Ex Parte Dunham et alDownload PDFBoard of Patent Appeals and InterferencesJul 12, 201010210677 (B.P.A.I. Jul. 12, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE TJnited States Patent and Trademark Office Add,&: COMMISSIONER FOR PATENTS P 0 Box 1450 Alexandria, Virginia 22313-1450 www uspto go" 49224 7590 07/12/2010 NIRO, SCAVONE, HALLER & NIRO 18 1 W. MADISON SUITE 4600 CHICAGO, IL 60602 APPLICATION NO. EXAMINER W, RUTAO 101210,677 0713 112002 Carl A. Dunham 3552 7244 FILING DATE I ARTUNIT I PAPERNUMBER I FIRST NAMED INVENTOR Please find below andlor attached an Office communication concerning this application or proceeding. MAIL DATE The time period for reply, if any, is set in the attached communication. ATTORNEY DOCKET NO. DELIVERY MODE PTOL-90A (Rev. 04/07) CONFIRMATION NO. 07/12/2010 PAPER UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte CARL A. DUNHAM, ALAN TRZCINKO, BRIAN D. MCCARTHY, and JAMES K. BERIKER Appeal 2009-012005 Application 1012 10,677 Technology Center 3600 Decided: July 12, 20 10 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. FETTING, Administrative Patent Judge. 25 DECISION ON APPEAL Appeal 2009-012005 Application 1012 10,677 STATEMENT OF THE CASE Carl A. Dunham, Alan Trzcinko, James K. Beriker, and Brian D. McCarthy (Appellants) seek review under 35 U.S.C. 5 134 (2002) of a final rejection of claims 1-20 and 22-32, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b) (2002). We AFFIRM. THE INVENTION The Appellants invented a search engine that allows advertisers to list their sites and receive keyword-driven search traffic (Specification 1 : 10- 1 1). An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]. 1. A search engine system on a computer network having a search engine provider computer, a merchant computer, and a user computer, wherein the provider computer, the merchant computer and the user computer are in communication therebetween, the search engine system being configured to 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed November 5, 2007) and Reply Brief ("Reply Br.," filed April 10, 2008), and the Examiner's Answer ("Ans.," mailed February 5, 2008). Appeal 2009-012005 Application 1012 10,677 generate a search result set in response to a search request from the user computer, the search engine system comprising: [I] a search engine configured to receive the search request; [2] a participant management system, configured to receive a listing from the merchant computer, wherein the listing includes a category profile, payment amount for an action resulting from user response, a title, a description and a data locator; [3] a database; and [4] a feedback mechanism, wherein the feedback mechanism couples the merchant computer and the search engine such that data is transferred between the merchant computer and the search engine. THE REJECTIONS The Examiner relies upon the following prior art: Buck US 6,078,866 Jun. 20,2000 Anderson US 6,415,281 B1 Jul. 2, 2002 Claims 1-20 and 22-26 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Anderson and Buck. Claims 27-32 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Buck. Appeal 2009-012005 Application 1012 10,677 ARGUMENTS The Appellants argue these claims as a group. Accordingly, we select claim 1 as representative of the group. 37 C.F.R. 5 41.37(c)(l)(vii) (2008). The Appellants contend that the art does not describe feedback as recited in limitation [4] of claim 1 (Appeal Br. 6-9) or a participant management system as in limitation [2] (Appeal Br. 8). ISSUES The issue of whether the Examiner erred in rejecting claims 1-20 and 22- 26 under 35 U.S.C. 5 103(a) as unpatentable over Anderson and Buck and in rejecting claims 27-32 under 35 U.S.C. 5 103(a) as unpatentable over Buck turns on whether the art describes feedback as recited in limitation [4] of claim 1 and a participant management system as in limitation [2]. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to Claim Construction 01. The disclosure contains no lexicographic definition of "feedback." 02. The ordinary and customary meaning of "feedback" is the return of the output of a process to the input.2 Facts Related to the Prior Art 2 American Heritage Dictionary of the English Language (4th ed. 2000). 4 Appeal 2009-012005 Application 1012 10,677 Anderson 03. Anderson is directed to arranging the records of search results into ordered records to be included in the search results provided in response to a data inquiry of a database. Anderson 1 :9- 1 1. 04. Andersons describes how a client may specify that its records be associated with a marketing characteristic that results in the records being arranged in advantageous positions in ordered records in search results. Anderson 18:24-27. 05. Anderson describes how the client can use a weighting factor that influences the positioning of its records in search query returns relative to the weighting factors of other entries. Anderson 21:3-14. Buck 06. Buck is directed to allowing web site owners to determine the rankings their information or services receive in search services. Buck 3:55-57. 