Ex Parte Clark et al

Patent Trial and Appeal Board

Apr 22, 2013

11752977 (P.T.A.B. Apr. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TIMOTHY P. CLARK, CORY J. MILLER, and RICHARD M.
THEIS
____________________

Appeal 2010-011346
Application 11/752,977
Technology Center 2100
____________________

Before THU A. DANG, JAMES R. HUGHES,
and GREGORY J. GONSALVES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/752,977

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-13 and 16-20 (App. Br. 2). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

A. INVENTION
Appellants’ invention is directed to a system and method for searching
for a directory in a file system having a word selection module that selects a
word which meets a predefined frequency of occurrence, an indexing
module that generates a search address based upon the selected word, and a
search module that returns a search result which includes a directory name
(Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method of searching for a directory in a file system, the directory
characterized by a directory name, the directory comprising computer
storage resources, the computer storage resources including words of text,
each word of text characterized by a frequency of occurrence among the
computer storage resources,. the method comprising:

selecting, by a word selection module for inclusion in a word list, a word of
text whose frequency of occurrence meets a predefined criterion;

inserting, by the word selection module into the word list, the selected word;

inserting, by an indexing module into a search index, the selected word in
association with the directory name;

receiving, by a search module from a user, a search request that includes the
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selected word; and

returning, by the search module to the user in dependence upon the search
request and the search index, a search result that includes the directorv
name,

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Colwell US 5,303,361 April 12, 1994
Kanoh US 5,873,077 Feb. 16, 1999
Pennock US 6,484,168 B1 Nov. 19, 2002

Claims 1-3, 7-9, 13, 16, and 17 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Colwell.
Claims 4, 5, 10, 11, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Colwell in view of Pennock.
Claims 6, 12, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Colwell in view of Kanoh.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that the:
1. Colwell teaches “selecting, by a word selection module for
inclusion in a word list, a word of text whose frequency of occurrence meets
a predefined criterion” “inserting, by the word selection module into the
word list, the selected word,” and “returning, by the search module to the
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user in dependence upon the search request and the search index. a search
result that includes the directory name” (claim 1, emphasis added);
2. combination of Colwell and Pennock teaches or would have
suggested “determining, by the word selection module asynchronously with
respect to selecting a word text whose frequency of occurrence meets a
predefined criterion, a frequency of occurrence for the word of text” (claim
4, emphasis added); and
3. combination of Colwell and Kanoh teaches or would have
suggested “the predefined criterion comprises a predefined minimum
number of computer storage resources in which a word of text must occur in
order to he selected” (claim 6, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Colwell
1. Colwell discloses a text search and retrieval system which
builds an index representing every word in stored files (Abstract). In
particular, the system builds index files representing the approximate
position and relative frequency of every word in every file on a given
storage unit (col. 2, ll. 15-18). More particularly, the first time the system 10
is invoked, the index module 14 indexes and weights all words in all data
files stored on each hard disk drive (Figs. 1 and 3, steps 100 and 102; col. 5,
ll. 17-20 and 60-65). For new or changed files, the index module 14 updates
the existing index files (col. 5, ll. 20-22).
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2. When the index module 14 generates index files 16, it assigns a
random four byte hash code to every word in every data file by converting
each word into a very large integer based on the American Standard Code
for Information Interchange (ASCII) value for each character in the word
and converting the result into a binary representation; wherein, the word
itself is not stored in the index to reduce the size of index files 16 (col. 6, ll.
4-16).
3. In addition, the system searches for user-requested words using
this index file and ranks the files based on the relative strength of a match
with the search request (Abstract; col. 2, 18-20). Specifically, when a user
issues a primary search request to locate given data (e.g., “financial report”)
within any file, the user may specify the “path” indicating any number of
particular directories, subdirectories, and files where the system should
search for this data (col. 2, ll. 18-20; col. 4, ll. 5-15).
4. An interface module 12 accepts this search request and passes
the request to the index module 14, which, in response, indexes all of the
words in the search request and checks the index files 16a-n for occurrences
of the indexed words (Fig. 3, steps 104 and 106; col. 5, ll. 22-27). If an
occurrence is found in a data file found on the specified path, the index
module returns the name of the data file and a ranking based on the weight
of the indexed word(s) found (Fig. 3, steps 106 and 108; col. ll. 27-32). The
interface module 12 receives this list of data files and displays them (Figs. 1,
3, and 7; col. 5, 22-34).
5. The computer screen display is divided by a vertical line
splitting the screen into two side-by-side windows; wherein, in the left
window, the system displays a list of the data files specified in the primary
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search request with their directory/sub-directory (e.g. “c: bill”) and, in the
right window, the system displays the text found in the selected file
(“APPLECD.TXT”) (Fig. 7; col. 9, ll. 18-27). In particular, the
“Information Line” contains the path of the file along with line number and
ranking information (Fig. 7).
Pennock
6. Pennock discloses a frequency filter that first measures the
absolute number of occurrences of each of the words in a database and
eliminates those which fall outside of a predetermined upper and lower
frequency range (col. 3, ll. 22-25).
Kanoh
7. Kanoh discloses a gateway 102 which may include additional
processing and filtering unit 306 that operates on the document data and
combines search results from the responses of multiple servers (Fig. 2D; col.
10, ll. 52-60).

