Ex Parte Kindsvogel et al

Patent Trial and Appeal Board

Nov 5, 2012

11027277 (P.T.A.B. Nov. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte UWE KINDSVOGEL, TATJANA JANSSEN,
KLAUS IRLE, and SIMEON LUDWIG
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Appeal 2010-005382
Application 11/027,277
Technology Center 2100
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Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-11, 14, 17, and 20-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to searching for indexed data objects. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method for searching for
a data object, the method comprising:
an indexing phase; and
a search phase;
wherein the indexing phase comprises:
retrieving data objects from a data source;
normalizing said retrieved data objects; and
indexing said retrieved data objects; and
wherein the search phase comprises:
receiving a search request comprising a search
criterion from a user;
normalizing the search criterion; and
searching said indexed data objects for a data
object that meets the normalized search criterion.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Moore

Snyder

Sommerer

Sabel
US 2001/0039546 A1

US 2003/0200199 A1

US 6,701,348 B2

US 2006/0167884 A1
Nov. 8, 2001

Oct. 23, 2003

Mar. 2, 2004

July 27, 2006
(PCT filed Oct. 24,
2003)

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REJECTIONS
Claims 20-22 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 2 and 3 stand rejected under 35 U.S.C. §112, second
paragraph, as being indefinite.
Claims 1-9, 11, and 20-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Snyder and Moore.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Snyder, Moore, and Sommerer.
Claims 14 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Snyder, Moore, and Sabel.

ANALYSIS
The Non-Statutory Subject Matter Rejection
Claim 20 recites: “A computer program product, tangibly embodied
in an information carrier . . . .” The Examiner finds that claim 20
encompasses a non-statutory signal when read in light of Appellants’
Specification, which provides that “signal 980 can also include computer
program product 100” (Ans. 5-6; Spec. 9:6-7). Appellants group claims 20-
22 together (see App. Br. 15-16; Reply Br. 2) and argue that “they were not
aware that the Examiner was also concerned about this portion of the
specification, and further respectfully submit that they are willing to delete
the disputed matter from the specification.” (Reply Br. 2).
We decide the appeal on the record before us, not based on
prospective amendments. We agree with the Examiner and find that claim
20 encompasses a signal, which is not patentable. See In re Nuijten, 500
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F.3d 1346, 1357 (Fed. Cir. 2007) (“A transitory, propagating signal . . . is
not a ‘process, machine, manufacture, or composition of matter.’”).
Therefore, we are not persuaded that the Examiner erred in rejecting claim
20 and claims 21 and 22, not separately argued, as being non-statutory.

The Indefiniteness Rejections
Claim 2 recites “the indexing phase and the search phase occur at
times substantially separated in time” (emphasis added). The Examiner
finds:
Applicant gives no limiting definition of the term “substantial,”
neither provides examples to describe what, the Applicant
intends, an amount of time that the “substantially separated in
time” covers. The phrase “substantially separated in time”
could cover times, e.g. as substantial as seconds or as
substantial as days or longer, and is therefore indefinite.

(Ans. 4). Claim 3 recites “the indexing phase and the search phase occur in
sequence, at substantially similar times” (emphasis added). In addition to
finding that the Specification provides no limiting definition of the term
“substantially,” the Examiner finds:
[T]he term “similar” in claim 3 is a relative term which renders
the claim vague and indefinite. The term “similar” is not
defined in the claim, the specification does not provide a
standard for ascertaining the requisite degree, and one of
ordinary sill in the art would not be reasonable apprised of the
scope of the invention.

