Ex Parte Kogan et al

Patent Trials and Appeals Board

May 24, 2019

13470707 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/470,707 05/14/2012 David Kogan
26192 7590 05/29/2019
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
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.
16113-3579001 4846
EXAMINER
DAV ANLOU, SOHEILA
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
05/29/2019 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID KOGAN, NATHAN D. BEACH,
GEORGE A. MADRID, RACHEL J. GREY,
ARTHUR E. BLUME, DAVID A. CHARLTON,
GEORGE M. N. RUBAN, DIEGO ARIEL GERTZENSTEIN,
FRANCIS E. MARINO JR., KENNETH W. DAUBER,
HILARY B. HUTCHINSON, ROBERT E. LEWIS,
DAVID BLACK, and ANDREW J. MARTONE1
Appeal 2018-008407
Application 13/470,707
Technology Center 2100
Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-29, all the pending claims in the
present application (see Claims Appendix). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants name Google LLC as the real party in interest (App. Br. 1 ).
Appeal 2018-008407
Application 13/470,707
STATEMENT OF THE CASE
Appellants' invention generally relates to providing supplemental
image search results in response to detecting a user interest signal. See
Abstract. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method, comprising:
receiving, from a user device, a first search query input
comprising one or more characters;
receiving a first query suggestion from a query
suggestion service, the first query suggestion being a textual
query suggestion comprising characters and having been
generated based on the first search query input and being
different from the first search query input;
receiving a first set of image search results, each of the
image search results referencing an image responsive to the first
query suggestion;
providing the first set of the image search results and the
first query suggestion to the user device for display on the user
device, in response to the first search query input;
after providing the first set of image search results to the
user device, detecting, by a computer, a signal of user interest in
either of the first query suggestion or at least one image search
result in the first set of image search results, the detection of the
signal of user interest occurring only at or before a timeout
expiration and being prior to receiving a second search query
input subsequent to the first search query input; and
in response to detecting the signal of user interest and
prior to receiving the second search query input subsequent to
the first search query input, providing a second set of image
search results to the user device for concurrent display with the
first set of image search results previously provided to the user
device, the first set of image search results being unmodified,
and the second set of image search results being responsive to
the first query suggestion and each image search result in the
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Application 13/470,707
second set of image search results being different from each
image search result in the first set of image search results.
App. Br. 10 (Claims Appendix).
Appellants appeal the following rejection:
Claims 1-29 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Amacker (US 8,631,029 Bl, iss. Jan. 14, 2014) and
Strohman (US 2012/0047025 Al, pub. Feb. 23, 2012). Final Act. 2.
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Appellants contend Amacker and Strohman fail to teach or suggest the
following limitation of claim 1:
in response to detecting the signal of user interest ... ,
providing a second set of image search results to the user device
for concurrent display with the first set of image search results
previously provided to the user device, the first set of image
search results being unmodified, and the second set of image
search results being responsive to the first query suggestion and
each image search result in the second set of image search
results being different from each image search result in the first
set of image search results.
App. Br. 3-8; Reply Br. 1-4.
Appellants make two arguments that Amacker fails to teach or suggest
the above limitation. Appellants first contend, "in the first alternative for
Amacker, the second set of search results are a subset of the first set of
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Application 13/470,707
search results, and thus 'each image search result in the second set of image
search results' cannot be 'different from each image search result in the first
set of image search results."' App. Br. 4. On this point, the Examiner finds,
and we agree, that Amacker discloses "a second set of search results 306
may be displayed concurrently with the first set of search results 302." Ans.
5 ( quoting Amacker 6: 16-18). The Examiner further finds, and we agree,
that Amacker discloses, "In other embodiments, each selection of an item
can cause a new query to be executed such that each subsequent set of
search results can include content that was not selected and/or displayed
based on a previous query." Id. ( quoting Amacker 6:21-25). In other
words, while Amacker discloses an embodiment where a "second set of
search results can be a subset of the first set of search results" (Amacker
6: 18-19), Amacker also discloses another embodiment where the later
search results are different from the previous search results. Accordingly,
Appellants' first argument is unpersuasive.
Appellants next contend, "in the second alternative for Amacker, a
new query is executed, and thus the 'second set of image search results'
cannot be 'responsive to the first query suggestion' for which the first set of
image search results are responsive." App. Br. 4. Appellants' argument has
merit. However, the Examiner did not rely solely on Amacker for the
"second set of image results being responsive to the first query suggestion"
limitation. In the Advisory Action, the Examiner modifies the Final Action
by also citing Strohman for this limitation, finding that "Strohman teaches
... search results responsive to one of the query suggestions are sent to the
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client device and displayed." Adv. Act. 2 (quoting Strohman ,i 50)
( emphasis added).
Appellants respond that in Strohman "the 'search results responsive to
one of the query suggestions are sent to the client device and displayed' are
not described according to the claimed subsets." App. Br. 8. This argument
is unpersuasive because it is not commensurate with the scope of the claim;
i.e., the claim does not recite "subsets." Appellants also contend "the
'cached' search results [in Strohman] are not provided to the user device 'in
response to detecting the signal of user interest.' They are already present at
the user device." Id. This argument is also unpersuasive because the
Examiner relies on Amacker for the "in response to detecting the signal of
user interest" language. Final Act. 3. Appellants' arguments attacking
Amacker and Strohman in isolation do not persuasively rebut the underlying
factual findings made by the Examiner, which are based upon the combined
teachings and suggestions of the cited references. One cannot show non-
obviousness by attacking references individually, where the rejections are
based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
We note that although the Examiner's Answer does not substantively
discuss Strohman, "[a]n [E]xaminer's answer is deemed to incorporate all of
the grounds of rejection set forth in the Office action from which the appeal
is taken ( as modified by any advisory action and pre-appeal brief conference
decision), unless the [E]xaminer 's answer expressly indicates that a ground
of rejection has been withdrawn." 37 C.F.R. § 41.39(a)(l) (emphasis
added). Since the Examiner's Answer does not explicitly withdraw the
ground of rejection over Amacker and Strohman set forth in the Final Action
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as modified by the Advisory Action, and as the Appellants' arguments do
not persuasively distinguish over the Amacker-Strohman combination as
explained above, we sustain the Examiner's rejection of claim 1.
Appellants' arguments regarding the rejection of independent claims
12 and 23 rely on the same arguments as for claim 1, and Appellants do not
argue separate patentability for the dependent claims. See App. Br. 8. We
therefore also sustain the Examiner's rejection of claims 2-29. See 37
C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's § 103(a) rejection of claims 1-29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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