John Bradley. Mcdonald

Patent Trials and Appeals Board

May 29, 2020

2019002063 (P.T.A.B. May. 29, 2020)

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.
14/658,050 03/13/2015 John Bradley McDonald MASTER.P001BR 7986
59860 7590 05/29/2020
LAW OFFICE OF R. ALAN BURNETT
4108 131ST AVE. SE
BELLEVUE, WA 98006
EXAMINER
DESAI, RACHNA SINGH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/29/2020 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
Ex parte JOHN BRADLEY MCDONALD
Appeal 2019-002063
Reissue Application 14/658,050
Patent 8,572,111 B2
Technology Center 3900
Before ALLEN R. MacDONALD, RAE LYNN P. GUEST, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Patentee1 appeals from the
Examiner’s decision to reject Reissue Claims 1–7, 10, 12–16, and 18–38 in
the application for reissue of U.S. Patent 8,572,111 B2 (“the ’111 patent”).
We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Patentee” to refer to the “reissue applicant” as defined in
37 C.F.R. § 1.172(a). Patentee identifies the real party in interest as
Masterfile Corporation. Appeal Br. 4.
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We AFFIRM IN PART and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The Patent Claims and Reissue Claims are all directed to an improved
method for displaying and manipulating electronic data search results, in
which a user may engage in secondary searches based upon or in addition to
the results of a primary search by interacting with one of the primary search
results that is displayed. ’111 patent, col. 1, ll. 15–18, col. 4, ll. 1–17.
Reissue Claim 1, reproduced below (with underlining representing added
language and bracketing representing removed language with respect to the
Patent Claims of the ’111 patent), is illustrative of the claimed subject
matter:
1. (Amended Thrice) A computer-implemented method of
displaying search results in a search and display window, the
method comprising:
i) receiving a primary search query from a user;
j) determining a primary search result comprising a first
plurality of search results [using a processor executing] by
executing the primary search query;
k) displaying a plurality of primary electronic
representations representing at least a subset of [data] search
results in the primary search result, the plurality of primary
electronic representations being displayed in a primary search
results portion of the search and display window, wherein each
primary electronic representation represents a single respective
corresponding [data item] search result in the primary search
result;
1) receiving a secondary search query, wherein the
secondary search query comprises a user selection of one of the
primary electronic representations;
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m) determining a secondary search result [using the
processor executing] comprising a second plurality of search
results by executing the secondary search query, wherein at least
a portion of the [data] search results in the primary search result
is different from the [data] search results in the secondary search
result, wherein the secondary search result is determined by at
least one of: (i) a visual similarity search on the [data item] search
result represented by the selected primary electronic
representation, and (ii) a metadata similarity search based on
metadata associated with the [data item] search result represented
by the selected primary electronic representation; and
n) displaying a plurality of secondary electronic representations
representing at least a subset of [data] the search results in the
secondary search result, the plurality of secondary electronic
representations being displayed in a secondary search results
portion of the search and display window, wherein each
secondary electronic representation represents a single
respective corresponding [data item] search result in the
secondary search result;
wherein when the plurality of secondary electronic
representations are displayed, at least a portion of the plurality of
primary electronic representations [and the plurality of
secondary electronic representations] are visible at the same
time; and
wherein [the data in] the primary search result is
unchanged by display of the plurality of secondary electronic
representations [secondary search result].
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REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Jing et al. US 2007/0174790 A1 July 26, 2007
Armitage et al. US 2007/0133947 A1 June 14, 2007
Naqvi US 2002/0143890 Al October 3, 2002
Svore et al. US 2008/0313147 Al December 18, 2008
Liu et al. US 7,099,860 B1 August 29, 2006
Kawamura US 2003/0163462 Al August 28, 2003
REJECTION(S)
1. Reissue Claims 1–2, 4–5, 7, 10, 15–16, 18–19, 21, 24, 29, and 31–
33 are rejected under (pre-AIA) 35 U.S.C. § 103(a) as being
unpatentable over Jing.
2. Reissue Claims 6 and 20 are rejected under (pre-AIA) 35 U.S.C.
§ 103(a) as being unpatentable over Jing in view of Armitage.
