Ex Parte Martin et al

Board of Patent Appeals and Interferences

Jan 27, 2009

10462574 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTHONY G. MARTIN, SCOTT VANDEVELDE, and
DAVID L. GOULDEN
____________

Appeal 2008-2725
Application 10/462,5741
Technology Center 2100
____________

Decided: January 27, 2009
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY, III., and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed June 16, 2003. The real party in interest is Claria
Corporation.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-22 mailed June 13, 2006, which are all the claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellants invented a method and an apparatus for displaying a first
search result in a presentation vehicle (i.e., pop-under window) that is
separate from a browser employed to submit the first search request. Upon
detection of a second search request, the same presentation vehicle may be
updated to display a second search result. (Spec., Abstract.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1-22. Claims 1, 4, 7, 11, 15, 16, and 19
are independent claims. Claims 1, 4, 7, 11, and 15 are illustrative:

1. A method to be performed in a client computer, the
method comprising:
displaying a first search result responsive to a first search
request in a presentation vehicle, the presentation vehicle being
separate from a browser employed to submit the first search request;
detecting a second search request submitted using the
browser; and
updating the content of the presentation vehicle to
display a second search result responsive to the second search request.

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4. A method to be performed in a client computer, the
method comprising:
detecting a first search request submitted to a search
engine, the first search request being submitted using a browser;
displaying in the browser a first search result responsive
to the first search request; and
displaying a second search result responsive to the first
search request in a presentation vehicle under the browser.

7. A method to be performed in a server computer, the
method comprising:
receiving from a client computer a first keyword
submitted to an original search engine, the original search engine not
being a part of the server computer; and
providing the client computer a first search result that is
different from a search result provided by the original search engine.

11. An apparatus for receiving information over a computer
network, the apparatus comprising:
a client computer configured to receive a first search
result to be displayed in a first window and a second search result to
be displayed in a second window, the first search and the second
search result being responsive to a same first search request.

15. An apparatus for receiving information over the Internet,
the apparatus comprising:
a client computer configured to display a search result in
a pop-under.

C. REFERENCE
The sole reference relied upon by the Examiner in rejecting the claims
on appeal is as follows:
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Singhal US 6,370,527 B1 Apr. 9, 2002

D. REJECTION
The Examiner entered the following rejection which is before us for
review:
Claims 1-22 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Singhal.

II. PROSECUTION HISTORY
Appellants appealed from the Final Rejection and filed a Second
Appeal Brief (App. Br.) on July, 31, 2006. The Examiner mailed an
Examiner’s Answer (Ans.) on October 18, 2006. Appellants filed a Reply
Brief (Reply Br.) on November 28, 2006.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Singhal
1. Singhal discloses that “[t]he apparatus includes a meta-search
engine device that receives a search query from a user device. The meta-
search engine device submits the search query to a plurality of search engine
devices and compiles the results from each of the search engine into a
merged list. . . . and displayed to the user via the user device” (col. 1, ll. 34-
41).
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2. Singhal discloses that “[a]s show in FIG. 2, each individual
window of the display represents a particular search engine. . . . and
simultaneous display of search results” (col. 2, ll. 37-42).
3. Singhal discloses that “the user is not required to physically enter
their search terms into each available search engine devices” (col. 4, ll. 9-
10).

IV. PRINCIPLES OF LAW
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).

V. ANALYSIS
Grouping of Claims
(1) Appellants argue claims 1 and 2 as a group (App. Br. 4-6). For
claim 2, Appellants repeat the same argument made for claim 1. We will,
therefore, treat claim 2 as standing or falling with claim 1.
(2) Appellants separately argue claim 3 (id. at 6-8).
(3) Appellants argue claims 4-6 as a group (id. at 8). For claims 5
and 6, Appellants repeat the same argument made for claim 4. We will,
therefore, treat claims 5 and 6 as standing or falling with claim 4.
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(4) Appellants argue claims 7-10 as a group (id. at 8-9). For claims
8-10, Appellants repeat the same argument made for claim 7. We will,
therefore, treat claims 8-10 as standing or falling with claim 7.
(5) Appellants argue claims 11-14 as a group (id. at 9). For claims
12-14, Appellants repeat the same argument made for claim 11. We will,
therefore, treat claims 12-14 as standing or falling with claim 11.
(6) Appellants argue claims 15, 16, and 18 as a group (id. at 9-10).
For claims 16 and 18, Appellants repeat the same argument made for claim
15. We will, therefore, treat claims 16 and 18 as standing or falling with
claim 15.
(7) Appellants separately argue claim 17 (id. at 10).
(8) Appellants argue claims 19-22 as a group (id.). We will,
therefore, treat claims 20-22 as standing or falling with claim 19.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

The Anticipation Rejection
We now consider the Examiner’s rejection of claims 1-22 under
35 U.S.C. § 102(e) as being anticipated by Singhal.

