Ex Parte Lawrence

Board of Patent Appeals and Interferences

Apr 11, 2007

10247533 (B.P.A.I. Apr. 11, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEITH R. LAWRENCE
____________

Appeal 2007-0458
Application 10/247,533
Technology Center 2100
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Decided: April 11, 2007
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Before LANCE LEONARD BARRY, ALLEN R. MACDONALD, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2007-0458
Application 10/247,533

STATEMENT OF THE CASE
Appellant invented a distributed network browser viewable interface
for assisting users to more easily and quickly search on the internet.
Specifically, the interface includes a directory of displayed items and a drop
down menu with multiple selectable keywords. When a user selects a
keyword, at least one displayed item is highlighted based on the respective
relationship with the keyword. See generally Specification ¶¶ 0006-7.
Claim 1 is illustrative:
1. A distributed network browser viewable interface, comprising:
a directory of displayed items; and
a first drop down button relating to a search topic viewable on the
interface, the first drop down button having a respective drop down menu
capable of being actuated via the first drop down button, the drop down
menu having a plurality of selectable keywords;
wherein when one of the keywords is selected by a user, one or more
displayed items will be highlighted based on their respective relationships
with the selected keyword.

The Examiner relies on the following prior art references to show
unpatentability:
Yagasaki US 6,125,353 Sep. 26, 2000
Rebane US 6,539,392 B1 Mar. 25, 2003
(filed Mar. 29, 2000)
Coombs US 6,603,490 B1 Aug. 5, 2003
(filed Dec. 10, 1999)
Brown US 6,665,838 B1 Dec. 16, 2003
(filed Jul. 30, 1999)

B. Shneiderman, Dynamic Queries for Information Seeking, in Readings in
Information Visualization: Using Vision to Think, Stuart K. Card et al. eds.,
at 235-43 (1999) (“Card”).
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The Examiner’s rejections are as follows:
1. Claims 1-3, 6, and 24-28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yagasaki in view of Card.
2. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Yagasaki in view of Card and further in view of Brown.
3. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yagasaki in view of Card and further in view of Gennaro.
4. Claims 7-9, 11, 14, and 17-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Coombs in view of Rebane.
5. Claims 10 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Coombs in view of Rebane and further in view of
Brown.
6. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Coombs in view of Rebane and further in view of
Card.
7. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Coombs in view of Rebane and further in view of Gennaro.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

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OPINION
It is our view, after consideration of the record before us, that the
evidence relied upon and the level of skill in the particular art would have
suggested to one of ordinary skill in the art the invention set forth in the
claims on appeal. Accordingly, we affirm.
We first consider the Examiner’s rejection of claims 1-3, 6, and 24-28
under 35 U.S.C. § 103(a) as unpatentable over Yagasaki in view of Card. In
rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner
to establish a factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). In so doing, the Examiner must make the factual determinations set
forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966). If that burden is met, the burden then shifts to the Appellant to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding independent claims 1 and 24, the Examiner's rejection
indicates that Yagasaki teaches a “mall server” that enables users to search
