Doat Media Ltd.

Patent Trials and Appeals Board

Apr 1, 2021

2019004015 (P.T.A.B. Apr. 1, 2021)

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.
15/095,905 04/11/2016 Rami KASTERSTEIN DOAT P0128C2 4900
122066 7590 04/01/2021
M&B IP Analysts, LLC
150 Morristown Road
Suite 205
Bernardsville, NJ 07924-2626
EXAMINER
YEN, SYLING
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
eofficeaction@appcoll.com
pair@mb-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMI KASTERSTEIN and AMIHAY BEN-DAVID
Appeal 2019-004015
Application 15/095,905
Technology Center 2100
Before MARC S. HOFF, ELENI MANTIS MERCADER, and
JAMES W. DEJMEK, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as DOAT
MEDIA LTD., of record, whose assignment is recorded in the USPTO as of
06/09/2011 on two (2) pages beginning at Reel 026419, Frame 0353 for the
parent application 13/156,999 now United States Patent No. 9,323,844
issued on April 26, 2016. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a system and methods thereof for
enhancing a user's search experience. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer implemented method for enabling applications
content streaming to a user device in response to a search query,
comprising:
receiving from the user device a completed input search
query to be searched;
selecting, based on the input search query, at least one
resource from a plurality of resources to respond to the input
search query;
sending the input search query as an input to each of the at
least one selected resource;
providing, for each of the at least one selected resource, an
associated respective single display segment within a display
area on the user device;
causing the at least one selected resource, in response to
receiving the input search query, to execute an application of the
at least one selected resource, wherein content displayed in each
respective display segment corresponds only to content streamed
by its associated respective application; and
establishing a direct communication link between the at
least one selected resource and the user device, without user
intervention, for at least enabling direct interaction by the user
with the application of the at least one selected resource via its
corresponding unique display segment.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gross US 2006/0277167 A1 Dec. 7, 2006
Szabo US 7,181,438 B1 Feb. 20, 2007
Amacker US 2011/0093488 A1 Apr. 21, 2011

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REJECTIONS
Claims 1, 9, and 10 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Final Act. 3.
Claims 1–19 are rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in the specification in
such a way as to reasonably convey to one skilled in the relevant art that the
inventor(s), at the time the application was filed, had possession of the
claimed invention.
Claims 1–19 are rejected under 35 U.S.C. § 103(a) as being obvious
by Amacker et al (US Patent Application 2011/0093488 A1, hereinafter,
“Amacker”) in view of Szabo (U.S. 7,181,438 B1 hereinafter, “Szabo”), and
further in view of Gross et al (U.S. 2006/0277167 A1 hereinafter, “Gross”).
Final Act. 4.

Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 9, 10 112, first paragraph New Matter
1, 9, 10 112, second paragraph Indefiniteness
1–19 103 Amacker, Szabo, Gross

OPINION
Claims 1, 9, and 10 are rejected under 35 U.S.C. § 112, first
paragraph
The Examiner rejected claims 1, 9 and 10 reciting the limitation “a
completed input search query” respectively, the instant application
specification provides no metes and bounds to a “completed” input search
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query because the “completed” input search query is not even mentioned in
the instant application specification. Final Act. 3–4. The Examiner rejects
the dependent claims for inheriting the deficiencies of the base claims. Id. at
4.
Appellant refers us to its response regarding the objection to the
Specification as also applicable to the rejection to the Specification for the
same reasons. See Appeal Br. 10 referring to Appeal Br. 7–10. Appellant
argues that support for the claim limitation can be found in the Specification
as originally filed at least in Figures 4 and 6 where completed queries are
shown. Appeal Br. 7. Appellant argues that there are multiple references in
the Specification to “a search query,” conventionally used in the art to mean
a completed search query. Id. Appellant asserts that the correctness of this
position can be seen from Amacker, which must refer to “a partial search
query” to distinguish over the conventional use of search query which is
recognized to mean a completed search query. Id.
Appellant cites paragraph 29 of the specification stating:
A user of a device 110 submits over a communication link 140
a query to the search server 120. A query comprises search
terms and in some embodiments also metadata about the user
and the user device 110. Such metadata may include, but is not
limited to, search history, time, a device type, social friends, a
location, a keyword, a category, and more. It should be further
noted that responsive to entering query search terms, metadata
terms may be provided by the search server 120 and displayed
on the user device 110 in an interactive loop allowing the user
of the user device 110 to further refine the query.

