Meredith J. Morris et al.

Patent Trials and Appeals Board

Oct 27, 2020

2018009051 (P.T.A.B. Oct. 27, 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.
12/756,202 04/08/2010 Meredith J. Morris 328248.01 1152
69316 7590 10/27/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
ALMANI, MOHSEN
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
10/27/2020 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MEREDITH J. MORRIS, JAIME TEEVAN,
KATRINA M. PANOVICH, ARAVIND BALA,
JONATHAN GARCIA, SUSAN T. DUMAIS, and
ERIC J. HORVITZ
____________________

Appeal 2018-009051
Application 12/756,202
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, DAVID C. McKONE, and
JOHN P. PINKERTON, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 14 and 23–38, which are all of the claims pending
in the application. Claims 1–13 and 15–22 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Microsoft Technology Licensing,
LLC as the real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant generally describes the disclosed and claimed invention as a
system for integrating a search service with a social network resource. Spec.
¶ 6).2
Representative Claim
Claims 23, 29, and 35 are independent. Claim 29 is representative of
the subject matter on appeal and provides as follows:
29. A method performed by one or more computing devices,
the method comprising:
receiving search requests inputted by users of a search
engine and submitted to the search engine by user devices
operated by the users, each search request comprising a search
term inputted by a respective user and submitted to the search
engine by a correspondingly operated user device, the search
engine comprising a search index indexing documents on the
Internet;
generating a search results page for each respective search
request, wherein each search results page comprises links to
documents represented in the search index that the search engine
determined, according to the search index, to be relevant to the
corresponding search term;
identifying topics of the searches based on the search
terms, and according to the identified topics, identifying social
candidates among the search requests; and
for each search identified as a social candidate search
request, based on the documents of the respective search result

2 Our Decision refers to the Final Office Action mailed Dec. 7, 2017 (“Final
Act.”), Appellant’s Appeal Brief filed May 11, 2018 (“Appeal Br.”) and
Reply Brief filed Aug. 15, 2018 (“Reply Br.”), the Examiner’s Answer
mailed Aug. 10, 2018 (“Ans.”), and the Specification filed Apr. 8, 2010
(“Spec.”).
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page, determining, on a document by document basis, which
links of the documents of the respective search result page are to
be augmented for messaging, and for the determined links,
locating respective messaging interface elements in the
respective search results page relative to the respectively
determined links.
Appeal Br. 21 (Claims App.).
Rejections on Appeal
Claims 29 and 32 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Chen et al. (US 2009/0164929 A1; published June 25, 2009)
(“Chen”). Final Act. 2–4.
Claims 14, 23–28, 33–35, 37, and 38 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chen and Kumar (US 2009/0125511
A1; published May 14, 2019). Final Act. 4–13.
Claims 30, 31, and 36 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen, Kumar, and Moxley et al. (US 2011/0246910
A1; published Oct. 6, 2011) (“Moxley”). Final Act. 13–14.
ANALYSIS
We have reviewed the Examiner’s rejection of claims 14 and 23–38 in
light of Appellant’s arguments in the Appeal Brief (see Appeal Br. 9–17)
and the Reply Brief (see Reply Br. 1–8) that the Examiner erred.
Appellant’s arguments are not persuasive of error. Unless otherwise
indicated, we agree with, and adopt as our own, the Examiner’s findings of
fact and conclusions as set forth in the Answer (see Ans. 3–19) and in the
Office Action from which this appeal is taken (see Final Act. 2–14). We
provide the following explanation for emphasis.
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Claims 29 and 32
The Examiner rejects claims 29 and 32 under 35 U.S.C. § 102(e) as
being anticipated by Chen. Final Act. 2–4.
Claim 29
In regard to claim 29, Appellant makes two arguments. Appellant
first argues that “Chen does not supplement search engine result links with
user interface (UI) element for messaging.” Appeal Br. 9–11. According to
Appellant, “[w]hile Chen discusses adding communication links 372, those
communication links are added to the recommendations 364, not the search
engine results set 314.” Appeal Br. 10. Appellant also argues that Chen
does not determine which documents found from an internet search index
are to be augmented for messaging. Id. at 11.
