Ex Parte Yokoi

Board of Patent Appeals and Interferences

Dec 22, 2011

09794060 (B.P.A.I. Dec. 22, 2011)

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.
09/794,060 02/28/2001 Takeshi Yokoi 21.1991 3023
21171 7590 12/22/2011
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
SAEED, USMAAN
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
12/22/2011 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 TAKESHI YOKOI

___________

Appeal 2009-012976
Application 09/794,060
Technology Center 2100
____________

Before ALLEN R. MACDONALD, DAVID M. KOHUT, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 4, 5, 8, 9 and 19. Claims 11-17 have been withdrawn and claims 2,
3, 6, 7, 10 and 18 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant’s invention relates to a processing device for searching
information in one language using a search query in another language.
(Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A processing device connected to a network and
equipped with a browsing unit that displays supplied web pages on a
display unit of the processing device, the processing device
comprising:
a detection unit to communicate with the browsing unit and to
detect whether a specific process is required for data input into a web
page supplied by a search server and displayed by the browsing unit;
a processing unit to communicate with the detection unit and to
execute specific processes on the data input into the web page
responsive to a detection result by the detection unit and to translate
the data input into the web page;
a control unit to communicate with the processing unit and to
use results of the specific processes to process requests from the web
page and to generate a processing request for the search server using
the translated data by selecting one or more of search specification
methods of using word pairs, using AND search operator or using OR
search operator, based upon the translated data;
an administration unit to manage a plurality of search servers;
a selection unit to select a search server from the plurality of
search servers managed by said administration unit; and
a display control unit to cause the browsing unit to display a
web page of the selected search server.
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Claims 1, 4, 5, 8, 9 and 19 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Powell (James Powell & Edward A. Fox, Multilingual
Federated Searching Across Heterogeneous Collections, D-LIB MAG., Sept.
1998) and Bharat (U.S. Patent No. 6,711,568.)
ISSUE
Does the combination of Powell and Bharat render obvious
independent claim 1, which includes the disputed limitations “selecting one
or more of search specification methods of using word pairs, using AND
search operator or using OR search operator, based upon the translated data”
and “an administration unit to manage a plurality of search servers”?
ANALYSIS
Claim limitation – “selecting one or more of search specification methods of
using word pairs, using AND search operator or using OR search operator,
based upon the translated data”
We are not persuaded by Appellant’s arguments (Br. 14-18) that the
combination of Powell and Bharat would not have rendered obvious
independent claim 1, which includes the first disputed limitation “selecting
one or more of search specification methods of using word pairs, using AND
search operator or using OR search operator, based upon the translated
data.”
The Examiner acknowledged that Powell does not teach or suggest the
first disputed claim limitation (Ans. 5) and therefore, cited Bharat for
teaching search engines used on the World Wide Web, such that conjunctive
queries 351 are used for pairs of randomly selected words 333 linked by the
“and” operator 334. (Ans. 5; Bharat, col. 5, ll. 4-6). The Examiner
concluded that “[i]t would have been obvious . . . to combine the teachings
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of the cited references [of Powell and Bharat] because . . . selecting one or
more of search specification methods of using word pairs, using AND search
operator or using or search operator . . . improves the results received from
the other search engines . . . compared to information about the sample page
to determine if the other search engines have indexed the sample page.”
(Ans. 5.) We agree with the Examiner.
Powell relates to “a protocol for requesting word translations between
languages” for searching multilingual collections on the World Wide Web.
(Abstract.) Powell also teaches “a translation request protocol (TRP) that
supports language translation requests over the Internet.” (P. 9, para. 4.)
Figure 2 of Powell illustrates a search catalog page including a search field
labeled “Find sites about” with a “Search” button.
Bharat relates to search engines used on the World Wide Web.
(Col. 1, ll. 8-9.) Bharat teaches a method for estimating coverage of search
engines (col. 2, ll. 12-14), including submitting a random query to a first
search engine, randomly selecting a sample page from the addresses returned
by the first search engine, generating a strong query from the sample page
and submitting the strong query to other search engines (col. 2, ll. 21-28).
“The results received from the other search engines are compared to
information about the sample page to determine if the other search engines
have indexed the sample page” (col. 2, ll. 29-31) to estimate a relative size
and overlap between the first and other search engines (col. 2, ll. 35-37).
Bharat also teaches that “[a] typical query is constructed by lexicon words
with operators” such that “operators can be disjunctive or conjunctive.”
(Col. 4, ll. 57-59.) Bharat further teaches that conjunctive queries 351 are
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constructed from pairs of randomly selected words 333 linked by the “and”
operator 334. (Col. 5, ll. 4-6.)
A person of ordinary skill in the art at the time of the invention would
have recognized that incorporating Bharat’s method of estimating search
coverage, which includes the use of conjunctive search queries, with the
translation request protocol (TRP) of Powell that supports language
translation requests over the Internet would improve Powell by providing the
ability to estimate the relative size and overlap between search engines. See
