Ex Parte Kraft et al

Patent Trial and Appeal BoardNov 28, 2012

11509048 (P.T.A.B. Nov. 28, 2012)

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. 11/509,048 08/24/2006 Reiner Kraft AM919990095US2 4034 48150 7590 11/29/2012 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER PATEL, DHAIRYA A ART UNIT PAPER NUMBER 2451 MAIL DATE DELIVERY MODE 11/29/2012 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 and NEELAKANTAN SUNDARESAN _____________ Appeal 2010-006742 Application 11/509,048 Technology Center 2400 ______________ Before ROBERT E. NAPPI, JASON V. MORGAN, and TREVOR M. JEFFERSON, Administrative Patent Judges. NAPPI, Administrative Patent Judge DECISION ON APPEAL Appeal 2010-006742 Application 11/509,048 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1, 2, 5 through 7, 9 through 14, 16, 19, 22 through 25, 27, and 29. The rejection of claim 34 has been withdrawn. Answer 2, 20. 1 We affirm. INVENTION The invention is directed a method of presenting search results which includes providing two visual abstracts, such as thumbnail images, of the document which meets the search query. See pages 6, 7, and Figures 1 and 2 of Appellants’ Specification. Claim 1 is representative of the invention and reproduced below: 1. A method of processing search results obtained in response to a user query, the method comprising: providing document pointers returned by a search engine to identify a source from which documents are available; generating at least two visual abstracts for one of said documents, each of said visual abstracts being of a different size; and formatting a stream of data such that when said data is displayed on a display screen regarding said one of said documents, a smaller one of said visual abstracts appears adjacent to a corresponding search result. REJECTIONS AT ISSUE The Examiner has rejected claims 1, 2, 5 through 7, 9 through 14, 16, 19, 22 through 25, 27, 29 under the judicially created doctrine of obviousness-type double patenting over the claims of Kraft (U.S. Patent 7,177,948 B1, Feb. 13, 2007). Answer 4-6. 1 Throughout this opinion we refer to the Examiner’s Answer mailed on June 23, 2009. Appeal 2010-006742 Application 11/509,048 3 The Examiner has rejected claims 1, 2, 5 through 7, 9 through 14, 16, 19, 22 through 25, 27, 29 under 35 U.S.C. § 102(e) unpatentable over Brown (U.S. Patent 6,356,908 B1, Mar. 12, 2002). Answer 6-11. ISSUE Rejection based upon obviousness-type double patenting Appellants argue on pages 9 and 10 of the Appeal Brief2, and pages 2 and 3 of the Reply Brief that the Examiner’s rejection of independent claims 1, 10 and 22 is in error. These arguments present us with the issue: did the Examiner provide an articulate reasoning as to why these claims are obvious over the claims of Kraft? Anticipation rejection of claims 1 and 22 Appellants argue on pages 9 through 14 of the Appeal Brief and pages 4 and 5 of the Reply Brief that the Examiner’s rejection of independent claims 1 and 22 is in error.3 These arguments present us with the issue: did the Examiner error in finding that Brown teaches generating two visual abstracts for one of the documents as recited in claim 1 and 22?4 2 Throughout this opinion we refer to the Appeal Brief dated March 16, 2009 and Reply Brief dated August 24, 2009. 3 We note that Appellants’ arguments address independent claim 21, which is canceled, we assume appellants to have intended to have been referring to claim 22. 4 Appellants’ arguments on pages 5 and 6 of the Brief, directed to a claim 1 limitation concerning the relative size of the abstracts, and to limitations in claims 5, 7, 9 were presented for the first time in the Reply Brief and have not been considered as they are deemed waived. See Ex parte Borden, 93 Footnote continued on next page. Appeal 2010-006742 Application 11/509,048 4 Anticipation rejection of claim 10 Appellants argue on pages 14 through 15 of the Appeal Brief that the Examiner’s rejection of claim 10 in error. These arguments present us with the issue: did the Examiner error in finding that Brown teaches the visual abstract is formed by manipulating a corresponding source document to enhance visibility of one part and degrading visibility of another part as claimed? ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellants’ arguments. We disagree with Appellants’ conclusion that the Examiner erred in rejecting claims 1, 6 through 14, and 19 through 37. Rejection based upon obviousness-type double patenting We disagree with Appellants’ argument that the Examiner did not provide an articulate reasoning as to why these claims are obvious over the claims of Kraft. The Examiner has found that all of the limitations of Appellants’ claims 1, 10, and 22 are disclosed by the claims of Kraft. Answer 4-6 and 12-15. USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”) (absent a showing of good cause, the Board is not required to address argument in Reply Brief that could have been presented in the principal Brief). Appeal 2010-006742 Application 11/509,048 5 Anticipation rejection of claims 1 and 22 We disagree with Appellants’ argument that the Examiner erred in finding that Brown teaches generating two visual abstracts for one of the documents as recited in claim 1 and 22. Appellants argue that the Examiner erred in construing the claimed visual abstract of a document as being equivalent with a text based abstract. Brief 12. The Appellants assert the “specification itself very clearly defined ‘visual abstract’ as equivalent to a thumbnail, as generating and rendering.” Brief 13. We are not persuaded by this argument. Initially we note that claim differentiation shows that “visual abstract” as recited in claim 1 is broader than “thumbnail” (which is recited in claim 34). Further, a definition of visual abstract, which precludes a short textual description, is not supported by the specification, which in figure 2 shows, a visual abstract, item 16, as containing text. Accordingly, we concur with the Examiner’s claim interpretation and findings that Brown teaches the method of claims 1 and 22. Answer 15-18. In addition to the Examiner’s findings, we note that in as much as Appellants intended the two visual abstracts to be something other than a textual abstract, Brown also teaches an embodiment where both an icon associated with the document and a thumbnail are displayed, which would meet such an interpretation. See col 8, ll. 40-42. Accordingly, Appellants have not persuaded us of error in the Examiner’s rejection of claims 1 and 22. Anticipation rejection of claim 10 We disagree with Appellants’ argument that the Examiner erred in finding that Brown teaches the visual abstract is formed by manipulating a corresponding source document to enhance visibility of one part and Appeal 2010-006742 Application 11/509,048 6 degrading visibility of another part as claimed. Appellants’ arguments focus on Brown’s teachings of border effects around the thumbnail images. Brief 14. The Examiner in response to Appellants’ arguments cited to Brown’s teaching of resizing and customizing the display of the thumbnails as meeting the limitation of manipulating the document. Answer 18-20. Appellants have not addressed these findings by the Examiner. Accordingly, Appellants have not persuaded us of error in the Examiner’s findings that Brown anticipates the limitations of claim 10. DECISION Appellants’ arguments with respect to claims 1, 10, and 22 have not persuaded us of error in the Examiner’s rejections. Appellants have not separately argued, 2, 5 through 7, 9, 11 through 14, 16, 19, 23 through 25, 27 and 29. Accordingly, we sustain the Examiner’s rejection of claims 1, 2, 5 through 7, 9 through 14, 16, 19, 22 through 25, 27, and 29. ORDER The decision of the Examiner to reject claims 1, 2, 5 through 7, 9 through 14, 16, 19, 22 through 25, 27, and 29 is affirmed. There is no rejection of claim 34 before us as the Examiner has withdrawn the rejection of claim 34 under 35 U.S.C. § 103(a) and did not include this claim in the rejection based upon obviousness-type double patenting. Answer 2 and 20. Nonetheless, we note that the limitation of claim 34 appears to be present in claim 1 of Kraft. The Examiner is encouraged to re-evaluate whether an obvious double patenting rejection of claim 34 is appropriate. Appeal 2010-006742 Application 11/509,048 7 AFFIRMED ke