Appeal Br. 7–8 (citing Spec. para. 29). Appellant explains that the query is
not a query until the refining process is finished, i.e., the query is complete.
Id. at 8. Appellant cites Specification paragraphs 31, 32, 40, and 48 for
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further examples of search queries, which are completed search queries, thus
providing further support. Id.
Appellant distinguishes a completed search query from what is being
taught by Amacker as a partial search query and argues the right to amend
the claim language to make that clearer in view of what would be understood
by one of ordinary skill in the art. Appeal Br. 8.
Appellant in particular argues that what is being taught in the instant
Specification and claims is actually a completed search query that is quite
different from what is being taught by Amacker and Appellant’s have the
right to amend the claim language to make that clearer in view of what
would be understood by one of ordinary skill in the art given the actual
teaching of the disclosure. Id.
Appellant argues that Figure 4 shows the completed search query 440
puzzle @games and Figure 6 shows the completed search query
Lady Gaga @music. Id. (also citing para. 32). Appellant argues that a
search query is typically deemed to be completed when the search icon is
clicked on or the enter key is pressed. Id. at 9. However, in Amacker, with
regard to the partial search queries, this is not done. Id. Instead, the user
simply continues to type keystrokes to further define the search term. Id.
Appellant concludes that given the foregoing, it is clear that
“completed search query” is well understood in the art and has proper
antecedent basis in the Specification even though the exact phrase is not
employed therein. Id.
The Examiner finds that Figures 4 and/or 6 of the Specification
merely describe a typical search graphical user interface. Ans. 8. There is
nothing describing a “completed” search query in Figures 4 and/or 6 of the
Specification. Id. The Examiner further finds that paragraph 29 of the
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Specification describes a query refining process and nothing about what
constitutes a “completed” search query. Id. The Examiner finds a
contradiction by Appellant relying on paragraph 29 for a query refining
process as support for a “completed” search query since Figures 4 and/or 6
merely describe a typical search graphical user interface. Id. This,
according to the Examiner, provides additional evidence there is no support
in the instant application Specification what is a “completed” query search.
Id.
The Examiner further finds that “a partial search query” of Amacker
is irrelevant to the objection to the Specification since “a partial search
query” of Amacker is not part of the Specification. Id. The Examiner finds
that Amacker provides clear definition of a “partial” search query in
Amacker’s Specification, but there is no definition of a “completed” search
query being provided in the Specification. Id. at 8–9.
We agree with Appellant’s argument. If a skilled artisan would have
understood the inventor to be in possession of the claimed invention at the
time of filing, even if every nuance of the claims is not explicitly described
in the specification, then the adequate description requirement is met. See
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991); Martin v.
Johnson, 454 F.2d 746, 751 (CCPA 1972) (stating “the description need not
be in ipsis verbis [i.e., “in the same words”] to be sufficient”). See also
MPEP § 2163 II. A. 3. A.
Contrary to the Examiner’s finding, Amacker describes a completion
window 212 to complete the “partial query” 202. See Amacker, Fig. 2 and
para. 20. A list of suggestions to complete the search is provided in query
completion window 212 that changes dynamically as the user updates the
search query, such as by adding or deleting characters in search box 204. Id.
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Thus, Amacker’s completed search query is one that is no longer modified.
Amacker is used by Appellant to indicate the knowledge of one skilled in the
art and further define over it. See Appeal Br. 9. We agree with Appellant’s
argument that paragraph 29 of Appellant’s Specification describes refining
the search until “completed search query” is shown in Figures 4 and 6, for
example, the completed search query 440 puzzle @games and Lady Gaga
@music, respectively, not requiring further refinement. See Appeal Br. 8–9
(also citing para. 32).
Accordingly, we agree with Appellant that the search query 440 in
Figures 4 of “puzzle @games” and the search query “Lady Gaga @music”
600A and 600B of Figures 6A and 6B constitute a “completed search
query,” thereby providing Specification support for the term “completed
search query” because the description need not be in ipsis verbis. See Vas-
Cath, 935 F.2d at 1563; Martin v. Johnson, 454 F.2d 746, 751 (CCPA 1972)
(stating “the description need not be in ipsis verbis [i.e., “in the same
words”] to be sufficient”). See also MPEP § 2163 II. A. 3. A.
Thus, we reverse the Examiner’s rejection of claims 1, 9, and 10
rejected under 35 U.S.C. § 112, first paragraph.

