Ex Parte Khaliq et al

Board of Patent Appeals and Interferences

Jun 26, 2012

10952444 (B.P.A.I. Jun. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/952,444 09/29/2004 Siraj Khaliq 0026-0109 7387
44989 7590 06/26/2012
HARRITY & HARRITY, LLP
11350 Random Hills Road
SUITE 600
FAIRFAX, VA 22030
EXAMINER
YEN, SYLING
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
06/26/2012 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, JOE SRIVER, FREDERICK G.M. ROEBER,
WILLIAM BROUGHER, and ADAM SMITH
____________

Appeal 2010-002781
Application 10/952,444
Technology Center 2100
____________

Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JEREMY J.
CURCURI, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5, 7, 10-27, 38, 40, 41, 44, 45, 47, 51, and 53-57. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to user interfaces to present document
information related to search queries. Search results include (1) an image
associated with the document; (2) a document excerpt; and (3) links to other
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associated document excerpts. See generally Abstract; Spec. ¶¶ 0001, 0004-
12. Claim 1 is illustrative with key disputed limitations emphasized:
1. A method performed by one or more devices, comprising:

receiving, by a processor associated with the one or more devices, a
search query;

identifying, by the processor, documents based on the search query;

generating, by the processor, a search result document that includes a
list including information regarding a plurality of the identified documents,
the search result document including, for one of the identified documents in
the list:

an image associated with the one of the identified documents,

an excerpt from the one of the identified documents that is associated
with the search query, and

a plurality of links to other excerpts, in the one of the identified
documents, that are associated with the search query;

receiving, by the processor, a selection associated with the one of the
identified documents; and

providing, by the processor, a reference page associated with the one
of the identified documents based on receiving the selection associated with
the one of the identified documents, the reference page including:

a plurality of excerpt images from the one of the identified
documents, and

information regarding web documents associated with the one
of the identified documents.

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THE REJECTIONS1,2
1. The Examiner rejected claims 1-5, 7, 10-14, 16, 38, and 40 under
35 U.S.C. § 102(a) as anticipated by “Amazon.com: Books / Search Inside
the Book,” Oct. 2003 (“Amazon”). Ans. 3-10.3
2. The Examiner rejected claims 15, 17-19, and 41 under 35 U.S.C.
§ 103(a) as unpatentable over Amazon and “Adobe Reader 6.0,” May 2003
(“Adobe”). Ans. 10-12.
3. The Examiner rejected claims 20-27, 45, 47, and 51 under
35 U.S.C. § 103(a) as unpatentable over Amazon and Hii (US 2002/0163545
A1; Nov. 7, 2002). Ans. 12-18.
4. The Examiner rejected claims 44 and 54 under 35 U.S.C. § 103(a)
as unpatentable over Graham (US 6,369,811 B1; Apr. 9, 2002) and Rowe
(US 5,737,599; Apr. 7, 1998). Ans. 18-23.
5. The Examiner rejected claim 53 under 35 U.S.C. § 103(a) as
unpatentable over Amazon and Chatani (US 2002/0103876 A1; Aug. 1,
2002). Ans. 25-26.
6. The Examiner rejected claims 55 and 56 under 35 U.S.C. § 103(a)
as unpatentable over Graham, Rowe, and Knowlton (US 5,283,864; Feb. 1,
1994). Ans. 27-28.

1 Since the Examiner withdrew a rejection under § 101, that rejection is not
before us. See Br. 3 (noting this withdrawal in the “Status of Amendments”
section); Ans. 2 (confirming this status as correct).
2 Although the Examiner rejects claims 48-50 (Ans. 23-27), those claims
were cancelled as Appellants indicate (Br. 2)—a status that the Examiner
confirms as correct. Ans. 2. Accordingly, the rejections of claims 48-50 are
not before us and are omitted here for clarity.
3 Throughout this opinion, we refer to the Appeal Brief filed May 26, 2009
and the Examiner’s Answer mailed September 3, 2009.
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7. The Examiner rejected claim 57 under 35 U.S.C. § 103(a) as
unpatentable over Amazon, Hii, and Graham. Ans. 28-29.

