Ex Parte Grim et al

Patent Trial and Appeal Board

Dec 12, 2013

11034492 (P.T.A.B. Dec. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CLIFTON E. GRIM III, CHRISTOPHER I. SCHMIDT,
and JOHN D. WILSON
____________________

Appeal 2011-006693
Application 11/034,492
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. INVENTION
According to Appellants, the invention generally relates to exposing
search indices and, more particularly, to exposing internal search indices to
Internet search engines (Spec. 1, ¶[0002]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A computer implemented method of facilitating
on-line searching of an information marketplace (IM),
comprising the steps of:
supplying, by an intellectual property producer,
intellectual property and IP metadata to the IM in a computer;
generating one or more metadata files having keyword
value pairs from indices to the intellectual property at a web
site;
storing the one or more metadata files as one or more
hyper-text markup files (HTML) in a directory accessible
through the Internet;
creating a master index file containing one or more links
to each of the one or more metadata files;
accessing at least one of the one or more metadata files
via the one or more links to locate the intellectual property for
commercial or private use; and
each of:
enabling, with the IM, the intellectual property
producer to advertise and sell the intellectual property; and
managing, with the IM, an interaction between a
buyer and seller of the intellectual property,
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wherein the indices are internal search indices
arranged within the IM and are exposed to search engines
external to the IM.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jones US 2002/0188841 A1 Dec. 12, 2002
Zee US 2003/0065642 A1 Apr. 3, 2003
Claims 1-36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zee and Jones.

