Application No.: 09/796,235
`
`Filed: 02/28/2001
`
`For:
`
`Automatic directory supplementation
`
`Examiner: William D. Hutton, Jr.
`
`Art Unit: 2179
`
`Date: February 14, 2005
`
`Mail Stop AF
`Commissioner for Patents
`
`Box 1450
`
`Alexandria, VA 22313-1450
`
`NO'|1CE OF APPEAL FROM THE EXAMINER
`To THE BOARD or PATENT APPEALS AND INTERFERENCES
`
`Gary Odom hereby appeals to the Board from the decision of Examiner William D. Hutton,
`
`Jr. mailed January 26, 2005, finally rejecting claims 9-30.
`
`Ifan extension of time is required for filing this Notice of Appeal, please consider this a
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`petition therefor.
`
`A triplicate copy oft11is Notice of Appeal is enclosed.
`
`The $250.00 fee per 37 CFR § 1.17 (b)‘for filing this Notice of Appeal is enclosed as a
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`credit card form. Please charge any additional fees that may be required in connection with filing this
`
`Notice of Appeal and any extension of time, or credit any overpayment, to the credit card on the
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`enclosed credit card form.
`
`Respectfiilly,
`Ca”
`
`Gary Odom
`15505 SW Bulrush Lane, Tigard, OR 97223
`telephone:
`(503)524-8371
`fax:
`(775) 942-8525
`
`02/22/2005 HQHHEDI
`01 FC:2401
`
`00000048 09796235
`250. 00 OF‘
`
`
`
`if
`
`if
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`Page 1 of]
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`Iron Dome, Exh. 1004
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`Iron Dome, Exh. 1004
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`

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`
`
`Application No.2 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`IN THE UNITED STATEs PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`Regarding the application:
`
`Title: Automatic directory supplementation
`
`Examiner: William Hutton, Jr.
`
`Art Unit:
`
`2179
`
`Number".
`
`09/796,235
`
`Priority:
`
`02/28/2001
`
`Mail Stop Appeal Brief-Patents
`Commissioner for Patents
`Box 1450
`
`Alexandria, VA 22313-1450
`
`This is an appeal from the Examiner’s January 26, 2005 final rejection.
`
`BRIEF FOR APPELLANT
`
`1. REAL PARTY IN INTEREST
`
`Gary Odom, appellant, is the real party in interest.
`
`2. RELATED APPEALS AND INTERFERENCES
`
`There are no related appeals or interferences.
`
`3. STATUS OF CLAIMS
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`Appeal is sought for rejection of claims 9-24, 27-29. Claims 25-26, and 30 are herein
`
`canceled. Claim 31 is objected to as being dependent upon a rejected base claim.
`
`4. STATUS OF AMENDMENTS
`
`No amendment has been filed subsequent to final rejection.
`
`02/ea/2005 l‘lllHllEll1
`
`01 FC:B402
`
`00000009 09795235
`250.00 on
`
`’
`
`page 1 of 22
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`Exh. p. 2
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`Exh. p. 2
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`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`5. SUMMARY OF INVENTION
`
`09/796,235 describes an autonomous search mechanism, solving the problem of finding
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`similar documents to ones already known without any user effort whatsoever. The only
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`precondition to initiating the claimed process is user placement of one or "more documents in a
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`file system directory as reference material for guiding the search.
`
`09/796,235 is fairly characterized as lazy because time is not of the essence. A user doesn’t
`
`initiate search: the process works in the background, without arousing expectation of quick
`
`results.
`
`As an exemplary use-case scenario, a user browses the web, saving topically-related
`
`document links in the same web-favorites folder. Once this precondition is met, the claimed
`invention software kicks in: deriving keywords fi'om the saved documents, thus discerning the
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`topic of interest, then searching for other related documents, resulting in supplementing the
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`directory with newly-found documents - hence the title of 09/796,235: “automatic directory
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`supplementation”.
`
`6. ISSUES
`
`There was but one overall issue in Examiner’s January 26, 2005 final rejection: 35 U.S.C.
`
`§103 combination reference anticipation by prior art.
`
`Appellant respectfully contends:
`
`Essential features of the prior art itself were mischaracterized as bases for rejection.
`
`The references, even combined, fail to anticipate all limitations of the claims.