Claims 1, 9, and 10 are rejected under 35 U.S.C. § 112, second
paragraph
The Examiner repeats the findings with respect to rejection to the
Specification as enumerated above. See Ans. 10. Appellant also relies on
the same arguments as stated above and adds that the correctness of its
position can be seen from Amacker, which must refer to “a partial search
query” to distinguish over the conventional use of search query which is
recognized to mean a completed search query. See Appeal Br. 11.
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The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
For similar reasons as above, we agree with Appellant, and thus, we
reverse the Examiner’s rejection of the terms “a completed search query” as
indefinite. We also agree with Appellant that Amacker must refer to “a
partial search query” to distinguish over the conventional use of search
query which is recognized to mean a completed search query.
Accordingly, we reverse the Examiner’s rejection of claims 1, 9, and
10 are rejected under 35 U.S.C. § 112, second paragraph.

Claims 1–19 rejected under 35 U.S.C. § 103(a) as being obvious by
Amacker in view of Szabo and further in view of Gross.
We adopt the Examiner’s findings and we add the following
discussion for emphasis and clarification.
Appellant argues that Amacker teaches away from a completed search
query because it only deals with a partially entered search query. Appeal
Br. 14.
We do not agree. To teach away, prior art must “criticize, discredit,
or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Here, we agree with the Examiner’s finding that
Amacker provides multiple directories in response to a user entering a search
query in advance before the user finishes entering the whole search query.
See Ans. 16 (citing Amacker, paras. 20, 22, 24, and 26). The Examiner finds
that the multiple directories will be provided with or without the user finish
entering the whole search query. Id. The Examiner further finds, and we
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agree, that in Amacker, paragraph 28 “the user inputs characters ‘beck’ as
the search term 612 so as to complete the sentence and form a search query
capable of execution against a set of data by the processing engine.” Id.
The Examiner finds, and we agree that that the search query with a
completed sentence can be reasonably interpreted as a “completed” input
search query. Id. We further note that paragraph 20 cited by the Examiner
states that “at least a partial search query” will result suggestion segments.
See Ans. 16 (citing para. 20).
Accordingly, Amacker teaches at least a partial search query, with the
term “at least” suggesting that a completed search query could also be used
and even further Amacker teaches a “completed” search query with a
complete word, such as “beck,” as opposed to a partial word. Thus,
Amacker does not teach away from the claimed invention.
Appellant further argues that the Examiner’s reliance on Szabo for a
completed search query to replace Amacker’s partial search query “destroys
or eliminates” the need for the functionality of Amacker that the Examiner
relied on in the rejection. See Appeal Br. 14.
We do not agree with Appellant’s argument. It is well settled that if
the proposed modification or combination of the prior art would change the
principle of operation of the prior art invention being modified, or render the
prior art invention unsuitable for its intended purpose, then the teachings of
the references are not sufficient to render the claims prima facie obvious.
See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) and In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984). However, here the drop down windows described
in Amacker, which the Examiner relies on to teach selecting resources, are
there not only to provide suggestions of the user providing a partial search
query, but also when the user provides a completed search. See Ans. 16
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(citing para. 28). Thus, substituting the search query with the express
teaching of Szabo for the completed search query does not render the prior
art of Amacker unsuitable for its intended purpose, especially since Amacker
already teaches a completed search query.
We also do not agree with Appellant’s argument regarding Szabo
teaching a manual selection of databases because the Examiner points us to
Szabo, col. 43, ll. 21–26 for teaching the search query automatically. See
Ans. 17–20. We agree, that Szabo teaches “the system . . . may automate the
procedure.” Szabo, col. 43, l. 24.
Appellant further argues that Szabo only teaches a single resource
with a plurality of databases as opposed to multiple resources. Appeal
Br. 17–18. The Examiner finds, and we agree, that Szabo, Amacker, and
Gross teach multiple resources and contrary to Appellant’s argument
multiple databases constitute a plurality of resources. See Ans. 22–23.
Appellant further argues that neither Amacker nor Szabo teaches
selecting a resource from a plurality of resources. Appeal Br. 19–23.
The Examiner finds, and we agree, that Amacker teaches selecting
from a plurality of resources (such as “Electronics” category segment,
“accessories” category segment). Ans. 29 (citing paras. 20, 22, 24, 26 and
Figures 2–4). We also agree with the Examiner that Gross teaches each
respectively display segment in Figure 1 corresponds to a continuous stream
of results. Id. (citing Gross, para. 44)
Appellant additionally argues that the combination of references
does not teach or suggest establishing a direct communication link between
the at least one selected resource and the user device, without user
intervention, for enabling direct interaction by the user with the application
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of the selected resource via its corresponding unique display segment. App
