Ex Parte Kirkland et al

Board of Patent Appeals and Interferences

Jul 31, 2009

10324501 (B.P.A.I. Jul. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DUSTIN C. KIRKLAND
and DAVID BRUCE KUMHYR
____________
Appeal 2008-002592
Application 10/324,5011
Technology Center 2100
____________
Decided: August 3, 20092
____________
Before LEE E. BARRETT, JEAN R. HOMERE, and STEPHEN C. SIU,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-20. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We reverse.

1 Filed December 19, 2002, titled "Method, Apparatus, and Program
for Refining Search Criteria Through Focusing Word Definition."
2 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
The invention
The invention relates to a method, apparatus, and program for refining
search criteria. The search engine includes a refinement mechanism
including a directory of related terms, a directory of compound terms, and a
hierarchical data structure of refinement definitions. The mechanism then
identifies related terms, such as synonyms, antonyms, associated terms, and
alternate spellings, for individual terms in the search expression.
Spec. 6, ll. 8-15. These alternate terms are "enhancement terms," which, if
chosen, become part of the search expression.
The search engine may also perform a search using the enhancement
terms to obtain a preliminary result, "such as the number of hits, the
difference that may result, and the like" (Spec. 19, ll. 2-3), of what would
happen if the enhancement term replaced or was added to the corresponding
search term in the search expression. For example, in Figure 5F, the search
expression is "football trading cards." The enhancement terms are the list of
words and compound terms associated with each search term. The
preliminary results are numbers of hits listed next to each enhancement term
and indicate what would happen if the enhancement term replaced or added
to the search term in the search expression. "Thus, the user may determine
whether to select an enhancement term by evaluating the extent to which the
enhancement term broadens or narrows the search as the case may be."
Spec. 19, ll. 6-9.

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Representative claim
Representative claim 1 is reproduced below:
1. A method for refining a search expression, the method comprising:
receiving a search expression including at least a first search
term;
identifying at least a first enhancement term for the first search
term;
generating an enhancement interface including the search
expression forming a trunk of a graphical tree structure and a first
branch of the graphical tree structure including the at least a first
enhancement term associated with the first search term;
presenting the enhancement interface to a user, wherein the
enhancement interface includes a preliminary result of using the at
least a first enhancement term in the search expression; and
responsive to receiving a selection of a given enhancement term
from the first branch, forming an enhanced search expression
including the given enhancement term.

The reference

Hutchison US 2002/0161752 A1 Oct. 31, 2002

The rejections
Claims 1-20 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Hutchison.

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ISSUE
Based on Appellants' arguments, the sole issue is: Have Appellants
shown that the Examiner erred in finding that Hutchison teaches that "the
enhancement interface includes a preliminary result of using the at least a
first enhancement term in the search expression," as recited in independent
claims 1, 12, and 19?

PRINCIPLES OF LAW
"Anticipation requires the presence in a single prior art disclosure of
all elements of a claimed invention arranged as in the claim." Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).

FACTS
Hutchison
Hutchison describes an apparatus and method for searching. In
response to a user entering a keyword, the apparatus returns a first wordset
(which can be words or phrases) having a first lexical relationship with the
keyword and a second wordset having a second lexical relationship with the
keyword. The terms in the wordsets can be used in the creation of a search
string. Abstract.
The first wordset preferably includes a "hyponym" of the keyword.
¶ [0021]. A hyponym is a term that denotes a subcategory of a more general
class, e.g., children of the keyword. ¶ [0163].
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The second wordset preferably includes a "hyperonym" [sic,
hypernym] of the keyword. ¶ [0025]. A hypernym is a word that is more
generic than a given word, e.g., parents of the keyword. ¶ [0163].
Hutchison describes a user interface which displays the current search
terms, and wordsets of the words related to the search term. For example, a
user has evidently selected the category "Shopping" and subcategory "Food"
with a search term "Iceland" in Figure 2 to produce the search results screen
in Figure 4-1.
In Figure 4-1, the latest search term, "Iceland." is displayed at 26, the
"children" of Iceland are listed below in list 28, and "topics related to"
Iceland at the top include terms having the same parent. "A request is also
made to the web server which returns search results 36." ¶ [0220].

Specification
The Specification of the present application describes "preliminary
results" as follows with respect to Figure 5F:
Furthermore, the search engine may perform a search using the
enhancement terms to obtain a preliminary result. For example, the
search engine may replace or add the corresponding search term in the
search expression and obtain a result, such as the number of hits, the
difference that may result, and the like. The results number for each
enhancement term may be presented in the interface, as shown in
branches 552, 554, 556. Thus, the user may determine whether to
select an enhancement term by evaluating the extent to which the
enhancement term broadens or narrows the search as the case may be.
For example, including the term "pigskin" may broaden the search,
while replacing the term "football" with "professional football" may
narrow the search and replacing the individual terms "trading" and
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"cards" with the compound term "[trading cards]" may significantly
narrow the search.

Spec. 18, l. 30 to 19, l. 14.
Figure 5F shows "preliminary results" as number of hits in
parentheses following the search terms.