`
`Used as bases for rejection, the necessary combination of references, or applying specific
`
`features of one reference with another, comprise a non-obvious combination. The cited prior art
`
`references themselves provide no suggestion of combination. Respectfiilly, Examiner applied
`
`impermissible hindsight, without regard to" prior art teaching or motivation.
`
`With all due respect, there appears a lapse in considering the claims and prior art
`
`holistically, instead treating claim limitations and prior art reference features as dissectible
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`components, without proper regard for context.
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`page 2 of 22
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`Exh. p. 3
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`Exh. p. 3
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`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`7. GROUPING OF CLAIMS
`
`On the whole, fi'om a viewpoint of patentability, of claims standing or falling together,
`
`there is but one group.
`
`8. ARGUMENT
`
`Statutory and case law bases for determining whether a preamble limits a claim
`
`MPEP 2111.02 discusses preamble statements limiting structure or intended use. The
`
`meaning MPEP 2111.02 and case law are plain and clear that a preamble may limit claim
`
`scope. Examiner cited the same quotation. Preamble claim limitation may of course be
`
`supported by example within the claim body.
`
`MPEP 2111.02 - Any terminology in the preamble that limits the structure of the
`
`claimed invention must be treated as a claim limitation. See, e.g., Coming Glass
`
`Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966
`
`(Fed. Cir. 1989).
`
`"[A] claim preamble has the import that the claim as a whole suggests for it." Bell
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`Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620,
`
`34 USPQ2d 1816, 1820 (Fed. Cir. 1995). ''If the claim preamble, when read in the
`
`context of the entire claim, recites limitations of the claim, or, if the claim preamble is
`
`‘necessary to give life, meaning, and vitality‘ to the claim, then the claim preamble
`
`should be construed as if in the balance of the claim." Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298. 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). See
`
`also Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951)
`
`Specific arguments related to rejection and preamble limitation are discussed in the below
`
`section titled: “Unanticipated limitations for all claims”.
`
`Statutory and case law bases for 35 U.S.C. §103 rejections based upon prior art
`
`combinations
`
`The consistency ofthe below quotations edify criteria for obviousness rejection via 35
`
`U.S.C. §l03 using a combination of references.
`
`page 3 of 22
`
`Exh. p. 4
`
`Exh. p. 4
`
`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`1. The prior art references themselves must suggest combination. Failing explicit self-
`
`suggestion, the prior art must provide the motivation for obviousness in combination. Such
`
`motivation may be found by considering the references holistically. If the purpose / problem
`
`being solved (“nature of the problem”), fimction and structure of the prior art references are
`
`aligned, one may reasonably conclude combination of the references obvious, as no diflerences
`
`exist in the principles of operation between the references. The burden of meeting this criterion
`
`by logical exposition belongs to the Examiner.
`
`3. To combine references without evidentiary support by the prior art constitutes
`
`impermissible hindsight. Combination of prior art with different principles of operation is
`
`impermissible. An Examiner cannot simply assert ‘well within the ordinary skill of the art atthe
`
`time the claimed invention was made’.
`
`4. To be construed anticipatory, the prior art must teach or at least suggest all claim
`
`limitations, whether such limitations appears in the preamble or body of a claim.
`
`5. The final test is comparing the claimed invention as a whole to a prior art reference.
`
`Claim limitations are not puzzle pieces to be matched to atomized prior art reference
`
`suggestions, and thus examined out of context. As with obviousness in combining prior art
`
`references, only if the prior art aligns with the claimed invention in principles of operation may
`
`a prior art reference be considered anticipatory.
`
`MPEP 2143 —To establish a prima facie case of obviousness, three basic criteria
`
`must be met. First, there must be some suggestion or motivation, either in the
`
`references themselves or in the knowledge generally available to one of ordinary skill
`
`in the art, to modify the reference or to combine reference teachings. Second, there
`
`must be a reasonable expectation of success. Finally, me prior art reference (or
`
`references when combined) must teach or suggest all the claim limitations. The
`
`teaching or suggestion to make the claimed combination and the reasonable
`
`expectation of success must both be found in the prior art, not in applicant's
`
`disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991).