We are not persuaded by Appellant’s argument because, as the
Examiner finds, Chen discloses search engine result links with user interface
element 372 for a particular link on search results page 120. Ans. 3–8
(citing Chen, Fig. 7, ¶¶ 87, 90). Figure 7 of Chen is reproduced below.
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Figure 7 is a screenshot of an exemplary query-result page and user
interface 118 with integrated social networking features. Chen ¶¶ 12; 84.
As Chen explains, and as discussed further below, user queries (such as
“favorite restaurants” shown in Figure 7) generate search result sets 314 that
are used “to produce customized and personalized search results 120.” Id.
Fig. 3; ¶ 30. Chen discloses that the customized and personalized search
results may “include recommendations and ratings from friends and peers
(e.g., a search on ‘best restaurants’ may return a restaurant name with a
‘highly recommended by Bob’ result).” Id. at ¶ 19. Chen also discloses that
“[t]he system may append communication icons and links to each search
result, so the user may directly contact friends and peers from the same
search result entries, for real-time instant messaging, email, etc.” Id. at ¶ 20
(emphasis added). In describing Figure 7, Chen states it shows browser
display user interface 118 in which search results 120 include “a display of
the recommendations 702 and 702’ themselves in text form, and associated
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communication links 372 of the peer,” including real time chat link 704 and
email link 706 to the peer. Id. at ¶ 84; see also id. at ¶ 37. Thus, we agree
with the Examiner’s finding that Chen discloses search engine result links on
search results page 120, such as the link for Café Ori in Figure 7, with
messaging interface element 372 for this particular search result link.
Appellant’s argument that communication links 372 are added to
recommendations 364, not the search engine results set 314, is not
persuasive for several reasons. First, Chen shows in Figure 7, and states in
paragraph 20, that communication links 372 are added “to each search
result.” In that regard, the Examiner finds, and we agree, that Appellant
“ignores that the recommendation 702 and the communication links 372 as
illustrated in [F]ig[ure] 7 are added to a particular search result provided by
the search engine.” Ans. 8. Second, the Examiner finds, and we agree, that
Chen discloses determining whether there is a search result that can be
possibly supplemented with interface 372 because paragraph 37 of Chen
explains that “multiple communications links 372 (i.e., links to
communication channels)” may be posted “with each qualifying entry in the
search results.” Id. at 7–8 (citing Chen ¶ 37). Third, Appellant’s argument
is not persuasive because it is not supported by paragraph 4 of Chen, upon
which Appellant relies. Appeal Br. 10 (citing Chen ¶ 4). Paragraph 4 does
not describe adding communication links 372 to recommendations 364, but
states that “an exemplary system may enable the posting of search results
that contain explicit recommendations made by peers, the posting of a
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reputation of the peers, and the appending of links to channels for directly
communicating with those peers.”3
Thus, for these reasons, we find that Chen discloses “locating
respective messaging interface elements in the respective search results page
relative to the respectively determined links,” as recited in claim 29.
Second, Appellant argues that Chen lacks a two-phase process of
“determining whether to do any augmentation for a search based on a topic
of the search, and, within a social candidate search request, determining
whether to augment for messaging on a document-by-document basis.”
Appeal Br. 11–12; Reply Br. 5–6. Appellant argues that paragraph 19 of
Chen, which was cited by the Examiner, “does not identify the putative
search topic,” and even assuming it does, Chen does not use that as a
condition for deciding to supplement its recommendations with
communication links. Appeal Br. 12.
