Ex Parte AndersonDownload PDFPatent Trial and Appeal BoardApr 8, 201411219505 (P.T.A.B. Apr. 8, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/219,505 09/02/2005 Dewey Charles Anderson 97017DIV1 (9400-115REDV) 2351 39072 7590 04/09/2014 AT&T Legal Department - MB Attn: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER YEN, SYLING ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 04/09/2014 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 DEWEY CHARLES ANDERSON ____________________ Appeal 2011-012937 Application 11/219,505 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012937 Application 11/219,505 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 24-27, 46-50, 60, and 61. Claims 1-23, 28-45, and 51-59 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION According to Appellant, the invention relates generally to the provision of information as search results in response to a data inquiry, and more particular, to arranging the records of search results into ordered records to be included in the search results provided in response to a data inquiry of a database (Spec. 1, [0003]). B. ILLUSTRATIVE CLAIM Claim 24 is exemplary: 24. A method for an information retrieval service to charge a client for including an information record of the client in a search result provided to a user of the information retrieval service, the method comprising: using a processor to perform a search in response to a search request received over a network from a computing device associated with the user; and charging the client based at least in part on the location within the search result in which the information record of the client is placed, Appeal 2011-012937 Application 11/219,505 3 C. REJECTION The prior art relied upon by the Examiner in rejecting the claims on appeal is: Griebenow US 5,850,520 Dec. 15, 1998 Shoham US 5,855,015 Dec. 29, 1998 Burrows US 6,317,741 B1 Nov. 13, 2001 Claims 24-27, 46-50, and 60 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows and Griebenow. Claim 61 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrows, Griebenow, and Shoham. II. ISSUES The main issues before us are whether the Examiner has erred in determining that the combination of Burrows and Griebenow teaches or would have suggested “using a processor to perform a search in response to a search request” and “charging the client based at least in part on the location within the search result in which the information record of the client is placed,” as recited in claim 24 (emphases added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Burrows 1. Burrows discloses locating database records to be ranked during a search in response to a query received from a user (col. 1, ll. 61-65), and storing the score and identifier of each located record in a respective entry of a ranking list (col. 2, ll. 5-7). Appeal 2011-012937 Application 11/219,505 4 Griebenow 2. Griebenow discloses a user requesting an electronic publication (col. 6, ll. 53-55), and charging an advertiser a different rate for including an advertisement in the electronic publication (col. 9, ll. 47-48), wherein the advertiser is charged a different rate depending upon where that advertiser’s advertisement is processed in the list (col. 10, ll. 6-10). IV. ANALYSIS As to representative independent claim 24, Appellant contends “Burrows does not disclose or suggest charging clients for including their informational records in the search results that are returned to users of the information retrieval service” (App. Br. 6). Although Appellant concedes Griebenow discloses an advertiser may pay a premium to have its advertisements placed in an electronic publication, Appellant contends “the list of advertisements is not provided to the subscribers (users) of the service” and “the list of advertisements does not impact the location where the advertisements are physically inserted into the electronic publications” (App. Br. 8). However, the Examiner finds “Burrows teaches location of the search results being determined based on the score/weight of the result” and Griebenow teaches charging “different rates to an advertiser depending upon where that advertiser’s advertisement is processed in the list” (Ans. 13). Thus, the Examiner concludes that the combination of the references teaches the claimed invention as a whole (Ans. 14). Appeal 2011-012937 Application 11/219,505 5 We agree with the Examiner’s findings, and find no error with the Examiner’s conclusion that the claims would have been obvious over Burrows and Griebenow. As an initial matter, we note claim 24 merely recites “using” a processor “to perform” a search. Instead of positively reciting a step of “searching,” the claim merely recites “using” the processor “to perform” a search. We conclude the recited “to perform” language is a statement of intended use of the “processor,” which does not limit the claim. Particularly, an intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Also, we conclude method claim 24 does not positively recite any step of “receiving” a search request, but rather merely recites step of “using” a processor “to perform a search in response to a search request received.” In fact, in claim 24, the intended function of “to perform