Ex Parte Isberg et al

Patent Trial and Appeal Board

Apr 15, 2015

12630908 (P.T.A.B. Apr. 15, 2015)

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.
12/630,908 12/04/2009 Anders Isberg 2002-1207 / PS09 1414US1 1654
54472 7590 04/16/2015
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
VO, TRUONG V
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
04/16/2015 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 ANDERS ISBERG, LOTTA WILLSTEDT,
and JOHAN FREDRIK JONAS GULLIKSSON
____________

Appeal 2013-002263
Application 12/630,9081
Technology Center 2100
____________

Before DAVID M. KOHUT, ERIC B. CHEN, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–19. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

1 The real party in interest is Sony Ericsson Mobile Communications AB.
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STATEMENT OF THE CASE
Appellants’ invention is directed to a wireless communication device,
such as a cellular telephone, for example, that includes a browser application
having an adaptive, context-sensitive search function. Particularly, the
browser application configures itself to use different search engines for
different contexts (e.g., different web sites). See Spec. ¶ 4.
Claims 1 and 3 are illustrative and reproduced below with key
disputed limitations emphasized:
1. A method of selecting a search engine on a wireless
communication device, the method comprising:
establishing a communication link between a wireless
communication device and a network server hosting a web site;
automatically detecting, at the wireless communication
device, whether the web site provides a search engine based on
data received from the web site;
configuring a browser application executing on the
wireless communication device to perform a search using the
detected search engine responsive to detecting that the web site
provides the detected search engine; and
displaying the results of the search at the wireless
communication device.

3. The method of claim 2 wherein the embedded
indicator comprises meta data received from the web site via
the established communication link, and identifies a file that
defines the search capabilities of the detected search engine.

THE REJECTION
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The Examiner rejected claims 1–19 under 35 U.S.C. § 102(b) as
anticipated by Stading (US 2008/0243785 A1; Oct. 2, 2008). Fin. Action 7–
16.

CONTENTIONS
The Examiner here finds that Stading teaches each limitation of the
claims. Final Act. 7–9. Appellants, on the other hand, contend that Stading
fails to disclose automatically detecting whether a web site being visited
provides a search engine based on data received from the web site because
Stading negates the need for such detection capabilities. See App. Br. 6–8.
Specifically, Appellants argue that in Stading a “user’s device establishes
communications with the system of Stading specifically to use its search
services” and therefore “there is no need for the user’s device to
automatically detect whether the site provides those services, let alone based
on data received from the web site, as claimed.” App. Br. 7. Appellants
also assert that Stading fails to disclose configuring a browser application to
perform a search using the detected search engine. App. Br. 8–10.
Further, Appellants argue that Stading fails to teach an embedded
indicator (claims 2, 9, and 19) and identifying, storing, or downloading a file
that defines the search capabilities of the detected search engine (claims 3, 4,
6, 10, 11, 13, and 19). See App. Br. 11–15.

ISSUES
Did the Examiner err in finding that Stading discloses “automatically
detecting, at the wireless communication device, whether the web site
provides a search engine based on data received from the web site; [and]
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configuring a browser application executing on the wireless communication
device to perform a search using the detected search engine responsive to
detecting that the web site provides the detected search engine,” as recited in
claim 1?
Did the Examiner err in finding that Stading discloses the embedded
indicator of claims 2, 9, and 19?
Did the Examiner err in finding that Stading discloses that “the
embedded indicator comprises meta data received from the web site via the
established communication link, and identifies a file that defines the search
capabilities of the detected search engine,” as recited in claims 3 and 10?
Did the Examiner err in finding that Stading discloses “storing a
search capability file in memory of the wireless communication device for
each web site visited by the user that provides a search engine,” as recited in
claim 6 and similarly recited in claim 13?

