Ex Parte Yamada et al

Board of Patent Appeals and Interferences

May 3, 2012

10176452 (B.P.A.I. May. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SEIJI YAMADA and JUNICHI SATOH
____________________

Appeal 2009-013126
Application 10/176,452
Technology Center 2100
____________________

Before ERIC S. FRAHM, DAVID M. KOHUT, and ERIC B. CHEN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
1

Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 8, 10-14, and 16-20 (see App. Br. 3, Status of Claims; Ans. 2,
Status of Claims). Claims 5, 7-9, and 15 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claims
Exemplary independent claims 1, 8, 11, 14, and 17 under appeal, with
bracketing and numbering added, read as follows:

1. A method for searching a document consisting of a plurality of unit
documents by a keyword, data of said document being stored in a database,
comprising:

[1] receiving a specified keyword for a search;

[2] searching preregistered search data of said document to identify
one or more unit documents that contain said specified keyword; and

[3] displaying a document structure chart that shows a relationship
among said plurality of unit documents, said document structure chart
further shows an indicator identifying said one or more unit documents that
contain said specified keyword.

8. A terminal for searching a document consisting of a plurality of
unit documents by a keyword, comprising:

[1] a keyword receiving unit for receiving a search keyword;

1
We refer throughout our decision to the Appeal Brief filed January 5, 2009
(“App. Br.”), the Examiner‟s Answer mailed April 27, 2009 (“Ans.”), and
the Reply Brief filed June 25, 2009 (“Reply Br.”).
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[2] a search result displaying unit for displaying a document structure
chart that shows a relationship among said plurality of unit documents
together with an indicator that identifies a portion in said structure chart that
contains said keyword as a result of searching said document according to
said specified keyword;
[3] a search data storing unit for storing search data in which one or
more keywords are registered for each document; and
[4] a searching unit for searching said search data and identifying a
unit document that contains said specified keyword received by said
keyword receiving unit.

11. A computer program product, in a computer-readable medium for
performing a keyword search in a data processing system for a document of
which data is stored in a database, comprising:
[1] instructions for receiving a specified search keyword;
[2] instructions for identifying a portion in said document, which
contains said specified search keyword; and
[3] instructions for displaying a chart of the logical structure of said
document together with an indicator that identifies in said structure chart a
portion containing said specified search keyword.
[4] displaying a document structure chart that shows a relationship
among said plurality of unit documents together with an indicator that
identifies a portion in said structure chart that contains said keyword as a
result of searching said document according to said specified keyword.
2

2
Appellants‟ amendment filed August 8, 2005 supports this copy of claim
11, as filed in the appendix to the Appeal Brief. Notably, claim 11 contains
two periods, and recites repetitive limitations “instructions for displaying a
chart” and “displaying a document structure chart.” We leave it to the
Examiner to have these informalities corrected should there be further
prosecution with respect to claim 11. For purposes of this appeal, we treat
claim 11 as ending with the first period as printed above.
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14. A computer program product, in a computer-readable medium, for
searching a document, in a data processing system, by a keyword whose data
is stored in a database, comprising:

[1] instructions for generating search data by extracting a keyword
contained in said document and information on one or more unit documents
related to said keyword based on data of said document;

[2] instructions for generating a document structure chart that shows a
relationship among unit documents of said document based on data of said
document;

[3] instructions for receiving a specified search keyword;

[4] instructions for identifying a unit document that contains said
specified search keyword in said document; and

[6] instructions for displaying an indicator that indicates said
identified unit document in said document structure chart.

17. A method for searching a document consisting of a plurality of
topics by a keyword, data of said document being stored in a database,
comprising:

[1] receiving a request for a keyword search while a topic of said
document is displayed;

[2] identifying said topic when said request is received;

[3] retrieving one or more keywords previously registered in relation
to said identified topic;

[4] displaying a list of said one or more retrieved keywords;

[5] receiving a specified keyword for search, from said list of one or
more retrieved keywords; and

[6] searching said document for said specified keyword.

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Rejections
(1) The Examiner rejected claims 1, 2, 8, and 16 as being unpatentable
under 35 U.S.C. § 103(a) over MPEP Insight LAN, Version 1.2 (July 5,
2000) and Seet (US 6,725,203 B1). Ans. 3-7.
(2) The Examiner rejected claims 3, 4, and 10 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of MPEP Insight LAN, Seet,
and Wyler (US 2005/0055420 A1).
3
Ans. 7-9.
(3) The Examiner rejected claim 16 as being unpatentable under
35 U.S.C. § 103(a) over the combination of MPEP Insight LAN, Seet, and
Kleinberger (US 4,972,349). Ans. 9-10.
(4) The Examiner rejected claims 11 and 13 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of MPEP Insight LAN and
Kleinberger. Ans. 10-12.
(5) The Examiner rejected claims 12 and 17-20 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of MPEP Insight LAN, Seet,
and Kleinberger. Ans. 12-15.
(6) The Examiner rejected claim 14 as being unpatentable under
35 U.S.C. § 103(a) over the combination of MPEP Insight LAN and Wyler.
Ans. 15-16.

