Ex Parte Agrawal

Patent Trial and Appeal Board

Sep 30, 2013

11321044 (P.T.A.B. Sep. 30, 2013)

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.
11/321,044 12/30/2005 Rakesh Agrawal 10587.0336-000000 9067
100692 7590 10/01/2013
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
EHICHIOYA, IRETE FRED
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
10/01/2013 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 RAKESH AGRAWAL
____________________

Appeal 2011-003229
Application 11/321,044
Technology Center 2100
____________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-6, 8-10, and 22-32. Claims 7 and 11-21 have
been canceled. We have jurisdiction over the pending claims under 35
U.S.C. § 6(b).
We reverse.

THE INVENTION
The claims are directed to generating a graphical user interface that
renders results that are responsive to a search query of a rich media file. The
graphical user interface includes a chronological representation of the rich
media file, one or more occurrence markers along the chronological
representation corresponding to actual occurrences of a desired term at an
indicated chronological location in the rich media file, and an execution icon
configured to launch a rich media application that renders a relevant portion
that is responsive to the search query. Abstract. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A computer-implemented method of enabling a display of a
computer system to render content using one or more
processors, the method comprising:
receiving a rich media file;
analyzing the rich media file to identify a term within the
rich media file;
associating the term with one or more time values
specifying a chronological location in the rich media file for the
term;
receiving a search query from user input at a computer
system;
relating the search query to the term;
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enabling the computer system to render, on a display, a
chronological representation of search results in response to
relating the term to the search query; and
enabling a user to interact with the search results to
launch a rich media application that renders, on the display of
the computer system, a relevant portion of the rich media file
that is responsive to the search query.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gibbon U.S. 6,714,909 B1 Mar. 30, 2004

REJECTIONS
The Examiner made the following rejections:
Claims 1 - 6, 8 -10 and 22 - 321 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter. Ans. 3.
Claims 1 - 6, 8 -10 and 22 - 32 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Gibbon. Ans. 4.

ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 12-29)
and Reply Brief (Reply Br. 2-5) the issues presented on appeal are (i)
whether the claims are directed to statutory subject matter, and (ii) whether

1 Although the Examiner’s detailed explanation of the rejection of claims 1-
6, 8-10 and 22-32 omits dependent claims 31 and 32 from the corresponding
listing of claims (Ans. 3), we agree with Appellant (App. Br. 5, fn. 1) that,
for purposes of this appeal, the Examiner intended to reject all pending
claims under 35 U.S.C. § 101 and we treat the omission as a clerical
oversight resulting in harmless error.
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Gibbon discloses enabling the computer system to render, on a display, a
chronological representation of search results in response to relating the term
to the search query. 2
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner finds that the pending claims are directed to non-
statutory subject matter because they fail the machine-or transformation test
(MTT). Ans. 3. In particular, the Examiner finds that the claims are neither
attached to a specific machine nor transform a physical article into a
different state or thing. Ans. 3-4. Appellant argues that the Examiner’s sole
reliance on the MTT is improper in view of the Supreme Court’s ruling in
Bilski3 issued subsequent to the date of the outstanding Final Action. App.
Br. 12-14. Furthermore, Appellant argues that the claims satisfy the test for
statutory subject matter:
Rather than claim a law of nature, mathematical formula,
algorithm, or abstract idea, claim 1 recites a method implemented
using a particular computing arrangement. Among other things, the
claim recites specific components, such as “a computer system,” that
uses “one or more processors,” and “render[s], on a display, a
chronological representation of search results.” Like the claims in
Diehr, claim 1 utilizes a computer to achieve the functionality recited
in the claim.
App. Br. 15.
We agree with Appellant. Independent method claims 1 and 22-24
recite a number of steps that are tied to a particular machine including, inter

2 We note Appellant raises additional issues contending error in the rejection
of claims 1 - 6, 8 -10 and 22 - 32 as anticipated by Gibbon but we do not
reach them as our resolution of this issue is dispositive of the appealed
rejections under 35 U.S.C. § 102(b).
3 Bilski v. Kappos, 130 S. Ct. 3218, 3226 (2010.)
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alia, enabling a computer system to render, on a display, a chronological
representation of search results in response to relating the term to a search
query. These steps are not mere pre- or post-solution activity, but require the
computer system to perform essential processing according to the method.
Furthermore, we find no evidence that the steps could be performed within
the human mind or by a human writing on a piece of paper.4 Therefore, we
will not sustain the rejection of claims 1 and 22-24 under 35 U.S.C. § 101 or
of dependent claims 2-6, 8-10, and 25-32.

Rejection under 35 U.S.C. § 102(b)
The Examiner finds that Gibbon’s description of providing a search
engine allowing a user to retrieve multimedia information from a database
discloses receiving a search query. Ans. 4 citing Gibbon col. 4, ll. 28-33.
The Examiner further finds that Gibbon’s description of a time related
display of rich media files with various keywords as depicted in Figure 13 of
Gibbon discloses the limitation of enabling the computer system to render,
on a display, a chronological representation of search results in response to
relating the term to the search query. Ans. 5. However, in finding that
Gibbon discloses the latter limitation, the Examiner interprets the word
“enabling” broadly, such that “any action that can reasonably be determined
to assist in the result of the action being enabled can satisfy the requirements
of the limitation. Thus, as long as any of the steps before the two enabling

4 See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72
(Fed. Cir. 2011) (noting that method steps that can all be performed in the
human mind, or by a human using a pen and paper, constitute unpatentable
mental processes).
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steps are met, the two enabling steps are also automatically anticipated.”
Ans. 15. We disagree.
“A claim construction that gives meaning to all the terms of the claim
is preferred over one that does not do so.” Merck & Co. v. Teva Pharms.
USA, Inc., 395 F.3d 1364, 1372 (Fed. Circ. 2005).5 As argued by Appellant,
the search query is a required element of claim 1, the claim reciting
receiving a search query from user input at a computer system. We further
agree with Appellant that “[i]n order to ‘enable the computer system’ in
claim 1 to perform the specific functions recited in the claim, the computer
system must be fully enabled to perform the recited functions.” App. Br. 27.
That is, all of the recited steps that are enabled are required. We disagree
with the Examiner that “as long as any of the steps before the two enabling
steps are met, the two enabling steps are also automatically anticipated.”
Ans. 15. Therefore, to anticipate claim 1, the Examiner must show that
Gibbon discloses all of the steps that are enabled. Because we find that the
Examiner has failed to show that Gibbon discloses enabling all steps of the
disputed limitation, i.e., rendering, on a display, a chronological
representation of search results in response to relating the term to the search
query, we do not not sustain the rejection of independent claim 1 or, for the
same reasons, the rejections of independent claims 22-24 or of dependent
claims 2-6, 8-10, and 25-32.

5 See also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (all words in a
claim must be considered in judging the obviousness of the claimed subject
matter.)
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CONCLUSION
The Examiner erred in rejecting claims 1-6, 8-10, and 22-32 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
The Examiner erred in rejecting claims 1-6, 8-10, and 22-32 under 35
U.S.C. § 102(b) as being anticipated by Gibbon.

DECISION
The decision of the Examiner to reject claims 1-6, 8-10, and 22-32
under 35 U.S.C. § 101 is reversed.
The decision of the Examiner to reject claims 1-6, 8-10, and 22-32
under 35 U.S.C. § 102(b) is reversed.

REVERSED

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