for and buy desired products. According to the Examiner, Yagasaki
comprises essentially every claimed feature except for a directory of
displayed items such that when the user selects one of the keywords, one or
more displayed items is highlighted based on their respective relationships
with the selected keyword as claimed. The Examiner cites Card as teaching
displaying search results in a graphical user interface. The Examiner notes
that Card’s system displays a list of all items and highlights items within the
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list that satisfy the search criteria. The Examiner finds that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify Yagasaki’s system to display all stores within the screen and
highlight stores with products satisfying the search conditions as suggested
by Card (Answer 6-8).
Regarding independent claims 1 and 24, Appellant argues that the
prior art does not teach or suggest any process wherein when one of a list of
keywords is selected by the user, one or more displayed items will be
highlighted based on their respective relationships with the selected keyword
as claimed (Br. 6-8). The Examiner responds that Yagasaki and Card
collectively teach this limitation since (1) Yagasaki invokes a search query
by selecting a keyword from a drop down list, and (2) Card teaches
highlighting displayed items responsive to a query -- the highlighting being
based on the items’ respective relationships with selected search parameters
(Answer 21).
We will sustain the Examiner’s rejection of independent claims 1 and
24. At the outset, we note that the scope and breadth of these claims does
not preclude the teachings of Yagasaki alone. That is, we find that Yagasaki
actually anticipates claims 1 and 24. In this regard, Yagasaki discloses in
Fig. 7 a drop down menu 52b, 52ba comprising multiple selectable
“keywords” pertaining to a product category (e.g., “FOOD & DRINK,”
“FASHION,” “HOLIDAY SEASON,” etc.). When one of these keywords
is selected (e.g., “HOLIDAY SEASON” as shown in Fig. 8), the per-store
hit count screen 53 displays each individual store and the numbers of
products for each store (hit count) that match the selected product category
(Yagasaki, Fig. 8; col. 7, ll. 13-28).
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In our view, Yagasaki’s displaying the hit count associated with each
respective store in Fig. 8 fully meets “highlighting” one or more displayed
items based on their respective relationships with the selected keyword as
claimed giving the term “highlighting” its broadest reasonable interpretation.
For example, “Store B” is indicated as having the highest hit count (7) for all
stores satisfying the search conditions (i.e., “STORE B” is “highlighted” as
having the most products within the “HOLIDAY SEASON” category).
Our interpretation of “highlighting” fully comports with Appellant’s
specification. Significantly, Appellant’s specification notes that an example
of highlighting can include dropping the listing of merchants into another
web page (Specification ¶ 0043) – an example commensurate with the list of
stores in display area 53b in Fig. 8 of Yagasaki. In addition, the
specification indicates that forms of highlighting include, among other
things, “…any…change that will temporarily distinguish the merchant from
the other merchants on the web page” (Id.). In our view, indicating the
respective hit counts associated with each merchant in Fig. 8 of Yagasaki
would at least temporarily distinguish the stores having the most (e.g.,
“STORE B”) and the fewest (“STORE E”) products in the specified
category from the other stores in the list.
For at least these reasons, we conclude that Yagasaki fully meets all
limitations of independent claims 1 and 24 and therefore anticipates those
claims.1 We reach this conclusion since obviousness rejections can be based

