11950398 (P.T.A.B. May. 6, 2016)

Ex Parte Singh et al

Patent Trial and Appeal BoardMay 6, 2016

11950398 (P.T.A.B. May. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111950,398 12/04/2007 25920 7590 05/06/2016 MARTINE PENILLA GROUP, LLP 710 LAKEWAY DRIVE SUITE 200 SUNNYVALE, CA 94085 FIRST NAMED INVENTOR Vik Singh 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 ATTORNEY DOCKET NO. CONFIRMATION NO. YAHOP034 6464 EXAMINER KIM, PAUL ART UNIT PAPER NUMBER 2169 MAILDATE DELIVERY MODE 05/06/2016 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 Exparte VIK SINGH, ECKART WALTHER, JEFF BONFORTE, AMIT KUMAR, and TOM (LIANG-YU) CHI Appeal2014-006741 Application 11/950,398 Technology Center 2100 Before ST. JOHN COURTENAY III, MELISSA A. HAAPALA, and JOYCE CRAIG, Administrative Patent Judges. RAAP ALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-12 and 24--32, which are all of the claims currently pending in the application. See Final Act. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Appeal2014-006741 Application 11/950,398 INVENTION Appellants' invention is directed to overlaying third-party information on displayed search results. Spec. i-f 1. Claim 1 is exemplary of the subject matter on appeal: 1 1. A method of returning search results overlayed with third-party rating information by a search engine executed by a processor, compnsmg: providing access to data of rating information maintained by a plurality of third parties, each of the plurality of third parties identified by a company identifier; configuring the search engine to reference the data of rating information for integration with N-1 of N search results, wherein N is a positive integer greater than two, the N search results including the N-1 search results and an Nth search result each of the plurality of third parties providing its rating information for each of the N search results; receiving a search request to search the web; and returning the N search results related to the search request, the N search results provided as a listing of text links corresponding to the search request, wherein the N-1 search results are overlayed with rating information obtained by accessing the data maintained by at least one of the plurality of third parties that provided its rating information, wherein the Nth search result is assigned rating information and lacks an overlay of rating information, and wherein the rating 1 Yahoo! Inc. is listed as the real party in interest. (App. Br. 3). Appellants further indicate they "are not aware of any related appeals or interferences." (App. Br. 3). We note the "Claims Appendix" includes (in the left page header) incorrect application serial number: "Appl. No. 11/863, 187" (App. Br. 27-32). A search of assignment records for "Appl. No. 11/863,187" reveals that Yahoo! Inc. is listed as both a previous assignee ( (9-27-2007) and recent ( 4-18-2016) assignor. Appropriate correction of the incorrect application serial number in the "Claims Appendix" is required in all future correspondence with the USPTO. 2 Appeal2014-006741 Application 11/950,398 information being overlayed provides additional information regarding quality of products or services offered by an entity identified by the N-1 search results, wherein rating information provided by one of the plurality of third parties includes the company identifier, wherein the company identifier is displayed with the N-1 search results that are generated based on the search of the web. REJECTIONS ON APPEAL Claims 1-12 and 24--32 stand rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2. Claims 1, 3, 6-9, 11, 12, 24, 26-28, 30, and 31 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Cancel (US 2008/0183664 Al; published July 31, 2008) and Ruhl (US 7,962,461 B2; issued June 14, 2011).2 Ans. 2--4; Final Act. 3-7. 3 Claims 2, 4, 5, 10, and 29 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Cancel, Ruhl, and Ford (US 6,963,867 B2; issued Nov. 8, 2005). Final Act. 7-8 2 In the Examiner's Answer, the Examiner entered a new ground of rejection for the independent claims. Ans. 2--4. The new rejection relies on the same references cited in the Final Office Action with additional findings made for the limitations rejected under 35 U.S.C. Â§ 112. See Ans. 2. 3 We note there are typographical errors in section nine of the Final Office Action, which incorrectly states the rejection is under 35 U.S.C. Â§ 102(e) and omits independent claim 31 from the list of rejected claims. The preceding header and section correctly note the rejection is under 35 U.S.C. Â§ 103(a). See Final Act. 2-3. Furthermore, section 19 contains the detailed findings mapping the limitations of claim 31 to the combination of Cancel and Ruhl. See Final Act. 6-7. 