ADRIAANSEN, Edwin et al.

Patent Trials and Appeals Board

Jan 8, 2020

14094682 - (D) (P.T.A.B. Jan. 8, 2020)

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.
14/094,682 12/02/2013 Edwin ADRIAANSEN ELV0015VA / 77434-33 7609
146524 7590 01/08/2020
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
EXAMINER
SITIRICHE, LUIS A
ART UNIT PAPER NUMBER
2126
MAIL DATE DELIVERY MODE
01/08/2020 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 EDWIN ADRIAANSEN and BOB J.A. SCHIJVENAARS
___________

Appeal 2019-000930
Application 14/094,682
Technology Center 2100
_________________

Before JAMES B. ARPIN, JON J. JURGOVAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–8, 10–14, and 16–21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party-in-interest as Elsevier
Inc. Appeal Br. 2.
2 Claims 3, 9, and 15 are cancelled. Appeal Br., Claims Appendix 2, 4, 5.
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CLAIMED SUBJECT MATTER
Invention
Appellant’s claims relate to textually analyzing documents to
determine a knowledge profile for each one of the documents, and using the
knowledge profile as a basis for non-keyword based electronic searching “to
retrieve[] the most relevant documents without relying on keywords.”
Spec. ¶ 3.3
Exemplary Claim
Claims 1, 7, and 13 are independent. Independent claim 1 is
exemplary of the claimed subject matter and is reproduced below with claim
element labels added in brackets and limitations at issue in italics:
1. A computer-based method for textually analyzing one
or more documents to determine a knowledge profile for each
one of the one or more documents, the knowledge profile used
as a basis for non-keyword based electronic searching, the
method comprising:
[a] storing, by one or more computer processors, a
fingerprint for each of the one or more documents, wherein:
[a1] the fingerprint comprises one or more
concepts from one document of the one or more
documents and one or more relevance weights
associated with the one or more concepts, and

3 We refer to: (1) the originally filed Specification filed December 2, 2013
(“Spec.”); (2) the Final Office Action mailed December 4, 2017 (“Final
Act.”); (3) the Appeal Brief filed May 2, 2018 (“Appeal Br.”); (4) the
Examiner’s Answer mailed September 12, 2018 (“Ans.”); and (5) the Reply
Brief filed November 13, 2018 (“Reply Br.”).
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[a2] the one or more concepts provide a textual
representation of one or more objects, classes, properties,
and relations of the document;
[b] combining, by the one or more computer processors,
fingerprints having a relationship, wherein the relationship
comprises at least one of:
[b1] fingerprints that are from documents authored
by the same author,
[b2] fingerprints that are published in the same
publication, and
[b3] fingerprints that are from documents that are
provided by the same organization; and
[c] using the fingerprints to form the knowledge profile
that is used as the basis for non-keyword based electronic
searching.
Appeal Br. 2 (Claims Appendix).
REFERENCES
The references4 relied upon by the Examiner are:
Name Reference Date
Ikeda US 2003/0158828 A1 Aug. 21, 2003
Shamir US 2003/0224344 A1 Dec. 4, 2003
Glass US 2005/0060643 A1 Mar. 17, 2005
Essafi US 2007/0271224 A1 Nov. 22, 2007
Jones US 2008/0016040 A1 Jan. 17, 2008
Encina US 2008/0140616 A1 June 12, 2008
Aumann US 2011/0004606 A1 Jan. 6, 2011

4 All citations to the references use the first-named inventor only.
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REJECTIONS
The Examiner rejects claims 1, 2, 4–8, 10–14, and 16–21 under 35
U.S.C. § 101 as reciting patent-ineligible subject matter. Final Act. 2–6.
The Examiner rejects claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 under
35 U.S.C. § 103(a) as obvious over the combined teachings of Essafi,
Encina, Shamir and Glass. Id. at 6–12.
The Examiner rejects claims 5, 11, and 17 under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Essafi, Encina, Shamir, Glass, and
Ikeda. Id. at 12–14.
The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Essafi, Encina, Shamir, Glass, and Jones.
Id. at 14–15.
The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Essafi, Encina, Shamir, Glass, and Aumann.
Id. at 15–16.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
Rejection under 35 U.S.C. § 101
I. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
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include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Alice and Mayo.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine to what concept the claim is directed. See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
If the claim is directed to an abstract idea, we turn to the second part
of the Alice and Mayo framework, in which “we must examine the elements
of the claim to determine whether it contains an ‘inventive concept’
sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
The Office published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) as revised by the recently issued October 2019 Patent
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Eligibility Update (October 2019 Update) (together hereinafter “Guidance”).
Under the Guidance, in determining whether a claim falls within an
excluded category, we first look to whether the claim recites:
(1) Step 2A — Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity, such as a fundamental
economic practice, or mental processes); and
(2) Step 2A — Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP5
§ 2106.05(a)–(c), (e)–(h)).
See Guidance, 84 Fed. Reg. 54–55 (“Revised Step 2A”). Only if a claim (1)
recites a judicial exception and (2) does not integrate that exception into a
practical application, do we then look to whether the claim (Step 2B):
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
II. The Examiner’s § 101 Rejection
The Examiner determines that exemplary6 claim 1 is directed to a
judicial exception: an abstract idea. Final Act. 2–6; Ans. 17–22. According

