Ex Parte Arrasvuori et al

Patent Trial and Appeal Board

Oct 5, 2017

13000277 (P.T.A.B. Oct. 5, 2017)

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.
13/000,277 12/20/2010 Juha Arrasvuori P6850US00 1850
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
EXAMINER
GMAHL, NAVNEET K
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
10/10/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUHA ARRASVUORI and JAN ESKOLIN
Appeal 2016-005639
Application 13/000,277
Technology Center 2100
Before BRUCE R. WINSOR, AMBER L. HAGY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 25—45, which are all of the pending claims. We
have jurisdiction over these claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Nokia Corporation. (App.
Br. 1.)
Appeal 2016-005639
Application 13/000,277
STATEMENT OF THE CASE
Introduction
The claims are directed to method and apparatus for searching
information. (Abstract.)
Exemplary Claim
Claims 25, 32, 38, 39, and 44 are independent. Claim 25, reproduced
below with the disputed limitations italicized, is exemplary of the claimed
subject matter:2
25. A method, comprising:
receiving a request comprising a search query expression,
the search query expression comprising an identifier for a search
item;
determining a data member of the search item;
analyzing the data member to generate an additional
search input;
generating a search result based, at least in part, on the
search query expression and the additional search input; and
sending the search result.
2 As reproduced in Appellants’ Claims Appendix, claim 25 recites
“processing the data member ... .” (App. Br. 21 (emphasis added).)
Independent claims 32, 38, 39, and 44 contain commensurate recitations.
(App. Br. 23, 25, 27.) This is in error. As noted infra, the Examiner did not
enter Appellants’ post-final amendment, in which Appellants sought to
substitute “processing” for “analyzing.” (See Advisory Action dated July 2,
2015; Amendment dated June 23, 2015.) Therefore, the claims as examined,
and as they stand on appeal, recite “analyzing” instead of “processing.”
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Appeal 2016-005639
Application 13/000,277
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kraft et al. (“Kraft”) US 2002/0169759 A1 Nov. 14, 2002
Rejections3
(1) Claims 25—45 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Final Act. 3—4.)
(2) Claims 25^44 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kraft.4 (Final Act. 4—12.)
Issues
(1) Whether the Examiner erred in finding the Specification fails to
provide written description support, in accordance with 35 U.S.C. § 112,
first paragraph, for “analyzing the data member to generate an additional
search input” and “generating a search result based, at least in part, on the
search query expression and the additional search input,” as recited in
independent claim 25 and commensurately recited in independent claims 32,
38, 39, and 44.
(2) Whether the Examiner erred in finding Kraft discloses all of the
limitations of independent claim 25, including “analyzing the data member
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011. (Final
Act. 2.)
4 The Examiner does not reject claim 45 over the prior art. (Final Act. 4;
Ans. 4.)
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Appeal 2016-005639
Application 13/000,277
to generate an additional search input” and “generating a search result based,
at least in part, on the search query expression and the additional search
input,” which limitations are commensurately recited in independent claims
32,38, 39, and 44.
ANALYSIS
A. Written Description Rejection
The written description requirement of 35 U.S.C. § 112, first
paragraph, “requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art.”
AriadPharms, Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id.
To satisfy the written description requirement, “the missing
descriptive matter must necessarily be present in the [original] application’s
specification such that one skilled in the art would recognize such a
disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998);
see also Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that
the written description requirement is “‘not a question of whether one skilled
in the art might be able to constmct the patentee’s device from the teachings
of the disclosure .... Rather, it is a question whether the application
necessarily discloses that particular device’”) (emphasis in original).
The Examiner rejected the claims under 35 U.S.C. § 112, first
paragraph, based on the Examiner’s finding that the limitations “analyzing
the data member to generate additional search input” and “generating a
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Application 13/000,277
search result based, at least in part, on the search query expression and the
additional search input” require “generating results based in part on the
