Ex Parte Sauve et al

Patent Trial and Appeal Board

Jun 19, 2018

11251397 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/251,397 10/14/2005 Aaron J. Sauve
141746 7590 06/21/2018
ARENT FOX LLP& Microsoft Technology Licensing, LLC
1717 K Street, NW
WASHINGTON, DC 20006-5344
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.
037834.00178/314270-US-NP 6819
EXAMINER
CAO, PHUONG THAO
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
patentdocket@arentfox.com
USDocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON J. SAUVE, CORNELIS K. VAN DOK,
CARLOS YEUNG, and PRASHANT SINGH 1
Appeal2017-006729
Application 11/251,397
Technology Center 2100
Before DONALD E. ADAMS, ERIC B. GRIMES, and LORA M. GREEN,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for searching multiple data providers, which have been rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The Specification discloses "simultaneously spawn[ing] a search
across multiple different data providers ... in the context of a tabbed
browsing environment." Spec. 1: 10-13.
1 Appellants identify the Real Party in Interest as Microsoft Technology
Licensing, LLC (Appeal Br. 3).
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Application 11/251,397
Once the user enters their particular search ... , the search is
simultaneously spawned across the multiple different providers
and a new tab is opened for each individual provider and the
search results for each provider are presented within the tab.
Using the individual tabs, a user can then quickly navigate and
switch between the tabs to view all of the results.
Id. at 7:18-22.
Claims 1-3, 8, 10-14, 22, and 24--31 are on appeal. Claims 1 and 12
are illustrative and read as follows:
1. A computer-implemented method comprising:
receiving a single user input to a search control at a client browser, the
single user input to the search control causing selection of multiple different
data providers;
spawning, by the client browser, a search across the multiple different
data providers in response to the single user input, wherein an individual
search request is sent to each data provider;
receiving search results from the search across the multiple different
data providers at the client browser;
after receiving the search results from the search, opening new
browser tabs within a single browser window at the client browser; and
displaying the search results in the new browser tabs within the single
browser window at the client browser, wherein each new browser tab is part
of a user interface of the client browser for holding a separate web page, and
wherein each new browser tab of the new browser tabs is associated with a
data provider and is associated with a separate thread at the client browser.
12. A computer-implemented method comprising:
presenting a browser window having a search box for receiving search
terms, the search box including an area that displays a plurality of different
data providers;
selecting, responsive to user input received via the search box,
multiple different data providers of the plurality of different data providers;
receiving, via the search box, search criteria from a user;
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spawning an associated search across the multiple different data
providers;
after receiving search results from the multiple different data
providers, opening a plurality of browser tabs, the plurality of browser tabs
associated with the multiple different data providers, wherein each
individual browser tab of the plurality of browser tabs is associated with a
data provider of the multiple different data providers and is further
associated with a separate thread at the client browser;
subsequently associating search results from one of the multiple
different data providers with one of the plurality of browser tabs; and
displaying the plurality of browser tabs within the browser window.
The claims stand rejected as follows:
Claims 1-3, 8, 10, 11, 22, 24--26, 28, and 29 under 35 U.S.C. § I03(a)
as obvious based on EarthNavigator, 2 Sotomayor, 3 and Robbins4 (Final
Action5 10);
Claims 12-14 and 27 under 35 U.S.C. § I03(a) as obvious based on
EarthNavigator, Sotomayor, and Simske6 (Final Action 27);
Claim 30 under 35 U.S.C. § I03(a) as obvious based on
EarthNavigator, Sotomayor, Robbins, and Hertz7 (Final Action 33); and
2 The Examiner provided the following citation: "EarthNavigator Website
including Tour Guide for EarthNavigator Browser, pages 1-26, archived to
WayBack Machine on 8/16/2000, accessed online at
on
9/12/2009." Notice of References Cited mailed Sept. 28, 2009. A hard copy
of the reference was entered into the record Sept. 28, 2009.
3 Sotomayor, 5,842,206, issued Nov. 24, 1998.
4 Robbins, US 2002/0069194 Al, published June 6, 2002.
5 Office Action mailed June 10, 2016.
6 Simske et al., US 2004/0064447 Al, published April 1, 2004.
7 Hertz, US 2007/0022096 Al, published Jan. 25, 2007.
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Application 11/251,397
Claim 31 under 35 U.S.C. § 103(a) as obvious based on
EarthNavigator, Sotomayor, Simske, and Robbins (Final Action 34).
