Ex Parte Kline et al

Board of Patent Appeals and Interferences

Jan 25, 2012

10429209 (B.P.A.I. Jan. 25, 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.
10/429,209 05/02/2003 Scott B. Kline 12729/23 (Y00512US00) 9464
56020 7590 01/25/2012
BRINKS HOFER GILSON & LIONE / YAHOO! OVERTURE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
DWIVEDI, MAHESH H
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
01/25/2012 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 SCOTT B. KLINE and JODY D. BIGGS
____________

Appeal 2010-000601
Application 10/429,209
Technology Center 2100
____________

Before DEBRA K. STEPHENS, GREGORY J. GONSALVES, and ERIC B.
CHEN, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000601
Application 10/429,209

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 11, 12, 14-16, and 18-29. (App. Br. 2.) Claims 1-10, 13, and 17
were cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Disclosed Invention
One exemplary independent claim (i.e., claim 11) follows:
11. A method for improving the accuracy by which a database of
search queries represent human search behavior, the method comprising:
determining, by a computer, an expected quantity of search queries;
comparing a quantity of the search queries to the expected quantity of
search queries;
determining that the quantity of search queries exceeds the expected
quantity of search queries by at least a predetermined margin;
selecting a number of search queries of the quantity in accordance
with an amount by which the quantity exceeds the expected quantity; and
removing the selected number of search queries from the quantity,
wherein the quantity and the expected quantity correspond to search
queries specific to a particular geographic region.

Another exemplary independent claim (i.e., claim 26) follows:
26. A method for improving the accuracy by which a database of
search queries represent human search behavior, the method comprising:
determining, by a computer, an expected quantity of search queries;
comparing a quantity of the search queries to the expected quantity of
search queries;
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determining that the quantity of search queries exceeds the expected
quantity of search queries by at least a predetermined margin;
selecting a number of search queries of the quantity in accordance
with an amount by which the quantity exceeds the expected quantity; and
removing the selected number of search queries from the quantity,
where the search query includes a search term and a source,
where the determining the expected quantity of search queries
includes determining an expected quantity of search queries based on a
proportion of search volume attributable to the search term relative to the
source, determining an expected quantity of search queries based on a
proportion of search volume attributable to the source relative to the search
term, and determining an expected quantity of search queries based on a
proportion of search volume attributable to the source.

The Examiner rejected claim 26 under 35 U.S.C. § 102(a) as being
anticipated by Ryan (U.S. Patent 6,421,675). (Ans. 4-7.)
The Examiner rejected claims 11-12, 18, 20-25, and 27-29 under 35
U.S.C. § 103(a) as being unpatentable over Ryan in view Mariano
(Gwendolyn Mariano, “Google Protects its search results,” CNET
News.com, August 18, 2002, http://news.cnet.com/2100-1023-883558.html).
(Ans. 7-18.)
The Examiner rejected claims 14-16 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Ryan in view of Mariano and Goedken (U.S.
Patent 6,393,423). (Ans. 18-21.)

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ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Did the Examiner establish that the combination of Ryan and Mariano
teaches “selecting a number of search queries of the quantity in accordance
with an amount by while the quantity exceeds the expected quantity,” and
“wherein the quantity and the expected quantity correspond to search queries
specific to a particular geographic region,” as recited in independent claim
11?
2. Did the Examiner establish that Ryan discloses “determining an
expected quantity of search queries based on a proportion of search volume
attributable to the search term relative to the source,” as recited in
independent claim 20, and as similarly recited in independent claim 26?

ANALYSIS
Issue 1 – Obviousness Rejections of Claims 11-12, 14-16 and 18-19
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief) that the Examiner has erred. We disagree with
Appellants’ conclusion regarding the obviousness of claims 11-12, 14-16,
and 18-19. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner’s Answer (Ans. 8-12, 14-
36) in response to the Appellants’ Appeal Brief. We concur with the
conclusion reached by the Examiner. We highlight and address specific
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findings and arguments regarding certain claimed limitations such as
“selecting a number of search queries of the quantity in accordance with an
amount by while the quantity exceeds the expected quantity,” and “wherein
the quantity and the expected quantity correspond to search queries specific
to a particular geographic region.”
Appellants contend that Ryan “does not disclose … ‘selecting a
number of search queries of the quantity in accordance with an amount by
which the quantity exceeds the expected quantity,’” as well as other closely
related claim elements. (App. Br. 8.) As explained by the Examiner,
however, Ryan discloses tracking the number of times that users have
selected particular web pages from the results of a search. (See Ans. 5; see
also, Ans. 28.) Ryan further discloses limiting the number of searches per
day per person that contribute to the tracking results to prevent fraudulent
searches from spammers from tainting the tracking results. (Id.) In other
words, searches from a person that exceed the daily limit do not contribute
to the tracking results. Accordingly, we find that the Examiner, giving the
claim its broadest reasonable meaning consistent with the Specification, In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), properly relies on Ryan’s
teaching of disregarding the searches that exceed a per-person per day limit
as the claimed “selecting a number of search queries of the quantity in
accordance with an amount by which the quantity exceeds the expected
quantity.”
Appellants also argue that Mariano does not teach that the quantity
and the expected quantity correspond to search queries specific to a
particular geographic region. (App. Br. 8-9.) But as explained by the
Examiner, Mariano teaches that users within the same geographic area of
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Southern New Jersey were denied service for making automatic queries.
(Ans. 34-35; citing Mariano, p. 4.) Accordingly, one of ordinary skill in the
art would have found it obvious to modify Ryan’s teachings to limit the
searches within a particular geographic area.
For these reasons and the reasons expressed in the Examiner’s
Answer, we sustain the Examiner’s obviousness rejections of independent
claim 11, as well as the claims that depend from claim 11 (i.e., claims 12,
14-16, and 18-19) because Appellants did not set forth any separate
patentability arguments for those claims. (See App. Br. 9-10.)
For these reasons and the reasons expressed in the Examiner’s
Answer, we sustain the Examiner’s rejection of claims 11-12, 14-16, and 18-
19.

Issue 2 – Rejections of Claims 20-29
Appellants argue that Ryan does not disclose the limitation of
determining an expected quantity of search queries initiated from a
particular source based on a proportion of past search queries from that
source of a total volume of searches, as recited in independent claims 20 and
26. (App. Br. 4-8.) We agree. Although Ryan discloses limiting the search
queries from particular users that will contribute to the tracking of hits to
web pages, it does not disclose setting the limit to any proportion. (See App.
Br. 4-8.)
For these reasons, we do not sustain the Examiner’s rejections of
independent claims 20 and 26, or the claims that depend from them (i.e.,
claims 21-25 and 27-29).

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DECISION
We affirm the Examiner’s decision rejecting claims 11-12, 14-16, and
18-19.
We reverse the Examiner’s decision rejecting claims 20-29.
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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