`
`The initial burden is on the examiner to provide some suggestion of the desirability
`
`of doing what the inventor has done. "To support the conclusion that the claimed
`
`invention is directed to obvious subject matter, either the references must expressly '
`
`page 4 of 22
`
`Exh. p. 5
`
`Exh. p. 5
`
`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`or impliedly suggest the claimed invention or the examiner must present a convincing
`
`line of reasoning as to why the artisan would have found the claimed invention to
`
`have been obvious in light of the teachings of the references." Ex parte Ciapp, 227
`
`USPQ 972, 973 (Bd. Pat. App. & Inter. 1985).
`
`When applying 35 U.S.C. 103, the following tenets of patent law must be adhered
`
`to:
`
`(A) The claimed invention must be considered as a whole;
`
`(B) The references must be considered as a whole and must suggest the
`
`desirability and thus the obviousness of making the combination;
`
`(C) The references must be viewed without the benefit of impennissible hindsight
`
`vision afforded by the claimed invention; and
`
`(D) Reasonable expectation of success is the standard with which obviousness is
`
`determined.
`
`Hodcsh v. Block Drug Co., Inc., 786 F.2d 1136, 1143 n.5, 229 USPQ 182, 187 n.5
`
`(Fed. Cir. 1986).
`
`Obviousness can only be established by combining or modifying the teachings of
`
`the prior art to produce the claimed invention where there is some teaching,
`
`suggestion, or motivation to do so found either explicitly or implicitly in the references
`themselves or in the knowledge generally available to one of ordinary skill in the art.
`
`"The test for an implicit showing is what the combined teachings, knowledge of one of
`
`ordinary skill in the art, and the nature of the problem to be solved as a whole would
`
`have suggested to those of ordinary skill in the art" In re Kotzab, 217 F.3d 1365,
`
`1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000). See also In re Lee, 277 F.3d 1338,
`
`1342-44, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002) (discussing the importance of
`
`relying on objective evidence and making specific factual findings with respect to the
`
`motivation to combine references); In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed.
`
`Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992).
`
`The mere fact that references gin be combined or modified does not render the
`
`resultant combination obvious unless the prior art also suggests the desirability of the
`
`combination. In re Mills, 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990)
`
`page 5 of 22
`
`Exh. p. 6
`
`Exh. p. 6
`
`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`A statement that modifications of the prior art to meet the claimed invention would
`
`have been " ‘well within the ordinary skill of the art at the time the claimed invention
`
`was made’ " because the references relied upon teach that all aspects of the claimed
`
`invention were individually known in the art is not sufficient to establish a prima facie
`
`case of obviousness without some objective reason to combine the teachings of the
`
`references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993). See
`
`also In re Kotzab, 217 F.3d 1365, 1371, 55 USPQ2d 1313, 1318 (Fed. Cir. 2000)
`
`MPEP 2141.01(a) - While Patent Office classification of references and the cross-
`
`references in the official search notes of the class definitions are some evidence of
`
`"nonanalogy" or "analogy" respectively, the court has found "the similarities and
`
`differences in structure and function of the inventions to cany far greater weight" in
`
`re Ellis, 476 F.2d 1370, 1372, 177 USPQ 526, 527 (CCPA 1973)
`
`To establish prima facie obviousness of a claimed invention, all the claim
`
`limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981,
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`180 USPQ 580 (CCPA 1974). "All words in a claim must be considered in judging the
`
`patentability of that claim against the prior art." In re Vlfilson, 424 F.2d 1382, 1385,
`
`165 USPQ 494, 496 (CCPA 1970). If an independent claim is nonobvious under 35
`
`U.S.C. 103, then any claim depending therefrom is nonobvious. In re Fine, 837 F.2d
`
`1071, 5 USPQ2d 1596 (Fed. Cir. 1988).
`
`If the proposed modification or combination of the prior art would change the
`
`principle of operation of the prior art invention being modified, then the teachings of
`
`the references are not sufficient to render the claims prima facie obvious. In re Ratti,
`
`270 F .2d 810, 123 USPQ 349 (CCPA 1959) (Claims were directed to an oil seal
`
`comprising a bore engaging portion with outwardly biased resilient spring fingers
`
`inserted in a resilient sealing member. The primary reference relied upon in a
`
`rejection based on a combination of references disclosed an oil seal wherein the bore
`
`engaging portion was reinforced by a cylindrical sheet metal casing. Patentee taught
`
`the device required rigidity for operation, whereas the claimed invention required
`
`resiliency. The court reversed the rejection holding the "suggested combination of
`
`page 6 of 22
`
`Exh. p. 7
`
`Exh. p. 7
`
`

`
`‘ Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`references would require a substantial reconstruction and redesign of the elements
`
`shown in [the primary reference] as well as a change in the basic principle under
`
`which the [primary reference] construction was designed to operate." 270 F.2d at 813,
`
`123 USPQ at 352.).