3 Appeal2014-006741 Application 11/950,398 ISSUES Appellants' contentions present us with the following dispositive issues: A) Did the Examiner err in rejecting claims 1-12 and 24-32 under 35 U.S.C. Â§ 112, first paragraph? B) Did the Examiner err in finding the combination of Cancel and Ruhl teaches or suggests "wherein the Nth search result is assigned rating information and lacks an overlay of rating information" ("lacks overlay" limitation), as recited in independent claim 1 and commensurately recited in independent claims 24, 26, and 31? ANALYSIS We have reviewed the Examiner's rejections, Appellants' contentions, and the evidence of record. Appellants have persuaded us the Examiner has failed to establish that the claims do not comply with the written description requirement or are unpatentable over the cited prior art. Issue A: 35 U.S. C. Â§ 112, First Paragraph Rejection The Examiner finds claims 1-12 and 24-32 do not comply with the written description requirement because the Specification does not provide adequate support for the "lacks overlay" limitation. Final Act. 2; Ans. 4-10. In particular, the Examiner finds the Specification fails to provide rating information may be "assigned" prior to and independent of "overlaying" search results with the rating information. Ans. 10. Appellants contend the Specification provides support for the "lacks overlay" limitation in paragraphs 48, 51, 57, and 58. App. Br. 12-14. Specifically, Appellants point to paragraphs 51 and 58 to support static 4 Appeal2014-006741 Application 11/950,398 generation of rating information before a user launches a search query and point to paragraph 48 to support search results can be assigned rating information that is not overlaid. App. Br. 13-14. The claim language at issue is a negative limitation that sets forth the Nth search result lacks an overlay of assigned rating information. Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). The cited portion of the Specification describes the rating information can be generated statically and "saved before a user launches the search query." Spec. i-f 51. The cited portion further describes integrating only the top returned pages of search results with rating information. Spec. i-f 48; see also Spec. i-f 46 ("Integrating rating information in the search results takes computing resources from the search engine (or server) and can slow down the time it takes to return search results to the users.'} We agree with Appellants that these sections (and particularly i-f 46) describe a reason to exclude the overlay of assigned rating information from the Nth search result. Accordingly, we do not sustain the 35 U.S.C. Â§ 112, first paragraph rejection of claims 1-12 and 24-- 32. Issue B: 35 U.S.C. Â§ 103(a) Rejections The Examiner finds Cancel teaches the "lacks overlay" limitation recited in independent claim 1. Ans. 2-3. In particular, the Examiner finds the 8th search result of Figure 7 teaches the last result of 1-10 search results (i.e., the Nth search result) that fails to provide (lacks) an overlay of rating information (element 705). Ans. 2-3, 11. 5 Appeal2014-006741 Application 11/950,398 Appellants contend Cancel fails to teach the disputed limitation because the eight search result in Figure 7 does have rating information. Reply Br. 3--4. Specifically, Appellants argue the trust indicator 102 shown immediately about the eight search result is for the eight search result and the aggregate overlay 705 points to the trust indicator for the eight search result. Reply Br. 6-7. We have reviewed the cited sections of Cancel and find the evidence (Cancel, Fig. 7) supports Appellants' contentions. Particularly, we agree the overlay 705 (equated by the Examiner to be the overlay of rating information) is for the eighth (Nth) search result. See Cancel Fig. 7, i-f 89. In contrast, claim 1 requires the overlay of rating information for N-1 search results and for the Nth search result to lack an overlay of assigned rating information. Therefore, Appellants persuade us the Examiner has not established the combination of Cancel and Ruhl teaches or suggests the Nth search result lacks an overlay of assigned rating information, as required by the disputed language of claim 1. Remaining independent claims 24, 26, and 31 recite limitations commensurate in scope to the "lacks an overlay of rating" limitation, and are rejected on the same basis. Accordingly, we reverse the 35 U.S.C. Â§ 103(a) rejection of independent claims 1, 24, 26, and 31, and their associated dependent claims 3, 6-9, 11, 12, 27-28, 30, and 31. The Examiner did not rely on the additional reference of record (Ford) to teach or suggest the "lacks overlay" limitation. Accordingly, we reverse the 35 U.S.C. Â§ 103(a) rejection of the remaining dependent claims. 6 Appeal2014-006741 Application 11/950,398 DECISION We reverse the Examiner's decision rejecting claims 1-12 and 24--32. REVERSED 7