Ex Parte Dahn et alDownload PDFPatent Trial and Appeal BoardOct 30, 201411028476 (P.T.A.B. Oct. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL DAHN, KHALID AL-KOFAHI, and PETER JACKSON ____________________ Appeal 2010-010770 Application 11/028,476 Technology Center 2100 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010770 Application 11/028,476 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1– 6, 9–14, 17–25, 27–34, 38–48, and 50–52. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to systems, methods, interfaces, and software for extending search results beyond initial query-defined boundaries. Claims 1 and 4, reproduced below, are representative of the claimed subject matter: 1. A system comprising: a server for an online legal-research provider, the server coupled to one or more databases containing law-related documents; a client access device coupled to the server via a network and having a display for presenting a graphical user interface including one or more user-interface elements configured or defined by the server, wherein one or more of the elements allows a user to define and submit one or more legal-research queries, with each of the queries having one or more associated search-boundary parameters, such as one or more terms, and/or database identifiers; and means associated with the server for returning search results to the client access device in response to a submitted query, wherein the search results include a first set of first documents and associated first user-interface elements, and a second set of second documents and associated second user-interface elements, wherein the first set of documents is within the boundaries of the submitted query and the second set of documents includes documents outside the boundaries of the submitted query; and wherein the first and second user-interface elements cause the first and second results to be displayed as separate sets of results within a search-results-display portion of the graphical user interface. Appeal 2010-010770 Application 11/028,476 3 4. A method of responding to a query from a user, comprising: searching a first database comprising court legal opinions based on the query to identify a first set of one or more documents; automatically identifying a second set of one or more documents in a second legal database comprising legal resources other than court legal opinions by inputting at least a portion of the query in a text classification engine which classifies text based on similarity to documents in the second database; and outputting at least a portion of each of the first and the second set of documents to an access device associated with the user; wherein the searching a first database comprises using a search engine configured to search the first database as a function of the query; the inputting at least a portion of the query in a text classification engine comprises using a second search engine configured to search a second database as a function of one or more of the query and a result from the first search engine; and the first search engine comprises a term-frequency- inverse-document-frequency search engine and the second search engine comprises a composite vector-based classifier. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Harris US 2002/0059204 A1 May 16, 2002 Marchisio US 6,510,406 B1 Jan. 21, 2003 Appeal 2010-010770 Application 11/028,476 4 REJECTION The Examiner made the following rejection: Claims 1–6, 9–14, 17–25, 27–34, 38–48, and 50–52 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Harris in view of Marchisio. ANALYSIS We address the claims in the order discussed in the Appeal Brief. Therefore, we address independent claim 4 as the representative claim for the majority of the independent claims, and we address independent claim 1 separately. With respect to independent claims 1, 50, 51, and 52, and dependent claim 14, we note these claims are drafted with “means” plus function limitations, and we note that Appellants have not identified, in the Summary of the Claimed Subject Matter section of the Appeal Brief, the corresponding structure, acts, or materials which carry out the recited function. With respect to representative independent claim 4, we agree with the Examiner's claim interpretation and line of reasoning with the application of the prior art teachings. Therefore, we adopt the Examiner's findings and responsive arguments as our own. (Ans. 3–12.) Furthermore, the Examiner maintains that providing an “automatic” means to replace a manual activity does not distinguish over the prior art. (Ans. 8.) We agree with the Examiner. Appellants maintain that the prior art does not teach “second search engine comprises a composite vector-based classifier” as disclosed in Appeal 2010-010770 Application 11/028,476 5 Appellants’ Specification. (App. Br. 12.) We note that the specific detail relative to the vector-based classifier is not defined nor expressly found in the language of independent claim 4. Furthermore, we note that