IV. ANALYSIS
Claims 1-3, 7-9, 16, and 17
Appellants contend that Cowell “stores a unique and random hash
code of the word, rather than the word itself, in the index file”. (App. Br. 7).
Appellants assert that Colwell “indexes all files on all disks within the
computer system regardless of the frequency of their occurrence” (id.).
Appellants contend further that Colwell “does not provide an indexing
module which, for each word provided in the word list, creates an entry in a
new two column table (e.g., index file), wherein column 1 is a word and
column two is a single directory name associated with the word” (App. Br.
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8). Appellants finally argue that “what is returned by Colwell, by Colwell’s
own description, are names of data files, not directory names” (App. Br.
9).
However, the Examiner finds that regarding “storing the
representation of the word” or storing a hash code representation of the
word, “the computer … interprets [both as] data, both are merely digital
bits” (Ans. 25). The Examiner notes that a “single occurrence of [a] word is
enough to” meet “a predefined criterion” (Ans. 4). The Examiner finds that
“[t]he ‘Information Line’ in Figure 7 displays the directory name where the
search word is located as an example the directory name ‘C:\Bill’” (Ans.
26).
Appellants’ argument that Colwell “does not provide an indexing
module which, for each word provided in the word list, creates an entry in a
new two column table (e.g., index file), wherein column 1 is a word and
column two is a single directory name associated with the word” is not
commensurate in scope with the specific language of claim 1 (App. Br. 8).
In particular, claim 1 does not recite such “creat[ing] an entry in a new two
column table” as Appellants argue.
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not place any limitation on what “word” in “word of
text” means, includes, or represents other than it is textual and has a
frequency of occurrence that meets a predefined criterion. The Specification
is silent with respect to a definition of a word as it relates to the computer
within the system.
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We agree with the Examiner that “storing the representation of the
word” or storing a hash code representation of the word, “the computer …
interprets [both as] data, both are merely digital bits” (Ans. 25). That is,
“word of text” is merely a type of data, “word list” is merely a data structure
that data is selected and inserted into, and “whose frequency of occurrence
meets a predefined criterion” is merely descriptive of the data being selected
and inserted, but what type of data being selected and inserted does not
change the functionality of or provide an additional function to the
“selecting” or “inserting” step. Such non-functional descriptive material
will not distinguish the invention from the prior art in terms of patentability.
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and In re Gulack, 703
F.2d 1381, 1385 (Fed. Circ. 1983). Here, the type of data that is selected or
inserted is entitled to no weight in the patentability analysis.
Thus, we give “selecting, by a word selection module for inclusion in
a word list, a word of text whose frequency of occurrence meets a
predefined criterion” and “inserting, by the word selection module into the
word list, the selected word”, their broadest reasonable interpretation as
selecting data by a module and inserting data by the module into a data
structure.
Colwell is directed to a text search and retrieval system which builds
an index representing every word in stored files, by storing an assigned
random four byte hash code for every word from every data file in an index
file (FF 1 and 2). When a user issues a primary search request to locate
given data within any file of a specified directory, the system searches for
these user-requested words using the index file and ranks the files based on
the relative strength of match with the search request (FF 3). In particular,
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an interface module accepts the search request and passes it to the index
module which checks the index files for occurrences of the words being
searched; wherein, when an occurrence is found the data file containing the
word, its directory, and ranking are displayed (FF 4).
Colwell’s Figure 7 is reproduced below:

Figure 7 depicts a screen display that shows a list of files and a view
of one of the files resulting from a primary search (col. 3, ll. 11-14).

