Ex Parte De Bellis

Patent Trials and Appeals BoardMar 22, 2019

14214700 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/214,700 7590 John K. Harrop FILING DATE 03/15/2014 03/25/2019 PO Box 320171 Alexandria, VA 22320 FIRST NAMED INVENTOR Joseph L. De Bellis 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 50970-0008 9830 EXAMINER ANTOINE, ALICIA M ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 03/25/2019 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 JOSEPH L. DE BELLIS Appeal 2017-005411 Application 14/214,700 Technology Center 2100 Before JEAN R. HOMERE, CARLA M. KRIVAK, and SHARON PENICK, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 1-20, which constitute all of the claims pending in this application. 1 App. Br. 5. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellant identifies the real party in interest as Vilox Technologies, LLC. App. Br. 3. An oral hearing was held in this appeal on March 12, 2019. A transcript of the oral hearing is being prepared and will be entered into the record in due course. Appeal 2017-005411 Application 14/214, 700 Introduction According to Appellant, the claimed subject matter relates to a method and system for performing an on-the-fly search of a search engine (125) executing at a terminal (14) coupled via a hardware/software interface device (100) to a first database (12) and a second database (13, 14) represented as a first icon (472A) and a second icon (476A), respectively. Spec. 2:20-29, 8:20-30. Figure 1 of the Specification, reproduced below, is a block diagram of a system according to the invention that uses a search-on- the-fly/sort-on-the-fly process. Id. 6:9--12. 14 WG E -/--- TERMlNA.L ---- :~:. ~~~~-~~~~ FIG. I Figure 1 shows user terminal 14, hardware/software interface 100, and databases 12, 13, and 15. Id. 8:20-24. 2 Appeal 2017-005411 Application 14/214, 700 Figure 22b, reproduced below, illustrates a graphical user interface that may be displayed in conjunction with the operation of the system of Figure 1. Id. 6:24--25. 450 ~ ~ 476 PiISt!ll~CY ................... ~ 480 Â· ratch Pa j Read FIG 22C 4M As shown in Figure 22C above, upon detecting a second move (B) from the second icon (476A) to the first icon (472A), the processor (14) effectuates a search of the second database ( 13, 14) to produce a second result (472C), which is different from the first search result (476C). Spec. 29:8-21. 4 Appeal 2017-005411 Application 14/214, 700 Representative Claim Claims 1, 1 7, and 19 are independent. Independent claim 1 is representative, and is reproduced below with the limitations at issue italicized: 1. A method for searching and manipulating data using a search-on-the-fly search engine executed by a processor, the data in a first database represented by a first icon and a second database represented by a second icon, the method, comprising: the processor receiving a search request for a data element in the first database; the processor returning the data element; the processor responding to a first manipulation of the first and second icons, comprising: detecting a first move of the first icon over the second icon, identifying the first move as a first search request, the processor executing a first search operation in response to the first search request, and providing a first search result; and the processor responding to a second manipulation of the first and second icons, comprising: detecting a second move of the second icon over the first icon, identifying the second move as a second search request, the processor executing a second search operation in response to the second search request and providing a second search result different from the first search result. Rejections on Appeal Claims 1-3 and 5-20 are rejected underpre-AIA 35 U.S.C. Â§ 102(b) as being anticipated by De Bellis (US Pub. 2002/0046209Al, April 18, 2002). Final Act. 7-17. Claim 4 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over De Bellis. Id. at 17-18. 5 Appeal 2017-005411 Application 14/214, 700 ANALYSIS 2 Anticipation Re} ection Appellant argues the Examiner erred in finding that De Bellis describes executing a search in response to icon movement. App. Br. 12. According to Appellant, De Bellis teaches executing a search after moving one icon over to another and selecting an operator, as opposed to executing the search solely upon moving one icon to the other. Id. at 12-13 (citing De Bellis ,r 168, Fig. 21 ). Further, Appellant argues De Bellis does not describe that the order in which the icons overlay each other causes the display of a different search result (i.e., overlaying a first icon over a second icon produces a different result from that of overlaying the second icon over the first icon). Id. at 13. Appellant contends De Bellis is not concerned with the order of icon movement, but rather, teaches producing different results only when different operators are selected. Id. This argument is persuasive. At the outset, we note the Examiner finds the following: detecting a first move of the first icon over the second icon (De Bellis, paragraph [0168], teaches to execute the Boolean AND operation, the user may simply drag one icon over the other.), identifying the first move as a first search request (De Bellis, Final Act. 8 ( citing De Bellis ,r O 168). and providing a second search result different from the first search result (De Bellis, paragraph [0169], teaches to further search- on-the-fly operations. Also, De Bellis, paragraph [0168], teaches to 2 We refer to Appellant's arguments and the Examiner's findings and conclusions set forth in the Final Office Action (mailed March 14, 2016) ("Final Act."), the Appeal Brief (filed, September 12, 2016) ("App. Br."), the Answer ( mailed December 14, 2016) ("Ans."), and the Reply Brief ( filed February 12, 2017) ("Reply Br.") for the respective details. 6 Appeal 2017-005411 Application 14/214, 700 intersecting icons with the option to select other Boolean functions. The examiner [sic] this menu allows the user to select a different Boolean functions, which will accommodate the provision of different search results.). Id. at 9. We agree with Appellant that the Examiner improperly relied upon the cited teachings of De Bellis to establish a prima facie case of anticipation against the claims pending in this appeal. Although we agree with the Examiner that the claim recitation of performing a search upon detecting the move of an icon over another does not preclude De Bellis' s selection of a Boolean operator, we do not agree with the Examiner that the cited disclosure of De Bellis describes producing different results when the order in which the icons overlay each other changes. Ans. 14--15. As acknowledged by the Examiner, De Bellis does not explicitly disclose that the order in which the icons overlay each other has any bearing on producing different search results. Id. at 16. Although the Examiner correctly finds that the cited portions of De Bellis disclose the functionality of overlaying the icons in different order, the different overlay orders play no role in producing different results. Id. Accordingly, the Examiner's reliance upon an incidental and inconsequential disclosure in De Bellis is insufficient to support the anticipation rejection. As persuasively argued by Appellant, De Bellis produces different search results only by selecting a different Boolean operator along with a search, irrespective of the order in which the icons overlay each other. App. Br. 13. Because Appellant has shown at least one reversible error in the rejection of claim 1, we need not reach Appellant's remaining arguments. Accordingly, we do not sustain the Examiner's obviousness rejection of 7 Appeal 2017-005411 Application 14/214, 700 independent claim 1. Likewise, we do not sustain the rejection of independent claims 17 and 19, which recite the disputed limitations. Because claims 2, 3, and 5-20 depend from independent claims 1, 17, and 19 discussed above, and necessarily incorporate all of the limitations of their respective base claims, we do not sustain the anticipation rejection of the cited dependent claims for the foregoing reasons. Obviousness Rejection Because dependent claim 4 recites the disputed limitations of claim 1 above, and the Examiner has not provided additional evidence to cure the noted deficiencies of De Bellis, the obviousness rejection of claim 4 is not sustained for the reasons set forth above. DECISION For the above reasons, we reverse the rejections of claims 1-20. REVERSED 8