Ex Parte 7778993 et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201595002343 (P.T.A.B. Feb. 18, 2015) Copy Citation 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. 95/002,343 09/14/2012 7778993 21SRL-993reex 2725 74642 7590 02/19/2015 CLIFFORD H. KRAFT 320 ROBIN HILL DR. NAPERVILLE, IL 60540 EXAMINER STEELMAN, MARY J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/19/2015 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 ____________ EBAY INC. AND GSI COMMERCE SOLUTIONS, INC. Requester and Respondent v. 21 SRL Patent Owner and Appellant ____________________ Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 Technology Center 3900 ____________ Before MARC S. HOFF, DENISE M. POTHIER, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 2 STATEMENT OF THE CASE This proceeding arose from a request by eBay Inc. and GSI Commerce Solutions, Inc. (“Requester”) for an inter partes reexamination of United States Patent No. 7,778,993 B2, entitled “DYNAMIC TAXONOMY PROCESS FOR BROWSING AND RETRIEVING INFORMATION IN LARGE HETEROGENEOUS DATA BASES” (issued to Giovanni Sacco on August 17, 2010 from Application No. 12/023,719, filed January 31, 2008 (“the ‘993 Patent”)). We have jurisdiction under 35 U.S.C. § 315 (2002). The ‘993 Patent describes the invention as follows: A process is disclosed for retrieving information in large heterogeneous data bases, wherein information retrieval through visual querying/browsing is supported by dynamic taxonomies; the process providing the steps of: initially showing (Fl) a complete taxonomy for the retrieval; refining (F2) the retrieval through a selection of subsets of interest, where the refining is performed by selecting concepts in the taxonomy and combining them through boolean operations; showing (F3) a reduced taxonomy for the selected set; and further refining (F4) the retrieval through an iterative execution of the refining and showing steps. Abstract. Patent Owner, 21 SRL (“Owner”) appeals under 35 U.S.C. §§ 134(b) and 315(a) from the Examiner’s decision to reject claims 1, 2, 9, 12, 14, 15, and 21 over the prior art. See PO App. Br.2.1 1 Throughout this opinion, we refer to (1) the Request for Inter Partes Reexamination filed September 14, 2012 (“Request”); (2) the Action Closing Prosecution filed June 21, 2013 (“ACP”); (3) the Patent Owner Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 3 We review the appealed rejections for error based upon the issues identified by Owner, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). We affirm. THE INDEPENDENT CLAIMS Independent claims 1 and 21 are illustrative of the claimed invention: 1. A method for retrieving information from databases, said databases being structured or unstructured, said databases being homogeneous or heterogeneous, wherein retrieval is performed through visual queries on dynamic taxonomies, said dynamic taxonomies being an organization of concepts that ranges from a most general concept to a most specific concept, said concepts and their generalization or specialization relationships may be being called an intension, items in said databases being classified under one or more concepts, said items and their classification being called an extension, said method comprising: using a computer for providing a taxonomy for said retrieval; using the computer for operating on a selected subset of interest of said taxonomy in order to refine said retrieval, said selected subset of interest being specified by using the computer for combining selected taxonomy concepts through boolean operations or being specified through querying methods, said querying methods retrieving classified items according to different selection criteria; providing a reduced taxonomy for said selected subset of interest, said reduced taxonomy being derived from said taxonomy by using the computer Appeal Brief filed February 5, 2014 (“PO App. Br.”); and, (4) the Examiner’s Answer mailed May 21, 2014 (“Answer”). Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 4 for eliminating from the extension of said taxonomy all items not in said selected subset of interest and by pruning concepts under which no item in said selected subset of interest is classified; and using the computer for iteratively repeating said steps of operating on a selected subset of interest and of providing a reduced taxonomy to further refine said retrieval, wherein; said step of pruning concepts includes eliminating from the taxonomy all the concepts under which no item in the selected subset of interest is classified, or preventing said concepts from being selected in order to specify interest sets; said step of providing a reduced taxonomy either reports only the concepts belonging to the reduced taxonomy or, for each such concept also reports how many items in the interest set are classified under the concept; said intension is organized as a hierarchy of concepts or as a directed acyclic graph of concepts, thereby allowing a concept to have multiple fathers; items in said classification are classified programmatically or automatically; in said extension, there exists at least one item such that said item is classified under at least two different concepts such that each of said two concepts is neither an ancestor nor a descendant of the other concept in the intension; and said method to reconstruct all the relationships between any two concepts based on the classification by using the computer, a relationship between any two concepts existing if at least one item is classified (1) under a first concept or any descendants of the first concept, and (2) under a second concept, or any descendants of the second concept. 21.A method for retrieving items from electronic catalogs, for applications such as electronic commerce or electronic auctions, wherein retrieval is performed through visual queries on dynamic taxonomies, said dynamic taxonomies being an organization of concepts that ranges from a most general concept to a most specific concept, said concepts and their Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 5 generalization or specialization relationships being called an intension, said concepts also comprising features such as price, items in said electronic catalogs being able to be classified under one or more concepts, said items and their classification be called an extension, said method comprising: using a computer for providing a taxonomy for said retrieval; using the computer for operating on a selected subset of interest of said taxonomy in order to refine said retrieval, said selected subset of interest being specified by using the computer for combining selected taxonomy concepts through boolean operations, or being specified through querying methods, said querying methods retrieving classified items according to different selection criteria; providing a reduced taxonomy for said selected subset of interest, said reduced taxonomy being derived from said taxonomy by using the computer for eliminating from the extension of said taxonomy all items not in said selected subset of interest and pruning concepts under which no item in said selected subset of interest is classified; and using the computer for iteratively repeating said steps of operating on a selected subset of interest and providing a reduced taxonomy to further refine said retrieval, wherein: said hierarchical organization of concepts for said electronic catalogs comprises a set of features, each of said features being a descendant concept of the root concept of said organization, each of said features having as descendants in the taxonomy a set of concepts, each concept in said set of concepts representing either a single value or a set of values for said feature; said items in said electronic catalogs are classified, for each said feature, under zero or more concepts representing either a single value or set of values for that feature; said step of providing a reduced taxonomy either reports only the concepts belonging to the reduced taxonomy or, for each such concept also reports how many items in the interest set are classified under the concept; Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 6 in said extension, there exists at least one item such that said item is classified under at least two different concepts such that each of said two concepts is neither an ancestor nor a descendant of the other concept in the intension; and said step of pruning of concepts includes eliminating from the taxonomy the concepts under which no item in the selected subset of interest is classified, or preventing such concepts from being selected in order to specify interest sets. THE REJECTIONS Lewak Claims 1, 2, 12, 14, 15, and 21 are rejected under 35 U.S.C. §102(a) or alternately under 35 U.S.C. §102(b) as anticipated by Lewak (United States Patent No. 5,544,360, issued August 6, 1996). 1. Claim 9 is rejected under 35 U.S.C. §103(a) as unpatentable over Lewak and Barrett (United States Patent No. 5,727,129, issued March 10, 1998). 2. Claims 1, 2, 12, 14, 15, and 21 are rejected under 35 U.S.C. §103(a) as unpatentable over Lewak. Danish and Barrett 3. Claims 1, 2, 14, 15, and 21 are rejected under 35 U.S.C. §102(a) or alternately under 35 U.S.C. §102(b) as anticipated by Danish (United States Patent No. 5,715,444, issued February 3, 1998). 