We also are not persuaded by Appellant’s second argument. Initially,
we note that Appellant’s argument is vague and unclear with respect to the
condition in the first phase for determining which links of the search results
are to be augmented for messaging. To the extent Appellant is arguing that

3 In the Reply Brief, Appellant argues that the Examiner’s finding that a
recommendation is something added to a search result link is inconsistent
with Chen’s teaching of ranking a recommendation and that
“recommendation [702] in Figure 7 is the restaurant link, which comes from
one of Chen’s databases 204/208.” Reply Br. 3–5. Because this argument is
made for the first time in the Reply Brief not in response to a shift in the
Examiner’s position or without otherwise showing good cause, the argument
is waived. See 37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
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determining whether links are to be augmented is conditional and based on
“a topic of the search,” we find the argument is without merit because it is
not commensurate with the scope of the claim. Contrary to Appellant’s
argument, claim 29 does not recite determining whether to augment based
on the topic of the search, but specifically requires “identifying topics”
based on the search terms and then “identifying social candidates” among
the search requests—“identifying topics of the searches based on the search
terms, and according to the identified topics, identifying social candidates
among the search requests.” Claim 29 further requires using the social
candidate search request to determine which links are to be augmented—
“for each search identified as a social candidate search request, based on the
documents of the respective search result page, determining, on a document
by document basis, which links of the documents of the respective search
result page are to be augmented for messaging.”
Appellant’s second argument is also not persuasive because, as the
Examiner finds, and we agree, Chen discloses (1) producing conventional
search result sets 314 for a query (such as “best restaurants”) submitted by a
user, (2) using the query’s topic (such as “restaurants, books, movies” (Chen
¶ 42)) for “identifying social candidates” from the user profile data
(“similarly situated users who may have previously submitted
recommendations regarding the search results corresponding to the search
query at hand” (Chen ¶ 90)), and (3) determining if there is a qualified
search result among generated search results that can be supplemented with
messaging interface elements (such as communication links 372, as shown
in Figure 7 of Chen). Ans. 5–11 (citing Chen, Fig. 8, ¶¶ 37, 42, 87–95; see
also id. at ¶¶ 19, 20, 38, 46, 84). Thus, Chen discloses using the topic of a
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search query in accordance with claim 29 because it uses the query’s topic
for “identifying social candidates among the search requests,” as recited in
claim 29. The term “social candidates” is not defined in the Specification
and is very broad. The Examiner appears to construe the term “social
candidate” to mean a search topic for which a user’s social network
connections, friends, and peers have provided social data or feedback, such
as preferences, ratings, and recommendations. Appellant does not challenge
the Examiner’s apparent interpretation of “social candidate” or propose a
construction for the term. Accordingly, we conclude the Examiner’s
interpretation of “social candidate” is correct under the broadest reasonable
interpretation standard applied during prosecution. And, as stated above, we
also find that Chen discloses using the search query’s topic, such as
restaurants, for “identifying social candidates” from the user profile data
because Chen discloses analyzing the user’s profile data, including “the
user’s online memberships and social connections,” to find “similarly
situated users who may have previously submitted recommendations
regarding the search results corresponding to the search query at hand.”
Chen ¶ 90.
Appellant’s argument that Chen teaches performing social
supplementation on every search, regardless of the topic of the search, is
also unpersuasive. Although Chen discloses retrieving the user’s profile
data for each query submitted by the user, Chen discloses that search results
are supplemented only when the search topic identifies social candidates or
users who have previously submitted recommendations regarding the search
results corresponding to the search query. Chen ¶ 90. In that regard, the
Examiner finds, and we agree, that in Chen,
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a search result is augmented with recommendation and
associated communication links if the system finds such a
recommendation, otherwise a search result is displayed without
recommendation and communication links as illustrated in
[F]ig[ure] 7 wherein the search result “Pair: Small Plates, Food
and Wine in SeattlePair” is displayed without any
recommendations and communication links.
Ans. 11 (citing Chen, Fig. 8, ¶¶ 42, 46, 87, 90, 95).
Accordingly, for these reasons, we find that Chen discloses the
limitations of claim 29 reciting:
identifying topics of the searches based on the search terms, and
according to the identified topics, identifying social candidates
among the search requests; and
for each search identified as a social candidate search request,
based on the documents of the respective search result page,
determining, on a document by document basis, which links of
the documents of the respective search result page are to be
augmented for messaging, and for the determined links, locating
respective messaging interface elements in the respective search
results page relative to the respectively determined links.
Claim 32
Claim 32 depends from claim 29 and further recites “for a given
search result page, determining that a document thereof comprises a topic
that corresponds to a social-querying topic, and based thereon, including in
the search result page a messaging interface element in association with a
link to the topic.” Appeal Br. 22 (Claims App.) (emphasis added).
