Ex Parte Dunham et al

Board of Patent Appeals and Interferences

Jul 12, 2010

10210677 (B.P.A.I. Jul. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
TJnited States Patent and Trademark Office
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49224 7590 07/12/2010
NIRO, SCAVONE, HALLER & NIRO
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SUITE 4600
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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
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NIRO, SCAVONE, HALLER & NIRO
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