3
Although claim 10 was omitted in the statement of the rejection (see Ans.
7), the Examiner discusses claim 10 on the merits in the body of the
rejection (Ans. 9). This fact is recognized by Appellants in the Appeal Brief
(see App. Br. 9 and 18). Accordingly, we treat the omission of claim 10 in
the statement of the rejection as harmless error, and consider claim 10 to
stand rejected on the same grounds as claims 3 and 4.
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Appellants’ Contentions
(1) Appellants contend that the Examiner erred in rejecting (a) claims
1, 2, 8, and 16 under 35 U.S.C. § 103(a) over MPEP Insight LAN and Seet
(App. Br. 10-18; Reply Br. 3-6), (b) claims 3 and 4 under 35 U.S.C. § 103(a)
over MPEP Insight LAN, Seet, and Wyler (App. Br. 18), and (c) claim 16
under 35 U.S.C. § 103(a) over MPEP Insight LAN, Seet, and Kleinberger
(App. Br. 18), for numerous reasons including:
4

(i) MPEP Insight LAN and Seet fails to teach elements [2] and [3] of
claim 1(App. Br. 10-12; Reply Br. 3-5);
(ii) as to element [2] of claim 1, Appellants‟ “specification makes
clear that the „preregistered search data of said document‟ is different from
the document text itself” because the keyword search uses keywords index

4
Appellants provide specific arguments as to claims 1 and 8 (see App. Br.
10-18), and rely on the arguments for claims 1 and 8 with regard to the
rejections of claims 3, 4, 10, and 16. We select claim 1 as representative of
the group of claims consisting of claims 1, 2, 8, and 16 rejected under
35 U.S.C. § 103(a) over MPEP Insight LAN and Seet, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Claims 3, 4, and 10 stand separately rejected under 35 U.S.C. § 103(a)
over the combination of MPEP Insight LAN, Seet, and Wyler. (App. Br.
18.) Appellants do not provide any arguments as to this rejection, other than
to rely on the same arguments made with regard to claims 1 and 8.
Accordingly we decide (i) claims 3 and 4 on the same basis as claim 1 from
which claims 3 and 4 depend, and (ii) claim 10 on the same basis as claim 8
from which claim 10 depends.
Claim 16 stands separately rejected under 35 U.S.C. § 103(a) over the
combination of MPEP Insight LAN, Seet, and Kleinberger. (App. Br. 18.)
Appellants do not provide any arguments as to this rejection, other than to
rely on the same arguments made with regard to claim 1. Accordingly we
decide claim 16 on the same basis as claim 1 from which claim 16 depends.
In summary, we will only discuss claims 1 and 8 in our analysis
concerning the Examiner‟s first three rejections listed supra.
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table 22a and document structure table 22b, as opposed to documents in the
document database 10 (App. Br. 12 citing Spec. 10:16-19);
5

(iii) “[t]he phrase „preregistered search data‟ has the plain meaning of
data used or associated with searching that is registered at some point in time
prior to conducting a search” (App. Br. 12);
(iv) MPEP Insight LAN‟s table of contents and sections/chapters are
not preregistered search data, as recited in claim 1 (App. Br. 12-13);
(v) Seet‟s search of a preregistered list of websites is not a search of
preregistered data derived from unit documents and defined prior to
conducting a search, and does not search a database for keywords, as recited
in claim 1 (App. Br. 13-15);
(vi) element [3] of claim 1 is not met because MPEP Insight LAN‟s
indicators indicate an active document and the relevancy of a document, but
do not identify a unit document containing a search term relative to other
unit documents that do not include the search term (App. Br. 16);
(vii) element [3] of claim 1 is not met because MPEP Insight LAN‟s
results window does not display the complete document structure (i.e., the
results window does not indicate how relevant documents fit into the overall
document structure, or show unit documents that do not have the search term
in addition to those that do), even if the scroll bar allows scrolling of the
entire content of the results window, and claim 1 recites a document
structure chart that displays the document structure and the results in a single
structure (App. Br. 16-17; Reply Br. 5);