Appellant argues that the rejection is improper as Chen does not “decide to
add a communication link based on a topic of a search result entry,” because
“Chen adds a communication link to a recommendation based on the fact
that it is a recommendation.” Appeal Br. 12–13; Reply Br. 6
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Appellant’s argument is not persuasive. First, for the reasons
discussed above, we have determined that Chen does not disclose adding a
communication link to a recommendation, but instead discloses that
recommendations and communication links 372 are added on the search
results page to a particular search result provided by the search engine. See
Chen, Fig. 7, ¶¶ 20, 37. Second, for the same reasons discussed above in
regard to claim 29, we also find that Chen discloses determining that a
search result document “comprises a topic that corresponds to a social-
querying topic” as recited in claim 32. (Emphasis added). The term “social
querying topic” is not described in the Specification and is very broad. We
discern no meaningful difference in the term “social candidates,” as recited
in claim 29, and the term “social-querying topic,” as recited in claim 32.
The Examiner appears to interpret a “social-querying topic” to have
essentially the same meaning as a “social candidate.” See Ans. 11.
Accordingly, we conclude that the Examiner correctly interpreted the term
“social-querying topic” under the broadest reasonable interpretation standard
to mean a search topic for which a user’s social network connections,
friends, and peers have provided social data or feedback, such as
preferences, ratings, and recommendations.
Third, we are not persuaded by Appellant’s argument that Chen does
not “decide to add a communication link based on a topic of a search result
entry.” As discussed above, Chen discloses determining whether there is a
search result that can be possibly supplemented with interface 372 because
paragraph 37 of Chen explains that “multiple communications links 372
(i.e., links to communication channels)” may be posted “with each
qualifying entry in the search results.” Ans. 7–8 (citing Chen ¶ 37). In
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addition, the Examiner finds, and we agree, Chen discloses using the query
topic, the corresponding search results, and user profile data to find
“similarly situated users who may have previously submitted
recommendations regarding the search results corresponding to the search
query at hand,” and then displays “personalized search results, including
recommendations and communication links.” Id. at 11 (citing Chen, Figs. 7,
8; ¶¶ 42, 90, 95). The Examiner also finds, and we agree, that the “similarly
situated users” are determined based on their expertise on certain topics,
such as restaurants, books, and movies, and “their shared top 10 lists which
are organized under their expertise/topics.” Id. at 11–12 (citing Chen ¶¶ 42,
46, 90). Thus, for these reasons, we also find that Chen discloses
determining that a query topic corresponds to a social-querying topic, i.e., a
query topic for which there is social data or feedback, and, based thereon,
including in the search result page a messaging interface, as recited in claim
32.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection of claims 29 and 32 under § 102(e) as being anticipated
by Chen.
Claims 14, 23–28, 33–35, 37, and 38
The Examiner rejects claims 14, 23–28, 33–35, 37, and 38 for
obviousness based on the combination of Chen and Kumar. Final Act. 4–13.
Claim 23 is independent, and each of claims 14 and 24–28 depends directly
from claim 23. Appeal Br. 19–21 (Claims App.). Claim 35 is independent,
and each of claims 37 and 38 depends directly from claim 35. Id. at 22–23.
Each of claims 33 and 34 depends directly from independent claim 29. Id. at
22.
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Claims 14 and 23–28
Claim 23 is a method claim and recites the following relevant
limitations, the following:
for each search results page, determining whether the search
results page is to be processed for social-enhancement by
determining a topic corresponding to the search string of the
search results page and determining whether the determined
topic matches one of a plurality of pre-defined social topics, and
responsive to so determining, further processing the results page
for social-enhancement by incorporating into the corresponding
search results page one or more user interface elements
comprising information about respective documents in the
search results page, wherein which of the documents in the
search results page are supplemented with a respective one of the
user interface elements is determined based on determined
relationships between contents of the respective documents and
the search string, each user interface element configured to:
be displayed by the corresponding client device, and
respond to being activated at the corresponding client
device by initiating transmission, by the corresponding client
device, of a message pre-configured with content related to
content of the document corresponding to the activated user
interface element.