this limitation is not found in most of the additional independent claims and is not persuasive thereto. The Examiner has identified the Marchisio reference to teach and suggest vector-based queries, searching, document vectors, and vector space models. (Ans. 5.) We agree with the Examiner's findings. Appellants further contend that the content of the databases recite a positive attribute and not intended use or intended functionality. (App. Br. 12–13.) Appellants state generally that “these claim phrases are entitled to patentable weight because they relate to specific databases in the claimed computerized systems and methods that improve upon the prior art.” (App. Br. 12.) We find Appellants’ general, unsupported argument to be unavailing. Appellants further contend that “a system did not exist that could navigate from a database of court legal opinions to a database of legal resources other than court legal opinions.” (App. Br. 13.) We find Appellants’ argument is not commensurate in scope with the express language of independent claim 4 regarding the term “navigate.” Therefore, Appellants have not shown error in the Examiner’s conclusion of obviousness, and we sustain the rejection of representative claim 4. With respect to independent claim 1, Appellants repeat the varied language regarding the first and second sets of documents and contend that claims 4–6, 27, 28, and 30 do not recite this feature. (App. Br. 13.) We find the Examiner has addressed these limitations in the statement of the rejection (Ans. 7) and find Appellants’ general argument does not show error in the Appeal 2010-010770 Application 11/028,476 6 Examiner's conclusion of obviousness with respect to the non-functional descriptive material. With respect to independent claims 5, 6, 30, 38, 41, 44, 50, 51, and 52, Appellants repeat the language of the claims and maintain that the Harris reference does not disclose the feature. (App. Br. 14–15.) We find Appellants’ general argument for patentability to be unpersuasive of error in the Examiner’s conclusion of obviousness, and we sustain the rejection of representative claim 5. With respect to dependent claims 2, 3, 9–14, 17–25, 27–29, 31–34, 39–40, 42, 43, and 45–48, Appellants rely upon the arguments advanced with respect to the parent claims. (App. Br. 15.) Therefore, Appellants have not shown error in the Examiner’s conclusion of obviousness of these dependent claims. Specifically, with respect to dependent claim 14, Appellants contend the prior art does not teach the claimed “disabling” (App. Br. 16). The Examiner maintains that user selection effectively disables the search of a database. (Ans. 11.) We agree with the Examiner and find Appellants have not identified any definition of the function and have not identified any corresponding structure which would differentiate from user selection as identified by the Examiner. Therefore, Appellants have not shown error in the Examiner’s conclusion of obviousness. With respect to dependent claims 33, 34, 47, and 48, Appellants repeat the language of the claim and maintain that the Harris reference does not teach a generation of a composite score. (App. Br. 16.) The Examiner addresses the composite score with respect to the combination of the Harris and Marchisio references. (Ans. 7, 10–11.) We agree with the Examiner Appeal 2010-010770 Application 11/028,476 7 that the search engines would prioritize the search results based upon a score which would be a composite score. Appellants further contend the Examiner has based the rejection of independent claim 4 on hindsight reconstruction. (App. Br. 16–19; Reply Br. 1–3.) We disagree with Appellants and find the Examiner has set forth a line of reasoning regarding the combination of the teachings of the Harris and Marchisio references. (Ans. 5.) Appellants contend the statement for the combination is “unclear.” (Reply Br. 3.) We disagree with Appellants and find the Examiner’s statement to be sufficiently clear and more appropriately stated as: It would have been obvious to one with ordinary skill in the art at the time the invention was made to apply the teaching of Marchisio into the invention of Harris because both inventions were available [as well-known search engines] and the combination would allow the user with more desir[abl]e search result[s], without the user input. (Ans. 5.) Therefore, we find each of Appellants’ contentions to be unpersuasive of error in the Examiner’s conclusion of obviousness, and we sustain the rejection of representative independent claim 4, representative independent claim 1, and dependent claims 14, 33, 34, 47, and 48. CONCLUSION The Examiner did not err in rejecting claims 1–6, 9–14, 17–25, 27–34, 38–48, and 50–52 based upon obviousness. Appeal 2010-010770 Application 11/028,476 8 DECISION For the above reasons, the Examiner’s rejections of claims 1–6, 9–14, 17–25, 27–34, 38–48, and 50–52 are 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) (2011). AFFIRMED tj Copy with citationCopy as parenthetical citation