Ex Parte Burkov

Patent Trial and Appeal BoardAug 13, 2013

10653369 (P.T.A.B. Aug. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte SERGEI BURKOV _____________ Appeal 2011-001165 Application 10/653,369 Technology Center 2100 ______________ Before DAVID M. KOHUT, TREVOR M. JEFFERSON, and JUSTIN BUSCH, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001165 Application 10/653,369 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-4, 6, 8-10, 13-16, 18, 20-22, 25, 27-29, 31, 32, and 37.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of these claims. INVENTION The invention is directed to methods and systems of using automatic categorization to search for documents. Spec. 2-3. Claim 1 is representative of the invention and is reproduced below: 1. A method of searching for documents by utilizing automatic categorization, comprising: executing a categorization program that categorizes and produces categorization information for a plurality of documents, the categorization information associating each document with one or more categories; storing the categorization information; responsive to receiving a search query from a user: identifying a plurality of search engines and causing at least one of the plurality of search engines to execute the search query; receiving a list of documents returned by at least one of the plurality of identified search engines responsive to the search query; checking the received list of documents against the categorization information; in response to determining that at least one document in the received list of documents is not associated with any category of the categorization information: repeating executing the categorization program with respect to the at least one document to produce and store updated categorization information that includes categorization 1 Claims 5, 7, 11, 12, 17, 19, 23, 24, 26, 30, and 33-36 were previously cancelled. Appeal 2011-001165 Application 10/653,369 3 information for the plurality of documents and the at least one document; checking the received list of documents against the updated categorization information; creating a changed list of documents by making a change to the received list of documents based on information derived from checking the received list against the updated categorization information; and returning to the user the changed list of documents, the changed list of documents being in the form of search results responsive to the search query. REFERENCES Greer US 2001/0011226 A1 Aug. 2, 2001 Baidya US 2003/0046311 A1 Mar. 6, 2003 Fain US 2006/0265400 A1 Nov. 23, 2006 REJECTION AT ISSUE Claims 1-4, 6, 8-10, 13-16, 18, 20-22, 25, 27-29, 31, 32, and 37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fain, Baidya, and Greer. Ans. 5-26. ISSUES Did the Examiner err in finding it obvious to combine Fain, Baidya, and Greer? Did the Examiner err in finding the combination of Fain, Baidya, and Greer teaches or suggests the following limitations required by each of the independent claims: Appeal 2011-001165 Application 10/653,369 4 (a) Repeating the categorization program when at least one document is not associated with any category of the categorization information; and (b) Subsequently using the updated categorization information to check the received list of documents? ANALYSIS2 We have reviewed the Examiner’s rejections in light of Appellant’s contentions that the Examiner has erred. We disagree with Appellant’s conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s rejection of the claims and in the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur with the conclusions reached by the Examiner. In addition, below we highlight the following arguments for emphasis. Appellant initially argues that the Examiner erred in finding it obvious to combine the references. App. Br. 6. Specifically, Appellant argues that the combination of the references contains disparate teachings of one reference in combination with the other two references and, therefore, the combination is improper. App. Br. 6-7. We disagree. In KSR International Co. v. Teleflex Inc., the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” and discussed circumstances 2 Appellant selects claims 1, 13, 25, and 37 as representative of the group comprising claims 1-4, 6, 8-10, 13-16, 18, 20-22, 25, 27-29, 31, 32, and 37. App. Br. 9, 10, and 11. Appeal 2011-001165 Application 10/653,369 5 in which a patent might be determined to be obvious. 550 U.S. 398, 415 (2007). Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. Here, the Examiner finds (Ans. 5-12 and 18-26) and we agree that each element of claims 1, 13, 25, and 37 is taught by the combination of references and the combination is nothing more than using known elements to perform their known functions yielding predictable results. We additionally agree with the Examiner that one of ordinary skill in the art would have combined the references “in order to ‘provide real-time searching capability in a focused manner’ (Baidya, Paragraph 0003) and to provide a filtering system which augments subsequent categorization (Greer Paragraph 0021).” Ans. 27. Next, Appellant argues that the combination of references does not teach repeating the categorization program when at least one document is not associated with any category of the categorization information. App. Br. 10. We disagree. The Examiner finds that Baidya teaches checking whether a company name and website is included in a database and, if not, the information is added to the database in order to be categorized and indexed. Ans. 30. We agree with the Examiner that this teaches the disputed limitation. Lastly, Appellant argues that the combination of references does not teach subsequently using the updated categorization information to check the received list of documents. App. Br. 10-11. Appellant specifically contends that the combination of the references does not check the documents twice, as required by the claims. App. Br. 11. However, the Examiner finds, and Appeal 2011-001165 Application 10/653,369 6 we agree, that paragraph [0021] and Figure 3 of Greer teach wherein data is checked using a first set of criteria and a second set of criteria if the user rule page has been updated. Ans. 32. Thus, we agree with the Examiner that the combination of the references teaches the disputed limitation. For the reasons discussed supra, we sustain the Examiner’s rejection of claims 1-4, 6, 8-10, 13-16, 18, 20-22, 25, 27-29, 31, 32, and 37. CONCLUSION The Examiner did not err in finding it obvious to combine Fain, Baidya, and Greer. The Examiner did not err in finding the combination of Fain, Baidya, and Greer teaches or suggests the following limitations required by each of the independent claims: (a) Repeating the categorization program when at least one document is not associated with any category of the categorization information; and (b) Subsequently using the updated categorization information to check the received list of documents SUMMARY The Examiner’s decision to reject claims 1-4, 6, 8-10, 13-16, 18, 20- 22, 25, 27-29, 31, 32, and 37 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Appeal 2011-001165 Application 10/653,369 7 msc