Appeal Br. 19–20 (Claims App.) (emphases added).
Appellant argues that the Examiner erred in rejecting claim 23 for
several reasons. First, Appellant argues that, as shown with respect to claim
29, Chen does not supplement search engine result links with user interface
elements for messaging because “Chen teaches that messaging elements are
added to recommendations.” Appeal Br. 13. Appellant made this same
argument as its first argument in regard to claim 29. For the reasons
discussed above with respect to claim 29, Appellant’s first argument here is
not persuasive in regard to claim 23.
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Second, Appellant argues that “Chen does not determine a topic of a
search string or use such a determined topic to determine whether to provide
social-enhancement to a search result page.” Id.; Reply Br. 6–7. Appellant
also argues that paragraphs 84 and 95 cited in the rejection do not mention
determining a topic of a search string or “pre-defined social topics or
determining whether they match a topic of a search string.” Appeal Br. 13–
14. We are not persuaded by this argument because, as discussed above in
regard to claim 29, we find that Chen discloses using the query’s topic, such
as restaurants, books, and movies, for identifying “social candidates” among
the search requests and determining if there is a qualified search result
among generated search results that can be supplemented with messaging
interface elements (such as communication links 372, as shown in Figure 7
of Chen). See Ans. 5–11 (citing Chen, Fig. 8, ¶¶ 37, 42, 87–95; see also id.
at ¶¶ 19, 20, 38, 46, 84). In addition, the Examiner finds, and we agree, that
“topics such as ‘restaurants, books, and movies, etc.’ are pre-defined social
topics because they are stored in the user social network profile which
includes recommendations from the user’s social network contacts according
to certain topics.” Ans. 13 (citing Chen ¶¶ 46, 47; see also ¶¶ 42, 90). Thus,
we find that Chen teaches or suggests determining whether to process search
results for social enhancement by using the query’s topic, such as
restaurants, books, and movies, to determine whether the topic matches one
of a plurality of “pre-defined social topics,” as recited in claim 23.
Third, Appellant argues the rejection is in error because the rationale
for combining Kumar with Chen is an unsupported conclusion that lacks any
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factual underpinning. Appeal Br. 14–15.4 Fourth, Appellant also argues
that paragraph 48 of Kumar, which is cited by the Examiner, does not teach
“a message pre-configured with content” because the “only pre-configured
content Kumar describes is a link to the relevant document being shared,”
which is not content, but just the location of the document. Id. at 15 (citing
Chen, Figs. 5A, 5B, and accompanying text). We are not persuaded by these
arguments either, which we address below in reverse order.
In regard to Appellant’s fourth argument, the Examiner finds that
Kumar teaches the recited feature of claim 23 of each user interface element
being configured to “respond to being activated at the corresponding client
device by initiating transmission . . . of a message pre-configured with
content related to content of the document corresponding to the activated
user interface element.” Id. at 15. The Examiner further finds that Kumar
teaches or suggests this feature because paragraph 49 of Kumar describes
that upon selection of Email from a pull-down menu, a SocialMail popup
window is displayed and its fields are automatically populated, so that “the
subject line is populated with the title 72 of the content (e.g., the title of an
article)” to be shared and “the link 74 to the article is inserted into the
message body 76.” Id. (citing Kumar, Figs. 5A, 5B; ¶ 49). Although
Appellant argues that the “only pre-configured content Kumar describes is a
link to the relevant document being shared,” which is not content, but just

4 In the Reply Brief, Appellant argues for the first time that Kumar and
Chen are not analogous. Reply Br. 7. Because this argument is made for the
first time in the Reply Brief not in response to a shift in the Examiner’s
position or without otherwise showing good cause, the argument is waived.
See 37 C.F.R. § 41.41(b)(2).
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the location of the document (Appeal Br. 15), we are not persuaded by this
argument for three reasons.