Claims 1 and 2
Appellants contend:
Singhal does not teach or suggest anything relating to
displaying search results responsive to a search request in a
presentation vehicle that is separate from the browser used to
submit the search request. . . . As clearly shown in Singhal FIG.
2, the search results served to the user are in a single browser
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window, in this case a Netscape browser. This same Netscape
browser is the one used to submit the search request.

(App. Br. 5.)
The Examiner found that “Singhal’s meta search engines all include
the processing of search requests from various search engines and therefore
renders results separately as demonstrated in applicant’s claim language”
(Ans. 7).
Issue: Have Appellants shown that the Examiner erred in finding that
Singhal discloses displaying a search result in a presentation vehicle separate
from a browser?
We agree with Appellants that Singhal fails to disclose specifically
how the search results are displayed for the user. Singhal merely discloses
that a merged list of results is displayed to the user (FF 1-2). However, the
Examiner has not shown and we do not readily find where Singhal’s merged
list is displayed in a presentation vehicle (i.e., a window) that is separate
from the browser window. The Examiner concludes (e.g., Ans. 7) that the
claimed “presentation vehicle being separate from a browser” is taught by
Singhal’s separate screens in an area of a display screen as shown in Fig. 2.
However, we find Singhal’s Fig. 2 merely shows a display that is an integral
part of the browser window itself, instead of being separate there from.
We can only rule upon the rejection set forth by the examiner on the
basis of the evidence that is provided in support of the rejection. Here, we
find the showing of anticipation is deficient. Therefore, the absence of the
above-noted feature negates anticipation. Accordingly, we reverse the
anticipation rejection of claims 1 and 2.

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Claim 3
Given that claim 3 is dependent on claim 1, we also reverse the
anticipation rejection of claim 3 for the same reasons noted above.

Claims 4-6
Appellants contend that “Singhal does not teach or suggest displaying
of search results in a presentation vehicle under a browser. Singhal FIGS. 1
and 2 show single instances of browsers but there is no presentation vehicle
containing search results under any of the browsers” (App. Br. 8; see also
Reply Br. 3-4).
The Examiner found that “the phrase ‘win a custom 1999 Beetle . . .
click to enter’ is illustrative of a pop-under as described in applicant’s claim
language” (Ans. 7).
Issue: Have Appellants shown that the Examiner erred in finding that
Singhal discloses displaying a second search result . . . in a presentation
vehicle under the browser?
The Examiner seems to suggest (e.g., Ans. 7) that a pop-under is
taught by Singhal’s “click to enter” advertisement phrase. We find that to
affirm the Examainer on this point would require speculation. Based on the
evidence before us, we cannot determine whether there may be
advertisement phrases in Singhal that pop-under in a fashion analogous to
that required by the claim. We can only rule on the basis of the evidence
that is provided in support of the rejection, and we find it deficient. We find
such a “click to enter” item as shown in Singhal merely shows a link to
something that is yet to be displayed. We decline to speculate as to whether
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it will or will not be displayed under a browser window once asserted.
Because the Examiner, the one who bears the initial burden of presenting a
prima facie case of unpatentability, is not relying on obviousness and has not
provided any line of reasoning explaining why this would be inherent to
windowing operations, we must reverse the anticipation rejection of claims
4-6.

Claims 7-10
Appellants contend that “[i]n Singhal, none of the search engines
receives a keyword from a client computer – those search engines receive a
keyword from a meta-search engine. The meta-search engine receives a
keyword from a client computer, but the meta-search engine itself does not
perform any search on the keyword as it uses the search engines to do the
search” (App. Br. 8) (citations omitted). Appellants further contend that
“Singhal only sends a single ranked list to the client computer, whereas
claim 7 requires two different search results to be provided to the client”
(id. at 9) (citations omitted).
The Examiner found that Singhal discloses “multiples [sic] search
engines in the Netscape browser as being various windows as illustrated in
applicant’s claim language” (Ans. 7).
Issue: Have Appellants shown that the Examiner erred in finding that
Singhal discloses receiving from a client a first keyword submitted to an
original search engine, and providing a search result that is different from a
search result provided by the original search engine?
Singhal discloses that the meta-search engine device receives a search
query from a user, forwards the search query to a plurality of search engines,
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compiles the results into a merged list and sends the list to the user for
display (FF 1). Claim 7 requires, inter alia, that an original search engine
receives a keyword from a client computer, and we find that this limitation
reads on Singhal’s meta-search engine device that receives search queries
and submits them to a plurality of search engines. We find the claimed
“original search engine” reads on any one of Singhal’s search engines 140,
150, 160. Claim 7 further requires, inter alia, that the client computer is
provided a first search result that is different from a search result provided
by the original search engine. Singhal discloses that a merged list is
submitted to the client (FF 1) and this merged list is different from the
individual results received from any one of the search engines 140, 150, 160.
Contrary to Appellants arguments, we find that Claim 7 does not
require that two different search results be provided to the client. Instead,
we find that claim 7 only requires that the first search result provided to the
client computer be different from a search result provided by the original
search engine. Claim 7 does not require that the first search result come
from any particular device. Singhal shows a result coming from the meta-
search engine that is different from the result coming from the search engine
140, for example.
Therefore, we find that Appellants have not shown error in the
Examiner’s rejection of representative claim 7. Instead, we find the
Examiner has set forth a sufficient initial showing of anticipation.
Therefore, we affirm the rejection of independent claim 7 and of claims 8-
10, which fall therewith.

