Ex Parte Dean et al

Board of Patent Appeals and Interferences

Nov 29, 2006

09797754 (B.P.A.I. Nov. 29, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex Parte JEFFREY A. DEAN, BENEDICT GOMES, KRISHNA BHARAT,
GEORGES HARIK, and MONIKA H. HENZINGER
_______________

Appeal No. 2006-2584
Application No. 09/797,754
_______________

ON BRIEF
_______________

Before KRASS, BARRY and SAADAT, Administrative Patent Judges.

KRASS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the final rejection of claims 1-35.

The invention is directed to document retrieval, and, more particularly, to
document retrieval employing usage statistics.
Representative independent claim 1 is reproduced as follows:

1. A computer implemented method of organizing a collection of
documents by employing usage information, comprising:

receiving a search query;
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identifying a plurality of documents responsive to the search query;

assigning a score to each document based on at least the usage
information; and

organizing the documents based on the assigned scores.

The examiner relies on the following references:

Spencer 5,826,261 Oct. 20, 1998

Fish 6,035,294 Mar. 07, 2000

Claims 1, 3-20, 25, 26, and 28-35 stand rejected under 35 U.S.C. §102(b)
as anticipated by Fish.
Additionally, claims 1-35 stand rejected under 35 U.S.C. §103 as
unpatentable over Fish in view of Spencer.
Reference is made to the briefs and answer for the respective positions of
appellants and the examiner.
OPINION