3. Reissue Claim 25 are rejected under (pre-AIA) 35 U.S.C. § 103(a)
as being unpatentable over Jing in view of Naqvi.
4. Reissue Claims 12–13, 26–27, and 34 are rejected under (pre-AIA)
35 U.S.C. § 103(a) as being unpatentable over Jing in view of
Svore.
5. Reissue Claims 35–38 are rejected under (pre-AIA) 35 U.S.C.
§ 103(a) as being unpatentable over Liu in view of Jing.
6. Reissue Claims 3, 22, and 23 are rejected under (pre-AIA) 35
U.S.C. § 103(a) as being unpatentable over Jing in view of
Kawamura.
7. Reissue Claims 14, 28, and 30 are rejected under (pre-AIA) 35
U.S.C. § 103(a) as being unpatentable over Jing in view of Liu.
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OPINION
Rejection over Jing and Jing ’4512
After review of the respective positions provided by Patentee and the
Examiner, we REVERSE the Examiner’s prior art rejections of Reissue
Claims 1–2, 4–5, 7, 10, 15–16, 18–19, 21, 24, 29, and 31–33 under 35
U.S.C. § 103(a) over Jing, alone or in view of additional prior art of record,
for the reasons addressed below.
With respect to Reissue Claim 1, as representative of the claims
rejected based on Jing as a primary reference, Patentee mainly contends that
Jing does not teach receiving a secondary search query in response to a user
selection of a primary electronic representation. Appeal Br. 13, 30–35.
The Examiner rejected Reissue Claim 1 over Jing, utilizing the Jing
’451 patent incorporated by reference in Jing to teach generating secondary
search results. The Examiner maintains that the selection of, e.g., “tiger
woods” by the user in Jing is the selection of a primary electronic
representation that generates a secondary search query (Final Rej. 5–6), the
results of which are shown in the expanded view, box 230 in Figure 2. Final
Rej. 23–25. The Examiner further relies on Jing ’451 to demonstrate that the
view of expanded results in part 230 can be generated at the time of the
selection of “tiger woods.” Final Rej. 23–24; Ans. 6–7. The Examiner finds

2 The Examiner’s rejections based on Jing as a primary reference relies on a
teaching in Jing that incorporates by reference U.S. Patent 7,725,451 B2,
issued May 25, 2010 to Jing et al. (Jing ’451). Indeed, Jing expressly relies
on the teaching of Jing ’451 to describe the search process that is the subject
of the display described in Jing. Jing ¶ 33 (“The search for images component
is described in more detail in [Jing ’451] filed concurrently, which is hereby
incorporated by reference.”).
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that, because Jing ’451 discloses an embodiment that generates sub-cluster
images from clusters by maintaining a mapping of these images with feature
sets, the system can then query this mapping based on the selection of the
primary electronic representation by the user. Ans. 6. We do not sustain the
rejections based on Jing as a primary reference on this basis.
First, Patentee argues that the display of “tiger woods” results taught
by Jing is not the result of a secondary search query but is image data
already received in the first search query and stored in the cluster store
(Appeal Br. 31; Howard Decl. 29), and the display of Figure 2 “merely uses
the list view component to display the images in the selected cluster of the
search result.” Appeal Br. 35. We agree with the Examiner that a “search
query” is not limited to an internet database search query as the Patentee
contends and would read on “retrieving a feature set of subcluster images
maintained at the URL constitutes a query.” Ans. 6. We also note that a
“search query” could constitute the SQL query through a database for
matching image features that the Patentee describes. Reply Br. 15.
However, the claim recites the secondary search query being carried out in
response to a selection by a user of a primary electronic representation, and
find that this feature is not taught by Jing or Jing ’451.
Jing ’451 teaches performing a first and secondary search query
automatically in response to an original image query by identifying common
phrases from the text of web pages of an initial search result and
automatically performing secondary searches for to generate the subsequent
clusters, e.g., “tiger woods,” “white tiger,” displayed in Figure 2. See Jing
’451, col. 3, ll. 7–43. However, Reissue Claim 1, for example, requires the
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secondary search query to be generated by a user selection of a primary
electronic representation and not automatically, as taught by Jing ’451.