THE ANTICIPATION REJECTION
The Examiner finds that Amazon discloses every recited feature of
independent claim 1 including generating a “search result document,”
namely the list of books and corresponding excerpts in Figures 1 and 24
which is said to include, for one of the identified documents (i.e., the book
entitled “Rocket Science . . .”), plural links to other document excerpts that
are associated with the search query. Ans. 3-4, 32-34. The Examiner also
finds that Amazon provides a “reference page” in Figure 2 associated with
the identified document (book) including (1) plural excerpt images from that
document, and (2) information regarding associated web documents as
claimed. Ans. 5, 38-39.
Appellants argue that Amazon’s Figure 1 has only a single link—not
plural links to other excerpts. Br. 10-11. Appellants add that Amazon’s
Figure 2 does not anticipate the recited reference page since (1) its excerpts
include text—not images, and (2) it lacks associated web document
information as claimed. Br. 10-15. Appellants also argue various
limitations of claim 38 (Br. 15-17), the dispositive limitation being indicated
below.

4 Although Amazon does not label its three figures as Figures 1-3, each
figure nonetheless has a large circled numeral “1,” “2,” and “3” associated
with only that figure. We therefore adopt the Examiner and Appellants’
labelling these figures as “Figures 1-3” for clarity and consistency.
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ISSUES
Under § 102, has the Examiner erred by finding that Amazon
discloses:
(1)(a) a search result document including plural links to other
document excerpts that are associated with the search query, and (b) a
reference page including plural excerpt images as recited in claim 1?
(2) a third link to all pages of the document that include the search
term, selection of the third link causing images of the pages to be presented
as recited in claim 38?

ANALYSIS
Claims 1-5, 7, 10-14, and 16
We begin by clarifying the Examiner’s mapping the recited “search
result document” and “reference page” to corresponding features in
Amazon. The Examiner’s Answer is not a model of clarity in this regard,
since the Examiner refers to both Figures 1 and 2 in Amazon in connection
with both the “search result document” and “reference page.” See Ans. 3-5,
32-34, 38-39. In the Response to Arguments section, the Examiner refers to
the book list in Amazon’s Figure 1 and the index page in Figure 2 as
reasonably describing a search result document. Ans. 33. Although the
Examiner also refers to both Figures 1 and 2 of Amazon in connection with
the recited reference page (Ans. 37-39), the Examiner nonetheless
specifically refers to the index page in Figure 2 as a “reference page.” See
Ans. 38 (referring to Amazon’s index page as a “reference page”); see also
id. (“Fig. 2 shows a reference page to the book entitled ‘Rocket Science’ . . .
.”) (emphasis added).
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Based on this discussion, we presume that the Examiner intended to
map Amazon’s Figures 1 and 2 collectively to the recited “search result
document” and Figure 2 to the recited “reference page.” Based on this
mapping, we disagree with Appellants (Br. 11) that this “search result
document” lacks plural links to other document excerpts that are associated
with the search query. We reach this conclusion even assuming, without
deciding, that Figure 1 has only one link to other excerpts in the book as
Appellants assert (id.), namely the link within the sentence “[s]ee more
references to rocket experiments in this book.”5 Amazon, Fig. 1 (bolding
omitted; underlining in original). Accord Amazon, at 1 (“To see all
references to ‘rocket experiments’ within a particular book, click the ‘See
more references to ‘rocket experiments’ in this book’ link.”). Since
Amazon’s Figure 2 contains links to other excerpts (e.g., pages 21, 23, etc.),
the “search result document” corresponding to Amazon’s Figures 1 and 2
collectively therefore has plural links to other excerpts as claimed.
That said, however, the Examiner’s position is untenable since
Amazon’s Figure 2 does not disclose a “reference page” with plural excerpt
images from the identified document as the Examiner asserts (Ans. 39).
Rather, as Appellants indicate (Br. 13-14), Amazon’s Figure 2 shows
excerpted text from the pages—not images. To the extent that the
Examiner’s position is based on displayed text (with the particular font and

