Ex Parte Schorn

Patent Trial and Appeal BoardNov 19, 2012

11301161 (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. 11/301,161 12/12/2005 Markus Schorn 40101/12001 8983 30636 7590 11/20/2012 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 EXAMINER MAHMOOD, REZWANUL ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 11/20/2012 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 MARKUS SCHORN ____________ Appeal 2010-006986 Application 11/301,161 Technology Center 2100 ____________ Before ERIC B. CHEN, BARBARA A. BENOIT, and TRENTON A. WARD, Administrative Patent Judges. BENOIT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1 and 3-18, all the claims pending in the application. Claim 2 has been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-006986 Application 11/301,161 2 STATEMENT OF THE CASE Appellant’s invention relates to creating and using an index for electronic documents. The claimed subject matter creates a hash code corresponding to each word in the electronic documents to be searched and uses the hash code to return electronic documents that contain the search word received in a query. See generally Abstract. A word file is created for each document indexed, and, when a word file becomes too large, the word file is merged with another word file. Spec. ¶ [0019]. Claim 1 is illustrative, with disputed limitations emphasized: 1. A computer-implemented method of selecting documents from among a plurality of documents, comprising: creating an index for the plurality of documents, the index including hash codes corresponding to each word in the plurality of document, wherein each hash code corresponds to one or more of the plurality of documents, the creating the index including creating a word file for each document indexed and combining a first word file with a second word file when a size of the first word file reaches a predetermined threshold; receiving a query including a search word; creating a search hash code from the search word; comparing the search hash code to the hash codes in the index; returning documents including hash codes matching the search hash code; verifying that the returned documents contain the search word; and providing a user with a list of all of the documents that are verified to contain the search word. The Examiner rejected claims 1 and 3-18 under 35 U.S.C. § 103(a) as unpatentable over Judd (US 6,360,215 B1; Mar. 19, 2002), Pratt (US 6,772,141 B1; Aug. 3, 2004), Xu (US 2004/0205242 A1; Oct. 14, 2004), and Imaichi (US 2004/0181520 A1; Sept. 16, 2004). Ans. 3-13.1 1 Throughout this opinion, we refer to (1) the Appeal Brief filed September Appeal 2010-006986 Application 11/301,161 3 ANALYSIS We are not persuaded by Appellant’s arguments (App. Br. 5-7; Reply Br. 2-3) that Pratt does not teach the limitations (1) “creating a word file for each document indexed” and (2) “combining a first word file with a second word file when a size of the first word file reaches a predetermined threshold.” The Examiner, however, finds that Judd discloses, among other limitations, creating an index for documents including creating a word file for each document indexed. Ans. 4 (citing Judd, col. 7, ll. 41-67; col. 8, ll. 1-9; col. 15, ll. 3-9). We agree with the Examiner. Judd relates to indexing and searching electronic documents. See Judd, Abstract. Judd’s index includes a word list file that contains a list of all words in the database. Judd, col. 15, ll. 3-5; see also Judd, col. 7, ll. 51-53. Accordingly, we are not persuaded by Appellant’s argument (App. Br. 6) that Pratt does not teach creating a word file for each document indexed because Appellant’s argument is not commensurate with the rejection, which relies on Judd for teaching that limitation. Nor are we persuaded that the Examiner erred in finding that Judd and Pratt collectively teach or suggest the second limitation, “combining a first word file with a second word file when a size of the first word file reaches a predetermined threshold.” Ans. 4, 14. Acknowledging that Judd does not explicitly disclose combining a first word file with a second word file when a size of the first word file reaches a predetermined threshold, the Examiner 4, 2009 (“App. Br.”); (2) the Examiner’s Answer mailed December 11, 2009 (“Ans.”); and (3) the Reply Brief filed February 12, 2010 (“Reply Br.”). Appeal 2010-006986 Application 11/301,161 4 cites Pratt for teaching or suggesting merging two index files when the size of one index reaches a predetermined threshold. Ans. 4 (citing Pratt, col. 5, ll. 3-24). As the Examiner explains, Pratt describes merging two index files when a threshold is reached and also describes a threshold value can be related to size, in concluding that Pratt teaches the feature of merging or combining index files when a size of one file reaches a predetermined threshold. Ans. 14. We agree with the Examiner. Ans. 4 (citing Pratt, col. 5, ll. 3-24). Pratt’s indexing techniques include merging individual file or record updates into an incremental index file until the merge time exceeds a certain threshold (col. 5, ll. 12-14) and merging incremental indexes into larger indexes and then creating a search decision table after a total index size exceeds a threshold value (col. 5, ll. 15-22). We see no reason why this would not suggest to an ordinarily skilled artisan creating an index to include merging or combining word files when a size of one file reaches a predetermined threshold, as the Examiner finds (Ans. 4), and Appellant has not provided a reason. Appellant also contends that Pratt does not teach the disputed limitation because (i) Pratt only describes comparing a threshold