Ex Parte Smyros et al

Patent Trial and Appeal Board

Dec 18, 2014

12192775 (P.T.A.B. Dec. 18, 2014)

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.
12/192,775 08/15/2008 Athena A. Smyros 001-P002 3440
91133 7590 12/18/2014
Papalas PLLC
6960 Brookshire Drive
Dallas, TX 75230
EXAMINER
LEE, WILSON
ART UNIT PAPER NUMBER
2155
MAIL DATE DELIVERY MODE
12/18/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ATHENA A. SMYROS and CONSTANTINE SMYROS
___________

Appeal 2012-006987
Application 12/192,775
Technology Center 2100
____________

Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and
JASON J. CHUNG, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 21–27 and 31.
1
App. Br. 2. Claims 1–20 are withdrawn and claims
28–30 are subject to an objection. Id. Although not identified in
Appellants’ Briefs (see App. Br. 2), we note this case is related to Appeal
No. 2012-006917 (US Application No. 12/192,846). See also Spec. ¶ 1. We
have considered the present case along with the related Appeal No. 2012-
006917. We heard oral argument on December 4, 2014. A transcript of the

1
In this Opinion, we refer to the Appeal Brief (“App. Br.,” filed December
12, 2011), the Reply Brief (“Reply Br.,” filed March 27, 2012), the
Examiner’s Answer (“Ans.,” mailed January 27, 2012), and the original
Specification (“Spec.,” filed August 15, 2008).
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oral hearing will be added to the record in due course. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to providing search results from
provided search terms that match with documents in an information set.
Spec. ¶ 2.
Claims 21 and 23, reproduced below, are illustrative:
21. A handheld device comprising:
a memory; and
a search engine that is stored on the memory;
wherein the search engine is operative to use a search
request from a user of the handheld device to search an index.

23. The handheld device of claim 21, wherein the index
comprises a non-binary numeric code that includes grammar
embedded rules, the device further comprising:
a RealTime Search component that receives the search
request, converts the search request into a numeric code
corresponding to the numeric code of said index, and compares
the numeric code of the converted search request with the index
to form search results.

THE REJECTION
Claim 31 is rejected under 35 U.S.C. § 112, first paragraph as not
enabled.
Claims 21, 22, and 24–27 are rejected under 35 U.S.C. § 102(e) as
anticipated by Moore (US 2008/0005086 A1).
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Claims 23 and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Moore and DICTIONARY OF COMPUTER SCIENCE,
ENGINEERING, AND TECHNOLOGY 241 (Phillip A. Laplante ed., 2001)
(hereinafter “Dictionary”).
Only those arguments actually made by Appellants have been
considered in this Decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

ANALYSIS
SECTION 112 REJECTION
The Examiner finds the Specification fails to enable “base-10 integer
numbers” as recited in claim 31. Ans. 4–5. The Examiner further explains,
“the specification does not show how base-10 integer number used as index
in his invention.” Id. at 8–9. Appellants argue the term is well understood
by the ordinary skilled artisan and thus, requires no undue experimentation.
App. Br. 4. Appellants further explain paragraphs 200 and 201 of the
Specification present an example of using base-10 numbers as values in an
index. Reply Br. 3. We agree with Appellants. Use of base-10 numbers in
any application is so well-known as to require no experimentation let alone
undue experimentation. Therefore, we do not sustain the rejection of claim
31 under § 112, first paragraph as failing the enablement requirement.

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SECTION 102 REJECTION
Claims 21, 22, 24, 26, and 27
We have reviewed the Examiner’s anticipation rejection in light of
Appellants’ arguments the Examiner erred. App. Br. 4–7; Reply Br. 4–6.
We are not persuaded by Appellants’ contentions with respect to the above-
identified claims. As applicable to the above-identified claims, we adopt as
our own the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and as set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 9–
11). However, we highlight and address specific arguments and findings for
emphasis as follows.
Regarding claim 21, Appellants argue the search engine of Moore
operates on a server system remote from the client device whereas claim 21
requires the search engine be stored in a memory of the claimed handheld
device. App. Br. 5. The Examiner explains a “Web accessible search
engine,” as disclosed by Moore (Moore ¶ 10), “must be stored or installed
on [a] local or terminal device.” Ans. 9. The Examiner broadly interprets
search engine to encompass a “program for searching files or keywords.”
Id. The Examiner specifically finds a Web browser is such a program and
must be installed (stored) on the user’s device in order to use the browser to
access the Web accessible search engine. Id. Appellants respond, although
the interface (Web browser) may be stored on the user’s handheld device,
the search engine of Moore is stored on a separate remote system. Reply
Br. 5 (“the portion that is installed on a user’s computer does not appear to
be the search engine itself, but rather an interface . . . the local device stores
and operates an interface that communicates with a distant search engine.”)
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We agree with Appellants that the Examiner identifies the Web
browser interface stored locally on the user’s handheld device as the recited
search engine. However, the Examiner’s broad interpretation of “search
engine” encompasses a program, any program, that is used to search files or
keywords. A Web browser program that provides an interface to perform
such searches is encompassed within such a broad definition. Appellants’
Specification provides no limiting definition of search engine that precludes
the Examiner’s broad interpretation. Further, Appellants’ Specification
provides numerous examples of embodiments of a search engine—including
embodiments operable on “an enterprise server or servers, on a personal
computer” as well as on portable devices. Spec. ¶ 41. The Specification
also discusses embodiments of search engines comprising “a plurality of
components” (id. ¶ 42) and embodiments in which the components may be
integrated or distributed with “all components located in a single device . . .
[or] different components may be located on different devices” (id. ¶ 45).
Thus, the Examiner’s broad interpretation of search engine as encompassing
an interface (component) stored and operable on the recited handheld device
is reasonable and consistent with Appellants’ Specification.
Further supporting the Examiner’s position, we note Moore paragraph
153 discloses embodiments of a search engine employed within a network
(i.e., stored and operable on a remote server) and embodiments employed
within an individual computer (i.e., stored and operable on a user’s device).
Appellants’ Specification provides no limiting definition of a “handheld
device” and thus, a handheld device may be broadly, but reasonably,
understood to encompass an “individual computer” as disclosed by Moore in
paragraph 153. Therefore, Moore’s disclosure of his search engine being
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employed within an individual computer discloses a search engine stored on
a handheld device as claimed.
In view of the above discussion, we are not persuaded of error in the
Examiner’s findings that Moore teaches every element of claim 21.
Appellants do not separately argue dependent claims 22 and 24. App. Br. 6.
Thus, for the same reasons as claim 21, we are not persuaded the Examiner
erred in rejecting claims 22 and 24.
Regarding claims 26 and 27 (dependent directly and indirectly from
claim 21), Appellants argue the cited portions of Moore fail to teach storing
the index (in the handheld device as in claim 26 or in a cache memory as in
claim 27). App. Br. 6–7; Reply Br. 6. We disagree. The Examiner explains
paragraph 160 of Moore discloses storing an index (e.g., globally unique
identifiers and indexed content). Ans. 11. We agree. Furthermore, Moore’s
paragraph 160 makes clear that the database “may store an entire instance of
the [(indexed)] content, . . . or a reference to the remotely located content, or
some combination of these.” Moore ¶ 160. Thus, Moore discloses an index
(indexed content) stored locally (i.e., on the handheld device as claimed).
Appellants argue Moore fails to disclose the cache memory recited in claim
27 for the same reasons as claim 26. App. Br. 7; Reply Br. 6.
In view of the above discussion, we are not persuaded the Examiner
erred rejecting claims 26 and 27.
For the above reasons, we sustain the anticipation rejection of claims
21, 22, 24, 26, and 27.

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Claim 25
Claim 25 depends from claim 21 and further recites, “wherein the
index is stored remote from the handheld device, and a copy of the index is
downloaded into the memory for use by the handheld device.” The
Examiner finds “a copy of the index is downloaded into the memory for use
by the handheld device (indexed file can be downloaded over a packet-
switched network, paragraph [0047]).” Ans. 6–7. We disagree. Although
Appellants present the same arguments for the rejection of claims 25–27 (no
index is stored in the handheld device), we find nothing in the cited
paragraphs disclosing downloading of a remotely stored index. As discussed
above with respect to claims 26 and 27, Moore clearly discloses an index
may be locally stored in memory of the handheld device or may be remotely
stored. However, a remotely stored index is not necessarily (inherently)
downloaded to the handheld device to be used in search request processing.
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (internal citations omitted). Nothing in Moore discloses that a
remotely stored index is necessarily downloaded to the handheld device.
The search engine stored and operable on the handheld device could, for
example, access a remotely stored index to perform search requests.
In view of the above discussion, we are persuaded the Examiner erred
in rejecting claim 25 and thus, we do not sustain the anticipation rejection of
claim 25.

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SECTION 103 REJECTION
Claim 31
Claim 31 depends from claim 21 and additionally recites, “wherein
the index is a numerical index comprising base-10 integer numbers.” The
Examiner rejects claims 23 and 31 combining teachings of Moore with those
of a technical dictionary evidencing it is known that an index is an integer
number as claimed. Ans. 7. The Examiner clarifies that claim 31 “as best
understood” requires only that the index be numerical (in view of the
Examiner’s rejection under § 112 of “base-10” as indefinite). Id. at 8.
Appellants argue the Examiner fails to articulate a rationale for
combining the references. App. Br. 8–9; Reply Br. 7–8. We find this
argument unpersuasive of Examiner error. The Examiner explains, “The
purpose of citing the definition of ‘index’ in a Microsoft Dictionary is [to]
prove and support Examiner’s reasoning that a non-binary, numeric, integer
index is commonly used in the art.” Ans. 12. The Examiner further
explains, “[u]tilizing an integer [as an index] . . . is commonly used in the
world as taught in Microsoft Dictionary.” Id. We agree. “The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417. Use of a base-10 integer value as an index in Moore would produce a
predictable result and Appellants have not persuaded us that the combination
is “uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
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2007) (citing KSR, 550 U.S. at 419). Therefore, we conclude the Examiner
has articulated a reason based on rational underpinnings.
Further supporting the Examiner’s combination, Appellants
acknowledge the use of base-10 numbers is well-known in their argument
regarding the Examiner’s rejection of claim 31 under § 112. App. Br. 4;
Reply Br. 3. Combining such a well-known concept as base-10 numbering
with the teachings of Moore would be an obvious design choice for the
ordinary skilled artisan.
Appellants further argue, “the Dictionary does not states [sic] that the
index is a numerical index comprising base-10 integer numbers.” App. Br.
10. We are not persuaded the Examiner erred, at least, because, as noted
above, we agree with Appellants’ assertion that base-10 numbers are well-
known to those of ordinary skill in the art. See App. Br. 4; Reply Br. 3.
Furthermore, there is no ipsissimis verbis test for determining whether a
reference discloses a claim element, i.e., identity of terminology is not
required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting claim 31 and we, therefore, sustain the rejection of claim
31.

Claim 23
Regarding Claim 23, Appellants further argue Moore fails to disclose
a RealTime Search component that converts a received search request into a
numeric code. App. Br. 9–10; Reply Br. 8. The Examiner states, “The step
of receiving search request is converted to locate the indexed file.” Ans. 13.
We fail to see that Moore teaches converting a search request from some
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received format into a numeric code. Although we agree with the Examiner
that numeric or numbers as recited in the claim broadly but reasonably read
on any form of numbers, we still find no teaching in Moore that discusses
any conversion of a received search request—conversion into a numeric
form or any other conversion.
In view of the above discussion, we sustain the Examiner’s rejection
of claim 31 but cannot sustain the rejection of claim 23.

DECISION
For the above reasons, the Examiner’s rejection of claim 31 under
35 U.S.C. § 112, first paragraph is REVERSED.
For the above reasons, the Examiner’s rejection of claims 21, 22, 24,
26, and 27 under 35 U.S.C. § 102(e) is AFFIRMED.
For the above reasons, the Examiner’s rejection of claim 25 under
35 U.S.C. § 102(e) is REVERSED.
For the above reasons, the Examiner’s rejection of claim 23 under
35 U.S.C. § 103(a) is REVERSED.
For the above reasons, the Examiner’s rejection of claim 31 under
35 U.S.C. § 103(a) is AFFIRMED.
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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