Thomas M. Annau et al.

Patent Trials and Appeals Board

Jan 3, 2020

13873349 - (D) (P.T.A.B. Jan. 3, 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.
13/873,349 04/30/2013 Thomas M. ANNAU AUS1P013A/
AUS920155002US2
6120
126909 7590 01/03/2020
Zilka-Kotab, PC - Austin
1155 N 1St. Street, Suite 105
San Jose, CA 95172
EXAMINER
LIN, ALLEN S
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte THOMAS M. ANNAU, GREGORY B. LINDAHL, SAMUEL
MAKONNEN, MICHAEL MARKSON, KEITH PETERS, ROBERT MICHAEL
SALIBA, AL SARY, RICH SKRENTA, DAN SWARTZ, ROBERT N. TRUEL,
and TIMOTHY WALTERS
____________________

Appeal 2018-0001901
Application 13/873,349
Technology Center 2100
____________________

Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1,
5–15, 18, and 23–36.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International Business
Machines Corporation. Appeal Br. 2.
2 Claims 2–4, 16, 17, and 19–22 were cancelled previously. Appeal Br. 27–29.
Appeal 2018-000190
Application 13/873,349

2

CLAIMED SUBJECT MATTER3
The claims are directed to using a keyword in a search query and generating
an alternative search query based on the keyword and a search operator, or
slashtag, determined based on association with the keyword. Spec. ¶¶ 31–32.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A system, comprising:
a hardware processor configured to:
detect at least one key word in a search query;
perform a trial search of the at least one key word in the
search query that returns a plurality of uniform
resource links (URLs) each with an associated ranking;
create an abbreviated list associated with the plurality of
URLs by removing path information for each of the
plurality of URLs to create abbreviated URLs and
combining matching abbreviated URLs and associated
rankings of the abbreviated URLs to create a single
instance of each abbreviated URL within the
abbreviated list;
determine a slashtag that is associated with at least a
portion of the abbreviated URLs within the abbreviated
list; and
generate an alternative search query utilizing the at least
one keyword and the determined slashtag.

3 Our Decision makes reference to Appellant’s Reply Brief (“Reply Br.,” filed
September 18, 2017) and Appeal Brief (“Appeal Br.,” filed June 6, 2017), and the
Examiner’s Answer (“Ans.,” mailed July 25, 2017) and the Final Office Action
(“Final Act.,” mailed January 10, 2017).
Appeal 2018-000190
Application 13/873,349

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REFERENCES
Name Reference Date
Diab US 2005/0228780 A1 Oct. 13, 2005
Kuroyanagi US 2006/0143185 A1 June 29, 2006
Bailey US 2006/0230005 A1 Oct. 12, 2006
Pasupathy US 2008/0134047 A1 June 5, 2008
Broder US 2009/0222441 A1 Sept. 3, 2009
Lu US 2010/0257150 A1 Oct. 7, 2010
Suchter US 2011/0178995 A1 July 21, 2011
Bigham US 2011/0196853 A1 Aug. 11, 2011
Dong US 2011/0246457 A1 Oct. 6, 2011
Lee US 2011/0320441 A1 Dec. 29, 2011
Michael Arrington, TechCrunch Review: The Blekko Search Engine
Prepares To Launch, 2010,
https://techcrunch.com/2010/07/19/techcrunch-review-the-blekko-search-
engine-prepares-to-launch/.

REJECTIONS
Claims 1, 5, 6, 11, 13, 18, 23, 24, 31, 34, and 36 are rejected under 35
U.S.C. § 103(a) as unpatentable over Bailey, Dong, and Kuroyanagi. Final Act. 4–
7.
Claims 7, 25, and 35 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bailey, Dong, Kuroyanagi, and Lee. Final Act. 7–9.
Claims 8, 26, and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bailey, Dong, Kuroyanagi, and Pasupathy. Final Act. 9–10.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Bailey,
Dong, Kuroyanagi, and Suchter. Final Act. 10–11.
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Bailey,
Dong, Kuroyanagi, and Arrington. Final Act. 11–12.
Claims 12, 29, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bailey, Dong, Kuroyanagi, and Broder. Final Act. 12–13.
Appeal 2018-000190
Application 13/873,349

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Claims 14 and 32 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Bailey, Dong, Kuroyanagi, and Diab. Final Act. 13–14.
Claims 15 and 33 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Bailey, Dong, Kuroyanagi, and Lu. Final Act. 14–15.
Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over Bailey,
Dong, Kuroyanagi, Pasupathy, and Bigham. Final Act. 15.