`
`Distilling an invention down to the "gist" or "thrust" of an invention disregards the
`
`requirement of analyzing the subject matter "as a whole." W.L. Gore & Associates,
`
`Inc. v. Gariock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied,
`
`469 U.S. 851 (1984)
`
`In detennining the differences between the prior art and the claims, the question
`under 35 U.S.C. 103 is not whether the differences themselves would have been
`
`obvious, but whether the claimed invention as a whole would have been obvious.
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983);
`
`Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)
`
`A prior art reference must be considered in its entirety, i.e., as a whole, including
`
`portions that would lead away from the claimed invention. W. L. Gore & Associates,
`
`Inc. v. Garlock, lnc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied,
`
`469 U.S. 851 (1984)
`
`Claim Rejections - 35 U.S.C. §103
`
`There are four aspects to considering the claim rejections: 1) understanding the nature of the
`
`prior art references; 2) considering the appropriateness of combining prior art references or
`
`specific features thereof; 3) assessing the anticipatory power of the prior art used for rejection,
`
`particularly what remains unanticipated; 4) examining the specific logic for rejection on a
`
`claim-by-claim basis.
`
`Prior art references used for 35 U.S. C. §103 rejections
`
`One cannot appreciate a prior art reference as anticipatory without understanding it
`
`holistically: the nature of the problem being solved and solution provided, namely function and
`
`page 7 of 22
`
`Exh. p. 8
`
`Exh. p. 8
`
`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`structure. Similarly, one cannot consider the appropriateness of combination without checking
`
`alignment of principles of operation.
`
`5,598,557 (Doner) - Getting highly relevant resultsfiom a coherent database
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`...searching and retrieving files in a database without a user being required to
`
`provide keywords or query terms. A user first selects and opens a reference file...
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`Relevant files are prioritized and displayed to the user in groups... The groups of
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`retrieved files are displayed in associating with the subject word they are relevant to.
`
`(abstract)
`
`Doner required user selection of a topically—coherent target database for searching.
`
`To conduct a search, a user first specifies a particular database. Databases are
`
`usually organized so that files stored on a particular database share a common
`
`attribute. For example, an attorney might utilize a database containing cases from a
`
`particular jurisdiction; a doctor might consult a database containing files of patient
`
`histories; a marketing manager might access a database containing product reviews
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`for spotting market trends; etc. The database can be an already existing database or
`
`a newly created database. (4:65-5:5)
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`Doner’s database is indexed for rapid searching, a typical technique.
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`Finally, the processed infonnation is indexed and saved to the database, step 207.
`
`In.the most relevant embodiment to the claimed invention, Doner allowed user-specified
`
`search based upon a user-selected reference file, in lieu of directly inputting search terms (the
`
`other option for specifying search parameters):
`
`Once a database has been selected, the user can select a weighted keyword
`
`search, a weighted Boolean search, or a document agent search. (5:21-23)
`
`Alternatively, a user can opt for a Document Agent Search, which allows the user
`
`to initiate a search for documents which are similar to a reference document selected
`
`by the user. First, the user selects and opens a reference document. Next, the user
`
`selects the Document Agent Search option from the Search pull-down menu. (6:14-
`
`1 8)
`
`Doner did mention networking: “Finally, computer system 100 can be a terminal in a
`
`computer network (i.e., a LAN)” (4:60-62), suggesting that the target database may be on a
`
`networked computer.
`
`page 8 of 22
`
`Exh. p. 9
`
`Exh. p. 9
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`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`Doner displayed results. Doner did not, as Examiner asserted, anticipate augmenting a
`
`directory as claimed.
`
`2003/0195877 (Forfl - Finding productsfor sale
`
`Ford aimed at e-commerce shopping convenience by finding and displaying all products
`
`for sale based upon user-input search terms.
