Ex Parte Brown et al

Patent Trial and Appeal Board

Sep 26, 2014

11775514 (P.T.A.B. Sep. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte GREGORY T. BROWN, THOMAS A. COFINO,
YURDAER NEZIHI DOGANATA, YOUSSEF DRISSI,
TONG-HAING FIN, MOON JU KIM, LEV KOZAKOV,
and JOHN WILLIAMS MILLER
_____________

Appeal 2012-004118
Application 11/775,514
Technology Center 2100
______________

Before JEFFREY T. SMITH, MAHSHID D. SAADAT, and
ROBERT E. NAPPI, Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 3, 5 through 11, 14 through 19, and 21 through 24.
We affirm.

INVENTION
The invention is directed to a document search and retrieval system.
See Abstract of Appellants’ Specification. Claim 1 is illustrative of the
invention and reproduced below:
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1. A system for searching document components and
retrieving search result documents, said system comprising:
a document decomposer receiving documents having a
fixed document type and static content layout and automatically
decomposing received said documents into individual
document components;
a component library storing said document components;
a search unit searching stored said document components
responsive to search queries; and
a results validator analyzing document hitlists of
documents identified by said search unit against a document
type identified in a search query to select valid hitlists entries
for a final hitlist.

REJECTION AT ISSUE
The Examiner has rejected claims 1 through 3, 5 through 11, 14
through 19, and 21 through 24 under 35 U.S.C. § 103(a) as unpatentable
over Matsuda (US 6,718,333 B1, Apr. 6, 2004) and Seacord (“Agora: A
Search Engine for Software Components,” Technical Report CMU/SEI-98-
TR-011, Software Engineering Institute, Carnegie Mellon University
(1998)). Answer 5–13.1

ISSUES
Appellants argue, on pages 7 through 13 of the Appeal Brief, that the
Examiner’s rejection of independent claims 1, 10, and 14 is in error. These
arguments present us with the issues:

1 Throughout this opinion we refer to the Appeal Brief dated August 23,
2011, Reply Brief dated January 9, 2012, and the Examiner’s Answer mailed
on November 10, 2011.
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1) Did the Examiner err in finding the combination of Matsuda and
Seacord teaches decomposing received said documents into
individual document components and a component library storing
said document components?
2) Did the Examiner err in combining of Matsuda and Seacord as
Seacord teaches away from the combination?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We disagree with
Appellants’ conclusion that the Examiner erred in rejecting 1 through 3, 5
through 11, 14 through 19, and 21 through 24.

First issue:
Appellants’ arguments directed to the first issue are focus on
Seacord’s failure to teach decomposing received documents into
components and storing the components in a library. Brief 10–11. Initially,
we note it is unclear from Appellants’ argument if Appellants are asserting
that Seacord does not teach decomposing received documents into
components or that Seacord does not teach storing the components in a
library. Brief 11.
The Examiner, in response to Appellants’ arguments, finds that
Seacord teaches the claimed decomposing documents in that it teaches
decomposing web pages to identify JavaBean classes contained in the web
page. Answer 15. We have reviewed the evidence cited by the Examiner
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and concur with the Examiner’s findings. Further, we are not persuaded by
Appellants’ arguments that Seacord does not teach the claimed
deconstructing as Seacord teaches receiving search results with links to the
documents and not the documents as claimed. Reply Brief 2. Seacord
teaches “The JavaBeans agent searches for hypertext markup language
(HTML) pages containing applet tags using the Alta Vista Internet service,
loads and introspects these applets, and indexes the interfaces of any
JavaBeans that are discovered.” Seacord 9. Thus, Seacord clearly teaches
receiving the documents, not just the list of search results with identifying
links to the documents.
We note claim 10 does not recite that the components are stored in a
library. Thus, the remainder of Appellants’ arguments directed to this issue
is not commensurate with the scope of claim 10.
Turning to the second part of Appellants’ argument that Seacord does
not teach storing the components in a library, the Examiner finds Seacord
teaches using software repositories (library of components) was known.
Answer 15. Further, the Examiner finds components distribution across the
Internet is also considered the software library, as there is no limitation
directed to the library being consolidated into one location. Id. at 16. We
concur with the Examiner’s finding. Appellants’ statement, on page 4 of the
Reply Brief, that “books found in bookstores and in individual collections do
not constitute a traditional library” has not persuaded us of error in the
Examiner’s findings. Appellants have not identified a definition of the term
“library” to show the Examiner’s claim interpretation is unreasonable.
Additionally, the implied interpretation of a traditional library being a single
building to house books is a) inapplicable to the claimed software library, b)
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not supported by Appellants’ Specification, and c) inaccurate (e.g., the
library of congress (and most universities) constitute one library but occupy
several buildings).
Thus, Appellants’ arguments directed to the first issue have not
persuaded us of error in the Examiner’s rejection.

Second issue:
Appellants’ arguments directed to the second issue assert that Seacord
teaches maintaining an index of the components and discourages the use of a
centralized repository (a library of components). Brief 13. Thus, Appellants
argue Seacord teaches away from collecting components and storing them in
a library. We disagree with Appellants’ assertion.
Initially, we note that this argument is only applicable to the
interpretation of representative independent claim 1 being directed to one
central library, and not applicable to the interpretation of a distributed
storage being considered a library. Further, we note the Examiner has
provided a reasoned rationale as to why the skilled artisan would use a
library of components on pages 16 and 17 of the Answer.
Our reviewing court has said,
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be lead in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend upon the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.
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In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citing United States v.
Adams, 383 U.S. 39, 52 (1966)). However, a reference that “teaches away”
does not pre se preclude a prima facie case of obviousness, but rather the
“teaching away” of the reference is a factor to be considered in determining
unobviousness. Id.
In this case the Appellants’ arguments focus on Seacord teaching that
the traditional approach has been to develop large scale software libraries,
and that they have historically failed. Brief 13 (citing Seacord 19–20, § 4.2).
We disagree that this teaches away from use of a centralized library.
Seacord teaches the reason for these failures include “limited accessibility
and scalability of the repository, exclusive control over cataloged
components, oppressive bureaucracy, and poor economy of scale.” Seacord
20, § 4.2. Thus, we consider Seacord’s discouragement as directed to using
the central library of components approach to be limited to large scale
repositories, and not small repositories and without the control over the
cataloging the software. Seacord’s system of decomposing the documents
mitigates the scale issue and remedies the control over cataloging. Thus, we
do not find that Seacord would discourage the skilled artisan from using a
small scale centralized library of components with the decomposing and
indexing teachings. As the claims do not recite a limitation directed to the
size of the library of components we are not persuaded that Seacord teaches
away from the claimed device.
Thus, Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection under 35 U.S.C. § 103(a).

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DECISION
The decision of the Examiner to reject claims 1 through 3, 5 through
11, 14 through 19, and 21 through 24 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

msc