Ex Parte Nam et al

Patent Trial and Appeal Board

Jan 18, 2018

11849982 (P.T.A.B. Jan. 18, 2018)

United States Patent and Trademark Office
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.
11/849,982 09/04/2007 Se-dong Nam 5540.115875 6654
24978 7590 01/22/2018
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
GEBRESENBET, DINKU W
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SE-DONG NAM and JOONG-HO SHIN
Appeal 2017-006480
Application 11/849,982
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Examiner finally rejected claims 23-35. Claims 1-22 are
canceled. (App. Br. 3). Appellants appeal from the final rejection under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention relates to “providing an information search service
using a group of pages.” (Spec. ^ 1). Claim 23, reproduced below, is
representative of the claimed subject matter:
Appeal 2017-006480
Application 11/849,982
Representative Independent Claim 23
23. A method of providing a group search service in a system
that comprises at least one user terminal to transmit queries and
to output search results to the user terminal, and a plurality of
web servers in a computer network to provide a plurality of web
pages, the method comprising:
[a] collecting, by a first server using a web robot, the plurality
of web pages from the web servers in the computer network
including URLs of the web pages;
[b] storing and indexing, by the first server, the web pages
collected from the computer network in an index database in
units of individual webpages;
[c] retrieving, by a second server in communication with the
first server and the index database, the collected web pages
from the index database;
[d] analyzing, by the second server, the web pages retrieved
from the index database to create a plurality of uniform
resource locator (URL) patterns;
[e] grouping, by the second server, different URL patterns into a
plurality of URL groups based on a predetermined relation
between the different URL patterns;
[f] grouping, by the second server, the web pages retrieved
from the index database into a plurality of web page groups
based on predetermined grouping fields of the URL patterns in
the plurality of URL groups;
[g] indexing the plurality of web page groups in units of groups;
[h] creating, using the second server, index information and URL
information corresponding to the indexed plurality of web page
groups;
[i] storing the index information and the URL information in a
group search database (DB) in communication with the second
server;
[j] searching, by the second server, the plurality of web page
groups in the group search database (DB) using the index
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information when a search query is transmitted by a user
terminal; and
[k] identifying, by the second server, the URL information of a
searched web page group as a group search result and
transmitting the group search result to the user terminal, wherein
the second server provides the user terminal with at least one
group of a plurality of related web pages having similar content
as a search result in response to the search query.
(Method steps a-k lettered. Contested steps c, d, f, and i are emphasized in
italics and bold, consistent with Appeal Br. 12).
Rejection
Claims 23-35 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Tsuda (US
2001/0020238 Al; published Sept. 6, 2001) and Chao (US 6,304,872 Bl;
issued Oct. 16, 2001).
Claim Grouping
Based on Appellants’ arguments, we decide the appeal of the rejection
of claims 23-35 on the basis of representative claim 23. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Prior Decision
PTAB Appeal No. 2012-003737 (Application No. 11/849,982),
Decision on Appeal mailed July 18, 2014 (the Examiner’s decision
affirmed).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
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See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Rejection of Independent Claim 23 under § 103(a)
Issue: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding the cited combination of Tsuda and Chao teaches or suggests
contested steps c, d, f and i:
[c] retrieving, by a second server in communication with the
first server and the index database, the collected web pages
from the index database;
[d] analyzing, by the second server, the web pages retrieved
from the index database to create a plurality of uniform
resource locator (URL) patterns;
[f] grouping, by the second server, the web pages retrieved
from the index database into a plurality of web page groups
based on predetermined grouping fields of the URL patterns in
the plurality of URL groups;
[i] storing the index information and the URL information in a
group search database (DB) in communication with the second
server[,\
within the meaning of representative claim 23 71 (Emphasis added in italics
and bold).
1 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997). See Spec, e.g., Tj 72 (“While the present
invention has been described with reference to exemplary embodiments
thereof, it will be understood by those skilled in the art that various changes
in form and details may be made therein without departing from the scope of
the present invention as defined by the following claims.”).
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Regarding contested steps c, d, f and i of claim 23, Appellants argue:
“[sjince Chao and Tsuda retrieves and indexes web documents retrieved
directly from the Internet, the references merely disclose the claimed first
server and the claimed index database.” (App. Br. 12).
