Ex Parte CarrDownload PDFPatent Trial and Appeal BoardJun 29, 201512374372 (P.T.A.B. Jun. 29, 2015) Copy Citation 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. 12/374,372 01/19/2009 Michael James Carr CARR:001 8078 7590 06/29/2015 C. DALE QUISENBERRY 6750 WEST LOOP SOUTH SUITE 920 BELLAIRE, TX 77401 EXAMINER KIM, TAELOR ART UNIT PAPER NUMBER 2156 MAIL DATE DELIVERY MODE 06/29/2015 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 ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL JAMES CARR ____________________ Appeal 2013-005374 Application 12/374,372 Technology Center 2100 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1– 19. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2013-005374 Application 12/374,372 2 The invention relates to performing searches when surfing the Internet (Spec. ¶¶ 1, 4). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of surfing the Internet comprising: a. selecting information on a web page; b. clicking on the information as it resides on the web page; and c. in response to the clicking, conducting a web search on the information. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Chang et al. Chiang et al. US 2003/0016250 A1 US 6,785,670 B1 Jan. 23, 2003 Aug. 31, 2004 REJECTIONS The Examiner made the following rejections: Claims 1, 3–12, 14–16, and 18–19 stand rejected under 35 U.S.C §102(b) as being anticipated by Chiang. Claims 2, 13, and 17 stand rejected under 35 U.S.C §103(a) as being unpatentable over Chiang and Chang. ANALYSIS The Anticipation Rejection The Examiner finds Chiang describes every limitation of claim 1, including “b. clicking on the information as it resides on the web page; and Appeal 2013-005374 Application 12/374,372 3 c. in response to the clicking, conducting a web search on the information” (Final Act.1 4). Appellant contends in Chiang, clicking on the information to be searched merely reveals a pull down menu of selections of various search engines. The cursor must then be moved away from the information to be searched, and then placed on the search engine selection of the pull down menu. In Chiang, the search is then responsive to the clicking of search engine selection on the menu, not the clicking of the information to be searched. (App. Br. 13). We agree with Appellant. The Examiner has not shown that Chiang describes conducting a web search on information in response to clicking on the information itself. The Examiner’s response to Appellant’s argument offers three alternative reasons to affirm the prior rejection, each with which we disagree, and we address them in turn. First, the Examiner asserts “the word ‘clicking’ does not equate to a single click” because “[i]t’s a verb that is used to describe an act and not used to indicate whether there is a single act of a single click” (Ans. 12–13). However, interpreting claim 1 to include performing additional clicks before conducting the search is contrary to the plain meaning of the language “in response to the clicking [on the information].” Accordingly, we find claim 1 does not read on Chiang’s method which requires selecting a search engine after clicking on information and before a search can be conducted (see Chiang, col. 6, l. 61–col. 8, l. 46). Second, the Examiner finds “Chiang teaches that a hyperlink is used to search data related to the hyperlinked item. . . . For example, this hypertext when selected by clicking of a mouse, or a single click on 1 The Final Action mailed March 6, 2012. Appeal 2013-005374 Application 12/374,372 4 information residing on a document as claimed . . . searches for additional information” (Ans. 13). We agree with Appellant that following a hyperlink is not the same as conducting a web search (Reply Br. 3). That is, one of ordinary skill in the art would have understood that a hyperlink provides direct access to pre-specified information, whereas a web search performs an algorithm to determine information related to input information. Third, the Examiner finds “Chiang describes that information can be searched through selection of an item through clicking” and “[t]hen after the selection of the item, another selection of the search option can be executed automatically . . . [col. 8 lines 15-25]” (Ans. 13). “This automated selection of search option would negate the need for a second click that the Appellant’s entire argument rests on” (id.). We find the Examiner misinterprets the references in finding Chiang describes skipping the selection of a search engine. Chiang discloses: [i]n some cases, the number of possible search options 98 may exceed the number that may be conveniently displayed within the context-sensitive menu 94. Thus, the search options 98 may be automatically chosen by the search option filter module 67, based on selected criteria, such as the user-selected search terms 93. (Chiang, col. 8. ll. 15–20). Here, Chiang describes automatically selecting the options in the search engine menu with which the user is presented. Chiang does not describe automatically selecting the search engine with which to perform the search for the user. Accordingly, we find the Examiner has not shown Chiang describes argued features of claim 1. We are, therefore, constrained by the record to find the Examiner erred in rejecting independent claim 1, independent claims 10 and 14 which Appeal 2013-005374 Application 12/374,372 5 recite commensurate limitations, and dependent claims 3–9, 11, 12, 15, 16, 18, and 19 for similar reasons. The Obviousness Rejection The Examiner has not shown that Chang cures the deficiencies of Chiang discussed above regarding claims 1, 10, and 14, from which claims 2, 13, and 17 depend. We are, therefore, constrained by the record to find the Examiner erred in rejecting claims 2, 13, and 17. CONCLUSIONS Under 35 U.S.C. § 102(b), the Examiner erred in rejecting claims 1, 3–12, 14–16, and 18–19. Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 2, 13, and 17. DECISION For the above reasons, the Examiner’s decision rejecting claims 1–19 is reversed. REVERSED ACP Copy with citationCopy as parenthetical citation