Ex Parte Kindsvogel et alDownload PDFPatent Trial and Appeal BoardNov 5, 201211027277 (P.T.A.B. Nov. 5, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte UWE KINDSVOGEL, TATJANA JANSSEN, KLAUS IRLE, and SIMEON LUDWIG ____________ Appeal 2010-005382 Application 11/027,277 Technology Center 2100 ____________ Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005382 Application 11/027,277 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-11, 14, 17, and 20-22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to searching for indexed data objects. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method for searching for a data object, the method comprising: an indexing phase; and a search phase; wherein the indexing phase comprises: retrieving data objects from a data source; normalizing said retrieved data objects; and indexing said retrieved data objects; and wherein the search phase comprises: receiving a search request comprising a search criterion from a user; normalizing the search criterion; and searching said indexed data objects for a data object that meets the normalized search criterion. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Moore Snyder Sommerer Sabel US 2001/0039546 A1 US 2003/0200199 A1 US 6,701,348 B2 US 2006/0167884 A1 Nov. 8, 2001 Oct. 23, 2003 Mar. 2, 2004 July 27, 2006 (PCT filed Oct. 24, 2003) Appeal 2010-005382 Application 11/027,277 3 REJECTIONS Claims 20-22 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 2 and 3 stand rejected under 35 U.S.C. §112, second paragraph, as being indefinite. Claims 1-9, 11, and 20-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Snyder and Moore. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Snyder, Moore, and Sommerer. Claims 14 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Snyder, Moore, and Sabel. ANALYSIS The Non-Statutory Subject Matter Rejection Claim 20 recites: “A computer program product, tangibly embodied in an information carrier . . . .” The Examiner finds that claim 20 encompasses a non-statutory signal when read in light of Appellants’ Specification, which provides that “signal 980 can also include computer program product 100” (Ans. 5-6; Spec. 9:6-7). Appellants group claims 20- 22 together (see App. Br. 15-16; Reply Br. 2) and argue that “they were not aware that the Examiner was also concerned about this portion of the specification, and further respectfully submit that they are willing to delete the disputed matter from the specification.” (Reply Br. 2). We decide the appeal on the record before us, not based on prospective amendments. We agree with the Examiner and find that claim 20 encompasses a signal, which is not patentable. See In re Nuijten, 500 Appeal 2010-005382 Application 11/027,277 4 F.3d 1346, 1357 (Fed. Cir. 2007) (“A transitory, propagating signal . . . is not a ‘process, machine, manufacture, or composition of matter.’”). Therefore, we are not persuaded that the Examiner erred in rejecting claim 20 and claims 21 and 22, not separately argued, as being non-statutory. The Indefiniteness Rejections Claim 2 recites “the indexing phase and the search phase occur at times substantially separated in time” (emphasis added). The Examiner finds: Applicant gives no limiting definition of the term “substantial,” neither provides examples to describe what, the Applicant intends, an amount of time that the “substantially separated in time” covers. The phrase “substantially separated in time” could cover times, e.g. as substantial as seconds or as substantial as days or longer, and is therefore indefinite. (Ans. 4). Claim 3 recites “the indexing phase and the search phase occur in sequence, at substantially similar times” (emphasis added). In addition to finding that the Specification provides no limiting definition of the term “substantially,” the Examiner finds: [T]he term “similar” in claim 3 is a relative term which renders the claim vague and indefinite. The term “similar” is not defined in the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary sill in the art would not be reasonable apprised of the scope of the invention. (Ans. 5). The test for definiteness under 35 U.S.C. § 112, second paragraph, is “whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Appeal 2010-005382 Application 11/027,277 5 Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Appellants provide no examples (see App. Br. 13-14; Reply Br. 1-2) from the Specification that would place meaningful limits on the scope of the phrases “substantially separate in time” in claim 2 and “substantially similar times” in claim 3. Rather, Appellants cite