4. Claims 9 and 12 are rejected under 35 U.S.C. §103(a) as unpatentable over Danish and Barrett. 5. Claims 1, 2, 14, 15, and 21 are rejected under 35 U.S.C. §103(a) as unpatentable over Danish. Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 7 Hearst, Maki, and Barrett 6. Claims 1, 2, 12, 14, 15, and 21 are rejected under 35 U.S.C. §103(a) as unpatentable over M. A. Hearst et al, Cat-a-Cone: An Interactive Interface for Specifying Searches and Viewing Retrieval Results using a Large Category Hierarchy, Annual International ACM-SIGIR Conference on Research and Development Hierarchy in Information Retrieval, ACM, 1997, pp. 246-255 (“Hearst”) and Maki, (United States Patent No. 5,201,047, issued April 6, 1993). 7. Claim 9 is rejected under 35 U.S.C. §103(a) as unpatentable over Hearst, Maki and Barrett. Claims 1, 2, 12, 14, 15, and 21 With respect to the rejection of claims 1, 2, 12, 14, 15, and 21, under both 35 U.S.C. §102 and §103 over Lewak, Owner only argues features set forth within claim 1 and does not provide substantive arguments for separate patentability for any other claim within this group. PO App. Br. 9–13. Accordingly, we select claim 1 as representative and will decide the appeal of these claims on the basis of the arguments presented for claim 1. See 37 C.F.R. § 41.67(c)(1)(vii). In response to the rejections over Lewak, Owner argues that Lewak fails to disclose a “dynamic taxonomy,” noting that the preamble of claim 1 recites "said dynamic taxonomies being an organization of concepts that ranges from a most general concept to a most specific concept, ... said Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 8 concepts and their generalization or specialization relationships may be being called an intension." Consequently, Owner believes that the alleged lack of disclosure of a “dynamic taxonomy” is sufficient for “defeating the rejection under 35 U.S.C. §102.” PO App. Br. 10. Owner further argues that Lewak teaches a category description table “containing a plurality of category descriptions, each category description comprising a descriptive name, the category descriptions having no predefined hierarchical relationship with such list or each other[] (Lewak, quoting from claim 1, 16:63-6).” PO App. Br. 10. Owner believes that this recitation in the claims of Lewak constitutes a teaching away from the use of hierarchical relationships, which Owner believes are a prerequisite for the recited taxonomy. Id. at 10-11. Owner also argues that the physical directories and hybrid folders in Lewak are not a dynamic taxonomy or concepts, in response to Requesters’ proposed construction which relies on Figure 2 of Lewak, and column 2, lines 30-45 to show a dynamic taxonomy. As further evidence that Figure 2 does not depict a dynamic taxonomy, Owner argues that the structure depicted in Figure 2 of Lewak is not visible to the user, contrary to the claim 1 requirement that “retrieval is performed by visual queries on dynamic taxonomies.” Id. at 12-13. The Examiner finds that Except for appearances of the term "dynamic taxonomy" in the Summary of the Invention, the specification mentions "taxonomy" without the qualifier "dynamic." [T]he broadest reasonable construction of "taxonomies" throughout the claims could be any type of taxonomy because the claim language does not limit them to dynamic taxonomies. A narrowing of the claims [reading "taxonomy" Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 9 to include the qualifier "dynamic"] without amendment allows the Patent Owner to amend his claims without the loss of intervening rights. In Marine Polymer, the Federal Circuit, sitting en banc, determined that without formal amendment, the claims cannot be considered narrowed for the purposes of 35U.S.C. § 307(b). Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1364 (Fed. Cir. 2012). Ans. 3. The Examiner also finds that Lewak does not teach away from dynamic taxonomies. The Patent Owner selectively cites portions of Lewak teaching possible uses of linked categories for enforcing usage of certain categories for user classification of files during a file save operation. The Patent Owner speculates that a user would only use linked categories for classification, not retrieval, but there is no support for that position - indeed, there would be no point to using linked categories to classify files if a user could never use that classification to retrieve a file. Further, even if linked categories did only have this purpose (the Requester does not concede to this argument), it does not follow