Ex Parte Arrouye et al

Patent Trial and Appeal Board

Apr 23, 2014

11351249 (P.T.A.B. Apr. 23, 2014)

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.
11/351,249 02/08/2006 Yan Arrouye 004860.P3439XD2 4904
45217 7590 04/23/2014
APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
ROBINSON, GRETA LEE
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
04/23/2014 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte YAN ARROUYE, DOMINIC GIAMPAOLO, 7
BAS ORDING, GREGORY CHRISTIE, 8
STEPHEN OLIVIER LEMAY, MARCEL VAN OS, 9
IMRAN CHAUDHRI, KEVIN TIENE, 10
and PAVEL CISLER 11
___________ 12
13
Appeal 2011-010551 14
Application 11/351,249 15
Technology Center 2100 16
___________ 17
18
19
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 20
ANTON W. FETTING, Administrative Patent Judges. 21
22
FETTING, Administrative Patent Judge. 23
24
25
DECISION ON APPEAL 26
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 28, 2010) and the Examiner’s Answer (“Ans.,” mailed
March 24, 2011).
Yan Arrouye, Dominic Giampaolo, Bas Ording, Gregory Christie, 2
Stephen Olivier Lemay, Marcel van Os, Imran Chaudhri, Kevin Tiene, and 3
Pavel Cisler (Appellants) seek review under 35 U.S.C. § 134 of a final 4
rejection of claims 15-17, 39-42, 77-79, 101-104, 122 and 123, the only 5
claims pending in the application on appeal. We have jurisdiction over the 6
appeal pursuant to 35 U.S.C. § 6(b). 7
The Appellants invented a way of managing data (Specification para 8
[0005]). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 15, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
15. A machine implemented method comprising: 13
[1] displaying text within a text processing application on 14
a local data processing system; 15
[2] receiving a selection of at least some of the text 16
of a file 17
having the text being displayed 18
by the text processing application; 19
[3] receiving a selection 20
of a command 21
to search a plurality of files 22
using the selection; 23
[4] displaying results of a search of the plurality of files, 24
[4a] wherein the search is a system wide search 25
of indexed content 26
stored on the local data processing system 27
28
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1
and 2
[4b] wherein the search is also through the file 3
having the selection of the text. 4
The Examiner relies upon the following prior art: 5
Baird US 2002/0188603 A1 Dec. 12, 2002
Claims 15-17, 39-42, 77-79, 101-104, 122 and 123 stand rejected under 6
35 U.S.C. § 102(b) as anticipated by Baird. 7
ISSUES 8
The issues of anticipation turn primarily on whether each claim recites 9
and Baird describes steps or structure of searching through the instant file or 10
searching indexed content stored on the local data processing system. 11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14
Facts Related to the Prior Art - Baird 15
01. Baird is directed to computer related searches and dynamic 16
links. More specifically, the present invention relates to 17
performing user defined searches and to creating user defined 18
links from existing text. Baird para [0002]. 19
02. Baird allows a user to perform searches on the Internet without 20
having to leave the particular application within which the user is 21
operating, and to dynamically create a hyperlink or a link within 22
the application. Once this link is created, Baird provides for 23
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selecting search terms, executing the search request and returning 1
the results to the user without the user having to leave the context 2
of the application. For example, if the user is operating within a 3
word processing program and desires to perform a search relating 4
to some of the words within the document that is being created, 5
the first step that the user must perform is to select the words or 6
the text that correspond to the search terms. The creation of the 7
link, in one embodiment, is an inherent part of the selection of 8
text. In other embodiments, no link is created and the search 9
terms are simply executed. Baird para [0010]. 10
03. Once the text has been selected, the user activates the selected 11
text, which is an example of causing the search to be initiated. A 12
search is then performed based on the terms that have been 13
selected. After the text has been selected and activated, the search 14
is performed in the background and the user may continue to 15
operate within the application. Once the search has been 16
performed, the search results are returned to the user. In some 17
instances, those results can be input directly into the word 18
processing application or other application, or the user has the 19
option of previewing the results or viewing the results. Baird para 20
[0011]. 21
04. It is possible to perform the search based on the link that has 22
been created and store the results for future access by a user. This 23
enables the user to have instant access to the search results without 24
having to perform the search again at a later date. The results of 25
the search may be simply stored on the users local storage medium 26
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such as a local hard drive or RAM. In step 104, after the text has 1
been selected and activated, the search is typically performed as 2
indicated by the configuration settings or by the user. The search 3
may be performed on an Internet search engine or over the 4
Internet or through various other types of databases or networks, 5
including but not limited to, intranets and extranets. Baird para 6
[0026]. 7
05. The results of the search are returned to the user and can be 8
displayed in a variety of manners. In other words, a user or the 9
application is capable of manipulating the results. Manipulating 10
the search results includes, but is not limited to, copying at least a 11
portion of the search results, pasting at least a portion of the search 12
results, deleting at least a portion the search results, saving at least 13
a portion of the results, using the search results in accordance with 14
pre-defined rules or procedures, and the like. For example, the 15
results of the search may be displayed when the user mouses over 16
the text that was previously selected. When that mouse crosses 17
over the activated text the results can be displayed in a pop up 18
window to a user and the user then has the ability to select which 19
of the search results the user desires to place in the document or to 20
read. Baird may also simply place the first result of the search 21
into the document without further user input. For example, if the 22
search result is a court case citation, then the citation may be 23
placed within the text. The user then has the ability to edit this 24
result as if it were text that the user had created. Additionally, 25
more than one portion of the text or other data may be activated. 26
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Also, linked and unlinked text and data displayed by a browser are 1
included within preferred embodiments of the present invention. 2
Baird para [0027]. 3
06. The results of the search can be displayed in the user's web 4
browser, in an embedded browser window in the triggering 5
application, or in some other custom interface that is used for 6
displaying that search engine's results. Baird para [0034]. 7
07. Some of the applications that obviously fit this functionality are 8
web browsers, e-mail clients, word processors, spreadsheets, PDF 9
viewers and the like, chat clients, voice recognition systems, 10
operating systems and the like. Note that an operating system is 11
also considered to be an application. Baird para [0036]. 12
ANALYSIS 13
We are not persuaded by the Appellants’ arguments that (1) Baird fails 14
to disclose or suggest that a search is performed through the file having the 15
selection of the text, and (2) the searches described in Baird are network 16
searches executed by search engines on networks such as the Internet. App. 17
Br. 12-13. 18
The Examiner found that Baird described 19
Baird teaches the search process may be "application specific" 20
[see: paragraph 0036]. The selection of text is configurable 21
[paragraph 0040]. The search may be performed on an Internet 22
search engine or over the Internet or through various other types 23
of databases (i.e. a search may be performed through various 24
applications) or networks, including but not limited to, intranets 25
and extranets. "The searchable text not only includes plain text 26
in web pages, but also encompasses text in any word 27
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processing program, spreadsheet, office suite or any other 1
type of text" [see paragraph 0038]. 2
3
Baird teaches the search method is particularly suited for 4
integration with an operating system such that the method (i.e. 5
search) is available to all applications; and alternatively it may 6
be specific to a particular application. 7
Ans. 7-8. 8
9
We agree with the Appellants that this finding does not show Baird 10
searching through the instant file or searching indexed content stored on the 11
local data processing system. Thus, the Examiner’s analysis is in error. The 12
portions cited by the Examiner only show Baird describing sending a search 13
query outside the local data processing system where the files searched may 14
be conventional word processing or spreadsheet files. The interface for 15
sending the search, as contrasted with the actual search query itself, may be 16
bundled into the operating system. 17
This does not end the analysis, however, as independent claims 15, 77, 18
and 122 do not recite steps or structure for performing the search. 19
Independent claims 39, 101, and 123 do recite such steps or structure. 20
Independent claims 15, 77, and 122 recite only displaying the results of a 21
search of the plurality of files. It is uncontested that Baird searches a 22
plurality of files and displays the results. The wherein clauses [4a] and [4b] 23
are aspirational only, and do no more than describe what type of search is 24
aspired to. The display step itself does not depend on the scope of the 25
search, and so the wherein clauses are deserving of no patentable weight. 26
Claims 17 and 79 also contain wherein clauses that are merely aspirational 27
as those clauses refer back to the searches in claims 15 and 77. 28
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As this reasoning differs from the Examiner’s we denominate this as a 1
new ground of rejection as to claims 15-17, 77-79, and 122. The rejections 2
of claims 39-42, 101-104 and 123 are improper as these claims do recite the 3
search step. 4
CONCLUSIONS OF LAW 5
The rejection of claims 15-17, 77-79, and 122 under 35 U.S.C. 6
§ 102(b) as anticipated by Baird is proper. We denominate this as a new 7
ground of rejection. 8
The rejection of claims 39-42, 101-104, and 123 under 35 U.S.C. 9
§ 102(b) as anticipated by Baird is improper. 10
DECISION 11
The rejection of claims 15-17, 77-79, and 122 is affirmed. 12
The rejection of claims 39-42, 101-104, and 123 is reversed. 13
Our decision is not a final agency action. 14
In addition to affirming the Examiner's rejection(s) of one or more 15
claims, this decision contains new grounds of rejection pursuant to 37 CFR 16
§ 41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection 17
pursuant to this paragraph shall not be considered final for judicial review.” 18
This Decision contains a new rejection within the meaning of 37 19
C.F.R. § 41.50(b) (2007). 20
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO 21
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 22
the following two options with respect to the new rejection: 23
(1) Reopen prosecution. Submit an appropriate amendment of 24
the claims so rejected or new evidence relating to the claims 25
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so rejected, or both, and have the matter reconsidered by the 1
Examiner, in which event the proceeding will be remanded 2
to the Examiner. . . . 3
(2) Request rehearing. Request that the proceeding be reheard 4
under § 41.52 by the Board upon the same record. . . . 5
6
Should the Appellants elect to prosecute further before the examiner 7
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek 8
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 9
the effective date of the affirmance is deferred until conclusion of the 10
prosecution before the examiner unless, as a mere incident to the limited 11
prosecution, the affirmed rejection is overcome. 12
If the Appellants elect prosecution before the Examiner and this does 13
not result in allowance of the application, abandonment or a second appeal, 14
this case should be returned to the Patent Trial and Appeal Board for final 15
action on the affirmed rejection, including any timely request for rehearing 16
thereof. 17
No time period for taking any subsequent action in connection with this 18
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 19
§ 1.136(a)(1)(iv). 20
AFFIRMED-IN-PART; 41.50(b) 21
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Klh 25