Ex Parte Nixon et al

Patent Trial and Appeal Board

Aug 15, 2017

12889060 (P.T.A.B. Aug. 15, 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.
12/889,060 09/23/2010 Mark Nixon 20040/59-12333 5617
34431 7590 08/17/2017
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
EXAMINER
LODHI, ANDALIB FT
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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):
mailroom @ hfzlaw. com
j flight @ hfzlaw. com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK NIXON, ERIC ROTVOLD, and JEFF POTTER
Appeal 2015-003078
Application 12/889,0601
Technology Center 2100
Before JOHNNY A. KUMAR, NORMAN H. BEAMER, and
JOHN D. HAMANN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—18, 21, and 22. Claims 19 and 20 are cancelled.
We have jurisdiction over the pending rejected claims under 35 U.S.C.
§ 6(b).
We affirm-in-part.
1 Appellants identify Fisher-Rosemount Systems, Inc. as the real party in
interest. (App. Br. 2.)
Appeal 2015-003078
Application 12/889,060
THE INVENTION
Appellants’ disclosed and claimed invention is directed to a search
service to users of a process control system. (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system to provide a search service to users of a process
control system, comprising:
a search database to store a set of searchable items
associated with a process control system and to store a search
profile associated with a selected query result;
a publisher to collect information associated with the
searchable items from the process control system and to publish
the collected information to the search database; and
a searcher, comprising a processor, to receive a request
including the search profile and a search query of the searchable
items in the database, to modify the search query based on the
search profile, to search the searchable items based on the
modified query, to filter results of the search based on a filter
condition included in the search profile, and to return at least a
portion of the collected information based on the search profile
and the filter condition.
REJECTION
The Examiner rejected claims 1—18, 21, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Fables (US 2002/0024532 Al,
published Feb. 28, 2002) and Blevins (US 2009/0089247 Al, published Apr.
2,2009). (Final Act. 7-18.)
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Appeal 2015-003078
Application 12/889,060
ISSUES ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
issues.2
First Issue: Whether the Examiner erred in finding the combination
of Fables and Blevins teaches or suggests the independent claim 1 limitation,
“to filter results of the search based on a filter condition included in the
search profile,” and the commensurate limitation recited in independent
claims 9 and 15. (App. Br. 10—17.)
Second Issue: Whether the Examiner erred in finding the combination
of Fables and Blevins teaches or suggests the claim 6 limitation, “the
searcher is to request an update service from the publisher in response to
receiving the query.” (App. Br. 14—15.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner errs. As to the rejection of claim 6, we agree
with Appellants. Otherwise, we disagree with Appellants’ arguments, and
we adopt as our own (1) the pertinent findings and reasons set forth by the
Examiner in the Action from which this appeal is taken (Final Act. 7—18)
and (2) the corresponding reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 3—4).
2 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed July 14, 2014, “App. Br.”); the
Reply Brief (filed Jan. 19, 2015 “Reply Br.”); the Final Office Action
(mailed Nov. 21, 2013, “Final Act.”); and the Examiner’s Answer (mailed
Nov. 20, 2014, “Ans.”) for the respective details.
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Appeal 2015-003078
Application 12/889,060
Issue One
For the limitation at issue, in the Final Action, the Examiner relies on
the disclosure in Fables of a search filter: “The Search Results may be
filtered or limited in accordance with predetermined parameters, indicated
by the Select & Filter function 9, such as random selection of a limited
number of results per search query, relevancy ranking, etc.” (Final Act. 9;
Fables Fig. 1,129.) In the Answer, the Examiner further relies, inter alia,
on the disclosure in Fables of “Influences” stored in a “User Profile” which
“control display or profiling variables” and “influence the calculation of
which search results to accept.” (Ans. 3^4; Fables Fig. 1, || 29, 32.)3
Appellants correctly argue the filter function disclosed in Fables,
relied on by the Examiner in the Final Action, is based on predetermined
parameters of the website, and is not included in the user profile as required
by the claims. (App. Br. 11; citing Fables Fig. 1, || 25, 29, 73.) However,
we are not persuaded by Appellants’ argument that “influences,” which are
stored in the user profile, do not filter search results. (Reply Br. 3). As
stated above, influences are used to control what results are displayed. For
example, Fables discloses influences used to control whether advertisements
are included in search results. (Fables 1159.)
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 9, and 15.
3 Appellants argue the Examiner’s Answer improperly includes new grounds
of rejection. (Reply Br. 2.) This is a petitionable matter not subject to our
jurisdiction.
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Appeal 2015-003078
Application 12/889,060
Issue Two
In rejecting claim 6, which requires, “the searcher is to request an
update service from the publisher in response to receiving the query,” the
Examiner relies on the disclosure in Fables of updating the Personal Word
Map in the User Profile with newly-used search terms. (Final Act. 11;
Fables 191.) Appellants argue this aspect of Fables does not relate to a
“searcher,” which per claim 1 “compris[es] a processor,” making a request
to a “publisher,” which per claim 1 “publishes] . . . information to the
search database.” (App. Br. 14—15.) We agree with Appellants that the
Examiner fails to consider the additional dependent claim 6 limitation in
context with the limitations of claim 1, from which claim 6 depends.
Therefore, on the record before us, we are constrained to find the Examiner
errs in rejecting claim 6.
CONCFUSION
For the reasons stated above, we sustain the obviousness rejection of
independent claims 1, 9, and 14. We also sustain the obviousness rejection
of claims 2—8, 10—14, 16—18, 21, and 22, which claims are not argued
separately with particularity.
Also for the reasons stated above, we reverse the obviousness
rejection of claim 6.
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Appeal 2015-003078
Application 12/889,060
DECISION
We affirm the Examiner’s rejection of claims 1—5, 7—18, 21, and 22.
We reverse the Examiner’s rejection of claim 6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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