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Claim 11-14
Appellants contend that “Singhal does not teach or suggest displaying
two searches responsive to the same search request in two windows” (App.
Br. 9). Appellants further contend that “[f]rames within windows are not
windows in a windowing environment. Singhal FIG. 2 clearly shows a
single window – the Netscape browser window” (Reply Br. 5).
The Examiner “considers the multiples search engines in the Netscape
browser as being various windows as illustrated in applicant’s claim
language” (Ans. 7).
Singhal discloses simultaneous display of search results in individual
windows of a display (FF 2) and that such results are from the same search
request (FF 3). In other words, Singhal’s Fig. 2 discloses first and second
results from the same search request being displayed in different search
engine windows.
Thus, we find that Appellants have not shown error in the Examiner’s
rejection of illustrative claim 11. Instead, we find the Examiner has set forth
a sufficient initial showing of anticipation. Therefore, we affirm the
rejection of independent claim 11 and of claims 12-14, which fall therewith.

Claims 15, 16, and 18
Appellants contend that “Singhal does not teach or suggest displaying
of search results in a pop-under” (App. Br. 9).
The Examiner found that “at various times during the searching and
retrieval mode of Singhal the pop-ups become pop-unders if the user is
currently working on a document” (Ans. 7).
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Issue: Have Appellants shown that the Examiner erred in finding that
Singhal discloses displaying a search result in a pop-under?
The Examiner seems to suggest (e.g., Ans. 7) that the pop-under
display is taught by Singhal’s ability to work on another document during
searching and retrieving of results. However, we find that this statement by
the Examiner has not clearly established that search results would be
displayed in a pop-under. We cannot say there are no pop-under displays in
the prior art that operate in a fashion analogous to that required by the claim.
However, we can only rule on the basis of the evidence that is provided in
support of the rejection. Here, we find the showing of anticipation deficient.
We note that the allocation of burdens requires that the USPTO produce the
factual basis for its rejection of an application under 35 U.S.C. § 102. In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, we find the Examiner
has not met that burden. As noted supra, because the Examiner, the one
who bears the initial burden of presenting a prima facie case of
unpatentability, is not relying on obviousness and has not provided any line
of reasoning on why this would be inherent to windowing operations, we
must reverse the anticipation rejection of claims 15, 16, and 18.

Claim 17
Given that claim 17 is dependent on claim 16, we also reverse the
anticipation rejection of claim 17 for the same reasons noted above.

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Claims 19-22
We find that Appellants have collectively treated claims 19-22 along
with claims 1-4, although the argued limitations recited in claims 1-4 are not
recited in claims 19-22 (App. Br. 10). Thus, we find that Appellants have
failed to rebut the Examiner’s rejection of claims 19-22 (Ans. 6) with any
meaningful analysis that demonstrates error in the Examiner’s prima facie
case.
Thus, we do not find that Appellants have shown error in the
Examiner’s rejection of claims 19-22. Instead, we find the Examiner has set
forth a sufficient initial showing of anticipation. Therefore, we affirm the
rejection of independent claim 19 and of claims 20-22, which fall therewith.

VI. CONCLUSIONS
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-6 and 15-18.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 7-14 and 19-22.

VII. DECISION
In view of the foregoing discussion,
(1) We reverse the Examiner’s rejection of claims 1-6 and 15-18.
(2) We affirm the Examiner’s rejection of claims 7-14 and 19-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

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AFFIRMED-IN-PART

msc

CLARIA CORPORATION
c/o HAYNES BEFFEL & WOLFELD LLP
P.O. BOX 366
751 KELLY STREET
HALF MOON BAY CA 94019