II. ISSUE
The main issues before us are whether the Examiner has erred in
determining that the combination of Zee and Jones teaches or would have
suggested “storing the one or more metadata files as one or more hyper-text
markup files (HTML) in a directory accessible through the Internet” wherein
“the indices are internal search indices arranged within the IM and are
exposed to search engines external to the IM” (claim 1, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence:
Zee
1. Zee discloses permanently archiving intellectual property (IP)
in a digital archival system, wherein access to the archive system is through
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a variety of membership options including owners, users, and partners
(Abstract).
2. An IP-User obtains an access membership to the archival
system, specifies a desired or preferred level of access to the IP, and
purchases the corresponding access rights by paying the specified access fee
(p. 4, [0042]).
3. The database is searchable by IP-Members and has additional
entries for each IP including time stamps and meta-data to assist in searching
(p. 10, [0113]).
4. An IP search means enables a member IP-User to search the
archival system for a specific IP, wherein such search means can aggregate,
analyze, cross-reference and resolve citation and hyperlink information
from all archived IP and index each IP archived in the community using a
variety of information tags such as metadata, keywords, subject, title, etc.
(p. 11, [0129]).
5. Access to the IP and implementation of the searching means
incorporates an access file which assists in the retrieval of the IP, wherein
the access file comprises a collection of attachments such as text, audio,
video or HTML files attached to that IP by the IP-User (p. 12, [0138[).
6. The digital archive system allows for third party distributors to
join the community of IP-Members and agree to abide with the ethical and
operational guidelines thereof (p. 15, [0176]).
7. The indexed IP is searched using third party search engines (p.
24, claim 50).
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IV. ANALYSIS
Claims 1-28
As for claim 1, Appellants contend that “[t]here is no teaching or
suggestion that Zee’s access file 205b is saved as one or more HTML files,
rather the access file 205b is saved as the access file 205b containing an
HTML that is an attachment to a specific IP” (App. Br. 7). Thus, Appellants
contend that “Zee in view of Jones does not teach or suggest storing the one
or more metadata files as one or more hyper-test markup files (HTML), but
rather attaching an HTML file to the Examiner-designated metadata file (i.e.,
the access file)” (App. Br. 7-8).
As for claims 1, 10, 17, and 25, Appellants contend that since “the
Examiner [has] designated Zee’s links and keywords as the recited indices”
(App. Br. 8), “Zee in view of Jones does not explicitly or inherently teach or
suggest wherein the internal indices are exposed to search engines external
to the IM” as recited (App. Br. 9). In particular, although Appellants
concede that Zee discloses “searching the indexed intellectual property using
third party search engines” (App. Br. 11), Appellants contend that “the
search technology used for searching means 205 is well known in the art of
searching and Internet browser software, not that Internet browser software
external of the digital archive system 1 is capable of searching the internal
indices of the digital archive system” (App. Br. 9). Nevertheless, Appellants
contend that “there is no disclosure regarding any type of searching and/or
search engine, internal or external” (id.).
However, as to claim 1, the Examiner finds that Zee teaches and/or
suggests that the “access file/metadata file is an electronic file comprising
HTML files attached to the IP” which comprise the claimed HTML file
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(Ans. 19-20, emphasis omitted). Further, as to claims 1, 10, 17, and 25, the
Examiner finds that Zee teaches “the IP archived in the community is
indexed by use of variety of information such as metadata, keywords, etc.”
wherein the Examiner “interprets the indexed IP in the community as the
internal search indices” (Ans. 20, emphasis omitted). Consequently, the
Examiner finds that “[t]hese internal search indices are exposed to the third
party search engines which can be used for searching the indexed IP”
wherein the Examiner “interprets these third party search engines as the
external search engines” (id.).
We find the weight of the evidence supports the Examiner’s findings
and conclusions.
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). However, we do not read limitations from the Specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
As to claim 1, although Appellants argue that an access file
comprising an HTML file attached thereto cannot be an HTML file (App.
Br. 7-8), claim 1 does not provide any definition for an “HTML” file other
than one or more data files is stored “as” an HTML file. Thus, we give an
“HTML” file its broadest reasonable interpretation as any file that contains
HTML data. That is, claim 1 does not preclude a file that comprises HTML
data attached thereto.
Zee discloses storing an access file which assists in the retrieval of the
IP, wherein the access file comprises a collection of attachments such as
HTML files (FF 5). That is, Zee discloses storing an access file, wherein the
access file comprises HTML data. Thus, in view of our broadest reasonable
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interpretation of claim 1, Zee at the least suggests an HTML file, and as a
result, stores such file “as” an HTML file, as required by claim 1.
As to claims 1, 10, 17, and 25, although Appellants contend that Zee
does not disclose that the “Internet browser software external of the digital
archive system 1 is capable of searching the internal indices of the digital
archive system” (App. Br. 9), such language is not commensurate in scope
with the recited language of the claims. That is, the claims do not require
any such “searching” by external software, but rather, merely that the indices
are “exposed” the external search engines.
Zee discloses a digital archival system accessible by members of the
system (FF 1-2), wherein the database is searchable by members (FF 3) and
an IP search means enables a member to search the archival system for a