(Ans. 5).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
“whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
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Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
Appellants provide no examples (see App. Br. 13-14; Reply Br. 1-2)
from the Specification that would place meaningful limits on the scope of
the phrases “substantially separate in time” in claim 2 and “substantially
similar times” in claim 3. Rather, Appellants cite Andrew Corp. v. Gabriel
Electronics Inc., 847 F.2d 819 (Fed. Cir. 1988), for showing that the term
“substantially” satisfies the definiteness requirement (App. Br. 13-14; Reply
Br. 1). However, a determination of claim definiteness must be performed
on a case by case basis, given that each claim must be “read in light of the
specification.” Orthokinetics, 806 F.2d at 1576.
In the Reply Brief, regarding claim 2, Appellants offer that “one of
skill in the art would know that ‘substantially separated in time’ means
executing an index phase, and then at some later time executing a search
phase, wherein the search phase does not immediately follow the index
phase. Rather, there is a time period between the end of the index phase and
the beginning of the search phase.” (Reply Br. 1-2). However, this
interpretation does not in any way limit the length of the time period
between the two phases. Regarding claim 3, Appellants offer that “one of
skill in the art would know that ‘in sequence, at substantially similar times’
in the computer arts refers to a method in which” the time period between
the indexing phase and search phase is “a time period capable of execution
by a processor, depending on the size of the data objects” (Reply Br. 1). It is
unclear what “time period” Appellants refers to in this interpretation—the
time period between the beginning of the indexing phase and the beginning
of the search phase, or the time period between the end of the indexing phase
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and the beginning of the search phase. In either case, Appellants’
interpretation fails to limit the claimed “substantially similar times” in any
way because a processor can be capable of processing data, even a
particularly sized data object, at a wide range of processing rates.
Accordingly, Appellants have not rebutted the Examiner’s findings
that “substantially separated in time” covers a difference “as substantial as
seconds or as substantial as days or longer” and that “substantially similar
times” covers times “as substantially similar as seconds are to minutes or
hours are to days” (Ans. 4). In view of these interpretations, which we find
to be reasonably broad in the absence of any specific examples from the
Specification, we agree with the Examiner (see Ans. 4) and find that one of
ordinary skill in the art would not have been able to ascertain the scope of
claims 2 and 3. That is, it is unclear how the phrases “substantially
separated in time,” recited in claim 2, and “substantially similar times,”
recited in claim 3, limit the indexing and search phases recited in claim 1,
and therefore claims 2 and 3 do not particularly and distinctly point out what
is claimed.
We are therefore not persuaded that the Examiner erred in rejecting
claims 2 and 3 as indefinite.