First, the limitation at issue recites “each user interface element
configured to . . . respond to being activated at the corresponding client
device by initiating transmission . . . of a message pre-configured with
content related to content of the document corresponding to the activated
user interface element.” The terms “content” and “pre-configured content”
are not defined in the Specification and are very broad.5 Under the broadest
reasonable interpretation of these terms, we find that Kumar’s teaching of
populating the subject line with the “title” of the article to be shared meets
the limitation that the interface element is configured to respond to
activation with “a message pre-configured with content related to content of
the document.” This limitation does not require that the interface be
configured so that, upon activation, the entire content of a document is
transmitted, but only “content related to content of the document.” We
determine that, under the broadest reasonable interpretation of “content,” the
“title” of a document is “content” and that the “title” of a document is
“related to content of a document.”
Second, we find that Kumar’s teaching of inserting a link to the
document into the message portion of the SocialMail also meets the
limitation that the interface element is configured to respond to activation
with “a message pre-configured with content related to content of the
document.” Although we agree with Appellant that a link to a document is

5 We note that in describing the message formulation module 408,
paragraph 99 of the Specification mentions generating a textual message and
states that the module can generate messages “having other types of content,
such as image content, audio content, video content, etc.” Spec. ¶ 99.
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the location of the document, we again note that the limitation at issue
requires “a message pre-configured with content related to content of the
document.” We determine that, under the broadest reasonable interpretation
of “content,” the link to the document is “content related to content of the
document.”
Third, Kumar teaches inserting an optional personal note into the
message body 76, in addition to the link to the relevant article. Kumar ¶ 49.
Such a personal note could provide an evaluation of the article or
specifically mention recommended portions of the article. Thus, we find
that this teaching of Kumar at least suggests “a message pre-configured with
content related to content of the document.”
In regard to Appellant’s third argument concerning the Examiner’s
rationale for combining Kumar with Chen (Appeal Br. 14–15), the Examiner
finds that Chen and Kumar are combinable because they both provide for
emailing functionality while a user is viewing a search result. Ans. 14–15
(citing Chen ¶¶ 20, 37, 84; Kumar Figs. 5A, 5B; ¶¶ 46–49). As discussed
above with respect to Appellant’s fourth argument, the Examiner also finds
that Kumar specifically teaches the feature of “generating a message pre-
configured with content related to content of the document corresponding to
the activated user interface element” because Kumar describes automatically
populating the subject line with the title of the article to be shared and the
message body with a link to the article. Ans. 15 (citing Chen, Figs 15A,
15B; ¶ 49). With respect to the rationale for combining the references, the
Examiner finds as follows:
Therefore, it would have been obvious to one of the ordinary skill
in the art to modify the emailing functionality as taught by Chen
with the functionality of inserting a message that is related to the
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content of the document that the user wishes to share as taught
by Kumar because doing so would further increase usability of
communication links in Chen for communicating with other
users with respect to a particular search result.
Ans. 15–16.
In view of the Examiner’s findings, we are not persuaded by
Appellant’s argument that the Examiner’s rationale for combining Kumar
with Chen is an unsupported conclusion that lacks any factual underpinning.
Instead, we agree with the Examiner’s stated rationale for combining the
references and find that it constitutes “articulated reasoning with some
rational underpinning” to support the conclusion that the limitation at issue
of claim 23 would have been obvious over the combination of Chen and
Kumar. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Accordingly, we are not persuaded the Examiner erred in (1) finding
that the combination of Chen and Kumar teaches or suggests the limitation
at issue of claim 23 and (2) concluding that the subject matter of claim 23
would have been obvious under 35 U.S.C. § 103(a) in view of the combined
teachings and suggestions of Chen and Kumar. Thus, we sustain the
Examiner’s rejection of claim 23. For the same reasons, we sustain the
Examiner’s rejection of dependent claims 14 and 24–28, which are not
separately substantively argued.