Andrew Corp. v. Gabriel Electronics Inc., 847 F.2d 819 (Fed. Cir. 1988), for showing that the term “substantially” satisfies the definiteness requirement (App. Br. 13-14; Reply Br. 1). However, a determination of claim definiteness must be performed on a case by case basis, given that each claim must be “read in light of the specification.” Orthokinetics, 806 F.2d at 1576. In the Reply Brief, regarding claim 2, Appellants offer that “one of skill in the art would know that ‘substantially separated in time’ means executing an index phase, and then at some later time executing a search phase, wherein the search phase does not immediately follow the index phase. Rather, there is a time period between the end of the index phase and the beginning of the search phase.” (Reply Br. 1-2). However, this interpretation does not in any way limit the length of the time period between the two phases. Regarding claim 3, Appellants offer that “one of skill in the art would know that ‘in sequence, at substantially similar times’ in the computer arts refers to a method in which” the time period between the indexing phase and search phase is “a time period capable of execution by a processor, depending on the size of the data objects” (Reply Br. 1). It is unclear what “time period” Appellants refers to in this interpretation—the time period between the beginning of the indexing phase and the beginning of the search phase, or the time period between the end of the indexing phase Appeal 2010-005382 Application 11/027,277 6 and the beginning of the search phase. In either case, Appellants’ interpretation fails to limit the claimed “substantially similar times” in any way because a processor can be capable of processing data, even a particularly sized data object, at a wide range of processing rates. Accordingly, Appellants have not rebutted the Examiner’s findings that “substantially separated in time” covers a difference “as substantial as seconds or as substantial as days or longer” and that “substantially similar times” covers times “as substantially similar as seconds are to minutes or hours are to days” (Ans. 4). In view of these interpretations, which we find to be reasonably broad in the absence of any specific examples from the Specification, we agree with the Examiner (see Ans. 4) and find that one of ordinary skill in the art would not have been able to ascertain the scope of claims 2 and 3. That is, it is unclear how the phrases “substantially separated in time,” recited in claim 2, and “substantially similar times,” recited in claim 3, limit the indexing and search phases recited in claim 1, and therefore claims 2 and 3 do not particularly and distinctly point out what is claimed. We are therefore not persuaded that the Examiner erred in rejecting claims 2 and 3 as indefinite. The Obviousness Rejections Claims 1, 7-9, 11, 20, and 21 Appellants contend that (1) “the Snyder and Moore references then are such that their scope and content would not lead one of skill in the art at the time that the invention was made to combine the two references” and (2) “the Final Office Action has failed to put forth a viable rationale as to why Appeal 2010-005382 Application 11/027,277 7 one of skill in the art, at the time that the Appellant’s invention was made, would have been motivated to combine Snyder with Moore” (App. Br. 16- 17). We disagree. We agree with the Examiner (Ans. 8, 18-19) and find that Snyder and Moore both relate to indexing and searching for data. For example, Snyder’s system performs “[p]rocessing of source documents to generate data for indexing, and of queries to generate data for searching” (Snyder, ¶ [0019]). Moore discloses a system where, “[t]o facilitate the organization and location of desired items, all captured information is automatically enriched through the addition of metadata which can be used for organizing and navigating the resulting database of information, including filtering, sorting and searching operations,” and the information capturing includes “generating an index to geographically relevant objects” (Moore, ¶¶ [0012], [0015]). Accordingly, Appellants’ argument that one would not have been led to combine Snyder and Moore (App. Br. 16) is unpersuasive because Snyder and Moore are within the same field of endeavor—indexing and searching for data. Although Appellants argue in the Reply Brief “that such a weak similarity between the two references of record does not provide a rationale for the combination of them” (Reply Br. 2), whether there is a rationale to combine the references is a separate issue discussed below. Appellants’ argument (App. Br. 16-17) regarding the Examiner’s motivation to combine Snyder and Moore is also not persuasive. Appellants argue that “speed and efficiency is simply not a concern, and may even be antithetical, to the issues addressed by Moore” because “Moore is related to deferred browsing of information at a later time” (App. Br. 16-17). However, despite the fact that Moore “allow[s] a user to capture and manage Appeal 2010-005382 Application 11/027,277 8 information for later review” (Moore, Abstract), the Examiner’s position is that, by indexing data objects, Moore’s system speeds up searches of stored data objects when a user does later seek to browse the data (see Ans. 8-9, 19). Appellants do not contest (see App. Br. 16-17; Reply Br. 3) the Examiner’s finding that “it is well known in the art that indexing data objects improves speed of searches” (Ans. 8-9, 19). Further, contrary to Appellants’ argument that in Moore “speed and efficiency is simply not a concern” (App. Br. 16), Moore discloses that “database 104 uses the information and metadata captured, along with the objects, to optimize and improve the functionality of industry standard database functions, such that the user may rapidly and conveniently view, organize, maintain, and otherwise interact with the object database” (Moore, ¶ [0053]) (emphasis added). The Examiner concludes that, in view of Moore, one of ordinary skill in the art would have been motivated to index and store data objects for later search in Snyder’s system (see Ans. 8). This would allow Snyder the flexibility to store data from applications that use data objects while maintaining speedy and efficient searches (see Ans. 8-9, 19). Appellants’ argument (App. Br. 16-17; Reply Br. 3) focuses solely on Moore’s delay between information capture and review and does not specifically address why one would not have combined Moore’s indexing and searching of data objects with Snyder. Thus, Appellants’ arguments are not persuasive of error with respect to the Examiner’s motivation for combining the references. We are therefore not persuaded that the Examiner erred in rejecting claim 1 and claims 20 and 21 not separately argued. Although claims 7-9 and 11 are nominally argued separately (see App. Br. 18), Appellants rely on Appeal 2010-005382 Application 11/027,277 9 the arguments presented for claim 1. The rejections of claims 7-9 and 11 are therefore sustained for the reasons discussed above. Claim 2 Appellants contend that “[t]here is no mention of any time factor in either ¶ 10 or ¶ 19, nonetheless a substantial separation of time” in Snyder, and thus the Examiner’s finding that “Snyder discloses an indexing and searching that occur substantially separated in time comes through a hindsight reconstruction of the references using the Appellant’s disclosure” (App. Br. 17). As discussed above, claim 2 does not specify with meaningful limitation by how much the indexing and search phases must be separated in time. The only requirement is that the indexing phase be performed before the search phase, based on the language “searching said indexed data objects” in claim 1 (emphasis added). Snyder discloses that indexing data comprises tokenizing and normalizing the data according to certain rules and that query processing comprises tokenizing and normalizing queries according to the same rules “in order for queries to accurately search the database” (Snyder, ¶ [0019]; Ans. 9). In other words, a query must undergo processing according to the same rules as the data the query is intended to match, where the data has been processed before the query. For example, if a source document that contains the name “AT&T” is tokenized as “‘at’, ‘&’, and ‘t’,” then a query for “at&t” must be tokenized in the same way for an accurate search (Snyder, ¶ 23-26; Fig. 1). Thus, Snyder discloses that an indexing phase, which includes tokenizing and normalizing, is performed Appeal 2010-005382 Application 11/027,277 10 some time before a search phase (i.e., query processing), which also includes tokenizing and normalizing. We are therefore not persuaded that the Examiner erred in rejecting claim 2. Claim 3 Appellants contend that “[t]here is no mention of any time factor in either FIG. 1 or ¶ 26” and it is “therefore error to argue that FIG. 1 and ¶ 26 disclose indexing and searching at substantially similar times” (App. Br. 17). As discussed above, claim 3 does not specify with meaningful limitation how closely in time the indexing and search phases must be performed. Claim 3 merely requires them to be performed in sequence. As discussed above regarding claim 2, Snyder discloses an indexing phase is performed before a search phase. We are therefore not persuaded that the Examiner erred in rejecting claim 3. Claims 4 and 5 Appellants contend that “neither FIG. 1, nor ¶ 10, discloses any time line as to when the disclosed operations occur” (App. Br. 18). However, Appellants do not specifically explain why it would not have been obvious to modify Snyder such that normalizing retrieved data objects occurs before or after indexing retrieved data objects, as the Examiner finds (Ans. 10-11). “When a [claim] ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect form such an Appeal 2010-005382 Application 11/027,277 11 arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (citation omitted). Absent argument as to why it would not have been obvious to one of ordinary skill in the art to reorder the normalizing and indexing of data objects in the combination of Snyder and Moore, we are not persuaded of error in the Examiner’s findings. We are therefore not persuaded that the Examiner erred in rejecting claims 4 and 5. Claim 6 Appellants contend that “FIG. 1 or ¶ 10 simply does not disclose a local data source and an external data source” (App. Br. 18). Claim 6, however, recites “at least one of: a) a local data source; and b) an external data source” (emphasis added) and thus does not require both a local data source and an external data source. Appellants’ argument is therefore not commensurate with the scope of the claim, and we are therefore not persuaded that the Examiner erred in rejecting claim 6. Claim 10 Appellants contend that Sommerer “makes no disclosure of normalizing an attribute value” (App. Br. 19). However, the Examiner relies on the combination of Snyder and Moore, not Sommerer, for disclosing the limitation “normalizing the attribute value” (Ans. 13-14). Thus, Appellants’ argument is not responsive to the Examiner’s rejection. The limitations for which the Examiner does rely on Sommerer — “a) a telephone number; b) a street address; c) a city . . .” — are merely non- functional descriptive material and therefore are not given patentable weight. Appeal 2010-005382 Application 11/027,277 12 Nevertheless, the Examiner finds that Sommerer discloses these limitations (Ans. 14; Sommerer, Fig. 2a), and Appellants do not contest these findings (see App. Br. 19). We are therefore not persuaded that the Examiner erred in rejecting claim 10. Claims 14 and 17 Appellants contend that “Sabel does not disclose an algorithmic normalization” (App. Br. 19). However, the Examiner relies on Snyder, not Sabel, for disclosing algorithmic normalization (Ans. 15). Thus, Appellants’ argument is not responsive to the Examiner’s rejection. We are therefore not persuaded that the Examiner erred in rejecting claims 14 and 17. Claim 22 Appellants contend that “neither ¶ 28 nor ¶ 76 of Snyder teaches the coupling of local and external computing devices” (App. Br. 19). Snyder discloses a source processing subsystem 110 and a query processing subsystem 120 that perform computerized processing of document data and search queries, respectively, by applying tokenization rules (Snyder, ¶¶ [0011]-[0012]; Fig. 1). The tokenization rules are retrieved from a “store, which is separate from the source processing and query processing subsystems, [and] may be implemented in any desired manner, including the use of any of a variety of well known techniques.” (Snyder, ¶ [0007]). As the Examiner finds, using the Internet to access data residing on a server is a well known technique (Ans. 27). Appellants do not specifically argue why it would not have been obvious to store data, such as Snyder’s Appeal 2010-005382 Application 11/027,277 13 tokenization rules, on a separate server device coupled to Snyder’s source processing and query processing subsystems over a network such as the Internet, thus meeting the limitation “at least one external computer device coupled to the local computer device by a network.” (Claim 22). We are therefore not persuaded that the Examiner erred in rejecting claim 22. CONCLUSIONS OF LAW Under 35 U.S.C. § 101, the Examiner did not err in rejecting claims 20-22. Under 35 U.S.C. § 112, second paragraph, the Examiner did not err in rejecting claims 2 and 3. Under 35 U.S.C. § 103(a), the Examiner did not err in rejecting claims 1-11, 14, 17, and 20-22. DECISION For the above reasons, we affirm the rejections of claims 1-11, 14, 17, and 20-22. 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). See 37 C.F.R. § 41.50(f). AFFIRMED peb Copy with citationCopy as parenthetical citation