Ex Parte Smith

Board of Patent Appeals and Interferences

Mar 29, 2005

09354052 (B.P.A.I. Mar. 29, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte KIM C. SMITH

Appeal No. 2004-1526
Application No. 09/354,052

ON BRIEF

Before HAIRSTON, KRASS and JERRY SMITH, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
Decision On Appeal
This is a decision on appeal from the final rejection of
claims 1-4, 7-16, 19-27, and 30-36.
The invention pertains to a method of searching for
information across different media and source types, best
Appeal No.2004-1526
Application No. 09/354,052
1It is interesting that the examiner included claims 5, 6,
17, 18, 28, and 29 in the statement of rejection because, as we
understand it, these claims have been canceled and form no part
of the appeal.
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illustrated by reference to representative independent claim 1,
reproduced as follows:
1. A method comprising the steps of:
inputting a search criteria; and
searching at least one local database of content information
and at least one remote database of content information based
upon the search criteria, wherein the content information
corresponds to information from a plurality of content sources of
multiple types.
The examiner relies on the following references:
Vora et al. (Vora) 5,819,273 Oct. 06, 1998
Contois 5,864,868 Jan. 26, 1999
Etheredge 6,172,674 Jan. 09, 2001
(filed Aug. 25, 1997)
Claims 1-9, 12-21, 24-32, and 35 stand rejected under
35 U.S.C. § 102(e) as anticipated by Vora.1
Claims 10, 22, and 33 stand rejected under 35 U.S.C. § 103
as unpatentable over Vora in view of Etheredge.
Claim 36 stands rejected under 35 U.S.C. § 103 as
unpatentable over Vora in view of Contois.
Appeal No.2004-1526
Application No. 09/354,052
2Supplemental Brief on Appeal, filed December 15, 2003,
Paper No. 30.
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Reference is made to the brief2 and answer for the
respective positions of appellant and the examiner.
OPINION
At the outset, we note that claims 11, 23, and 34 are
nowhere identified in any of the statements of rejection.
However, from the examiner’s explanation, at page 9 of the
answer, it appears these claims were meant to be rejected under
35 U.S.C. § 103 as unpatentable over Vora in view of Etheredge,
along with claims 10, 22, and 33. Moreover, since appellant
apparently acquiesces in this interpretation, by the discussion
of such a rejection, at page 13 of the brief, we will treat
claims 11, 23, and 34 as being so rejected.
Turning to the rejection of claims 1-9, 12-21, 24-32, and
35 under 35 U.S.C. § 102(e), an anticipatory reference is one
which describes all of the elements of the claimed invention so
as to have placed a person of ordinary skill in the art in
possession thereof. In re Spada, 911 F.2d 205, 15 USPQ2d 1655
(Fed. Cir. 1990).
The examiner contends that Vora teaches “inputting a search
criteria,” as claimed, at column 7, lines 10-25; “wherein the
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Application No. 09/354,052
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content information corresponds to information from a plurality
of content sources of multiple types,” as claimed, at column 7,
lines 1-10, and Figure 9; and “searching at least one local
database of content information based upon the search criteria,”
as claimed, as searches are performed through a local network
such as a server computer system 9, which includes mass memory
17.
The examiner explains that the mass memory 17 is a local
hard disk, resides in the computer system 9, and stores
information sources in a magnetic media or an optical media,
referring to Vora’s column 5, lines 57-59. The examiner further
explains that a user of Vora’s client system 33 requests a first
search, which is performed through the information sources stored
in mass memory 17 (column 7, lines 4-7), and when the client
computer 33 requests the first search, which is received by
computer system 9 via a network interface 25, system 9 searches
the first search through the information sources stored in mass
memory 17. The examiner also points out that the connection
between the computer system 9 and the client computer 33 is a
local area network (LAN) and concludes that
it is clear that the first search request from client
computer 33 is done at the local network area of the
computer system 9. At the server system 9 receives
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search requests and executes the search requests by
searching the mass memory 17 (local database) and data
stored at the Internet server 63 (remote database).
The server system 9 combines the results of remote
searches with results of the search perform (sic,
performed) on data stored in the mass memory 17. The
combined search results are displayed to a user of a
client system 33 within one window (col. 6, lines 56-
67; col. 7, lines 1-10) (answer-pages 4-5).
Appellant argues that the instant claims require that “the
content information corresponds to information from a plurality
of content sources of multiple types” and that this is not taught
by Vora. It is appellant’s contention that the instant claims
“recite different types of sources, not different subjects”
(brief-page 7). Appellant further states that the “present
invention as claimed is not about identifying documents from a
single source, or multiple databases. Rather, it is about
bringing together content from different sources, that in the
past have been associated with different multimedia sources. It
is believed that this is a fundamental difference that is clearly
recited in the claims” (brief-page 8).