a search” is performed only “in response to” a condition, such as to “a search request received.” That is, if the condition does not occur, i.e., if there is no search request received, the intended “to perform a search” and ultimately “charging the client” based on the location of the record “within the search result” do not occur. Accordingly, in claim 24, the limitations of “to perform a search” and thus ultimately “charging the client” based on the location “within the search result” are not positively recited as being carried out because of the recited predicate “in response to a search request received over a network” condition. Cf. In re Johnston, 435 F.3d. 1381, 1384 (Fed. Cir. 2006) Appeal 2011-012937 Application 11/219,505 6 (“[O]ptional elements do not narrow the claim because they can always be omitted.”). Further, we note in claim 24, “charging the client” is based on the “location” within the search result in which the information record of the client is placed, but method claim 24 does not positively recite any step of “placing” the information record in the search result. We conclude the function of placing the information record within the search result is not positively recited as being performed as a step or act of the method, but is instead intended to be performed on the search results that are merely the environment of the method. We conclude “the location” has no antecedent basis in claim 24. Therefore, a question arises as to how much patentable weight, if any, should be accorded to the location data. Nevertheless, even assuming, arguendo, our reviewing court were to give patentable weight to the aforementioned claim limitations, we must give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, we will not read limitations from the Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Claim 24 does not define “the location” other than charging the location is based on the location in which the information record is placed. In fact, as discussed above, “the location” has no antecedent basis in the claim. Thus, we give “the location” its broadest reasonable interpretation as any placement of the information record within a search result. Although Appellant contends, “the list of advertisements does not impact the location where the advertisements are physically inserted into the electronic publications” (App. Br. 8), such contention is not commensurate Appeal 2011-012937 Application 11/219,505 7 in scope with the recited language of claim 24. Contrary to Appellant’s contention, claim 24 does not require any impact as to “where” the advertisements are physically inserted into the electronic publication. Rather, claim 24 merely requires that the charging is based on “the location,” which according to our broad interpretation, is any location/placement of the information record/advertisement in the search result. That is, giving the claim its broadest reasonable interpretation, claim 24 merely requires that the information record be placed somewhere, at any location, in the search result, but “where” within the search result is not impacted. Further, although Appellant contends, “Burrows does not disclose or suggest charging clients for including their informational records in the search results” (App. Br. 6), and Griebenow’s “list of advertisements is not provided to the subscribers (users) of the service” (App. Br. 8), the test for obviousness is not what the references show individually but what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Burrows discloses using a processor to perform a search in response to a search request received over a network, and providing a search result thereto in a list (FF 1). Furthermore, Griebenow discloses a method for charging a client (advertiser) for including an information record (advertisement) of the client in a search result (electronic publication) to a user, comprising performing a search for the electronic publication in response to a search request from the user and charging the advertiser-client based on locating of the information record/advertisement within the search result/electronic publication (FF 2). That is, Griebenow discloses charging Appeal 2011-012937 Application 11/219,505 8 the client based on a “location” of the advertisement/information record within the search result. In view of our claim interpretation above, we find Griebenow discloses “charging the client based at least in part on the location within the search result in which the information record of the client is placed” as required by claim 24. Thus, we find no error with the Examiner’s conclusion that it would have been obvious to combine Griebenow’s teaching of charging the client based on placing an information record within the search result with Burrows’ search results (Ans. 14). Although Appellant also contends “one of skill in the art simply would not have been motivated to combine Burrows and Griebenow” (App. Br. 9) because “in doing so they would destroy the intended purpose of Burrows” (App. Br. 10), Appellant appears to view the combination in a different perspective than that of the Examiner. The issue here is not whether the skilled artisan would have bodily incorporated the entire system of Burrows into the