ANALYSIS
Claims 1, 5, 7, 8, 12, and 14–18
Based on the record before us, we find that the Examiner did not err in
rejecting claim 1 as anticipated by Stading.
Appellants assert that Stading fails to teach the claimed automatically
detecting limitation. See App. Br. 6–8; Reply Br 3–4. Namely, according to
Appellants, “[d]evices that visit web sites specifically to utilize the
associated search services [, such as Stading’s service engine services,] do
not first automatically detect whether those web sites actually provide such
services.” App. Br. 7. Appellants further argue there is no need for this
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automatic detection because the user’s device establishes communication
with the system precisely to use this search service. App. Br. 6.
The Examiner finds though that, under the broadest reasonable
interpretation consistent with the Specification, Stading discloses this
limitation by describing that “the search system [] may provide a graphical
user interface (GUI) that may be rendered within an Internet browser
application of a remote computing device.” Ans. 3–4 (emphasis omitted).
In other words, by receiving and rendering the web site on the wireless
communication device, Stading automatically detects whether the web site
provides a search engine. Nothing in the claim precludes the user from
visiting the web site for the purpose of using a search engine. Moreover,
Appellants’ Specification describes using received HTML code, such as
code received and used to render a website through a GUI, to automatically
detect if the web site provides a search engine. See e.g., Spec. ¶ 6; see also
Spec. ¶ 57 (noting that HTML code received from the server defines the
web-page). As such, we are not persuaded that the Examiner erred in
finding that Stading discloses the claimed automatically detecting limitation.
Appellants, using the same reasoning as discussed above, maintain
that Stading also does not disclose the claimed configuring limitation. See
App. Br. 8–10; Reply Br 4–5. In particular, Appellants urge that “[n]either
[the cited passage of Stading], nor anywhere else in Stading, discloses that a
browser application reconfigures itself to utilize different search engines, as
claimed.” App. Br. 9.
We note though that the claims do not require reconfiguration or that
the configuration use different search engines. Instead, the claim merely
requires configuring a browser application to perform a search using the
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detected search engine responsive to detecting that the web site provides the
detected search engine. Appellants have not persuasively explained why
Stading’s configuration of the browser application to display the website to
perform a search through use of the GUI on the remote device, as found by
the Examiner, fails to satisfy the claimed limitation. See Ans. 5–6. We are
also not persuaded then that the Examiner erred in finding that Stading
discloses this limitation.
Appellants note that claim 8 recites similar limitations and refers to
the arguments presented for claim 1. App. Br. 10. For the reasons discussed
above, we are also not persuaded that the Examiner erred in rejecting claim
8.
With respect to claim 15, Appellants additionally argue that Stading
fails to disclose the claimed context-sensitive search function. App. Br. 10–
11; see also Reply Br. 5.
Stading provides the device with a GUI that includes the
necessary fields to conduct a search for information. Further,
those fields are provided to the user device from the server in
the form of HTML code. The controller in Stading, therefore,
does not configure a context-sensitive search function provided
by the browser application to perform a search using a search
engine identified by the web site. In contrast, Stading simply
provides a conventional browser application that displays fields
- including search fields - to the user.
App. Br. 10–11 (emphasis omitted).
Appellants, however, fail to explain why using HTML code from a
particular website to configure a search function in a browser to conduct a
search fails to satisfy the claimed limitation. Notably, the Specification
describes that different “context” merely refers to different websites. See
e.g., Spec. ¶ 36. As the Examiner explains, Stading’s search services “can
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include any number of data sources, including commercial databases, secure
data, websites, governmental websites, public data repositories, other data
sources, or any combination thereof.” Ans. 6–7 (emphasis omitted); see also
Stading Fig. 4 (disclosing that, in step 402, a GUI is provided having
multiple selectable elements, each associated with a category of
information). As such, we are not persuaded that the Examiner erred in
finding that Stading teaches the claimed configuration limitation of claim 15.
Therefore, we find that the Examiner did not err in rejecting claims 1,
8, and 15, as well as dependent claims 5, 7, 12, 14, and 16–18, not argued
with particularity, as anticipated by Stading. Accordingly, we sustain the
rejection as to these claims.

Claims 2 and 9
Based on the record before us, we find that the Examiner did not err in
rejecting claims 2 and 9 as anticipated by Stading.
Claims 2 and 9 require that automatically detecting whether the web
site provides a search engine comprises determining whether the data
received from the network server includes an embedded indicator.
Appellants argue that Stading fails to disclose these limitations. App. Br.
11–12. In particular, Appellants maintain that the Stading’s indicators,
described in paragraph 74, are sent the results data and therefore the user
device is already aware of the search system. App. Br. 12.
The Examiner though also relies on the selectable indicators described
at paragraph 81. Specifically, paragraph 81 discloses a method of searching
data sources where the GUI includes list of stored searches and selectable
indicators related to those searches. While this may indicate that the user
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has previously conducted searches through the services, this is not precluded
by the claim. As such, Appellants have not persuaded us of error in the
Examiner’s findings.
Therefore, we find that the Examiner did not err in rejecting claims 2
and 9 as anticipated by Stading. Accordingly, we sustain the rejection as to
these claims.

Claims 3, 4, 10, 11, and 19
Based on the record before us, we find that the Examiner erred in
rejecting claims 3, 4, 10, 11, and 19 as anticipated by Stading.
Claims 3 and 10 require that the embedded indicator comprises
metadata that identifies a file that defines the search capabilities of the
detected search engine. Similarly, claim 19 requires that the embedded
indicator identifies a file on a network server that defines the search
capabilities of the detected search engine. See App. Br., Claims App’x.
Appellants argue that
All of the data discussed in [the cited] passage of Stading
relates to the data stored by the different data sources, and may
include user data. This has nothing to do with the capabilities of
a search engine service tasked to retrieve such data, and nothing
indicating such capabilities is ever sent to the user in Stading -
let alone as embedded meta data, as claimed.
App. Br. 13 (emphasis omitted). We agree. While we recognize that
Stading generally teaches meta data, Stading does not disclose that meta data
or an embedded indicator identifies a file that defines the search capabilities.
Therefore, we find that the Examiner erred in rejecting claims 3, 10,
and 19 as well as claims 4 and 11 which depend from claims 3 and 10
respectively. Accordingly, we reverse the rejection as to these claims.
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Claims 6 and 13
Based on the record before us, we find that the Examiner did not err in
rejecting claims 6 and 13 as anticipated by Stading.
Claim 6 requires storing a search capability file in memory of the
wireless communication device for each web site visited by the user that
provides a search engine.
Appellants here argue that “Stading does not disclose the search
system defining the search capabilities to the user’s device, let alone in the
form of a file.” App. Br. 14. The Examiner explains that Stading discloses
the search system can “optionally download documents associated with the
search results, index the resulting documents with advanced searching
capabilities to produce a temporary index . . . .” Ans. 9 (emphasis omitted)
(quoting Stading ¶ 62). Appellants do not persuasively explain why this
downloaded document and index fails to satisfy the claimed search
capability file. Specifically, this file would represent, at least in part, the
search capabilities of the search system.
Therefore, we find that the Examiner did not err in rejecting claims 6
and 13 as anticipated by Stading. Accordingly, we sustain the rejection as to
these claims.

DECISION
The Examiner’s decision rejecting claims 1, 2, 5–9, and 12–18 is
affirmed, but the Examiner’s decision rejecting claims 3, 4, 10, 11, and 19 is
reversed.
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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).

AFFIRMED-IN-PART

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