Ex Parte Cheung et al

Patent Trial and Appeal BoardNov 15, 2012

11248780 (P.T.A.B. Nov. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/248,780 10/11/2005 Dominic Cheung 12729-57 (Y00544US01) 1304 56020 7590 11/15/2012 BRINKS HOFER GILSON & LIONE / YAHOO! OVERTURE P.O. BOX 10395 CHICAGO, IL 60610 EXAMINER ALAM, SHAHID AL ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 11/15/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DOMINIC CHEUNG, DENNIS WU, BARRY LAFFOON, ALAN LANG, SCOTT SNELL, JIE ZHANG, PIERRE WANG, JENNIFER WU, PETER GOODWINE, WAI-YIN WONG, CAREY SUBLETTE, STEPHAN CUNNINGHAM, and BRUCE T. HOLMES ____________ Appeal 2010-004120 Application 11/248,780 Technology Center 2100 ____________ Before DENISE M. POTHIER, ERIC B. CHEN, and ANDREW CALDWELL, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004120 Application 11/248,780 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s non-final rejection of claims 1, 3-8, and 10-36. Claims 2 and 9 have been canceled. App. Br. 2.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention relates to a method for automating document content analysis and specially automating the determination of a search listing’s appropriateness. See generally Spec. ¶ 0002. Claim 1 is reproduced below with a certain disputed limitation emphasized: 1. A method for evaluating a search listing to be served in response to a query at an Internet search engine for inclusion in a network-accessible search database associated with the Internet search engine, the method comprising: determining a likelihood that the search listing, that comprises a title and is associated with a search term and a universal resource locator (URL), comports with a content policy of the internet search engine associated with the network-accessible search database; determining whether human review of the search listing is required before including the search listing in the network-accessible search database based on the likelihood that the search listing comports with the content policy; and including the search listing in the network-accessible search database upon a determination that human review is not required before including the search listing in the network accessible search database. The Examiner relies on the following as evidence of unpatentability: Braden-Harder US 5,630,121 May 13, 1997 1 Throughout this opinion, we refer to (1) the Appeal Brief filed April 30, 2009; (2) the Examiner’s Answer mailed September 14, 2009; and (3) the Reply Brief filed November 12, 2009. Appeal 2010-004120 Application 11/248,780 3 Chang US 6,091,415 July 18, 2000 Takagi US 6,131,147 Oct. 10, 2000 Goel US 2002/0103797 A1 Aug. 1, 2002 Gogolak US 2003/0046110 A1 Mar. 6, 2003 (filed Aug. 28, 2002) Hotti US 2003/0084073 A1 May 1, 2003 (filed Nov. 1, 2001) Cunningham US 2003/0212648 A1 Nov. 13, 2003 (filed May 8, 2002) Calistri-Yeh US 6,751,621 B1 June 15, 2004 (filed May 2, 2000) Pisaris-Henderson US 2004/0133471 A1 July 8, 2004 (filed Sept. 2, 2003 and claiming priority to Provisional App. No. 60/407,533, filed Aug. 30, 2002) Strumpf US 6,775,666 B1 Aug. 10, 2004 (filed May 29, 2001) Look US 2004/0225968 A1 Nov. 11, 2004 (filed Jan. 24, 2001) Maze US 2005/0235320 A1 Oct. 20, 2005 (effectively filed July 25, 1996) Cheung US 6,983,280 B2 Jan. 3, 2006 (filed Sept. 13, 2002) Bonner US 7,137,556 B1 Nov. 21, 2006 (filed Apr. 6, 2000) Yi Chan et al., Building Systems to Block Pornography, Challenge of Image Retrieval 1-9 (1999) (“Chan”). The Rejections 1. The Examiner rejected claims 1, 3-8, and 10-362 under 35 U.S.C. 2 The Examiner mistakenly includes canceled claims 2 and 9 in the rejections. We presume these errors are typographical. Appeal 2010-004120 Application 11/248,780 4 § 112, first paragraph, as failing to comply with the enablement requirement. Ans. 5-6. 2. The Examiner rejected claims 1, 3-8, and 10-36 as being unpatentable over claims 1, 3, 11, 15-18, 20, 25, 31, 62-66, and 68-78 of Cheung based on the ground of nonstatutory obviousness-type double patenting. Ans. 7-16. 3. The Examiner rejected claims 1, 3, and 15 under 35 U.S.C. § 102(e) as anticipated by Bonner. Ans. 18-22. 4. The Examiner rejected claim 15 under 35 U.S.C. § 102(b) as anticipated by Chan. Ans. 17. 5. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as unpatentable over Bonner and Hotti. Ans. 22-23. 