Ex Parte Ippili et al

Patent Trial and Appeal Board

Aug 18, 2014

11309058 (P.T.A.B. Aug. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHANDRA SEKHAR IPPILI, AMIT KUMAR TRIVEDI,
SATYASRI PRABHAKAR MANTRIPRAGADA, and RAJESH VEMULA
____________

Appeal 2011-009536
Application 11/309,058
Technology Center 2100
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1–21 (App. Br.
2).2 Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The Real Party in Interest is Oracle International Corporation (App. Br. 2).
2 Pending claims 22–49 stand withdrawn from consideration (App. Br. 2;
Ans. 2).
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STATEMENT OF THE CASE
The claims are directed to a method of enabling a user to manage a
plurality of files, wherein each of said plurality of files belongs to a
corresponding one of a plurality of directories. Independent claims 1, 5, 11,
and 16 are representative and are reproduced in the Claims Appendix of
Appellants’ Brief.
Claims 1–4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Takeda3 and Haacke.4
Claims 5, 6, 8–13, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Takeda and Cone.5
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Takeda, Cone, and Haacke.
Claims 9 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Takeda, Cone, and Savitch.6
Claims 16–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cone and Masters.7
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

3 Takeda, US 2004/0177067 A1, Sept. 9, 2004.
4 Haacke et al., US 2004/0068521 A1, Apr. 8, 2004.
5 Cone et al., US 2006/0026147 A1, Feb. 2, 2006.
6 Walter Savitch, Problem Solving with C++ The Object of Programming,
645–648 and 918 (3rd ed., publication date unknown and undisputed).
7 Masters, US 7,058,624 B2, June 6, 2006.
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FACTUAL FINDINGS (FF)
FF 1. Takeda suggests a “directory search method for more efficient search
of a specific directory” (Takeda 1: ¶ [0010]).
FF 2. Takeda’s directory searching method provides for the input of a
search string containing a directory or filename (see Takeda 3: ¶ [0050] – 4:
¶ [0057]; see generally Ans. 4–5).
FF 3. Examiner finds that Takeda fails to suggest a “depth limit,” within
the scope of Appellants’ claimed invention, and relies on Haacke to suggest
a “depth limit [that] is an integer” (Ans. 5).
FF 4. Examiner finds that Takeda fails to suggest “a search string
containing [a] plurality of lines of text; wherein the content of each of . . . [a]
set of files contains . . . [the] search string,” and relies on Figures 3 and 5 of
Cone to suggest a search string that is contained within “the content of each
of said set of files” (Ans. 7–8).
FF 5. Cone “relates to an adaptive search engine capable of enhancing the
relevance of search results by learning from user interaction with at least
partly filtered search results” (Cone 1: ¶ [0002]; see also id. at ¶ [0013]
(Cone “provides an adaptive search engine having a plurality of data items[8]
from one or more data sources stored in at least one database searchable by a
search query of a[t] least one keyword to produce a corresponding ranked
search result listing of data items”)).

8 Cone suggests that “the term ‘data items’ encompasses not only websites
and web pages but also any discrete searchable information item such as
images, downloadable files, specific texts, or any other electronically
classifiable and/or searchable data” (Cone 2: ¶ [0016]).
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FF 6. Cone’s Figures 3 and 5 are reproduced below:

Cone’s
FIG. 3 shows the set-up screen presented to a user to form a
search group (20) and comprises fields for a:
search group name (21);
description (22) of Search Group type, aim, or ethos (20);
search group (20) founder/moderator (23);
“important” key words [sic] (24);
“unimportant” keywords (25), i.e. keywords used to
exclude particular results from the search results listing; and
private (26) or public (27) Search Group classifications
check boxes.
(Cone 11: ¶¶ [0187] – [0193].)
Cone’s FIG. 5 shows a
[S]creen configuration . . . in which a drop-down menu (40)
adjacent to the search input window (41) enables the user to
filter the results according to different settings, including any
search groups (20) linked to the user, or the user’s previous
search history (32), or the results of the user’s “friends” (42).
. . .
The embodiment in FIG. 5 shows the user having
membership of “snowboarding” and “Rugby” search groups
(43, 44) . . . with the FIG. 5 showing filtering by the “rugby”
search group (43). Also listed is a link to a website (50)
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“affiliated” to the search group, i.e. actively promoted by its
members through user submissions.
(Cone 12: ¶¶ [0205] –[0206].)
FF 7. Examiner finds that the combination of Takeda and Cone fails to
suggest ignoring “white space at the beginning and end of each of said
plurality of lines of text in determining . . . [the] set of files” that contains the
search string, and relies on Savitch to make up for this deficiency (Ans. 12;
see Savitch 647: 16–30 (“string no_punct”); see also Savitch 918: 16–24
(description of “prototype” “bool ispunct(char);” and “bool
isspace(char);”)).
FF 8. Examiner finds that “Cone does not explicitly disclose a data
indicating” feature that determines whether or not the search is to be
conducted only in a set of files displayed in the display and relies on Masters
to suggest “a data indicating” feature, such as the use of the Boolean
operators “AND, NOT, OR, [and] XOR” to associate the search terms (Ans.
14; see also Cone 5: ¶ [0073] (“Keyword filters such as Boolean operators
(e.g. AND, OR, NOT) are well-known filters used to refine search results
numbers”)).
ANALYSIS
The rejection over the combination of Takeda and Haacke:
Based on the combination of Takeda and Haacke, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious “to incorporate the feature of wherein said depth limit is an
integer, as disclosed in Haacke into Takeda[’s] system to provide the basics
for data sharing over the Internet” (Ans. 5). We are not persuaded.
The method of Appellants’ claim 1 requires, inter alia, the content of
each of a set of files resulting from a search contains the search string (see
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Appellants’ claim 1; see App. Br. 6). Takeda’s directory searching method
provides for the input of a search string containing a directory or filename
(FF 2). In sum, we agree with Appellants’ contention that, “one skilled in
the relevant arts would not reasonably equate the claimed ‘content’ of a file,
with the names of files or directories” (Reply Br. 1; see generally Spec. 6:
¶ [Para 52]). Examiner’s reliance on Haacke to suggest a “depth limit,”
within the scope of Appellants’ claimed invention, fails to make up for the
foregoing deficiency in Takeda (see FF 3).