The Examiner appears to further rely upon Jing ’451 teaching a step
of identifying sub-clusters by maintaining a mapping of images by URL to
teach carrying out a second query at a later time, while relying on Jing to
teach displaying representations of a second query’s search results. Final
Rej. 24; Ans. 6, 7–8.
Patentee argues that the sub-cluster embodiment Examiner relies upon
in Jing ’451 is directed to a further level of search and also is not “performed
in response to selection of a primary electronic representation.” Appeal Br.
39–40. We are persuaded by Patentee’s argument. While Jing ’451 teaches
mapping of images by URL to a feature set of visual features to generate
sub-clusters (Jing ’451, col. 3, ll. 55–67), Jing ’451 fails to teach that these
sub-clusters are searched based on user selection of image features. Indeed,
Jing and Jing ’451 are silent as to either how the sub-clusters are used other
than to “result in a hierarchy of clusters.” Jing ’451, col. 5, l. 65 to col. 6,
l. 3. Thus, as Patentee points out, Jing ’451 does not teach user selection of
a cluster to generate a sub-cluster query, nor does Jing teach the selection of
the primary electronic representation by a user in order to indicate a
secondary search query that should be carried out, such as by the search
technique described by Jing ’451 that generates sub-clusters. Reply Br. 11,
13.
Moreover, even if Jing ’451 suggests performing a secondary query
based on the mapping of images by URL to form sub-clusters, as argued by
the Examiner (Ans. 8 (“[I]mages . . . can be invoked by a query such as by
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selection of one of the clusters.”)), Reissue Claim 1 further recites a step of
displaying “secondary electronic representations” representing at least some
of the search results of this “secondary search.” The Examiner’s rejection
relies only on the display of the cluster representations in Figure 4 of Jing to
meet this limitation. The Examiner cites to no teaching or suggestion in Jing
or Jing ’451 of displaying any results of such a sub-cluster query.
Therefore, based on the record before us, we are persuaded that the
Examiner reversibly erred in this aspect of the analysis. From the outset, the
Examiner’s finding that Jing ’451 teaches an embodiment that may maintain
a mapping of feature sets at a URL to generate sub-clusters (Ans. 6) does not
sufficiently explain why the incorporation by reference into Jing would
result in a user selection of a primary electronic representation initiating a
secondary search query to generate those sub-clusters or the display of a
result therefrom in a secondary electronic representation. We do not sustain
the rejection of Reissue Claim 1 on this basis.
As to independent Reissue Claims 15 and 29, because the Examiner
relied upon the same finding of Jing and Jing ’451 with respect to these
Reissue Claims, we do not sustain the rejection of these Reissue Claims for
the same reason. The rejections of the Reissue Claims dependent from
Reissue Claim 1, 15, or 29 are not sustained based on their dependency from
those independent Reissue Claims. We therefore REVERSE the rejection of
Reissue Claims 1–2, 4–5, 7, 10, 15–16, 18–19, 21, 24, 29, and 31–33 under
35 U.S.C. § 103(a) over Jing, alone or in view of the additional prior art of
record.

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Rejection over Liu and Jing
Patentee separately argues Reissue Claims 35–38 as a group, for
which we select independent Reissue Claim 35, as a representative claim on
appeal. Patentee then presents separate arguments with respect to dependent
Reissue Claims 36 and 37, but relying only on the “primary electronic
representation” language of independent Reissue Claims 35. See Appeal Br.
96–98; Reply Br. 32–33; Howard Decl. ¶¶ 61–67. Accordingly, we address
only Reissue Claim 35 below.
Upon consideration of the evidence of record and each of Patentee’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Patentee has not demonstrated reversible error in the
Examiner’s rejection of Reissue Claim 35 over Liu in view of Jing (e.g., see
generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011)
(explaining the Board’s long-held practice of requiring Patentee(s) to
identify the alleged error in the Examiner’s rejection). We sustain the
rejection of Reissue Claims 35–38 for the reasons expressed by the
Examiner in the Final Office Action and the Answer. We add the following
primarily for emphasis.
Patentee presents two main arguments. First, Patentee contends that
the claim language “a selection of a primary electronic representation” as
recited in Reissue Claim 35 does not encompass the clicking of a “similar”
link underneath a corresponding image as taught in Liu. Appeal Br. 87 (“A
‘[s]imilar’ link is not a primary electronic representation of a primary search
result.”); Reply Br. 27–29. The Examiner responds that selecting the
“similar” link is “selection of an image for refinement results.” Ans. 16.
