Ex Parte Kraft

Patent Trials and Appeals Board

Jun 6, 2013

11239708 - (D) (P.T.A.B. Jun. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/239,708 09/29/2005 Reiner Kraft 50269-0656 4367
73066 7590 06/07/2013
HICKMAN PALERMO TRUONG BECKER BINGHAMWONG/Yahoo!
1 Almaden Boulevard
Floor 12
San Jose, CA 95113
EXAMINER
CHAU, DUNG K
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
06/07/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte REINER KRAFT
____________

Appeal 2011-000994
Application 11/239,708
Technology Center 2100
____________

Before MARC S. HOFF, DAVID M. KOHUT,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-20, which constitute all the claims pending in this application.
See App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and institute new grounds of rejection within the
provisions of 37 C.F.R. § 41.50(b).

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THE INVENTION
Appellant’s invention relates to querying, using a search engine, for
information about offline content. See Abstract. Claim 1, which is
illustrative of the invention, reads as follows:
1. A computer-implemented method of providing
information about displayed content, the method
comprising:
establishing an association between one or more words
and query terms related to visual content displayed
on a non-web page medium;
wherein the visual content displays the one or more
words and a service indicator that identifies a
service;
wherein the visual content does not display the query
terms;
receiving, from a user that viewed the visual content as
displayed on the non-web page medium, and
through a user interface provided by a service
provider that provides the service, user input that
indicates the one or more words;
in response to receiving the user input, determining that
the one or more words are associated with the
query terms; and
in response to determining that the one or more words are
associated with the query terms, submitting the
query terms to a search engine as at least part of a
search query;
wherein, in response to the search engine receiving the
query terms, the search engine determines multiple
search results, dynamically generates a ranked list
of the search results based on the relevance of the
search results to the query terms, and returns the
ranked list of search results.

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THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Perkowski US 6,064,979 May 16, 2000
Wysocki US 2004/0158852 A1 Aug. 12, 2004
Sung US 2006/0195382 A1 Aug. 31, 2006
(filed Nov. 4, 2003)
Tajima US 2007/0220520 A1 Sept. 20, 2007
(filed Aug. 2, 2002)
Wang US 2007/0282797 A1 Dec. 6, 2007
(filed Mar. 31, 2004)
Claims 1, 3-7, 10, 11, 13-17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Perkowski and Wang. See Ans. 4-8.
Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Perkowski and Wysocki. See Ans. 9.
Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Perkowski and Tajima. See Ans. 9-10.
Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Perkowski and Sung. See Ans. 10-11.

PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). “[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
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obvious.” Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
When the only distinguishing factor between a method and the prior
art is the nature of information being manipulated, the invention is not
patentable unless the information has a “new and unobvious functional
relationship” with the otherwise known method. See King Pharm., Inc. v.
Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (quoting In re Ngai,
367 F.3d 1336, 1338 (Fed. Cir. 2004)). For example, if the invention is no
more than using a computer to facilitate manipulating information that
previously would have been manipulated by less efficient means (e.g.,
manually), “the nature of the information being manipulated does not lend
patentability to an otherwise unpatentable computer-implemented product or
process.” Ex partes Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential). Similarly, a limitation that merely informs a user of the
benefits of performing the remainder of the method is not functional. See
King Pharm., 616 F.3d at 1279; In re Huai-Hung Kao, 639 F.3d 1057, 1072-
73 (Fed. Cir. 2011). Cf. Ngai, 367 F.3d at 1339 (addition of a set of written
instructions to an otherwise known kit did not distinguish the claimed kit
from the prior art).

