Ex Parte Gil et al

Patent Trial and Appeal BoardMar 5, 2018

14168939 (P.T.A.B. Mar. 5, 2018)

United States Patent and Trademark Office 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. 14/168,939 01/30/2014 Elad Gil 16113-0020002 3281 26192 7590 03/07/2018 FTSH fr RTfTTARnSON P C EXAMINER PO BOX 1022 JAIN, ANKUR MINNEAPOLIS, MN 55440-1022 ART UNIT PAPER NUMBER 2649 NOTIFICATION DATE DELIVERY MODE 03/07/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ELAD GIL, SHUMEET BALUJA, MARYAM GARRETT, and CEDRIC BEUST Appeal 2017-010277 Application 14/168,939 Technology Center 2600 Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-010277 Application 14/168,939 STATEMENT OF THE CASE1 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 2—16 and 18—22. Claims 1 and 17 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Independent claims 2, 9, 15, 16, 20, and 21 on appeal recite a computer-implemented method (claims 2 and 16), a system having one or more computers to perform a method (claims 9 and 20), and a non-transitory computer-readable medium storing software with instructions executable by one or more computers to perform a method (claims 16 and 21) including a step of providing a user interface for receiving query terms or user-entered values with a native search application that (1) executes/operates outside of a browser environment; and (2) is written in code specific to, or for, the operating system on which the native search application is installed.2 We have reviewed Appellants’ arguments in the Briefs (App. Br. 6—8 and Reply Br. 1—3), the Examiner’s rejection (Final Act. 2—6; Ans. 2—6), and the Examiner’s response (Ans. 6—7; Advisory Act. mailed Aug. 19, 2016 at 2) to Appellants’ arguments. The Examiner rejects claims 2—16 and 18—22 under 35 U.S.C. § 103(a) as being unpatentable over McCartney (US 2002/0165847 Al; published Nov. 7, 2002) and Wormald (US 2007/0054627 Al; published 1 The instant case on appeal is related to Application Serial No. 14/329,158 and Appeal No. 2017-009617, and Application Serial No. 11/229,980 and Appeal No. 2011-006540 (reversed on Nov. 4, 2013). 2 Appellants describe the native search application in relation to the browser environment in paragraphs 8—10, 23, 35, and 36 of the Specification. 2 Appeal 2017-010277 Application 14/168,939 Mar. 8, 2007) (Final Act. 2—6; Ans. 2—6). The Examiner’s obviousness rejection is based on a finding that McCartney teaches or suggests a “native search application” that operates “outside of a browser environment” as recited in each of independent claims 2, 9, 15, 16, 20, and 21.3 In the Final Rejection, the Examiner determined that the native search application was located on the client side of network 304 at client device 302 (Final Act. 6). In the Answer, the Examiner’s makes a new determination (Ans. 6—7) that McCartney’s server device 102 on the server side of the network 304 (see Fig. 3), and not client device 302, contains the recited native search application. We find the Examiner’s new position in the Answer to be contrary to Appellants’ Specification and the general purpose of Appellants’ invention. See supra fn. 3. The question of obviousness is “based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently.” In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not. . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In rejecting claims under 35 U.S.C. §§ 102 and 103, it is incumbent upon the Examiner to establish a factual basis to support the prior art 3 In both the Final Rejection (Final Act. 2-4) and the Answer (Ans. 2-4), the Examiner generally relies upon Figures 3, 4, and 7, along with paragraphs 35, 49-59 (describing Fig. 3), 75—79 (describing Fig. 4), and 90—94 (describing Fig. 7), as teaching the native search application of the claims, but does not explicitly call out the specific element in McCartney that corresponds to the recited native search application. 3 Appeal 2017-010277 Application 14/168,939 rejection —the so-called “prima facie” case. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the USPTO has the initial burden of proof “to produce the factual basis for its rejection of an application under sections 102 and 103.” (quoting In re Warner, 379 F.2d at 1016). “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[T]he prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed.Cir. 2007) (citing In re Oetiker, 977 F.2d at 1445). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.Cir. 1984). The Patent and Trademark Office (“PTO”) satisfies its initial burden of production by “"adequately explaining] the shortcomings it perceives so that the applicant is properly notified and able to respond.” Hyatt, 492 F.3d at 1370. In other words, the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in “notifying] the applicant. . