Ex Parte Brei

Patent Trial and Appeal Board

Sep 11, 2014

11469426 (P.T.A.B. Sep. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES E. BREI
____________

Appeal 2012-005089
Application 11/469,426
Technology Center 2100
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–4, 7, and 8.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies Gale Holdings I, Inc., as the real party in
interest. (App. Br. 2.)
2 Claims 5 and 6 have been canceled. (App. Br. 2.)
Appeal 2012-005089
Application 11/469,426

2
STATEMENT OF THE CASE
The claimed invention relates to information retrieval systems and
methods of presenting search results in information retrieval systems,
particularly online information retrieval systems. (Spec. 1.)3
Claim 1, which is illustrative of the subject matter on appeal, reads as
follows:
1. An information retrieval system comprising:
a server computer interfacing with a database;
an access device interfacing with the server;
a user interface module running on the server and
configured to receive a query from the access device,
query the database, and return a set of search results to
the access device based on the received query;
a user-operable selection feature integrated into the user
interface module and configured to send a user-
selected subset of the search results to the server;
and
a coverage analysis module interfacing with the server
and the access device and configured to extract and
analyze key subjects from documents in the database
corresponding to the subset of search results;
wherein the coverage analysis module is configured to
display a topical map via the access device, the topical
map showing the extent to which the documents cover
the topic space defined by the query.

Claims 1–4, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shibuya (US 2002/0174115 A1; published Nov. 21, 2002)
and Li (US 5,608,899; issued Mar. 4, 1997). (Ans. 5.)

3 References to “Spec.” refer to the Specification as amended July 10, 2009.
Appeal 2012-005089
Application 11/469,426

3

ISSUES PRESENTED
Appellant’s arguments present several issues on appeal. We view the
following two issues as dispositive:
Did the Examiner err in finding (Ans. 6) that Shibuya teaches “a
coverage analysis module interfacing with the server and the access device
and configured to extract and analyze key subjects from documents in the
database corresponding to the subset of search results,” as recited in claim 1,
as well as similar limitations in claims 7 and 8?
Did the Examiner err in finding (Ans. 6–7) that Li teaches “wherein
the coverage analysis module is configured to display a topical map via the
access device, the topical map showing the extent to which the documents
cover the topic space defined by the query,” as recited in claim 1, as well as
similar limitations in claims 7 and 8?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred. We concur with Appellant’s
contention that the Examiner erred in finding that Shibuya teaches
“extract[ing] and analyz[ing] key subjects from documents in [a] database,”
as recited in each of independent claims 1, 7, and 8. We also concur with
Appellant’s contention that the Examiner erred in finding that Li teaches
“display[ing] . . . a topical map showing the extent to which the documents
cover the topic space defined by the query,” as recited in each of the
independent claims.
Appeal 2012-005089
Application 11/469,426

4
As explained in paragraph 2 of Shibuya cited by the Examiner
(Ans. 6), Shibuya relates to “a database search method capable of hiding
search objects from anyone except for a client who issues a query”
(Shibuya ¶ 2). Paragraph 75 of Shibuya, cited by the Examiner as teaching
the “coverage analysis module” recited in claim 1 (Ans. 6), discloses an
“[i]nformation extracting section” that receives and analyzes a response to a
query from a database server that stores genetic or protein sequence patterns
(see Shibuya ¶¶ 4, 5, 19, 75) and extracts and outputs information
corresponding to search results for the original search sequence (Shibuya
¶ 75). As identified by Appellant (App. Br. 6–7), although the cited portions
of Shibuya describe extracting information corresponding to search results,
they do not teach or suggest extracting and analyzing key subjects from
documents. Indeed, Shibuya is concerned with searching of DNA, RNA,
and protein sequence databases, and we find no disclosure in Shibuya of
documents, let alone extraction and analysis of metadata such as “key
subjects” from documents as recited in claims 1, 7, and 8. As further
identified by Appellant (App. Br. 7–9), although the portions of Li cited by
the Examiner (i.e., Figures 2A and 2B; column 1, lines 15–17; column 3,
lines 12–26) describe a graphical user interface that arranges search results
as a pie chart or as a text and allows further searching of the underlying
documents within a category, they do not disclose a topical map showing the
extent to which the documents in a database cover a topic space defined by a
query as recited in claims 1, 7, and 8.
Accordingly, we will not sustain the Examiner’s rejection of
independent claims 1, 7, and 8 or of dependent claims 2–4.

Appeal 2012-005089
Application 11/469,426

5
DECISION
The rejection of claims 1–4, 7, and 8 under U.S.C. § 103(a) is
reversed.

REVERSED

tj