Ex Parte Khaliq et al

Board of Patent Appeals and Interferences

Jul 30, 2012

10953112 (B.P.A.I. Jul. 30, 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.
10/953,112 09/30/2004 Siraj Khaliq 0026-0111 9342
44989 7590 07/31/2012
HARRITY & HARRITY, LLP
11350 Random Hills Road
SUITE 600
FAIRFAX, VA 22030
EXAMINER
CHEUNG, HUBERT G
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
07/31/2012 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 SIRAJ KHALIQ and WILLIAM C. BROUGHER
____________

Appeal 2010-004248
Application 10/953,112
Technology Center 2100
____________

Before MAHSHID D. SAADAT, DAVID M. KOHUT,
and RAMA G. ELLURU, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 4-6, 9-20, 22, and 29-39. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse and enter a NEW GROUND of rejection pursuant to
37 C.F.R. § 41.50(b).
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to systems and methods for “information
retrieval and, more particularly, to the providing of information that is
relevant to a particular document.” (Spec. ¶ [0001]).
Independent claim 1 is illustrative of the invention and reads as
follows:
1. A method performed using a computer system,
comprising:
receiving, from a client device over a network, a search
query;
performing a first search to identify a set of search results
based on the search query;
presenting the set of search results for display on the
client device;
receiving, from the client device, selection of one of the
search results;
presenting, for display on the client device, a reference
page associated with a scanned document associated with the
selected one of the search results, the reference page comprising
information regarding the scanned document and a link
associated with a search;
receiving, from the client device, selection of the link;
performing a second search, in response to receiving
selection of the link, to identify web documents based on an
attribute associated with the scanned document; and
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presenting a result of the second search for display on the client
device.
References
Hess US 2006/0173825 A1 Aug. 3, 2006
Melman US 2007/0016578 A1 Jan. 18, 2007
Jenkins US 7,287,214 B1 Oct. 23, 2007

Rejections
(1) Claims 1, 4-6, 9, 13-15, 18-20, 22, and 29-39 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Melman. (Ans. 3).
(2) Claims 10-12 and 16 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Melman in view of Jenkins. (Ans. 15).
(3) Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Melman in view of Hess. (Ans. 17).
In rejecting claims 1, the Examiner finds that Melman teaches the
recited claim element “the reference page comprising … a link associated
with a search,” as recited in claim 1. (Ans. 18-22). In particular, the
Examiner relies on Melman’s teaching that the system (100) searches
System Database (108) for stored summaries associated with the titles of
window (220) and that the stored summaries are displayed in window (222).
(Ans. 19 (citing Melman ¶¶ [0138], [0139])). The Examiner finds that when
the system (108) returns the selected summaries in window (222), Melman
discloses “presenting a reference page associated with a scanned document
associated with a selected one of the search results.” (Ans. 19-20). Thus,
the Examiner equates Melman’s summary in window (222) with the recited
“reference page.” In addition, the Examiner relies on Melman’s teaching the
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process of adding key terms by typing in the term or by double-clicking on
words in windows (210), (212), or (214) to form a new query in window
(202). (Ans. 21-23 (citing Melman ¶¶ [0140]-[0144])). Thus, the Examiner
equates the new query in window (202) with the “link associated with a
search.” (Ans. 21-22).
Appellants’ Contentions
Appellants contend that even assuming the Melman summary can be
construed as corresponding to the “reference page” as recited in claim 1,
“MELMAN does not disclose or suggest that the summary comprises a link
associated with a search, as would be required by MELMAN based on the
Examiner’s interpretation of claim 1.” (App. Br. 14) (emphasis added).
Appellants argue that Melman’s new query is not “in the summary” of
Melman, which the Examiner equates with the claimed “reference page,”
and that rather, the new query is formed by double-clicking on key terms.
(Reply Br. 5-6).

ISSUE
Did the Examiner err in rejecting the claims as anticipated by Melman
because the reference fails to disclose the recited “the reference page
comprising … a link associated with a search?”