5
Appellants inadvertently cite line 16-19 of page 10 of the Specification at
page 12 of the Appeal Brief. However, our close review shows that the
correct citation is Specification, page 10, lines 11-13.
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(viii) MPEP Insight LAN and Seet fail to teach a search result
displaying unit (element [2] of claim 8), as recited in claim 8 (App. Br. 17-
18);
(ix) Seet‟s results window and saving of a search to the bookmarks
table of contents does not meet the limitation in claim 8 of a search data
storing unit for storing search data in which one or more keywords are
registered for each document, because Seet‟s results window is simply the
results of a search, and not the search subject matter (App. Br. 17-18); and
(x) as to claims 1, 2, 8, and 16, there is no motivation to make the
combination (Reply Br. 6).
(2) Appellants contend (App. Br. 18-19; Reply Br. 6-7) that the
Examiner erred in rejecting claims 11 and 13 under 35 U.S.C. § 103(a) over
MPEP Insight LAN and Kleinberger for numerous reasons including:
(i) Kleinberger fails to teach element [4] of claim 11 (App. Br. 18-19);
(ii) Kleinberger only shows a portion of the found unit documents,
and “Kleinberger, like [MPEP Insight] LAN, makes clear that the results
displayed do not include both relevant and non-relevant portions of the
document” (App. Br. 19);
(iii) a person reviewing MPEP Insight LAN‟s and Kleinberger‟s sub-
documents are not in a logical structure, and “a person reviewing them
cannot use the location of a unit document with the keyword, as it relates the
locations of other unit documents, to derive information about the context in
which the keyword is used” (Reply Br. 7); and
(iv) the cited references do not teach a motivation to combine (App.
Br. 18).
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(3) Appellants contend (App. Br. 20-21; Reply Br. 7-8) that the
Examiner erred in rejecting claims 12 and 17-20 under 35 U.S.C. § 103(a)
over MPEP Insight LAN, Seet, and Kleinberger for numerous reasons
including:
(i) MPEP Insight LAN and Kleinberger fails to teach element [3] of
claim 17, (App. Br. 20-21);
(ii) MPEP Insight LAN‟s table of contents is not a list of previously
registered keywords related to an identified topic as recited in claim 17
(App. Br. 21);
(iii) Kleinberger fails to teach retrieving one or more keywords
previously registered in relation to the identified topic and displaying a list
of these keywords (App.Br. 21);
(iv) the Examiner has not explained how MPEP Insight LAN, Seet,
and/or Kleinberger can be interpreted as displaying retrieved keywords that
were previously registered in relation to a topic that is being displayed, as
recited in element [4] of claim 17 (Reply Br. 8); and
(iv) the cited references do not teach a motivation to combine (App.
Br. 20).
(4) Appellants contend (App. Br. 22-23; Reply Br. 8-9) that the
Examiner erred in rejecting claim 14 under 35 U.S.C. § 103(a) over MPEP
Insight LAN and Wyler for numerous reasons including:
(i) MPEP Insight LAN fails to teach generating search data by
extracting a keyword as recited in element [1] of claim 14 (Reply Br. 8);
(ii) both MPEP Insight LAN and Wyler fails to teach element [5] of
claim 14, i.e., displaying an indicator that shows that a particular unit
document contains the specified search keyword (Reply Br. 8-9);
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(iii) Wyler‟s paragraphs [0026], [0349], and [0369]-[0370] fail to
teach the displaying limitation, element [5], recited in claim 14 (App. Br. 22-
23); and
(iv) Wyler teaches a table of contents which is a form of document
structure chart, but fails to teach an indicator identifying a unit document
which contains a keyword in a document structure chart (App. Br. 23).
Issues on Appeal
Based on Appellants‟ arguments, the following six issues are
presented for appeal:
Obviousness Rejection of Claims 1-4, 8, 10, and 16
(1) Did the Examiner err in rejecting claims 1-4 and 16 as being
obvious because (i) MPEP Insight LAN and Seet are not properly
combinable, and/or (ii) the combination of fails to teach or suggest the
searching and displaying limitations found in elements [2] and [3] of claim 1
at issue?
(2) Did the Examiner err in rejecting claims 8 and 10 as being obvious
because (i) MPEP Insight LAN and Seet are not properly combinable, and/or
(ii) the combination of fails to teach or suggest the “search result displaying
unit” limitation found in element [2] of claim 8 at issue?
Obviousness Rejection of Claims 11 and 13
(3) Did the Examiner err in rejecting claims 11 and 13 as being
obvious because (i) MPEP Insight LAN and Kleinberger are not properly
combinable, and/or (ii) the combination of MPEP Insight LAN and
Kleinberger fails to teach or suggest the “displaying a document structure
chart” limitation found in element [4] of claim 11 at issue?
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Obviousness Rejection of Claims 12 and 17-20
(4) Did the Examiner err in rejecting claims 12 and 17-20 as being
obvious because (i) MPEP Insight LAN, Seet, and Kleinberger are not
properly combinable, and/or (ii) the combination of MPEP Insight LAN,
Seet, and Kleinberger fails to teach or suggest the retrieving and displaying
limitations found in elements [3] and [4] of claim 17 at issue?
Obviousness Rejection of Claim 14
(5) Did the Examiner err in rejecting claim 14 as being obvious
because the combination of MPEP Insight LAN and Wyler fail to teach or
suggest the indicator limitation found in element [5] of claim 14 at issue?