that Lewak teaches away from dynamic taxonomies at least because Lewak describes other hierarchicalcategories at least at Lewak, 9:56- 10:9, which illustrates multi-level categorization. Id. at 4. Finally, the Examiner responds to Owner’s argument that physical directories and hybrid folders are not “concepts” in the sense of the ‘993 patent by finding that the broadest reasonable interpretation of “concept” encompasses Lewak’s teaching of category descriptions and multi-level categorization of concepts. Id. at 7. We find that dynamic taxonomies are, in accordance with the definition contained within the preamble of claim 1, merely Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 10 organizations of concepts which include both general and specific concepts. Further, we find that, although Lewak may claim an implementation that excludes predefined hierarchical relationships, Lewak’s disclosure contains examples of hierarchical relationships, as noted by the Examiner in the above discussion. It is well settled that "[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternative because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . ." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). As for whether or not the physical directories and hybrid folders of Lewak constitute “concepts” in the ‘993 Patent sense, we agree with the Examiner. We find the term “concept” to be quite broadly recited and further find that any ordinary and reasonable definition of that term will encompass the directories and folders of Lewak. We determine that Lewak shows or suggests the invention set forth within claim 1 within the bounds of 35 U.S.C. § 103, and we are convinced that the Examiner did not err in rejecting that claim. We adopt the Examiner’s findings and conclusions concerning this obviousness rejection. Ans. 9–11 (citing the ACP and referring to ACP 30–39 (discussing Lewak)). In the absence of any substantive arguments for separate patentability with respect to claims 1, 2, 12, 14, 15, and 21 we find no error in the Examiner’s position. With respect to claim 9 and the obviousness rejection based Lewak and Barrett, Owner argues that Lewak and Barrett fail to show or suggest the Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 11 claimed invention. Owner argues that Barrett fails to disclose “a taxonomy, much less a dynamic taxonomy” and thus cannot be said to show or suggest “accounting for the popularity of items by representing a measure of popularity through a branch in the taxonomy.” Owner also argues that the concept of “popularity” set forth in Barrett only pertains to an individual’s website visit history, thereby considering a user in isolation from other users, as opposed to the “popularity” of claim 9, which may rely on other users. PO App. Br. 14-15. The Examiner finds that Owner’s arguments are based upon an unduly narrow interpretation of “taxonomy” and also notes that there is no language within claim 9 that requires multiple users. Barrett teaches tracking user visits and under a broad, but reasonable interpretation of “popularity” the Examiner finds that Barrett discloses measuring popularity. Ans. 8. We concur with the Examiner and find that the Examiner did not err in rejecting claim 9 under 35 U.S.C. §103 as unpatentable over the combination of Lewak and Barrett. Also, as discussed above Lewak teaches the recited dynamic taxonomy and thus when combining with the teachings of Barrett, the combination predictably yields the disputed limitations. We have affirmed the rejection of claims 1, 2, 12, 14, 15, and 21 under 35 U.S.C. §103(a), as unpatentable over Lewak and claim 9 under 35 U.S.C. §103(a) as unpatentable over Lewak and Barrett. Consequently, we find it unnecessary to reach a decision regarding the cumulative rejections of the claims: under 35 U.S.C. §102 over Lewak or Danish; under 35 U.S.C. §103(a) as unpatentable over Hearst and Maki; under 35 U.S.C. §103(a) as unpatentable over Danish and/or Barrett; and, under 35 U.S.C. §103(a) as Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 12 unpatentable over Hearst, Maki, and Barrett. See 37 C.F.R. § 41.50(a)(1) ("The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim . . . ."). DECISION The Examiner’s decision adverse to the patentability of claims 1, 2, 12, 14, 15, and 21 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2014-008247 Reexamination Control 95/002,343 Patent US 7,778,993 B2 13 Patent Owner: CLIFFORD H. KRAFT 320 ROBIN HllL DR. NAPERVILLE, IL 60540 Third Party Requester: SCHWEGMAN LUNDBERG & WOESSNER, REEXAMS P.O. 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