Ex Parte Westphal

Patent Trial and Appeal Board

Mar 23, 2017

13568927 (P.T.A.B. Mar. 23, 2017)

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.
13/568,927 08/07/2012 Geoffry A. Westphal 31083.13US2 3163
34018 7590 03/27/2017
GREENBERG TRAURIG, LLP
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
EXAMINER
ADAMS, CHARLES D
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
j arosikg @ gtlaw .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFRY A. WESTPHAL
Appeal 2014-003997
Application 13/568,927
Technology Center 2100
Before JAMESON LEE, MICHAEL R. ZECHER, and
JUSTIN T. ARBES, Administrative Patent Judges.
ZECHER, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—5 and 16—19. App. Br. I.1 We have jurisdiction under
35 U.S.C. §6.
We reverse.
1 All references to the Appeal Brief are to the Substitute Appeal Brief filed
on September 26, 2013. We also refer herein to the Examiner’s Final Office
Action dated March 29, 2013, Advisory Action dated June 3, 2013, and
Examiner’s Answer dated December 19, 2013, as well as Appellant’s Reply
Brief filed February 10, 2014.
Appeal 2014-003997
Application 13/568,927
The Invention
Appellant purportedly invented a system and method that functions to
automatically invoke a selection guide when search terms provided in a
tree-form search query are determined to be associated with a category of
item for which the selection guide will provide the most efficient means for
the user to locate items of interest. Abstract.
Illustrative Claim
Claims 1,5, and 16 are independent. Independent claims 1,5, and 16
each are directed to a non-transitory computer readable media having stored
thereon executable instructions. Claims 2—A directly or indirectly depend
from independent claim 1. Claims 17—19 directly depend from claim 16.
Independent claim 1 is illustrative of the claimed invention and is
reproduced below:
1. A non-transitory computer readable media having
stored thereon executable instructions which, when executed by
a processing device, performing steps comprising:
examining a free form search query which includes a
numeric value to determine if the numeric value in the free form
search query is recognized as being uniquely used as a searchable
parameter within a one of a plurality of selection guides provided
for locating items of a predefined type within an electronic
catalog of items; and
when the numeric value in the free form search query is
recognized as being uniquely used as a searchable parameter
within a one of a selection guides provided for locating items of
a predefined type within an electronic catalog of items,
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Application 13/568,927
ing a presentation of the one of the plurality
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Prior Art Relied Upon
US 2004/0205064 A1 published Oct. 14, 2004
US 2005/0027694 A1 published Feb. 3, 2005
US 7,139,769 B2 issued Nov. 21, 2006
US 7,509,314 B2 issued Mar. 24, 2009
US 7,805,339 B2 issued Sept. 28, 2010
Rejections on Appeal
Claims 1,4, 16, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hamaguchi and Ashkenazi.
Ans. 2; Final Act. 2—6.
Claims 2 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hamaguchi, Ashkenazi, and
Sauermann. Ans. 2; Final Act. 6—7.
Claims 3 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hamaguchi, Ashkenazi, Sauermann,
and Ouchi. Ans. 2; Final Act. 7—8.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hamaguchi, Ashkenazi, and Zhou. Ans. 2; Final Act. 9—
12.
automatically causi
of selection guides.
Zhou
Sauermann
Ouchi
Hamaguchi
Ashkenazi
2 Claim 1 appears to contain a typographical error in referencing “a one of a
selection guides” in the last paragraph of the claim because the words
“plurality of’ appear to be missing. We also note that the limitation “a one”
is recited in both paragraphs of the body of the claim. We leave the
patentability of the independent claims under 35 U.S.C. § 112 12 to the
Examiner should further prosecution follow this
decision.
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Application 13/568,927
Examiner’s Findings and Conclusions
The Examiner finds that Hamaguchi teaches all the limitations recited
in independent claim 1, except for a plurality of selection guides. Final Act.
2—3 (citing Hamaguchi, 5:53—6:12, 6:27—35, 7:7—23). The Examiner turns
to Ashkenazi as teaching this limitation. Id. at 3 (citing Ashkenazi, 10:13—
30, Fig. 7). The Examiner also provides reasoning as to why one of ordinary
skill in the art would have been prompted to combine or modify the
teachings of Hamaguchi and Ashkenazi. Id. at 3^4.
