Ex Parte Bao et al

Patent Trial and Appeal Board

Feb 1, 2017

13560976 (P.T.A.B. Feb. 1, 2017)

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.
13/560,976 07/27/2012 Sheng Hua Bao CN920110064US2 1033
48813 7590 02/03/2017
LAW OFFICE OF IDO TUCHMAN (YOR)
PO Box 765
Cardiff, CA 92007
EXAMINER
FRUMKIN, JESSE P
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
02/03/2017 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):
pair@tuchmanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHENG HUA BAO, JIAN CHEN, ZHONG SU, and RUI WANG
Appeal 2016-002819
Application 13/560,9761
Technology Center 2100
Before MAHSHID D. SAADAT, LARRY J. HUME, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—6 and 8—10, which constitute all claims pending
in the application. Claim 7 has been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2. This Appeal is related to Appeal 20lb-
002173 (Application 13/549,416).
Appeal 2016-002819
Application 13/560,976
STATEMENT OF THE CASE
Appellants’ invention relates to web page search technology, and
specifically, searching for dynamic web pages. Abstract; Spec. Tflf 2-4.
Claim 1, the lone independent claim, is representative of the invention and
the subject matter of the appeal, and reads as follows (with the disputed
limitations in italics):
1. A system for searching for a web document, comprising:
a central processing unit (CPU) circuit;
a receiver executed by the CPU circuit and configured to
receive a user's search request;
a search engine configured to search for a web document
related to the search request based on a web document index, and
to determine a move path for accessing the web document based
on a move path index of the web document;
a sender configured to send the move path for accessing
the web document to the user;
a web browser configured to display the web document
and the move path for accessing the web document; and
a web document obtainer configured to obtain the web
document by simulating clicking of the web browser based on the
move path.
App. Br. 17 (Claims App’x.).
Claims 1—6 and 8—10 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Lawrence et al. (US 2005/0234848 Al;
Oct. 20, 2005) (“Lawrence”) and Rossler et al. (US 2005/0204296
Al; Sept. 15, 2005) (“Rossler”). Final Act. 6—11.
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Appeal 2016-002819
Application 13/560,976
ANALYSIS
We have reviewed the Examiner’s rejections in light of the arguments
raised in the Briefs. On the record before us, we cannot sustain the
Examiner’s rejections.
Appellants argue the Examiner erred in finding the prior art teaches
the following limitations of claim 1: (1) “a search engine configured to . . .
determine a move path for accessing the web document based on a move
path index of the web document;” (2) “a sender configured to send the move
path for accessing the web document to the user;” and (3) “a web document
obtainer configured to obtain the web document by simulating clicking of the
web browser based on the move path.” App. Br. 5—11 (emphasis added).
Appellants further argue the Examiner lacked a rationale to combine the
references, and that Rossler is non-analogous art. App. Br. 12—15. We are
persuaded, on the record before us, the Examiner erred in finding the prior
art teaches an obtainer configured to “obtain the web document by
simulating clicking of the web browser based on the move path.” We find
this issue to be dispositive such that we need not reach the remaining
arguments.
In the Final Office Action, the Examiner cited Rossler as teaching the
foregoing “obtain” limitation. See Final Act. 7 (citing Rossler || 37, 46);
see id. (“Lawrence et al., does not teach: a web document obtainer
configured to obtain the web document by simulating clicking of the web
browser based on the move path”) (emphasis added). In the Answer, the
Examiner appears to modify that position, relying additionally on Lawrence.
Ans. 2—3 (citing Lawrence Abs., Figs. 2, 3, 18, 21, 46). None of the
passages cited by the Examiner, however, relate to “simulating clicking of
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Appeal 2016-002819
Application 13/560,976
the web browser based on the move path,” and the record does not
demonstrate how combining the references would teach or suggest this
limitation.
Rossler is directed to sharing a document in a browser and “targets
the problem of providing a multimedia collaboration.” Rossler Abs.
Paragraph 37 teaches geographically separated users can share a browser
window, and paragraph 46 relates to “shared pointer” control. Rossler
37, 46; Final Act. 7. The record does not indicate, and we do not discern,
how these passages in Rossler would teach or suggest to one of ordinary
skill in the art the disputed limitation. See App. Br. 5—6.2
Lawrence, like Appellants’ invention, is directed to search
technology. Lawrence Abs. As the Examiner finds, Lawrence teaches
“capturing” user actions such as “entering a keystroke” or “moving the
mouse.” Lawrence 118, 21; Ans. 3. These teachings, however, relate to the
claim limitation “determine a move path,” Final Act. 6, not the disputed
“obtain” limitation. Lawrence teaches the search engine may “receive” such
captured events, Lawrence 146, but that teaching relates to the “send the
move path for accessing the web document” limitation, not the disputed
“obtain” limitation. Final Act. 6—7. Figures 2 and 3 of Lawrence, cited by
2 In the Answer, the Examiner implies Rossler is unnecessary, asserting it
“provides additional support.” Ans. 5. In response to Appellants’ argument
that Rossler is non-analogous art, the Examiner replies that the two
references are in the same field as “each other” and therefore are analogous.
Id. Should prosecution continue, it should be noted the legal standard is that
prior art is analogous “to the claimed invention [if it is] in the same field of
endeavor [or is] reasonably pertinent to the particular problem with which
the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(emphasis added).
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Appeal 2016-002819
Application 13/560,976
the Examiner (Ans. 3), are flow charts reflecting the foregoing teachings.
The Examiner asserts that one of ordinary skill would understand “moving
the mouse and entering a keystroke” also to teach “clicking the mouse,”
because “this is an obvious type of event associated with a mouse
movement.” Ans. 3. The disputed limitation, however, does not merely
recite clicking but an obtainer configured to “simulatfe] clicking” that is
“based on the move path.” App. Br. 17 (Claims App’x.) (Emphasis added).
The Examiner has not explained, on the record before us, how the cited
references would teach or suggest this limitation.
For the foregoing reasons, we do not sustain the rejection of claim 1
as unpatentable over Lawrence and Rossler under 35 U.S.C. § 103, nor do
we sustain the same rejection of claims 2—6 and 8—10, all of which are
dependent and include the limitations of claim 1.
DECISION
We REVERSE the Examiner’s rejections of claims 1—6 and 8—10.
REVERSED
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