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Google Glides by Section 101

Google Glides by Section 101

US 2015/0227523 assigned to Google Inc. of Mountain View CA relates to computer implemented methods, non-transitory computer storage devices and computer implemented search systems. The application claims priority back to a May 2009 provisional application through an intervening US utility application from May 2010. The claims all relate to the idea that a single search query is applied to local files belonging to the OS, local files belonging to third party applications and the Internet. Results from all sources are presented in a ranked list and the ranking may be adjusted after the user makes a selection from the initial list.

As one might expect, there are a lot of novelty and obviousness rejections on the record in this family. However, there are three interesting things about the prosecution of this case.

The first interesting thing is that Google seems to feel it pays to have a US application pending, even if there is no measurable progress towards grant.

In the May 2010 parent case, there were a total of four Office Actions (two non-final and two final) with an intervening RCE. An interview was conducted prior to filing the fourth response but the fourth OA response elicited an advisory action from the Examiner.

Google responded by filing a notice of appeal and then the current application. Based on PAIR and the PTAB portal it does not seem like an appeal brief was ever filed. This is an interesting strategy because it buys time (2 months) and is less costly than a second RCE ($800 vs $1700 for a large applicant). The current case was filed exactly eight months after the last OA in the May 2010 parent case. As a result of this strategy, the next RCE filed will be a “first” RCE in the current case and subject to a fee of $1200 instead of $1700; large entity). The aggregate savings (notice of appeal instead of second RCE + first RCE instead of third RCE) is $1400. That is nearly enough to offset the cost of filing the present application ($1600; large entity).

The second interesting thing is that §101 rejections have not been raised. This is interesting because of the independent claims presented:

A computer-implemented search method, comprising:                                       

receiving, by a search application installed on a user device, a query entered by a user of the device;              

providing, by the search application, the query to a plurality of third-party applications installed on the device, other than the search application;                                                                                                                                  

receiving, by the search application, a respective response from each of the third-party applications, each response including one or more search results that identify data managed by the respective third-party application from which the response is received;                                                                                                                                         

integrating, by the search application, the responses from the third-party applications into an integrated result set that includes groups of search results, wherein each group includes only search results received from a corresponding one of the third-party applications;                                                                                                                                    

ranking the groups of search results in the integrated result set based on prior user selections of search results from the third-party applications on the user device; and                                                                                                  

presenting, by the search application, the integrated result set on the user device in an arrangement that corresponds to the ranking of the groups of search results in the integrated result set.

One or more non-transitory computer storage devices having instructions stored thereon that, when executed by a computer, cause the computer to perform operations comprising:                                                                       

receiving, by a search application installed on a user device, a query entered by a user of the device;           

providing, by the search application, the query to a plurality of third-party applications, other than the search application; receiving, by the search application, a respective response from each of the third-party applications, each response including one or more search results that identify data managed by the respective third-party application from which the response is received;                                                                                                                       

integrating, by the search application, the responses from the third-party applications into an integrated result set that includes groups of search results, wherein each group includes only search results received from a corresponding one of the third-party applications;                                                                                                                                   

ranking the groups of search results in the integrated result set based on prior user selections of search results from the third-party applications on the user device; and presenting, by the search application, the integrated result set on the user device in an arrangement that corresponds to the ranking of the groups of search results in the integrated result set.

A computer-implemented search system, comprising:                                                                                                   

a search application, on a user device, configured to provide an interface for receiving user-entered queries; and          

a plurality of third-party applications, on the user device, that are separate from the search application and configured to receive the user-entered queries from the search application, and to provide search results to the search application that are determined to be relevant to the user-entered queries,                                                                 

wherein the search application is further configured to generate an integrated list of search results from the plurality of third-party applications, to group the search results in the integrated list into groups of search results, wherein each group includes only search results received from a corresponding one of the third-party applications that provided the search results, and to order the groups of search results in the integrated list based on a measure of how frequently search results from the respective third-party applications have previously been selected within the search application.

As regards method claim 21 and Beauregard claim 31, the recited

receivingprovidingintegratingranking and presenting seem, at least on their face, to be routine computer functions which define an abstract idea in the form of a computer algorithm. Assuming that this is not the case, it is still interesting that the Examiner did not see fit to ask why the claims are more than an abstract idea by putting forth a § 101 rejection.

As regards system claim 40 it recites two software components (a search application and a plurality of third-party applications) which each reside “on a user device”. Although this is a system claim, no hardware components other than “user device” are recited. Descriptive language describes how the software components interact with one another in functional terms. On its face this would seem to be either a claim for “software per-se” or a statement of an abstract idea with instructions to “apply it” on a computer. Assuming that this is not the case, it is still interesting that the Examiner did not see fit to ask why the claims are more than software per-se or an abstract idea by putting forth a § 101 rejection.

The third interesting thing is the preamble of Beauregard claim 31: “One or more non-transitory computer storage devices having instructions stored thereon that, when executed by a computer, cause the computer to perform operations comprising: …”

Beauregard claims originated in an era when computer program products were normally distributed on tangible media (first diskettes, then CD ROM disks). They gained popularity as a way to claim a program disembodied from a computer. This was, and still is, desirable because the purveyor of the software product is often separate from the purveyor of the hardware product on which the software runs.

The standard preambles for Beauregard claims  were “A machine readable media comprising instructions…” and “A computer program product comprising instructions…” As the Internet evolved and it became common to distribute software via download from a remote server, US Examiners began to ask for a “non-transitory” stipulation in claims of this type to make it clear that “signals per-se” are excluded.

Claim 31 is the first time that I have seen the “non-transitory” stipulation applied to a computer storage device (which is inherently non-transitory). Claim 31 does not require that the “instructions” on the device be non-transitory. It is interesting that the Examiner did not ask why the “instructions” are not a signal per se.

The take home message here is that there appears to be a lot of variation in the way the rules are applied within the US patent office.

 

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