ANALYSIS
The Examiner finds that Bailey teaches all of the limitations of claim 1,
except “creat[ing] an abbreviated list associated with the plurality of URLs by
removing path information for each of the plurality of URLs to create abbreviated
URLs and combining matching abbreviated URLs and associated rankings of the
abbreviated URLs to create a single instance of each abbreviated URL within the
abbreviated list.” Final Act. 4. The Examiner finds Dong teaches creating a single
list of ranked and matched microblog URLs and web URLs, and Kuroyanagi
teaches removing path information to created abbreviated URLs. Final Act. 5.
The Examiner concludes that one of ordinary skill in the art would have found it
obvious to combine Baily, Dong, and Kuroyanagi for the predictable result of
efficiently viewing the search results. Final Act. 5.
Appellant contends Dong’s combined list and Kuroyanagi’s abbreviated
URL do not teach “combining matching abbreviated URLs and associated rankings
of the abbreviated URLs to create a single instance of each abbreviated URL
within the abbreviated list.” Appeal Br. 10–11 (emphasis omitted); Reply Br. 3–5.
The Examiner responds that Dong discloses that the microblog URLs and
web URLs are ranked, matched, and then combined into a single list. Ans. 3.
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Application 13/873,349

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Therefore, the Examiner concludes that Dong teaches the contested limitation.
Ans. 3.
We agree with Appellant. Although Dong discloses a single list with the
matched and ranked URLs, Dong does not teach creating a single instance of the
matching URLs. See Appeal Br. 10–11, 26; Reply Br. 3–5. Combining the
teachings of Dong with the teachings of Bailey and Kuroyanagi does not cure this.
As such, the combination of Bailey, Dong, and Kuroyanagi does not teach
“creat[ing] a single instance of each abbreviated URL within the abbreviated list.”
Appeal Br. 26 (emphasis added).
This issue is dispositive as to the Examiner’s rejection of the claims, and,
therefore, we do not reach Appellant’s additional arguments. See Appeal Br. 7–9,
11–26; Reply Br. 5–35. For the reasons discussed, we do not sustain the
Examiner’s rejection of claim 1, nor do we sustain the rejection of independent
claims 18 and 34, which recite similar limitations, and dependent claims 5–15, 35,
and 36, which depend from independent claim 1, and dependent claims 23–33,
which depend from independent claim 18.

CONCLUSION
The Examiner’s rejections of claims 1, 5–15, 18, and 23–36 are reversed.

Appeal 2018-000190
Application 13/873,349

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 5, 6, 11, 13,
18, 23, 24, 31,
34, and 36
103 Bailey, Dong,
Kuroyanagi
1, 5, 6, 11, 13,
18, 23, 24, 31,
34, and 36
7, 25, and 35 Bailey, Dong,
Kuroyanagi, and
Lee
7, 25, and 35
8, 26, and 27 Bailey, Dong,
Kuroyanagi, and
Pasupathy
8, 26, and 27
9 Bailey, Dong,
Kuroyanagi, and
Suchter
9
10 Bailey, Dong,
Kuroyanagi, and
Arrington
10
12, 29, and 30 Bailey, Dong,
Kuroyanagi, and
Broder
12, 29, and 30
14 and 32 Bailey, Dong,
Kuroyanagi, and
Diab
14 and 32
15 and 33 Bailey, Dong,
Kuroyanagi, and
Lu
15 and 33
28 Bailey, Dong,
Kuroyanagi,
Pasupathy, and
Bigham
28
Overall
Outcome
1, 5–15, 18,
and 23–36

REVERSED