Ex Parte LI et al

Patent Trial and Appeal Board

Aug 18, 2016

10541859 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/541,859 07/11/2005
72109 7590 08/22/2016
MYERS WOLIN, LLC
100 HEADQUARTERS PLAZA
NORTH TOWER, 6TH FLOOR
MORRISTOWN, NJ 07960-6834
FIRST NAMED INVENTOR
Hui Li
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
THOM 317 (PD030006) 6086
EXAMINER
OHBA, MELLISSA M
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
patent@myerswolin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUI LI, AXEL KOCHALE, STEP AN KUBSCH, RALF
OSTERMANN, and HARTMUT PETERS
Appeal2015-002549
Application 10/541,859
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and MELISSA A.
RAAP ALA, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention on appeal relates to a method and device for accessing a
database including the steps of presenting at least one category item defining
a search criterion for the database, selecting one or more of the at least one
Appeal2015-002549
Application 10/541,859
category item, and searching in the database according to the selected one or
more category items. (Spec. 1 ).
Representative Claim
1. A method for accessing a database, the method comprising:
displaying with a display means [L 1] at least one category item
defining a structural representation of data stored in said database and
including a search criterion for said database, the at least one category item
comprising [L2] at least one search keyword, which serves for searching the
data stored in the database belonging to the at least one category item, [L3] a
type attribute specifYing a type of the search keyword, and [L4] a mode
attribute specifying which one of a default standard general access method
and a specific access method shall be used for accessing the database,
wherein said at least one category item is provided within interface
descriptor means independent of the database,
selecting one of said at least one category item with a selecting means,
retrieving said at least one search keyword from said selected category
item,
retrieving said mode attribute from said selected category item, and
[L5] searching with a searching means in said database according to
said selected category item by performing a text search for the at least one
search keyword of the selected categmy item within the data stored in the
database in accordance with the type attribute and the access method
specified by the mode attribute.
(Emphasis added regarding the contested limitations, labeled as L 1-L5).
Rejections
A. Claims 1, 2, 5, 7, 8, 11, and 13 are rejected under 35 U.S.C. § 103(a),
over the combined teachings and suggestions of Keith, Jr. (U.S.
2
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Application 10/541,859
7,305,401 B2; pub. Dec. 4, 2007), and Janssen (U.S. 2002/0161754
A 1; pub. Oct. 31, 2 002).
B. Claims 3, 4, 6, 9, 10, and 12 are rejected under 35 U.S.C. § 103(a),
over the combined teachings and suggestions of Keith, Janssen, and
Wheeler et al. (U.S. 6,618,727 Bl; pub. Sep. 9, 2003).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative Claim 1. We
address the remaining claims rejected under rejection B, infra. See 37
C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Rejection A of Representative Claim 1under35U.S.C.§103(a)
Claim 1 - Limitation LI
First Issue: 1 Under§ 103(a), did the Examiner err in finding the
combination of Keith and Jans sen would have taught or suggested contested
limitation L 1: "at least one category item defining a structural
representation of data stored in said database and including a search
criterion for said database," within the meaning of representative claim 1? 2
(emphasis added).
1 We address Appellants' arguments in the order of the limitations to which
the arguments apply, and not the order in which the arguments appear in the
Appeal Brief.
2 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
3
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The Examiner finds Keith's teaching of an "encyclopedia module
compris[ing] a hierarchical tree module and product (node) information"
teaches or suggests contested limitation L 1. (Final Act. 2-3, citing Keith
col. 22, 1. 41---col. 23, 1. 37).
Appellants contend, "Keith does not disclose a category that includes
a search criterion," because "Keith appears to describe a hierarchical tree
consisting of a collection of links to the various nodes," which does not
include the claimed search criterion. (App. Br. 11, citing Keith col. 7, 11. 4---
13).
The Examiner explains that Keith describes a link between a directory
of categories and the encyclopedia model, and finds a user's selection of a
category from the directory causes the process to "jump" to the encyclopedia
model. (Ans. 8, citing Keith col. 19, 11. 4--14). 3 The Examiner finds "the
directory tree which is linked to the encyclopedia is structured in a list of
topics with nodes that can be searched using keywords," which include
"search link descriptions, search keywords for nodes and search contents of
the link [i.e., search criteria]." (Id., citing Keith, col. 17, 11. 15-51, and col.
22, 1. 41 - col. 32, 1. 3).
In the Reply Brief (7), Appellants restate, "Keith does not disclose
any category that includes the search criterion for the database, as required
by Appellants' claims." (Reply Br. 7).