ANALYSIS
REJECTION OF CLAIMS 1, 3-7, 10, 11, 13-17, and 20
UNDER 35 U.S.C. § 103(a)
Claims 1 and 3-7, 11, and 13-17
The Examiner finds that Perkowski teaches each limitation of claim 1
except for “wherein, in response to the search engine receiving the query
terms, the search engine determines multiple search results, dynamically
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generates a ranked list of the search results based on the relevance of the
search results to the query terms, and returns the ranked list of search
results,” which the Examiner finds is taught in Wang. See Ans. 4-6.
Perkowski teaches a technique for researching product information on
the Internet that includes inputting a universal product number (“UPN”),
universal product code (“UPC”), trademark, or the like into a search tool at
an Internet Product/Service Information (“IPSI”) website, which returns one
or more uniform resource locators (“URL”) that reference web pages or
documents with information about the product. See Perkowski, col. 3, ll. 45-
54; col. 4, ll. 5-22; col. 8, ll. 37-67. Wang teaches a query system that
generates an implicit query based on context acquired from observing a
user’s behavior, performs the query on a search engine (e.g., Google), and
returns a ranked list of results. See Wang, ¶¶ 0068-69, 0072, 0082-83.
Appellant contends that the Examiner has not sufficiently explained
how Perkowski could be modified with Wang’s teaching, and accordingly
interprets the Examiner’s combination of Perkowski and Wang essentially to
be Perkowski and Wang snapped together. See App. Br. 6. In other words,
the URL that is output by Perkowski’s IPSI website is fed as an input to
Wang’s search engine, which returns results ranked by relevance to the
URL. See id. With that understanding, Appellant contends that such a
combination would not return useful results, because the URLs themselves
are unlikely to contain terms that will occur in search results that are relevant
to the product Perkowski’s user is searching for. See id.
In response, the Examiner disagrees with Appellant’s characterization
of the rejection. Instead, the Examiner finds that Perkowski teaches that, in
response to a query, the IPSI website returns a list of URLs organized
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according to the information subfield classifications shown in Figure 2A2.
See Ans. 11-12 (citing Perkowski, col. 19, ll. 12-55). Applying the teaching
of Wang, one of ordinary skill would dynamically rank the URLs according
to relevance. See id. We see no error in these findings. As the Examiner
finds, Perkowski’s IPSI website returns a web page with multiple search
results based on the receipt of query terms. Applying the teaching of Wang
to dynamically rank those results according to relevance to the query terms
(e.g., as informed by contextual events or user behavior, see Wang, 0068-69,
0072) would be no more than the predictable use of prior art elements
according to their established functions–i.e., an obvious improvement. See
KSR, 550 U.S. at 417.
Moreover, we do not view the Examiner’s combination as requiring
the output of Perkowski to be plugged into to the input of Wang, as
Appellant suggests (App. Br. 6).
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what
the combined teachings of the references would have suggested
to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Here, the
Examiner applies Wang’s teaching of ranking based on relevance to
Perkowski’s teaching of returning a list of results. For the first time in the
Reply Brief, Appellant argues that there is no way to modify Perkowski to
cause it to determine which URL’s are more relevant to a UPC/UPN because
“Perkowski’s URLs are statically associated with the 12-digit numbers
instead of being dynamically determined based on the extent to which the
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resources to which they refer contain query terms.” Reply Br. 7. However,
this fails to recognize Wang’s teaching of using context (e.g., “previous
events”) to rank results based on relevancy. See Wang, ¶ 0082.
Appellant also argues that there would be no motivation to combine
Perkowski and Wang because Perkowski’s search only returns one result, a
single URL, which would not need to be ranked. See App. Br. 6. However,
as found by the Examiner (Ans. 11-12), Perkowski teaches returning a list of
URLs, for example organized according to the structure shown in Figure
2A2. See Perkowski, col. 12, ll. 20-64; col. 19, ll. 34-37.
Appellant also contends that Perkowski and Wang do not teach “a
service indicator that identifies a service.” See App. Br. 7. Claim 1 recites
“visual content displayed on a non-web page medium.” According to the
Specification, “‘non-web page’ content” can include any medium that is not
a web page, e.g., newspapers, magazines, and billboards. Spec. ¶ 0020.
That “visual content” includes “one or more words” and “a service indicator
that identifies a service.” Claim 1. Thus, according to claim 1, a user views
visual content (e.g., in a newspaper) that includes a set of words (e.g., an
advertisement about a music player) alongside a service indicator (e.g., an
icon such as “Y!Q” that represents a search engine from Yahoo!), invokes
this search engine using his browser, and enters the set of words into the
search engine. See Spec. ¶¶ 0020-22.
According to Appellant, Perkowski does not display visual content
that includes one or more words (e.g., a UPC or a trademark) juxtaposed
with a service indicator that identifies a service, such as a search engine,
with which a user could search for the one or more words. See App. Br. 7-8.
In short, Appellant argues that a user viewing a UPC or trademark (e.g., in a
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product manual) would not also observe a service indicator that would
identify the IPSI website. See App. Br. 8-10.
We conclude that “a service indicator that identifies a service” lacks a
new and nonobvious functional relationship with the rest of claim 1 and thus
does not distinguish claim 1 from Perkowski and Wang. See King Pharm.,
616 F.3d at 1279. For example, the service indicator does not functionally
change the otherwise known search engine recited in claim 1. See Ex parte
Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative). We note that
“[d]escriptive material is not functional merely because it results in different
outputs when acted on by a computer program.” Nehls, 88 USPQ2d at 1888,
n.5. Here, the service indicator is akin to instructions or information
regarding the use of a particular search engine. See Huai-Hung Kao, 639
F.3d at 1072-73; Ngai, 367 F.3d at 1339. In other words, informing a user
about the benefits of performing a search using a particular service in no
way transforms the process of performing the search. See King Pharm., 616
F.2d at 1279 (“Informing a patient about the benefits of a drug in no way
transforms the process of taking the drug with food.”).
In reply, Appellant raises the additional arguments that the visual
content must not contain the query terms themselves, see Reply Br. 1-3, and
that the “one or more words” must be “separate and distinct from the
service indicator,” Reply Br. 3-4. First, these arguments could have been,
but were not raised in the Appeal Brief; accordingly they have been waived.
See, e.g., Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”). Second, Appellant has not
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persuasively shown that the “one or more words” and “query terms”
functionally change the otherwise known search engine of claim 1, other
than that different inputs will result in different outputs. See Curry, 84
USPQ2d at 1274; Nehls, 88 USPQ2d at 1888, n.5. Thus, Appellant’s
arguments are also unpersuasive.
Also in reply, Appellant argues that Perkowski’s user interface is not
provided by the same service provider that provides the service indicated by
the service indicator. See Reply Br. 4-5. However, as explained above, we
conclude that the service indicator constitutes non-functional descriptive
material, and thus does not serve to distinguish claim 1 from Perkowski and
Wang.
In sum, Appellant has not persuaded us of error in the Examiner’s
conclusion of the obviousness of claim 1. Accordingly, we sustain the
rejection of claim 1 and claims 3-7, 11, and 13-17 not argued separately with
particularity.

