Ex Parte Robinson et al

Patent Trial and Appeal Board

Sep 11, 2014

11341128 (P.T.A.B. Sep. 11, 2014)

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.
11/341,128 01/27/2006 Eric M. Robinson 013.0294.US.UTL 2357
22895 7590 09/12/2014
CASCADIA INTELLECTUAL PROPERTY
12360 Lake City Way NE, Ste 501
SEATTLE, WA 98125
EXAMINER
MUELLER, KURT A
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
09/12/2014 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 ERIC M. ROBINSON and EDWARD L. WALTER
____________

Appeal 2012-005303
Application 11/341,128
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, STANLEY M. WEINBERG,
and BETH Z. SHAW, Administrative Patent Judges.

SHAW, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1–30 and 32–41.
We affirm.
INVENTION
The invention relates to formulating data search queries. (Spec.,
Abstract). Claims 1, 5, and 7 are representative and are reproduced below,
with the disputed limitations of claim 1 highlighted:
1. A system for formulating data search queries,
comprising:
a user input interface module operable to specify an
unstructured search criteria for a search query on one or more
documents, comprising:
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an input portal module configured to receive a data
excerpt selected to be searched against the documents
and further configured to convert the data excerpt into
tokens;
a selectable inclusiveness control module
configured to specify a granularity of inclusion of
matching tokens within each document;
a selectable proximity control module configured
to specify a degree of nearness of the tokens within each
document; and
a query generator configured to compile the tokens
derived from the data excerpt and parameters
corresponding to the granularity of inclusion and the
degree of nearness into a combined search query,
wherein the combined search query is compiled prior to
execution of a search;
a search engine configured to apply the combined search
query to the documents during the search, to condition the
search for one or more of the tokens within the documents on at
least one of the granularity of inclusion and the degree of
nearness, and to select at least one of the documents that
matches the one or more of the tokens and satisfies the at least
one of granularity of inclusion and the degree of nearness as
search results;
a user output interface module configured to present the
search results; and
a processor configured to execute the modules.

5. A system according to Claim 1, wherein the
granularity of inclusion is determined based on a number of
tokens h that must be matched by one or more words in each
target document in accordance with the equation:

where N is a total number of the tokens and is a
value representing the granularity of inclusion specified through
the selectable inclusiveness control module.

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7. A system according to Claim 1, wherein the degree
of nearness is determined based on a span s to be applied and a
number of tokens to combine c during searching of each
document in accordance with the equations:

where N is a number of the tokens and is a
value representing the degree of nearness specified through the
selectable proximity control module.

REJECTIONS AT ISSUE
Claims 1–9, 12–24, 27–30, and 32–41 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pant et al. (US 6,012,053, issued Jan. 4,
2000) (“Pant”) and Brill et al. (US 2005/0234904 A1, published Oct. 20,
2005) (Ans. 6).
Claims 10 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pant, Brill, and Kupiec (US 5,696,962, issued Dec. 9,
1997) (Ans. 25).
Claims 11 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pant, Brill, and Gourlay (US 2004/0215608 A1, published
Oct. 28, 2004) (Ans. 28).
Claims 1–9, 12–24, 27–30, and 32–41 also stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Pant and Evans et al. (US
6,915,308 B1, issued July 5, 2005) (Ans. 30).

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ISSUES
Appellants argue the Examiner’s rejections under 35 U.S.C. § 103(a)
are in error. The dispositive issues presented by these arguments are:
Did the Examiner err in finding Pant and Brill teach or suggest a
query generator configured to compile the tokens derived from the data
excerpt and parameters corresponding to the granularity of inclusion and the
degree of nearness into a combined search query, wherein the combined
search query is compiled prior to execution of a search, as recited in
independent claim 1?
Did the Examiner err in finding Pant and Brill teach or suggest the
granularity of inclusion is determined based on a number of tokens h that
must be matched by one or more words in each target document in
accordance with the equation recited in claim 5?
Did the Examiner err in finding Pant and Brill teach or suggest the
degree of nearness is determined based on a span s to be applied and a
number of tokens to combine c during searching of each document in
accordance with the equations recited in claim 7?
ANALYSIS
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. We highlight the following for
emphasis. In particular, we are not persuaded by Appellants’ argument that
Pant fails to include tokens and parameters in a search query. (See App. Br.
11.) As the Examiner concludes:
Pant figure 3 shows that the search query (figure element 156)
and the relevance factors (element 158) are provided
simultaneously to the server (figure element 160), which then
hands them together to the query engine (starting at figure
element 162). The search engine does its calculations, and then
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provides the combined results together (figure element 178)
back to the server together (figure element 160). The prior art is
clear that the results are not returned to the user before the
application of the relevance factors takes place.

