Ex Parte Alpert et al

Board of Patent Appeals and Interferences

Jan 20, 2012

10844996 (B.P.A.I. Jan. 20, 2012)

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.
10/844,996 05/13/2004 Sherman Robert Alpert YOR920040032US1 7686
7590 01/20/2012
Ryan, Mason & Lewis, LLP
Suite 205
1300 Post Road
Fairfield, CT 06824
EXAMINER
HASAN, SYED HAROON
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
01/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHERMAN ROBERT ALPERT, THOMAS A. COFINO,
JOHN KARAT, JOHN GEORGE VERGO, and
CATHERINE GODY WOLF
____________________

Appeal 2009-012200
Application 10/844,996
Technology Center 2100
____________________

Before ERIC S. FRAHM, KRISTEN L. DROESCH, and
BRUCE R. WINSOR, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/844,996

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:

1. A method for processing a document identified by a document
search, comprising the steps of:

identifying a prior search having search terms that are sufficiently
similar to search terms of said document search; and

assigning a weight to said document based on whether said document
was selected by a user of said prior search.

Examiner’s Rejection
The Examiner rejected claims 1-33 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Bharat (US 6,725,259 B1, Apr.
20, 2004), Acharya (US 2005/0071741 A1, Mar. 31, 2005), and Dean (US
2002/0123988 A1, Sep. 5, 2002).1

1 Final Rej. 2-9. Notably, the Examiner restates the rejection of claims 1-33
over Bharat, Acharya, and Dean in the Answer as (i) a rejection of claims 1,
2, 5, 6, 10-16, 19, 20, 24-30, 32, and 33 over Bharat and Acharya (Ans. 3-6);
and a rejection of claims 3, 4, 7-9, 17, 18, 21-23, and 31 over Bharat,
Acharya, and Dean (Ans. 6-9). Appellants have addressed the rejection of
claims 1-33 over Bharat, Acharya, and Dean in the Appeal Brief (see App.
Br. 3), and in the Reply Brief (see Reply Br. 4-14, where Appellants refer to
the pending rejection as based on Bharat, Dean, and Acharya). We consider
the rejection before us on appeal to be of claims 1-33 over Bharat, Acharya,
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Issues on Appeal2
Appellants contend (App. Br. 4-10; Reply Br. 2-14) that the Examiner
erred in rejecting claims 1, 2, 4, 8, 10-12, 15, 16, 18, 22, 24-26, 29, 30, and
33 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Bharat, Acharya, and Dean for numerous reasons. Based on Appellants’
arguments in the briefs, the following issues are presented on appeal:
Independent Claims 1, 15, and 29
Has the Examiner erred in rejecting claims 1, 15, and 29 as being
obvious because the combination of Bharat, Acharya, and Dean fails to teach
or suggest identifying a prior search having similar search terms as the
current document search, and assigning weight to the document based on
whether the document was selected by the user of the prior search?

