Ex Parte Lu et al

Board of Patent Appeals and Interferences

Jun 2, 2009

10607469 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUOTAO LU, JAGDISH CHAND, BRYAN CALL,
ANDY SCOTT, and ROGER URRABAZO
____________

Appeal 2008-004824
Application 10/607,469
Technology Center 2100
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Decided:1 June 3, 2009
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-004824
Application 10/607,469

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-32. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

INVENTION
The invention at issue on appeal "relates . . . to computer implemented
systems and methods to find affinities among personals advertisements."
(Spec. ¶ [0002].) "An affinity is a measure of association between different
items." (Id. ¶ [0003].)

ILLUSTRATIVE CLAIM
4. A computer implemented method of obtaining personals ads,
the method comprising:
performing a first search of personal ads to identify a first
personals ad; and
performing an affinity search based on the first personals
ad identified in the first search to identify one or more second
personals ads having an affinity to the first personals ad,
wherein the affinity between the first personals ad and each of
the second personals ads is determined from previous indicated
interests in both the first personals ad and each of the second
personals ads.

PRIOR ART
Sutcliffe U.S. 6,052,122 Apr. 18, 2000
Steiner U.S. Pub. 2003/0018621 A1 Jan. 23, 2003

Appeal 2008-004824
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REJECTION
Claims 1-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Steiner and Sutcliffe.

AFFINITY
When multiple claims subject to the same ground of rejection
are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately.
37 C.F.R. § 41.37(c)(1)(vii).

Here, the Appellants argue claims 1, 3, and 26 as a first group (Br. 10)
and claims 4-25, 27, and 28 as a second group (id. at 21). All the claims are
subject to the same ground of rejection. Therefore, we select claims 1 and 4
as the sole claims on which to decide the appeal of the respective groups.
"With this representation in mind, rather than reiterate the positions of the
parties in toto, we focus on the issue therebetween." Ex parte Nikoonahad,
No. 2006-3247, 2007 WL 1591636, at *2 (BPAI 2007).

The Examiner finds that "Steiner further discloses the general affinity
search (¶[0034, third paragraph] and [0036]-[0037])." (Ans. 7.) Regarding
claims 1 and 4, the Appellants argue that "the combination does not disclose
or suggest performing an affinity search to identify one or more second
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personals ads having an affinity to one of the first personal ads." (Br. 11.)
Regarding claims 2 and 4, they also argue that "[t]here is no disclosure or
suggestion that affinity or ranking therein is based upon previous indicated
interests in both a first and second search result." (Id. at 13.)

ISSUE
Therefore, the issue before us is whether the Appellants have shown
error in the finding that Steiner performs a first search to identify first data
and a second search to identify second data having an affinity to at least one
datum identified by the first search wherein the affinity is based on prior
indicated interests in both the first and second data.

LAW
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citing
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); In re Dembiczak, 175
F.3d 994, 998 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613 (Fed. Cir.
1995)). Furthermore, "'[e]very patent application and reference relies to
some extent upon knowledge of persons skilled in the art to complement that
[which is] disclosed.'" In re Bode, 550 F.2d 656, 660 (CCPA 1977) (quoting
In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)). Those persons "must be
presumed to know something [about the art] apart from what the references
disclose." In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).

Appeal 2008-004824
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FINDINGS OF FACT ("FFS")
1. Steiner "provides distributed search mechanisms in a networked
environment." (¶ [0019].) "[T]o enable a distributed search, a requester
agent in the network 100 initiates a query by sending a resource query to one
or more search brokers." (¶ [0026].) "[T]he query preferably contains the
keywords being searched for." (¶ [0011].) "When [the] resource query is
received, a search broker attempts to find a resource provider matching the
resource query." (¶ [0026].) "The search broker then forwards the resource
query to selected resource providers. When a resource query is received, a
resource provider retrieves and sends the requested resource to the requester
if there is a matching resource." (Id.)

2. The Appellants disclose that "[a]n affinity is a measure of
association between different items." (Spec. ¶ [0003].)

ANALYSIS
It is uncontested that Steiner performs a first search to identify first
data. More specifically, a searcher initiates such a search by sending a query
to at least one search broker. The search broker identifies at least one
resource provider and forwards the query thereto. The resource provider
retrieves the requested data ("first data") and sends the data to the searcher.
(FF 1.)

Persons skilled in the art knew that upon receipt of data resulting from
a query, a searcher may refine his search based on the returned data. For
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example, he may narrow his search by adding further key words to his
original query and submitting the narrowed query to the search broker. The
narrowed query prompts a second search to identify data. More
specifically, the search broker identifies at least one resource provider and
forwards the narrowed query thereto. The resource provider retrieves the
requested data and sends the data ("second data") to the searcher.

An affinity is merely a measure of association between different
items. (FF 2.) Because the second search is a narrowed version of the first
search, the data returned by the former search will be a subset of the data
returned by the latter search. Because the data identified by the second
search are a subset of the data identified by the first search, the former data
are associated with the latter data, and have an affinity thereto. Because the
modified query is based on the first data returned from the first search,
supra, the affinity is based on prior indicated interests in both the first and
second data.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the finding that that Steiner performs a
first search to identify first data and a second search to identify second data
having an affinity to at least one datum identified by the first search wherein
the affinity is based on prior indicated interests in both the first and second
data.

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ADDITIONAL DATA
Although the Appellants argue claim 29 individually (Br. 13-14),
they argue claims 30-32 collectively (id. at 21). All the claims are subject to
the same ground of rejection. Therefore, we select claim 30 as the sole
claim on which to decide the appeal of claims 30-32.

Regarding claims 29 and 30, the Appellants argue that "Steiner does
not disclose any manner in which the second personal ads identified via the
alleged affinity search would not be identified by the criteria search, nor
would such a feature be reasonably suggested in light of Sutcliffe." (Br. 14.)

ISSUE
Therefore, the issue before us is whether the Appellants have shown
error in the finding that at least some of the second data were not identified
by the first search.

ANALYSIS
As aforementioned, persons skilled in the art knew that upon receipt
of data resulting from a query, a searcher may refine his search based on the
returned data. Specifically, he may broaden his search by removing key
words from his original query or adding alternative key words to the original
query and submitting the broadened query to the search broker. The
broadened query prompts a second search to identify data. More
specifically, the search broker identifies at least one resource provider and
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forwards the modified query thereto. The resource provider retrieves the
requested data and sends the data ("second data") to the searcher.

Because the second search is a broadened version of the first search,
the data returned by the latter search will be a subset of the data returned by
the former search. Because the data identified by the first search are merely
a subset of the data identified by the second search, the former data will
include at least some of data not identified by the first search.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the finding that at least some of the
second data were not identified by the first search.

DECISION
We affirm the rejection of claims 1-32.

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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