5 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
6 Appellant argues claims 1, 2, 4–8, 10–14, and 16–21 as a group with
respect to the § 101 rejection. Appeal Br. 30. We, thus, select independent
claim 1 as exemplary of the claims. See 37 C.F.R. § 41.37(c)(1)(iv).
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to the Examiner, claim 1 is “directed towards storing and combining
fingerprints of documents having a relationship for non-keyword based
electronic searching” and therefore the claim recites an “abstract idea similar
to ‘[c]reating an index and using that index to search for and retrieve data.7’”
Final Act. 5. The Examiner determines “[t]he claims disclose one or more
computer processors, storage devices, and non-transitory processor-readable
storage mediums storing instructions to perform the claimed processes of
creating an index and using that index to search for and retrieve data” and
“the mere recitation of ‘processors, storage devices and computer readable
storage mediums’ is akin to adding the words ‘apply it’ with a computer in
conjunction with the abstract idea. Such limitations are not enough to add
significantly more to the abstract idea.” Final Act. 6.
III. Appellant’s Arguments
We summarize Appellant’s arguments in favor of eligibility as
follows: (1) “[t]he independent claims of the present application clearly
show that the fingerprints are used in a way that improves computer
function, as the independent claims further recite the step of ‘using the
fingerprints to form the knowledge profile that is used as the basis for non-
keyword based electronic searching’” (Appeal Br. 32); (2)“[l]ike the claims
upheld as subject matter eligible in DDR Holdings,8 the knowledge profile
that is used as the basis for non-keyword based electronic searching as

7 Citing Intellectual Ventures v. Erie Indemnity Co., 850 F.3d 1315 (Fed.
Cir. 2017).
8 Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014).
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recited by the independent claims are necessarily rooted in computer
technology” (id. at 34); and (3) “the Examiner merely stated that the claims
are ‘well-understood, routine and conventional in the field,’ but does not
provide a reasoning” as required by the “April 19, 2018 USPTO
Memorandum9” (id.).
IV. Our Review, Guidance, Step 1
We analyze the claims and the Examiner’s rejection in view of the
Guidance, and we adopt the nomenclature for the steps used in the
Guidance. As an initial matter, the claims must recite at least one of four
recognized statutory categories, namely, machine, process, article of
manufacture, or composition of matter. MPEP § 2106(I); see 35 U.S.C.
§ 101. Appellant’s independent claims 1, 7, and 13 recite a method (i.e., a
“process”), a system (i.e., a “machine”), and a computer-readable storage
medium (i.e., a “manufacture”), respectively. Id. Thus, the pending claims
recite a recognized statutory category of § 101 and we turn to the two-step
Alice/Mayo analysis applied in accordance with the Office Guidance.
V. Step 2A, Prong 1 in the Guidance (Alice/Mayo–Step 1)
(Judicial Exceptions)
Next, we determine whether exemplary claim 1, being directed to a
statutory class of invention, nonetheless falls within a judicial exception.
Guidance, 84 Fed. Reg. 51. We agree with the Examiner that the steps in
claim 1 recite an “abstract idea similar to ‘[c]reating an index and using that
index to search for and retrieve data.’” Final Act. 3. Apart from additional