I
The Examiner has rejected claims 1-3, 8, 10, 11, 22, 24--26, 28, and
29 as obvious based on EarthNavigator, Sotomayor, and Robbins. The
Examiner finds that EarthNavigator discloses most of the limitations of
claim 1, including
"after receiving the search results from the search, opening new
browser tabs within a single browser window at the client
browser" (see EarthNavigator, PAGE 5, under "Search
Engines" session, for disclosure of the results of the search are
shown in a new tab, with one tab for every search engine
selected, which suggests that a new tab is opened for holding
available search results).
Final Action 11.
The Examiner finds that EarthNavigator does not teach the multi-
threading aspect of claim 1; i.e., "wherein each new browser tab ... is
associated with a separate thread at the client browser." Id. at 12. However,
the Examiner finds that "Sotomayor teaches a search program, called
Echo Search, [that] allows a user to search multiple Internet search engines
simultaneously ... [and] is implemented using multi-threading approach by
implementing/using a separate thread to manage/receive results from
different search engines." Id. The Examiner concludes that it would have
been obvious to modify EarthNavigator to use a multi-threading approach
using a separate thread for each search engine because Sotomayor teaches
that "multi threading is more time effective and allows [one] to receive
results from all the search engines simultaneously." Id. at 12-13.
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The Examiner also finds that Robbins teaches selection of multiple
different data providers with a single input, and concludes that it would have
been obvious to modify EarthNavigator to include this feature in order "to
provide EarthNavigator's system with an effective way to allow [a] user to
select a plurality of search sites/engines with just a single input/selection."
Id. at 14.
We agree with, and adopt, the Examiner fact-finding, reasoning, and
conclusion that the method of claim 1 would have been obvious to a person
of ordinary skill in the art based on EarthNavigator, Sotomayor, and
Robbins.
Appellants argue that
EarthNavigator does not teach or suggest the timing element
that claim 1 recites. That is, EarthNavigator does not teach that
the tabs are opened "after" receiving search results.
EarthNavigator could have tabs that are opened before, or at the
same time, the search results are received. EarthNavigator
simply does not specify the timing of when the tabs are opened.
Appeal Br. 19.
This argument is unpersuasive. EarthNavigator states: "[T]he
EarthNavigator has over 60 of the most popular Internet search engines. To
find information, just enter your search phrase or keyword and click Go.
The results of the search are shown in a new tab, with one tab for every
search engine selected." EarthNavigator 5 ( emphasis added).
The Examiner reasons that,
[a]lthough EarthNavigator does not explicitly specify the timing
of when the tabs are opened, it would be more reasonable
and/or more effective for a system to open/create tab(s) at least
when or after the search results are available because a tab is a
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container component for holding search results. In other words,
there is no reason to open a tab without any search result.
Answer 3. We agree with the Examiner that, even ifEarthNavigator does
not expressly describe opening a new tab for a given search engine until
after results are received from that search engine, it would have been
obvious to implement the EarthNavigator software in that way, because
opening a tab without having search results to display would serve no
purpose. 8
Appellants also argue that, in the decision of this application's
previous appeal, the Board "specifically held that 'each tab must prepare and
send a search request to a different search provider,' and thus, each tab must
be associated with a thread." Appeal Br. 19. Appellants argue that "the
Examiner's current interpretation of EarthNavigator contradicts the
interpretation adopted by the PTAB," which is "binding law of the case."
Id. at 20 and n.1. Appellants reason that "if each tab prepares and sends the
search as the PT AB held, then the tabs are already open before receiving the
search results, because the tabs are sending the actual search," rather than
being opened after search results are received. Id. at 20.
This argument is also unpersuasive. "The law of the case doctrine is
limited to issues that were actually decided, either explicitly or by necessary
8 Appellants argue that the Examiner's reasoning on this point amounts to a
new ground of rejection. Reply Br. 6. However, the issue of whether an
Examiner's Answer includes an undesignated new ground of rejection must
be reviewed via petition, not appeal. 37 C.F.R. § 4I.40(a). Appellants did
not petition to have the Examiner's Answer designated as including a new
ground of rejection.