and Dean. However, because the Examiner only discussed the merits of
Dean with regard to claims 3, 4, 7-9, 17, 18, 21-23, and 31(see Final Rej. 5-
7), and the restatement of the rejection in the Answer does not apply any
new bases (i.e., relying on additional references or citations of the
references) for the grounds of rejection or otherwise unfairly prejudice
Appellants’ due process rights, the Examiner has not made a new ground of
rejection.
2 Appellants have not presented any arguments in the briefs with regard to
the obviousness rejection of claims 3, 5-7, 9, 13, 14, 17, 19-21, 23, 27, 28,
31, and 32 (see App. Br. 2 (stating that “[c]laims 1, 2, 4, 8, 10-12, 15, 16, 18,
22, 24-26, 29, 30, and 33 are being appealed”). Because Appellants have
not addressed the rejection of claims 3, 5-7, 9, 13, 14, 17, 19-21, 23, 27, 28,
31, and 32 in the briefs, Appellants have not shown the Examiner erred in
rejecting these claims (see 37 C.F.R. § 41.37(c)(1)(vii)), and we will sustain
the § 103(a) rejection of claims 3, 5-7, 9, 13, 14, 17, 19-21, 23, 27, 28, 31,
and 32 pro forma. In view of the foregoing, our discussion is limited to
Appellants’ arguments as to the rejection of claims 1, 2, 4, 8, 10-12, 15, 16,
18, 22, 24-26, 29, 30, and 33 under § 103(a).
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Independent Claim 33
Has the Examiner erred in rejecting claim 33 because the combination
of Bharat, Acharya, and Dean fails to teach or suggest storing search terms
and an ordered list, the order being based on user selections of documents
identified by a document search?
Claims 2, 16, and 30
Has the Examiner erred in rejecting claims 2, 16, and 30 as being
obvious because Acharya fails to teach or suggest assigning weight based on
an order of selection of two or more documents by a user as claimed?
Claims 4 and 18
Has the Examiner erred in rejecting claims 4 and 18 as being obvious
because Dean fails to teach or suggest assigning more weight to a final
selection than a non-final selection, where weight is assigned to the
document based on whether that document was selected by a user of a prior
search?
Claims 8 and 22
Has the Examiner erred in rejecting claims 8 and 22 as being obvious
because Dean fails to teach or suggest correlating the weight assigned to a
document “to a degree of closeness of said search terms of said prior search
and said search terms of said document search,” as set forth in each of
claims 8 and 22?
Claims 10 and 24
Has the Examiner erred in rejecting claims 10 and 24 as being obvious
because Acharya fails to teach or suggest assigning more weight to
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documents selected by an expert than to documents selected by a non-
expert?
Claims 11 and 25
Has the Examiner erred in rejecting claims 11 and 25 as being obvious
because Acharya fails to teach or suggest correlating the weight assigned to
a document “to a ratio of the number of times said document was selected in
a prior search and a number of prior search result hitlists, wherein said prior
search result hitlists contain an entry identifying said document,” as recited
in claims 11 and 25?
Claims 12 and 26
Has the Examiner erred in rejecting claims 12 and 26 as being obvious
because Acharya fails to teach or suggest assigning less weight to a
document corresponding to a non-final selection than to a document that is
not selected by a user?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief (App. Br. 4-10) and the Reply Brief (Reply
Br. 2-14) that the Examiner has erred. Appellants’ arguments specifically
addressed above are persuasive with respect to claims 2, 4, 8, 10-12, 16, 18,
22, 24-26, and 30, but not with respect to claims 1, 15, 29, and 33.
We disagree with Appellants’ conclusions regarding claims 1, 15, 29,
and 33. We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (see Final Rej. 3-4
and 9), and (2) the reasons set forth by the Examiner in the Examiner’s
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Answer in response to Appellants’ Appeal Brief (see Ans. 10-13). We
concur with the conclusions reached by the Examiner (see Ans. 3-4).
Claims 3, 5-7, 9, 13, 14, 17, 19-21, 23, 27, 28, 31, and 32
Based on Appellants’ failure to address the Examiner’s prima facie
case of obviousness, Appellants have failed to show that the Examiner erred
in determining that the combination of Bharat, Acharya, and Dean teaches or
suggests the method, apparatus, and article of manufacture for processing a
document as recited in claims 3, 5-7, 9, 13, 14, 17, 19-21, 23, 27, 28, 31, and
32. Accordingly, we will sustain the Examiner’s obviousness rejection of
these claims pro forma. See 37 C.F.R. § 41.37(c)(1)(vii) (requiring a
statement in the briefs as to each ground of rejection presented by
Appellants for review); 37 C.F.R. § 41.37(c)(1)(vii) (stating that arguments
not presented in the briefs by Appellants will be refused consideration).
Independent Claims 1, 15, and 29
With regard to the rejection of claims 1, 15, and 29, we disagree with
Appellants’ conclusions (App. Br. 4-6; Reply Br. 2-4), and we concur with
the conclusions reached by the Examiner (Final Rej. 2-5; Ans. 3-4) that the
subject matter of claims 1, 15, and 29 is taught or suggested by the
combination of Bharat and Acharya (see Ans. 3-4) or Bharat, Acharya, and
Dean (see Final Rej. 2-5). We disagree with Appellants’ contentions (App.
Br. 4-6; Reply Br. 2-4) that (i) Bharat’s corpus is not equivalent to the
claimed prior search, (ii) Acharya’s weight is not equivalent to history data
that is ranked or scored, (iii) assigning a score is not the same as assigning a
weight, and (iv) the combination of Bharat, Acharya, and Dean is improper
because Acharya’s assignment of a score teaches away from the claimed
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invention. We agree with the Examiner (Ans. 3-4 and 9-11) that the
combination of Bharat and Acharya discloses or suggests identifying a prior
search having search terms similar to search terms of a current document
search, and assigning weight to a document based on whether the document
was selected by a user of the prior search.
Specifically, Bharat discloses identifying a prior search and ranking or
scoring documents with ranking component 122 (col. 1, ll. 23-31; col. 2, ll.
1-5; col. 3, ll. 22-37; Fig. 1), and Acharya discloses ranking documents
identified in a document search based on history data (¶¶ [0033] and [0132];
Fig. 4), which can include user selections (¶ [0032], e.g., “user behavior,”
“ranking history,” and “user maintained/generated data”).
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 1, 15, and 29.
Independent Claim 33
With regard to the rejection of claim 33, we disagree with Appellants’
conclusion (App. Br. 6-7; Reply Br. 4), and we concur with the conclusion
reached by the Examiner (Final Rej. 9; Ans. 6 and 12-13) that the subject
matter of claim 33 is taught or suggested by the combination of Bharat,
Acharya, and Dean.
We disagree with Appellants’ contention (App. Br. 6-7) that
Acharya’s paragraph [0132] fails to disclose or suggest an order of a list is
based on user selections of documents identified by a document search.
Acharya discloses ranking documents identified in a document search based
on history data (¶¶ [0033] and [0132]), which can include user selections (¶
[0032], e.g., “user behavior,” “ranking history,” and “user
maintained/generated data”). The search engine 125 “may score the
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documents using one, or a combination, of the types of history data” (¶
[0132]). Therefore, we agree with the Examiner (Ans. 4 and 12-13) that
Acharya discloses or suggests an order of a list is based on user selections of
documents identified by a document search.
Appellants’ argument (Reply Br. 4) that Acharya does not teach or
suggest storing the search terms and ordered list is not persuasive in light of
the knowledge of one of ordinary skill in the art, along with the following