(Ans. 58). Moreover, as the Examiner concludes, the search query (Pant,
Fig. 3, element 156) and the relevance factors (id., element 158) of Pant are
combined prior to any computation into a singular query (id., element 162)
(Ans. 59 (citing Pant, Fig. 3)). We agree with the Examiner’s conclusions.
Appellants argue the relevance factors of Pant change the presentation
of the search results (App. Br. 11). The Examiner concedes Pant does not
teach limiting the set of results based on the ranking criteria. (See Ans. 60).
However, the Examiner rejects claim 1 over the combined teachings of Pant
and Brill, and what the combined teachings would have suggested to one of
ordinary skill in the art. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Brill describes “results with a relevance that [do] . . . not meet the
threshold can be discarded rather than returned to a user.” (See Ans. 7, 61
(citing Brill, ¶ 36).) Moreover, the Examiner finds combining Brill with
Pant’s ranking process would have been obvious to one skilled in the art
because inserting Brill’s culling of elements before returning a list to a user
would not be inconsistent with the process described by Pant (see Ans. 61),
which relates to returning relevant search results to a user (see Pant 3:33-55).
Appellants argue in the Reply Brief that one of ordinary skill in the art
“would be unlikely to combine Pant with Brill” because the combination
“would require refining a number of the results in Pant for presenting to a
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user, rather than providing all the results in a ranked manner” (Reply Br. 12–
13). First, arguments raised for the first time in the Reply Brief are typically
waived. See 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.”). Nevertheless, we agree with the
Examiner’s conclusion that it would have been obvious to one of ordinary
skill in the art to modify Pant’s ranking of results with Brill’s culling of
results based on a threshold, before the results are ultimately presented to a
user. (See Ans. 8, 23, 61.) We find the Examiner’s suggestion for this
proposed modification suffices as an articulated reason with some rational
underpinning to establish a conclusion of obviousness. (See id.)
Similarly, for the reasons identified by the Examiner, we are
unpersuaded by Appellants’ arguments with respect to the additional
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Pant and Evans (see Ans. 30–33, 67–69).
Accordingly, we sustain the Examiner’s rejection of claim 1. We
have considered Appellants’ arguments regarding independent claims 16 and
32. Those arguments present us with the same issues, and we sustain the
Examiner’s rejections for the same reasons.
Appellants argue claim 37 recites “executing the search criteria on
documents during the search . . .” and Evans fails to teach or suggest this
element. (See App. Br. 21–22.) As noted above with respect to claim 1, one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Merck, 800
F.2d at 1097. The Examiner relies on Pant as teaching “executing the search
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criteria on documents during the search . . .” as recited in claim 37. (See
Ans. 21–22, 46.) We agree with the Examiner’s findings and conclusions
because Pant teaches executing the search query and relevance factors on
documents during its search. (See Pant, 3:33–55, Fig. 3.) Therefore, we
sustain the Examiner’s rejection of claim 37 for the reasons identified by the
Examiner.
With respect to dependent claims 5 and 7, the Examiner finds the
equations claimed and the methods used by Pant are identical, and even if
not identical, it would have been obvious for one skilled in the art to
substitute one for the other because they are functionally equivalent. (See
Ans. 63–64.)
Regarding claim 5, Appellants argue “Pant discloses values for the
relevance factors in the range of zero to 100.” (App. Br. 13.) The Examiner
responds that while the claimed “p” must be a number between 0 and 1,
these values represent a percentage, and 0.5 is the same as saying 50%.
(Ans. 63.) The Examiner further concludes even if the method used by Pant
is not identical to the claimed equation, they are functionally equivalent.
(Id.) We agree, because as the Examiner finds, the method described in Pant
determines the granularity of inclusion based on the number of tokens that
must be matched by one or more words in each target document. (Ans. 63.)
Appellants’ conclusory statements on page 13 of the Appeal Brief fail to
provide persuasive evidence to rebut this conclusion.
Regarding claim 7, Appellants argue Pant discloses “a distance is
determined between two instances of words in a word pair, which is then
compared with a threshold for assigning a bonus when the distance is below
the threshold.” (App. Br. 7.) The Examiner responds that Pant and the
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claimed elements consider granularity of inclusion when determining
whether (or to what degree) a proposed result is a match (Ans. 64). The
Examiner further concludes, even if there is a difference between Pant and
the claimed equation, it would have been obvious to substitute one for the
other. (Id.) We agree, because as the Examiner finds, the cited portion of
Pant (column 12, lines 33–50) teaches the determination of the degree of
nearness specified by a user (see Ans. 10 (citing Pant, 12:33–55), 64, Pant,
Fig. 5). Appellants do not provide persuasive evidence to rebut this
conclusion.
Therefore, Appellants do not provide sufficient evidence to persuade
us of error in the Examiner’s findings and conclusions with respect to claims
5 and 7. Accordingly, we sustain the Examiner’s rejection of claims 5, 7,
20, and 22.
Appellants provide no additional argument why dependent claims 10,
11, 25, and 26 are not obvious. (See App. Br. 14–16, 24–25). Merely
asserting that the cited prior art reference does not disclose a claim limitation
is insufficient to show error. See 37 C.F.R. § 41.37(c)(vii)(2010); see also
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for . . . [patentable] distinctions
over the prior art.”). Accordingly, we sustain the Examiner’s rejection of
claims 10, 11, 25, and 26.
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Appellants do not present separate arguments directed to the
rejections of the remaining dependent claims. Therefore, we sustain the
Examiner’s rejection of the remaining dependent claims.

DECISION
The Examiner’s rejection of claims 1–30 and 32–41 is affirmed.

AFFIRMED
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