`
`One problem currently encountered by online merchants is the inability to
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`effectively present groups of related products that span the predefined categories.
`
`[0004]
`
`Ford solved the problem oftrying to provide inclusive results by accessing multiple
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`databases.
`
`The web site includes a query sewer that processes queries by searching a
`
`number of databases. [0027]
`
`Ford’s technology did not search the Internet per se, but instead an indexed database of
`
`data gleaned from a spider crawl. This approach is ubiquitous with so-called Internet search
`
`sites/engines that offer a user quick search results.
`
`The Product Spider database 147 is generated through the use of a web crawler
`
`160 that crawls web sites on the lntemet 120 while storing copies of located web’
`
`V pages. The output of the web crawler 160 is input to a product score generator 162
`
`that assigns a numerical score ("product score") to each web page based upon the
`
`likelihood that the page offers a product for sale for either online or offline purchase.
`
`[0034]
`
`Ford did not search documents as claimed, but pre-digested database index records, the
`
`same as Doner.
`
`As noted above, the Product Spider database 147 is indexed by keyword 166.
`
`Each keyword in the database is associated with one or more web pages for which
`
`the indexer 164 has determined an association. [0037]
`
`Ford’s explanation of the derivation of the databases, including the Product Spider
`
`database, is at [0030]-[0031] and [0034]-[0037].
`
`As Ford was concerned with the web enviromnent, particularly product searching,
`
`searching is necessarily user-interactive. The user inputs both search terms, and sets the scope
`
`of the search (search location(s)).
`
`page 9 of 22
`
`Exh. p. 10
`
`Exh. p. 10
`
`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`Alternatively, users may search for products using a search engine interface 220.
`
`Users can perform searches with the search engine interface 220 by typing in the
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`desired information (referred to herein as a "query") into a query window 230 and
`
`then clicking on a search initiation button 240. The user may control the scope of the
`
`sggrgh with a pulldown window 250 containing multiple categories. The search may
`
`be limited to any one category flirough selection of that category from the pulldown
`
`menu 250. Altematively, the user may conduct a broad-based search through
`
`selection of an "All Products" option 260. [0040]
`
`When the user submits a query from the search engine interface 220 of FIG. 2 to
`
`the web site 130, the query server 140 applies the query to the database, or
`
`databases, corresponding to the search scog selected by the user. [0046]
`
`Given the utility of Ford’s interactive product searching, where keywords are few, one
`
`would never think having to create a reference document to initiate a search. Ford certainly
`
`didn’t.
`
`Ford’s real problem is not making search easy for the user (it already is), but being
`
`properly inclusive: namely, showing all products for sale, but not referencing sources that don’t
`
`offer the desired product for sale.
`
`6,353,822 (Lieberman) - recommending web pages via user profiling
`
`Lieberman profiled a user’s interests by tracking web page selection and consumption
`
`(reading time spent) while browsing the Internet. Recommendations of other web pages were
`
`made by a contemporaneous background search, using search terms from the profile.
`
`The present invention operates in tandem with a conventional document-retrieval
`
`facility, such as a web browser, by tracking the choices made by the user in retrieving
`
`and viewing items (such as web pages)—i.e., which links are followed, when searches
`
`are initiated, requests for help, etc.—and, based thereon, identifying additional items
`
`likely to be of interest to the user. In other words, the invention browses the same
`
`search space as the user, but faster and guided by the user's past behavior. (3:52-60)
`
`Liberman’s technology searched the Internet for documents, similarly as the claimed
`
`technology. Neither Lieberman nor the claimed technology offers the same as the quick-
`
`response search engine Ford employed. Creating Ford’s Product Spider database is a huge
`
`page 10 of 22
`
`Exh. p. 11
`
`Exh. p. 11
`
`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`undertaking, requiring massive storage, not something a client computer would do, as opposed
`
`to the technology of Lieberman or that claimed herein.
`
`Prior Art Combination
`
`The prior art references used by the Examiner for rejection do not themselves suggest
`
`combination. Examiner provided no logical motivation for combining the specific features used
`
`for rejection by using the prior art as a touchstone of rationale.
`
`Doner and Ford - Doner’s reference document with Ford
`
`For claims 9-17, 21-24, 27-29, Examiner combined Doner and Ford for rejection.