Br. 23–25.
We give claims their broadest reasonable interpretation consistent
with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). The Examiner points us to Appellant’s Specification
referring to the term “application” stating that “[t]he display area may be an
application of its own right, such as, but not limited to, a web browser.”
Ans. 32 (citing Spec. para. 34). Consistent with Appellant’s own
Specification, Gross teaches that “each of the preview panes 116 (in Fig. 1)
may be implemented as a web browser.” Ans. 32 (citing Gross, para. 47).
Accordingly, we agree with the Examiner’s finding that Gross teaches
or suggests the limitations of claim 1 reciting
causing the at least one selected resource, in response to
receiving the input search query, to execute an application of
the at least one selected resource, wherein content displayed in
each respective display segment corresponds only to content
streamed by its associated respective application;
and
establishing a direct communication link between the at least
one selected resource and the user device, without user
intervention, for at least enabling direct interaction by the user
with the application of the at least one selected resource via its
corresponding unique display segment.
See Ans. 32–33 (citing Gross, paras. 42–49 and Figs. 1, 12–17).
Appellant further argues that Gross conducts a conventional search by
a single search engine, but instead of waiting for the user to select one or
more search results, certain pages indicated by the search results are
accessed by the Gross system and displayed to the user along with the
remaining search results. Appeal Br. 25. According to Appellant, Gross
accesses pages similar to what might be done at the highest level by a web
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crawler. Id. Appellant argues that this is very different from the claimed
invention where for each of the at least one selected resource, an associated
respective single display segment within a unique display area on the user
device, where content displayed in each respective display
segment corresponds only to content streamed by its associated respective
application, and a direct communication link between the at least one
selected resource and the user device, without user intervention, is
established enabling direct interaction by a user with the application of the
at least one selected resource via its corresponding unique display segment.
Id.
We do not agree with Appellant. The Examiner finds, and we agree,
that Szabo teaches that the system will select at least one database to process
the search query based a pre-analysis of the search query automatically, and
return any search results. Ans. 37. Therefore, Szabo teaches “selecting,
based on the input search query, at least one resource from a plurality of
resources to respond to the input search query.” Id. (citing col. 6, ll. 15–35,
col. 43, ll. 21–26, 50–57, col. 44, ll. 7–31).
Appellant further argues that in Gross, there is no single display
segment within a display area on the user device that is associated with each
respective one of the at least one selected resource wherein content
displayed in each respective display segment corresponds only to content
streamed by an associated respective application. Appeal Br. 28–32.
We do not agree with Appellant’s argument. The Examiner first
clarifies that Gross, teaches a search term “Pasadena” that can be reasonably
interpreted as a “completed” search query because it is a complete word.
See Ans. 44 (citing Gross, paras. 42–49 and Figs. 1 and 12–17).
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The Examiner then finds, and we agree, that Gross teaches “each of
the preview panes 116 (in Fig. 1) may be implemented as a web browser,”
(para. 47), and that each respectively display segment in Figure 1 is
corresponding to a continuous stream of results (para. 44), and “[w]hen one
of the preview panes 116 (or content therein) is selected through a mouse
click, for example, the content of the selected preview pane may be
redisplayed in full scale in a newly opened web browser window (see FIG.
15, for example)” (para. 48). See Ans. 45.
Therefore, Gross teaches the limitations of claim 1 reciting
providing, for each of the at least one selected resource,
an associated respective single display segment within a display
area on the user device;
causing the at least one selected resource, in response to
receiving the input search query, to execute an application of
the at least one selected resource, wherein content displayed in
each respective display segment corresponds only to content
streamed by its associated respective application; and
establishing a direct communication link between the at least
one selected
resource and the user device, without user intervention,
for at least enabling
direct interaction by the user with the application of the at least
one selected resource via its corresponding unique display
segment.
Appellant further argues there is no motivation to combine, and
furthermore, there is no showing that the proposed overall combination
would solve the problem recognized by Appellant. Appeal Br. 33. Also,
according to Appellant there is no showing to combine the references to
construct Appellants' invention as claimed and no showing that the art has
recognized the problem solved by Appellant. Id.
Appellant argues that the cited motivation stating
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to modify the searching system of Amacker, wherein the
searching system would include the teachings of Gross and
Szabo because that would have allowed the searching system to
display search results and correspond web pages side-by-side,
and optionally display multiple web pages corresponding to the
search results in a matrix format (Gross [0002]).