5 There are two other links in Figure 1, namely (1) the book’s title (“Rocket
Science . . .”), and (2) “page 21” preceding the quoted excerpt from that
page. These links appear to link (1) the book itself (the title link), or (2)
pages in their entirety (the “page 21” link). To the extent that these linked
pages constitute “excerpts” from the identified document (book) is a position
that has not been articulated on this record.
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bolding) in Figure 2 as constituting an “image” has not been articulated on
this record, nor will we speculate in that regard here in the first instance on
appeal. In any event, such an interpretation not only appears inconsistent
with the plain meaning of the term “image” which means a stored
description of a graphic picture,6 it runs counter to the distinction in
Appellants’ Specification between document excerpts corresponding to (1)
images of document text, or (2) text versions. Spec. ¶ 0054. Therefore,
even assuming, without deciding, that Amazon’s “reference page” in Figure
2 has information regarding associated web documents as claimed, the
Examiner’s anticipation rejection is still deficient due to the lack of excerpt
images from the identified document.
We are therefore constrained by this record to find that the Examiner
erred in rejecting independent claim 1 and dependent claims 2-5, 7, 10-14,
and 16 for similar reasons.

Claims 38 and 40
We likewise reverse the Examiner’s anticipation of independent claim
38. Claim 38 recites, in pertinent part, (1) a document page including a
search term, and (2) a second link to a next or previous page of the
document that includes the search term, selection of the second link causing
(a) a next or previous sequential page of the document to be presented when
the next or previous sequential page includes the search term, or (b) a page
that is not the next or sequential page of the document to be presented when

6 An “image” is defined, in pertinent part, as “[a] stored description of a
graphic picture either as a set of brightness or color values of pixels or as a
set of instructions for reproducing the picture.” MICROSOFT COMPUTER
DICTIONARY 267 (5th ed. 2002).
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that next or previous page does not include the search term; and (3) a third
link to all pages of the document that include the search term, selection of
the third link causing images of the pages to be presented.
First, nothing in the claim precludes the document pages that are
displayed by clicking a particular page link in Amazon—pages that contain
the particular search terms as evidenced by their excerpts. See Amazon, at
1. Nor does the claim preclude Amazon’s link to page 25 from
corresponding to the recited “second link” as the Examiner indicates. Ans.
9, 42. In this regard, the Examiner maps the recited “first links” to the links
for pages 21 and 23, both of which contain the search term as shown in
Figure 2. Selecting the page 25 link will present the next sequential page
after page 23 that includes the search term (i.e., page 25). See Amazon, Fig.
2.
This functionality fully meets the second link limitation of claim 38,
for the claim recites two alternative presentations when the second link is
selected, namely presenting (1) a next or previous sequential document page
when that page includes the search term, or (2) a different page if the next or
previous sequential document page does not include the term. We
emphasize the term “or” here, for Amazon need only disclose one of these
recited alternatives to meet the limitation, as is the case here. To the extent
that Appellants argue that (Br. 15-18) both conditions (i.e., conditions (1)
and (2) above) must be met to anticipate the claim, the argument is
unavailing for it is not commensurate with the scope of the alternative claim
language.
But we do find error in the Examiner’s mapping the recited “third
link” to the “references to rocket experiments” link in Amazon. Ans. 9.
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First, the Examiner did not squarely address Appellants’ specific argument
in this regard (Br. 17) in the Response to Arguments section of the Answer
(see Ans. 41-42), which makes our task of discerning the Examiner’s
position regarding the third link all the more difficult. Nevertheless,
selecting Amazon’s “references to rocket experiments” link does not cause
images of the pages to be presented as the Examiner appears to suggest (see
Ans. 9-10), but rather textual excerpts from those pages and their associated
links in the index page of Figure 2. Although selecting these links causes
the entire linked page to be presented,7 we cannot say—nor has the
Examiner shown—that these pages are necessarily images of those entire
pages upon presentation. Rather, they may be displayed as text similar to
the pages’ excerpts in Figure 2 as noted previously: we simply cannot tell
based on Amazon’s limited disclosure in this regard.
We are therefore persuaded that the Examiner erred in rejecting claim
38, and dependent claim 40 for similar reasons.

