Ex Parte Best et al

Board of Patent Appeals and Interferences

Jun 24, 2009

10464892 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte STEVEN FRANCIS BEST, MICHAEL WAYNE BROWN,
and MICHAEL RICHARD COOPER
______________

Appeal 2008-004384
Application 10/464,892
Technology Center 2100
______________

Decided:1 June 25, 2009
_______________

Before JOHN C. MARTIN, JOSEPH L. DIXON, and JAMES R. HUGHES,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-30, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm.

A. Appellants’ invention
Appellants’ invention relates to methods, systems, and products for
personalized indexing and searching for information in a distributed data
processing system. Specification 1:13-16.
Appellants’ Figure 3 is reproduced below.
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Figure 3 depicts an exemplary software architecture for Appellants’
invention. Id. at 21:16-19. Network 102 can be, for example, the Internet.
Id. at 19:1-4. A user 310 operates a client computer 308 that contains a data
communications application 306, such as a browser. Id. at 22:25-26. As
shown in this figure, the search portal 334 includes a search engine 332 and
a personalized indexing engine 333. The personalized indexing engine 333
includes a personal search term list 300 for the user that contains a user ID
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305 and the keywords of interest to that user. Id. at 22:15-18. Keywords are
deemed to be of interest to a particular user if:
▪ the user invoked them as contents of a hyperlink in
navigating a distributed data processing system,
▪ or the user selected them from within a document,
▪ or the user provided them to the search portal as search
criteria in a search query message,
▪ or the user inserted them directly into the user’s personal
search term list through an edit function provided for that purpose.
Id. at 22:4-13.
The data communications application (e.g., browser) is configured to
create and send a “navigation identification message” to the search portal
every time its user (310) operates the data communications application so as
to navigate within a distributed data processing system. Id. at 23:5-8. In
browsers configured for use with embodiments of Appellants’ invention, the
browser opens a data communications connection, such as a TCP
connection, to a search portal and transmits to the search portal the entire
URI (Universal Resource Identifier) (e.g.,
“http://www.ibm.com/index.html”) along with a user identification for a user
for the search portal, the two together comprising a navigation identification
message. Id. at 24:14-19.
A module inserts (at 320) index records 318 in a personalized search
index 500 in dependence upon the user identification 304, the navigation
location 314, and the personal search term list 300. Id. at 24:26 to 25:1.
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Inserting index records 318 in personalized search index 500 can include
inserting time stamps on the index records as shown at reference 578 in
Figure 5, the term “time stamp” referring to data encoding both the date and
the time when a navigation identification message 300 is received (316) by
the search portal. Id. at 25:7-12.
Appellants’ Figure 5 is reproduced below.

Figure 5 shows an exemplary personalized search index. Id. at 6:17.
This index 500 includes entries 570 representing four different keywords
(IBM, Web, Portal, and Java) and six different user IDs 572 (“john, “jim,”
“mike,” “tim,” “sue,” and “sally”). These entries have identical URIs 576
(“www.ibm.com”) but different timestamps 578.
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Although not the subject of claim 1, we note that the architecture of
Figure 3 includes a module in the search portal 334 that receives (at 324)
from the user 310 a search query message 328 comprising search criteria 328
and a user identification 329. Id. at 27:1-3. In dependence upon the
personalized search index 500, the search criteria 328, and the user
identification 329, a software module creates (at 322) a response 330 to the
search query message for transmission to the user. Id. at 27:11-13; 28:4-5.

B. The claims
The independent claims before us are claims 1, 11, and 21, of which
claim 1 reads:
1. A method of personalized searching for information in a
distributed data processing system, the method comprising:
providing in a search portal a personal search term list for a
user, the personal search term list comprising search keywords
known to be of interest to the user;
receiving from the user a navigation identification message
comprising a navigation location; and
creating a personalized search index in dependence upon
the navigation location and the contents of the personal search
term list, wherein the personalized search index comprises index
records, each index record comprising a time stamp.
Claims App., Br. 15.

C. The references and rejections
The Examiner relies on the following references:
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Kisor US 5,809,250 Sep. 15, 1998
Lee et al. (Lee) US 5,937,163 Aug. 10, 1999
Belfiore et al. (Belfiore) US 6,009,459 Dec. 28, 1999
Anuff et al. (Anuff) US 6,327,628 B1 Dec. 4, 2001
Bharat US 6,810,395 B1 Oct. 26, 2004
Claims 1, 4, 11, 14, 21, and 24 stand rejected under 35 U.S.C.
§ 102(e) for anticipation by Bharat. Answer 3.
Claims 2, 12, and 22 stand rejected under § 103(a) for obviousness
over Bharat in view of Lee. Id. at 4.
Claims 3, 6, 13, 16, 23, and 26 stand rejected under § 103(a) for
obviousness over Bharat in view of Anuff. Id. at 5.
Claims 5, 15, and 25 stand rejected under § 103(a) for obviousness
over Bharat in view of Belfiore. Id. at 7.
Claims 7, 10, 17, 20, 27, and 30 stand rejected under § 103(a) for
obviousness over Bharat in view of Kisor. Id. at 8.
Claims 8, 9, 18, 19, 28, and 29 stand rejected under § 103(a) for
obviousness over Bharat in view of Kisor and Anuff. Id. at 11.
Appellants argue the merits of claims 1, 4, 11, 14, 21, and 24, rejected
for anticipation by Bharat, as a group, specifically addressing the language
of only claim 1, which we therefore select as representative of all the claims
in that group. 37 C.F.R. 41.37(c)(1)(vii) (2006).2