three disclosures in Acharya. First, Acharya discloses that documents,
representations of documents, and signatures of documents are stored, as
well as terms that are being monitored (i.e., search terms of documents, or
ordered lists of the documents) (¶ [0053]). Second, Acharya discloses a
main memory 230 and storage device 250 in Figure 2 (see ¶¶ [0025] and
[0026]). Third, Acharya discloses a document corpus 340 in Figure 3 which
stores (i) history data associated with each of the documents, and (ii)
“information associated with documents that were previously crawled,
indexed, and stored, for example, in a database accessible by search engine
125” (¶ [0030]).
Acharya’s three disclosures discussed above, combined with the
knowledge of one of ordinary skill in the art at the time of Appellants’
invention that it is common to store documents and search related
information, make it obvious to store any number of factors related to
document searches and history data associated with documents searched,
including search terms and an ordered list as recited in claim 33.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 33.
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Claims 2, 16, and 30
We agree with Appellants’ arguments (App. Br. 7; Reply Br. 5) that
the Examiner erred with respect to the rejection of claims 2, 16, and 30
because Acharya’s paragraphs [0094] and [0133] fail to disclose or suggest
assigning weight based on an order of selection of two or more documents
by a user as claimed. Paragraph [0032] of Acharya, newly cited by the
Examiner in the response to Appellants’ arguments (Ans. 13), describes
history data which includes ranking history, user behavior, user generated
data, and document data, but is also silent as to assigning weight based on an
order of selection. The Examiner’s assertion (Ans. 13) that the length of
time a user spends on each document is somehow equivalent to assigning a
weight based on an order of selection is not convincing, and we do not find
that Acharya’s disclosure of history data suggests suggest assigning weight
based on an order of selection of two or more documents by a user as
claimed.
Accordingly, we will not sustain the Examiner’s rejection of claims 2,
16, and 30.
Claims 4 and 18
We agree with Appellants’ arguments (App. Br. 7-8; Reply Br. 5) that
the Examiner erred with respect to the rejection of claims 4 and 18, because
Dean’s paragraph [0049] fails to disclose or suggest that a final selection is
assigned more weight than a non-final selection. Instead, Dean’s paragraph
[0049] describes ranking and organizing documents according to a raw visit
frequency. Dean only compares terms in one document, and organizes the
documents based on either frequency of occurrence of the search term (¶
[0047]), or based on raw visit frequency with more weight given to some
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selections (¶ [0049]). However, Dean fails to assign more weight to a final
selection than a non-final selection, especially where, as required by claims
1 and 15 from which claims 4 and 18 depend, weight is assigned to the
document based on whether that document was selected by a user of a prior
search. Dean only compares terms in one document based on one search,
not two searches as claimed.
Accordingly, we will not sustain the Examiner’s rejection of claims 4
and 18.
Claims 8 and 22
We agree with Appellants’ arguments (App. Br. 8; Reply Br. 5-6) that
the Examiner erred with respect to the rejection of claims 8 and 22, because
Dean’s paragraph [0048] does not disclose correlating the weight assigned to
a document “to a degree of closeness of said search terms of said prior
search and said search terms of said document search,” as set forth in each of
claims 8 and 22. We also agree with Appellants that the Specification best
defines the recited term “degree of closeness” as “query proximity” (Reply
Br. 6) (citing Spec. 6:20-31 and 8:23-29). The recited degree of closeness
determinations are also defined as “query proximity techniques that evaluate
term distance, e.g., determining if the terms are synonyms” (Spec. 8:6-7).
Dean’s paragraph [0048] merely discloses organizing documents
based on the number of other documents that link to those documents, which
is not the same as correlating the weight assigned to a document to a degree
of closeness of search terms from a prior search and search terms of a
current document search. In other words, Dean’s number of documents is
not equivalent to query proximity of search terms from two different
searches using synonyms.
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Accordingly, we will not sustain the Examiner’s rejection of claims 8
and 22.
Claims 10 and 24
We agree with Appellants (App. Br. 8; Reply Br. 6-7) that the
Examiner erred with respect to the rejection of claims 10 and 24, because
Acharya’s paragraph [0052] fails to disclose assigning more weight to
documents selected by an expert than to documents selected by a non-expert.
Acharya’s paragraph [0052] merely describes assigning higher scores to
documents “for which there is an increase in the rate of change” than to
documents that have “a steady rate of change” (¶ [0052]).
Accordingly, we will not sustain the Examiner’s rejection of claims
10 and 24.
Claims 11 and 25
We agree with Appellants (App. Br. 9; Reply Br. 7) that the Examiner
erred with respect to the rejection of claims 11 and 25, because Acharya’s
paragraphs [0032], [0050], and [0093] fail to disclose a weight being
assigned to a document correlated to a ratio of the number of times the
document was selected in a prior search and a number of prior search result
hitlists. Although paragraph [0050] discloses a ratio, it is a “ratio of a
number of new or unique pages associated with a document over a period of
time versus the total number of pages associated with that document” (¶
[0050]). Acharya fails to disclose or suggest correlating the weight assigned
to a document “to a ratio of the number of times said document was selected
in a prior search and a number of prior search result hitlists, wherein said
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prior search result hitlists contain an entry identifying said document,” as
recited in claims 11 and 25.
Accordingly, we will not sustain the Examiner’s rejection of claims
11 and 25
Claims 12 and 26
We agree with Appellants (App. Br. 9-10; Reply Br. 7-8) that the
Examiner erred with respect to the rejection of claims 12 and 26, because
Acharya’s paragraph [0072] fails to disclose assigning less weight to a
document corresponding to a non-final selection than to a document that is
not selected by a user. Acharya’s paragraph [0072] describes a metric for
assigning weight to documents from web sites based on a percentage of links
found within a certain amount of time in days from the present (i.e., based
on the age of the links). Acharya fails to disclose or suggest assigning less
weight to a document corresponding to a non-final selection than to a
document that is not selected by a user, as recited in claims 12 and 26.
Accordingly, we will not sustain the Examiner’s rejection of claims
12 and 26.
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CONCLUSIONS
(1) Appellants have not presented any arguments with respect to the
rejections of claims 3, 5-7, 9, 13, 14, 17, 19-21, 23, 27, 28, 31, and 32 as
being obvious under 35 U.S.C. § 103(a) over Bharat, Acharya, and Dean.
As such, Appellants have not argued that the Examiner erred in rejecting
these claims, or otherwise shown the obviousness rejection to be in error.
See 37 C.F.R. § 41.37(c)(1)(vii).
(2) The Examiner has not erred in rejecting claims 1, 15, 29, and 33 as
being unpatentable under 35 U.S.C. § 103(a).
(3) Appellants have established that the Examiner erred in rejecting
claims 2, 4, 8, 10-12, 16, 18, 22, 24-26, and 30 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Bharat, Acharya, and Dean.