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Further, the Examiner relied upon Figure 5 of Liu, decision block 510,
which expressly recites the step of “user select an image to refine?” which
corresponds to the selection of a “similar” link. Final Rej. 16 (emphasis
added). Liu additionally shows in Figure 7 that multiple images are
displayed, each has “several feedback options” including a “similar” link
adjacent and corresponding to each displayed image. Liu, col. 9, ll. 30–60;
Figure 7. A user selecting the “similar” link underneath a respective image
(step 510) initiates a subsequent search query based on feature similarity of
that same image (steps 512-516). Liu, Fig. 5.
The “selection of one of the primary electronic representations” does
not require a step of clicking directly on an image, as the Patentee seemingly
argues. “[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. Therefore, we look to the specification to
see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (citation omitted). “[A]s applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id. See also Alloc, Inc. v. Int'l
Trade Comm'n, 342 F.3d 1361, 1370 (Fed. Cir. 2003) (discouraging reading
particular embodiments and examples appearing in the Specification into the
claims unless the Specification requires it). Patentee has not directed us to
any special definitions or other evidence adequate to support their position
that a user “selection of a primary electronic representation” is limited to a
user clicking directly on an image. We agree with the Examiner that
selecting an image encompasses any action that indicates the choice of a
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single image. We discern no reversible error in the Examiner’s
interpretation of a “selection of one of the primary electronic representations
by a user” in Reissue Claim 35 as clicking the “similar” link associated with
a single particular image as shown in Figure 7 of Liu. Final Rej. 16.
Second, Patentee contends that a person of ordinary skill in the art
would have had no reason to combine Liu with Jing, nor have any
reasonable expectation of success in doing so. Appeal Br. 93–96; Reply Br.
29–31; Howard Decl. ¶¶ 58–67. The Examiner responds that the
combination of the two would have been obvious to a person of ordinary
skill in the art in order to “present search results in a variety of manners
including simultaneously.” Ans. 17. While Patentee argues that Jing is
directed towards a user interface for end users and Liu is directed to an
image retrieval system not directed to end user display (Reply Br. 31), the
Examiner persuasively states that that both Liu and Jing are directed to
similar fields of generating search results related to a query. Further,
contrary to Patentee’s arguments (Appeal Br. 94), Jing is not relied upon for
the secondary search query, but rather is relied upon for the details of a
display which simultaneously shows multiple levels of search results. Final
Rej. 18 (“See Jing figure 2, windows 220 and 230 and [0027] . . . .”); Jing
Figure 2 (representing results for “tiger” (the original search query entered
by the user) and “tiger woods” (the automatically generated second search
query), respectively).
Patentee further attacks the combination of Liu and Jing, alleging that
the Examiner has provided no reason for doing so (Appeal Br. 93) and that a
combination of Liu and Jing would result in a “dysfunctional search
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interface.” Howard Decl. ¶ 60. Initially, Patentee argues that this
combination would not be reasonable because “Jing does not display any
secondary search results, since Jing never performs a secondary search.”
Appeal Br. 93; Howard Decl. ¶ 58 (“Jing does not disclose use of a
secondary search . . . .”). As noted above, we disagree with Patentee’s
premise, because Jing ’451 clearly teaches performing a secondary search,
but doing so automatically, rather than in response to a user selection of a
primary electronic representation.
Jing then describes displaying in a single screen both primary
electronic representations and secondary electronic representations from an
automatic secondary search in the form of clusters. Figure 2 of Jing
illustrates broader search result representations in panel 220 (i.e., tiger, tiger
woods, white tiger, etc.) and narrower, more relevant search result
representations (i.e., the tiger woods cluster 221) in panel 230 on the same
display screen. It would have been obvious to one of ordinary skill in the art
to display (as taught by Jing) narrower user selected secondary search result
representations resulting from the process taught by Liu in the same screen
as Liu’s broader primary search result representations, as a mere alternative
to displaying broader and more narrow search result representations in
different windows.