We note Appellants expressly admit (App. Br. 12) that steps a and b
of claim 23, including the claimed first server and the claimed index
database, are taught by the Examiner’s cited combination of Tsuda and
Chao. Appellants admit:
Specifically, the references disclose[:]
[a] collecting, by a first server using a web robot, the plurality
of web pages from the web servers in the computer network
including URLs of the web pages; and
[b] storing and indexing, by the first server, the web pages
collected from the computer network in an index database in
units of individual webpages[.]
(App. Br. 12).
Nevertheless, Appellants contend “[njeither of the references,
however, discloses the features of the claimed second server and the group
search database. Specifically, the references do not disclose[:]”
[c] retrieving, by a second server in communication with the
first server and the index database, the collected web pages
from the index database;
[d] analyzing, by the second server, the web pages retrieved
from the index database to create a plurality of uniform
resource locator (URL) patterns;
[f] grouping, by the second server, the web pages retrieved
from the index database into a plurality of web page groups
based on predetermined grouping fields of the URL patterns in
the plurality of URL groups;
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[i] storing the index information and the URL information in a
group search database (DB) in communication with the second
server;
(App. Br. 12).
Appellants further assert: “even if Tsuda and Chao were combined,
the resulting combination would still lack at least these claimed features of
the second server and the group search database, as recited in claim 23.”
{Id.).
The Examiner disagrees:
Appellant appears to be in agreement with the Examiner that
all limitations of claim 23 [are] addressed by both the Tsuda and
Chao reference[s] except that the recited grouping step in the
Appealed claims is done by the second server.
Performing a known function of "grouping the web pages
retrieved from the index database into a plurality of web page
groups based on predetermined grouping fields of the URL
patterns in the plurality of URL groups" by another server is not
sufficient by itself to patentably distinguish over Tsuda or Chao
(see Making Separable In re Dulberg, 289 F.2d 522, 523, 129
USPQ 348, 349 (CCPA 1961), MPEP 2144.04.
In addition, the mere duplication of a known function of
"grouping the web pages retrieved from the index database into
a plurality of web page groups based on predetermined grouping
fields of the URL patterns in the plurality of URL groups" to be
performed by another server has no patentable significance
unless a new and unexpected result is produced, (see Duplication
of Parts, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA
1960), see MPEP 2144.04).
(Ans. 5-6) (emphasis added).
Regarding Appellants’ principal contention that “[t]he Chao reference,
however, does not disclose, in addition to the claimed first server and the
index database, a second server which retrieves and uses web pages that
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have already been collected from the computer network (by the first
server) and indexed in the index database” (App. Br. 12) (emphasis
added), the Examiner further explains that Chao actually teaches at least two
servers:
However, even though the location does not change the function,
Examiner relied upon Chao to actually teach a grouping
server that [is] in communication with another server (two
servers). Chao discloses, see Chao Col. 2, lines 41-45, the search
system 10 that comprises a sever 20. The server 20 includes the
data creating module 25 for creating the data groups. Chao
further discloses the data group creating module 25 creates data
groups 22 of each web server 12 by connecting to the web
server 12. Therefore, Chao discloses a data grouping server
(the [server] 20) that creates [] data groups and is in
communication with another server (i.e. web server 12).
(Ans. 6) (emphasis added).
Regarding the addition of the claimed second server and the group
search database in communication with the second server, and associated
steps c, d,f and i (claim 23), we conclude claiming a mere plurality of prior
art elements is not an unobvious distinction over the prior art of record,
because using plural known elements would have produced a predictable
result under § 103. SeeKSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Turning to the secondary Chao reference, the Examiner specifically
finds:
Chao discloses a second server that creates web page group and
indexing the plurality of web page groups in units of group and
provides the user terminal with at least one group of a plurality
of related web pages having similar content as a search result in
response to the search query (see Chao Col. 2, lines 41-45, The
data group creating module 25 creates the data groups 22 of
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each web server 12 connected to the internet. The data groups
22 provide fulltext search capability to the user 16. Data groups
22 are made by the data group creating module 25 which first
connects to the web server 12 through the internet 14, then uses
the text data and path data within each web page to create the text
file 26, path file 28, and index file 30. These constitute the data
groups 22 of the web server 12; see Chao Col. 2, lines 20-23 [.]