`
`Specifically, Examiner wanted to combine a specific feature ofDoner’s with Ford: allowing a
`
`user to select a reference document as a basis for search, in lieu of directly inputting search
`
`terms.
`
`Search specification using Ford’s process is quite simple: a specific product, so Doner’s
`
`technique of simplifying search by using a reference document would be inappropriate in
`
`combination with Ford. There is no reason to think that a user would find it harder to type in
`
`“lawnmower” than select a reference document containing the same word; quite the contrary.
`
`Besides lack of self-suggestion within the prior art, not only is there no motivation to combine
`
`Doner’s reference document with Ford’s disclosed process, as Examiner contended, but the
`
`idea is counter-intuitive, and hence that specific feature combination constitutes impermissible
`
`hindsight.
`
`Ford and Doner combined fail to anticipate other crucial claim limitations, as described
`
`below in the section titled: “Unanticipated limitations for all claims”.
`
`Lieberman with either Doner or Ford
`
`The background of the 09/796235 specification briefly mentions search engines. The
`
`specification glossed over the different construction of search engines and search sites, as that
`
`technology itself was already well known to those skilled in the art. With all due respect, now
`
`facing rejection over confusion, some elucidation is required.
`
`Lieberman performed ad hoc Internet document searching based upon a user profile of
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`previously tracked input.
`
`page 11 of 22
`
`Exh. p. 12
`
`Exh. p. 12
`
`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`Module 102 conducts the actual searches ‘for candidate web items through web
`
`interface 50, which performs the mechanical tasks of accessing network 31 and
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`retrieving items. (6:5-8)
`With regard of ad hoc document searching, Lieberman and the claimed technology are
`equivalent. Lieberman used a database to store found documents, an unnecessary elaboration in
`using 09/796235 technology, but Lieberman’s searching was of documents on the web.
`Lieberman and the claimed technology could easily tap into commercial search engines/sites,
`
`such as Google, for results, as suggested in the background of the 09/796235 specification, or
`
`in Lieberman 8:4-16.
`
`Significantly different, Ford and Doner performed user-interactive database searches,
`
`relying upon user input for both search parameters and search scope/location.
`
`Doner’s anticipated a database that is self-constructed.
`
`The database can be an already existing database or a newly created database.
`
`FIG. 2 is a flowchart illustrating the steps for creating a new database. Computer files
`
`containing useful infomration can be imported by copying it over to the database, step
`
`201. Moreover, data in the form of documents, reports, magazine and newspaper
`articles, can be entered either manually by means of a keyboard, step 202, or they
`
`can be entered by using an optical scanner, step 203. Moreover, the data can already
`
`exist on the computer system. The user can specify zones of a scanned image or file
`
`which is of particular significance for further processing, step 204. Textual portions of
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`a scanned bit-map image or file can be recognized and converted into ASCII code
`
`data, step 205. The ASCII code data can then be edited, step 206. Finally, the
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`processed information is indexed and saved to the database, step 207. (5:5-20)
`
`In contrast to Doner, a different approach is Ford’s Product Spider database, which
`
`resembles commercial search sites such as Google, A9, Alta Vista, Yahoo, and others. Here, a
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`web crawler collates pages (or, at'the least, page references) into a database, as well as creating
`
`an index record of keywords for each page. A user search doesn’t actually go the web, but
`
`instead to the index of database records that comprise page links and their associated keywords.
`
`The Product Spider database 147 includes information about independent web
`
`sites, unaffiliated with the host web site 130, that have been identified as offering
`
`products for sale. This database is particularly useful in that it allows the host web-site
`
`page 12 of 22
`
`Exh. p. 13
`
`Exh. p. 13
`
`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`130 to help a consumer find product offerings for products that are not sold by the
`
`host web site 130 or by affiliated on-line merchants. [0030]
`
`The nature ofthe problem, function and structure of Lieberman’s ad hoc web document
`
`searching and the claimed invention differs markedly from the database index searching of
`
`Doner or Ford.
`
`Examiner provided no explanation of logical connectivity between these references that
`
`could be grounded within the prior art itself, so as to make a Lieberman-Doner/Ford
`
`combination proper under the 35 U.S.C. §103 guidelines, applicable to the claimed invention.