THE OBVIOUSNESS REJECTION OVER AMAZON AND ADOBE
Since the Examiner has not shown that Adobe cures the deficiencies
noted above regarding independent claims 1 and 38 as Appellants indicate
(Br. 19-21), we reverse the obviousness rejection of dependent claims 15,
17-19, and 41 (Ans. 10-12) for similar reasons.

7 See Amazon, at 1 (“If you want to see a specific page from the book in its
entirety, simply click on the link to that page.”).
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THE OBVIOUSNESS REJECTION OVER AMAZON AND CHATANI
Since the Examiner has not shown that Chatani cures the deficiencies
noted above regarding independent claim 1 as Appellants indicate (Br. 43-
44), we reverse the obviousness rejection of dependent claim 53 (Ans. 25-
26) for similar reasons.

THE OBVIOUSNESS REJECTION OVER AMAZON AND HII
Since the Examiner has not shown that Hii cures the deficiencies
noted above regarding independent claim 1 as Appellants indicate (Br. 22-
24), we reverse the obviousness rejection of dependent claims 20-27 (Ans.
12-17) for similar reasons.
We will, however, sustain the Examiner’s rejection of claim 45 over
Amazon and Hii. As the Examiner indicates, Amazon provides a link to (1)
a particular page (e.g., page 21), and (2) a link to plural accessed pages,
namely the “references to rocket experiments” link. Ans. 13, 54-55.
Although these links are not generated based on the user previously
accessing these pages (despite Amazon’s system having previously accessed
them for search and retrieval purposes), we nonetheless see no error in the
Examiner’s reliance on Hii merely to show that providing links to pages
previously accessed (i.e., loaded) by the user is well known, and providing
such a feature in connection with Amazon would have been obvious. See
Ans. 13-14, 55-56 (citing Hii, ¶¶ 0030, 0047; Fig. 3). On this record, we see
no reason why Amazon could not be so enhanced as the Examiner proposes,
for it would at least enable users to easily distinguish and retrieve
previously-accessed pages via displayed graphical elements. The
Examiner’s rationale to combine these features is hardly conclusory as
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Appellants assert (Br. 28-29), and, in any event, the proposed enhancement
is merely a predictable use of prior art elements according to their
established functions—an obvious improvement. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). We therefore find the Examiner’s
reason to combine the teachings of the cited references supported by
articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
claim 45, and claim 47 not separately argued with particularity. Since
Appellants present similar arguments regarding claim 51 (Br. 30-33), we are
unpersuaded of error in the Examiner’s rejection of claim 51 for similar
reasons.

THE OBVIOUSNESS REJECTION OVER GRAHAM AND ROWE
The Examiner finds that Graham has every recited feature of claim 44
except for the set of images to include images of fewer than all document
pages when a search term does not appear in every page. The Examiner
cites Rowe as teaching this feature in concluding that the claim would have
been obvious. Ans. 18-23, 60-61.
Appellants argue that the cited prior art does not teach or suggest a set
of images of corresponding document pages that all include a search term,
where the images include fewer than all pages when the search term does not
appear in every page as claimed. App. Br. 33-36. Appellants also argue that
the Examiner’s reason to combine the cited references is merely conclusory.
Br. 36-38.