Claims 35, 37, and 38
Claim 35 is a method claim and recites the following:
receiving searches comprising search terms inputted by users of
a search engine and received from client devices operated by the
users, each search comprising one or more search terms, the
search engine comprising an index of network documents on the
Internet, the search engine transmitting to the client devices
search results pages comprising respective pages of links to
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network documents determined by the search engine, according
to the index, to be relevant to the search terms submitted to the
search engine;
for each search, determining whether social-enhancement is to
be performed for the corresponding search results page is to be
processed for social-enhancement by determining a topic
corresponding to the search string and determining whether the
determined topic matches one of a plurality of pre-defined
social-search topics, and responsive to so determining, further
processing the results page for social-enhancement by
incorporating into the corresponding search results page one or
more user interface elements comprising information about
respective documents in the search results page, and determining
which of the documents in the search results page are to be
supplemented with a user interface element is based on
determined relationships between the respective documents and
a search intent of the search string, each user interface element
configured to:
be displayed by the corresponding client device, and
respond to being activated at the client device by initiating
transmission, by the corresponding client device, of a message
pre-configured with content related to content of the document
corresponding to the activated user interface element.
Appeal Br. 22–23 (Claims App.) (emphases added).
Appellant argues that the Examiner erred in rejecting claim 35 for
several reasons. First, Appellant argues that, “[a]s shown above, Chen does
not supplement results from a search of a document index” because Chen
keeps a separate store of recommendations and “[i]t is only the
recommendations, not the search-result documents of Chen, that are
augmented with user interface elements.” Appeal Br. 15–16. Appellant
made this same argument as its first argument in regard to claim 29. For the
reasons discussed above with respect to claim 29, Appellant’s first argument
here is not persuasive of error in regard to claim 35.
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Second, Appellant argues that Chen does not teach determining which
documents are to be supplemented “based on determined relationships
between the respective documents and a search intent of the search string,”
as recited in claim 35. Id. at 16. According to Appellant, “[t]he search
string/query in Chen is used only to obtain search results,” and “is not used
for deciding whether to augment individual entries of the obtained search
results.” Id. We are not persuaded by this argument because, as the
Examiner finds, and as discussed above in regard to claim 29, Chen
selectively adds communication links to a particular search result
based on processing the query submitted by a user, analyzing
search results generated by a search engine to find a
qualified/particular search results that are matched with a
recommended search results based on applying the user profile
to the search results generated by the search engine for
generating a personalized search results that includes
recommendation for a particular search result and
communication links for communicating with the user who
recommended the particular search result.
Ans. 16–17; see Ans. 10–11 (citing Chen, Figs. 7, 8; ¶¶ 42, 46, 87, 90, 95;
see also id. at ¶¶ 19, 20, 38, 46, 84).
In regard to determining the relationship between the respective
documents and “a search intent of the search string,” the Examiner finds,
and we agree, that “[t]he claim and the [S]pecification neither define ‘a
search intent’ nor disclose how ‘a search intent’ is determined.” Id. at 17.
The Examiner also finds, and we agree, that “a search intent of the search
string such as’ “restaurants’ is simply interpreted as “a place to eat” (Chen
¶ 46) which is determining the topic of the submitted query.” Id. (citing
Chen ¶ 46 (stating “Jerry is looking for a place to eat and searches for
‘restaurants’”). Because Chen uses the query’s topic, such as restaurants, for
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identifying “social candidates” among the search requests and determining if
there is a qualified search result, as discussed for example in regard to claim
29, Chen therefore also teaches determining which documents are to be
supplemented “based on determined relationships between the respective
documents and a search intent of the search string,” such as “a place to eat.”
See Ans. 5–11 (citing Chen, Fig. 8, ¶¶ 37, 42, 87–95; see also id. at ¶¶ 19,
20, 38, 46, 47, 84).
Third, Appellant argues that Kumar does not teach incorporating into
a search results page one or more user interface elements comprising
information about respective documents in the search results page. Appeal
Br. 16–17. This argument is not persuasive because, as the Examiner
explains, and we agree, Kumar is not relied on for teaching supplementing
the search results page with user interface elements, but “for generating a
message pre-configured with content related to content of the document
corresponding to the activated user element.” Ans. 17 (citing id. at 14–16).
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”).
Fourth, Appellant argues that the rejection is in error because the
rationale for combining Kumar with Chen in regard to claim 35 is the same
as the rationale given for the rejection of claim 23. Appeal Br. 17. As
discussed above, we determine that Appellant’s argument regarding the
Examiner’s rationale to combine Kumar and Chen in regard to claim 23 is
not persuasive. For these same reasons, we also determine that Appellant’s
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argument regarding the rationale to combine the references in regard to
claim 35 is not persuasive.
