Ex Parte Goodman et al

Board of Patent Appeals and Interferences

Apr 3, 2009

10844540 (B.P.A.I. Apr. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JOSHUA T. GOODMAN, CARL M. KADIE,
DAVID M. CHICKERING, DONALD E. BRADFORD,
and DANE A. GLASGOW
________________

Appeal 2008-2733
Application 10/844,540
Technology Center 2100
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Decided:1 April 3, 2009
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Before JAMES D. THOMAS, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, J., Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 45. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Invention
Appellants’ invention relates to machine learning techniques to
automatically fill one or more fields across a diverse array of web forms.
Machine learning techniques are used to learn what data corresponds to
which fields or types of fields (Figure 1; Spec. 34, Abstract).

Representative Claim
1. An autofill system comprising:
a trained machine learning component that uses one or more
sets of inputs to facilitate autofilling a form field in a web-based form;
and
an autofill component that selectively enters appropriate data
into the first form field based at least in part upon information
generated by the machine learning component, the information is
generated as a function of a characteristic of at least a second field.

Prior Art and Examiner’s Rejections
The Examiner relies on the following references as evidence of
anticipation and unpatentability:
Light 6,192,380 B1 Feb. 20, 2001
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Shanahan 2003/0033288 A1 Feb. 13, 2003
Ortega 6,564,213 B1 May 13, 2003

Claims 1 through 18, 22 through 32, 34 through 37, 39 through 41,
and 43 through 45 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Ortega.2 All remaining claims on appeal stand rejected under
35 U.S.C. § 103. As evidence of obviousness as to claims 19 through 21,
33, and 42, the Examiner relies upon Ortega in view of Light. As to claim
38, the Examiner relies upon Ortega in view of Shanahan.

Claim Groupings
Pages 3 through 5 of the principal Brief on appeal indicate that
Appellants consider independent claim 1 as representative of the subject
matter of independent claims 1, [43], 44, and 45. We do so likewise. With
respect to the two rejections under 35 U.S.C. § 103, pages 5 and 6 of the
principal Brief on appeal rely upon the arguments with respect to the first
stated rejection of anticipation as applied to representative independent
claim 1.

ISSUE
Have Appellants shown that the Examiner erred in finding that the
feature of representative independent claim 1 of an autofill component that
selectively enters appropriate data into the first form field, where the

2 The Brief and Reply Brief incorrectly state that claims 1 through 45, all the
claims on appeal, stand rejected under 35 U.S.C. § 102 as being anticipated
by Ortega.
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information is generated as a function of a characteristic of at least a second
field, is anticipated by Ortega?

FINDINGS OF FACT
1. Appellants’ admitted prior art, at page 2, lines 10 through 24 of
the Specification, indicate that it was known that internet users may fill out
numerous forms and that certain prior art techniques “remember” previous
entries but only if the form is identical to previous form. It was also
recognized that prior art approaches included automated input of some data.
2. The Brief and Reply Brief make reference to what Appellants
consider definitions as set forth here:
The term "form field" refers to fields which can accept input from a
user and can display output as well; thus there can be different input
types and different output types. Different output types can
correspond to different field types. The term "input field" as used
herein can also refer to a field in which a user enters some data or
information. Depending on the context, input fields can refer to form
fields as well.

Spec. 7, ll. 13-18.
3. According to column 1, lines 42 through 50 of Ortega:
It is also known in the art to provide an autocompletion tool
that suggests completed text strings to the user as the user enters text.
For example, Microsoft's Internet Explorer browser automatically
suggests completed URLs as the user enters text in the URL field; and
the TextPlus™ for Palm tool suggests autocompletion words and
phases (based on frequency of use) as users enter text within Palm
Pilot™ applications.

4. Ortega’s Abstract succinctly states:
A system for facilitating online searches suggests query
autocompletion strings (terms and/or phrases) to users during the
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query entry process, wherein the suggested strings are based on
specific attributes of the particular database access system being
searched. A string extraction component associated with a database
access system, such as a web site of an online merchant, periodically
generates a dataset that contains the autocompletion strings for the
system. The datasets are preferably biased to favor the database items
that are currently the most popular (e.g., best selling or most
frequently viewed), and may be customized to particular users or user
groups. The datasets are transmitted to users' computing devices,
which may include handheld and other wireless devices that lack a
full keyboard. An autocompletion client which runs on the computing
devices in association with a browser uses the datasets to suggest the
autocompletion strings as users enter queries that are directed to the
database access system.