6. The Examiner rejected claims 5-7 under 35 U.S.C. § 103(a) as unpatentable over Bonner and Takagi. Ans. 23-25. 7. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as unpatentable over Bonner and Look. Ans. 25-26. 8. The Examiner rejected claims 10 and 21 under 35 U.S.C. § 103(a) as unpatentable over Bonner and Cunningham. Ans. 26, 34. 9. The Examiner rejected claims 11-14 and 16-20 under 35 U.S.C. § 103(a) as unpatentable over Bonner and Calistri-yeh. Ans. 26-34. 10. The Examiner rejected claims 22-26 under 35 U.S.C. § 103(a) as unpatentable over Bonner, Cunningham, and Goel. Ans. 35-38. 11. The Examiner rejected claims 27-30 under 35 U.S.C. § 103(a) as unpatentable over Bonner, Cunningham, and Calistri-yeh. Ans. 38-41. Appeal 2010-004120 Application 11/248,780 5 12. The Examiner rejected claim 31 under 35 U.S.C. § 103(a) as unpatentable over Bonner, Cunningham, Calistri-yeh, and Chang. Ans. 41-42. 13. The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as unpatentable over Bonner, Cunningham, Calistri-yeh, Chang, and Gogolak. Ans. 42-43. 14. The Examiner rejected claim 33 under 35 U.S.C. § 103(a) as unpatentable over Bonner, Cunningham, Calistri-yeh, Chang, and Maze. Ans. 43-44. 15. The Examiner rejected claim 34 under 35 U.S.C. § 103(a) as unpatentable over Bonner, Cunningham, Calistri-yeh, Chang, and Braden-Harder. Ans. 44. 16. The Examiner rejected claim 35 under 35 U.S.C. § 103(a) as unpatentable over Bonner, Cunningham, Calistri-yeh, Chang, and Pisaris-Henderson. Ans. 44-45. 17. The Examiner rejected claim 36 under 35 U.S.C. § 103(a) as unpatentable over Bonner, Cunningham, Calistri-yeh, Chang, and Strumpf. Ans. 45-46. THE ENABLEMENT REJECTION The Examiner finds that claim 1 recites “a content policy” but that the disclosure fails to describe this content policy in such a way as to enable one skilled in the art as to how to make or implement the claimed invention. Ans. 5-6. In particular, the Examiner finds the disclosure describes subjective content, such as suspect terms, style, and nonsense content. See Ans. 49. The Examiner concludes that this content policy is not described in Appeal 2010-004120 Application 11/248,780 6 a clear and exact manner in the disclosure to enable an ordinary artisan to implement the claimed invention. See Ans. 6, 49-50. In response, Appellants state: The test for whether the specification enables a content policy is not whether the content policy is defined in clear, concise or exact terms as asserted by the Examiner but whether the specification contains sufficient information regarding the content policy to enable one skilled in the art to make and use the claimed invention. Reply Br. 5. ISSUE Under § 112, first paragraph, have Appellants describe the recited “content policy” in the disclosure in such terms that one skilled in the art would know how to make and use the claimed invention without undue experimentation? ANALYSIS Based on the record before us, we find error in the Examiner’s rejection. As Appellants correctly state, the focus of whether a claim is enabled requires a showing that an ordinarily skilled artisan would not know how to make and use the full scope of the claimed invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). Appellants map the content policy in the Summary of Claimed Subject Matter to portions of the disclosure (App. Br. 2 (citing Spec. 14:6-18:27; Figs. 4, 6, 8, and 9)), which provide examples of terms that may be used to determine whether a search listing comports with a content policy. Appellants also cite to the disclosure to describe how the claimed content Appeal 2010-004120 Application 11/248,780 7 policy is implemented based on quality, style, and relevance (App. Br. 5) and provide examples of determining search listings that are not relevant to a Uniform Resource Locator (URL) and have low quality (Spec: 6:17-7:2, 16:25-17:27) or offensive terms (Spec. 17:28-18:27, 25:27-42:5). Id. These cited passages provide an ordinarily skilled artisan working examples and guidance as to how to make and use the claimed content policy. Appellants further discuss Chan, demonstrating the state of the prior art and the skill level in the art. See App. Br. 5-6. The Examiner, on the other hand, discusses that the certain components which are part of the content policy (e.g., style, suspect terms, nonsense content) are subjective and thus not clearly or concisely defined. Ans. 6, 49-50. While the subjectivity of such components may cause the ordinarily skilled artisan to perform some experimentation and shows some unpredictability, this does not adequately demonstrate that experimentation would be undue to the artisan. Additionally, while the claim term, “content policy,” may make the claims broad, the Examiner has not sufficiently demonstrated that the claims have undue breadth due to lack of support in the disclosure. Based on the evidence of record, the Examiner focuses on the wrong test3 and has not presented adequate evidence that the claims are not enabled. Appellants therefore, have persuaded us of error in this rejection of: (1) independent claim 1; (2) independent claim 15 which recites 3 A rejection under 35 U.S.C. § 112, second paragraph based on indefiniteness is not before us. If prosecution continues, the Examiner may consider whether the pending claims (1) meet the threshold requirements of clarity and precision such that the claims serve the notice function as to what constitutes infringement or (2) include a subjective component. See MPEP §§ 2173.02(II), 2173.03(b)(III), 8th ed., Rev. 9, August 2012. Appeal 2010-004120 Application 11/248,780 8 commensurate limitations; and (3) dependent claims 3-8, 10-14, and 16-36 for similar reasons. THE DOUBLE PATENTING REJECTION The Examiner rejected claims 1, 3-8, and 10-36 as being unpatentable over claims 1, 3, 11, 15-18, 20, 25, 31, 62-66, and 68-78 of Cheung based on the nonstatutory obviousness-type double patenting ground. Ans. 7-16. Appellants have not challenged the merits of this rejection, stating their intent to file a terminal disclaimer. See App. Br. 6. There being no dispute before us, we summarily sustain the rejection. See, e.g., Manual of Patent Examining Procedure (MPEP) § 1205.02, 8th ed., Rev. 9, August 2012. THE ANTICIPATION REJECTION OVER BONNER Regarding representative claim 1, the Examiner finds that Bonner discloses a search listing (e.g., result of search run against a database) that comprises a title (e.g., a tracking number) and is associated with a URL because the application is web-based. See Ans. 18-19, 51-56. Appellants argue that Bonner captures dimensional information about a parcel and this is not equivalent to the recited search listing with a title and is associated with URL. App. Br. 7. Appellants further assert that Bonner fails to have a listing that is in response to a query at an Internet search engine. Id.; Reply Br. 7. ISSUES Under § 102, has the Examiner erred in rejecting claim 1 by finding that Bonner discloses: Appeal 2010-004120 Application 11/248,780 9 (1) a search listing that comprises a title and is associated with a URL? (2) a search listing to be served in response to a query to an Internet search engine? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of claim 1 which calls for, in pertinent part, a search listing that comprises a title and is associated with a URL. Notably, the phrases, “search listing” and “title,” have not been defined by Appellants. See generally Specification. As such, these terms will be given their broadest reasonable construction. The Examiner explains (Ans. 51) that Bonner discloses a database that stores information about parcels, such as a bar code or tracking number and the date and time that information was captured. Col. 10, ll. 49-64. When a user requests information about a parcel, the request is received by a server, a search is run against the database, and the server returns the results to the user. Col. 10, l. 64 - col. 11, l. 7. Bonner provides the example of using a package identification number, such as a tracking number as a query for information and the server returning the results to the user. Col. 12, ll. 48-60. Figure 12 shows an example of a user interface 1200 where the user queries the system by entering a tracking number in search filed 1230. Col. 13, ll. 12-41; Fig. 12. Such results (e.g., a listing) from the search is displayed to the user. For example, Figure 10 shows the results of query that includes a heading containing the tracking number (e.g., “823639103559”) as well as a Appeal 2010-004120 Application 11/248,780 10 confidence value and thus includes a search listing. See