11017349 (B.P.A.I. May. 17, 2011)

Ex Parte Golla

Board of Patent Appeals and InterferencesMay 17, 2011

11017349 (B.P.A.I. May. 17, 2011)

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. 11/017,349 12/20/2004 Prasad Golla 129250-002261 6895 32498 7590 05/17/2011 CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC P.O. BOX 1995 VIENNA, VA 22183 EXAMINER FILIPCZYK, MARCIN R ART UNIT PAPER NUMBER 2158 MAIL DATE DELIVERY MODE 05/17/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte PRASAD GOLLA ____________________ Appeal 2009-0100481 Application 11/017,349 Technology Center 2100 ____________________ Before JOSEPH L. DIXON, JEAN R. HOMERE, and ST JOHN COURTENAY, III, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Alcatel-Lucent (App. Br. 2.) Appeal 2009-010048 Application 11/017,349 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-15. Claim 16 has been canceled, and claims 17-20 have been withdrawn from consideration. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s Invention Appellant invented a method and system for allowing a user to remotely search multimedia contents in a third party database (e.g. Google, Yahoo) via a set top control interface. In particular, upon the user communicating to a server a selected category of desired information, the server formulates a search query based on the user’s selection, and subsequently submits formulated search query to a third party search engine. Upon receiving the results to the search query, the server filters them, and forwards uniform resource locators (URLs) associated with the results back to the user. (Spec.1, ll. 2-5, Spec.3-4.) Illustrative Claim Independent claim 1 further illustrates the invention. It reads as follows: 1. A system for conducting a data search operation for content stored at nodes on a network, comprising: a menu interface for enabling an interaction sequence of content category selection and definition-narrowing of those categories selected; Appeal 2009-010048 Application 11/017,349 3 a server application for interpreting the interaction sequence and for formulating a search query based on the interpretation; and a session application for submitting the query to a third party node, the third party being a party other than a party controlling the server application, the third party node having access to content responsive to the search query, and for receiving and filtering results returned, the results forwarded to the menu interface for subsequent display and interaction, wherein results obtained from a third party node are based at least in part upon uniform resource locators (URLs) of content responsive to the search query. Prior Art Relied Upon Kelts US 2002/0112237 A1 Aug. 15, 2002 Rejection on Appeal The Examiner rejects claims 1-15 under 35 U.S.C. § 102(e) as being anticipated by Kelts Appellant’s Contentions Appellant contends that Kelts does not describe a server application that formulates a search query based on an interpretation of a user’s topic selection from among hierarchical menus, as recited in independent claim 1. Rather, the user of Kelts’ system must manually formulate the search query. (App. Br. 4-8.) Likely, Appellant argues that the disclosed query task in Kelts merely utilizes the user’s interaction to determine whether the user entered a pointer command or a request via a keyboard. (Reply Br. 2-3.) Further, Appellant argues that Kelts does not describe submitting the Appeal 2009-010048 Application 11/017,349 4 formulated search query to a third party node (other than a party controlling the server application) that responds thereto by providing URLs. Rather, Kelts’ search query is submitted to a dedicated database controlled by a service provider that controls the server. (App. Br. 9, Reply Br. 3-12.) Examiner’s Findings In response, the Examiner submits to have interpreted an “interaction sequence” consistent with Appellant’s Specification as “any user action on an interface” (e.g. a user click). Consequently, the Examiner finds that Kelts’ disclosure of a user clicking on a region of a map to generate a query that executes the user’s request describes the claim limitation of formulating a search query based on the user’s selected input. (Ans. 7-8.) Further, the Examiner finds that Kelts’ disclosure of a database containing URLs, and not controlled by a server from which it received a user’s search query describes the third party node, as recited in claim 1. (Id. at 8-9.) (Ans. 11.) Therefore, the pivotal issue before us is as follows: II. ISSUE Have Appellants shown that the Examiner erred in finding that Kelts describes (1) a server application that formulates a search query based on an interpretation of a user’s interaction sequence of content category selection with a menu interface, and (2) a session application submitting the formulated search query to a third party node (other than a party controlling the server application) that responds thereto by providing URLs, as recited in independent claim 1? Appeal 2009-010048 Application 11/017,349 5 III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Kelts 1. Kelts discloses a hierarchical display map depicting various multimedia information sources including music, sport, languages, etc. The map includes subcategories hierarchically displayed to provide additional information pertaining to the map contents. (Kelts, Abstr.) In particular, upon a user positioning a cursor over an active item on the map, a presentation layer in the server-based map system detects the identified map item, which a query task utilizes to cause pop-up text to appear on or near the identified map item. (Kelts, ¶ [0188].) Further, upon determining that the content or file associated with the selected map item has been requested by the end user, the query task retrieves the requested content and forwards it to the user. (Kelts, ¶¶ [0192, 0194-0198].) 