The Obviousness Rejections
Claims 1, 7-9, 11, 20, and 21
Appellants contend that (1) “the Snyder and Moore references then
are such that their scope and content would not lead one of skill in the art at
the time that the invention was made to combine the two references” and (2)
“the Final Office Action has failed to put forth a viable rationale as to why
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one of skill in the art, at the time that the Appellant’s invention was made,
would have been motivated to combine Snyder with Moore” (App. Br. 16-
17). We disagree.
We agree with the Examiner (Ans. 8, 18-19) and find that Snyder and
Moore both relate to indexing and searching for data. For example,
Snyder’s system performs “[p]rocessing of source documents to generate
data for indexing, and of queries to generate data for searching” (Snyder, ¶
[0019]). Moore discloses a system where, “[t]o facilitate the organization
and location of desired items, all captured information is automatically
enriched through the addition of metadata which can be used for organizing
and navigating the resulting database of information, including filtering,
sorting and searching operations,” and the information capturing includes
“generating an index to geographically relevant objects” (Moore, ¶¶ [0012],
[0015]). Accordingly, Appellants’ argument that one would not have been
led to combine Snyder and Moore (App. Br. 16) is unpersuasive because
Snyder and Moore are within the same field of endeavor—indexing and
searching for data. Although Appellants argue in the Reply Brief “that such
a weak similarity between the two references of record does not provide a
rationale for the combination of them” (Reply Br. 2), whether there is a
rationale to combine the references is a separate issue discussed below.
Appellants’ argument (App. Br. 16-17) regarding the Examiner’s
motivation to combine Snyder and Moore is also not persuasive. Appellants
argue that “speed and efficiency is simply not a concern, and may even be
antithetical, to the issues addressed by Moore” because “Moore is related to
deferred browsing of information at a later time” (App. Br. 16-17).
However, despite the fact that Moore “allow[s] a user to capture and manage
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information for later review” (Moore, Abstract), the Examiner’s position is
that, by indexing data objects, Moore’s system speeds up searches of stored
data objects when a user does later seek to browse the data (see Ans. 8-9,
19). Appellants do not contest (see App. Br. 16-17; Reply Br. 3) the
Examiner’s finding that “it is well known in the art that indexing data
objects improves speed of searches” (Ans. 8-9, 19). Further, contrary to
Appellants’ argument that in Moore “speed and efficiency is simply not a
concern” (App. Br. 16), Moore discloses that “database 104 uses the
information and metadata captured, along with the objects, to optimize and
improve the functionality of industry standard database functions, such that
the user may rapidly and conveniently view, organize, maintain, and
otherwise interact with the object database” (Moore, ¶ [0053]) (emphasis
added). The Examiner concludes that, in view of Moore, one of ordinary
skill in the art would have been motivated to index and store data objects for
later search in Snyder’s system (see Ans. 8). This would allow Snyder the
flexibility to store data from applications that use data objects while
maintaining speedy and efficient searches (see Ans. 8-9, 19). Appellants’
argument (App. Br. 16-17; Reply Br. 3) focuses solely on Moore’s delay
between information capture and review and does not specifically address
why one would not have combined Moore’s indexing and searching of data
objects with Snyder. Thus, Appellants’ arguments are not persuasive of
error with respect to the Examiner’s motivation for combining the
references.
We are therefore not persuaded that the Examiner erred in rejecting
claim 1 and claims 20 and 21 not separately argued. Although claims 7-9
and 11 are nominally argued separately (see App. Br. 18), Appellants rely on
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the arguments presented for claim 1. The rejections of claims 7-9 and 11 are
therefore sustained for the reasons discussed above.

Claim 2
Appellants contend that “[t]here is no mention of any time factor in
either ¶ 10 or ¶ 19, nonetheless a substantial separation of time” in Snyder,
and thus the Examiner’s finding that “Snyder discloses an indexing and
searching that occur substantially separated in time comes through a
hindsight reconstruction of the references using the Appellant’s disclosure”
(App. Br. 17).
As discussed above, claim 2 does not specify with meaningful
limitation by how much the indexing and search phases must be separated in
time. The only requirement is that the indexing phase be performed before
the search phase, based on the language “searching said indexed data
objects” in claim 1 (emphasis added). Snyder discloses that indexing data
comprises tokenizing and normalizing the data according to certain rules and
that query processing comprises tokenizing and normalizing queries
according to the same rules “in order for queries to accurately search the
database” (Snyder, ¶ [0019]; Ans. 9). In other words, a query must undergo
processing according to the same rules as the data the query is intended to
match, where the data has been processed before the query. For example, if
a source document that contains the name “AT&T” is tokenized as “‘at’,
‘&’, and ‘t’,” then a query for “at&t” must be tokenized in the same way for
an accurate search (Snyder, ¶ 23-26; Fig. 1). Thus, Snyder discloses that an
indexing phase, which includes tokenizing and normalizing, is performed
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some time before a search phase (i.e., query processing), which also includes
tokenizing and normalizing.
We are therefore not persuaded that the Examiner erred in rejecting
claim 2.

Claim 3
Appellants contend that “[t]here is no mention of any time factor in
either FIG. 1 or ¶ 26” and it is “therefore error to argue that FIG. 1 and ¶ 26
disclose indexing and searching at substantially similar times” (App. Br. 17).
As discussed above, claim 3 does not specify with meaningful
limitation how closely in time the indexing and search phases must be
performed. Claim 3 merely requires them to be performed in sequence. As
discussed above regarding claim 2, Snyder discloses an indexing phase is
performed before a search phase.
We are therefore not persuaded that the Examiner erred in rejecting
claim 3.