entire system of Griebenow, but whether the skilled artisan, upon reading Griebenow, would have been motivated to combine the teachings of including advertisements into a search result (and thus charging the advertisers for such inclusion) to Burrows’ search results. We find no error with the Examiner’s ultimate legal conclusion that it would have been obvious to combine the references (Ans. 17-18). Appellant has provided no evidence that combining such teachings was “uniquely challenging or difficult for one of ordinary skill in the art,” Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007), nor has Appellant presented evidence that this incorporation yielded more than expected results. Appeal 2011-012937 Application 11/219,505 9 Rather, we find that Appellant’s invention is simply a combination of known teachings that realize a predictable result. The Supreme Court has determined that the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” since the skilled artisan is “a person of ordinary creativity, not an automaton.” Id. at 420-21. Accordingly, we find no error in the Examiner’s rejection of independent claim 24 over Burrows and Griebenow. As for dependent claim 25, Appellant merely contends “the ‘list’ discussed in Griebenow is not an ordered list of search results” (App. Br. 11). As for dependent claims 26 and 27, Appellant merely contends, “Griebenow has nothing to do with assigning ‘a search result weighting factor’” (App. Br. 12). As for dependent claim 60, while Appellant concedes, “Griebenow does state that an advertiser may pay more to have their advertisements placed closer to the top of a list maintained by an electronic publisher,” Appellant contends that “Griebenow fails to disclose or suggest placing the information record of a client who was charged in the first record position in a search result” (id.). However, Appellant appears to be arguing what Griebenow teaches individually when the test for obviousness is what the combined teachings of Burrows and Griebenow would have suggested to one of ordinary skill in the art. See Merck, 800 F.2d at 1097. We find no error with the Examiner’s Appeal 2011-012937 Application 11/219,505 10 finding that the combined teachings would at least have suggest these claimed features (Ans. 6-8 and 11). As for independent claim 46, although Appellant concedes Burrows discloses “ranking records in a search result to identify the more relevant information records in the search result,” Appellant contends “Burrows does not suggest charging clients who provide the information records or reordering the search results based on the amount paid by such clients” (App. Br. 14). However, as discussed above, we find no error with the Examiner’s finding that the combination of Burrows and Griebenow would have suggested charging clients who provide the information records (FF 1- 2). Further, Appellant’s contention that Burrows does not disclose “reordering the search results based on the amount paid by such clients” (App. Br. 14) is not commensurate with the recited language of claim 46. That is, claim 46 merely requires “rearranging” the order of the information records in the search result “such that records obtained from clients that were charged are located in more favorable positions” in the search results. However, claim 46 does not define as to what “more favorable” is intended to mean, include or represent. As Appellant concedes, Burrows discloses “ranking records in a search result to identify the more relevant information records in the search result” (App. Br. 14). That is, Burrows discloses generating ordered search results such that some records are located in more relevant/favorable positions (FF 1). Griebenow discloses locating information records (advertisements) obtained from charged clients (advertisers) in a search result (FF 2). We Appeal 2011-012937 Application 11/219,505 11 conclude the skilled artisan, upon reading Griebenow, would have been motivated to combine the teachings of including advertisements obtained from clients/advertisers into a search result with Burrows’ teaching of ranking/rearrange the order of search results in a more favorable (relevant) position. Thus, we find no error with the Examiner’s finding that the combination of Burrows and Griebenow would at least have suggested the features of claim 46 (Ans. 15). As for claim 47, by repeating claim language and contending what Griebenow lacks, Appellant again arguing what Griebenow teaches individually when the test for obviousness is what the combined teachings would have suggested to one of ordinary skill in the art. As discussed above with respect to claim 60 which recites similar features, we find no error with the Examiner’s finding that the combination of Burrows and Griebenow would at least have suggested the claimed features. Appellant does not provide arguments for dependent claims 48-50, and 61. Thus, we also affirm the rejection of claims 48-50 over Burrows and Griebenow, and of claim 61 over Burrows and Griebenow in further view of Shoham. V. CONCLUSION AND DECISION The Examiner’s rejections of claims 24-27, 46-50, 60, and 61 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 rwk Copy with citationCopy as parenthetical citation