Ex Parte Snyder

Patent Trial and Appeal Board

Oct 30, 2013

11195909 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW SNYDER
____________

Appeal 2011-006408
Application 11/195,909
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Examiner finally rejected claims 9-15 and 24-32. Claims 1-8
were withdrawn and claims 16-23 were cancelled during prosecution.
Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention "relates to systems and methods for operation control
functionality." (Spec. 1). Claim 9, reproduced below, is representative of
the claimed subject matter:
9. A method, comprising:
[a] providing search hit indicators on a single map, [a1] wherein
the search hit indicators are placed on the single map in
accordance with geographical information; and
[b] receiving one or more requests for further information
regarding one or more search hits,
[c] wherein a first set of the search hit indicators corresponds
to search hit results yielded by a first search plugin,
[d] wherein a second set of the search hit indicators
corresponds to search hit results yielded by a second search
plugin, and
[e] wherein the first set and the second set of the search hit
indicators are displayed in an integrated viewing area of the
single map.
(Disputed limitations emphasized, steps lettered).

REJECTIONS
R1. Claims 9-15 and 24-30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of U.S.
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Patent Application Pub. No. 2002/0042819 A1) ("Reichert") and U.S. Patent
Application Pub. No. 2004/0024720 A1 ("Fairweather").
R2. Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of
Reichert, Fairweather, and U.S. Patent Application Pub. No. 2006/0085477
A1 ("Phillips").

GROUPING OF CLAIMS
Based on Appellant's arguments, we decide the appeal of the
obviousness rejection R1 of claims 9, 10, 13-15, 24, 25, and 28-30 on the
basis of representative claim 9. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1
We address the rejection R1 of claims 11, 12, 26, and 27 separately,
infra.
We address the rejection R2 separately, infra.

ANALYSIS
We disagree with Appellant's contentions regarding the Examiner's
obviousness rejections of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Answer in

1 Appellant filed a Notice of Appeal on July 2, 2010. The date of filing the
Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also MPEP Rev. 8, July 2010.

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response to arguments made in Appellant's Appeal Brief. (Ans. 10-12). We
highlight and address specific findings and arguments below:
R1.
A.
As an initial matter of claim construction, a question arises as to the
amount of patentable weight, if any, that should be given the disputed claim
9 limitations:
[c] wherein a first set of the search hit indicators corresponds
to search hit results yielded by a first search plugin,
[d] wherein a second set of the search hit indicators
corresponds to search hit results yielded by a second search
plugin, . . . .
When considering the scope of the claim as a whole, we conclude the recited
first and second "set of the search hit indicators" are non-functional
descriptive material intended for human viewing on a display. 2 See Ex
parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex
parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit
Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias,
84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959
(Fed. Cir. 2006).

2 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure includes substantively the same guidance. See
MPEP, § 2106.01.)
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Here, the informational content of the first and second “set of the
search hit indicators” is not positively recited as altering or changing the
way the “providing” or “receiving” steps are performed. (Claim 9,
limitations [a], [a1], [b], [e]). Moreover, the claimed "search hit results
yielded by a first [and a second] search plugin" broadly describe
informational content that “corresponds to” 3 the first and second set of the
search hit indicators. Furthermore, claim 9 limitations [c] and [d] fail to
positively recite actually using the search plugins to yield search hit results
and therefore do not limit the method of claim 9. Thus, we conclude the
informational content of the recited first and second “set of the search hit
indicators” is non-functional descriptive material and, as such, is not
accorded patentable weight. (Claim 9).
Assuming arguendo that weight may be given to the disputed sets of
“search hit indicators” [c] and [d], we find the weight of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for the reasons discussed infra.
B.
Appellant contends Fairweather would not have taught or suggested
"more than one search hit indicator, each search hit indicator corresponding
to a different plugin module, being displayed on a single map at the same
time." (Reply Br. 3). Appellant's contention is not persuasive. We find

3 We broadly but reasonable construe the recited “corresponds to” language
as covering any nexus or association, no matter how attenuated. (See
independent claims 1, 24, and 31). 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).
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Fairweather's disclosure of "UI components" (Fairweather; ¶ [0123]) that
can include plug-in search engines (Fairweather; ¶¶ [0123] and [0124])
would have taught or suggested using the claimed first and second search
plugins. (Ans. 10-11). Moreover, it would have obvious to provide a search
plugin from Fairweather for each set of search hit indicators in Reichert so
each search plugin could be more efficient retrieving hits for only one search
set.4 For these reasons, on this record, we are not persuaded of Examiner
error.
C.
Issue: Under § 103, did the Examiner err in combining
the cited references relied upon in the rejection of claim 9?
Appellant additionally contends the combination of Reichert and
Fairweather is improper because the Examiner's proffered motivation to
combine the reference is a mere generalization falling short of the required
"articulated reasoning with some rational underpinnings" and because the
Examiner used impermissible hindsight in combining the references. (App.
Br. 9; Reply Br. 3).
We are not persuaded by Appellant's contentions. We find the
Examiners' proffered motivation of "increas[ing] the efficiency of the system
by enabling the system to search and retrieve data from [a] variety of data
sources without increasing the size of searching applications" has sufficient

4 “[A]nalysis need not seek out precise teachings directed to the specific
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int'l Co. v. Teleflex Inc. 550 U.S. 398, 418 (2007).

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rational underpinning because it is common sense that using multiple search
plugins in a parallel fashion would increase search efficiency. (Ans. 5, 11).
Moreover, Appellant fails to rebut the Examiner's findings because
Appellant's have only offered conclusory arguments in support of their
assertion. (App. Br. 9; Reply Br. 3; See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (attorney’s arguments or conclusory statements are
insufficient to rebut a prima facie case)). Moreover, we find the Examiner’s
proffered combination of Reichert's mapping method (with two sets of
search hit indicators) with Fairweather's search plugins, which provide sets
of search hit results, would have been a "combination of familiar elements
according to known methods" that would have yielded predictable results.5
For these reasons, on this record, we are not persuaded of Examiner
error. Accordingly, we sustain the rejection R1 of claim 9 and of claims 10,
13-15, 24, 25, and 28-30, which fall therewith.
D.
Issue: Under § 103, did the Examiner err in finding that
the cited references, either alone or in combination, would have
taught or suggested "wherein one or more of the search hit
indicators have corresponding keypad buttons," within the
meaning of dependent claims 11 and 26?

5 “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. Thus, we conclude that claiming a mere plurality
of prior art elements used in combination is not a nonobvious distinction
over the prior art of record, absent some showing of secondary
considerations, such as unexpected results.
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Appellant contends, "it does not follow that because an icon may
contain a hyperlink, there is any keypad button that corresponds to the icon
or search hit indicator." (Reply Br. 5, emphasis added and removed).
Appellant's contention is not persuasive. First, Appellant does not
address the Examiner's combined findings, but only addresses one finding
("because an icon may contain a hyperlink") in isolation. (Reply Br. 4-5).
Second, the Examiner finds, and we agree:
[T]he search hits icons of Reicher[t] can be controlled by arrow
keys (i.e. corresponding keys) moving between search hits
(which is a feature in Windows Explorer) and [a] embedded
hyperlink in the search hit icons enables a user to retrieve more
information regarding that search hit by pressing the enter key
(which is another feature in Windows Explorer).
(Ans. 11). We agree that Reichert's icons with hyperlinks ("search hit
indicators") which can be selected by ("corresponding") arrows and keypad
buttons ("keypad buttons") would have taught or suggested the limitation at
issue. Moreover, Appellant fails to cite to a more narrow definition of
"corresponding" in the Specification.6 For these reasons, on this record, we
are not persuaded of Examiner error. We sustain the rejection R1 of claims
11 and 26.

6 See n.3 supra; see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527
F.3d 1379, 1381 (Fed. Cir. 2008) (citation omitted) ("A patentee may act as
its own lexicographer and assign to a term a unique definition that is
different from its ordinary and customary meaning; however, a patentee
must clearly express that intent in the written description."). Any special
meaning assigned to a term "must be sufficiently clear in the specification
that any departure from common usage would be so understood by a person
of experience in the field of the invention." Multiform Desiccants, Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
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E.
Regarding the limitation of "wherein one or more of the keypad
buttons may be pressed by a user to request further information regarding
one or more search hits," within the meaning of claim 12 (emphasis added)
and the commensurate language of claim 27, we do not accord the limitation
any patentable weight because the limitation does not require a method step
to be performed.7 Specifically, the limitation does not positively require a
user to press a keypad button. For these reasons, on this record, we are not
persuaded of Examiner error. We sustain the rejection R1 of claims 12 and
27.
R2.
Appellant contends claims 31 and 32 are patentable for the reasons
argued regarding claim 9 in rejection R1. (App. Br. 12-13). However, we
are not persuaded of Examiner error regarding the rejection R2 of claims 31
and 32 for the same reasons discussed above regarding claim 9.

7 See MPEP §2111.04 regarding "wherein" clauses:
Claim scope is not limited by claim language that suggests or makes
optional but does not require steps to be performed, or by claim language
that does not limit a claim to a particular structure. However, examples of
claim language, although not exhaustive, that may raise a question as to the
limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012, emphasis added).

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DECISION
We affirm the Examiner's rejections R1 and R2 of claims 9-15 and
24-32 under § 103.
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.
§ 41.50(f).

AFFIRMED

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