specific IP (FF 4). The search means can aggregate all archived IP and
index each IP archived in the community using a variety of information tags
(id.). Although Appellants contend “there is no disclosure regarding any
type of searching and/or search engine, internal or external” in Zee (App. Br.
9), Zee does disclose a search engine (FF 1-4). Therefore, we find no error
with the Examiner’s finding that Zees’ “IP archived in the community is
indexed by use of variety of information such as metadata, keywords, etc.”
or the Examiner’s interpretation of “the indexed IP in the community as the
internal search indices” (Ans. 20, emphasis omitted).
In Zee, the archive system allows for third parties to join the
community of members (FF 6). That is, the archive system is exposed to
third parties and search engines thereof.
Furthermore, even if the claims require “searching” by external
software, as Appellants contend (App. Br. 9), Zee discloses that the database
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is searchable by members (FF 3), wherein the indexed IP is searched using
third party search engines (FF 7). In fact, Appellants concede that Zee
discloses such indexed searching using third party search engines (App. Br.
11). We find that Zee at the least suggests that the archive system is
searchable by third party members. Thus, we agree with the Examiner that
Zee at the least suggests internal search indices “exposed to the third party
search engines which can be used for searching the indexed IP” (App. Br.
20, emphasis omitted).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claims 1, 10, 17, and 25 over Zee in further view
of Jones. Appellants do not provide arguments for claims 2-9, 11-16, 18-24,
and 26-28 separate from those of claims 1, 10, 17, and 25 from which they
respectively depend (App. Br. 10), and thus, claims 2-9, 11-16, 18-24, and
26-28 fall with claims 1, 10, 17, and 25.
Claims 29-36
As for claims 29-32, Appellants repeat that “Zee in view of Jones,
fails to explicitly or inherently disclose the internal search indices are
exposed to an external search engine” (App. Br. 10). Similarly, as for claims
33-36, Appellants merely repeat that “Zee in view of Jones, fails to
explicitly or inherently disclose the external search engines searching the
internal search indices” (App. Br. 12). However, as discussed above, we
find no error in the Examiner’s reliance on Zee in view of Jones for such
teachings.
Additionally, regarding claims 29-32, although Appellants concede
that Zee discloses “searching the indexed intellectual property using third
party search engines” (App. Br. 11), Appellants contend that Zee “states
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nothing with regard to how the indexed intellectual property would be
searched using third party search engines” (id.). However, such argument is
not commensurate in scope with the recited language of the claims. That is,
the claims do not require any search “using third party search engines” and
thus does not require “how” the IP would be searched. The claims merely
require that the indices are “exposed” to external search engines “such that
data is segregated into at least two types which include one layer of search
data specifically for the external search engines and another layer for users”
(claim 29).
We note that claim 29 does not recite any segregating step but rather
merely requires that the indices are “exposed” to the external search engines
“such that data is segregated into at least two types.” That is, claim 29 does
not positively recite the segregation of data or any structure to provide the
segregation, but instead the segregation is provided in a “such that” clause.
Given the language used, the “such that” clause is reasonably interpreted to
identify the resulting conditions that occur when the indices are exposed.
Thus, the “such that” clause at issue is akin to a “whereby” clause that
merely states the result of the exposed features of the claim. Our reviewing
court has concluded that “[a] ‘whereby’ clause that merely states the result
of the limitations in the claim adds nothing to the patentability or substance
of the claim.” Texas Instruments, Inc. v. International Trade Comm., 988
F.2d 1165, 1172 (Fed. Cir. 1993)(citation omitted).
We also note “one layer of search data specifically for the external
search engines” and “another layer for users” are merely the intended use the
data that is to be segregated. However, claim 29 does not define the “two
types” in terms of specific data content types. Therefore, the informational
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content of the data is not positively recited as altering or changing the way
the segregation is to be performed. That is, the informational content of the
data to be segregated is non-functional descriptive material that is not
accorded patentable weight. Non-functional descriptive material will not
distinguish the invention from the prior art in terms of patentability. See Ex
parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); see
also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and In re Gulack, 703
F.2d 1381, 1385 (Fed. Circ. 1983).
We conclude that claim 29 merely requires that the indices are
exposed to the external search engines. As discussed above, we find no
error with the Examiner’s finding that Zee at the least suggests such
teachings.
Furthermore, Zee discloses that access to the archive system is
through a variety of membership options, wherein, to obtain access
membership, a user specifies a desired or preferred level of access to the IP,
and purchases the corresponding access rights (FF 1-2). That is, Zee
discloses different levels of accessed data. Even if we were to give the
“such that” clause consideration, we find no error with the Examiner’s
finding that Zee at the least suggest indices that “include a layer for external
search engines” or the Examiner’s interpretation of “the access based on
membership data as layer for users” (Ans. 21).
Accordingly, we find that Appellants have also not shown that the
Examiner erred in rejecting claims 29-36 over Zee and Jones.

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V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-36 under 35 U.S.C. § 103(a) is
affirmed.
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

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