The rejection over the combination of Takeda and Cone:
Appellants’ Declaration under 37 C.F.R. § 1.131:
We recognize, but are not persuaded by Appellants’ “declaration
under 37 CFR § 1.131 filed on 07 November 2008” and corresponding
contentions regarding the removal of Cone as an available reference on this
record (see App. Br. 9–10; Reply Br. 3; Appellants’ “Declaration by
Inventors Under 37 CFR 1.131” (Declaration)). Specifically, Appellants
contend that their Declaration provides evidence of an “actual reduction to
practice of the invention prior to the effective date of the [Cone] reference”
(App. Br. 9; see also Reply Br. 3). We are not persuaded.
37 C.F.R. § 1.131(b) requires (emphasis added):
The showing of facts for an oath or declaration under
paragraph (a) of this section shall be such, in character and
weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the invention
prior to the effective date of the reference coupled with due
diligence from prior to said date to a subsequent reduction to
practice or to the filing of the application. Original exhibits of
drawings or records, or photocopies thereof, must accompany
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and form part of the affidavit or declaration or their absence
must be satisfactorily explained.
At best, Appellants’ Declaration and associated evidence suggests that
some type of software was contemplated, tested, and reported out at an
internal meeting (see, e.g., Declaration 2: ¶ 5 (“Some time prior to 2nd
August 2005, we had developed a software, which upon execution, made at
least the features of independent claims 11 and 16 operative. The software
was referred to as ‘ATCF Replace Star Tool’”)). There is, however, no
evidence on this record that the software contemplated, tested, and reported
out corresponds to the subject matter of Appellants’ claimed invention as it
now stands before this panel for review. Appellants also failed to explain
why such evidence was not made of record. Therefore, we are compelled to
agree with Examiner’s finding that Appellants’ Declaration fails to provide a
sufficient evidentiary basis to support the removal of the Cone reference as
prior art on this record (see generally Ans. 17–21).

Claims 5, 6, and 8–10:
Based on the combination of Takeda and Cone, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious “to incorporate the features as disclosed in . . . Cone into
Takeda[’s] system to organize and present[] . . . [a] database search result by
a graphical user interface” (Ans. 8).9

9 We recognize Examiner’s reference to a “Holbrook” document (Ans. 8).
Examiner’s statement of the rejection makes no reference to “Holbrook”
(see id. at 7). In addition, the “Evidence Relied Upon” section of
Examiner’s Answer fails to identify a “Holbrook” document (see id. at 3).
Therefore, we find Examiner’s reference to a “Holbrook” document to
represent a typographical error.
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The method of Appellants’ claim 5 requires, inter alia, the content of
each of a set of files resulting from a search contain the search string,
wherein the search string contains a plurality of lines of text (see Appellants’
claim 5; see App. Br. 10). Claims 6 and 8 depend directly from claim 5.
Examiner failed to establish that Cone’s reference to “keywords” includes a
search string containing a plurality of lines of text (see App. Br. 10; see also
FF 6).