2 Because the Answer refers to pages of the August 28, 2006, Appeal Brief
(Continued on next page.)
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Regarding the remaining rejections, Appellants argue only that the
rejected claims are allowable due to their dependence on independent claims
1, 11, and 21. Br. 10-13. Those rejected claims accordingly will be treated
as standing or falling with claim 1. In re Nielson, 816 F.2d 1567, 1572 (Fed.
Cir. 1987).

THE ISSUES
The issues raised by Appellants’ arguments (addressed infra)3
regarding the rejection of claim 1 are whether the Examiner erred in finding
that:
(1) Bharat’s SearchPad is provided in a search portal;
(2) Bharat discloses receiving from the user a navigation
identification message comprising a navigation location; and
(3) Bharat’s saved lead information constitutes a personalized search
index.

(hereinafter “Br.”), we will do likewise rather than referring to the May 30,
2007, Amended Appeal Brief, which has different pagination because it
includes (at pages 2-9) a summary of the claimed subject matter of the
dependent claims, whereas the Appeal Brief provides (at pages 2-4) a
summary of the claimed subject matter of only the independent claims.

3 Appellants have the burden of showing reversible error by the Examiner in
maintaining the rejections. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
(Continued on next page.)
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PRINCIPLES OF LAW
Application claims are interpreted as broadly as is reasonable and
consistent with the specification, In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir.
2002), while “taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

THE BHARAT REFERENCE
Bharat discloses query-specific bookmarking and data collection
techniques that allow users to search more efficiently on the World Wide
Web (WWW) by permitting them to explicitly maintain their search context,
which includes queries recently deployed by the user along with some or all
of the hyperlinks the user looked at and/or liked in the context of each query.
Bharat, col. 2, ll. 6-13.
Figure 5(a) is reproduced below.

prima facie case with evidence of secondary indicia of nonobviousness.”).
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Figure 5(a) shows an example of a search result page that allows a
user to save query-specific bookmarks and data. Id. at col. 6, ll. 59-60. The
search result page shows the links 512, 514, 516 that were received in the
search results in response to the query “genetic code” (222). Id. at col. 6, ll.
61-67. By clicking on one or more “mark” buttons 502, 504, 506 associated
with the result links, the user can cause the associated link to be saved or
displayed in association with a query 222 (discussed infra). Id. at col. 6, l.
65 to col. 7, l. 2. The saved information for each search result is called a
“lead.” Id. at col. 4, ll. 60-61.
The saved results are displayed in one of the “SearchPad” interfaces
depicted in Figures 2(a) and 2(b), which are reproduced below.
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Figure 2(a) shows SearchPad 202 implemented as a window within a
browser 200 (id. at col. 5, ll. 11-12), while Figure 2(b) shows SearchPad 252
implemented as a page displayed by a browser. Id. at col. 6, ll. 11-12. As
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noted by Appellants (Br. 6), Bharat characterizes the SearchPad window as a
“client side” window at column 4, lines 45-46.
The SearchPad can display two types of queries: (1) all queries for
which the user has marked a lead (as described above in connection with
Figure 5(a)), and/or (2) recent queries (for example, the last 5 queries).
Bharat, col. 5, ll. 31-34.

WHETHER BHARAT’S SEARCHPAD IS
PROVIDED IN A SEARCH PORTAL
The Examiner reads the recited “personal term list” on the query terms
(i.e., “Melissa virus” 220, “genetic code” 222, and “Genetic links” 224) in
the SearchPad interface and reads the recited “personalized search index” on
the leads (e.g., leads 230 for query term “genetic code”) in the SearchPad
interface. Final Action 4-5, ¶ 6.
Appellants (Br. 5-7) argue that Bharat’s SearchPad interface, on
which the Examiner reads the recited “personal term search list,” is located
on the “client side” rather than on the client side “in a search portal,” as
claimed, asserting that “search portal” is defined as follows at page 21, lines
20-24 of the Specification:
A ‘search portal’ 334, as the term is used in this specification,
means a data communications server such as a web server that
supports a personalized search index 500. The search portal 334
in the example of Figure 3 includes a search engine 332 operating
in dependence upon the personalized search index 500.
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Br. 7. The Examiner agrees that the first sentence of the above passage
constitutes a definition of “search portal” (Answer 13).
The Examiner, after noting that Appellants’ Specification (at page 14,
lines 12-14) further defines “server” as “a computer or device comprising
automated computing machinery on a network that manages resources,
including documents, and requests for access to such resources,” responded
to Appellants’ “client side” argument by providing the following
explanation of why characterizing Bharat’s SearchPad as a “search portal” is
consistent with Appellants’ definitions of that term and “server”:
Since there was no claimed client-server architecture, one
can in fact read any kind of computer on a network (or anything
that “refers” to a computer on a network) that “manages
documents and requests for access to such documents” as a server.
Thus, Bharat’s Search Pad is a “server,” because it refers to
a computer on a network (see the system, Abstract, l. 4, fig. 4a,
col. 6, ll. 20-24, that accesses a “browser” and “search engine” on
the “WWW”) and manages documents (web sites, fig. 2b, #206-
224) and requests for access to the documents (“user selects a lead
displayed in search pad,” fig. 3, #304, “user clicks on a lead’s title
to load the corresponding web page,” col. 5, ll. 43-46).
In addition to being a “server,” the Search Pad is a “search
portal” because it “supports a personalized search index” (e.g., fig.
2b, #220-224, col. 6, ll. 1-10) and serves data communications
(fig. 2, commands #206-220, fig. 3, #304, col. 5, ll. 43-46, 53-63).
Answer 13-14 (footnotes omitted).
Appellants, who did not file a reply brief, have not pointed out any
alleged error in the foregoing position of the Examiner and thus have not
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met their burden to show reversible error in the Examiner’s finding that
Bharat’s SearchPad is provided in a search portal.