1 We further note that the scope and breadth of at least independent claims 1
and 24 does not preclude the selective highlighting feature in an automated
search tool used by patent examiners and the public – the Examiner
Automated Search Tool (EAST). See generally
http://www.uspto.gov/web/offices/ac/ido/pssd (last visited Apr. 4, 2007)
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on references that happen to anticipate the claimed subject matter. In re
Meyer, 599 F.2d 1026, 1031, 202 USPQ 175, 179 (CCPA 1979).
Moreover, we sustain the Examiner’s obviousness rejection based on the
teachings of Yagasaki alone since we may rely on fewer references than the
Examiner in affirming a multiple-reference rejection under 35 U.S.C. § 103.
(noting that EAST is available to the public in the USPTO Public Search
Facility).

Specifically, in EAST, the user can select individual terms of a text search
query to highlight when displaying the search results. Such a feature enables
the user to dictate specifically which terms of the query will be highlighted
when reviewing the search results.

For example, for the text search query “CAT AND DOG,” the user can
select either search term (“CAT” or “DOG”) to highlight from a dropdown
menu. This selective highlighting feature is shown in a screenshot from
EAST as shown in Figure 1 below:

Figure 1: Screenshot from EAST Showing Selective Highlighting Feature
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In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA 1961); In re
Boyer, 363 F.2d 455, 458 n.2, 150 USPQ 441, 444 n.2 (CCPA 1966).
Notwithstanding this conclusion, we nevertheless agree with the
Examiner that the teachings of Card would have been reasonably
combinable with Yagasaki essentially for the reasons stated by the
Examiner. Appellant argues that Card -- a teaching tool designed to provide
insights to various relationships -- is non-analogous art since (1) the
reference is not in Appellant’s field of endeavor (searching and marketing
over the internet), nor is the reference reasonably pertinent to the problem
which Appellant is concerned (Br. 8-9). The Examiner argues that Card is
analogous art since (1) the claims are not limited to internet shopping or
marketing, and (2) even if they were, Card’s dynamic queries have interface
functionality similar to internet shopping applications. The Examiner adds
that Card’s dynamic queries are applicable to a wide variety of applications
requiring searching or querying, including internet shopping (Answer 21-
22).
We agree with the Examiner that Card constitutes analogous art.
"Two separate tests define the scope of analogous prior art: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed,
and (2) if the reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved." In re Bigio, 381 F.3d 1320, 1325, 72
USPQ2d 1209, 1212 (Fed. Cir. 2004).
First, Card’s viewable interface is in the same field of endeavor --
interfaces for viewing search results. In our view, Appellant’s field of
endeavor is not limited to searching and marketing over the internet, but
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involves a wide variety of viewable interfaces for displaying search results.
Moreover, the claims are hardly limited to internet searching and marketing.
But even assuming, without deciding, that Card is somehow not in the
same field of endeavor, Card nevertheless is reasonably pertinent to the
Appellant’s problem – namely, highlighting certain displayed items in a
search result set. We see no reason why Card’s teachings would not have
been reasonably pertinent to a wide variety of applications involving
displaying search result sets, including internet commerce applications.
Accordingly, Card constitutes analogous art.
Appellant also contends that the Examiner failed to provide the
requisite motivation to make the specific claimed combination. Specifically,
Appellant argues that there would be no apparent advantage in modifying
Yagasaki’s interface in view of Card (i.e., with slide controls or
highlighting) since Yagasaki’s interface already allows the user to ascertain
stores with products that satisfy the user’s search condition (Br. 9-10).
Appellant also notes even if Yagasaki were modified by the teachings of
Card, the skilled artisan would apply slide controls – a favored approach
over highlighting (Br. 10-11). Appellant further notes that Card teaches
away from highlighting since Card indicates that displaying only the items
matching the query (i.e., the “expand/contract” approach) is significantly
faster than highlighted displays (Br. 11).
The Examiner responds by noting that Yagasaki’s online mall
produces a list of merchants that satisfy specific search criteria, and Card
teaches highlighting certain items in a list of alphanumeric data in Figs. 6
and 7. Although the Examiner acknowledges Card’s teaching that the
expand/contract approach is faster than highlighting, the Examiner indicates
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that the reference nonetheless does not teach away from highlighting.
Specifically, the Examiner notes several benefits of using highlighting
including, among other things, providing more information in response to a
query and revealing the proportion of items satisfying a query (Answer 25-
28).
We agree with the Examiner that the teachings of Card would have
been reasonably combinable with Yagasaki essentially for the reasons stated
by the Examiner. In our view, in light of Card’s teaching of highlighting
matches with color or asterisks in the result sets in Fig. 6 and 7 (i.e.,
alphanumeric display), the skilled artisan would have reasonably been
motivated to highlight certain items in the displayed result sets in Yagasaki
with color or asterisks to at least more clearly distinguish certain displayed
items.
Although Card discloses using slide controls in some embodiments
and indicates that the expand/contract interface is faster in some instances,2
the reference nevertheless teaches highlighting matches in a result set with
color and asterisks. Even if we assume, without deciding, that slide controls
and the expand/contract technique are preferred approaches, it is well settled
that the teaching of a prior art reference is not limited to its preferred
embodiment. Pfizer, Inc. v. Apotex, Inc., No. 2006-1261, 2007 WL 851203,
at *18 (Fed. Cir. Mar. 22, 2007) (“‘[T]he fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered’”) (quoting Merck

