10863543 (B.P.A.I. Jan. 26, 2012)

Ex Parte Woosley et al

Board of Patent Appeals and InterferencesJan 26, 2012

10863543 (B.P.A.I. Jan. 26, 2012)

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. 10/863,543 06/07/2004 David Woosley I0306.70001US01 5297 7590 01/27/2012 Steven J. Henry Wolf, Greenfield & Sacks, P.C. 600 Atlantic Avenue Boston, MA 02210 EXAMINER GOFMAN, ALEX ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 01/27/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DAVID WOOSLEY and MICHAEL EVERY ____________ Appeal 2009-013070 Application 10/863,543 Technology Center 2100 ____________ Before KRISTEN L. DROESCH, GREGORY J. GONSALVES and JASON V. MORGAN, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-013070 Application 10/863,543 2 STATEMENT OF THE CASE Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1, 3, 4, 7-10, 12-19, 21, 24-27, 29-33 and 47-58.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. BACKGROUND The invention relates to a retrieval of information records from data stores, and the retrieval of the records in a manner that facilitates identification of a record or records of interest. Spec. 1, ll. 12-14. Independent claim 1 is illustrative of the issue on appeal and is reproduced below (disputed limitations in italics): 1. In a system having data maintained in electronic file storage, said data corresponding to a plurality of physical entities, a computer-implemented method for retrieving indicia of said physical entities from said data, the method comprising acts of: (A) receiving at least one search criterion from a user; (B) creating a query based on the at least one search criterion; (C) executing the query against the electronic file storage to generate results, each of the results corresponding to a respective data entity which satisfies the at least one search criterion and corresponds to a respective physical entity; (D) arranging the results into an order, the order being determined at least in part by a characteristic of the physical entity corresponding to each result and a previous act by a user with respect to the physical entity; and (E) displaying the results to the user. Claims 1, 7-10, 12-18, 24-27, 29-33, 47-50, 52-56 and 58 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tanner (US 1 Claims 2, 5, 6, 11, 20, 22, 23, 28 and 34-46 have been cancelled. Appeal 2009-013070 Application 10/863,543 3 2004/0243588 A1, Dec. 2, 2004) and Hansen (US 2003/0014399 A1, Jan. 16, 2003). Claims 3, 4, 19, 21, 51 and 57 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tanner, Hansen and Cheung (US 2004/0054661 A1, Mar. 18, 2004). ISSUES Did the Examiner err in finding that Tanner describes “arranging the results into an order, the order being determined at least in part by a characteristic of the physical entity corresponding to each result . . .”, as recited in claim 1? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments in the Appeal Brief presented in response to the Final Office Action (“FOA”) and Appellants’ arguments in the Reply Brief presented in response to the Answer. We agree with Appellants’ conclusions. However, we highlight and address specific findings and arguments for emphasis as follows. Independent claims 1 and 17 each recite: “arranging the results into an order, the order being determined at least in part by a characteristic of the physical entity corresponding to each result . . . .” The Examiner relies on Tanner for describing the generation of results, with each of the results corresponding to a respective data entity which corresponds to a respective physical entity and arranging the results into an order that is determined at least in part by a characteristic of the physical entity corresponding to each result. Ans. 4 (citing Tanner ¶¶ 0034, 0112). Specifically, the Examiner finds that Tanner’s description of a scanned image of a document “corresponds to a Appeal 2009-013070 Application 10/863,543 4 respective physical entity” since a document is a physical entity. Ans. 10 (citing Tanner ¶ 0112). The Examiner also finds that Tanner describes “providing enhanced ability to view, track, sort and analyze search results . . . .” Ans. 10- 11 (citing Tanner ¶ 0034). Last, the Examiner finds that Tanner describes filtering, which is analogous to searching sorting and analyzing, by a specified characteristic and explains that in Tanner’s example the filtering characteristic could be a name. Ans. 11 (citing Tanner ¶ 113). On this basis, the Examiner concludes that Tanner meets the disputed claim limitations. Ans. 11. We agree with Appellants that Tanner does not disclose or suggest that the presence of an image in the search results has any effect on the manner in which the results are presented and that Tanner does not disclose or suggest that any physical entity that underlies an image (e.g., document, article, etc.) has anything to do with an order in which the search results are arranged. App. Br. 11; Reply Br. 3-5. We further agree with Appellants’ argument that Tanner describes filtering performed by an engine which operates on data stored in the risk databases 520 and/or a new daily grey file 522 shown in Figure 2 but does not disclose that the filtering is performed on an image database (ISYS database 526) in which the image data is stored, or that the filtering is based on image data or any characteristic of a physical entity (i.e., document, article, etc.) underlying any image. Reply Br. 5 (citing Tanner ¶ 113). As applied by the Examiner, Hansen and Cheung do not remedy the deficiencies of Tanner. Ans. 4, 8-9. For all these reasons, we do no sustain the Examiner’s rejections of claims 1, 3, 4, 7-10, 12-19, 21, 24-27, 29-33 and 47- 58. Appeal 2009-013070 Application 10/863,543 5 DECISION We REVERSE the rejection of claims 1, 7-10, 12-18, 24-27, 29-33, 47-50, 52-56 and 58 under 35 U.S.C. § 103(a) as unpatentable over Tanner and Hansen. We REVERSE the rejection of claims 3, 4, 19, 21, 51 and 57 under 35 U.S.C. § 103(a) as unpatentable over Tanner, Hansen and Cheung. REVERSED ke