Ex Parte Cochran

Patent Trial and Appeal Board

Apr 15, 2013

11702509 (P.T.A.B. Apr. 15, 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.
11/702,509 02/06/2007 Nancy P. Cochran 110760-00110 5928
27557 7590 04/16/2013
BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
PHAN, TUANKHANH D
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
04/16/2013 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NANCY P. COCHRAN
____________________

Appeal 2013-001328
Application 11/702,509
Technology Center 2100
____________________

Before JEAN R. HOMERE, THU A. DANG, and ANDREW J. DILLON,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 In a prior Decision (Appeal Number 2011-002907, decided April 11, 2012,
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2011002907-
04-11-2012-1) (“Decision”), we affirmed the Examiner’s rejection of claims
1-10 and 12-31 under 35 U.S.C. § 102(a) over Richardson and of claim 11
under 35 U.S.C. § 103(a) over Richardson in further view of Todd.
Appeal 2013-001328
Application 11/702,509

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7 and 9-38. Claim 8 has been canceled. We have jurisdiction
under 35 U.S.C. § 6 (b). An oral hearing was held on April 9, 2013.
We reverse.

A. INVENTION
According to Appellant, the invention is related to conducting a
search for information by selecting search terms from amongst all the terms
in the search results themselves (Spec. 1, ll. 4-7).

B. ILLUSTRATIVE CLAIMS
Claim 1 is exemplary and reproduced below:
1. A method of searching an electronic information source with a system
having a display device, an input device and a processor, the method
comprising:

receiving at the processor, first search results of a first search of the
electronic information source, the first search results including a plurality of
terms that are selected from the electronic information source;

analyzing at the processor, each of the plurality of terms in the first
search results to identify a plurality of selectable terms amongst the plurality
of terms in the first search results that are distinct from a plurality of non-
selectable terms amongst the plurality of terms in the first search results,
wherein each of the plurality of selectable terms is selectable by a user and
each of the plurality of non-selectable terms in the first search results are not
selectable by the user;

displaying a plurality of the first search results of the first search on
the display device, whereby the identified plurality of selectable terms in the
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Application 11/702,509

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first search results are distinguished on the display from the plurality of non-
selectable terms in the first search results;

enabling the user to choose, using the input device, an additional
search term by selecting one of the identified plurality of selectable terms
from the first search results displayed on the display device;

conducting a second search at the processor using the selected search
term to search the first search results; and,

displaying on the display device, a plurality of second search results
from the second search.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Richardson US Pat. Pub. 2006/0190436 A1 Aug. 24, 2006
Todd US 7,100,123 B1 Aug. 29, 2006

Claims 1-7, 9, 10, and 12-38 stand rejected under 35 U.S.C. § 102(a)
as anticipated by the teachings of Richardson.
Claim 11 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Richardson in view of Todd.

II. ISSUE
Has Appellant shown the Examiner erred in finding that Richardson
teaches “analyzing at the processor, each of the plurality of terms in the first
search results” to “identify a plurality of selectable terms amongst the
plurality of terms in the first search results that are distinct from a plurality
of non-selectable terms” (claim 1)?
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Richardson
1. Richardson discloses a text entry box 830 that allows a user to
enter a phrase, and suggestions are listed in a drop-down text field 840,
wherein the suggestions can be selected by the user as a complete query by
selecting a desired entry with a mouse and then clicking on the Search
button 850 in order to submit the suggestion as a query for a search (p. 6, ¶
[0068]; Fig. 8).
2. As the user enter a phrase in the text entry box 830, results are
displayed in a results area 860 that are based upon a preliminary search
using the top-most suggestion (p. 6, ¶ [0069]; Fig. 8).

IV. ANALYSIS
Claims 1-7, 9, 10, and 12-38
The Examiner finds that “Richardson discloses reading to identify
selectable terms and non-selectable terms” and thus “Richardson provides
conducting more than one search” (Ans.4). However, Appellant contends
that “the multiple searches of different terms in Richardson cannot read on
the ‘first search’” of the claimed invention, and “[t]his distinction has now
been emphasized in the claims, which were modified after the Board’s
Decision to require that the system analyze each of the plurality of search
term results and distinguish them from non-selectable terms” (App. Br. 17).
Upon review of the record, we agree with Appellant.
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As set forth in our previous Decision, we found no error in the
Examiner’s finding that Richardson’s “words in ‘840’ are selectable terms as
well as the links of ‘seek wellness,’ ‘wellness health,’ and so forth, while
other words such as text below the links ‘seek wellness’ and ‘well health’
are non-selectable terms/words” (Decision 7, citing Ans. at 9). Thus, we
found “Richardson’s determining of suggestions for selection by the user to
comprise a first search, wherein the subsequent search based on the
determined suggestion comprises a second search” (Decision 7).
However, we do not find any teachings or even suggestions in the
portions of Richardson cited by the Examiner of “analyzing at the processor,
each of the plurality of terms in the first search results” to “identify a
plurality of selectable terms amongst the plurality of terms in the first search
results that are distinct from a plurality of non-selectable terms,” as is now
required by claim 1.
The portions of Andrews cited by the Examiner merely discloses, in
response to a user entering a phrase, displaying a listing of suggestions in a
drop-down text field that can be selected by the user as a complete query (FF
1) and results in a results area based upon a preliminary search using the top-
most suggestion (FF 2). While the suggestions in the drop-down fields and
the links in the results area are selectable and the text below the links non-
selectable, we do not find any teaching in the cited portions that displayed
results in the drop-down fields and the results area are analyzed at the
processor to identify the selectable terms distinct from the non-selectable
terms, as required by claim 1.
Since the Examiner has not made a clear distinction as to what
teachings of Richardson comprise the “analyzing” step “at the processor” to
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“identify” the selectable terms “distinct” from the non-selectable terms, the
Examiner has failed to meet the initial burden of proof required for the
rejection pursuant to 35 U.S.C. § 102(a).
Accordingly, we are constrained to reverse the Examiner’s rejection
of representative claim 1 over Richardson. Independent claims 4, 17, 19, 20,
and 32 recite similar limitations and thus stand with claim 1. Thus, we also
reverse the rejection of independent claims 4, 17, 19, 20, and 32 and claims
2, 3, 5-7, 9, 10, and 12-16, 18, 21-31, and 33-38 depending respectively
from claims 1, 4, 17, 19, 20, and 32 over Richardson.
Claim 11
The Examiner does not explain how Todd would have cured the
deficiencies of Richardson discussed above with respect claim 1 and claim 4
standing therewith. Accordingly, we are also constrained to reverse the
Examiner’s rejection of claim 11 depending from claim 4 over Richardson in
view of Todd.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-7, 9, 10, and 12-38 under 35
U.S.C. § 102(a) and of claim 11 under 35 U.S.C. § 103(a) is reversed.

REVERSED

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