ANALYSIS
We agree with Appellants that Melman does not disclose the disputed
limitation of claim 1. We understand the Examiner’s rejection to be based
on interpreting the Melman summary in window (222) with the recited
“reference page.” (Ans. 19-20). However, claim 1 further requires “the
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reference page comprising … a link associated with a search.”
1
As
Appellants contend, if Melman’s summary in window (222) is equated with
the recited “reference page,” as the Examiner finds (id.), Melman does not
teach that the summary comprises a “link associated with a search.” The
new search query in window (202), which the Examiner equates with the
recited “link associated with a search” (Ans. 21-22), is located in a separate
window and not in the summary. In particular, the Examiner does not
identify, and we also do not find, any teachings in Melman that describe
Melman’s summary “comprising” “the link associated with a search,” as
recited in claim 1. Therefore, Melman does not anticipate claim 1 because
the reference fails to disclose the claim element “the reference page
comprising … a link associated with a search.”

NEW GROUND OF REJECTION
We enter the following new ground of rejection for claims 1, 22, 29,
30, and 37 under the provisions of 37 CFR § 41.50 (b).
Claims 1, 22, 29, 30, and 37 are rejected under 35 U.S.C. § 103 (a) as
being obvious over Melman in view of Hess (US 2006/0173825 A1). Hess
relates to systems and methods for providing an Internet media service,
where for example the media is in the form of an on-line book, with unique
search capabilities. (Hess ¶¶ [0009], [0035]).

1
Indeed, all the independent claims at issue recite a similar limitation. See
claims 22 (“the reference page including a link to perform a search”); 29
(“the reference page including a link associated with a plurality of
searches”); 30 (“the reference page including a link associated with a
search”); 37 (same language as claim 1).
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We find that the combination of Melman and Hess teaches or suggests
all the claim limitations of claim 1, as described below.
“A method performed using a computer system, comprising:
receiving, from a client device over a network, a search query”
Melman teaches that the client station (104) is connected to the server
by any means of communication (110), such as LAN [i.e., over a network].
(Melman ¶¶ [0017]-[0019]). In addition, the Melman user typing in key
terms in the human interface is the search query. (Id. at ¶¶ [0129]-[0135]).
“performing a first search to identify a set of search results based on the
search query”
The Melman system searches System Database (108) for titles and
summaries that are related to the user’s query. (Id. at ¶¶ [0023], [00134]-
[0136]).
“presenting the set of search results for display on the client device”

In the Melman system, the client station (104) connects to the system
database (108) on server (102). (Id. at ¶¶ [0017]-[0020]). In addition,
Melman describes the human interface (114) on the client station (104). (Id.
at ¶¶ [0020], [0104]-[0111]; Fig. 2). Melman teaches that a set of titles and
summaries, i.e., “search results,” is presented to the user by the search
engine on the human interface, with titles in window (220) and summaries in
window (222). (Id. at ¶¶ [0023], [0103]-[0104], [0110], [0147]).
“receiving, from the client device, selection of one of the search results”
Melman teaches that “[t]he user may select a summary[,]” one of the
search results, “and double click it.” (Id. at ¶ [0148]).
“presenting, for display on the client device, a reference page associated
with a scanned document associated with the selected one of the search
results "
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The selected document is presented for display in a dedicated widow,
such as a Netscape browser window, which is associated with the title
displayed in window (220). (Id. at ¶¶ [0138], [0149]). "Reference" is
defined as "to refer to: to reference a file" (See reference. (n.d.).
Dictionary.com Unabridged (v 1.1). Retrieved July 23, 2012, from
Dictionary.com: http://dictionary.reference.com/browse/reference?s=t). By
definition, a summary refers to and is associated with the document it
summarizes because the document summary itself provides information
about the specific document.
The claim further requires that the “reference page” be associated with
a “scanned document.” "Scan" is defined as "to search (stored data)
automatically for specific data" (See scan. The American Heritage®
Dictionary of the English Language, Fourth Edition. Houghton Mifflin
Company, 2004. 16 Apr. 2009. Retrieved July 23, 2012 from
Ahdictionary.com: http://ahdictionary.com/word/search.html?q=scan). In
order for the document to be searched for and retrieved in the system, the
document must be first scanned in or stored in the system. The Melman
“summary” summarizes a document stored and searched in the Melman
System Database. (See id. Fig. 3B (“Search for documents is performed;” ¶
[0035] (indicating that “[d]ocument [can be] saved on storage device”); ¶
[0103] (“Document section 218 is used to display titles and summaries of
documents”)). In other words when documents are stored into the Melman
system, the documents become scanned documents. Furthermore, the
summary, and the scanned document it summarizes, are “associated with the
selected one of the search results,” as recited in claim 1, because the
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summary was chosen by the user. (Melman Abstract (“A system for the
support and management of search for documents is present[]”).
“the reference page comprising information regarding the scanned
document and a link associated with a search”

