Ex Parte Pomerantz et al

Patent Trial and Appeal Board

Nov 29, 2012

11304946 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ORI POMERANTZ, ANDREW R. JONES, GREGORY J. BOSS,
KEVIN C. MCCONNELL, and TIMOTHY M. WATERS
____________________

Appeal 2010-007201
1

Application 11/304,946
Technology Center 2100
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Before JEAN R. HOMERE, ERIC B. CHEN, and MICHAEL J. STRAUSS,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is International Business Machines, Corp. (App.
Br. 2.)

Appeal 2010-007201
Application 11/304,946

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11 and 13-21. (App. Br. 4.) Claim 12 has been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for providing a chronicle of
search terms used in a database. In particular, upon receiving from a user a
search request, a search term contained therein is matched with a search
chronicle in the database to thereby provide the user with a historical
account of previously searched terms that match the user’s request. Each
term in the search result provided to the user is capable of being listed with
or omitting its associated search originator. (Fig. 5, Spec. 14-15.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A computer implemented method of generating a
chronicle of search terms used in a network environment of a
community, comprising:
receiving a term from a user in a current search;
matching the term in a search chronicle search, wherein
the search chronicle is a database comprising a plurality of
search terms, each search term being associated with a search
originator such that the search chronicle provides a history of
previous search terms associated with the search originator; and
providing the search chronicle search results to the user,
the search chronicle search results being capable of including
and omitting an identity of the search originator.

Appeal 2010-007201
Application 11/304,946

3
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Edlund US 6,484,162 B1 Nov. 19, 2002
Son US 2003/0046281 A1 Mar. 6, 2003
Kravets US 6,704,727 B1 Mar. 9, 2004
Burke US 2007/0043707 A1 Feb. 22, 2007

Rejections on Appeal
2

The Examiner rejects the claims on appeal as follows:
1. Claims 1, 2, 5-10, 13-16, and 18-21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kravets,
Edlund, and Burke.
2. Claims 3, 4, 11 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kravets, Edlund,
Burke, and Son.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 11-21 and the Reply Brief, pages 2-5.
Representative Claim 1
Dispositive Issue: Have Appellants shown the Examiner erred in
finding that the combination of Kravets, Edlund, and Son teaches or suggests
a chronicle search result of prior searches that match a user’s search

2
The Examiner withdrew the rejection under 35 U.S.C. § 101 previously
entered against claims 15-20. (Ans. 11.)
Appeal 2010-007201
Application 11/304,946

4
request, wherein each search in the result is capable of including and
omitting the identity of the search originator associated therewith as recited
claim 1?
Appellants argue that the Examiner erred in finding that the proposed
combination of references teaches or suggests the disputed limitations
emphasized above. (App. Br. 15-16, Reply Br. 3-4.) In particular,
Appellants argue Burke at best discloses associating a search history with a
client computer, which may have one specific user or a plurality of users.
Appellants argue, however, that Burke does not teach or suggest that the
user is identified in the search history. (Reply Br. 3-4.) Thus, according to
Appellants, while Burke discloses associating the search with a particular
user account, Burke does not disclose including or omitting in the search
itself the origination information. (Id. at 4.)
In response, the Examiner finds Burke’s disclosure of providing a user
with access to search originator details if the user is authorized teaches the
disputed limitations. (Ans. 13.)
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. In particular, as noted above in our
summary of Appellants’ main point of contention, Burke discloses
configuring a parameter module to allow an authorized user associated with
a particular account to display a search history corresponding to the user or
to exclude other users therefrom (¶¶ [0057], [0066]) thereby allowing the
user to display some or all content of a search history (¶(¶ [0069], [0070]).
We find that such configuration that allows the user to include or omit in
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prior search results certain details pertaining to users’ account information
teaches or at least strongly suggests that the system is capable of including
or omitting in such search results information identifying a user or user’s
account from whom such prior searches originate. Thus, while Burke’s
disclosure of the user’s account does not explicitly indicate that the search
results do originate therefrom, it does teach or strongly suggests such
limitation. Accordingly, we are satisfied that the evidence before us favors
the Examiner’s position that Burke’s disclosure teaches the disputed
limitations under an obviousness standard. It follows Appellants have not
shown error in the Examiner’s rejection of claim 1 over the proffered
combination.
Claims 2-11 and 13-20 not separately argued fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).
Regarding claim 21, Appellants argue that the proposed combination
of Kravets, Edlund, and Burke does not teach or suggest omitting the search
originator details based on whether the user is authorized to access such
information. (App. Br. 17-19.) In particular, Appellants submit that Edlund
does not teach the limitations argued for claim 1 above. (Id.) As discussed
above, these arguments are not persuasive because Burke discloses a module
for allowing a user to include or omit user’s information in prior search
results that identifies its originator. It follows that Appellants have not
shown error in the Examiner’s rejection of claim 21.

Appeal 2010-007201
Application 11/304,946

6
DECISION
We affirm the Examiner’s rejection of claims 1-11 and 13-21 as set
forth above.
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

ELD