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implication, in the earlier litigation." Toro Co. v. White Consol. Indus., Inc.,
383 F.3d 1326, 1335 (Fed. Cir. 2004).
In the previous appeal of this application, "[ t ]he issue presented [ wa ]s
whether the evidence of record support[ ed] the Examiner's conclusion that it
would have been obvious to modify EarthNavigator to use a multi-threaded
approach in which each browser tab is associated with a separate thread."
Appeal 2011-008904, decision mailed Jan. 28, 2014, pages 3--4.
Thus, the only issue decided in the previous appeal, and therefore the
only issue that is the basis for binding law of the case, concerned the multi-
threading aspect of the claimed method. The previous appeal did not decide
anything regarding the timing of when new tabs are opened. Here, for the
reasons discussed above, we conclude that opening new tabs in
EarthNavigator after search results are received from different search
engines would at least have been obvious to a person of ordinary skill in the
art, whether or not EarthNavigator expressly discloses that limitation.
Appellants also argue that Sotomayor does not teach different browser
tabs associated with a separate thread at a client browser: "While
Echo Search is 'capable of multi threading' to simultaneously query multiple
internet search engines, Sotomayor does not discuss an internet browser with
tabs being opened in EchoSearch. See Sotomayor, c. 5, 11. 36-55. In fact,
Sotomayor does not discuss tabs, or even a browser, as being used when
using EchoSearch." Appeal Br. 21.
This argument is also unpersuasive. First, Sotomayor states that
EchoSearch allows a computer user to query multiple Internet
search engines simultaneously for information residing on the
world-wide web (WWW) and on Usenet newsgroups.
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EchoSearch downloads and reads documents listed by these
engines and creates a comprehensive, intelligent index, concept
index, or summary index of the documents that can be viewed
in a web browser, such as Netscape Navigator.
Sotomayor 4:7-14 (emphasis added). Thus, Sotomayor does in fact teach
using a browser with EchoSearch.
In addition, the rejection is based on the combined teachings of the
cited references, and as discussed above, we agree with the Examiner that
the method of claim I-including browser tabs that are each associated with
a separate thread at a client browser-would have been obvious based on the
combination of EarthNavigator and Sotomayor.
Finally, with respect to claim 1, Appellants argue that "Sotomayor
teaches away from the alleged combination with EarthNavigator in order to
teach 'each new browser tab ... is associated with a separate thread at the
client browser,' as claim 1 recites, because the proposed modification would
change the principle of operation of the cited documents." Appeal Br. 22-
23. Appellants argue that "Sotomayor proposes Echo Search, which
performs all interaction with the internet to acquire results, and takes all the
results from all the search engines, compiles them together, and filters them
for less relevant results. Thus, Sotomayor teaches away from a user
employing individual tabs having results from individual search engines."
Id. at 23-24.
This argument is also unpersuasive. The Examiner relies on
Sotomayor only for its teaching of the advantage of using multi-threading to
receive results from different search engines simultaneously. See Ans. 5---6.
That teaching would have provided adequate reason to incorporate that
aspect of Sotomayor into EarthNavigator. Although EarthNavigator
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displays search results differently from EchoSearch, Appellants have not
pointed to any disclosure in Sotomayor suggesting that combining its
disclosure with EarthNavigator would produce an inoperative result. See In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) ("[A]
reference teaches away from a combination when using it in that
combination would produce an inoperative result.").
We therefore affirm the rejection of claim 1 under 35 U.S.C. § 103(a)
based on EarthNavigator, Sotomayor, and Robbins. Claims 2, 3, 22, and 29
fall with claim 1. Appeal Br. 26, 37 C.F.R. § 4I.37(c)(l)(iv).
With regard to claim 8, Appellants again argue that Sotomayor does
not teach "that 'each individual browser tab has a separate thread at the
client browser,' as claim 8 recites ( emphasis added)," because "Sotomayor
does not discuss an internet browser with tabs being opened in Echo Search."
Appeal Br. 27-28. Similarly, with regard to claim 28, Appellants argue that
Sotomayor does not teach "that 'each new browser tab is associated with a
particular search provider and is associated with a separate thread at the
client browser,' as claim 28 recites ( emphasis added)." Id. at 31. This
argument has been addressed above in relation to claim 1.
Appellants also argue, with regard to claim 8, that "Sotomayor does
not teach 'preparing, by a client browser, a search request in multiple
different formats, wherein a format of the multiple different formats
corresponds to a search provider of the multiple different search providers."'