We are not persuaded by Appellants' arguments regarding contested
limitation LI and the claimed "search criterion." (App. Br. 11). As
explained, and found by the Examiner (Ans. 8), the encyclopedia module
3 We note the Examiner (incorrectly) attributes this teaching to Keith col.
1 7' 11. 15-51.
4
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comprises nodes. (Keith col. 22, 11. 52-54). Further, the encyclopedia
module of Keith includes "keywords located at each node," which are
searched by keyword search module 300. (Keith col. 17, 11. 21-23). Thus,
each node in the encyclopedia module contains searchable keywords, which
we find are each "a search criterion," within the meaning of claim 1.
Therefore, we are not persuaded the Examiner erred in concluding the
combination of Keith and Janssen renders contested limitation LI of claim 1
obvious.
Claim 1 - Limitation L2
Second Issue: Under§ 103(a), did the Examiner err in finding the
combination of Keith and Jans sen would have taught or suggested contested
limitation L2: "at least one search keyword," within the meaning of
representative claim 1? (emphasis added).
The Examiner finds Keith teaches or suggests the contested "at least
one search keyword" by teaching each node contains text used for searching
a database. (Final Act. 3, citing Keith col. 22, 1. 41- col. 23, 1. 37).
Appellants aver, "Keith does not expressly teach that the text
contained in each node [is] being used as a search keyword." (App. Br. 12).
The Examiner explains, "Keith discloses that the 'directory tree
structure' can be searched using the following keyword search options:
'search link descriptions, search keywords for nodes and search contents of
the link."' (Ans. 11, citing Keith col. 17, 11. 15-51 ).
We are not persuaded by Appellants' argument for the reasons
discussed previously, namely Keith explicitly teaches that the text contained
in each node is used as a search keyword. (Keith col. 17, 11. 21-23).
5
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ivforeover, the reference need not satisfy an "ipsissimis verbis test." In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Therefore, we find unavailing Appellants' contentions regarding the
contested "at least one search keyword." (App. Br. 12). Accordingly, we
are not persuaded the Examiner erred in concluding the combination of
Keith and Janssen renders contested limitation L2 of claim 1 obvious.
Claim 1 - Limitation L3
Third Issue: Under§ 103(a), did the Examiner err in finding the
combination of Keith and Jans sen would have taught or suggested contested
limitation L3: "a type attribute specifYing a type of the search keyword,"
within the meaning of representative claim 1? (emphasis added).
The Examiner finds the "type attribute specifying a type of the search
keyword" is taught or suggested by the topics of Keith. (Final Act. 3, citing
Keith col. 22, 1. 41-col. 23, 1. 58).
Appellants contend, "Keith's topics are described as being an area of
interest for a specific user," but does not "teach or suggest that [Keith's]
topics indicate the type of search keyword (i.e., textual data stored within a
node) conveyed by the element from Keith that corresponds to the claimed
category item." (App. Br. 10). Appellants urge the topics of Keith are not
"even remotely useful as 'a type attribute specifying a type of the search
keyword' wherein the search keyword 'serves for searching the data stored
in the database belonging to the at least one category item' within which the
type attribute is included." (Id.).
6
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The Examiner points to Keith, "wherein conducting a 'keyword'
search, searches all topics therefore, also indicating that a topic can be a type
of keyword." (Ans. 5, citing Keith, col. 17, 1. 51- col. 18, 1. 5).
We are not persuaded by Appellants' arguments because a "type
attribute" is broadly defined within claim 1 as merely "specifying a type of
the search keyword." (Claim 1). Appellants have not provided a definition
of the claim term "type attribute" in the Specification. Nor have Appellants
provided rebuttal evidence in the record.
We find an artisan would have understood a "type" to be "a particular
kind, class, or group." 4 Thus, we are not persuaded the Examiner's reading
of the claim term "type" is overly broad, unreasonable, or inconsistent with
the Specification.5 Topics define a grouping of data, therefore, we find a
topic teaches or suggests a type attribute, as claimed. (Claim 1 ). Moreover,
Keith teaches, as discussed above, that each node contains keywords (Keith
col. 17, 11. 21-23), and each node is assigned one or more topics. (Keith col.
26, 11. 63---64 ). Thus, we find Keith's "topics" specify a type of data in each
node, including the search keyword.
Therefore, on this record, we find the Examiner's legal of conclusion
of obviousness regarding contested limitation L3 of claim 1 is supported by
a preponderance of the evidence.
4 "Type," Merriam-Webster's Collegiate Dictionary, 1997, 10th edition, p.