It is our view that appellant takes too narrow a view of the
instant claim language.
Independent claim 1 recites a method having two steps. The
first step entails inputting a search criteria. Clearly, Vora
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discloses the initiation of such a search. For example, at
column 7, lines 10 et seq., of Vora, the reference discloses
first and second search requests by a user.
The second step requires searching at least one local
database of content information and at least one remote database
of content information based upon the search criteria. Vora
clearly teaches, at column 6, line 60, through column 7, line 10,
that a server 9 searches on a local memory (e.g., mass memory 17
in Figure 1), and also receives searches from Internet server 63
(which receives search requests from server 9). Thus, there is
searching, based upon the search criteria laid out by the user,
on at least one local database and on at least one remote
(Internet server 63) database.
The only remaining question is whether Vora discloses that
the “content information” being searched “corresponds to
information from a plurality of content sources of multiple
types,” as required by instant claim 1.
We agree with the examiner that the claimed terms, “sources”
and “types” are so broad as to lend themselves to an accordingly
broad interpretation. That is, in Vora, the server 9 and the
Internet server 63 are clearly different “content sources” of
information and they constitute “multiple types” of content
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sources. One is an Internet server and one is a local server.
Thus, the information comes from a “plurality of content sources
of multiple types.” Moreover, as indicated by the examiner, and
shown in Figure 12 of Vora, there are “different types” of
information sources taught by the reference, including
Literature, Bibliographies, Weather patterns, Business news, and
Plants. Contrary to appellant’s argument that the reference
refers only to different types of subjects, and that the claims
recite different types of sources, not different subjects, Vora
clearly describes, in Figure 12 that these different subjects are
“Available Sources.” Thus, it appears to us that Vora is
indicating different “types” of sources in the list under the
heading of “Available Sources.”
Appellant explains that the instant application provides
examples of what is meant by different types of content sources,
listing TV, DVD, WEB, GAMES and MUSIC, and that these are not the
same as the single type, i.e., documents, described by Vora.
Appellant contends that documents are one type of content, but we
agree with the examiner that the term is so broad as to encompass
different document types, such as those shown in the list in
Figure 12 of Vora. We find no reason to delve into the
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specification to narrow the terms of the claim more than the
plain language of the claim requires.
Appellant also argues that the term “local,” in “local
storage” has a different meaning than the one given to the term
by the examiner, and that the mass storage 17 in Vora cannot be
considered to be a “local storage.” Specifically, appellant
wants us to read into the claim the example given at page 2 of
the specification, wherein the “user must open a local search
tool. . . .” Appellant wishes us to interpret “local” to include
only “in the same computer” as illustrated in the passage cited
from page 2 of the specification (see pages 10-11 of the brief).
Again, we find that appellant gives too narrow an interpretation
to the instant claims language. Mass storage 17 in Vora is
clearly “local” to server 9, and does not need to reside in the
user’s computer 33. We find no language in claim 1 requiring an
interpretation as urged by appellant.
Since, in our view, the examiner has presented a reasonable
case of anticipation with regard to the subject matter of instant
claim 1, which has not been convincingly rebutted by appellant,
we will sustain the rejections of claims 1, 4, 12, 13, 16, 24,
27, and 36 under 35 U.S.C. § 102(e) or 103, in accordance with
appellant’s grouping of the claims at page 5 of the brief.
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We do note that claim 36 stands rejected under 35 U.S.C.
§ 103 over Vora in combination with Contois. The examiner relied
on Contois for the ability to access media types TV, DVD, Web,
Games, and Music, concluding that it would have been obvious to
include various types of media, as taught by Contois, in the
magnetic media or optical media in Vora “for allowing the
information sources includes multiple types of media” (sic)
(answer-page 10).
While appellant argues claim 36, by contending that Contois
does not discuss searching content from a plurality of content
sources of multiple types based on an input search criteria by
searching a local database and at least one remote database
(brief-page 11), we are unpersuaded of nonobviousness since the
examiner relied on Vora, not Contois, for such a teaching.
Appellant also contends that there is no suggestion to
combine the references (brief-page 11). However, the examiner
has given a reason to combine, viz., “for allowing the
information sources includes (sic, to include) multiple types of
media” (answer-page 10), and appellant’s only response is to
refute this with a comment that this is a mere “statement of the
results achieved” (brief-page 11), rather than a suggestion to
combine. Accordingly, since the examiner has presented some
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reason for making the combination, with no substantive showing by