Claims 10 and 20
Independent claim 10 is similar to claim 1. Appellant’s opening brief
challenges the Examiner’s rejection of claim 10 for substantially the same
reasons as claim 1, namely, (1) Perkowski only returns one result; thus there
is no legitimate reason to modify it (per Wang) to rank results; and (2)
neither Perkowski nor Wang teaches “a service indicator that identifies a
service.” See App. Br. 10-11. For the reasons given for claim 1, we find
these arguments unpersuasive.
In reply, Appellant contends that the URLs returned by Perkowski’s
IPSI website do not refer to documents that contain the UPC number entered
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as the query, and thus do not “each contain at least one query term that is
specified by the search-limiting criteria.” Reply Br. 5-6. First, this
argument could have been, but was not raised in the opening Brief, and thus
is waived. See Borden, 93 USPQ2d at 1474. Second, it is unpersuasive. As
the Examiner finds, a trademark can be entered as a search term into
Perkowski’s IPSI website. See Ans. 4. It is a matter of logic and common
sense that the URLs returned by Perkowski’s search likely would refer to
documents that include such trademarks. See Perfect Web Technologies,
Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“[A]n analysis
of obviousness . . . may include recourse to logic, judgment, and common
sense available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion.”).
Accordingly, we sustain the rejection of claim 10 and claim 20, which
was not argued separately with particularity.

REJECTION OF CLAIMS 2 AND 12 UNDER 35 U.S.C. § 103(a)
Claim 2 depends on claim 1 and claim 12 incorporates the limitatinos
of claim 1. While the Examiner rejects claim 1 over Perkowski and Wang,
the Examiner rejects claims 2 and 12 over Perkowski and Wysocki, with no
mention of Wang. See Ans. 9. Thus, the rejection of claims 2 and 12 does
not address the limitation “wherein, in response to the search engine
receiving the query terms, the search engine determines multiple search
results, dynamically generates a ranked list of the search results based on the
relevance of the search results to the query terms, and returns the ranked list
of search results” of claim 1.
Accordingly, we do not sustain the rejections of claims 2 and 12.
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REJECTION OF CLAIMS 8, 9, 18, AND 19 UNDER 35 U.S.C. § 103(a)
The Examiner rejects claims 8 and 18 over Perkowski and Tajima, see
Ans. 9-10, and rejects claims 9 and 19 over Perkowski and Sung, see Ans.
10-11. Although these claims depend on or incorporate the limitations of
claim 1, neither rejection includes Wang. Thus, like the rejection of claims
2 and 12, the rejections of claims 8, 9, 18, and 19 do not address the
limitation “wherein, in response to the search engine receiving the query
terms, the search engine determines multiple search results, dynamically
generates a ranked list of the search results based on the relevance of the
search results to the query terms, and returns the ranked list of search
results” of claim 1.
Accordingly, we do not sustain the rejections of claims 8, 9, 18, and
19.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Claims 2, 8, 9, 12, 18, and 19 are rejected on new grounds of rejection
under 35 U.S.C. § 103(a).