1278. Regarding dictionaries generally, see 37 C.F.R. §41.30.
5 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
7
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Claim j - Limitation L4
Fourth Issue: Under§ 103(a), did the Examiner err in finding the
combination of Keith and Jans sen would have taught or suggested contested
limitation L4: "a mode attribute specifying which one of a default standard
general access method and a specific access method shall be used for
accessing the database," within the meaning of representative claim 1?
(emphasis added).
The Examiner finds Janssen teaches or suggests contested limitation
L4 by teaching multiple access methods for the database. (Final Act. 4,
citing Janssen i-fi-f 19 and 53; see also Ans. 9-10). Specifically, Janssen
teaches "a corresponding access method is used to access the data of that
data type." (Janssen i153).
Appellants contend, "Janssen's selection of the next access method or
any access method ... is not premised on any attribute at all," because
"Janssen states that different access methods are successively selected to
attempt access of the data." (App. Br. 12, citing Janssen i-f 19).
We do not find Appellants' arguments persuasive. We find
Appellants' reliance on Janssen (i-fl9) (as teaching different access methods
are successively selected to attempt access of the data) is misplaced because
multiple embodiments are described by Janssen, 6 including one in which
each data type is assigned "a corresponding access method [that] is used to
access the data of that data type." (Janssen i153; see Ans. 9). This
assignment of an access method according to data type specifies access
methods for accessing data in the database, as found by the Examiner. (id.).
6 See, for example, the repeated use of the phrases "in some embodiments"
and "in further embodiments" of Janssen i-f 19.
8
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Therefore, we find unavailing Appellants' contentions regarding the
"mode attribute." (App. Br. 12). Accordingly, we are not persuaded the
Examiner erred in concluding the combination of Keith and Janssen would
have rendered contested limitation L4 of claim 1 obvious.
Claim 1 - Limitation L5
Fifth Issue: Under§ 103(a), did the Examiner err in finding the
combination of Keith and Jans sen would have taught or suggested contested
limitation L5: "searching with a searching means in said database according
to said selected category item by performing a text search for the at least one
search keyword of the selected category item within the data stored in the
database in accordance with the type attribute and the access method
specified by the mode attribute," within the meaning of claim 1? 7
(emphasis added).
Appellants urge that "[s]ince Keith and Janssen fail to teach any
element that even remotely suggests Appellants' type attribute, it logically
follows that Keith and Janssen cannot perform any operation that is based
on, or executed in accordance with, the type attribute." (App. Br. 10-11).
7 In the event of further prosecution, we leave H to the Examiner to consider
whether the Specification discloses sufficient stmcture for the "searching
means" recited in claim 1, as required under 35 lJ .S.C. § 112, 6th paragraph.
"If there is no structure in the specification corresponding to the means-plus-
function limitation in the claims, the claim will be found invalid as
indefinite." Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950
(Fed. Cir. 2007). Although, the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02 (9th Ed., Rev. 7, Nov. 2015
9
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However, we find Appellants' contention is grounded on an erroneous
premise - that the combination of Keith and Jans sen does not teach or
suggest the type attribute with respect to limitation L3 above. (Claim 1 ).
We found this argument unpersuasive for the reasons discussed above
regarding contested limitation L3. Therefore, we find unavailing
Appellants' contentions regarding the "type attribute" recited in limitation
L5. (App. Br. 10-11). Accordingly, we are not persuaded the Examiner
erred in concluding the combination of Keith and Janssen would have
rendered obvious contested limitation L5 of claim 1.
Therefore, on this record, and based on a preponderance of the
evidence, we are not persuaded of error regarding the Examiner's legal
conclusion of obviousness regarding each of contested limitations L 1-L5 of
claim 1. Accordingly, we sustain the Examiner's rejection A of
representative claim 1, and also rejection A of the grouped claims 8 which
fall with claim 1. See Grouping of Claims, supra.
Rejection B of claims 3, 4, 6, 9, 10, and 12
Appellants advance no separate, substantive arguments regarding the
remaining claims rejected under rejection B. Arguments not made are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain
the Examiner's rejection B of claims 3, 4, 6, 9, 10, and 12.
8 Although Appellants nominally argued these claims under separate
headings (App. Br. 13-17), Appellants did not advance separate, substantive
arguments under 37 C.F.R. § 41.37(c)(l)(iv).
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Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2). 9
Conclusion
For at least these reasons, on this record, we are not persuaded the
Examiner erred. We find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness for all claims on appeal.
DECISION
We affirm the Examiner's rejections of claims 1-13 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
9 We find Appellants advance a new argument in the Reply Brief (6):
"Keith and Janssen lack any teaching or suggestion about the 'type
attribute"' because topics are not attributes. However, Appellants have not
shown good cause why this untimely argument should be considered. See
37 C.F.R. § 41.41(b)(2).
11