additional search input[,] which is nowhere to be found in the disclosure.”
(Final Act. 3.) The Examiner finds the Specification does teach “converting
data members to different formats, running image recognition algorithms,
making semantic analysis, and/or the like,” but finds that disclosure “is not
the same as ‘analyzing the data member to generate an additional search
input,’” as claimed. {Id. at 4 (emphasis added).)
In response, Appellants argue that the Specification discloses
“processing/analyzing of the data members,” which results in “modified data
members,” and further argue “it is clear a modified data member can be
considered an ‘additional search input’ as the unmodified and modified data
members may be sent with the search query expression to generate a result.”
(Reply Br. 2 (emphases added) (citing Spec. 116, 126).)
We are not persuaded by Appellants’ arguments. Although
Appellants argue the Specification discloses processing data members into
modified data members (App. Br. 10-11), Appellants do not persuasively
point to any disclosure in the Specification that supports analyzing a data
member to generate an additional search input. That is, we find
unpersuasive Appellants’ argument that the Specification’s discussion of
“modified data members” provides adequate support for the claimed
“additional search input.” App. Br. 10-11 (citing Spec. 127—130).
Accordingly, we affirm the written description rejection.
We further note Appellants attempted to amend the claims after the
Final Rejection to replace “analyzing” with “processing.” (Resp. dated June
23, 2015, at 11.) The Examiner, however, did not enter the amendment.
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Application 13/000,277
(Advisory Action dated July 2, 2015.) Therefore, we do not express an
opinion on whether the claims, if amended to substitute “processing” for
“analyzing,” would overcome the Examiner’s rejection under section 112.
B. Anticipation Rejection
The Examiner rejects claims 25 44 as anticipated by Kraft. (Final
Act. 4—12.) Appellants argue this rejection is in error because Kraft does not
teach generating an additional search input based on analyzing a data
member that was determined from a search query. (App. Br. 14—18.)
We are persuaded by Appellants’ argument. As Appellants note, and
we agree, Kraft teaches a graphics-based user input that is then processed to
formulate a text-based search query. (Id.; see Kraft ]Hf 24—25, 28—36 and
Fig. 4.) In particular, Kraft discloses a graphical display in which a user
formulates a search query using a graphical “search object,” such as an
image of a tennis racket for a search about tennis. (Kraft 128—29.) As part
of formulating the search request, the user also selects a graphical “domain
object,” which “provides context to a search.” (Id. at 130.) In Kraft, a
“domain object” may be, for example, an image of a “charge card” for a
search about buying a product (such as a tennis racket). (Id.) Once the
images of the “search object” and the “domain object” are dragged by the
user onto the graphical interface, “the application 112 formulates a query, at
step 406. In order to accomplish this, the user’s above-mentioned selections
are compiled and defined into a search request. A query is then created,
preferably as a text search-string.” (Id. at 132 and Fig. 4.) Thereafter, the
query is initiated, a lookup is performed, and the results are returned to the
user. (Id. at || 33—36.) Thus, as Appellants argue, and we agree, Kraft does
not disclose analyzing a data member to generate an additional search input,
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which is then used along with the search query expression to generate a
search result, as recited in the claims; rather, Kraft discloses modifying the
user’s entire graphical search query “into a text query and then only the
modified version is used in the final search.” (Reply Br. 4; see Kraft || 24—
28.)
We, therefore, are persuaded of error in the Examiner’s finding that
Kraft anticipates independent claim 25, and we reverse that rejection.
Independent claims 32, 38, 39, and 44 contain commensurate recitations,
and we, therefore, reverse the Examiner’s anticipation rejection of those
claims for the same reason. The dependent claims stand with their
respective independent claims.
DECISION
The Examiner’s rejection of claims 25—45 under 35 U.S.C. § 112, first
paragraph, is affirmed.
The Examiner’s rejection of claims 25 44 under 35 U.S.C. § 102(b) is
reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 41.50(a)(1) (“An affirmance of the rejection of a claim on any of
the grounds specified constitutes a general affirmance of the examiner on
that claim, except as to any ground specifically 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)(l)(iv).
AFFIRMED
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