9 April 19, 2018 Memorandum to the Patent Examining Corps, entitled
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
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elements discussed separately below, claim 1, at a high level, recites a
“method for textually analyzing one or more documents to determine a
knowledge profile” including the steps of “[a] storing a fingerprint for each
of the one or more documents,” “[b] combining . . . fingerprints having a
relationship,” and “[c] using the fingerprints to form the knowledge profile
that is used as the basis for non-keyword based electronic searching.”
Claims Appendix 2. The fingerprint of claim 1 is recited as comprising
“[a1] concepts from one document of the one or more documents and one or
more relevance weights associated with the one or more concepts” and thus
the claimed fingerprints are merely data. Claims Appendix 2; Spec. ¶ 53.
Appellant’s Specification discloses that “[b] combining . . . fingerprints
having a relationship,” can mean “averaging the fingerprints” and that the
claimed “knowledge profile” is also stored data. Spec. ¶¶ 53, 17 (“The
system memory 112 typically contains data such as Knowledge Profile data
107”).
Under a broadest reasonable interpretation, the series of steps covered
by the asserted claims—“[a] storing a fingerprint,” “[b] combining . . .
fingerprints having a relationship,” and “[c] using the fingerprints to form
the knowledge profile”— could all be performed by humans without a
computer. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed.Cir.2011) (“[C]omputational methods which can be performed
entirely in the human mind are the types of methods that embody the ‘basic
tools of scientific and technological work’ that are free to all men and
reserved exclusively to none.”) (quoting Gottschalk v. Benson, 409 U.S. 63,
67, (1972)). Because claim 1 analyzes information by steps people may go
through in their minds or with pen and paper, we conclude the claim recites
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a mental process, as provided for in the Guidance. We, therefore, agree with
the Examiner’s determination that claim 1 recites an abstract idea.
VI. Step 2A, Prong Two in the Guidance
(Integration into a Practical Application)
Because claim 1 recites an abstract idea, we next determine whether
the claim is directed to the abstract idea itself or whether it is, instead,
directed to some technological implementation or application of, or
improvement to, this idea, i.e., is integrated into a practical application. See,
e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S. 187
(1981)). We determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception or exceptions; and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application. 84 Fed. Reg. 54–55. This evaluation
requires an additional element or a combination of additional elements in the
claim to apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the exception. See id.
Appellant argues “the fingerprints are used in a way that improves
computer function, as the independent claims further recite the step of ‘using
the fingerprints to form the knowledge profile that is used as the basis for
non-keyword based electronic searching’” and “[t]his is because the
knowledge profile that is formed from the fingerprints eliminates ‘variations
in natural language.’” Appeal Br. 31–32. Additionally, Appellant argues
that, “[l]ike the claims upheld as subject matter eligible in DDR Holdings,
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the knowledge profile that is used as the basis for non-keyword based
electronic searching as recited by the independent claims are necessarily
rooted in computer technology.” Id. at 34.
According to the Examiner, however, the claims do not offer any
‘technological improvement’” that would integrate the recited abstract ideas
into a practical application. See Ans. 19. Specifically, the Examiner states,
It is not clearly recited how the “knowledge profile/fingerprint”
improves accuracy. The focus of the claims is directed towards
the construction of said knowledge profile by combining
fingerprints having a relationship, not how it is used for
improving the accuracy. Appellant alleges that the knowledge
profile formed from the fingerprints eliminates “variations in
natural language” such that keywords do not need to be relied
upon when conducting a search, however, after careful re-
consideration, examiner respectfully understands that the claim
language is not focused on this improvement.
Ans. 19. We agree with the Examiner. We are not persuaded claim 1
integrates the abstract idea into a practical application by “improv[ing]
computer function.” Appeal Br. 32. Claim 1 recites “one or more computer
processors” performing a “computer-based method.” But the improvement
recited in the claim does not improve the programmed processor itself.
Instead, the alleged improvement recited in the claim is an improvement to
the abstract idea, i.e., a mental process used for non-keyword based
electronic searching of documents. Although the computer is programmed
to execute steps to perform the abstract idea discussed above, the execution
of the claimed programming is simply the generic function of a computer.
In describing the problem to be addressed by Appellant’s invention,
the Specification indicates “[w]hat is needed is a searching method that
retrieves the most relevant documents without relying on keywords.”
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Spec. ¶ 3. Thus, the problem described by the Specification is a document
searching problem, not a computing problem. Furthermore, although the
claimed invention further addresses the problem that “the known methods