Claims 2 and 12
We reject claims 2 and 12 under 35 U.S.C. § 103(a) as obvious over
Perkowski, Wang, and Wysocki.
Claim 2 depends on claim 1; claim 12 claims a computer readable
medium that carries instructions to cause a processor to perform the steps of
claim 2’s method. Perkowski and Wang teach each limitation of claim 1 for
the reasons given in the Examiner’s rejection of claim 1, see Ans. 4-7, and as
further informed by our analysis above. The Examiner finds that the
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additional limitation of claim 2 is taught in Wysocki. See Ans. 9. While
Appellant contends that neither Perkowski nor Wysocki teaches all the
limitations of claim 1, Appellant does not challenge the Examiner’s finding
that Wysocki teaches the additional limitations of claims 2 and 12. See App.
Br. 12-13. Thus, for the reasons given by the Examiner, see Ans. 9, we find
that Wysocki teaches these additional limitations and conclude that claims 2
and 12 would have been obvious over Perkowski, Wang, and Wysocki.

Claims 8 and 18
We reject claims 8 and 18 under 35 U.S.C. § 103(a) as obvious over
Perkowski, Wang, and Tajima.
Claim 8 depends on claim 1; claim 18 claims a computer readable
medium that carries instructions to cause a processor to perform the steps of
claim 8’s method. Perkowski and Wang teach each limitation of claim 1 for
the reasons given in the Examiner’s rejection of claim 1, see Ans. 4-7, and as
further informed by our analysis above.
Claim 8 adds “temporarily renting, to an interested entity, rights to
display the one or more words in conjunction with the service identifier for a
specified period of time.” The Examiner finds that the additional limitation
of claim 8 is taught in Tajima, which teaches leasing business software for a
specified period of time. See Ans. 9-10.
Appellant contends that leasing computer software is not renting the
rights to display words. See App. Br. 12. However, Appellant does not
further explain the distinction. Appellant also argues that Tajima does not
teach a lease being associated with a service identifier. See App. Br. 12.
However, claim 8 does not recite associating rights with the service
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identifier; it simply claims renting the rights to display the one or more
words along with the service identifier. Moreover, as we explained above,
the “service identifier” and “one or more words” of claim 1 are non-
functional descriptive matter. We fail to see how renting the rights to
display printed matter that does not functionally affect the search process
can patentably distinguish claims 8 and 18 from the prior art. In any case,
the Examiner has shown that renting rights is a well-known business strategy
that could be predictably applied to the teachings of Perkowski and Wang.
See Ans. 9-10. Appellant has not persuasively shown that this is erroneous.
Accordingly, for the reasons given for claim 1, above, and the
additional reasons given by the Examiner, see Ans. 9-10, we conclude that
claims 8 and 18 would have been obvious over Perkowski, Wang, and
Tajima.

Claims 9 and 19
We reject claims 9 and 19 under 35 U.S.C. § 103(a) as obvious over
Perkowski, Wang, and Sung.
Claim 9 depends on claim 1; claim 19 claims a computer readable
medium that carries instructions to cause a processor to perform the steps of
claim 9’s method. Perkowski and Wang teach each limitation of claim 1 for
the reasons given in the Examiner’s rejection of claim 1, see Ans. 4-7, and as
further informed by our analysis above.
Claim 9 adds “auctioning, to one or more interested entities, rights to
display the one or more words in conjunction with the service identifier.”
The Examiner finds that the additional limitation of claim 8 is taught in
Sung, which teaches an Internet-based auction system. See Ans. 10-11.
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Appellant argues it is improper to infer that Sung teaches auctioning a
right to display words in conjunction with a service identifier, and further
argues that a right to display words is missing entirely from Sung. See App.
Br. 12-13. However, as with renting, we fail to see how auctioning the
rights to display printed matter that does not functionally affect the search
process can patentably distinguish claims 9 and 19 from the prior art.
Moreover, the Examiner has shown that an Internet auction is a well-known
business strategy that could be predictable applied to the teachings of
Perkowski and Wang. See Ans. 10-11. Appellant has not persuasively
shown that this is erroneous.
Accordingly, for the reasons given for claim 1, above, and the
additional reasons given by the Examiner, see Ans. 10-11, we conclude that
claims 9 and 19 would have been obvious over Perkowski, Wang, and Sung.

ORDER
The decision of the Examiner to reject claims 1, 3-7, 10, 11, 13-17,
and 20 is affirmed. The decision to reject claims 2, 8, 9, 12, 18, and 19 is
reversed.
We enter new grounds of rejection for claims 2, 8, 9, 12, 18, and 19
under 35 U.S.C. § 103(a).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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