`
`Appellant respectfully traverses rejection of claims 18-22, and 27, combining Lieberman
`
`with Ford or Doner, as constituting impermissible hindsight.
`
`Unanticipated limitations for all claims
`
`“. . .without user input”
`
`Respectfully, Examiner disavowed plain-meaning claim language in the preamble
`
`applicable to all claims: “augmenting a directory without user input”. Examiner considered
`
`claim 9 as exemplary.
`
`Stating that a search and retrieval computer system “augments a directory"
`
`“without user input" could be interpreted in many ways. Search and retrieving
`
`computer files have many steps, including entering search criteria, search locations
`
`and the minutia performed by the computer to determine whether a computer file
`
`meets the search criteria and is retrieved. (01/26/2005 office action, pp. 27-28)
`
`Examiner’s “many ways” of interpreting “without user input” comes down to two aspects
`
`of potential user input:
`
`1. search parameters/terms/criteria, and
`
`2. search location(s).
`
`Examiner’s mention of“ the minutia performed by the computer” is irrelevant to user
`
`input.
`
`‘
`
`With all due respect, in context, Examiner’s argument of vagueness with regard to
`
`“without user input” was an insupportable straw man.
`
`page 13 of 22
`
`Exh. p. 14
`
`Exh. p. 14
`
`

`
`Application No.: 09/796,235
`Filed:
`02/28/2001
`Group Art Unit: 2179
`
`So, Examiner overtly disagreed, but tacitly concurred with appellant, that, in context, the
`
`two limitations applicable to the meaning of “without user input” comprise:
`
`1. no user input of search parameters;
`
`2. no user input of search locations.
`
`That is exactly what appellant had explained in his 08/27/2004 reply to the first office
`
`action rejection.
`
`Appellant had amended claim 9 to explicitly point out “without user input of search
`
`location” as a claim limitation in the body of the claim. While on the one hand complaining
`
`about the preamble “without user input” limiting the scope of a claim, on the other hand,
`Examiner on page 28 of his 01/26/2005 office action inexplicably inferred a nefarious intent to
`
`stating an aspect ofthis limitation, “without user input of a search location”, within the body of
`
`the claim.
`
`None of the cited prior art references meet both aspects of the limitation “without user
`
`input”. Particularly, Ford and Doner take user input of both search parameters and location.
`
`Doner in one embodiment allows user selection of a reference document in lieu of inputting
`
`search terms, but that still constitutes user input, albeit indirect input of search terms.
`
`Lieberman created a user profile based upon tracking user input as a means for building
`
`search parameters. Relative to the claimed invention, Lieberman’s was an active and tedious
`
`process of data collation from user input.
`
`By contrast, the claimed invention relies solely upon documents in a directory, without
`
`relying upon user input. Yes, a user must first put the documents in the directory, but that is a
`
`precondition; user input is not required for the claimed process to work, unlike Lieberman. That
`
`cannot be said for Doner, Ford, Lieberman, search engines, or any other cited art used as a
`
`basis of rejection.
`
`“augmenfing a directory” (all claims)
`
`Doner, Ford, and Lieberman all display results interactively. No cited prior art teaches
`
`augmenting a directory with found relevant references as a process termination as claimed.
`
`Respectfully, Examiner’s mistaken attributions with regard to the cited prior art adding
`
`results to a file directory are traversed.
`
`page 14 of 22
`
`Exh. p. 15
`
`Exh. p. 15
`
`

`
`Application No.2 09/796,23 5
`Filed:
`02/28/2001
`
`Group Art Unit: 2179
`
`“documents in storage”
`
`The nature of “documents” as used in context throughout the claims and 09/796,235
`
`specification is consistent and singular. In the claims, the same type of document is used for
`
`deriving search parameters, search, and results references, hence the same term: “document”.
`
`Documents are individual files in storage, to which a reference may be made and used for
`
`access, as in a file pointer or hyperlink or URL (universal resource locator). Technically, from
`
`an access perspective, a document is always file system pointer/reference, as the file system
`
`may maintain a document in fragments on physical storage, collating the fragments and
`
`delivering the contents only upon request by software yielding a file pointer.
`
`Ford and Doner searched databases, not documents as claimed.
`
`Documents in a file system storage are not the same as database records.
`
`One simply could not describe a technology that relie