2. Kelts discloses a network system (10) containing a plurality of user computers (40) that interface with their internet service providers (ISP-44) to communicate with a service center (12) via the Internet (30) for practicing the invention described in FF. 1 above. (Kelts, ¶ [0272].) IV. ANALYSIS After carefully reviewing the record before us, we find error in the Examiner’s anticipation rejection of independent claim 1, which recites, Appeal 2009-010048 Application 11/017,349 6 inter alia, (1) a server application that formulates a search query based on an interpretation of a user’s interaction sequence of content category selection with a menu interface, and (2) a session application submitting the formulated search query to a third party node (other than a party controlling the server application) that responds thereto by providing URLs. First, we consider the scope and meaning of the claimed recitation, “interaction sequence,” which must be given the broadest reasonable interpretation consistent with Appellant’s disclosure. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048 (Fed. Cir. 1997). We must, however, avoid importing limitations from Appellant’s Specification. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.”). We note that both the Examiner and Appellant appear to agree that the Specification does not provide an explicit definition for the claim recitation “interaction sequence.” As noted by both, the Specification merely indicates that a server may analyze a consumer’s local interaction or “click results” made using a remote control device. (Ans. 7, Reply Br. 2.) We thus construe an “interaction sequence2” according to its ordinary meaning, and consistent with Appellant’s Specification, as requiring at least a first and a second user interaction with the menu interface. Given this 2 See Webter’s New Riverside Dictionary, (1994), p. 1064 (defining a “sequence” as a related continuous series.) Appeal 2009-010048 Application 11/017,349 7 backdrop, we construe the disputed limitations set forth above in light of Appellants’ Specification as requiring the server application to formulate the search query based on the user’s first and second interaction with the menu interface, whereafter the search query is submitted to a third party node not controlling the server application. We conclude that the Examiner’s interpretation of an “interaction sequence” as “any user’s action on an interface” is unreasonably broad since it fails to necessarily include at least two instances of the user interaction with the interface. The disclosed user’s interaction in Kelts merely requires the user to select one of the hierarchically structured items on the map in order for the query task to cause an associated pop text to appear next to the selected item. (FF. 1.) While it would seem plausible that the query task could also generate pop up text for more than one user interaction with items in the hierarchically arranged subcategories on the map upon which the user positioning a cursor thereupon (FF 1), such conjecture would be insufficient to support the rejection under an anticipation standard. Further, we find that while Kelts discloses that a presentation layer utilizes the user’s interaction to generate pop up text, and to subsequently retrieve the requested content associated therewith (FF. 1), the reference does not expressly or inherently disclose that the generated pop up text is a search query that is submitted to a third party node to retrieve the requested data. Additionally, while Kelts discloses a system for implementing the retrieval of data in response to receiving the user interaction with the interface (FF. 2), the reference fails to expressly detail Appeal 2009-010048 Application 11/017,349 8 how such implementation is to be made. We are left to speculate as to how such implementation could be rendered.3 Therefore, we find that Kelts’ disclosure simply fails to provide the necessary details to support the Examiner’s prima facie case under anticipation. It follows that Appellant has shown error in the Examiner’s anticipation rejection of claim 1. Since claims 2-15 also recite one or more of the disputed limitations shown to be deficient as discussed above, we find that Appellant has also shown error in the Examiner’s rejection of those claims for the same reasons set forth in our discussion of claim 1. V. CONCLUSION OF LAW Appellant has established that the Examiner erred in rejecting claims 1-15 as being anticipated under 35 U.S.C. § 102(e) by Kelts. VI. DECISION We reverse the Examiner’s rejections of claims 1-15. REVERSED Vsh 3 A possible implementation of the invention on this system could be as follows: upon receiving a user’s selection on the map to request content information associated therewith, the server (22) within the service center (12) identifies the selected map item, which it utilizes to generate a search query, which it forwards to a third party database (24) within the service center (12). Given the fact that Kelts’ disclosure substantially teaches the disputed limitations, the Examiner may have been able to establish a stronger prima facie case under an obviousness standard.