07. Buck describes a system in which participants to a site listing database have entries including title, description and address plus a denominated value. Buck 354-57 and 4:2-8. Appeal 2009-012005 Application 1012 10,677 ANALYSIS Claims 1-20 and 22-26 rejected under 35 U.S. C. § 103(a) as unpatentable over Anderson and Buck. We deal with an invention of a search engine in which placement of results is a factor. Both of the references applied, pertain directly to this service. The issue is whether these reference use feedback. As the issue under contention is the description of feedback in the prior art, we first construe the term "feedback." The Specification does not define feedback, but the usual and customary definition is, the return of the output of a process to the input. FF 01,02. Claim 1 does not further define the nature of the feedback other than to recite that data is transferred between the merchant computer and the search engine. Which data is transferred and the criteria for selecting such data are not limited by the claim. The claim does not recite that the data that is transferred is part of the feedback, only that the coupling that forms part of the feedback mechanism allows data to be transferred. More importantly, the manner in which the data is transferred is not recited. The Examiner found such feedback in Anderson. (See Anderson 2:35- 38; 2:43-46; 3:l-8; and 21:18-26). See Ans. 4. The Examiner explains that Anderson's advertising client can exchange transaction data with the search engine and specify that the search engine places the advertisements in advantageous positions. Ans. 19. The Examiner does not explain how feedback is described in these passages. These passages appear to be those in support of the further requirement that the feedback mechanism couples the merchant computer Appeal 2009-012005 Application 1012 10,677 and the search engine such that data is transferred between the merchant computer and the search engine. These limitations are not in contention. The Examiner makes the findings regarding feedback in the Response section of the Examiner's Answer on pages 18-19. The Examiner finds that Anderson describes advertising client transactions as invoking a feedback mechanism in altering the ordering of records in search results at columns 18 and 21. We agree that Anderson describes the client using the search results to decide how to weigh its options in changing the ranking of its rankings in subsequent search results. FF 04, 05. The Appellants make the argument that "as a matter of law, the exercise of human judgment is not an equivalent of software." Clintec Nutrition v. Baxa Corp., 988 F. Supp. 1109, 1123 (N.D. Ill. 1997). Appeal Br. 8-9. Aside from the fact that the authority cited is not an appellate decision, this quote is directed to a question of finding equivalents under the Doctrine of Equivalents in infringement analysis. As we are not dealing with infringement, the persuasive authority of this quote regarding equivalents under the Doctrine of Equivalents directed to the issue here of obviousness is negligible. The Appellants argue for the first time in the Reply Brief on pages 4-5, that the feedback data must be automated and for the first time refer to claims 12 and 27 separate from claim 1. Certainly, our reviewing court has held that it is obvious to simply electronically automate that which was mechanical or manual once the technology is known. See Leapfrog Enterprises Znc. v. Fisher-Price Znc., 485 F.3d 1157, 1163 (Fed. Cir. 2007). Therefore, given that Anderson does describe a feedback mechanism within Appeal 2009-012005 Application 1012 10,677 the search engine of claim 1, we find this argument by the Appellants unpersuasive. The Appellants also argue for the first time in the Reply Brief on page 6 that the invention is not limited to bidding upon and receiving a rank, but claims automated modification of keyword listing corresponding to a bid. Since the bidding in both applied references modifies the keyword listing corresponding to the bid, this argument is unpersuasive. The Appellants also argue that the references fail to describe a participant management system with a category profile and data locator (Appeal Br. 9). The Appellants give no reason for this statement, and do not make any contentions regarding the Examiner's findings as to where Buck describes this limitation. The Examiner found that Buck (Buck 354-57 and 4:2-8) described this. Ans. 19. We agree that Buck does describe this limitation. FF 07. Claims 27-32 rejected under 35 U.S. C. § 103(a) as unpatentable over Buck. The Appellants rely on their arguments in support of the first rejection, and so this rejection stands with the first rejection. CONCLUSIONS OF LAW The Examiner did not err in rejecting claims 1-20 and 22-26 under 35 U.S.C. 5 103(a) as unpatentable over Anderson and Buck. The Examiner did not err in rejecting claims 27-32 under 35 U.S.C. 5 103(a) as unpatentable over Buck. Appeal 2009-012005 Application 1012 10,677 DECISION To summarize, our decision is as follows. The rejection of claims 1-20 and 22-26 under 35 U.S.C. 5 103(a) as unpatentable over Anderson and Buck is sustained. The rejection of claims 27-32 under 35 U.S.C. 5 103(a) as unpatentable over Buck is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. 5 1.136(a)(l)(iv). AFFIRMED mev Address NIRO, SCAVONE, HALLER & NIRO 181 W. MADISON SUITE 4600 CHICAGO IL 60602 Copy with citationCopy as parenthetical citation