The Melman summary “compris[es] information regarding the
scanned document” as it includes a summary of the stored and searched
document. Although we find that the Melman summary does not
“compris[e] … a link associated with a search,” Hess teaches this claim
element.
As shown in Figure 5, Hess specifically describes a Search Player
View (202) interface page as the claimed “reference page.” (Hess ¶ [0049]).
The Search Player View (202) is displayed as a result of the system reading,
storing, and analyzing digital information about the present digital medial
stream (e.g., a digital book). (Hess ¶¶ [0035], [0048]). More particularly,
the system conducts a pre-search query in a database based on the digital
information related to the present digital media stream and the results are
captured and information associated with the captured results are populated
into the Search Player View (202). (Id.) Thus, for example, where the
present media stream is in the form of an on-line book, the subject matter of
the book, including the author or other attributes of the material is used to
provide search results. (Id. at ¶ [0035]; ¶ [0020] (information that may be
presented includes “reviews of a particular piece of media” )).
Importantly, Hess’s Search Player View (202) “comprises” links
associated with searches. In particular, Search Player View (202) includes
sub-view (515), which consists of links to media program content. (Id. at ¶
[0052]). Thus, if, for example, the present media stream is in the form of
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Internet radio, the media program “link” maybe “Classic Rock.” (Id. at ¶¶
[0051], [0053]). Search Player View (202) also includes sub-view (520),
which consists of an area to enter key search words (521) as well as a
“search” or “go” icon which a user can click on to initiate a search. (Id. at ¶
[0052]). Therefore, Hess discloses the claim element missing in Melman,
“the reference page comprising … a link associated with a search.” (See
Hess Fig. 5; ¶¶ [0049]-[0054]).
“receiving, from the client device, selection of the link”
Hess teaches that a user can click on a link in the Search Player View
(202). For example, a user can click on the “Classic Rock” link mentioned
above, and the selection is received by the Hess system. (Id. ¶ [0053]).
“performing a second search, in response to receiving selection of the link,
to identify web documents based on an attribute associated with the
scanned document”

Selection of a “media program content” link by the Hess user may
result in “a second search.” For example, selection of the “Classic Rock”
link results in streaming digital audio of classic rock music or the display of
another set of links. (Id.). In addition, the Hess links can identify “web
documents” as these links may be to “Internet sites, news stories, links to
news stories, links to download the media itself, links to download related
media, links to purchase items relevant to the media, advertisements,
graphics, more media, other forms of media (i.e. movies, videos, etc.). (Id. ¶
[0022]). The present invention defines “web document” “broadly … to
include any machine-readable and machine-storable work product available
via a network, such as network.” (Spec. ¶ [0029]). Thus, the information or
data that the Hess system provides a user via a selection of a link can be the
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“identif[ication of] web documents.” In addition, when the present media is
a book (a scanned document), for example, Hess describes that the “subject
matter of the book, the author or other attributes of the material [scanned
document] is used to provide search results according to the invention.” (Id.
¶ [0035]). Thus, Hess teaches the identification of web documents based
“on an attribute associated with the scanned document.”
“presenting a result of the second search for display on the client device”