are too slow and inaccurate to provide relevant search results” (id.), as
claimed, this merely “rel[ies] on a computer to perform routine tasks more
quickly or more accurately [which] is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) (citing Alice, 573 U.S. at 225). As such, we are not persuaded
claim 1 “improves computer functioning by causing the computer to more
accurately search when using the knowledge profile.” Reply Br. 5.
We are also not persuaded that claim 1 is “necessarily rooted in
computer technology.” Appeal Br. 34. As discussed above, the claim
broadly recites a mental process that is used to “textually analyz[e]”
documents,” to retrieve “the most relevant documents without relying on
keywords.” Spec. ¶ 3, claim 1. Analyzing documents, as broadly claimed,
is not a computer problem.
Additionally, none of the remaining indicia of integration identified
by the January 2019 Guidance are present in the claim. Guidance, 84 Fed.
Reg. 55; see MPEP § 2106.05(a)–(c), (e)–(h). For example, the claims do
not recite a particular machine and, instead, generically recites “one or more
computer processors.” Nor do the claims recite the “[t]ransformation and
reduction of an article ‘to a different state or thing.’” Bilski, 561 U.S. 593,
604 (2010); MPEP § 2106.05(c). Further, the additional elements are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
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claim as a whole is more than a drafting effort designed to monopolize the
exception.
We, therefore, determine claim 1 is not directed to a specific asserted
improvement in computer-related technology or otherwise integrated into a
practical application and thus is directed to a judicial exception.
VII. Step 2B in the Guidance (Alice/Mayo, Step 2) (Inventive Concept)
Having concluded that the claim recites a judicial exception but does
not integrate the exception into a practical application, we next turn to
whether the claim provides an “inventive concept,” i.e., whether the
additional elements beyond the exceptions, individually and in combination,
amount to “significantly more” than the exceptions themselves. Guidance,
84 Fed. Reg. 56. To determine whether the claim provides an inventive
concept, the additional elements are considered—individually and as an
ordered combination—to determine whether they (1) add a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field or (2) simply append well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. Id.
The Examiner determines claim 1’s “mere recitation of processors . . .
is akin to adding the words apply it with a computer in conjunction with the
abstract idea. Such limitations are not enough to add significantly more to
the abstract idea.” Final Act. 5 (internal quotation marks omitted). We
agree with the Examiner.
Appellant argues claim 1 should be addressed consistent with
Berkheimer v. HP Inc., 881 [F.3d] 1360 (Fed Cir 2018), which addressed
whether certain claim limitations represent well-understood, routine
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conventional activity. Appeal Br. 34–35. According to Appellant, “the
Examiner merely stated that the claims are ‘well-understood, routine and
conventional in the field,’ but does not provide a reasoning for why it could
be readily concluded that the claim elements are widely prevalent or in
common use in the relevant industry.” Id. at 34.
That Berkheimer is applicable precedent is undisputed. Appellant,
however, fails to point out which “claim elements” are not well-understood,
routine, or conventional, whether under Berkheimer or any other authority.
See Appeal Br. 34–35; see also Reply Br. 2–6. We decline to speculate as to
which “certain claim limitations” Appellant refers.
Further, other than the recited abstract idea discussed above, the claim
recites “one or more computer processors.” Claims Appendix 2. As the
Examiner finds, that language recites a “generic computer” that, alone or in
combination, “do[es] not show any inventive concept in applying the
abstract idea.” Final Act. 5; Ans. 21 (“Applying a generic computer as a
tool being used to perform the abstract idea is just linking the abstract idea to
a particular environment and therefore cannot be considered to be
significantly more than the abstract idea itself.”). In addition, the Examiner
relies on the Specification to support the finding that the computing
components recited in the claim, i.e., “one or more computer processors,”
are generic components that do not transform the claim into a patent-eligible
invention. Ans. 21 (citing Spec. ¶¶ 15, 22). The Specification supports the
Examiner’s finding, stating that “one skilled in the art will appreciate that
the system and method disclosed herein can be implemented via a general-
purpose computing device in the form of a computer 101.” Spec. ¶ 15.
Thus, we conclude that claim 1 does not provide an inventive concept
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because the additional elements, considered individually, do not provide
significantly more than the recited judicial exception.
Neither does Appellant direct our attention to anything in the
Specification that indicates the claimed components, as an ordered
combination, perform anything other than well-understood, routine, and
conventional processing functions, such as retrieving, manipulating,
generating, or storing data. See Content Extraction and Transmission LLC
v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(“collecting data, . . . recognizing certain data within the collected data set,
and . . . storing that recognized data in a memory.”); Inventor Holdings, LLC