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). In the alternative,
combining Bharat with Powell is no more than incorporating Bharat’s
known conjunctive search query with Powell’s known translation request
protocol (TRP) that supports language translation requests over the Internet,
to yield predictable results. See id. Furthermore, combining Powell and
Bharat would result in the entry of the conjunctive search query “and” into
the search field (i.e., labeled “Find sites about”) from Figure 2 of Powell,
and thus teaches or suggests “selecting one or more of search specification
methods of using word pairs, using AND search operator or using OR search
operator, based upon the translated data.” Accordingly, we agree with the
Examiner (Ans. 5) that modifying Powell to include the conjunctive search
query of Bharat would have been obvious.
Appellant argues that “Powell fails to explicitly disclose, or suggest to
one skilled in the art to be modified, to provide selection of a search
specification method, for example word pairs, depending upon translated
data.” (Br. 14.) Similarly, Appellant argues that “the Examiner has not
established a prima facie case of obviousness, because at least Bharat has not
been specifically applied to the language of the claims.” (Br. 14.) However,
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the rejection of claim 1 is based on the combination of Powell and Bharat
and Appellant cannot show non-obviousness by attacking references
individually. See In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellant further argues that the Examiner “fails to articulate any
reasoning why one skilled in the art would have found the claimed ‘selecting
... a search specification method ... based upon the translated data’ [is]
obvious in light of Powell and Bharat.” (Br. 16 (emphasis in original).)
Similarly, Appellant argues that “the Examiner has not articulated any
reasoning why the sources for a motivation to combine references of [sic]
nature of the problem to be solved, the teachings of the prior art, and the
knowledge of one skilled in the art would have suggested the motivation or
desirability, and thus obviousness.” (Br. 17.) However, as discussed
previously, the combination of Powell and Bharat is based on the
improvement of a similar device in the same way as in the prior art, or in the
alternative, by combining known elements to achieve predictable results.
Therefore, we agree with the Examiner that the combination of Powell
and Bharat would have rendered obvious independent claim 1, which
includes the disputed limitation “selecting one or more of search
specification methods of using word pairs, using AND search operator or
using OR search operator, based upon the translated data.”
Claim limitation – “an administration unit to manage a plurality of search
servers”
We are also not persuaded by Appellant’s arguments (Br. 18) that the
combination of Powell and Bharat would not have rendered obvious
independent claim 1, which includes the second disputed limitation “an
administration unit to manage a plurality of search servers.”
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The Examiner acknowledged that Powell does not teach or suggest the
second disputed claim limitation (Ans. 5) and therefore, cited Bharat for
teaching an arrangement 100 that assists users of a client 130 to locate
specific pages 112 of interest (Ans. 6; Bharat, col. 3, ll. 15-18). We agree
with the Examiner.
Bharat teaches an arrangement 100 including computers 110, 130 and
140 connected to each other by a communications network 120 (e.g., the
Internet). (Col. 2, l. 66 to col. 3, l. 2; fig. 1.) During operation of the
arrangement 100, users of the computer 130 access content 111 from the
servers 110 by using search engines 140 (e.g., “a Web spider 141 that
periodically scans the ‘Web’ for changed or new content”) connected to the
network 120. (Col. 3, ll. 15-24.) In other words, the arrangement 100 of
Bharat that includes the search engines 140 teaches or suggests the limitation
“an administration unit to manage a plurality of search servers.”
Appellant argues that the “present Application support[s] the claimed
‘administration’ and ‘selection’ concerning ‘a plurality of search servers’
and ‘to execute specific processes on the data input into the web page
responsive to a detection result by the detection unit and to translate the
data input into the web page.” (Br. 18 (emphasis in original).) However,
this argument is not commensurate in scope with claim 1, because the claim
does not expressly require “to execute specific processes on the data input
into the web page responsive to a detection result by the detection unit and
to translate the data input into the web page.”
Therefore, we agree with the Examiner that the combination of Powell
and Bharat would have rendered obvious independent claim 1, which
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includes the disputed limitation “an administration unit to manage a plurality
of search servers.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 4 and 8 depend from independent claim 1 and
Appellant has not presented any substantive arguments with respect to these
claims. Therefore, we sustain the rejection of claims 4 and 8 under 35
U.S.C. § 103(a) for the same reasons discussed with respect to independent
claim 1.
Independent claims 5, 9 and 19 recite limitations similar to those
discussed with respect to independent claim 1, and Appellant has not
presented any substantive arguments with respect to these claims. We
sustain the rejection of claims 5, 9 and 19 for the same reasons discussed
with respect to claim 1.
CONCLUSION
The combination of Powell and Bharat would have rendered obvious
independent claim 1, which includes the disputed limitations “selecting one
or more of search specification methods of using word pairs, using AND
search operator or using OR search operator, based upon the translated data”
and “an administration unit to manage a plurality of search servers.”

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Application 09/794,060

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DECISION
The Examiner’s decision to reject claims 1, 4, 5, 8, 9 and 19 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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