The Examiner also rejects independent claims 5 and 16 as obvious by
relying upon essentially the same findings and conclusions set forth in
regard to independent claim 1 (compare Final Act. 2-4, with id. at 4—5, 9—
10), and further relies on Hamaguchi and Ashkenazi as teaching additional
limitations recited in independent claim 16 and Zhou as teaching additional
limitations recited in independent claim 5 (id. at 5—6, 10—12 (citing
Hamaguchi, 7:31—35; Ashkenazi, 10:13—30, Fig. 7; Zhou^t 64, 68—79)).
The Examiner also provides reasoning as to why one of ordinary skill in the
art would have been prompted to combine or modify the teachings of
Hamaguchi, Ashkenazi, and Zhou. Id. at 6, 12.
Appellant’s Contentions
Appellant contends that Hamaguchi does not disclose the claim
limitations of independent claims 1 and 5 reciting “to determine if the
numeric value in the free form search query is recognized as being uniquely
used as a searchable parameter within a one of a plurality of selection guides
provided for locating items of a predefined type within an electronic catalog
of items,” and “when the numeric value in the free form search query is
recognized as being uniquely used as a searchable parameter within a one of
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Application 13/568,927
a selection guides.” App. Br. 5—8; Reply Br. 2-4. In particular, Appellant
argues that Hamaguchi merely discloses that the user-provided search term
is only used to provide search results and, therefore, is not recognized as
being uniquely used as a searchable parameter within a selection guide.
App. Br. 6—7. Appellant also contends that neither Hamaguchi nor
Ashkenazi discloses the claim limitation “automatically causing a
presentation of the one of the plurality of selection guides.” App. Br. 6, 8—9;
Reply Br. 4—5.
Appellant relies on the same arguments presented against the
Examiner’s obviousness rejection of independent claims 1 and 5 to rebut the
Examiner’s obviousness rejection of independent claim 16. App. Br. 10.
II. ISSUE
The dispositive issue before us is whether the Examiner erred in
finding that Hamaguchi discloses the claim limitations “a one of a [plurality
of] selection guides provided for locating items of a predefined type within
an electronic catalog of items,” and “automatically causing a presentation of
the one of the plurality of selection guides,” as recited in independent claims
1 and 16, and similarly recited in independent claim 5?
III. ANALYSIS
§ 103(a) Rejections Over Hamaguchi and Ashkenazi/
Hamaguchi, Ashkenazi, and Zhou
Claims 1, 5, and 16
In deciding the appeal before us, we discern error in the Examiner’s
obviousness rejection of independent claims 1 and 16, each of which recites,
among other things, “a one of a [plurality of] selection guides provided for
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locating items of a predefined type within an electronic catalog of items,”
and “automatically causing a presentation of the one of the plurality of
selection guides.” We also discern error in the Examiner’s obviousness
rejection of independent claim 5, which recites similar limitations.
Independent claims 1,5, and 16 contain conditions precedent—
namely, a first condition (i.e., “when the numeric value in the free form
search query is recognized as being uniquely used as a searchable parameter
within a one of a [plurality of] selection guides” (claims 1,5, and 16)
(emphasis added)) and a second condition (i.e., “when the numeric value in
the free form search query is not recognized as being uniquely used as a
searchable parameter within a one of the plurality of selection guides” (claim
16) (emphasis added)). When the first condition is met, the independent
claims 1,5, and 16 require “automatically causing a presentation of the one
of the plurality of selection guides.” When the second condition is met,
independent claim 16 requires “automatically prompting a user for a
selection of a one of the plurality of selection guides.”
When a claim directed to a system contains limitations reciting
structure that performs a function tied to a condition precedent, in order to
show obviousness, the Examiner must cite prior art that discloses or renders
obvious such structure, regardless of whether the condition is met and the
function is actually performed. Ex Parte Schulhauser, Appeal 2013-007847,
slip op. at 13—15 (PTAB Apr. 28, 2016) (precedential). A storage-medium
claim is like a system claim in that it does not require the performance of
any method steps. See Finjan, Inc. v. Secure Computing Corp., 626 F.3d
1197, 1204 (Fed. Cir. 2010).