is already achieved by Gross, and thus, there is no explanation given as to
why one of ordinary skill in the art would want to make a more complicated
system by mixing Amacker and Gross to achieve what is already achieved
by a simpler system, i.e., Gross. Appeal Br. 33–34.
We do not agree with Appellant’s argument. The prior art need not
suggest a combination that addresses the same problem that the applicant
addresses, see In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“In
considering motivation in the obviousness analysis, the problem examined is
not the specific problem solved by the invention but the general problem that
confronted the inventor before the invention was made.”). Furthermore, it is
not necessary for the prior art to serve the same purpose as that disclosed in
Appellant’s Specification in order to support the conclusion that the claimed
subject matter would have been obvious. See In re Linter, 458 F.2d 1013,
1016 (CCPA 1972); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
419 (2007) (stating that “neither the particular motivation nor the avowed
purpose of the [Appellants] controls” in an obviousness analysis). Our
inquiry focuses on whether the Examiner provided “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l, 550 U.S. at 418 (citing In re Kahn, 441 F.3d at
988).
Furthermore,
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“there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness” . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
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) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In the instant case the Examiner’s articulated motivation
to modify the searching system of Amacker, wherein the
searching system would include the teachings of Gross and
Szabo because that would have allowed the searching system to
display search results and correspond web pages side-by-side,
and optionally display multiple web pages corresponding to the
search results in a matrix format (Gross [0002]).

provides an articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness in modifying the teachings of
Amacker and Szabo with the Gross’s teachings.
Appellant finally argues that the combination was based on
impermissible hindsight reconstruction. Appeal Br. 36–37.
We do not agree with Appellant’s argument. We agree with the
Examiner’s finding that it must be recognized that any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning. Ans. 54. But so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the claimed invention
was made, and does not include knowledge gleaned only from the
applicant's disclosure, such a reconstruction is proper. Id. (citing In re
McLaughlin, 443 F.2d 1392 (CCPA 1971)). Rather than relying on
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Appellant’s disclosure, the Examiner cites to particular passages from Szabo
and Gross in support of why one of ordinary skill in the art would have been
motivated to make the proffered combination. See, e.g., Final Act. 11
(citing Szabo, col. 27, ll. 57–62, Gross ¶ 2).
Accordingly, we affirm the Examiner’s rejection of claim 1 and for
the same reasons the rejection of claims 2–19.
CONCLUSION
The Examiner’s rejections of claims 1, 9, and 10 under § 112, first
paragraph, and § 112, second paragraph, are REVERSED.
The Examiner’s rejections of claims 1–19 under § 103 are
AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9, 10 112, first
paragraph
New Matter 1, 9, 10
1, 9, 10 112, second
paragraph
Indefiniteness 1, 9, 10
1–19 103(a) Amacker, Szabo,
Gross
1–19
Overall
Outcome
1–19
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED