Ex Parte Sidlosky et al

Patent Trial and Appeal Board

Sep 24, 2013

11061225 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY ALAN JOSEPH SIDLOSKY
and CREIGHTON W. CHONG
____________________

Appeal 2011-002963
Application 11/061,225
Technology Center 2100
____________________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and
JOHN A. EVANS, Administrative Patent Judges.

Per curiam.

DECISION ON APPEAL

Appeal 2011-002963
Application 11/061,225

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 24-30, 33-40, and 42-48. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 1-23, 31, 32, and 41 have been cancelled.
We REVERSE.

Introduction
According to Appellants, the invention relates to a system and method
for providing Internet (Web) search functionality to a target software
application. The Internet Web functionality allows a target application to
access and use the Web search functionality without modification of the
target application. (Abstract).

Exemplary Claim
Claim 40, reproduced below, is illustrative of the claimed subject
matter:
40. A computer system comprising:

storage;

an application stored in the storage, the application
having a tile dialog box; and

an internet search functionality implemented within the
application to provide a search functionality interface to a
user, the search functionality interface provided through
the file dialog box of the application, receive a search
request from a user through the search functional
interface, conduct an internet search in response to the
search request, present a plurality of search results to a
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user based on the internet search, receive a user selection
of one of the plurality of search results and automatically
insert the selected search result into a product of the
application, wherein the internet search functionality
implemented within the application comprises creating a
profile for internet search functionality, the profile
indicating applications that would benefit from the
internet search functionality, wherein the creating the
profile for the internet search functionality comprises:

determining a subject application that would
benefit from the internet search functionality; and

determining the a beneficial point of the subject
application, the beneficial point being a point in
the subject application at which the subject
application would benefit from the internet search
functionality.

REFERENCES
Tannenbaum
Arrouye
U.S. 5,252,951
U.S. 6,847,959 B1
Oct. 12, 1993
Jan. 25, 2005
Ferguson U.S. 2002/0129054 A1 Sep. 12, 2002

“Enablement of Presentation Manager Message Box Subclasses,”
IBM TDB, vo1.38, no. 3 (March 1995) (hereinafter “Enablement of
Presentation”).

REJECTIONS
The Examiner made the following rejections:
(1) Claims 40 and 48 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Arrouye, Ferguson, and Tannenbaum
(Ans. 4).
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Application 11/061,225

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(2) Claims 24-30, 33-39, and 42-47 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Arrouye, Ferguson,
Tannenbaum, and Enablement of Presentation (Ans. 6-7).1

ISSUE
35 U.S.C. § 103(a)
Appellants assert their invention is not obvious over Arrouye,
Ferguson, and Tannenbaum because the cited portions of Tannenbaum do
not teach the limitation of “creating a profile for the internet search
functionality” as recited in claim 40 (App. Br. 11-12; Reply Br. 12-13).
Issue: Has the Examiner erred in finding the combination of Arrouye,
Ferguson, and Tannenbaum teaches or suggests “creating a profile for the
internet search functionality . . . [comprising]: determining a subject
application that would benefit from the internet search functionality” as
recited in claim 40?
ANALYSIS
We agree with Appellants’ argument that the cited portions of
Tannenbaum do not teach the disputed limitation (App. Br. 11-12; Reply Br.
12-13; see Ans. 5-6 and 27-28). The Examiner has not set forth with
specificity how Tannenbaum’s teaching of determining which one of the
application programs owns the first window in which a key feature of a
gesture was made by a pointing device (col. 4, ll. 45-48), teaches creating a
profile which comprises determining a subject application that would benefit
from the internet search functionality (Ans. 5 and 27-28).

1 The Examiner’s rejections have been modified from the Final Rejection.
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Accordingly, we are persuaded the Examiner erred in finding the
combination of Arrouye, Ferguson, and Tannenbaum teaches or suggests the
limitations as recited in claim 40.
Independent claims 24 and 33 set forth commensurate limitations and
thus, for the reason set forth above, we also are unpersuaded by the
Examiner that the combination of Arrouye, Ferguson, and Tannenbaum
teaches or suggests the invention as recited in claims 24 and 33. Further, the
Examiner has not shown Enablement of Presentation cures the deficiencies
of Tannenbaum.
Therefore, we reverse the rejection of claims 24-30, 33-40, and 42-48
under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 40 and 48 under 35 U.S.C.
§ 103(a) as being unpatentable over Arrouye, Ferguson, and Tannenbaum is
reversed.
The Examiner’s rejection of claims 24-30, 33-39, and 42-47 under 35
U.S.C. § 103(a) as being unpatentable over Arrouye, Ferguson,
Tannenbaum, and Enablement of Presentation is reversed.

REVERSED

msc