[paragraph break inserted]
To create a database, the search system 10 retrieves web
page data of the web server 12; see Chao Col. 2, lines 25-32;
The search system 10 comprises a server 20 connected to the
internet 14, a plurality of data groups 22, and a management
program 24 stored in the server 20 ... The management program
24 manages the operation of the server 20 and comprises a data
group creating module 25 for creating the data groups 22.
(Final Act. 8-9) (emphasis added in bold, underline in original omitted).
Regarding the evidence pointed to by the Examiner {id.), we agree
that Chao describes the use of two or more two servers: web server 12 and
server 20, with data groups associated with each web server 12:
The search system 10 comprises a server 20 connected to the
internet 14, a plurality of data groups 22, and a management
program 24 stored in the server 20. The server 20 comprises a
memory 21 for storing programs and data, and a CPU 23 for
executing the program stored in the memory 21. The
management program 24 manages the operation of the server 20
and comprises a data group creating module 25 for creating
the data groups 22 within the world wide web server 12, and
a fulltext search module 27 used by the data groups 22 to perform
the fulltext search. Each of the data groups 22 contains data
of web pages in a single world wide web server 12, and
comprises a text file 26 for recording the text data within the web
pages stored in the web server 12, a path file 28 for recording
the path of the web pages, and an index file 30 for fulltext search
of the text data of the web pages.
(Chao, col. 2,11. 26-41).
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See also Chao col. 2,11. 42^19 (emphasis added):
The data group creating module 25 creates the data groups 22
of each web server 12 connected to the internet. The data
groups 22 provide fulltext search capability to the user 16. Data
groups 22 are made by the data group creating module 25 which
first connects to the web server 12 through the internet 14, then
uses the text data and path data within each web page to create
the text file 26, path file 28, and index file 30. These constitute
the data groups 22 of the web server 12.
Thus, we find a preponderance of the evidence supports the
Examiner’s finding that Chao, in combination with Tsuda, teaches or
suggests the contested limitations. Moreover, our review of the relevant
case law further supports the Examiner’ underlying factual findings and
legal conclusion of obviousness: “A mere duplication of parts is not
invention.” In re Marcum, 47 F.2d 377, 378 (CCPA 1931) (citing Topliff v.
Topliff, 145 U.S. 156, 163 (1892)). See also Dunbar v. Myers, 94 U.S. 187,
195 (1876) (“for most purposes the machine will operate as well and as
successfully with one deflecting plate as with two. Two deflecting plates
may be better than one . . . .”). “It is true that in the patent cited, there was
but one detachable blade. However, the use of two such blades would
readily suggest itself to the mechanic. It is a mere duplication of parts, and
this has been uniformly held to be not patentable.” In re Abrahamsen, 53
F.2d 893, 894 (CCPA 1931)(citations omitted). “It is well settled that the
mere duplication of parts has no patentable significance unless a new and
unexpected result is produced.” In re Harza, 274 F.2d 669, 671 (CCPA
1960). See also MPEP 2144.04(VI)(B)(“REVERSAL, DUPLICATION,
OR REARRANGEMENT OF PARTS”).
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Following this guidance here, and on this record, we are not
persuaded the Examiner erred. Nor do Appellants point to any evidence of
record that shows combining the Tsuda and Chao references in the manner
proffered by the Examiner (Final Act. 8-9) would have been “uniquely
challenging or difficult for one of ordinary skill in the art” or would have
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Appellants have not provided any objective evidence of
secondary considerations (e.g., unexpected results) which our reviewing
court guides “operates as a beneficial check on hindsight.” Cheese Systems,
Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
We additionally note that Appellants have not filed a Reply Brief in
further response to the Examiner’s findings, explanations and clarifications
in support of the legal conclusion of obviousness. See Answer (2-7).
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain the Examiner’s obviousness rejection of representative independent
claim 23, and of grouped claims 24-35 (not argued separately), which fall
with claim 23. See Claim Grouping, supra.
CONCLUSION
Based upon a preponderance of the evidence, and on this record, we
are not persuaded the Examiner erred in rejecting claims 23-35 under pre-
AIA 35 U.S.C. § 103(a), as being obvious over the combined teachings and
suggestions of Tsuda and Chao.
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DECISION
We affirm the Examiner’s rejection of claims 23-35 under pre-AIA
35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
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