WHETHER BHARAT DISCLOSES RECEIVING FROM
THE USER A NAVIGATION IDENTIFICATION MESSAGE
COMPRISING A NAVIGATION LOCATION
Appellants argue that Bharat does not disclose receiving from the user
a navigation identification message comprising a navigation location. Br.
7-8.
The Examiner (Answer 14) reads the recited “navigation identification
message comprising a navigation location” on Bharat, column 10, lines 48-
50, which, in discussing the method depicted in Figure 11(d) for marking
leads, explains that “when the user clicks on a link on the search result page,
the browser then displays the page, as in [sic] known in the art.” Appellants
argue that “Bharat at this point describes the common, traditional operation
of all hyperlinks: a user clicks on a link, the browser displays the page” (Br.
7) and assert (id.) that “the specification of the present application defines a
navigation identification message” as follows:
In browsers configured for use with embodiments of the present
invention, the browser also opens a data communications
connection, such as a TCP connection, to a search portal and
transmits to the search portal the entire URI
“http://www.ibm.com/index.html” along with a user identification
for a user for the search portal, the two together comprising a
navigation identification message, so-called because including the
URI has the effect of identifying to the search portal where on the
web the user is visiting.
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Id. at 8 (quoting Specification 24:14-20). We agree with the Examiner that
the above passage constitutes only an example of a “navigation
identification message” rather than a definition of that term. Answer 14.
At page 14 of the Answer, the Examiner additionally relies on
Bharat’s explanation (at column 10, lines 60-63) that for each “mark” action,
Bharat can log (a) the query, (b) the title, URL, and rank of the result being
marked, and (c) the time at which the event occurred, of which the URL
(Uniform Resource Locator) constitutes a navigation location. Appellants
have not pointed out any alleged error in this position of the Examiner.

WHETHER BHARAT’S SAVED LEAD INFORMATION
CONSTITUTES A PERSONALIZED SEARCH INDEX
The Examiner reads the recited step of “creating a personalized search
index in dependence upon the navigation location and the contents of the
personal search term list, wherein the personalized search index comprises
index records, each index record comprising a time stamp” (claim 1) on the
passage at Bharat’s column 10, lines 55-61, which as noted above describes
responding to a user’s “mark” action by logging the query, title, URL, rank,
and time. Final Action 5.
Appellants responded by arguing that “Bharat makes no mention of
the limitation of the third element of claim 1, personalized search term lists,
personalized search index, index records, and so on,” (Br. 9), which
argument the Examiner apparently understood (as do we) to mean that
Bharat’s logged information does not constitute “personalized” information.
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At pages 14-15 of the Answer, the Examiner responded by noting, correctly,
that the term “personalized search index” is undefined in the Specification
and thus must be given its broadest reasonable interpretation without reading
limitations from the Specification into the claims. Thrift, 298 F.3d at 1364.
The Examiner then explained that the aforementioned log “serves as a
personal index that enables the user to conveniently keep track of marked
search results (e.g., in chronological order) resulting from the user’s search
terms (col. 4, ll. 13-22, see example display on fig. 2).” Answer 15. In other
words, the logged search results were generated in response to queries that
were generated by and thus are personal to the user. Appellants have not
pointed out error in this position of the Examiner.

SUMMARY
Because Appellants have not demonstrated that the Examiner erred in
finding that Bharat anticipates claim 1, we are affirming the rejection of that
claim as well as the rejections of claims 2-30.

DECISION
The Examiner’s decision that claims 1, 4, 11, 14, 21, and 24 are
unpatentable for anticipation under § 102(b) by Bharat and that claims 2, 3,
5-10, 12, 13, 15-20, 22, 23, and 25-30 are unpatentable under § 103(a) for
obviousness over Bharat in view of the other cited prior art is affirmed.
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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.
§§ 41.50(f), 41.52(b).

AFFIRMED

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