Ex Parte Tabin

Patent Trial and Appeal Board

May 5, 2014

11774332 (P.T.A.B. May. 5, 2014)

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.
11/774,332 07/06/2007 Joshua Z. Tabin 7738-90434-US 2998
22242 7590 05/06/2014
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
RIEGLER, PATRICK F
ART UNIT PAPER NUMBER
2142
MAIL DATE DELIVERY MODE
05/06/2014 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 JOSHUA Z. TABIN

__________

Appeal 2012-000377
Application 11/774,332
Technology Center 2100
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
of computerized searching. The Examiner rejected the claims as anticipated
and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellant identifies the Real Party in Interest as Joshua Z. Tabin
(see App. Br. 3).
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Statement of the Case
Background
“Search engines generally serve to evaluate a large and widely
disparate volume of informational resources with respect to their potential
relevance as determined with reference to search criteria comprising one or
more terms or expressions of interest to a given user” (Spec. 1 ¶ 0003).
The Claims
Claims 1-22 are on appeal. Claim 1 is representative and reads as
follows:
1. A method comprising:
providing simultaneously and via a display:
a plurality of search results as correspond to a general
search conducted using a plurality of search criteria;
a plurality of user-alterable graphic user interface
elements, wherein each of the plurality of user-alterable
graphic user interface elements corresponds to at least one of
the plurality of search criteria, such that the plurality of user-
alterable graphic user interface elements serve to illustrate
current weighting values as correspond to the search criteria
as are applied when determining a presentation order for the
search results;
detecting direct user alteration of a given one of the
user-alterable graphic user interface elements, which
alteration causes a change in the weighting value that
corresponds to the given one of the user-alterable graphic
user interface elements;
automatically altering the presentation order for the
search results as a function of detecting the direct user
alteration of the given one of the plurality of user-alterable
graphic user interface elements.

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The issues
A. The Examiner rejected claims 1-5 and 12-16 under 35 U.S.C. § 102(a)
as anticipated by Cradick2 A (Ans. 5-8).
B. The Examiner rejected claims 1-5 and 12-16 under 35 U.S.C. § 102(e)
as anticipated by Cradick3 B (Ans. 9-12).
C. The Examiner rejected claims 6-9 and 17-20 under 35 U.S.C. § 103(a)
as obvious over Cradick A and Smith4 (Ans. 12-16).
D. The Examiner rejected claims 6-9 and 17-20 under 35 U.S.C. § 103(a)
as obvious over Cradick B and Smith (Ans. 16-20).
E. The Examiner rejected claims 10, 11, 21, and 22 under 35 U.S.C.
§ 103(a) as obvious over Cradick A and Bitan5 (Ans. 20-22).
F. The Examiner rejected claims 10, 11, 21, and 22 under 35 U.S.C.
§ 103(a) as obvious over Cradick B and Bitan (Ans. 22-24).
A. & B 35 U.S.C. § 102(a) and (e) over Cradick A or Cradick B
Because both of these rejections turn on the same issue, we will
consider them together.
The Examiner finds that Cradick A teaches a method where “display
icons representing search terms on a search graph, having at least one axis.
The axis represents a search criteria. The position of the icon specifies a

2 Cradick et al., US 2006/0085395 A1, published April 20, 2006
(Hereinafter referred to as “Cradick A,” for consistency with the
Appeal Brief and Answer).
3 Cradick et al., US 2007/0192281 A1, published Aug. 16, 2007.
(Hereinafter referred to as “Cradick B,” for consistency with the
Appeal Brief and Answer).
4 Smith, J.E., US 6,867,785 B2, issued Mar. 15, 2005.
5 Bitan et al., US 2007/0043723 A1, published Feb. 22, 2007.
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value (such as an importance or weight) of the search criteria” (Ans. 6). The
Examiner finds that Cradick A teaches “the results of the search are
displayed in a results pane, and the search results are updated as the
positions of the icons on the search graph change” (Ans. 6).
The Examiner finds that Cradick A teaches that:
As the user moves the icons 220 and 225 on the search
graph 219, (and optionally changes/adds the search terms
215) the script 154 resubmits the positions, the search
criteria 240-1 and 240-2, and search terms 215 to the search
engine 150, and re-downloads the corresponding search
results for display. Thus, the script 154 dynamically
changes the contents of the results pane 210 in response to
the dynamic changing of the positions of the icons 220 and
225 on the search graph 219

(Ans. 6-7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that either Cradick A or Cradick B
anticipates claim 1?
Findings of Fact
1. The Specification teaches
direct user alteration of a given one of the user-alterable
graphic user interface elements occurs, which alteration
causes a change in the weighting value that corresponds to
the given one of the user-alterable graphic user interface
elements. When such an event occurs, this process 100 then
provides for automatically altering 105 the presentation
order for the search results.

(Spec. 7 ¶ 0030.)
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2. Figure 2 of Cradick A is reproduced below:

“FIG. 2 depicts a pictorial representation of a graphical user interface 200”
(Cradick A 4 ¶ 0037).
3. Cradick A teaches that:
As the user moves the icons 220 and 225 on the
search graph 219, (and optionally changes/adds the search
terms 215) the script 154 resubmits the positions, the search
criteria 240-1 and 240-2, and search terms 215 to the search
engine 150, and re-downloads the corresponding search
results for display. Thus, the script 154 dynamically
changes the contents of the results pane 210 in response to
the dynamic changing of the positions of the icons 220 and
225 on the search graph 219.