A rejection for anticipation under section 102 requires that the four
corners of a single prior art document describe every element of the claimed
invention, either expressly or inherently, such that a person of ordinary skill in
the art could practice the invention without undue experimentation. In re
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Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
In the instant case, the issue is whether the examiner has established a
prima facie case of anticipation by showing that Fish describes “documents”
that are identified and “assigning a score to each document based on at least the
usage information.”
The examiner relies on a dictionary definition of “document” as “any self-
contained piece of work created with an application program and, if saved on disk,
given a unique filename by which it can be retrieved…” (see page 11 of the answer).
Appellants contend that the examiner’s interpretation of “document” is unreasonably
broad and that the examiner has improperly ignored the instant specification which is
better evidence of how the skilled artisan would have interpreted the term as used in
the instant claims. In particular, appellants contend that in view of the specification,
the artisan would have interpreted “document” as “including something users search
for on the World Wide Web, such as a Web page for example” (page 10 of the
substitute supplemental appeal brief). The problem with appellants’ definition is that
page 13 of appellants’ own specification indicates that while the general description
pertains to the operation of a search engine in the context of a search of documents on
the World Wide Web, the search engine “could be implemented on any corpus.”
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In any event, we have reviewed the evidence before us and we conclude
therefrom that the examiner has not established the requisite prima facie case
for a finding of anticipation of claims 1, 3-20, 25, 26, and 28-35.
It is clear that the examiner is reading the claimed “documents” on
database records in Fish, since the examiner refers to column 5, lines 11-25, of
the reference. Such database records do not appear to be reasonably equated to
appellants’ “documents.” We agree with appellants that, in accordance with
Phillips v. AWH Corp, 415 F.3d 1303, 1323, 75 USPQ2d 1321, 1334 (Fed. Cir.
2005), the specification is always highly relevant to a claim construction
analysis. A review of the instant specification reveals that “documents” appears
to relate to something users search for on the World Wide Web or on any other
corpus. Whether such other corpus would include database files is debatable.
What is not debatable, however, is that the instant claims require not
merely an identification of “documents,” but also that each of those documents
be assigned a score “based on at least the usage information” (claim 1) or that
the documents be organized “based on at least the usage information” (claim
16) or that the documents be assigned a score “based on the usage information”
and “organizing the documents based on the assigned scores” (claims 25 and
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26).
In response to appellants’ argument that the database records of Fish are
not “documents,” the examiner states that Fish “does use spreadsheets, tables
and graphics” which correspond to a document (answer-page 13). Thus, the
examiner now appears to rely on spreadsheets, graphics and tables of Fish as
some extension of “documents.”
Even if spreadsheets, graphics and tables in Fish could be considered
“documents,” as claimed, there is no evidence these elements are assigned any
scores based on their usage or that they are organized based on assigned scores.
Thus, it appears, as stated by appellants at page 3 of the reply brief, that the
examiner is taking the feature of one element (usage frequency of a database
record), and somehow trying to infer that this feature belongs to other elements
(e.g., spreadsheets, HTML Web pages, graphics) as discussed in Fish.
We agree with appellants that the examiner does appear to inconsistently
apply the features of one element (usage frequency of a database record) to
other things (spreadsheets, HTML Web pages, graphics) within the reference.
As such, this is improper and we will not sustain the rejection of claims 1, 3-20,
25, 26, and 28-35 under 35 U.S.C. §102(b).
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We also will not sustain the rejection of these independent claims under
35 U.S.C. §103 because the addition of the Spencer reference fails to provide
for the deficiencies noted supra anent Fish.
With regard to independent claim 27, this claim does not explicitly call
for a “score” or for assigning documents or organizing documents. Rather, it
requires a machine-readable medium having a plurality of records and these
records each comprise two fields. A first field identifies a document and a
second field has a value, with that value corresponding to the “importance” of
that document, and further wherein the value is a function of both usage data
for the document and link information for the document.
The examiner ostensibly relies on Fish for the reasons supra with regard
to the other independent claims, but turns to Spencer for a teaching of the first
field containing a document identifier (pointing to column 10, lines 34-37) and
for a teaching of the second field containing a value corresponding to the
importance of the document, the value being a function of both usage data for
the document and link information for the document (pointing to column 10,
lines 37-41).
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Our reference to the cited portions of Spencer finds some measure of
importance of a “term” in a database, but not a measure of importance of a
“document,” as claimed. Moreover, we find nothing therein about a value
being a function of both usage data for the document and link information for
the document.
Spencer does appear to relate to “scoring” a document (column 1, lines
47-50, describing the background of the invention) and to measuring
significance of terms within a document based on usage, or “frequency” of
unique words (column 1, lines 33-36), but the examiner has made no
convincing showing of Spencer teaching or suggesting a value corresponding to
the importance of a document wherein that value is a function of both usage
data for the document and link information for the document.
Perhaps more importantly, the examiner has failed to cite any convincing
motivation for making the combination of Fish and Spencer. The statement of
rejection at page 9 of the answer merely cites certain portions of Spencer
without indicating what part of Fish is being relied on, without indicating why
the skilled artisan would have sought to modify Fish with any teaching of
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Spencer, assuming Spencer taught what the examiner indicates is taught, and
without indicating how such a combination would be made.
In the response to appellants’ arguments in this regard, the examiner
indicates at page 17 of the answer merely that there is a “reasonable expectation
of success” (without explaining why this is so) and that both references are
directed to search engines so that the skilled artisans would have recognized
their compatibility by implementing Spencer’s database for the index of Fish. It
is our view that the examiner’s rationale is not sufficient to establish a prima
facie case of obviousness.
While we agree with appellants for various reasons, we find most
compelling, appellants’ argument at pages 6-7 of the reply brief. Appellants
indicate thereat that Spencer uses “frequency” in the context of how often a
term appears in a document, as well as how often a term appears in a collection
of documents, whereas Fish uses “frequency” in the context of how people have
used parameters, values, and/or classifications in describing different types of
items. Accordingly, it would not appear reasonable that the skilled artisan
would seek to combine the disparate teachings of these references since they
appear to address different problems.
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Accordingly, since we find the combination of Fish and Spencer to be
improper, we will not sustain the rejection of independent claim 27 under
35 U.S.C. §103. Since we have not sustained the rejection of any of the
independent claims under either 35 U.S.C. §102 (b) or 35 U.S.C. §103, we will
not sustain the rejection of any claim under these statutory sections.
The examiner’s decision rejecting claims 1, 3-20, 25, 26, and 28-35 under
35 U.S.C. §102(b) and claims 1-35 under 35 U.S.C. §103 is reversed.
REVERSED

)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )

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