As illustrated, the computer screen display is divided into a left window that
displays a list of the data files specified in the primary search request with
their directory/sub-directory (e.g. “c: bill” – in upper left hand corner) and a
right window that displays the text found in the selected file
(“APPLECD.TXT”) (FF 5). In particular, the “Information Line” contains
the path of the file along with line number and ranking information (id.). We
find that the index module’s selection of a word in each file to be inserted in
an index list using its hash code representation represents selecting a word of
text whose frequency of occurrence meets a predefined criterion and placing
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the word in a list; wherein a single occurrence of a word is the predefined
criterion. We agree with and adopt the Examiner’s finding that a “single
occurrence of [a] word is enough to” meet “a predefined criterion” (Ans. 4).
We also find that the display screen’s index results return the directory
name.
Accordingly, we find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 102(b) as being anticipated by Colwell. Further,
independent claims 7 and 13 having similar claim language and claims 2, 3,
8, 9, 16, and 17 (depending from claims 1, 7, and 13) which have not been
argued separately, fall with claim 1.
Claims 4, 5, 10, 11, 18, and 19
Appellants argue further that claims 4, 5, 10, 11, 18, and 19 are
patentable over the cited prior art for the same reasons asserted with respect
to claim 1 (App. Br. 14). Appellants contend that the Examiner has erred in
that “the Examiner attributes the ‘asynchronously’ to ‘determining a
frequency of occurrence of words in a database and filtering those which fall
outside a predetermined upper and lower range’ and ‘storing the data in the
database’” (App. Br. 13).
However, the Examiner finds that Pennock discloses “that the filter is
a criteria that was applied asynchronously after the data was stored in the
database (index);” wherein, “[t]he frequency filter first measures the
absolute number of occurrences of each word in the database and eliminates
those which fall outside of a predetermined upper and lower frequency
range” (Ans. 10, emphasis omitted).
As noted supra, Colwell discloses an index module that indexes and
weights all words in all data files stored on each hard disk drive (FF 1). We
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find that the index module determines the frequency of occurrence for each
word of the text.
In addition, Pennock discloses a frequency filter that first measures
the absolute number of occurrences of each of the words in a database and
eliminates those which fall outside of a predetermined upper and lower
frequency range (FF). We find that the system determines the frequency of
occurrence for each word and asynchronously selects a word of text whose
frequency of occurrence meets a predefined criterion.
Accordingly, we find that the combination of Colwell and Pennock at
least suggests providing “determining, by the word selection module
asynchronously with respect to selecting a word text whose frequency of
occurrence meets a predefined criterion, a frequency of occurrence for the
word of text” (claim 4).
Therefore, we find no error in the Examiner’s rejection of claim 4
under 35 U.S.C. § 103 over Colwell in view of Pennock. Further, claims 5,
10, 11, 18, and 19 (depending from claims 1, 7, and 13) which have not been
argued separately, fall with claim 4.
Claims 6, 12, and 20
Appellants contend that Kanoh “when referring to Fig. 2D, element
306, neither discloses nor suggests ‘a predefined minimum number of
occurrences for a word of text among the computer storage resources’”
(App. Br. 14).
After reviewing the record on appeal, we agree with Appellants.
Though we agree with the Examiner that Kanoh discloses an additional
processing and filtering unit that combines search results from multiple
servers (FF 7), we cannot find any suggestion in the Examiner’s recited
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portion of Colwell and Kanoh that the combination teaches that “the
predefined criterion comprises a predefined minimum number of computer
storage resources in which a word of text must occur in order to be
selected” (claim 6, emphasis added). That is, even though Kanoh recites
multiple computer storage resources, there is no support for a finding of a
predefined criterion where a predefined number of resources are necessary
for a word to be selected.
Accordingly, we find that Appellants have shown that the Examiner
erred in rejecting claims 6, 12, and 20 under 35 U.S.C. § 103 as being
unpatentable over Colwell in view of Pennock.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-3, 7-9, 13, 16, and 17 under
35 U.S.C. § 102(b) and claims 4, 5, 10, 11, 18, and 19 under 35 U.S.C. §
103(a) is affirmed; while the Examiner’s rejection of claims 6, 12, and 20
under 35 U.S.C. § 103(a) is reversed.
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-IN-PART

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