Hess teaches “presenting a result of the second search for display on
the client device” wherein the user selects the “Classic Rock” link (the link
in a reference page) and “another set of links is displayed” and Hess states
that “[o]ther arrangements are possible as well.” (Id. ¶ [0053]).
Accordingly, the combination of Melman and Hess teaches or suggests all
the limitations of claim 1.
With respect to claim 22, the Melman system comprises “a memory to
store instructions; and a processor to execute the instructions” as it includes
a computer, commonly known to include “memory,” and suitable software
(“instructions”) to perform (i.e, “processor”) the methods disclosed therein.
(Melman ¶¶ [0015]-[0016]). With respect to claim 29, the Hess user’s
selection of a link in Search Player View (202) may result in “automatically
performing a plurality of searches” as Hess states that “another set of links”
may be displayed, and also that “[o]ther arrangements” are possible. (Hess ¶
[0053]). It follows that where one search is possible, a “plurality of
searches” is likewise possible. With respect to claim 30, Melman teaches
“[a] computer readable memory device containing computer-executable
instructions” as the Melman system includes a computer, commonly known
to include “computer readable memory,” and suitable software (“computer-
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executable instructions”). (Id.). With respect to claim 37, Melman teaches
“generating scores for the web documents” by ranking URLs (“web
documents”) retrieved by a query. (Id. ¶ [0027]-[0049]). In addition,
Melman describes “sorting the web documents based on the scores” because
the Melman search result references are sorted. (Melman claim 9, ll. 5-6).
In order for the reference to be sorted, some kind of scoring method must be
used. Melman “present[s], for display on the client device, the sorted web
documents” because the search results of the user’s query are displayed,
including titles and summaries. (Id. ¶ [0147]). Melman teaches “identifying
a web document of the sorted web documents, where the web document
relates to the attribute” because the user may select a summary from the list
of summaries and the summary relates to the attribute of the scanned
document as it is a summary of the document. (Id. ¶ [0148]). The Melman
system “extract[s] information from the web document” and “present[s], for
display on the client device, the extracted information” by displaying in a
dedicated window the complete summary. (Id. ¶ [0149]).
The remaining limitations of these claims are taught by the
combination of Melman and Hess as discussed above with respect to claim
1. We further find that a person of ordinary skill would have modified
Melman with the improved search capabilities of Hess to include nested
searching (i.e., links within a displayed page) as both references are
concerned with improvements to searching for and retrieving content.
(Melman Abstract (searching information related to documents); Hess ¶
[0016], [0020], [0035] (searching information related to various types of
media including documents)).
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We have entered the new grounds only for the independent claims and
leave it to the Examiner to evaluate the patentability of the other claims in
view of these references by themselves or in combination with other newly
found or previously cited references.

CONCLUSION
On the record before us, we find that the Examiner erred in rejecting
independent claim 1 because Melman does not disclose the disputed claim
limitation discussed above. Therefore, we do not sustain the 35 U.S.C.
§ 102 rejection of independent claim 1 and independent claims 22, 29, 30,
and 37 which include similar limitations discussed above, nor any of the
rejections of dependent claims 4-6, 9-20, 31-36, 38, and 39. Independent
claims 1, 22, 29, 30, and 37 are newly rejected.

DECISION
The decision of the Examiner rejecting claims 1, 4-6, 9-20, 22, and
29-39 are reversed.
We have also entered a new ground of rejection under 37 C.F.R.
§ 41.50(b) for claims 1, 22, 29, 30, and 37.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that
the proceeding be reheard under
§ 41.52 by the Board upon the same
record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

ELD