2 Card indicates that the “statistically significant speed advantage” for the
expand/contract interface occurred only with medium-sized directories -- not
with smaller, one-screen directories (Card, paragraph bridging Pages 238
and 239).
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& Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843,
1846 (Fed. Cir. 1989)).
In short, we find ample motivation on this record for the skilled
artisan to have utilized highlighting as suggested by Card in Yagasaki’s
system. As the Examiner indicates, the skilled artisan would have
recognized the benefits of using highlighting including, among other things,
providing more information in response to a query and illustrating the
proportion of items satisfying a query.
For at least these reasons, we will sustain the Examiner’s rejection of
independent claims 1 and 24. Since Appellant has not separately argued the
patentability of dependent claims 2, 3, 6, and 25-28, these claims fall with
independent claims 1 and 24. See In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987); see also 37 C.F.R. § 41.37(c)(1)(vii).
We next consider the Examiner’s rejection of claims 4 and 5 under 35
U.S.C. § 103(a) as unpatentable over Yagasaki in view of Card and further
in view of Brown. We find that the Examiner has established at least a
prima facie case of obviousness of those claims that Appellant has not
persuasively rebutted. Specifically, the Examiner has (1) pointed out the
teachings of Yagasaki and Card, (2) noted the perceived differences between
these references and the claimed invention, and (3) reasonably indicated how
and why the references would have been modified to arrive at the claimed
invention (Answer 10-11). Once the Examiner has satisfied the burden of
presenting a prima facie case of obviousness, the burden then shifts to
Appellant to present evidence or arguments that persuasively rebut the
Examiner's prima facie case. Appellant did not persuasively rebut the
Examiner's prima facie case of obviousness, but merely noted that the
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addition of Brown fails to teach or suggest highlighting one or more
displayed items responsive to selecting a keyword as claimed as previously
argued in connection with independent claim 1 (Br. 7-8). For the reasons
previously discussed, however, the rejection is therefore sustained.
Likewise, we will sustain the examiner's rejection of claim 23 under
35 U.S.C. § 103(a) as unpatentable over Yagasaki in view of Card and
further in view of Gennaro. We find that (1) the Examiner has established at
least a prima facie case of obviousness for this claim (Answer 11-12), and
(2) Appellant has not persuasively rebutted the Examiner's prima facie case.
In this regard, Appellant merely noted that the addition of Gennaro fails to
teach or suggest highlighting one or more displayed items responsive to
selecting a keyword as claimed as previously argued in connection with
independent claim 1 (Br. 8). For the reasons previously discussed, however,
the rejection is therefore sustained.
We next consider the Examiner’s rejection of claims 7-9, 11, 14, and
17-22 under 35 U.S.C. § 103(a) as unpatentable over Coombs in view of
Rebane. Regarding independent claim 7, the Examiner’s rejection
essentially finds that Coombs discloses a distributed network browser
viewable interface with every claimed feature except for a drop down menu
having at least one selectable keyword as claimed. The Examiner cites
Rebane as disclosing this feature and concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
include a drop down menu in the website taught by Coombs to aid the user
in finding a merchant of interest (Answer 12-13).
Regarding independent claim 7, Appellant argues that the prior art
does not teach using a drop down menu working in concert with an interface
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where linking members are rotated between their respective positions at a
predetermined time (Br. 12-13). Appellant also contends that the Examiner
failed to provide the requisite motivation to make the specific claimed
combination (Br. 13-14). Additionally, Appellant argues that the
Examiner’s proposed combination would render the Coombs device
unsatisfactory for its intended purpose. Appellant emphasizes that Coombs’
purpose is to achieve equitable exposure of all names on the list to the
visitor. According to Appellant, culling or otherwise organizing the list
based on some parameter would defeat this purpose (Br. 14).
We will sustain the Examiner’s rejection of independent claim 7. We
agree with the Examiner’s thorough and cogent analysis on Pages 30-34 of
the Answer that the skilled artisan would have ample motivation on this
record to provide a drop down menu with at least one selectable keyword in
the web site listings of Coombs.
Coombs teaches an interface comprising a list of individuals and
companies that is divided over multiple screens that are rotated frequently
and periodically to more equitably expose the individuals and companies in
the list (Coombs, col. 1, ll. 55-63). Similarly, Rebane discloses a website
that comprises a list of merchants satisfying search criteria that is divided
over four screens as indicated at the bottom of Fig. 18. See Rebane, Fig. 18
(including links to Screens 2-4). Rebane also provides drop down menus to
search or find other categories or merchants (Rebane, col. 36, ll. 24-30; Fig.
18).
Given these collective teachings, we see no reason why the skilled
artisan would not have provided a drop down menu in the web page listings
of Coombs to at least provide an additional search capability for merchants
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of interest. We recognize that that if the Examiner’s proposed modification
renders the prior art unsatisfactory for its intended purpose, the Examiner
has failed to make a prima facie case of obviousness. See In re Gordon, 733
F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). But we fail to see how
providing an additional search tool on the displayed pages of Coombs would
somehow defeat or obviate Coombs’ screen rotation feature. In our view,
providing an additional search tool in Coombs’ system, such as a drop down
menu, would only enhance its capability. Moreover, we see no reason why
the skilled artisan would not have rotated the four screens of merchants in
Fig. 18 of Rebane in view of the teachings of Coombs to more equitably
expose the merchants listed among the four screens.
For at least these reasons, the collective teachings of Coombs and
Rebane amply teach or suggest all limitations of independent claim 7. Also,
there is ample motivation on this record to combine the references.
Therefore, the Examiner’s rejection of independent claim 7 is sustained.
Since Appellant has not separately argued the patentability of dependent
claims 8-22 with particularity, these claims fall with independent claim 7.
See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987); see also 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-28 is
affirmed.
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)(iv).
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AFFIRMED

ELD

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