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Here, the independent claims on appeal are directed to storage-
medium claims (i.e., non-transitory computer readable media). The
“examining” limitation recited in each of the independent claims, as well as
the first and second conditions, require “a one of a plurality of selection
guides provided for locating items of a predefined type within an electronic
catalog of items.” Meanwhile, the first condition, if met, requires
“automatically causing a presentation of the one of the plurality of selection
guides.” We find that the Examiner’s obviousness rejections on appeal do
not support adequately the recited “one of the plurality of selection guides”
as they are used in these particular claim limitations.
The Examiner finds that Hamaguchi discloses a “selection guide”
because Hamaguchi automatically causes a presentation of results, which
according to the Examiner amounts to a “selection guide,” as the results are
used to provide a guide to the user. Ans. 5. The Examiner further finds that
there is no explicit definition of “selection guide” in the claims or
specification, and in Hamaguchi, because the documents returned to the user
are ranked by how well each document fits the query, this is an example of a
“selection guide,” in that it guides a user to a product that best fits the user’s
criteria. Id. at 10 (citing Hamaguchi, 10:45—49). In other words, the
Examiner finds that, because the results in Hamaguchi are ordered from best
fit to least fit, this helps to guide a user’s selection of an appropriate result.
Adv. Act. 2.
The Examiner’s interpretation of “selection guide” as results used to
provide a guide to the user is overly broad and inconsistent with the
specification. The specification describes a selection guide as “provid[ing] a
means for guiding a user through a search for items of interest, in particular,
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by providing a template by which a user may specify minimum requirements
for an item of interest.” Spec. 10:3—5. Of particular importance in this case,
the specification separately refers to “the results, e.g., an items page, being
returned to the user.” Id. at 10:17—18. That is, “[o]nce the user has specified
the requirements of interest, the user may then activate a hyperlink ... to
cause the search terms/parameter values that have been established within
the selection guide to be provided to the search engine with the results, e.g.,
an items page, being returned to the user.” Id. at 10:15—18 (emphases
added). We, therefore, view a “selection guide” as being separate and
distinct from the search results page that is returned to the user.
Consequently, we agree with Appellant’s argument that, in Hamaguchi, the
user-provided search term is only used to provide search results and is not
used as a searchable parameter within a selection guide. App. Br. 6—7.
We need not reach the merits of Appellant’s other arguments because
the Examiner has not presented sufficient evidence to support a finding that
Hamaguchi teaches a selection guide. As applied by the Examiner, neither
Ashkenazi nor Zhou remedy the Examiner’s incorrect reliance on
Hamaguchi to teach a selection guide. It follows that the Examiner has erred
in determining that (1) the combination of Hamaguchi and Ashkenazi
renders independent claims land 16 unpatentable; and (2) the combination
of Hamaguchi, Ashkenazi, and Zhou renders independent claim 5
unpatentable.
Claims 4 and 19
The Examiner has erred in rejecting dependent claims 4 and 19 for the
same reasons set forth above in our discussion of independent claims 1 and
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16 because each of these dependent claims includes the same disputed
limitation as its underlying base claim.
Remaining § 103(a) Rejections
Claims 2, 3, 17, and 18
As noted previously, dependent claims 2, 3, 17, and 18 depend from
independent claims 1 and 16, respectively. As applied by the Examiner,
neither Sauermann nor Ouchi remedy the Examiner’s incorrect reliance on
Hamaguchi to teach a selection guide. Therefore, for the same reasons
discussed above with respect to independent claims 1 and 16, the Examiner
has erred in determining that (1) the combination of Hamaguchi, Ashkenazi,
and Sauermann renders dependent claims 2 and 17 unpatentable; and (2) the
combination of Hamaguchi, Ashkenazi, Sauermann, and Ouchi renders
dependent claims 3 and 18 unpatentable.
IV. CONCLUSION OF LAW
The Examiner has erred in rejecting claims 1—5 and 16—19 as being
unpatentable under 35 U.S.C. § 103(a).
V. DECISION
We reverse the Examiner’s decision to reject claims 1—5 and 16—19.
REVERSED
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