12579404 (P.T.A.B. Sep. 19, 2016)

Ex Parte Johnson et al

Patent Trial and Appeal BoardSep 19, 2016

12579404 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/579,404 10/14/2009 Brian M. Johnson 49845 7590 09/21/2016 SCHWEGMAN LUNDBERG & WOESSNER/EBAY P.O. BOX 2938 MINNEAPOLIS, MN 55402 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2043.751US1 8242 EXAMINER JOHNSON, JOHNESE T ART UNIT PAPER NUMBER 2168 NOTIFICATION DATE DELIVERY MODE 09/21/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): USPTO@SLWIP.COM SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN M. JOHNSON, BHARAT KUMAR VENKAT, JENNIFER M. DANTE, RAFFI TUTUNDJIAN, KRISTINE CHIN ARONSON, and RICHARD D. HENDERSON, Appeal2015-005321 Application 12/579,404 Technology Center 2100 Before BRUCE R. WINSOR, HUNG H. BUI, and AMBER L. HAGY, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claims 1-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 The real party in interest identified by Appellants is eBay Inc. App. Br. 2. Appeal2015-005321 Application 12/579,404 STATEMENT OF THE CASE Related Appeals Appellants identify the following appeals as related to the instant Appeal: Application Appeal 12/579,3982 12/579,4023 12/685,441 4 2014-004890 2013-010488 2015-000578 Notice of Appeal Decided Nov. 30, 2012 Feb. 13,2012 Mar. 17, 2014 Dec. 11, 2015 Dec. 11, 2015 Appeal pending The Invention Appellants' disclosed invention relates to "data communications and, more particularly, to ... search[ing] a data source based on compatibility with an application." Spec. i-f 1 (2nd occurrence). Claim 1, which is illustrative, reads as follows: 1. A method comprising: receiving a first query that includes keywords; using a data processor to identify at least one keyword in the first query as application information describing a first application; inferring remaining keywords in the first query as item information that describes a first item that a user is searching for on a network-based marketplace, the first item being a part that is compatible with the first application; and searching a data storage device, the searching including identifying a first listing on the data storage device as matched, the first listing including an item offered for sale on the network-based marketplace and including listing item information that matches the item information in the query, the 2 App. Br. 3. 3 App. Br. 3. 4 Communication Regarding Related Appeals and Interferences, filed Apr. 1, 2014 in Application 12/579,402. 2 Appeal2015-005321 Application 12/579,404 first listing further including listing application information that is matched based on application information. The Rejection Claims 1-20 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Piper et al. (US 2007 /0219982 Al; Sept. 20, 2007) ("Piper"). The Record Rather than repeat the arguments here, we refer to the Appeal Brief ("Br." filed Jan. 7, 2014) and the Specification ("Spec." filed Oct. 14, 2009) for the positions of Appellants and the Final Office Action ("Final Act." mailed June 6, 2013) and Examiner's Answer ("Ans." mailed May 8, 2014) for the reasoning, findings, and conclusions of the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Appeal Brief have not been considered and are deemed to be waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). ISSUE Claims 1-20 are subject to the same ground of rejection. Appellants' patentability arguments directly address only claim 1. Br. 8-12. Therefore, we select claim 1 as the representative claim, pursuant to our authority under 37 C.F.R. Â§ 41.37(c)(l)(iv). Accordingly, claims 2-20 stand or fall with claim 1. The issue presented by Appellants' contentions is as follows: Does the Examiner err in finding Piper discloses "identify[ing] at least one keyword in [a] first query as application information describing a first application[, and] inferring remaining keywords in the first query as item 3 Appeal2015-005321 Application 12/579,404 information that describes a first item ... , the first item being a part that is compatible with the first application" (the "inferring limitation"), as recited in claim 1? ANALYSIS The Examiner finds Piper discloses the inferring limitation. Final Act. 2-3 (citing Piper i-fi-172, 79). Appellants contend because Piper uses an automobile-part abbreviation dictionary to determine the "remaining term(s)" of the query, Piper does not disclose "inferring remaining keywords in the query as item information." See Br. 10-12. We agree with the Examiner's findings. A pertinent dictionary definition is: "inÂ· fer ... v.t. 1. to derive by reasoning; conclude or judge from premises or evidence . . . . 3. to guess; speculate; surmise." THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 978 (2nd ed. (unabridged) 1987). Therefore, the inferring limitation of claim l requires identifying one or more keywords of a query as application information, e.g., the make and model of a vehicle (see Spec. i1 4 7), and judging from that evidence that one or more of the remaining keywords of the query describe an item that is a compatible with the application, e.g., a replacement part for the identified vehicle (see id.). We note that the inferring limitation recites inferring remaining keywords as item identifiers; it neither recites nor precludes inferring the identity of a particular item from the item identifiers. Piper discloses a process for determining from a user input string (Piper i1 71, Figs. 7 (item 182), 8 (item 200) ) "which of the terms are for identifying the model or possible models of automobile, and which are for identifying the part or possible parts being sought" (Piper i1 72). Piper 4 Appeal2015-005321 Application 12/579,404 "first determine[ s] the vehicle model or possible models .... " (Piper i-f 72, Figs. 7 (item 184), 8 (item 202).) Piper further discloses "determin[ing] the automobile part or possible parts based on the remaining term(s)" (Piper i-f 79) of the user input string. In other words, Piper discloses drawing the inference that one or more of the terms of the user input string remaining after identification of the model of the automobile, i.e., the recited "application information," represents part information, i.e., the recited "item information." That Piper uses an "automobile-part abbreviation dictionary" (Piper i-f 79) to identify a specific part from the item information does not obviate the Examiner's finding that Piper discloses inferring remaining keywords as item information. We find no error in the rejection of representative claim 1 as anticipated by Piper. Accordingly, we sustain the rejection for anticipation by Piper of claim 1 and claims 2-20, which fall with representative claim 1. DECISION The decision of the Examiner to reject claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§Â§ 41.50(f), 41.52(b). AFFIRMED 5