to the total index size and not the size of a word file as required by claim 1 and (ii) Pratt only describes creating a search decision table once a threshold value is reached and so does not combine two word files as required by claim 1. App. Br. 7; Reply Br. 2-3. Appellant’s arguments are not persuasive because “the test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). We are not persuaded of error in Appeal 2010-006986 Application 11/301,161 5 the Examiner’s finding that Judd and Pratt collectively teach or suggest “combining a first word file with a second word file when a size of the first word file reaches a predetermined threshold.” Ans. 4-5, 13-14. Thus, we agree that the Examiner’s proposed combination of Judd and Pratt predictably uses prior art elements according to their established functions— an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Nor are we persuaded by Appellant’s contention (App. Br. 7-8) that the Examiner erred in finding that Xu teaches “creating a search hash code from the search word,” as recited by claim 1. The Examiner cites Xu’s disclosure for this limitation. Ans. 4-5 (citing Xu, ¶¶ [0011], [0061], [0062]). We agree with the Examiner that Xu’s disclosure of applying a hash function to each element of a received query (¶ [0061]) teaches or suggests creating a search hash code from the search word, as recited by claim 1. We also find unpersuasive Appellant’s challenge (App. Br. 8-9) to the Examiner’s finding (Ans. 5, 15-16) that Imaichi teaches or suggests the limitation “verifying that the returned documents contain the search word.” Imaichi describes a document search system in which a filtering process is used to present search results that reflect the user’s search intentions. Imaichi, ¶ [0013]. One example that Imaichi describes is a search for “tank,” in which a user may intend to search for “tank” meaning an armored military vehicle or may intend to search for “tank” meaning a fuel tank. Imaichi, ¶¶ [0031-33], [0037]. Imaichi applies a filtering process to search results to ensure that search results presented to a user only return documents in which the term “tank” is used with the meaning that reflects Appeal 2010-006986 Application 11/301,161 6 the user’s intension and do not return documents that reflect another meaning of the term “tank.” Id. The Examiner finds that Imaichi’s filtering process teaches or suggests the limitation “verifying that the returned documents contain the search word.” Ans. 5, 15-16. Appellant challenges this finding because Imaichi’s filtering process removes, from search results presented to the user, documents containing the search word and using the search word in a manner differently than intended by the user. App. Br. 8-9. According to Appellant, Imaichi’s filtering process “cannot verify whether all of the returned documents contain the search word.” App. Br. 9. To the extent that Appellant argues that the limitation requires verifying all documents that contain the search word are returned for presentation to the user, we are not persuaded by this argument because it is not commensurate with the scope of the claim. Claim 1 only requires “verifying that the returned documents contain the search word” (emphasis added). We agree with the Examiner that Imaichi’s filtering process that returns only documents containing the search word (see, e.g., Imaichi, ¶¶ [0013], [0037]) teaches or suggests the recited verifying limitation. Appellant also asserts that Imaichi teaches away from the claim language because Imaichi only returns a portion of the documents that contain the search word. App. Br. 8. We are not persuaded that a person of ordinary skill, upon reading Imaichi’s disclosure, would be discouraged from verifying that the returned documents contain the search word, as recited by claim 1. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (stating “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the Appeal 2010-006986 Application 11/301,161 7 path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant”). The Examiner cites Imaichi for the limited purpose of teaching verifying that the returned documents contain the search word and relies on other references for all of the other limitations recited by claim 1. Taken as a whole, Imaichi’s filtering of the search result so that the search returns documents that contain the search term and use the search term in a manner that matches user’s intended use of the search term does not lead in a direction divergent from the techniques recited by claim 1. Thus, we agree that the Examiner’s proposed combination of Judd, Pratt, Xu, and Imaichi predictably uses prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. Accordingly, we sustain the rejection of independent claim 1 under § 103. Claims 3-7 depend from claim 1, and Appellant has not presented any substantive arguments with respect to those claims (App. Br. 9; Reply Br. 4). Therefore, we sustain the rejection of claims 3-7 under § 103 for the same reasons discussed above with respect to independent claim 1. Independent claims 8, 12, and 18 recite limitations similar to those discussed above with respect to independent claim 1, and Appellant has not presented any substantive arguments with respect to these claims (App. Br. 9-11; Reply Br. 4). We therefore sustain the rejection of independent claims 8, 12, and 18, as well as dependent claims 9-11 and 13-17, under § 103 for the same reasons discussed above with respect to claim 1. DECISION The Examiner’s decision rejecting claims 1 and 3-18 is affirmed. Appeal 2010-006986 Application 11/301,161 8 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 gvw