Claims 4 and 5
Appellants contend that “neither FIG. 1, nor ¶ 10, discloses any time
line as to when the disclosed operations occur” (App. Br. 18).
However, Appellants do not specifically explain why it would not
have been obvious to modify Snyder such that normalizing retrieved data
objects occurs before or after indexing retrieved data objects, as the
Examiner finds (Ans. 10-11). “When a [claim] ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect form such an
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arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (citation omitted). Absent argument as to why it
would not have been obvious to one of ordinary skill in the art to reorder the
normalizing and indexing of data objects in the combination of Snyder and
Moore, we are not persuaded of error in the Examiner’s findings.
We are therefore not persuaded that the Examiner erred in rejecting
claims 4 and 5.

Claim 6
Appellants contend that “FIG. 1 or ¶ 10 simply does not disclose a
local data source and an external data source” (App. Br. 18). Claim 6,
however, recites “at least one of: a) a local data source; and b) an external
data source” (emphasis added) and thus does not require both a local data
source and an external data source. Appellants’ argument is therefore not
commensurate with the scope of the claim, and we are therefore not
persuaded that the Examiner erred in rejecting claim 6.

Claim 10
Appellants contend that Sommerer “makes no disclosure of
normalizing an attribute value” (App. Br. 19). However, the Examiner relies
on the combination of Snyder and Moore, not Sommerer, for disclosing the
limitation “normalizing the attribute value” (Ans. 13-14). Thus, Appellants’
argument is not responsive to the Examiner’s rejection.
The limitations for which the Examiner does rely on Sommerer — “a)
a telephone number; b) a street address; c) a city . . .” — are merely non-
functional descriptive material and therefore are not given patentable weight.
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Nevertheless, the Examiner finds that Sommerer discloses these limitations
(Ans. 14; Sommerer, Fig. 2a), and Appellants do not contest these findings
(see App. Br. 19).
We are therefore not persuaded that the Examiner erred in rejecting
claim 10.

Claims 14 and 17
Appellants contend that “Sabel does not disclose an algorithmic
normalization” (App. Br. 19). However, the Examiner relies on Snyder, not
Sabel, for disclosing algorithmic normalization (Ans. 15). Thus, Appellants’
argument is not responsive to the Examiner’s rejection. We are therefore not
persuaded that the Examiner erred in rejecting claims 14 and 17.

Claim 22
Appellants contend that “neither ¶ 28 nor ¶ 76 of Snyder teaches the
coupling of local and external computing devices” (App. Br. 19).
Snyder discloses a source processing subsystem 110 and a query
processing subsystem 120 that perform computerized processing of
document data and search queries, respectively, by applying tokenization
rules (Snyder, ¶¶ [0011]-[0012]; Fig. 1). The tokenization rules are retrieved
from a “store, which is separate from the source processing and query
processing subsystems, [and] may be implemented in any desired manner,
including the use of any of a variety of well known techniques.” (Snyder, ¶
[0007]). As the Examiner finds, using the Internet to access data residing on
a server is a well known technique (Ans. 27). Appellants do not specifically
argue why it would not have been obvious to store data, such as Snyder’s
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tokenization rules, on a separate server device coupled to Snyder’s source
processing and query processing subsystems over a network such as the
Internet, thus meeting the limitation “at least one external computer device
coupled to the local computer device by a network.” (Claim 22).
We are therefore not persuaded that the Examiner erred in rejecting
claim 22.

CONCLUSIONS OF LAW
Under 35 U.S.C. § 101, the Examiner did not err in rejecting claims
20-22.
Under 35 U.S.C. § 112, second paragraph, the Examiner did not err in
rejecting claims 2 and 3.
Under 35 U.S.C. § 103(a), the Examiner did not err in rejecting claims
1-11, 14, 17, and 20-22.

DECISION
For the above reasons, we affirm the rejections of claims 1-11, 14, 17,
and 20-22.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED

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