Mauge, Karin

Patent Trials and Appeals Board

Jun 16, 2020

12610038 - (D) (P.T.A.B. Jun. 16, 2020)

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.
12/610,038 10/30/2009 Karin Mauge IP-P929US1/EBAY.281188 9621
150601 7590 06/16/2020
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
KHOSHNOODI, FARIBORZ
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
06/16/2020 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):
IPDOCKET@SHB.COM
docket.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KARIN MAUGE
____________

Appeal 2019-001142
Application 12/610,038
Technology Center 2100
____________

Before KALYAN K. DESHPANDE, JASON V. MORGAN, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5, 8, 10–15, 20–22, and 24–29, which are all the
claims pending in the application.2 We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies eBay, Inc. as the real party in interest. Appeal Br. 3.
2 Appellant failed to identify the prior appeal as being a related appeal. We
remind Appellant and Appellant’s counsel of the duty to identify “all other
prior . . . appeals . . . which satisfy all of the following conditions: involve an
application . . . owned by the appellant or assignee, are known to appellant,
the appellant’s legal representative, or assignee, and may be related to,
directly affect . . . or have a bearing on the Board’s decision in the pending
appeal.” 37 C.F.R. § 41.37(c)(1)(ii).
Appeal 2019-001142
Application 12/610,038

2

STATEMENT OF THE CASE
Introduction
The present invention relates to “generating more robust search results
using sets of alternative terms.” Spec. ¶ 1. Claim 1 is exemplary:
1. A server computer comprising:
a processor; and
a computer readable medium, coupled with the processor,
the computer readable medium storing instructions to be
executed by the processor, to perform operations comprising:
receiving a query in an online publishing system, the
query comprising a plurality of terms including syntax input by
a user indicating that at least a first term and a second term are
alternative terms in the plurality of terms;
parsing the plurality of terms included in the query to
determine that the first term and second term are alternative
terms;
associating the first term and the second term included in
the query to a particular product domain associated with the
query;
forming a group comprising the first term and the second
term included in the query;
comparing the group comprising the first term and
second term included in the query to queries received by the
online publishing system;
determining a number of occurrences where the group
comprising the first term and the second term has previously
been included in queries received by the online publishing
system;
comparing the number of occurrences of the group
comprising the first term and the second term in queries
received by the online publishing system to a threshold value
for the product domain associated with the query;
determining that the number of occurrences meets the
threshold value for the product domain associated with the
query;
Appeal 2019-001142
Application 12/610,038

3
determining that the first term of the query belongs to at
least a first existing set of terms stored in a database that does
not include the second term;
adding the second term of the query to the first existing
set of terms to form an updated first existing set of terms that
includes the second term; and
storing, in the database, the updated first existing set of
terms, wherein the updated first existing set of terms stored in
the database is accessed to respond to subsequent queries.

References and Rejection3
Claims
Rejected
35 U.S.C. § References
1–5, 8, 10–15,
20–22, 24–29
103(a) Brewer (US 2006/0161520 A1; July 20,
2006), Li (US 8,258,745 B2; Oct. 9, 2012)

ANALYSIS4
35 U.S.C. § 103(a)
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in finding the cited portions of Brewer
teach “associating the first term and the second term included in the query to
a particular product domain associated with the query,” as recited in
independent claim 1. See Appeal Br. 10.
The Examiner has not persuaded us the cited portions of Brewer
disclose “associating the first term and the second term included in the query

3 Throughout this opinion, we refer to the (1) Final Office Action dated
January 9, 2018 (“Final Act.”); (2) Appeal Brief dated June 11, 2018
(“Appeal Br.”); and (3) Examiner’s Answer dated September 19, 2018
(“Ans.”).
4 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not address the additional arguments.
Appeal 2019-001142
Application 12/610,038

4
to a particular product domain associated with the query.” The Examiner
finds Brewer discloses that limitation. See Final Act. 4 (citing Brewer ¶ 12,
Fig. 2). Brewer’s Fig 2 illustrates a set of alternative search terms that may
be generated, and is reproduced below:

The Examiner finds Brewer’s alternative search terms 110 teach the
claim limitations of “a first term” and “a second term.” Final Act. 4 (citing
Brewer ¶ 12, Fig. 2); Brewer ¶ 13. The Examiner further finds search input
108 identifies the claimed “product domain.” Final Act. 4. (“Fig. 2 shows
the product (ford)”). Brewer’s Figure 2 depicts the alternative search terms
“FORD MUSTANG” and “FORD, GERALD R.” See Brewer, Fig. 2; ¶ 13.
Because “FORD, GERALD R.” is the name of a former U.S. president and
“FORD MUSTANG” is a vehicle make and model, the Examiner has not
adequately explained why Figure 2 teaches associating the “product domain”
Appeal 2019-001142
Application 12/610,038

5
“FORD” with a first term “FORD, GERALD R.” and a second term “FORD
MUSTANG.” As a result, the Examiner has not established Brewer teaches
“associating the first term and the second term included in the query to a
particular product domain associated with the query,” as required by claim 1.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of independent claim 1.
Each of independent claims 10 and 21 recites a claim limitation that is
substantively similar to the disputed limitation of claim 1. See claims 10 and
21. The Examiner applies the same findings (discussed above) to claims 1,
10, and 21. See Final Act. 2, 3, 12. Therefore, for similar reasons, we
reverse the Examiner’s rejection of independent claims 10 and 21.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2–5, 8, 11–15, 20, 22, and 24–29.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–5, 8, 10–15,
20–22, and 24–29 under 35 U.S.C. § 103(a).

In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–5, 8, 10–15,
20–22, 24–29
103(a) Brewer, Li 1–5, 8, 10–15,
20–22, 24–29

REVERSED