Appeal Br. 27. Appellants make the same argument with regard to claim 28.
Id. at 30-31.
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This argument is also unpersuasive. As discussed above, Sotomayor
teaches using a browser with EchoSearch. See Sotomayor 4:7-14. In
addition, as the Examiner found,
Sotomayor teaches a feature of preparing a request in multiple
different formats and a feature of implementing [a] search
process using [a] multi-threading approach as follows:
"preparing a search request in multiple different formats for the
multiple different search providers" (see Sotomayor, Fig. 3 and
[ column 5, lines 10-15] for translating the search expression to
a form understandable by each particular search engine ... ).
Final Action 17. Thus, Sotomayor discloses the disputed limitation. We
agree with the Examiner that it would have been obvious "to incorporate the
teaching of Sotomayor into EarthNavigator's system by adding a feature of
preparing a request in different format in order to submit to different search
provider[ s]." J d.
We therefore affirm the rejection of claims 8 and 28 under 35 U.S.C.
§ 103(a) based on EarthNavigator, Sotomayor, and Robbins. Claims 10, 11,
and 24--26 fall with claim 8. Appeal Br. 28-29, 37 C.F.R. § 4I.37(c)(l)(iv).
II
The Examiner has rejected claims 12-14 and 27 as obvious based on
EarthNavigator, Sotomayor, and Simske. The Examiner relies on
EarthNavigator and Sotomayor for the same teachings discussed above with
regard to claim 1. Final Action 27-30. The Examiner finds that these
references to not teach a search box including an area that displays a
plurality of data providers or selecting, responsive to user input in the search
box, multiple different data providers. Id. at 30.
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The Examiner finds, however, that Simske teaches these limitations in
its Figure 4A and paragraph 83. Id. at 30-31. The Examiner concludes that
it would have been obvious
to incorporate Simske et al.'[s] teaching into EarthNavigator's
system (as modified by Sotomayor) by adding a feature of
displaying a plurality of search engines in an area of search
box/interface. A person having ordinary skill in the art would
have been motivated to do so to provide EarthNavigator's
system with an effective alternative way to allow user to select
a plurality of search sites/engines for searching.
Id. at 31.
We agree with, and adopt, the Examiner fact-finding, reasoning, and
conclusion that the method of claim 12 would have been obvious to a person
of ordinary skill in the art based on EarthNavigator, Sotomayor, and Simske.
As with the rejection of claim 1, Appellants argue that
"EarthNavigator does not teach or suggest the timing element that claim 12
recites. That is, Earth Navigator does not teach that the tabs are opened
'after' 'receiving search results' as claim 12 recites." Appeal Br. 34.
Appellants also argue, again, that
Sotomayor does not teach or suggest "wherein each individual
browser tab of the plurality of browser tabs is associated
with a data provider of the multiple different data providers and
is further associated with a separate thread at the client
browser," as claim 12 recites ( emphasis added) .... Although
Sotomayor describes that EchoSearch is "capable of
multithreading" to simultaneously query multiple internet
search engines, Sotomayor does not discuss an internet browser
with tabs being opened in EchoSearch.
Id. at 36-37. Finally, Appellants argue that "one of ordinary skill in
the art would not have been motivated to modify the teachings of
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EarthNavigator in view of the teachings of Sotomayor, since the
proposed modification would change the principle of operation of one
or both of the cited documents. This is explained above in relation to
claim 1." Id. at 37.
These arguments are not persuasive for the reasons discussed above in
regard to the rejection of claim 1.
We therefore affirm the rejection of claim 12 under 35 U.S.C.
§ 103(a) based on EarthNavigator, Sotomayor, and Simske. Claims 13, 14,
and 27 fall with claim 12. Appeal Br. 38, 37 C.F.R. § 4I.37(c)(l)(iv).
III
The Examiner has rejected claim 30 as obvious based on
EarthNavigator, Sotomayor, Robbins, and Hertz. The Examiner has rejected
claim 31 as obvious based on EarthNavigator, Sotomayor, and Simske, and
Robbins.
Appellants have waived arguments directed to the rejections of claims
30 and 31, and rely solely on their arguments regarding claims 1 and 12,
respectively. Appeal Br. 38--40. Those arguments are unpersuasive for the
reasons discussed above.
SUMMARY
We affirm all of the rejections on appeal.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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