Ex Parte Morris

Patent Trial and Appeal BoardDec 21, 2012

11022133 (P.T.A.B. Dec. 21, 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. 11/022,133 12/21/2004 Robert P. Morris I266/US 5571 49278 7590 12/21/2012 SCENERA RESEARCH, LLC 5400 Trinity Road Suite 303 Raleigh, NC 27607 EXAMINER LEROUX, ETIENNE PIERRE ART UNIT PAPER NUMBER 2161 MAIL DATE DELIVERY MODE 12/21/2012 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 ROBERT P. MORRIS ____________________ Appeal 2010-005083 Application 11/022,133 Technology Center 2100 ____________________ Before DEBRA K. STEPHENS, JOHNNY A. KUMAR, and BRYAN F. MOORE, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005083 Application 11/022,133 2 STATEMENT OF CASE Introduction Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-7, 17-23, 32-34, and 36-38. Claims 8-16 and 24-31 have been withdrawn. Claim 35 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Exemplary claim 1 under appeal reads as follows: 1. A method for generating a search index for objects retrieved via user-initiated browsing via a browser of a client device, the method comprising: receiving, by the browser of the client device, user input for browsing, wherein browsing includes identifying an object for presentation by the browser; receiving the identified object for presentation by the browser responsive to the user input for browsing; presenting the identified object by the browser; determining, by the client device, content information and context information associated with the presented object, wherein the context information is based on user input previously received by the client device; creating, at the client device, a search index for the presented object based on the determined content information and context information; and transmitting the created search index from the client device to a server. Appeal 2010-005083 Application 11/022,133 3 Rejections1 The Examiner rejected claims 1-7, 17-23, 32-34, and 36-38 under 35 U.S.C. § 103(a) as being unpatentable over Nye (US 2002/0156917 A1, Oct. 24, 2002) in view of Brechner (US 6,741,996 B1, May 25, 2004). Ans. 3-5. Issue on Appeal2 Has the Examiner erred in rejecting claims 1-7, 17-23, 32-34, and 36- 38 because the combination of Nye and Brechner fails to describe the argued limitations? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 6-16). We concur with the conclusions reached by the Examiner. We highlight and address specific findings and arguments for emphasis as follows. 1 The Examiner has not made the 35 U.S.C. § 102(a) rejection (Final Rej. 3) of claims 1, 17, and 32 in the Answer. For the purpose of this appeal, we will treat the § 102(a) rejection of claims 1, 17, and 32 to have been withdrawn by the Examiner. 2 Separate patentability is not argued for claims 2-7, 17-23, 32-34, and 36- 38. Appeal 2010-005083 Application 11/022,133 4 Appellant argues that “[n]owhere does Nye disclose or suggest any user browsing in connection with creating an index where browsing includes receiving user input and presenting an object on the browser in response to that user input.” Br. 13. Appellant’s argument focuses on whether there is user input or user browsing used in creating the index. We are not persuaded by this argument. We find that the process of indexing (spidering) as taught by Nye is under the control of user input. Nye teaches that a user identifies URLs which become the list that the user will spider or index. Nye [0041]; Ans. 13-14. Appellant further argues that although Nye creates an index, “[t]he index created is still created as a result of spidering and not as a result of user browsing, and therefore will lack the user-related personal information that can be used for creating a much more relevant index.” Br. 13. As noted above, the index of Nye is the result of user browsing. We find that the rest of Appellant’s argument is not commensurate with the scope of the claims. For example, Claim 1 does not recite user-related “personal information.” For the reasons stated above, the Examiner has not erred in concluding that the combination of Nye and Brechner renders independent claims 1, 17, and 32 unpatentable. Appellant does not provide separate arguments for the obviousness rejections of the dependent claims, instead contending that the dependent claims are allowable for the same reasons argued regarding claims 1, 17 and 32, which we did not find to be persuasive. (Br. 14). Therefore, for the same reasons discussed above regarding claims 1, 17, and 32, we sustain the Examiner’s obviousness rejection of claims 2-7, 18-23, 33, 34, and 36-38. Appeal 2010-005083 Application 11/022,133 5 Accordingly, the Examiner did not err in finding the combination of Nye and Brechner teaches or suggests the invention as recited in independent claim 1 and claims 2-7, 17-23, 32-34, and 36-38, not separately argued. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1-7, 17-23, 32-34, and 36-38 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1-7, 17-23, 32-34, and 36-38 are not patentable. DECISION The Examiner’s rejections of claims 1-7, 17-23, 32-34, and 36-38 are 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 msc