Ex Parte Burkov

Patent Trial and Appeal Board

Aug 13, 2013

10653369 (P.T.A.B. Aug. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SERGEI BURKOV
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Appeal 2011-001165
Application 10/653,369
Technology Center 2100
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Before DAVID M. KOHUT, TREVOR M. JEFFERSON, and
JUSTIN BUSCH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-4, 6, 8-10, 13-16, 18, 20-22, 25, 27-29, 31, 32, and
37.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to methods and systems of using automatic
categorization to search for documents. Spec. 2-3. Claim 1 is representative
of the invention and is reproduced below:
1. A method of searching for documents by utilizing
automatic categorization, comprising:
executing a categorization program that categorizes and
produces categorization information for a plurality of
documents, the categorization information associating each
document with one or more categories;
storing the categorization information;
responsive to receiving a search query from a user:
identifying a plurality of search engines and causing
at least one of the plurality of search engines to execute the
search query;
receiving a list of documents returned by at least one
of the plurality of identified search engines responsive to the
search query;
checking the received list of documents against the
categorization information;
in response to determining that at least one document
in the received list of documents is not associated with any
category of the categorization information:
repeating executing the categorization program
with respect to the at least one document to produce and store
updated categorization information that includes categorization

1 Claims 5, 7, 11, 12, 17, 19, 23, 24, 26, 30, and 33-36 were previously
cancelled.
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information for the plurality of documents and the at least one
document;
checking the received list of documents against the
updated categorization information;
creating a changed list of documents by making a
change to the received list of documents based on information
derived from checking the received list against the updated
categorization information; and
returning to the user the changed list of documents,
the changed list of documents being in the form of search
results responsive to the search query.

REFERENCES
Greer US 2001/0011226 A1 Aug. 2, 2001

Baidya US 2003/0046311 A1 Mar. 6, 2003

Fain US 2006/0265400 A1 Nov. 23, 2006

REJECTION AT ISSUE
Claims 1-4, 6, 8-10, 13-16, 18, 20-22, 25, 27-29, 31, 32, and 37 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Fain, Baidya, and Greer. Ans. 5-26.

ISSUES
Did the Examiner err in finding it obvious to combine Fain, Baidya,
and Greer?
Did the Examiner err in finding the combination of Fain, Baidya, and
Greer teaches or suggests the following limitations required by each of the
independent claims:
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(a) Repeating the categorization program when at least one document is
not associated with any category of the categorization information;
and
(b) Subsequently using the updated categorization information to check
the received list of documents?

ANALYSIS2
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred.
We disagree with Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s rejection of the claims and in the Examiner’s Answer in
response to Appellant’s Appeal Brief. We concur with the conclusions
reached by the Examiner. In addition, below we highlight the following
arguments for emphasis.
Appellant initially argues that the Examiner erred in finding it obvious
to combine the references. App. Br. 6. Specifically, Appellant argues that
the combination of the references contains disparate teachings of one
reference in combination with the other two references and, therefore, the
combination is improper. App. Br. 6-7. We disagree.
In KSR International Co. v. Teleflex Inc., the Supreme Court
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” and discussed circumstances

2 Appellant selects claims 1, 13, 25, and 37 as representative of the group
comprising claims 1-4, 6, 8-10, 13-16, 18, 20-22, 25, 27-29, 31, 32, and 37.
App. Br. 9, 10, and 11.
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in which a patent might be determined to be obvious. 550 U.S. 398, 415
(2007). Importantly, the Supreme Court reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416. Here, the Examiner finds (Ans. 5-12 and 18-26) and we
agree that each element of claims 1, 13, 25, and 37 is taught by the
combination of references and the combination is nothing more than using
known elements to perform their known functions yielding predictable
results. We additionally agree with the Examiner that one of ordinary skill
in the art would have combined the references “in order to ‘provide real-time
searching capability in a focused manner’ (Baidya, Paragraph 0003) and to
provide a filtering system which augments subsequent categorization (Greer
Paragraph 0021).” Ans. 27.
Next, Appellant argues that the combination of references does not
teach repeating the categorization program when at least one document is
not associated with any category of the categorization information. App. Br.
10. We disagree. The Examiner finds that Baidya teaches checking whether
a company name and website is included in a database and, if not, the
information is added to the database in order to be categorized and indexed.
Ans. 30. We agree with the Examiner that this teaches the disputed
limitation.
Lastly, Appellant argues that the combination of references does not
teach subsequently using the updated categorization information to check the
received list of documents. App. Br. 10-11. Appellant specifically contends
that the combination of the references does not check the documents twice,
as required by the claims. App. Br. 11. However, the Examiner finds, and
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we agree, that paragraph [0021] and Figure 3 of Greer teach wherein data is
checked using a first set of criteria and a second set of criteria if the user rule
page has been updated. Ans. 32. Thus, we agree with the Examiner that the
combination of the references teaches the disputed limitation.
For the reasons discussed supra, we sustain the Examiner’s rejection
of claims 1-4, 6, 8-10, 13-16, 18, 20-22, 25, 27-29, 31, 32, and 37.

CONCLUSION
The Examiner did not err in finding it obvious to combine Fain,
Baidya, and Greer.
The Examiner did not err in finding the combination of Fain, Baidya,
and Greer teaches or suggests the following limitations required by each of
the independent claims:
(a) Repeating the categorization program when at least one document is
not associated with any category of the categorization information;
and
(b) Subsequently using the updated categorization information to check
the received list of documents
SUMMARY
The Examiner’s decision to reject claims 1-4, 6, 8-10, 13-16, 18, 20-
22, 25, 27-29, 31, 32, and 37 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

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