ANALYSIS
We have reviewed the Examiner‟s rejections in light of Appellants‟
contentions in the Appeal Brief (App. Br. 10-23) and the Reply Brief (Reply
Br. 3-9) that the Examiner has erred.
We disagree with Appellants‟ conclusions. 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 Examiner‟s Answer (Ans. 3-26) in response to Appellants‟ Appeal Brief.
We concur with the conclusions reached by the Examiner. In addition, we
provide the following analysis and interpretation of the claim language at
issue in the various independent claims.
Only claims 1 and 12 recited preregistered search data and searching
preregistered search data. Appellants‟ Specification, at page 10, is silent as
to providing a definition of “preregistered search data.” Although the
Specification discloses keywords that are registered for a topic Tc and listed
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in popup menu Pm (Spec. 10:6-8), there is no discussion of preregistering
search data and/or what that means or how it is accomplished.
Appellants admit that keyword searching, where “specific words are
registered as keywords beforehand and the search function is performed
against only the registered keywords,” is known in the prior art (Spec. 1:16-
19). Appellants also admit that presenting search results in a window
displayed on a computer screen having several frames, where titles of the
searched topics are listed in one frame, a topic or minimum unit of the
document is displayed in another frame, and a list of keywords registered in
a document is displayed in another frame, is known in the prior art (Spec.
2:1-7). In this light, Appellants‟ arguments that the cited prior art fails to
teach or suggest (i) displaying a document structure chart, including non-
relevant unit documents, and (ii) preregistered search data, are unpersuasive.
We agree with Appellants that “the phrase „preregistered search data‟
has the plain meaning of data used or associated with searching that is
registered at some point in time prior to conducting a search” (App. Br. 12).
However, we find that MPEP Insight LAN‟s and Kleinberger‟s table of
contents, as well as Seet‟s advertisements, are encompassed by this
definition of “preregistered search data.”
We now turn to the five issues raised by Appellants‟ arguments.
Obviousness Rejection of Claims 1, 2, 8, and 16
First Issue: Claim 1
Appellants admit that Seet teaches searching a preregistered list of
websites (App. Br. 15), as well as, searching an ad database to locate
specific ads (App. Br. 14). In addition, Appellants admit that keyword
searching, where “specific words are registered as keywords beforehand and
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the search function is performed against only the registered keywords” is
known in the prior art (Spec. 1:16-19). We agree with the Examiner‟s broad
interpretation of “preregistered search data” as including a table of contents
(Ans. 18). In light of these facts, we agree with the Examiner (Ans. 4-5 and
17-20) that the combination of MPEP Insight LAN and Seet teaches or
suggests elements [2] and [3] of claim 1, including searching preregistered
search data of a document. Preregistered ads that are later searched and
selected are encompassed by the recitation in claim 1 of “searching
preregistered search data.”
Appellants‟ arguments that element [3] of claim 1 is not met because
(i) MPEP Insight LAN‟s indicators do not identify a unit document
containing a search term relative to other unit documents that do not include
the search term (App. Br. 16), and (ii) MPEP Insight LAN‟s results window
does not display the complete document structure (i.e., the results window
does not show unit documents that do not have the search term), and claim 1
recites a document structure chart that displays the document structure and
the results in a single structure (App. Br. 16-17; Reply Br. 5), are
unpersuasive. The language of claim 1, as well as that of claims 8 and 11, is
silent as to the document structure chart being a single structure as opposed
to multiple frames or views. Thus, Appellants‟ arguments are not
commensurate with the scope of claim 1.
Furthermore, Appellants admit that presenting search results in a
window displayed on a computer screen having several frames, where titles
of the searched topics are listed in one frame, a topic or minimum unit of the
document is displayed in another frame, and a list of keywords registered in
a document is displayed in another frame, is known in the prior art (Spec.
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2:1-7). In view of the foregoing, we do not agree with Appellants that
element [3] of claim 1 is not met by the combination of MPEP Insight LAN
and Seet.
Second Issue: Claim 8
We also agree with the Examiner (Ans. 6-7) that the combination of
MPEP Insight LAN and Seet teaches or suggests element [2] of claim 8 (“a
search result displaying unit” having similar features as element [3] of claim
1).
In view of the foregoing, and based on the reasons discussed supra
with respect to claim 1, Appellants have not sufficiently shown that the
Examiner erred in rejecting claim 8. Accordingly, we will also sustain the
obviousness rejection of claim 8.
Obviousness Rejection of Claims 11 and 13
Third Issue: Claim 11
Similarly, Appellants‟ argument (App. Br. 18-19) that element [4] of
claim 11 (which is similar to element [3] of claim 1 and element [2] of claim
8 just discussed) is not taught by the cited prior art is not persuasive. We
disagree with Appellants‟ argument (App. Br. 18-19; Reply Br. 6-7) that
Kleinberger only shows a portion of the found unit documents, Kleinberger
teaches that the results displayed do not include both relevant and non-
relevant portions of the document, because Kleinberger (col. 12, ll. 9-21)
discloses displaying non-indicated texts. In any event, claim 11 does not
recite displaying non-relevant portions of the document, only a relationship
among documents.
In view of the foregoing, we will sustain the obviousness rejection of
claim 11 based upon the combined teachings and suggestions of MPEP
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Insight LAN and Kleinberger. For similar reasons we will sustain the
rejection of claim 13 which depends from claim 11.
Obviousness Rejection of Claim 12 and 17-20
Fourth Issue: Claim 17
Because we agree with the Examiner‟s broad interpretation of
“preregistered search data” as including a table of contents (Ans. 18,) as
discussed supra with regard to claim 1, we are not persuaded by Appellants‟
arguments that (i) MPEP Insight LAN and Kleinberger fails to teach element
[3] of claim 17 (App. Br. 20-21), and (ii) MPEP Insight LAN‟s table of
contents is not a list of previously registered keywords related to an
identified topic as recited in claim 17 (App. Br. 21).
We also disagree with Appellants that Kleinberger fails to teach
retrieving one or more keywords previously registered (App.Br. 21), because
Kleinberger specifically discloses a table of contents that acts as an indicator
(col. 4, ll. 24-66), indicating results on a screen “indicating the groups of
texts which have been found and their relationships to each other, in the
form of a „table of contents‟ of headings, sub-headings, and texts” (col. 11,
ll. 55-60), and a header that acts as an indicator (col. 13, l. 30 to 14, l. 16-24;
Fig. 9).
In view of the foregoing, we will sustain the obviousness rejection of
claim 17 based upon the combined teachings and suggestions of MPEP
Insight LAN, Seet, and Kleinberger. For similar reasons we will sustain the
rejection of claim 12 (grouped with claim 17) and claims 18 and 19 which
depend from claim 17, as well as claim 20 which contains similar
limitations.