col. 12, ll. 1-29; Fig. 10. As the Examiner found (Ans. 51), this heading can reasonably be mapped to the title of the recited search listing. Bonner thus discloses a search listing comprising a title. Additionally, as the Examiner states, the search is run on a web-based application and includes retrieving data using a URL. See Ans. 51, 53, 54. Other than merely asserting Bonner does not disclose a search listing associated with a URL (App. Br. 7), Appellants do not challenge the Examiner’s finding that a web-based application obtains access to its data using a URL. Mere conclusory statements unsupported by factual evidence are entitled to little probative value. Cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Thus, balancing the evidence of record, Bonner discloses a search listing that is at least associated with a URL. Additionally, Bonner discloses that this web-based search can be performed over a wide area network, such as the Internet. See col. 10, ll. 33-48, Fig. 9; see also Ans. 19 (citing col. 10, ll. 43-45). Bonner therefore, discloses an embodiment where the results from a search (e.g., a search listing) are in response to a query over the Internet. And in order to obtain a search over the Internet, some form of an Internet search engine must be used. Bonner thus discloses a search listing that is served in response to a query at an Internet search engine. Also, as the Examiner’s finding that web-based searches are associated with URLs (Ans. 51, 53, 54) is essentially undisputed, Bonner’s discussion of the Internet further bolsters that the search listing is associated with a URL. Based on the above discussion, we are not persuaded by Appellants’ argument (see App. Br. 7) that Bonner fails to teach the determining the likelihood that the search listing comports with a content policy or including Appeal 2010-004120 Application 11/248,780 11 the search listing in the database upon review, because Bonner fails to teach the search listing and an Internet search engine. Also, merely pointing out what claim 1 recites and then asserting that Bonner fails to teach this limitation (see App. Br. 6; Reply Br. 6) is not considered a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Such conclusory statements fall short of rebutting the Examiner’s evidence supporting the anticipation rejection. For the first time in the Reply Brief, Appellants newly assert that the results from the search run against a database in Bonner are not compared to a threshold but rather the capture dimension information. Reply Br. 6. This argument is untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Nonetheless, we disagree. In fact, Appellants state that Bonner determines whether the confidence value is below a threshold before forwarding information to a user for review. App. Br. 6; see also Ans. 56 (citing col. 11, ll. 13-18, 27-41, 59-67). As explained above, the confidence value is part of the search listing in Bonner (see Fig. 10), and thus Bonner discloses a process of determining the likelihood that the search listing, which includes the confidence value, comports with a content policy of an Internet search engine as broadly as recited. Concerning independent claim 15, Appellants present arguments similar to claim 1 asserting: (1) the search listing in Bonner fails to comprise a title and be associated with a URL, (2) Bonner does not have a search listing served by an Internet search engine, and (3) Bonner fails to teach various recited limitations in claim 15 because Bonner does not teach the recited search listing and search engine. See App. Br. 10. We refer to our previous discussion in connection with claim 1 to address these contentions. Appeal 2010-004120 Application 11/248,780 12 Additionally, Appellants point out what claim 15 recites and then assert that Bonner fails to teach this limitation. See App. Br. 9; Reply Br. 8. This assertion is not considered a separate argument for patentability. See Lovin, 652 F.3d at 1357. Lastly, concerning the new argument Appellants present for the first time in the Reply Brief about Bonner failing to determine a likelihood that the search listing comports with a content policy (Reply Br. 8-9), we again refer to our above discussion. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1 and claims 3 and 15 not separately argued with particularity (App. Br. 6-7, 9-10). THE ANTICIPATION REJECTION OVER CHAN Regarding claim 15, the Examiner finds that Chan discloses a search listing having a title and is associated with a URL based on Chan’s teaching that its technique is used in the context of searching web traffic using a search string. See Ans. 17, 60. While acknowledging that Chan teaches considering text on a webpage, Appellants argue that Chan’s process, which evaluates a website having a picture, is not equivalent to a search listing as defined by claim 15. App. Br. 8-9. ISSUE Under § 102, has the Examiner erred in rejecting claim 15 by finding that Chan discloses a search listing that comprises a title and is associated with a search term and a URL? Appeal 2010-004120 Application 11/248,780 13 ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of claim 15. Appellants’ arguments focus on Chan’s discussion of detecting the amount of skin present in a picture. App. Br. 8-9. However, as noted by the Examiner (Ans. 17, 60) and Appellants (App. Br. 9 (discussing Chan may consider text on a webpage)), Chan also discusses a text-based approach to detect pornographic or obscene web pages. Chan 6. This technique is intended to filter web traffic by content. Abstract. For example, the Examiner cites to passage in Chan in which a filter is applied to a search string (e.g., “sex”) to identify pornographic web pages, indicating that the search generates results related to specific web sites. See Chan 6, Abstract. The filtered search results or listings in Chan must also include some heading or title. See id. Thus, the disclosed search in Chan performed over the web must render a search listing that is includes a title and is associated with a search term. Furthermore, such a search is performed over the Internet to detect web sites that have the specific terms in the search string. See Chan 6-7, Abstract. As explained above when discussing Bonner, a search performed over the web (Chan 6, Abstract) to detect specific web pages involves URLs to operate or function (see Ans. 60) and thus Chan’s search result or listing is also associated with a URL. Chan additionally discloses that web sites have text strings, including information supplied in tags and titles, descriptive commentary, and disclaimers (Chan 7), and as such, the search listing will include some of this information (e.g., a title). We therefore find that Chan discloses a search listing that comprises a title and is associated with a search term and a URL. Appeal 2010-004120 Application 11/248,780 14 Appellants further assert that Chan fails to teach an Internet search engine serves a picture or website including a picture that Chan is examining to determine whether the picture is pornographic. App. Br. 9. Because claim 15 recites “a search listing to be served by an Internet search engine,” this argument is not commensurate in scope with the claim. Lastly, Appellants point out what claim 15 recites and then assert that Chan fails to teach this limitation. See App. Br. 8-9; Reply Br. 7-8. This assertion is not considered a separate argument for patentability. See Lovin, 652 F.3d at 1357. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 15. THE REMAINING OBVIOUSNESS REJECTIONS Appellants refer to the argument made for claim 1 for claims 4-8, 10-14, (App. Br. 8; Reply Br. 7) and the arguments made for claim 15 and Bonner for claims 16-36 (App. Br. 10-11; Reply Br. 9). We are not persuaded by Appellants’ argument for the reasons disclosed above with regard to Bonner and claims 1 and 15 and need not address whether any of the other references cure any purported deficiency. This argument also fails to persuasively rebut the Examiner’s prima facie case of obviousness – a position we find reasonable. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of claims 4-8, 10-14, and 16-36. Appeal 2010-004120 Application 11/248,780 15 CONCLUSION The Examiner did not err in rejecting: (1) claims 1, 3, and 15 under § 102; (2) claims 4-8, and 10-36 under § 103; and (3) claims 1, 3-8, and 10-36 based on an obviousness-type double patenting rejection. The Examiner erred in rejecting claims 1, 3-8 and 10-36 under § 112, first paragraph. DECISION The Examiner’s decision rejecting claims 1, 3-8, and 10-36 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 rwk