DECISION
The Examiner’s rejection of claims 1, 15, 29, and 33 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s rejection of claims 3, 5-7, 9, 13, 14, 17, 19-21, 23, 27,
28, 31, and 32 under 35 U.S.C. § 103(a) is affirmed.3

3 Should there be further prosecution before the Examiner, claims 3, 5-7, 9,
13, 14, 17, 19-21, 23, 27, 28, 31, and 32 should be canceled, as Appellants
have demonstrated a clear intent in the Notice of Appeal (see Notice of
Appeal of July 7, 2006, appealing from the “last decision of the Examiner”)
and the Appeal Brief (see App. Br. 2, only appealing and arguing claims 1,
2, 4, 8, 10-12, 15, 16, 18, 22, 24-26, 29, 30, and 33) not to pursue these
claims. See Ex Parte Ghuman, No. 2008-1175, 2008 WL 2109842 (BPAI
May 1, 2008) (precedential) (holding that when appellants are silent in the
notice of appeal as to the specific claims being appealed, and then clearly
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The Examiner’s rejection of claims 2, 4, 8, 10-12, 16, 18, 22, 24-26,
and 30 under 35 U.S.C. § 103(a) 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).

AFFIRMED-IN-PART

ke

states in the appeal brief that some of the finally rejected claims are not
being pursued in the appeal, appellants should cancel those claims not
pursued).