(Cradick A 4 ¶ 0040.)
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4. Figure 3 of Cradick B is reproduced below:

“FIG. 3 is a flowchart depicting a method operating in accordance with the
present invention” (Cradick B 2 ¶ 0016).
5. Cradick B teaches that “[m]odification of the text-based search
argument causes changes to the results located in response to the text-based
search argument. Typically, modifications to the search argument cause
resources located in response to the search argument to move up or down the
results list” (Cradick B 3 ¶ 0023).
6. Cradick B teaches that in “one possible embodiment, the search
results are reshuffled in response to the modification of the search argument
and then re-displayed” (Cradick B 3-4 ¶ 0025).
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7. Cradick B teaches that in “conventional search specification
and result interfaces, . . . a user enters a search argument, and then receives
the results. A user can modify a search, but there are no facilities or
functions illustrating how an initial search relates to a later modified search.
The present invention overcomes this limitation of the prior art by providing
graphical search trend indicators” (Cradick B 3 ¶ 0023).
Principles of Law
The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that “each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
Analysis
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. Claim 1 requires
providing “a plurality of search results” and “automatically altering the
presentation order for the search results” (emphasis added).
While claim 1 uses the open “comprising” language, the use of the
antecedent “the” before “search results” in the final step of claim 1 is
reasonably interpreted as requiring that “automatically altering” is
performed on the originally obtained “plurality of search results.” This
excludes the interpretation of claim 1 as being permissive of performing an
additional search, instead requiring that the alteration of the presentation
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order of the results must be performed on the original search without
performing any additional search and obtaining additional search results.
We therefore, interpret the requirement for alteration of “the search results”
as directly referring back to the original search.
Appellant contends that:
However interesting and possibly useful Cradick B’s
teachings may be, however, the same circumstance is
present here as with Cradick A; this reference makes no
teachings with respect to modifying the presentation order of
an already-conducted search but rather concerns itself with
ways of presenting useful information to a user regarding the
results of a new search, and in particular “trends” as regards
particular resources that appear in a previous search as
compared to a current search.

(App. Br. 12.)
The Examiner finds that “Cradick B states ‘the search results are
reshuffled in response to the modification of the search argument and then
re-displayed [0025]’. The mere fact that Cradick B uses the term
‘reshuffled’ suggests that the results of the previous search are manipulated”
(Ans. 26-27).
We find that Appellant has the better position regarding both Cradick
references. Cradick A expressly teaches that “the script 154 resubmits the
positions, the search criteria 240-1 and 240-2, and search terms 215 to the
search engine 150, and re-downloads the corresponding search results for
display” (Cradick A 4 ¶ 0040; FF 3). This resubmission of the search to the
search engine in Cradick A is clearly excluded by the claim language based
on our claim interpretation.
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While Cradick B uses the term “reshuffled,” Cradick B states that “the
search results are reshuffled in response to the modification of the search
argument and then re-displayed” (Cradick B 3-4 ¶ 0025; FF 6). Cradick B
explains what is meant by the phrase “modification of the search argument,”
teaching that a “user can modify a search, but there are no facilities or
functions illustrating how an initial search relates to a later modified search”
(Cradick B 3 ¶ 0023; FF 7). Thus, the reasonable interpretation of
“reshuffled” in Cradick B refers to the changes in search results which occur
when comparing an original search to a new search resubmitted to a search
engine using different search terms. This interpretation is consistent with
Cradick B’s teaching that “[m]odification of the text-based search argument
causes changes to the results located in response to the text-based search
argument. Typically, modifications to the search argument cause resources
located in response to the search argument to move up or down the results
list” (Cradick B 3 ¶ 0023; FF 5).
Therefore, we conclude that neither Cradick A nor Cradick B teach
and “automatically altering the presentation order for the search results” as
required by claim 1, since both Cradick A and Cradick B only alter “the
search results” by performing a new search and obtaining new search results,
which are not “the search results” obtained in the original search.
Consequently, neither Cradick A nor Cradick B anticipate claim 1.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that either Cradick A or Cradick B anticipates claim 1.
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C-F. 35 U.S.C. § 103(a)
These rejections rely upon the underlying anticipation rejection over
either Cradick A or Cradick B. The Examiner provides no reason why the
step of “automatically altering the presentation order for the search results”
in claim 1 would have been obvious, instead relying upon Smith and Bitan
to address further limitations of dependent claims. Since we did not find the
Examiner’s rejection persuasive for claim 1 for the reasons given above, we
reverse these rejections for the same reasons.
SUMMARY
In summary, we reverse the rejection of claims 1-5 and 12-16 under
35 U.S.C. § 102(a) as anticipated by Cradick A.
We reverse the rejection of claims 1-5 and 12-16 under 35 U.S.C.
§ 102(e) as anticipated by Cradick B.
We reverse the rejection of claims 6-9 and 17-20 under 35 U.S.C.
§ 103(a) as obvious over Cradick A and Smith.
We reverse the rejection of claims 6-9 and 17-20 under 35 U.S.C. §
103(a) as obvious over Cradick B and Smith.
We reverse the rejection of claims 10, 11, 21, and 22 under 35 U.S.C.
§ 103(a) as obvious over Cradick A and Bitan.
We reverse the rejection of claims 10, 11, 21, and 22 under 35 U.S.C.
§ 103(a) as obvious over Cradick B and Bitan.

REVERSED

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