11024234 (B.P.A.I. Apr. 24, 2012)

Ex Parte Lu et al

Board of Patent Appeals and InterferencesApr 24, 2012

11024234 (B.P.A.I. Apr. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte QI LU, JOHN THRALL, and DAVID KU ____________________ Appeal 2010-000241 Application 11/024,234 Technology Center 2100 ____________________ Before: JOSEPH L. DIXON, ST. JOHN COURTENAY III, and DEBRA K. STEPHENS, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000241 Application 11/024,234 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 4 and 22-25. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to lateral search. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of performing a search using a general subdomain corpus including general content and one or more vertical subdomain corpuses, each vertical subdomain corpuses including specialized content, the method comprising: receiving a search query from a user, wherein the received search query is based on a text query string inputted by the user; determining personal information for the user; causing a search to be performed in the general subdomain corpus of general content using the search query, wherein the general content is not organized; determining a vertical subdomain corpus from the one or more vertical subdomain corpuses based on the personal information; and causing a search to be performed in the determined vertical subdomain corpus of specialized content using the search query, wherein the specialized content is organized. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Stern US 6,486,892 B1 Nov. 26, 2002 Appeal 2010-000241 Application 11/024,234 3 REJECTIONS Claims 1-4 and 22-25 stand rejected under 35 U.S.C §112 second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 1-4 and 22-25 stand rejected under 35 U.S.C §102(b) as being anticipated by Stern. OPINION ANALYSIS 35 U.S.C. §112, Second Paragraph The Examiner maintains that "applicant fails to clearly defined [sic] the metes and bounds of the claimed 'general content' and 'specialized content', nevertheless to say the corresponding claimed 'general subdomain', 'vertical subdomain', 'general search engine' and 'vertical search engine', hence, they renders [sic] these claims as indefinite." (Ans. 3-4). Appellants identify paragraphs [0037] and [0038] of the Specification which provide exemplary discussions of the general corpus and the vertical corpus along with figure 3 and its accompanying disclosure which we find in paragraph [0052]. The Examiner further maintains that: even if the skilled person in the art may be able to guess the metes and bounds of the claimed citations via the examples as disclosed in the instant specification, the skilled artisan will be puzzled about the incomplete and overbroad claimed subject matters, for example, the language at claim 1, line 9 stated Appeal 2010-000241 Application 11/024,234 4 "wherein the general content is not organized" that clearly different than the citations for the example 210 which indicates "general information that is not organized in specialized categories" as described by paragraph 0037 in instant specification. Thus, because the incomplete and unclear nature of the claimed subject matter, the 35 112 [sic, 35 U.S.C. §112,] second paragraph rejections on record are maintained. (Ans. 8). We find the Examiner's discussion to be essentially directed to either a written description or enablement rejection under 35 U.S.C. §112, first paragraph, but the Examiner has not made a rejection under either ground. We find the Examiner's commentary "the skilled artisan will be puzzled about the incomplete and overbroad claimed subject matters" does not show that the claims do not particularly point out or distinctly claim the invention. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). We conclude that the Examiner has not shown that those skilled in the art would not understand what is claimed when the claim is read in light of the Specification. Therefore, we cannot sustain the rejection of independent claims 1 and 22 under 35 U.S.C. §112, second paragraph and the rejection of their corresponding dependent claims. Appeal 2010-000241 Application 11/024,234 5 35 U.S.C. §102(b) Appellants contend that: The Examiner-cited passage regarding the limitation of "causing a search to be performed in the general subdomain," (col. 1, lines 22-42) describes the background section of Stem and includes the description of search engines that "identify, obtain and organize what is likely to be the most relevant information requested by the user on a specific topic." This description relates to a general search engine. Stem, however, is silent with regard to a method that also includes "causing a search to be performed in the determined vertical subdomain corpus of specialized content using the search query, wherein the specialized content is organized." (App. Br. 7-8). Appellants contend that the: Examiner-cited passage of col. 6, lines 25-42 supports that Stern discloses locally loading content of a specific domain, but this content is locally loaded for a user viewing in an offline environment. This passage is absolutely silent regarding the claimed "searching" but rather describes the "viewing of the downloaded material." (col. 6, lines 32-33). (App. Br. 8). Appellants further argue that the Examiner's reliance upon column 6 of the Stern reference concerning "[t]he download and local storage of a defined web domain does not identically disclose the claimed 'causing a search to be performed in the determined vertical subdomain corpus of specialized content using the search query" as recited in claim 1.'" (App. Br. 8). We agree with Appellants. The Examiner's response to Appellants' contention is to merely include additional quotations from the Stern reference without any discussion of how the Stern reference necessarily teaches or Appeal 2010-000241 Application 11/024,234 6 describes the search query being submitted to the two different subdomain's in the Stern reference. (Ans. 9-13). The Examiner merely concludes: As set forth above, Stern's invention clearly comprises an intelligent Guide that not only will support the general web content search over a general Internet search domain but also includes software intelligence which will organize, monitor, analysis and learn from user's intelligent extrapolation for compiling and customizing the Geographic [sic, Graphical] User Interface (GUI) the search for the most related specialized contents over a vertical sub-domain according to user-specified selections and intelligent profile inputs, as such, the intelligent searching software is deemed to read on appellant's claimed search engines that is configured to perform search in a vertical sub-domain corpus including at least a part of the specialized content. (Ans. 13). We find the Examiner's showing does not specifically address the invention as recited in independent claims 1 and 22. Additionally, we note that the Examiner has improperly relied upon various embodiments 1 and the Background of Invention of the Stern reference which does not necessarily show that the claimed "invention was patented or described in a printed publication" as required for anticipation. Therefore, Appellants have shown error in the Examiner's showing of anticipation of independent claims 1 and 22. 1 It is not enough [in an anticipation rejection] that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention. Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Appeal 2010-000241 Application 11/024,234 7 CONCLUSIONS OF LAW The Examiner erred in rejecting independent claims 1 and 22 under 35 U.S.C. §112, and the Examiner erred in rejecting independent claims 1 and 22 under 35 U.S.C. §102. DECISION For the above reasons, the Examiner’s rejection of claims 1-4 and 22- 25 under 35 U.S.C. §112, second paragraph is reversed and the Examiner’s rejection of claims 1-4 and 22-25 under 35 U.S.C. §102 is reversed REVERSED tkl