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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 44 by
finding that Graham and Rowe collectively would have taught or suggested
a set of images of corresponding document pages that all include a search
term, where the images include fewer than all pages when the search term
does not appear in every page?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 44 which relies principally on Rowe for the
disputed image set limitation noted above. It is undisputed that Rowe’s
thumbnails may not exist for some pages. See Ans. 60-61 (citing Rowe, col.
39, ll. 8-23); see also Br. 36 (admitting this fact). Given this fact, the
Examiner reasons that since Rowe also notes that some search processes
download only portions of documents that include searched words, then it
would have been obvious to include images of fewer than all document
pages when a search term does not appear in all document pages as claimed.
Ans. 22, 60-61 (citing Rowe, col. 2, ll. 20-36). We see no error in this
reasoning, for skilled artisans would reasonably infer from these collective
teachings that, in a search context, a subset of document images would be
provided for those document pages containing a search term, thus
eliminating document images lacking the term.
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Nor are we persuaded of error in the Examiner’s reason to combine
the references as proposed (Ans. 23) since providing only images containing
search terms would, among other things, reduce delays by filtering the
results to display only relevant pages (i.e., those containing the search
terms)—a benefit that reasonably comports with the Examiner’s rationale
relying on Rowe’s optimization and delay-reduction advantages. See id.
(citing Rowe, col. 3, ll. 34-39). In any event, we find that applying Rowe’s
teaching of providing a subset of thumbnails to a search context as the
Examiner proposes predictably uses prior art elements according to their
established functions—an obvious improvement. See KSR, 550 U.S. at 417.
We are therefore not persuaded that the Examiner erred in rejecting
claim 44. Since Appellants present similar arguments regarding claim 54
(Br. 38-43), we are likewise unpersuaded of error in the Examiner’s
rejection of claim 54 for similar reasons.

THE OBVIOUSNESS REJECTION OVER GRAHAM, ROWE, AND KNOWLTON
We also sustain the Examiner’s obviousness rejection of claims 55
and 56 over Graham, Rowe, and Knowlton. Ans. 27-28. Claim 55 recites
one or more links that permit a user to sort the set of pages by (1) relevance
to the search term, or (2) page number associated with the set of pages. We
emphasize the term “or” here, for the cited prior art need only teach or
suggest one of these recited alternatives to render the claim obvious.
The scope of this alternative claim language renders Appellants’
arguments unpersuasive. Although Appellants contend that Knowlton’s
reordering leaf slides does not order by search term relevance (Br. 45), this
argument does not squarely address the Examiner’s position which is based
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on Knowlton’s ordering by page number (Ans. 27-28, citing Knowlton, col.
21, ll. 30-42)—the second recited alternative noted above.
Nor are we persuaded of error in the Examiner’s reason to combine
the references as proposed. Ans. 28. Skilled artisans would recognize that
enhancing the Graham/Rowe to order by page number would predictably
yield an improved search system interface and icons, at least to the extent
that the page-based graphics would be sorted in page-number order—a
beneficial page management and organizational enhancement. In any event,
we find the Examiner’s proposed enhancement predictably uses prior art
elements according to their established functions—an obvious improvement.
See KSR, 550 U.S. at 417.
We are therefore not persuaded that the Examiner erred in rejecting
claim 55. Since Appellants present similar arguments regarding claim 56
(Br. 46-48), we are likewise unpersuaded of error in the Examiner’s
rejection of claim 56 for similar reasons.

THE OBVIOUSNESS REJECTION OVER AMAZON, HII, AND GRAHAM
We also sustain the Examiner’s obviousness rejection of claim 57
over Amazon, Hii, and Graham. Ans. 28-29. Despite nominally arguing
this claim separately, Appellants reiterate similar arguments made in
connection with claim 51 (Br. 48) which we found to be unpersuasive for the
reasons previously discussed.

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CONCLUSION
Under § 102, the Examiner erred in rejecting claims 1-5, 7, 10-14, 16,
38, and 40. Under § 103, the Examiner erred in rejecting claims 15, 17-27,
41, and 53, but did not err in rejecting claims 44, 45, 47, 51, and 54-57.

ORDER
The Examiner’s decision rejecting claims 1-5, 7, 10-27, 38, 40, 41, 44,
45, 47, 51, and 53-57 is affirmed-in-part.
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

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