Patentee further argues that the combination is incompatible because
Liu teaches the primary search results being displayed in single image
representation while Jing teaches both primary and secondary search results
being displayed in clusters. Appeal Br. 95; Reply Br. 30–31. Again, the
Examiner is not relying on the primary and secondary search process of Jing
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which happens automatically, but rather Jing’s teachings of displaying
narrower selected search result representations in a single screen and what
the skilled artisan would understand about such a display in the context of
Liu, which performs and presents narrower secondary search result
representations from a user selection of broader primary search results, only
in another window. See Final Rej. 30 (“It would have been obvious to a
skilled artisan at the time of the invention to have incorporated Jing's design
of displaying both search results simultaneously within Liu and the results
would have been predictable because it was well known at the time of the
invention to present search results in a variety of manners including
simultaneously as demonstrated by Jing and a skilled artisan would have
been capable of implementing this design choice within Liu.”); Ans. 17. It
has been established that “the [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Patentee further asserts that the resulting combination would be
dysfunctional because Liu teaches a refinement process that returns both
relevant and irrelevant results, such that displaying secondary results
simultaneously would limit the part of the interface available for relevant
images. Appeal Br. 93; Reply Br. 95; Howard Decl. ¶¶ 58–60. Patentee’s
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argument is unpersuasive, since the added benefit of simultaneous display as
shown by Jing would not destroy the function of Liu — the same amount of
user selected (i.e., narrower, relevant) secondary search result
representations would still be displayed and selected. Instead, Liu includes
the further function of allowing the user, rather than the automatic algorithm
of Jing, to determine the relevance or importance of primary search results.
“[S]implicity of the prior art is rarely a characteristic that weighs against
obviousness of a more complicated device with added function.” In re
Dance, 160 F.3d 1339, 1344 (Fed. Cir. 1998).
Accordingly, Patentee has not shown error in Examiner’s rejection of
Reissue Claims 35–38.3

New Grounds of Rejection under 35 U.S.C. 251
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection: we reject Reissue Claims 1–7, 10, 12–
14, and 29–38 under 35 U.S.C. § 251 as being an improper recapture of
surrendered subject matter. We further reject Reissue Claims 1–7, 10, 12–
16, and 18–38 as being based upon a defective Reissue Declaration.
“The recapture rule bars a patentee from recapturing subject matter,
through reissue, that the patentee intentionally surrendered during the
original prosecution in order to overcome prior art and obtain a valid

3 We note the Examiner did not apply a similar rejection of Reissue Claims
1–7, 10, 12–16, and 18–34 based on the similar rationale of combining Liu
and Jing. Because all the Reissue Claims are rejected under new grounds for
the reasons presented below, we decline to address the relevance of the
teachings of Liu and Jing to Reissue Claims 1–7, 10, 12–16, and 18–34.
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patent.” In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). The
assessment of whether a reissue claim violates the recapture rule is a three
step test: 1) determine “whether and in what ‘aspect’ the reissue claims are
broader than the patent claims,” 2) if broader, determine “whether the
broader aspects of the reissue claims relate to surrendered subject matter,”
and 3) if broader in ways related to surrendered subject matter, determine
“whether the surrendered subject matter has crept into the reissue claim.”
Youman, 679 F.3d at 1344–45. For ease in explanation, we refer to this
three-step test as the “Recapture Test.”
As for the first step of the Recapture Test, independent Patent Claims
1 and 29 require “a processor executing the primary search query,” and “the
processor executing the secondary search query,” while Patent Claim 15
requires “a processor configured to: . . . determine a primary search result by
executing the primary search query . . . determine a secondary search result
by executing the secondary search query.” See ’111 patent; col. 17, l. 25 to
col. 21, l. 16. However, independent Reissue Claims 1 and 29, and newly
added Reissue Claim 35 are directed to performing search queries but do not
require a processor to either receive or execute a primary or secondary
search query.
Thus, Reissue Claims 1, 29, and 35 are broader than the Patent Claims
in that they do not require a processor to be utilized to either receive or
execute the primary or secondary search query.
As for the second step in the Recapture Test, a process without a
processor was subject matter surrendered during prosecution.