CONTENTIONS
Appellants argue that Hutchison does not disclose "the enhancement
interface includes a preliminary result of using the at least a first
enhancement term in the search expression," as recited in independent
claims 1, 12, and 19. Br. 13. It is argued that "preliminary results" are
defined in the Specification as results that indicate "the number of hits, the
difference that may result, and the like" from using the search expression.
Spec. 19, ll. 2-3. It is argued that a user may use the preliminary search
results to evaluate the extent to which using an enhancement term will
broaden or narrow the query, which is not disclosed by Hutchison. Br. 13.
The Examiner finds that "[w]hen the user refines the search (i.e.,
enhancement), the subsequent result is Figure 4, which includes the
preliminary results (item 36) shown on the enhancement interface
(Figure 4) . . . ." Supp. Exm'r Ans. 10 (differences in fonts omitted).
The Examiner finds that when the system performs a search based on
a search expression, the search results are "preliminary results":
The results that are returned are sorted based on relevance. In
performing (i.e. executing) queries, an ordinary person skilled in the
art of database and file management understands that the search
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engines are used to process queries. Furthermore, such artisans
understand that search engines compute the "number of hits, the
differences that may result, and the like", as cited in the Applicant's
specification, when determining the relevance of the result to the
search term, assigns a relevance score to that result, and display the
results in the order of relevancy. Hence, the nexus flows within the
prior art of record, where the limitations recited by the applicant are
indeed anticipated by Hutchison.

Supp. Exm'r Ans. 11.
The Examiner states that the Specification does not define
"preliminary results" because the terms "For example" and "such as" leave
the meaning open. Supp. Exm'r Ans. 12.
Appellants argue that "Figure 4-1 merely show search results of a
search comprising the initial search term ('Iceland') and the added
enhancement terms ('Food, Shopping')." Reply Br. 2. It is argued that the
search results are actual search results, and that "there is nothing
'preliminary' about the results in Hutchison." Id. It is argued that
preliminary results allows a user to evaluate the extent to which an
enhancement term broadens or narrows a search and thus determine whether
to use an enhancement term, which differs from actual results. Id.

ANALYSIS
It is not contested that Hutchison describes a "search expression,"
shown as "Shopping Food Iceland" in Figure 4-1, and an "enhancement
term," shown listed on the left in Figure 4-1, e.g., children terms 28. The
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question is whether Hutchison describes a "preliminary result of using the at
least a first enhancement term in the search expression."
The Specification states that a "preliminary result" is "a result, such as
the number of hits, the difference that may result, and the like" (Spec. 19,
ll. 2-3), which is presented as a "results number for each enhancement term"
(Spec. 19, l. 4). Using the "preliminary results," "the user may determine
whether to select an enhancement term by evaluating the extent to which the
enhancement term broadens or narrows the search as the case may be."
Spec. 19, ll. 6-9. We agree with the Examiner that the Specification does
not expressly define "preliminary result," and that the examples of number
of hits or differences are not limiting because of the terms "such as" and
"and the like." Nevertheless, the term "preliminary" has to be given weight.
"[E]very limitation positively recited in a claim must be given effect in order
to determine what subject matter that claim defines." In re Wilder,
429 F.2d 447, 450 (CCPA 1970). See also In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970) ("All words in a claim must be considered in judging the
patentability of that claim against the prior art."); Perkin-Elmer Corp. v.
Westinghouse Elec. Corp., 822 F.2d 1528, 1532 (Fed. Cir. 1987) (the court
can not ignore a plethora of meaningful limitations).
"Preliminary," an adjective, is defined as "coming before and usu.
forming a necessary prelude to something else." Webster's New Collegiate
Dictionary (G.&C. Merriam Co. 1977). Manifestly, a "final result" is not a
"preliminary" result because it does not come before anything. Each of the
search results shown in Figure 4-1 of Hutchison are a "final" result of a
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search expression "Shopping Food Iceland" since clicking on one of the
hyperlinks takes a user directly to an actual web site. While the results may
be "preliminary" or "intermediate" in the sense that the user may not have
finished the search, the results are final for the given search expression.
Moreover, the search results are in no way associated with the enhancement
terms shown listed on the left of Figure 4-1, as discussed below.
The Examiner's reasoning that "artisans understand that search
engines compute the 'number of hits, the differences that may result, and the
like', as cited in the Applicant's specification, when determining the
relevance of the result to the search term, assigns a relevance score to that
result, and display the results in the order of relevancy" (Supp. Exm'r
Ans. 11), is not persuasive as it appears to be based on a misunderstanding
of the claim language. The fact that search results are ranked based on some
sort of relevance criteria does not meet the claim limitation at issue.
Representative claim 1 calls for the enhancement interface to have a search
expression including a first search term and a first enhancement term
associated with the first search term, where "the enhancement interface
includes a preliminary result of using the at least a first enhancement term in
the search expression." The enhancement term is a suggested search term
that has not yet become part of the search expression, as evidenced by the
last limitation of "responsive to receiving a selection of a given enhancement
term from the first branch, forming an enhanced search expression including
the given enhancement term." It is not disputed that Hutchison describes
enhancement terms and that responsive to selecting an enhancement term,
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the enhancement term becomes part of the search expression. The
preliminary result is a "preliminary result of using the at least a first
enhancement term in the search expression," i.e., the results if the
enhancement term were to be used in the search expression, but before the
enhancement term is used in the search expression. There must be some
association between the "preliminary result" and the "enhancement term."
The search results in Figure 4-1 are for a search expression ("Shopping Food
Iceland") and are not associated with an enhancement term that may become
part of the search expression. Appellants have shown that the Examiner
erred in finding that Hutchison describes a "preliminary result," as claimed.

CONCLUSION
Appellants have shown that the Examiner erred in finding that
Hutchison teaches that "the enhancement interface includes a preliminary
result of using the at least a first enhancement term in the search
expression," as recited in independent claims 1, 12, and 19. Accordingly,
we reverse the rejection of claims 1-20 under 35 U.S.C. § 102(e).

REVERSED

llw

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