, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011850 Application 11/168,551 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 3-10, and 12-20. Claims 2 and 11 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a document searching system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer implemented method of searching documents, said computer implemented method comprising: receiving a search statement, said search statement comprising at least a first search query, said first search query comprising a first search value and at least a first search parameter specifying a first data source to search, and a second search query, said second search query comprising a second search value and at least a second search parameter specifying a second data source to search; determining a search strategy based on the search statement, the search strategy comprising a search activity for each data source to be searched such that a first search activity and a second search activity for searching said first data source and searching said second data source are created, respectively; weighting said search activities, said weighting based upon a type of a data source to be searched and a specificity of search value; searching the first data source and second data source using the first and second search activities respectively, wherein an order in which the first and second search activities are performed is dictated by weightings of the first and second search activities; and returning a final document search result from said search activities. Appeal 2010-011850 Application 11/168,551 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Edlund Ford Watson US 6,546,388 B1 US 2003/0195877 A1 US 7,472,113 B1 Apr. 8, 2003 Oct. 16, 2003 Dec. 30, 2008 REJECTIONS 1 The Examiner made the following rejections: Claims 1, 3, 4, 9, 10, 12, 13, and 18-20 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Watson. Ans. 3. Claims 5, 7, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Watson and Ford. Ans. 7. Claims 6, 8, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Watson and Edlund. Ans. 8. ISSUE 2 Appellants present the issue of whether Watson discloses “an order in which . . . search activities are performed is dictated by weightings of the first and second search activities” as recited in claim 1. 1 Based on the dependencies of the claims and the dispositive issue, we decide the appeal of the rejection of claims 1, 3-10 and 12-20 on the basis of claim 1. 2 We note that Appellants’ arguments present additional issues; however, we do not reach these issues, as this issue is dispositive of the appeal. Appeal 2010-011850 Application 11/168,551 4 ANALYSIS Appellants argue that while Watson discloses “choosing a set of data sources or ranking search results,” this is not the same as and does not disclose “dictating an order in which to execute the query on the selected set of data sources.” App. Br. 14. In particular Appellants argue that, “[i]n Watson, there is no indication of using the augmented query or weighted values for query terms to determine the order in which the selected set of data sources is executed.” Id. The Examiner responds that: Watson’s … search system for pipelining to data sources provide[s] . . . a set of data processing elements (functions) for selecting appropriate data sources for evaluating the resulting query and then route[s] the queries to external data sources and/or internal databases (i.e., ordered based on the relevance/specify of the query terms/search values to the data sources.) Ans. 9 citing Watson col. 3, l. 13; col. 5, ll. 48-50; col. 6, ll. 28-32. Thus, the Examiner broadly suggests that the disputed limitations are found at the cited portions of Watson but has not provided any specific rationale explaining, or evidence supporting, how the cited portion of Watson discloses those limitations. Additionally, we do not find anything in Watson that discloses ordering the query execution. As a result, we do not sustain the rejection of claim 1 under 35 U.S.C. § 102(e) and, for the same reason, we will not sustain the rejection of independent claims 10 and 19 and dependent claims 3, 4, 9, 12, 13, 18, and 20. Furthermore, we will not sustain the rejection of claims 5, 7, 14, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Watson and Ford or the rejection of claims 6, 8, 15, and 17 over Watson and Edlund, as the Ford and Edlund references fail to cure the deficiency in the base rejection addressed supra. Appeal 2010-011850 Application 11/168,551 5 CONCLUSION Appellants have persuaded us of error in the Examiner’s decision to reject claims 1, 3, 4, 9, 10, 12, 13, and 18-20 under 35 U.S.C. § 102(e) as being anticipated by Watson, to reject claims 5, 7, 14, and 16 stand rejected under 35 U.S.C. § 103(a) over Watson and Ford, and to reject claims 6, 8, 15, and 17 under 35 U.S.C. § 103(a) over Watson and Edlund. Thus, we will not sustain the Examiner's rejections of claims 1, 3-10, and 12-20. DECISION The decision of the Examiner to reject claims 1, 3-10, and 12-20 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)(iv) (2011). REVERSED ELD Copy with citationCopy as parenthetical citation