13404837 - (D) (P.T.A.B. Mar. 30, 2020)

Mark S. Knighton et al.

Patent Trials and Appeals BoardMar 30, 2020

13404837 - (D) (P.T.A.B. Mar. 30, 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. 13/404,837 02/24/2012 Mark S. Knighton 188857.190885 8550 24335 7590 03/30/2020 WARNER NORCROSS + JUDD LLP INTELLECTUAL PROPERTY GROUP 1500 WARNER BUILDING 150 OTTAWA AVE NW GRAND RAPIDS, MI 49503 EXAMINER GEBRESENBET, DINKU W ART UNIT PAPER NUMBER 2164 NOTIFICATION DATE DELIVERY MODE 03/30/2020 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): patents@wnj.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARK S. KNIGHTON, DAVID S. AGABRA, PETER J. DELAURENTIS, WILLIAM D. MCKINLEY, and TODD C. MOYER ____________ Appeal 2019-000719 Application 13/404,837 Technology Center 2100 ____________ Before JOHN A. EVANS, LINZY T. McCARTNEY, and JASON J. CHUNG, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–3, 5, and 10. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.2 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as NextEngine Inc. Appeal Br. 3. 2 Rather than reiterate the arguments of Appellant and the Examiner, we Appeal 2019-000719 Application 13/404,837 2 STATEMENT OF THE CASE Invention. The claims relate to a system for searching through a database using two or three dimensional data. See Abstract. Claims. Claims 1 and 10 are independent. An understanding of the invention can be derived from a reading of illustrative claim 1 which is reproduced below with some formatting added: 1. A method comprising: accepting an original specification via a distributed network the specification including at least one of three dimensional digital content and data that is automatically derived from three-dimensional digital content; comparing the specification with data from other three dimensional digital content, the data residing in a database linked to the distributed network, to find records that at least partially match the specification; reviewing the found records to identify words that are associated with the found records, the words not present in the original specification; and conducting a search using the words to find information related to the words. refer to the Appeal Brief (filed May 14, 2018, “Appeal Br.”), the Reply Brief (filed November 2, 2018, “Reply. Br.”), the Examiner’s Answer (mailed September 6, 2018, “Ans.”), the Final Action (mailed May 12, 2017, “Final Act.”), and the Specification (filed February 24, 2012, “Spec.”) for their respective details. Appeal 2019-000719 Application 13/404,837 3 REFERENCES AND REJECTIONS References. Name Publication Number Date Sandus US 2002/0072993 A1 June 13, 2002 Rioux US 6,631,364 B1 Oct. 7, 2003 Beeferman US 6,701,309 B1 March 2, 2004 Rejections.3 The claims stand rejected as follows: 1. Claims 1, 2, 5, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rioux and Beeferman. Final Act. 3–9. 2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rioux, Beeferman, and Sandus. Final Act. 9–10. ANALYSIS We have reviewed the rejections of claims 1–19 in light of Appellant’s arguments that the Examiner erred. We are persuaded that Appellant identifies reversible error. We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 6–8; and in the Reply Brief, pages 3–6. 3 The Application is being examined under the pre-AIA first to invent provisions. Final Act. 2. Appeal 2019-000719 Application 13/404,837 4 CLAIMS 1, 2, 5, AND 10: OBVIOUSNESS OVER RIOUX AND BEEFERMAN. Claim 1 recites, inter alia, “reviewing the found records to identify words that are associated with the found records, the words not present in the original specification.” Independent Claim 10 contains commensurate recitations. The Examiner finds Rioux substantially teaches the claims, but fails to teach identifying words found in searched records that are not present in the original specification and finds Rioux fails to teach conducting a subsequent search using the found words to find information related to the found words. Final Act. 4. The Examiner finds Beeferman teaches these limitations. Id. (citing Beeferman, col. 3, ll. 53–55). Appellant contends Beeferman teaches refining a query or suggesting alternative queries based on prior user activity and queries that were submitted proximate in time. Appeal Br. 7 (citing Beeferman, col. 3, ll. 53– 55; col. 10, ll. 33–35; and