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The ‘111 patent originated as U.S. Application 13/602,726 (“the ’726
application”), which is a continuation of U.S. Application 12/202,706 (“the
’706 application”), which is now issued patent US 8,280,901 (“the ’901
patent”). The Original Claims of the ’706 application did not recite a
processor executing search queries.
Independent Original Claims 1 and 19 of the ’706 application were
directed to a method for displaying search results, while Independent
Original Claim 10 was directed to a system, which included a processor.
Original Independent Claim 1 is reproduced below:
1. A method of displaying search results of data in a search and
display window, the method comprising:
a) displaying a primary search result in a primary search results
portion of the search and display window using a primary search
algorithm in response to a primary search query, wherein the primary
search result comprises a primary data set, wherein each datum in the
primary data set is displayed using an electronic representation of the
datum;
b) receiving a first user selection of one of the electronic
representations of the primary search result; and
c) displaying a first secondary search result in a secondary
search results portion of the search and display window matching one
or more parameters associated with the first user selection using a
secondary search algorithm, wherein the first secondary search result
comprises a secondary data set, wherein each datum in the secondary
data set is displayed using an electronic representation of the datum.
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In prosecuting the ’706 application, the Examiner issued a non-final
action containing a rejection of claims 1–9 and 19–21 under 35 U.S.C.
§ 101. Non-Final Act. of December 7, 2010, in Application No. 12/202,706,
3–6. The Applicant’s response to this action was to amend Original Claims
1 and 19 to recite, among other things, that the search was “executed by a
processor,” as reproduced below.
1. (Currently Amended) A method of displaying search results
of data in a search and display window, the method comprising:
a) displaying a primary search result in a primary search
results portion of the search and display window using a primary
search algorithm executed by a processor in response to a primary
search query, wherein the primary search result comprises a primary
data set, wherein each datum in the primary data set is displayed using
an electronic representation of the datum, wherein one electronic
representation is displayed for each datum in the primary data set:
b) receiving a first user selection of one of the electronic
representations of the primary search result; and
c) displaying a first secondary search result in a secondary
search results portion of the search and display window matching one
or more parameters associated with the first user selection using a
secondary search algorithm executed by the processor, wherein the
first secondary search result comprises a secondary data set, wherein
each datum in the secondary data set is displayed using an electronic
representation of the datum, wherein one electronic representation
is displayed for each datum in the secondary data set;
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wherein the primary search result and the first secondary search
result are visible at the same time.
In the remarks accompanying this amendment (Applicant’s response
of April 14, 2011, in application 12/202,706, page 9), Applicant stated:
Independent claims 1 and 19 have been amended to recite
that the primary search algorithm and the secondary search
algorithm which are used to display the primary and secondary
search results are both executed by a processor. This
amendment critically ties the methods recited in claims 1 and
19 to a particular machine (i.e. the processor). The processor is
responsible for executing the algorithm which produces the
search results. Accordingly, the Applicant respectfully submits
that the recitation of the processor is not a mere field of use
limitation and is not merely nominal, insignificant, or
tangentially related to the performance of the steps. The
Applicant further submits that the recitation of the processor
imposes meaningful limits in the scope of claims 1 and 19. In
view of the foregoing, the Applicant respectfully request
withdrawal of the rejection of claims 1-9 and 19-21 under 35
USC 101.
All claims throughout the prosecution of the ’706 application and the
Issued Claims of the ’901 patent include the recitation of a “processor
executing” the search queries.
Similarly, all claims presented in the ’726 application (that became
the ’111 patent) recited, as the ’706 application was amended to recite, a
“processor executing” the primary and secondary search query. See, e.g.,
claims presented September 4, 2012 in the ’726 application; Patent claims of
the ’901 patent; Patent Claims of the ’111 patent.
Thus, during the prosecution history of the ’111 patent, and in
response to an office action rejecting pending method claims, the “processor
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executing” limitation was introduced into each pending claim. Thus, the
record, and particularly the prosecution history of the ’111 patent, evinces
that these amendments were made in order to overcome a rejection under 35
U.S.C. § 101 and in order to obtain a patent. Therefore, the scope of subject
matter of a method of displaying search results without a processor
executing search queries was surrendered during the prosecution of the ’111
patent. As such, the above-identified broader aspect of the Reissue Claims
of the present pending reissue application includes surrendered subject
matter, under the second step of the Recapture Test.