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Obviousness Rejection of Claim 14
Fifth Issue: Claim 14
Appellants‟ arguments (App. Br. 22-23; Reply Br. 8-9) that Wyler
fails to teach an indicator as recited in element [5] of claim 14 are
unpersuasive. We agree with Appellants (App. Br. 23) that Wyler teaches a
table of contents which is a form of document structure chart. However, we
disagree with Appellants (App. Br. 23) that Wyler fails to teach an indicator
identifying a unit document which contains a keyword in a document
structure chart (App. Br. 23).
Specifically, Wyler discloses a table of contents that assists a user
(¶ [0026]) and includes items such as titles and headings, captions, table of
contents, and an index (¶¶ [0349] and [0370]) that serve as indicators.
In view of the foregoing, we will sustain the obviousness rejection of
claim 14 based upon the combined teachings and suggestions of MPEP
Insight LAN and Wyler.

CONCLUSIONS
(1) The various combinations of MPEP Insight LAN, Seet, Wyler,
and/or Kleinberger teach or suggest the argued limitations of claims 1, 8, 11,
14, and 17 on appeal.
(2) The Examiner has not erred in rejecting claims 1-4, 8, 10-14, and
16-20 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-4, 8, 10-14, and 16-20 are not patentable.

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DECISION
The Examiner‟s rejections of claims 1-4, 8, 10-14, and 16-20 are
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

ELD