appellant of any error in this rationale by the examiner, we will
sustain the examiner’s rejection of claim 36 under 35 U.S.C.
§ 103.
With regard to claims 2, 3, 7, 8, 14, 15, 19, 20, 25, 26,
30, 31, and 35, these claims recite the limitation of “like
associations” and also stand rejected under 35 U.S.C. § 102(e)
over Vora. The examiner points to Figure 9 of Vora, depicting
information sources such as Business News and Business Resources.
The examiner contends that this shows a “like association” both
resources “contain information related to business” (answer-page
5).
Appellant argues that Figure 9 of Vora “references different
types of documents, not content sources of multiple types as
claimed. The like associations are used to find content in such
different types of sources in the claims” (brief-page 12).
We are unpersuaded by appellant’s argument for the reasons
supra, i.e., contrary to appellant’s view, we find that the
different types of documents referenced by Vora are, broadly, yet
reasonably, content sources of different types. While, at page 9
of the brief, appellant asserts that a “like association is an
actual reference or preprocessed link to data in another
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database,” appellant points to no claim language requiring this
interpretation. The term “like association” has a broad, plain
meaning, which is encompassed by the examiner’s assertion of
Business News and Business Resources having a “like association”
simply because they are both related to business.
With regard to claims 9, 21, and 32, appellant argues that
these claims refer to search criteria that is “independent of
content source and type” and that text documents and graphics, as
in Vora, do not meet this criteria (brief-page 13). But, the
examiner explains, and we agree, that Vora’s first search request
is performed through information sources stored in mass memory
17, and that the text documents stored therein include two types,
i.e., text and graphics. Since the first search request is
performed in mass memory 17, it is searched through text
documents, including graphics, so that the first search request
“is independent of content source and type” (answer-page 7,
referring to column 7, lines 4-10, and column 6, lines 35-40, of
Vora).
Appellant’s assertion that text and graphics are “not of
different source or type” (brief-page 9) is unpersuasive. It is
clear to us that text typically refers to a written word, while
graphics typically refers to an image, something different than
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the written word. Accordingly, broadly interpreted, text and
graphics are of different source and type.
Since, in our view, the examiner’ presents a reasonable case
of obviousness, which has not been successfully rebutted by
appellant, we will sustain the rejection of claims 9, 21, and 32
under 35 U.S.C. § 103. Appellant’s mere statement that the text
documents and graphics of Vora do not meet the claimed criteria,
without some evidence to support this position, is simply not
persuasive.
Appellant argues, with respect to claims 10, 11, 22, 23, 33,
and 34, that these claims include the limitation of “filtering
search results based upon. . . availability” of either the source
or content. The examiner relied on Etheredge to show that if a
user only wishes to see a listing of information for programs
meeting certain search criteria, appropriate data would pass
through a filtering step 904, so that a particular event based
upon the content sources, e.g., channels 5 and 7 availability,
referring to column 18, lines 53-55, and column 19, lines 3-5, of
Etheredge, would be filtered (see answer-bottom of page 8 to the
top of page 9). The examiner found it obvious to apply
Etheredge’s teachings to Vora “in order to find information
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meeting selected criteria or user’s input efficiency” (answer-
page 9).
Appellant asserts that the claim language refers to the
availability of a device or service, so that if a DVD is
available, but the system does not have a DVD player, the results
would be excluded. Appellant contrasts this with Etheredge which
indicates when, and where, a movie may be broadcast.
While the examiner may point to something in the prior art
which is not what appellant intended to claim, the broad language
of the claims, viz., “searching further includes filtering search
results based upon the content source availability,” would, in
our view, permit the examiner’s broad interpretation and
applicability of Etheredge. Thus, a user accessing a television
programming guide, wherein only data that meets certain filter
criteria will be displayed, appears to meet the instant claim
language, “searching further includes filtering search results
based upon the content source availability,”
Again, since appellant has not convinced us of an error in
the examiner’s reasoning, we will sustain the rejection of claims
10, 11, 22, 23, 33, and 34 under 35 U.S.C. § 103.
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Application No. 09/354,052
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The examiner’s decision rejecting claims 1-9, 12-21, 24-32,
and 35 under 35 U.S.C. § 102(e), and claims 10, 11, 22, 23, 33,
34, and 36 under 35 U.S.C. § 103, is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
)
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JERRY SMITH )
Administrative Patent Judge )
EK/RWK
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Application No. 09/354,052
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