Accordingly, we are not persuaded the Examiner erred in (1) finding
that the combination of Chen and Kumar teaches or suggests the limitation
at issue of claim 35 and (2) concluding that the subject matter of claim 35
would have been obvious under 35 U.S.C. § 103(a) in view of the combined
teachings and suggestions of Chen and Kumar. Thus, we sustain the
Examiner’s rejection of claim 35. For the same reasons, we sustain the
Examiner’s rejection of dependent claims 37 and 38, which are not
separately substantively argued.
Claims 30, 31, and 36
The Examiner rejects claims 30, 31, and 36 under § 103(a) for
obviousness over Chen, Kumar, and Moxley. Final Act. 13–14. Appellant
argues that the rejection offers no obviousness rationale—“[t]here is no
explanation given for why it is considered obvious to combine the cited
teachings of Moxley.” Id. at 13. In response to the Examiner’s findings in
the Answer, Appellant argues that the Examiner still has not explained why
the combination would have been obvious to begin with” and that the
Examiner’s explanation is conclusory. Reply Br. 8.
We are not persuaded by Appellant’s arguments. The Examiner finds
that combining Moxley with Chen in view of Kumar would have been
obvious because
all of them are concerned with providing search result in
response to a user query and further providing a communication
tool from the search result page and allowing the user to
communicate with other users from the search result page (Chen,
[F]ig. 7; Kumar, ¶ 49; and Moxley, [F]ig. 1 B.)
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Ans. 18. The Examiner also finds that, although Chen teaches using a query
topic for finding previous feedback of other users and for determining the
same topic that users are searching for at the same time, Chen does not teach
determining that “the topic is in a category of topics.” Id. (citing Chen
¶¶ 42, 43, 46). However, the Examiner further finds that Moxley “explicitly
discloses directing a query/question to a social network based on the topic of
the query/question and further determining whether the query belongs to the
category of previously answered queries.” Id. (citing Moxley ¶¶ 23, 49, 41).
Thus, the Examiner finds as follows:
It would have been obvious to one of the ordinary skill in the art
to combine the applied analogous references for disclosing
determining a topic to which a search request or search session
is directed, determining that the topic is in a category of topics
and based thereon identifying the search as a social candidate
search request because doing so would provide for an alternative
disclosure of utilizing the topic of the query for determining
whether a result can be generated from previously generated
results to the same query or from sending the query to the user’s
social network who knows about the topic (Moxley, 21, 41 and
43.).
Id. at 18–19.
Based on the Examiner’s findings, reasoning, and cited evidence, we
are unpersuaded of Examiner error. In particular, we agree with the
Examiner’s stated rationale for combining Moxley and Chen—i.e., to
provide an alternative way of utilizing the topic of the query by determining
whether a result can be generated from previously generated results to the
same query or from sending the query to the user’s social network that
knows about the topic. We also find the Examiner’s rationale constitutes
“articulated reasoning with some rational underpinning” to support the
conclusion that the subject matter of claims 30, 31, and 36 would have been
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obvious over the combination of Chen, Kumar, and Moxley. See KSR, 550
U.S. at 418.
CONCLUSION
We affirm the Examiner’s rejection of claims 29 and 32 under 35
U.S.C. § 102(e) as being anticipated by Chen.
We affirm the Examiner’s rejection of claims 14, 23–28, 33–35, 37,
and 38 under 35 U.S.C. § 103(a) for obviousness over Chen and Kumar.
We affirm the Examiner’s rejection of claims 30, 31, and 36 under 35
U.S.C. § 103(a) for obviousness over Chen, Kumar, and Moxley.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
29, 32 102(e) Chen 29, 32
14, 23–28,
33–35, 37,
38
103(a) Chen, Kumar 14, 23–28,
33–35, 37,
38

30, 31, 36 103(a) Chen, Kumar,
Moxley
30, 31, 36
Overall
result
14, 23–38

TIME PERIOD FOR RESPONSE
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R.
§ 41.50(f).
AFFIRMED