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed.Cir. 1990). “The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). 4 Appeal 2017-010277 Application 14/168,939 In the instant case, because the Examiner paints with a broad brush in making the obviousness rejection,4 and fails to point out what code is used by the operating system of the server device 102, we are left to speculate as to the precise details of how the argued claim limitations are taught or suggested by McCartney, and thus the combination of McCartney and Wormald. See In re Warner, 379 F.2d at 1017. We will not resort to such speculation or assumptions to cure the deficiencies in the factual basis in order to support the Examiner’s rejection. In making the obviousness rejection, the Examiner generally relies upon Figures 3, 4, and 7, along with paragraphs 35, 49—59 (describing Fig. 3), 75—79 (describing Fig. 4), and 90-94 (describing Fig. 7), as teaching the native search application of the claims, without specifying exactly which element shown or described in McCartney corresponds to the recited native search application (Final Act. 2-4; Ans. 2-4). We find, however, no disclosure in McCartney to support the Examiner’s position that the disputed and claimed subject matter (i.e., providing a user interface for receiving query terms or user-entered values with a native search application that (1) executes/operates outside of a browser environment; and (2) is written in code specific to, or for, the operating system on which the native search application is installed) is taught or suggested by McCartney. Although McCartney describes that “[sjerver device 102 has one or more processors 114” that “process various instructions to control the operation of server device 102” (| 30), and “[sjerver device 102 has a compression function 124 4 See supra fh. 3, citing Final Act. 2-4; Ans. 2-4; see also Ans. 6—7 (relying on McCartney’s server device 102 as containing a native search application outside of a browser environment). 5 Appeal 2017-010277 Application 14/168,939 that executes on processor(s) 114 to reduce the size of a data set that is to be transmitted” (| 50), the Examiner has not shown how/why this meets the requirements of claims 2, 9, 15, 16, 20, and 21 of providing a user interface for receiving query terms or user-entered values with a native search application that (1) executes/operates outside of a browser environment; and (2) is written in code specific to, or for, the operating system on which the native search application is installed. Therefore, the Examiner has not made a sufficient prima case of obviousness with respect to the disputed limitations of the independent claims. As such, based on the record before us, we find that the Examiner improperly relies upon McCartney to teach or suggest the disputed claim limitations. See Warner at 1017. In this light, and based on Appellants’ arguments (App. Br. 6—8; Reply Br. 2), we conclude the Examiner erred in finding that McCartney discloses a native search application as set forth in each of independent claims 2, 9, 15, 16, 20, and 21. Specifically, and for the reasons discussed above, we agree with Appellants (App. Br. 6—8; Reply Br. 2) that the Examiner has failed to demonstrate that either McCartney’s client device 302 or server device 102 teaches or suggests the recitations in the independent claims of a native search application that (1) executes/operates outside of a browser environment; and (2) is written in code specific to, or for, the operating system on which the native search application is installed. Further, we agree with Appellants (Reply Br. 2) that “nowhere does the Answer point out what code is used by the operating system of the server device 102,” and thus McCartney fails to teach or suggest the recited native search application that is written in code specific to, or for, the operating system on which the native search application is installed. 6 Appeal 2017-010277 Application 14/168,939 In view of the foregoing, we do not sustain the Examiner’s obviousness rejection of independent claims 2, 9, 15, 16, 20, and 21, as well as dependent claims 3—8, 10-14, 18, and 19 depending respectively therefrom. CONCLUSION Appellants have persuaded us of error in the Examiner’s decision to reject claims 2—16 and 18—22 due to the Examiner’s failure to establish a sufficient prima facie case of obviousness. DECISION We reverse the decision of the Examiner to reject claims 2—16 and 18-22. REVERSED 7