As for the third step of the Recapture Test, we determine that
surrendered subject matter has indeed crept into the claims of the Reissue
Application because the above-discussed limitations regarding the primary
and secondary search query being executed by a processor, added during
prosecution, have been eliminated entirely. Indeed, the reissue application
declaration expressly states: “[C]laims 1 and 29 include elements that the
Applicant believes to be unnecessary to the patentability and operability of
the claimed inventions and are thus unnecessarily narrowing. In particular,
the recitation of ‘using a processor executing’ and ‘using the processor
executing’ in claim 1, and ‘using a processor executing’ in claim 29 are
unnecessary to the patentability and operability to the inventions of claims 1
and 29.” Reissue Declaration, filed March 13, 2015, 1.
Although other narrowing limitations may have been added to Reissue
Claims 1, 29, and 35 (directed to specific details of how the search results
are displayed), these limitations have nothing to do with the limitation of a
processor executing the search queries at issue here.
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We recognize that if the reissue claims relate to “overlooked aspects”
that were never claimed and, therefore, never surrendered, the recapture
doctrine is inapplicable. Youman, 679 F.3d at 1347. However, here, the
prosecution history of the Issued Patent evinces that this is not case.
Original Claims 1 and 15 of the ’706 application, similarly to the present
pending Reissue Claims, were broadly directed towards a way of displaying
search results after a first search query and a secondary search query (via a
claimed secondary search algorithm). The Specification provides no
indication that the Reissue Claims are directed to a separate species or
embodiment not covered by the Original Claims during the prosecution
history. Further, the secondary algorithm of Original Claim 1 is now recited
in the dependent Reissue Claim 26. Therefore, the Reissue Claims are not
directed to overlooked aspects, and are subject to recapture.
Thus, we determine that Reissue Claims 1–7, 10, 12–14, and 29–38 of
the present application constitute an attempt to recapture subject matter that
Patentee intentionally surrendered during prosecution of the Issued Patent.
As for the Reissue Declaration, it must “specifically identify at least
one error pursuant to 35 U.S.C. [§] 251 being relied upon as the basis for
reissue.” 37 C.F.R. § 1.175(a). Here, the Reissue Declaration states that the
limitations directed to a processor are “unnecessary to the patentability and
operability to the inventions of claims 1 and 29.” Declaration 1. However,
as discussed above, the processor was subject matter surrendered to obtain
Patent Claims 1 and 29. And “not every event or circumstance that might be
labeled ‘error’ is correctable by reissue” and one “such circumstance that
does not satisfy the ‘error’ requirement is embodied by the recapture rule.”
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Youman, 679 F.3d at 1343. Therefore, the statement of error in the Reissue
Declaration relates to an error that is uncorrectable by reissue.
Reissue Claims 15, 16, and 18–28, which recite a processor that
executes search queries, and thus are not subject to the recapture rule, are
nonetheless also rejected under 35 U.S.C. § 251 because they are the subject
of and further amended in a reissue application with a defective Reissue
Declaration.
Accordingly, we enter a new ground of rejection of Reissue Claims 1–
7, 10, 12–16, and 18–38 under 35 U.S.C. § 251.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–2, 4–5,
7, 10, 15–
16, 18–19,
21, 24, 29,
31–33
103 Jing 1–2, 4–5,
7, 10, 15–
16, 18–19,
21, 24, 29,
31–33

6, 20 103 Jing, Armitage 6, 20
25 103 Jing, Naqvi 25
12–13,
26–27, 34
103 Jing, Svore 12–13,
26–27, 34

35–38 103 Liu, Jing 35–38
3, 22, 23 103 Jing,
Kawamura
3, 22, 23
14, 28, 30 103 Jing, Liu 14, 28, 30
1–7, 10,
12–14,
29–38
251 Recapture 1–7, 10,
12–14,
29–38
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1–7, 10,
12–16,
18–38
251 Defective
Declaration
1–7, 10,
12–16,
18–38
Overall
Outcome
35–38 1–7, 10,
12–16,
18–34
1–7, 10,
12–16,
18–38

NON-FINALITY OF DECISION
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Patentees, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART; 37 C.F.R. § 41.50(b)