col. 10, ll. 47–51). But, Appellant argues the subsequent searches are not based on words present in the records found by the first query. Id. To determine whether the Rioux-Beeferman combination teaches the claimed “the words not present in the original specification and conducting a search using the words,” the Examiner finds “Appellant’s claims 1 and 10 are broadly worded to include any advertisement content that is returned as a result of the first search.” Ans. 6 (“Applicant’s specification states . . .” and setting forth Appellant’s Specification ¶ 39) (highlighting three separate embodiments set forth therein). The Examiner “relied upon Beeferman to Appeal 2019-000719 Application 13/404,837 5 expressly teach the second search using words unrelated to original specification but suggested with the search result of the first query.” Ans. 7 (citing Beeferman, col. 3, ll. 53–55; col. 10, ll. 33–51). Appellant contends a specification may disclose embodiments that are not claimed. Reply Br. 4. Whether Beeferman discloses embodiments described in Appellant’s specification is irrelevant. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citation omitted) (finding “the name of the game is the claim”). Appellant next contends the Examiner’s citations to Beeferman fail to provide the required teaching. Reply Br. 4. (quoting the passages cited by the Examiner). We agree. Beeferman discloses: A query refinement system may offer a refinement suggestion that is unrelated to an original query. That is the system might address the issue of, “For what else might the user be interested in searching?” or, “For what might the user search next?” Having searched for “coffee”, might he, also wish to search for “food”? Beeferman, col. 3, ll. 53–55 (cited by the Examiner with adjacent text included for context). Beeferman further discloses: Related queries can be used to suggest alternate queries. For example, a system receiving a communication indicating that a searcher has submitted one of a first query and a second query can send the other of the first and second queries to the searcher as a suggested alternate query. Similarly, the one query can be used to enhance a search for the other query. For example, a person searching for “patent” may appreciate being directed to information that would be revealed by a more specific search Appeal 2019-000719 Application 13/404,837 6 for “patent” AND “trademark”. Even more helpful may be the case where a person who first searches for “patent” and then searches for “trademark” is directed to information that has been selected by other users who have also submitted queries for both “patent” and “trademark”. Related queries can also be used it aid in a selection of an advertisement. For example, given that a searcher has submitted a query for “patent”, the searcher may appreciate being presented with an advertisement related to “trademark”. Beeferman, col. 10, ll. 33–51 (citied by the Examiner). Contrary to the Examiner, we find no disclosure that a first search reveals words “not present in the original specification,” as claimed. Nor do we find disclosure that a subsequent search is performed using such found words. Beeferman discloses a subsequent search is performed using “information that has been selected by other users who have also submitted queries.” Beeferman, col. 10, ll. 44–5. In view of the foregoing, we decline to sustain the rejection of claims 1, 2, 5, and 10. CLAIM 3: OBVIOUSNESS OVER RIOUX, BEEFERMAN, AND SANDUS. Appellant contends because Sandus fails to cure the deficiencies of the Rioux-Beeferman combination, as discussed above, that Claim 3 is allowable in view of its dependence from Claim 1. Appeal Br. 8. The Examiner does not apply Sandus to teach the disputed limitation. Ans. 9 (“The Examiner relied upon Sandus to supply the missing teaching ‘a user profile’ ”). In view of the foregoing, we decline to sustain the rejection of Claim 3. Appeal 2019-000719 Application 13/404,837 7 CONCLUSION4 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5, 10 103 Rioux and Beeferman 1, 2, 5, 10 3 103 Rioux, Beeferman, and Sandus 3 Overall Outcome 1–3, 5, and 10 REVERSED 4 Because we do not sustain the Examiner’s rejection for the reasons discussed herein, we need not address Appellant’s further arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”).