Ex Parte Kraft

Patent Trial and Appeal BoardNov 19, 2012

11183114 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/183,114 07/14/2005 Reiner Kraft 50269-0687 7657 73066 7590 11/19/2012 HICKMAN PALERMO TRUONG BECKER BINGHAMWONG/Yahoo! 1 Almaden Boulevard Floor 12 San Jose, CA 95113 EXAMINER LODHI, ANDALIB FT ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 11/19/2012 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 REINER KRAFT ____________ Appeal 2010-004838 Application 11/183,114 Technology Center 2100 ____________ Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS, and JUSTIN BUSCH, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004838 Application 11/183,114 2 Appellant appeals under 35 U.S.C. § 134(a) from the Non-Final Rejection of claims 1-35, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction Appellant’s invention relates to search systems and methods using search-related activities related to the context of the search to actively engage a user of the search system (Spec. ¶ [0006]). Claim 1, which is the only independent claim, reads as follows: 1. A method of actively engaging a user of a search system, the method comprising: receiving from the user a search query, comprising a text- string entered by the user into a dialog text box, for a search of a corpus of information; in response to receiving the search query: (a) performing the search of the corpus of information and determining search results for the search; (b) in addition to and separate from (a), selecting an activity, from a plurality of available activities, based on a context of the search of the corpus of information and having an answer in the search results for the search; providing the user with the search results for the search; prompting the user to participate in the activity, wherein at least one aspect of the activity is dependent on the context of the search and has the answer in the search results for the search; accepting user input for performing the activity and a user textual answer entered by the user into an activity dialog text box; and providing an activity response to the user; Appeal 2010-004838 Application 11/183,114 3 wherein the corpus of information and the plurality of available activities are stored, maintained, and managed separately from each other. Rejection Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Fikes (US 2006/0224938 A1), Winters (US 2001/0034635 A1), and Kato (US 2002/0128056 A1).1 ANALYSIS Appellant contends that the activities described in the cited portions in Winters in paragraphs [0043], [0051], [0055], and [0062] fail to “simultaneously meet[] two limitations: 1) the selected activity is based on a context of the search, and 2) the selected activity has ‘an answer in the search results,’ as recited in Claim 1” (App. Br. 5) (emphasis in original). Appellant asserts that Winters’ search results provide a list of hyperlinks, but not “‘an answer’ to an activity that is subsequently selected and presented to the user” (id.). Appellant further argues that, while related to the subject of the user search query, the answers to Winters’ games are not derived from the search results for the already performed search (App. Br. 5-6). With respect to the teachings of Fikes, Appellant argues that the disclosed activities are past activities (App. Br. 6) which “do not have an answer in the search results already presented to the user” or for the search, as recited in claim 1 (App. Br. 7) (emphasis in original). Additionally, Appellant contends that the combination of Fikes and Winters 1 Separate patentability was not argued for the remaining claims rejected under § 103 on various combinations including Fikes, Winters, Kato, and Koza (US 6,964,608 B1) (App. Br. 4-9). Appeal 2010-004838 Application 11/183,114 4 does not teach or suggest the claimed features because “[i]n Fikes, the search results contain answers to a previously submitted query, not to a subsequently selected and presented activity” (App. Br. 7-8) (emphasis in original). The Examiner responds by referring to the cited portions of Winters in paragraphs [0043], [0051], and [0062] describing how a user engages in a number of Limited Edition Digital Object (LEDO) activities as a result of a search where the user may engage in a selected activity from a plurality of activities (Ans. 18). The Examiner further explains that the term “activity” may include browsing, viewing, interacting, or playing games, among other activities a user may conduct, which allow the user to select and receive search results to a query (id.). We agree with the Examiner’s findings and conclusions. Contrary to Appellant’s argument that the answers to Winters’ games are not derived from the search results for the already performed search (Reply Br. 2), Winters’ user selects activities from LEDO activities subsequent to and as a result of a search query. We also find that Winters’ paragraph [0051] further discloses determining whether the user came from a “fansite,” which means that the user gets to LEDO after a search query is submitted in the fansite. Therefore, Winters’ game is based on the user’s query in the fansite or a context of a search. Regarding Appellant’s argument (Reply Br. 2) that “Winters’ instant win games, . . . , are not selected ‘based on a context of the search of the corpus of information and having an answer in the search results for the search’”, we observe that the claimed “search results for the search” merely is required to include terms that qualify as “an answer” for the activity. In Appeal 2010-004838 Application 11/183,114 5 other words, claim 1 requires the activity “having an answer in the search results for the search” and not an answer that is “derived from the search results for the already performed search,” as urged by Appellant (Reply Br. 2). However, we find no such limited definition for the term “an answer” recited in the claims, or identified in the Specification. Lastly, with respect to Appellant’s challenge to the teachings of Fikes (App. Br. 7-8), we further observe that claim 1 includes no recitation related to “a subsequently selected and presented activity” in contrast to a previously submitted query. Furthermore, as stated by the Examiner (Ans. 18-19 (citing Fikes, ¶ [0035])), search results such as advertisements received by a user in response to a query present information related to the search content in the form of links which may be selected by the user. As the proposed rejection is based on the combination of Fikes and Winters with Kato, we agree with the Examiner’s conclusion that the combination of the references would have suggested the disputed claimed limitations to one of ordinary skill in the art. CONCLUSION On the record before us, we conclude that, because the references teach or suggest all the claim limitations, the Examiner did not err in rejecting claim 1 as obvious over Fikes, Winters, and Kato. Therefore, we find, for the same reasons stated above, the Examiner did not err in rejecting claims 1-35. Appeal 2010-004838 Application 11/183,114 6 DECISION The Examiner’s decision rejecting claims 1-35 is affirmed. 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 ke