With respect to Ortega’s Figures 1 and 4, a string extraction
component extracts strings of data from a database which yields a dataset of
autocompletion strings which in turn feed a browser 54 that includes an
autocompletion client 50.
5. Figures 2A and 2B illustrate a web-based form characterized as
“amazon.com.” A drop-down box 62 is illustrated in association with a
search field 60 to which data is entered by the user. Ortega’s column 5, lines
22 through 28, state:
FIGS. 2(a) and 2(b) illustrate the general form of a user
interface that may be used by the autocompletion client 50 for both
PCs and handheld computing devices. In this example, as the user
enters a search query into a search field 60 of the Amazon.com web
site (by voice, stylus, etc.), the autocompletion client displays
suggested autocompletion terms and phrases in a drop-down box 62.

6. In referring to Figures 2A and 2B of Ortega, the Examiner
states, at the middle of page 4 of the Answer:
The drop box (first form field) is filled with information from the
database that is generated based on the search string (a characteristic)
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entered by the user in a search box (second field) of the web based
form).

Stated in a more comprehensive, understandable manner, the
Examiner restates this view at the top of page 20 of the Answer:
As can be seen in Figs. 2A and 2B of Ortega, the user interface
displays a web site (using Amazon as an example) with a search field
60 for the user to enter a search query and a drop-down box 62 where
suggested autocompletion strings will be displayed (Ortega: C5, L22-
36; Figs. 2A and 2B). Web sites are written in HTML code. HTML
Forms include form fields. Examples of form fields that can be added
to a form are text fields, password fields, check buttons, drop-down
menus, etc.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

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ANALYSIS
With respect to the positions set forth by the Appellants in the
principal and reply briefs, the Reply Brief improperly reproduces all the
arguments from the principal Brief with respect to the first stated rejection
and adds a single paragraph, at the middle of page 4 of the Reply Brief,
apparently responsive to the Examiner’s responsive arguments beginning at
page 17 of the Answer. The Examiner’s responsive arguments correctly
address all the initial arguments presented in the principal Brief.
Findings of Fact 1 and 3 appear to indicate that the subject matter of
independent claim 1 on appeal was known in the art because the artisan
would well appreciate that the prior art had the ability to “remember” or
otherwise utilize a trained machine learning component to remember data
elements in search portions of a form field for use, when prompted,
according to subsequent data entries by the user. The claimed first form
field and second form field are not stated to be different form fields and are
not stated to be on the same or different forms. The Examiner’s views
expressed in Finding of Fact 6 are consistent with what the artisan would
understand from the operation of Ortega’s system in Findings of Fact 4 and
5, particularly as they apply to the Examiner’s explanation with respect to
Figures 2A and 2B of Ortega. The Examiner’s views are considered to be
consistent with or otherwise within the extremely broad so-called definitions
of form field noted from the Specification in Finding of Fact 2.
Notwithstanding Appellants’ positions in the Brief and Reply Brief,
there appears to be no patentable distinction between the use of Ortega’s
drop-box 62, which the Examiner correlates to the first form field of
representative claim 1 on appeal, and the search box 60, which the Examiner
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correlates to the second field of representative claim 1 on appeal. As
discussed in Finding of Fact 4 and illustrated in Figures 1 and 3, Ortega’s
string extraction component 46, his dataset of autocompletion strings 30, and
his autocompletion client 50, provide a basis for filling the drop-down box
62 with data elements that are a functional characteristic of the search field
60 in accordance with the “learned” or otherwise stored data components
within the data access systems illustrated in these figures of Ortega that are
used to “facilitate” the autofilling of the forms from the web illustrated in
Figures 2A and 2B.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in finding that
Ortega anticipates the subject matter of the autofill component feature of
representative independent claim 1, including the so-called first and second
form fields recited therein.

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DECISION
The Examiner’s first stated rejection of certain claims on appeal under
35 U.S.C. § 102 is affirmed, as are the two separately stated rejections of the
remaining claims on appeal under 35 U.S.C. § 103. Claims 1 through 45, all
claims on appeal, are unpatentable.
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).

AFFIRMED

msc

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