Claims 11–13 and 15:
Unlike claim 5, Appellants’ claim 11 does not require the search
string to contain a plurality of lines of text. Appellants specifically request
that “the rejection of claim 5 [and its dependents] [c]laims 6, 8, 9 and 10” be
overturned (App. Br. 10–11). Appellants do not, however, comment on the
rejection of claim 11 and its dependent claims 12, 13, and 15 (see id.).
Based on the combination of Takeda and Cone, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious
[T]o incorporate the feature of wherein the content of each of
said set of file[s] does not contain said search string, as
disclosed in Cone into Takeda[’s] system . . .[, which is]
capable of enhancing the relevance of search results by learning
from user interaction with at least partly filtered search results.
(Ans. 9–10.) As discussed above, we are not persuaded by Appellants’
Declaration and contentions regarding the removal of Cone as an available
reference on this record. Appellants make no other argument with regard to
claims 11–13 and 15. Because Appellants failed to identify an error in
Examiner’s prima facie case of obviousness we are compelled to affirm the
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rejection of claim 11. Because they are not separately argued, claims 12, 13,
and 15 fall with claim 11.

The rejection over the combination of Takeda, Cone, and Haacke:
Based on the combination of Takeda, Cone, and Haacke, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to incorporate the feature of wherein said depth
limit is an integer, as disclosed in Haacke into [the system suggested by the
combination of Takeda and Cone] . . . to provide the basics for data sharing
over the Internet” (Ans. 5).
Claim 7 ultimately depends from claim 5, discussed above. Examiner
failed to establish an evidentiary basis on this record to support a conclusion
that Haacke makes up for the foregoing deficiency in the combination of
Takeda and Cone as it relates to claim 5 (see FF 3).

The rejection over the combination of Takeda, Cone, and Savitch:
Based on the combination of Takeda, Cone, and Savitch, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious
[T]o incorporate the feature of identifying ignores white space
at the beginning and end of each of said plurality of lines of text
in determining said set of files, as disclosed in Savitch into
Takeda and Cone system to save time and [make it] easy for a
user when the user has typo errors with a white space at the
beginning or the end of the text while the user is searching.
(Ans. 12 and 13.)

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Claim 9:
Claim 9 depends from claim 5, discussed above. Examiner failed to
establish an evidentiary basis on this record to support a conclusion that
Savitch’s suggestion to remove punctuation makes up for the foregoing
deficiency in the combination of Takeda and Cone as it relates to claim 5
(see FF 7; see also App. Br. 11).

Claim 14:
Claim 14 ultimately depends from claim 11, discussed above. Having
found no deficiency in the rejection of claim 11, we are not persuaded by
Appellants’ contention that Savitch fails to make up for the deficiency in the
combination of Takeda and Cone as it applies to claim 11 (see App. Br. 11).

The rejection over the combination of Cone and Masters:
Based on the combination of Cone and Masters, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious “to incorporate . . . [a data indicating] feature as disclosed in
Master[s] into Cone[’s] system to allow users to select a plurality of
attribute[s] to employ in evaluating documents in a search” (Ans. 14).
For the reasons discussed above, we are not persuaded by Appellants’
Declaration and contentions regarding the removal of Cone as an available
reference on this record (Cf. App. Br. 12).
The method of Appellants’ claim 16 requires, inter alia, that (1) a set
of files are displayed in a display and (2) a user is enabled to specify a
search string and a data indicating whether or not the search is to be
conducted only in the set of files displayed in the display, wherein the user
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specifies the search string and the data associated with the set of files
presently displayed on the display (see Appellants’ claim 16).10 As
Appellants explain, claim 16 requires that “the search string is specified by
the user when (in the same duration) the files are displayed on the display
unit” (App. Br. 13). Examiner disagrees and finds no requirement in
Appellants’ claim 16 that enables a user to act on a set of files presently
displayed on the display (see Ans. 21 (“no where [sic] in the claim 16
indicated or required the search is specified by the user when (in the same
duration) the files displayed on the display”)). Instead,
Examiner relied on Cone for building a list of important and
unimportant data sources for a search group. . .this analysis may
be displayed to the search group members. . .results may be
used to compile a filter to exclude data sources of poor
relevance to that particular search group (par [0082]). Searches
denoting a list of keywords or search result listings associated
with the keywords ranked according to their rate of increase in
the searches ranking (par [0035]).
(Ans. 21–22 (alteration original).) In sum, Appellants have the better
argument. Examiner failed to establish an evidentiary basis on this record to
support a conclusion that the combination of Cone and Masters suggests the
subject matter of Appellants’ claimed invention.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to claims 11 and 14.
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Takeda and Cone is affirmed. Because they were
not separately argued claims 12, 13, and 15 fall with claim 11.

10 Claims 19–21 depend directly or indirectly from Appellants’ claim 16.
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The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Takeda, Cone, and Savitch is affirmed.

The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to claims 1–10 and 16–21.
The rejection of claims 1–4 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Takeda and Haacke is reversed.
The rejection of claims 5, 6, and 8–10 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Takeda and Cone is reversed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Takeda, Cone, and Haacke is reversed.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Takeda, Cone, and Savitch is reversed.
The rejection of claims 16–21 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Cone and Masters is reversed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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