v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding
that considering claims reciting data retrieval, analysis, modification,
generation, display, and transmission as an “‘ordered combination”’ reveals
that they “amount to ‘nothing significantly more’ than an instruction to
apply [an] abstract idea” using generic computer technology) (internal
citation omitted). In short, consistent with our reviewing court’s
determinations in these cases, claim 1 does no more than use generic
hardware to implement the claimed abstract idea.
We, thus, conclude that claim 1 does not provide an inventive concept
because the additional elements recited in claim 1 do not provide
significantly more than the recited judicial exception. Accordingly, claim 1
does not recite patent-eligible subject matter. Because claim 1 is argued as
exemplary of the other claims, we also conclude that independent claims 7
and 13 and dependent claims 2, 4–6, 8, 10–12, 14, and 16–21 do not recite
patent-eligible subject matter. Therefore, we sustain the rejection of claims
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1, 2, 4–8, 10–14, and 16–21 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.
Rejections under 35 U.S.C. § 103(a)
The Examiner finds the combination of Essafi, Encina, Shamir and
Glass teaches or suggests “the fingerprint comprises one or more concepts
from one document of the one or more documents and one or more
relevance weights associated with the one or more concepts,” as recited in
claim 1. Specifically, the Examiner relies on Essafi’s disclosure of a weight
of a concept in a document. Final Act. 7 (citing Essafi ¶ 209); Ans. 24–25.
The paragraph from Essafi cited by the Examiner discloses in full:
A fingerprint of a document can then be formed by the signature
vectors of each concept of the dictionary 5. The signature vector
is constituted by the documents where the concept c, is present
and by the positions and the weight of said concept in the
document.
Essafi ¶ 209 (bolding omitted).
In finding Essafi’s weight teaches the claimed relevance weights, the
Examiner finds Appellant’s Specification “fails to describe what exactly
relevance is. [The] Specification only recites ‘relevance weights’, however,
this is broad in concept as it fails to explain that the weights are relevant to
what exactly. Based on the broadest reasonable interpretation, Essafi
teaches said limitation.” Ans. 24.
Appellant disputes the Examiner’s factual findings and claim
interpretation, arguing “a person having ordinary skill in the art would
instantly recognize that the term ‘relevance weight’ clearly refers to
differing degrees of relevance; i.e., one relevance weight may be more
closely related to a particular topic than another relevance weight.” Appeal
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Br. 8 (citing Spec. ¶ 77); Reply Br. 6–7.
We agree with Appellant that the Examiner’s decision to ignore the
word “relevant” in the claim renders the Examiner’s claim interpretation
unreasonably broad. Each word of the claim must have meaning. An
interpretation that would render a word in the claim redundant or
meaningless is rarely, if ever, correct. Although Appellant’s Specification
does not specifically define the word, the Specification, absent any analysis
by the Examiner, does support Appellant’s interpretation that a relevance
weight “refers to differing degrees of relevance.” Spec. ¶¶ 45, 51, 53, 77.
Moreover, any interpretation that fails to give weight to “relevance,”
deprives the word in this claim term of its normal meaning; thus, the
“relevance weight” does not include just any weight, but rather refers to a
specific type of weight relating to relevance. Ex parte Givens, 2009-003414,
at 3 (PTAB Aug. 6, 2009) (designated informative).
In view of our interpretation, we find persuasive Appellant’s argument
that “Essafi, in merely stating a weight without explaining what that weight
is, . . . does not teach or suggest ‘one or more relevance weights’ as recited
in the claims of the present application.” Reply Br. 7. Because we agree
with at least one of the dispositive arguments advanced by Appellant for
claim 1, we do not reach the merits of Appellant’s other arguments.
Accordingly, based on the record before us, we do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1, and, for the
same reasons, the rejections of dependent claims 2, 4–6, 20, and 21, which
depend from claim 1. Independents claim 7 and 13 include a substantially
similar limitation. Claims Appendix 3, 4. We, therefore, do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of independent claims 7 and 13,
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and, for the same reasons, the rejections of dependent claims 8, 10–14, and
16–18, which depend from claim 7 or 13.
CONCLUSION
We affirm the Examiner’s patent eligibility rejections of claims 1, 2,
4–8, 10–14, and 16–21 under 35 U.S.C. § 101.
We reverse the Examiner’s rejections of claims 1, 2, 4–8, 10–14, and
16–18, 20, and 21 under 35 U.S.C. § 103(a).
DECISION SUMMARY
In summary, because we affirm at least one rejection of each pending
claim, we affirm the Examiner’s rejection of claims 1, 2, 4–8, 10–14, and
16–21:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 4–8,
10–14,
16–21
101 Eligibility 1, 2, 4–8,
10–14,
16–21

1, 2, 4,
6–8, 10, 12–
14, 16, 18
103(a) Essafi, Encina, Shamir,
Glass
1, 2, 4,
6–8, 10,
12–14, 16,
18
5, 11, and
17
103(a) Essafi, Encina, Shamir,
Glass, Ikeda
5, 11, and
17
20 103(a) Essafi, Encina, Shamir,
Glass, Jones
20
21 103(a) Essafi, Encina, Shamir,
Glass, Aumann
21
Overall
Outcome
1, 2, 4–8,
10–14,
16–21

Appeal 2019-000930
Application 14/094,682

19
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED