Ex Parte King et al

Patent Trial and Appeal Board

Aug 14, 2017

13186908 (P.T.A.B. Aug. 14, 2017)

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.
13/186,908 07/20/2011 Martin T. King 16113-5142002 5217
26192 7590 08/16/2017
FTSH fr RTfTTARnSON P C EXAMINER
PO BOX 1022 ABRAHAM, AHMED M
MINNEAPOLIS, MN 55440-1022
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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 MARTIN T. KING, DALE L. GROVER,
CLIFFORD A. KUSHLER, and JAMES Q. STAFFORD-FRASER1
Appeal 2017-004805
Application 13/186,908
Technology Center 2100
Before JASON V. MORGAN, BETH Z. SHAW, and
KAMRAN JIVANI, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 3—8, 10, 12—14, and 16—36, which
are all the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Google Inc. See App.
Br. 1.
Appeal 2017-004805
Application 13/186,908
INVENTION
The invention relates to “search and retrieval of electronic materials
and, more specifically, to data gathering systems and methods for use in
providing access to digital content from searches based on information
captured from rendered documents.” Spec. 14.
Claim 1 is reproduced below.
1. A system for locating and retrieving information,
comprising:
an aggregated search index comprising document indexes
from multiple restricted sources, wherein the aggregated search
index also comprises indications of whether indexed electronic
content is an electronic counterpart to one or more rendered
documents; and
one or more computing servers comprising a search
engine, wherein the search engine is operatively coupled with the
aggregated search index, wherein the search engine is configured
to determine whether information associated with a search query
is based on information captured by a capture device from a
rendered document and to search the aggregated search index in
response to receiving the search query.
REJECTIONS
In the Final Action, the Examiner rejects claims 1, 3—8, 10, 12—14,
and 16—36, under 35 U.S.C. § 103(a), as obvious over Bailey (US
6,785,671 Bl; issued Aug. 31, 2004), Allam (US 2004/0139400 Al;
published July 15, 2004), and Hull (US 6,671,684 Bl; issued Dec. 30,
2003). Final Act. 3—12 (March 4, 2016).
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Appeal 2017-004805
Application 13/186,908
In the Answer, the Examiner newly rejects claims 1, 3—8, 10, 12—14,
and 16, under 35 U.S.C. § 101, as directed to a judicial exception of
statutory subject matter. Ans. 7—9.
REJECTION UNDER 35 U.S.C. § 103(a)
Claims 1, 3—6, 12—14, 16, 17, 19—29, and 33—36
For the rejection under 35 U.S.C. § 103(a), we select claim 1 as
representative of claims 3—6, 12—14, 16, 17, 19-29, and 33—36. See 37
C.F.R. §41.37(c)(l)(iv) (2015).
Appellants argue the Examiner unreasonably finds Bailey’s index
teaches or suggests claim 1 ’s “aggregated search index comprising
. . . indications of whether indexed electronic content is an electronic
counterpart to one or more rendered documents.” App. Br. 5—7. Appellants
argue that column 16, lines 13—15 of Bailey discusses that “[ejach product
database 141-147 is indexed by keyword to facilitate searching by the search
tool 154.” App. Br. 6. At column 13, lines 60-63, Bailey discusses that
“[a]s shown in FIG. 1, the database 147 includes, for each keyword 166, one
or more web page addresses 167 with corresponding titles 168, squibs 169,
and product scores 170.” Appellants argue, and we agree, that neither the
“keyword,” nor the “web page addresses,” nor the “corresponding titles,”
nor the “squibs,” nor the “product scores” discussed by Bailey appear to
teach “indications of whether indexed electronic content is an electronic
counterpart to one or more rendered documents.” Id. In the Answer, the
Examiner states that Bailey teaches the search engine will present to the user
a query results page containing a list of items matching the query. Ans. 4
(citing Bailey, 7:15—17). However, the Examiner fails to explain on this
record, and we are unable to discern, how or why the cited portions of
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Appeal 2017-004805
Application 13/186,908
Bailey teach the claimed “indications of whether indexed electronic content
is an electronic counterpart to one or more rendered documents.” In
particular, we are unable to discern which portion of Bailey the Examiner
points to as the “indication” and how Bailey teaches an indication of
whether indexed electronic content is an electronic counterpart to a rendered
document.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we do not
sustain the rejection of independent claims 17, 21, and 25, or dependent
claims 3-8, 10, 12-14, 16-20, 22-24, and 26-36.
REJECTION UNDER 35 U.S.C. § 101
For the rejection under 35 U.S.C. § 101, we select claim 1 as
representative of claims 3—8, 10, 12—14, and 16. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015). We agree with Appellants that the Answer does
not address various features of the claims. Reply Br. 7. Accordingly, we do
not sustain the rejection of claims 1, 3—8, 10, 12—14, and 16 under
35 U.S.C. § 101.
DECISION
We reverse the rejection of claims 1, 3—8, 10, 12—14, and 16—36 under
35 U.S.C. § 103(a).
We reverse the rejection of claims 1, 3—8, 10, 12—14, and 16 under
35 U.S.C. § 101.
REVERSED
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