Ex Parte Whitman et al - Page 5




               Ex parte WHITMAN (2003-1404)                                                                 Paper 23                 
               Application No. 09/532,230                                                                     Page 5                 
       [21]    Bowman does not disclose the selection, storage, and use of search phrases, as opposed to search                      
               terms.                                                                                                                
       [22]    The examiner treats "related terms" and "search phrases" as interchangeable, pointing to                              
               Bowman Figures 5A, 5B, and 9, and to 7:24-42,1 11:6-50, and 14:13-45 (Paper 13 at 3-4).                               
       [23]    Figures 5A and 5B show individual words that are suggested in response to words in the user's                         
               search query, e.g., "BIKE" suggests title word "HUFFY", "REPAIR", and "TRAIL"; author                                 
               words "CARLSON", "FRANKLIN", and "YATES"; and subject words "EXCERCISE" [sic],                                        
               "OUTDOOR", and "TRAIL".                                                                                               
       [24]    Figure 9 shows phrases, but the suggested additional search aids 910 are all single words                             
               "BIKE", "SPORTS", and "VACATION" generated in response to a query "OUTDOOR TRAIL".                                    
       [25]    The cited portions of the Bowman disclosure are consistent with the figures, but do not expand                        
               the meaning of Bowman's search terms.                                                                                 
       [26]    More to the point, Bowman's discussion of parsing the daily query log makes clear that Bowman                         
               is extracting individual terms for correlation with other individual terms rather than whole                          
               phrases (Bowman at 9:12-11:11).                                                                                       
                       The question of whether it would have been obvious to substitute search phrases for                           
               search terms is not before us in the context of a rejection under § 102(e).                                           
                       The lack of a disclosure in Bowman for using search phrases does not dispose of this                          
               appeal because claim 43 does not include "search phrase" as a limitation.                                             
       [27]    Claim 43  (reproduced from the appendix to Paper 10) claims the invention as follows:                                 


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