Obviousness

Obviousness Analysis under 35 U.S.C. § 103 for US Patent 7370035

An obviousness analysis under 35 U.S.C. § 103 for US Patent 7370035 has already been performed by the Patent Trial and Appeal Board (PTAB) in Inter Partes Review (IPR) proceeding IPR2025-00253. The Final Written Decision (FWD), issued on 2026-06-18, found claims 1-17 of US7370035 unpatentable as obvious.

Prior Art Combination:
The PTAB's decision was based on the combination of:

• U.S. Patent Application Publication No. 2004/0133564 (Gross): This publication is an "Other Version" of US7370035, indicating it is the application publication of the same patent family.
• U.S. Patent No. 6,349,307 (Rappaport): This patent, while not explicitly detailed in the "Prior Art" section of the user's provided analysis, was cited by the PTAB as part of the obviousness grounds.

PTAB's Finding and Reasoning for Claims 1-17:
The Board determined that the petitioner, Microsoft Corporation, demonstrated a reasonable likelihood that claims 1-17 are unpatentable as obvious over the asserted prior art combination of Gross and Rappaport.

• Claim 1 (Method of performing a search): The PTAB found Claim 1 unpatentable, stating that "the combination of Gross and Rappaport teaches or renders obvious all limitations of claim 1". This implies that a person having ordinary skill in the art, in view of the teachings of both references, would have found the method of receiving multiple search strings in the same field and incrementally locating documents based on words beginning with those strings to be obvious.
• Claims 2-8, 10-16 (Dependent Claims): These claims, which are dependent on claims 1 or 9, were also found unpatentable. The Board concluded that they "did not introduce patentably distinct features over the prior art combination" of Gross and Rappaport. This suggests that any additional features introduced by these dependent claims were also taught or rendered obvious by the combination of the cited prior art.
• Claim 9 (Search apparatus): Claim 9, an independent apparatus claim, was found unpatentable. The PTAB reasoned that "the elements of the apparatus claim 9, when construed in light of the specification, are clearly taught or rendered obvious by Gross in view of Rappaport".
• Claim 17 (Search index system): Claim 17, which relates to an indexing system that treats punctuation marks as string separators, was also found unpatentable. The Board concluded that "the indexing system described in claim 17, particularly its treatment of punctuation marks as string separators, would have been obvious to a person of ordinary skill in the art based on the teachings of Gross and Rappaport".

Motivation to Combine Gross and Rappaport:
The provided "PTAB challenges" section does not explicitly detail the specific motivation articulated by the PTAB for combining Gross and Rappaport beyond stating that the combination "teaches or renders obvious" the limitations of the challenged claims. However, in an obviousness analysis, such a finding implies that a Person of Ordinary Skill in the Art (POSA) would have had a reason to combine the references, with a reasonable expectation of success, to arrive at the claimed invention. The PTAB's conclusion suggests that the features of search indexing, incremental searching, and the handling of punctuation for string separation, as claimed in US7370035, were logically derivable or easily implementable by a POSA given the state of the art represented by Gross and Rappaport.

Claims Not Challenged:
It is important to note that claims 18 and 26, which are independent claims related to selectively performing a search and executing a command, were not challenged in IPR2025-00253. Therefore, no PTAB finding regarding their obviousness over the Gross and Rappaport combination is available in the provided information.An obviousness analysis under 35 U.S.C. § 103 for US Patent 7370035 has already been performed by the Patent Trial and Appeal Board (PTAB) in Inter Partes Review (IPR) proceeding IPR2025-00253. The Final Written Decision (FWD), issued on 2026-06-18, found claims 1-17 of US7370035 unpatentable as obvious.

Prior Art Combination:
The PTAB's decision was based on the combination of:

• U.S. Patent Application Publication No. 2004/0133564 (Gross): This publication is an "Other Version" of US7370035 and is an application publication of the same patent family.
• U.S. Patent No. 6,349,307 (Rappaport): This patent was cited by the PTAB as part of the obviousness grounds. A brief search indicates US 6,349,307 B1, "Information search system and method for searching multiple databases with different search schemes", generally relates to systems and methods for searching multiple databases.

PTAB's Finding and Reasoning for Claims 1-17:
The Board determined that the petitioner, Microsoft Corporation, demonstrated a reasonable likelihood that claims 1-17 are unpatentable as obvious over the asserted prior art combination of Gross and Rappaport.

• Claim 1 (Method of performing a search): The PTAB found Claim 1 unpatentable, stating that "the combination of Gross and Rappaport teaches or renders obvious all limitations of claim 1". This implies that a person having ordinary skill in the art (POSA), in view of the teachings of both references, would have found the method of receiving multiple search strings in the same field and incrementally locating documents based on words beginning with those strings to be obvious.
• Claims 2-8, 10-16 (Dependent Claims): These claims, which are dependent on claims 1 or 9, were also found unpatentable. The Board concluded that they "did not introduce patentably distinct features over the prior art combination" of Gross and Rappaport. This suggests that any additional features introduced by these dependent claims were also taught or rendered obvious by the combination of the cited prior art.
• Claim 9 (Search apparatus): Claim 9, an independent apparatus claim, was found unpatentable. The PTAB reasoned that "the elements of the apparatus claim 9, when construed in light of the specification, are clearly taught or rendered obvious by Gross in view of Rappaport".
• Claim 17 (Search index system): Claim 17, which relates to an indexing system that treats punctuation marks as string separators, was also found unpatentable. The Board concluded that "the indexing system described in claim 17, particularly its treatment of punctuation marks as string separators, would have been obvious to a person of ordinary skill in the art based on the teachings of Gross and Rappaport".

Motivation to Combine Gross and Rappaport:
The "PTAB challenges" section of the previous analysis does not explicitly detail the specific motivation articulated by the PTAB for combining Gross and Rappaport beyond stating that the combination "teaches or renders obvious" the limitations of the challenged claims. However, in an obviousness analysis, such a finding implies that a Person of Ordinary Skill in the Art (POSA) would have had a reason to combine the references, with a reasonable expectation of success, to arrive at the claimed invention. The PTAB's conclusion suggests that the features of search indexing, incremental searching, and the handling of punctuation for string separation, as claimed in US7370035, were logically derivable or easily implementable by a POSA given the state of the art represented by Gross and Rappaport.

Claims Not Challenged:
It is important to note that claims 18 and 26, which are independent claims related to selectively performing a search and executing a command, were not challenged in IPR2025-00253. Therefore, no PTAB finding regarding their obviousness over the Gross and Rappaport combination is available in the provided information.