Ex Parte Adar et al

Patent Trial and Appeal Board

Jun 26, 2013

10184414 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EYTAN ADAR, RAJAN MATHEW LUKOSE, CAESAR
SENGUPTA, and JOSHUA ROGERS TYLER
____________________

Appeal 2011-001437
Application 10/184,414
Technology Center 2400
____________________

Before THU A. DANG, JAMES R. HUGHES,
and GREGORY J. GONSALVES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 17-30, 32-34, and 37–39 (App. Br. 4). Claims 1-16, 31, 35and 36
have been canceled (id.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention is directed to a system and method for
anonymously sharing information and scoring information pointers within a
harvesting community; wherein, each client computer generates a client
profile and scores a pointer message containing an information resource
pointer relative to a client profile (Abstract; Spec. 1:18-21).

B. ILLUSTRATIVE CLAIM
Claim 17 is exemplary:
17. A method for software execution for information discovery, comprising:

generating a client profile on a client computer;

storing the client profile on the client computer;

receiving a pointer message containing an information resource pointer that
refers to an address that is accessible by a receiving client computer over a
network;

scoring the pointer message with respect to the client profile to generate a
score; and

displaying the pointer message and the score on the client computer.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bannister US 6,263,455 B1 July 17, 2001
Adjaoute US Pat. Pub. 2003/0009495 A1 Jan. 9, 2003
Bates US Pat. Pub. 2003/0020756 A1 Jan. 30, 2003
Melhado US Pat. Pub. 2003/0037045 A1 Feb. 20, 2003
Sobeski US 6,633,315 B1 Oct. 14, 2003
Subramonian US 6,701,362 B1 March 2, 2004
Thomas US 6,983,320 B1 Jan. 3, 2006
Barrett US 7,032,023 B1 April 18, 2006
Green US 7, 299, 219 B2 Nov. 20, 2007

Claim 32 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 17, 18, 21, 30, 32, and 37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Subramonian in view of Thomas.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Subramonian in view of Thomas and Sobeski.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Subramonian in view of Thomas and Adjaoute.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Subramonian in view of Thomas and Green.
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Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Subramonian in view of Thomas and Bates.
Claims 24, 25, and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Barrett in view of Subramonian and Bates.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Subramonian in view of Barrett, Thomas, and Melhado.
Claims 38 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Subramonian in view of Thomas and Barrett.
Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Subramonian in view of Thomas, Barrett, Melhado, and
Adjaoute.
Claims 26 and 34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bannister in view of Barrett and Subramonian.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that:
1. Claim 32 is indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
In particular, the issue turns upon whether the Specification provides the
corresponding structure, material, or acts for both the “means for generating
a client profile on a client computer” and the “means for scoring the pointer
message with respect to the profile to generate a score” (claim 32, emphasis
added)
2. the combination of Subramonian and Thomas teaches or would
have suggested “generating a client profile on a client computer,” “receiving
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a pointer message containing an information resource pointer that refers to
an address that is accessible by a receiving client computer over a network,”
and “scoring the pointer message with respect to the client profile to
generate a score” (claim 17, emphasis added); and
3. the combination of Barrett, Subramonian, and Bates teaches or
would have suggested “receiving a pointer message at a client computer over
a network, containing an information resource pointer that refers to an
address that is accessible through a link by a receiving client computer over
a network” (claim 24, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, a pointer refers to an address which
uniquely designates an information resource which can be accessed by one
or more client computers over the network; wherein, the pointer may include
a path name, hyperlink, URL, Outlook Entity (messages/calendar/postings
items), remote procedure call (e.g. SOAP call), and database request (Spec.
16:14-19). In the alternative, a pointer can refer to data, files, documents,
web pages, or any other information resources (Spec. 16:19-20).
2. A pointer message contains the current pointer (Spec. 17:17-
20).
3. The observer module 208 begins a process of generating and
maintaining the client profile 210 by monitoring and collecting internal and
external data relating the computer’s information and operation (Spec. 8:17-
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21). The selected data is captured, processed, and added to the client profile
210 which is automatically analyzed and formatted for storage in the client
profile 210 (Spec. 9:4-6).
4. The system module 234 generates an aggregate score by
capturing, calculating, and adding the sub-scores together including the
pointer message content sub-score, pointer message popularity sub-score,
pointer message time relevance sub-score, a pointer message external
ranking sub-score (Figs. 2 and 5; Spec. 19:5-20-23). The content sub-score
is calculated by comparing the information resource of the received pointer
to the client profile 210 using the linguistic and statistical techniques (Spec.
19:7-10). The popularity sub-score is the total a number of times, within a
predetermined time period, the received pointer is transmitted over the
computer network 206 (Spec. 19:15-17). The time relevance score is the
decremented value of a predetermined maximum value which is
decremented by a predetermined percentage as time elapses after the time of
the first transmission (Spec. 19:22-24). The external ranking score is
retrieved from one or more “ranking/search engines,” such as Google’s
“PageRank” engine (Spec. 20:5-7).
Subramonian
5. Subramonian discloses a system and method for creating
personalized user profiles on a client computer based on user activities
associated with the client computer, where the client computer determines
the user’s level of interest regarding a concept by collecting user information
and specifying a value quantifying the level of interest (col. 3, ll. 39-41 and
56-59). Personalized user profiles are generated based on the concept
information and the user’s level of interest (col. 3, ll. 59-61).
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6. To collect user information, a browser program within the
system monitors user interactions including web browsing activities, search
activities, electronic commerce transaction activities, electronic mail related
activities, and financial activities (col. 3, l. 62-col. 4, l. 2). Collected content
information may also include the contents of web pages accessed by the user
using the browser along with the corresponding Uniform Resource Locator
(URL) information for the web pages accessed by the user (col. 4, ll. 4-7).
7. A User Profiling Module (UPM) 58 processes the content and
context information to determine weights to be assigned to the concepts and
calculates a weight value and associates the weight value with the concept
(col. 9, ll. 54-67).
Thomas
8. Thomas discloses a system, method, and computer program
product for analyzing e-commerce competition that collects pages that are
commonly transmitted over a computer network and other external data,
processes the collected pages and content, and scores the pages based on all
the information collected to determine statistics; wherein, the system
includes a plurality of Internet clients that provide a graphical user interface
(GUI) for users to enter search criteria and view pages having scoring
information, entity statistics, and page contents (Figs. 3, 5, and 6; Abstract;
col. 3, ll. 30-34).
Sobeski
9. Sobeski discloses a user favorites list that includes URLs for
certain preferred Web sites the user accesses frequently (col. 1, ll. 31-35).

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Barrett
10. Barrett discloses a system that monitors the number and
frequency of electronic data communications received from a sender or
group of senders during a period of time; wherein, when the count rises
above a threshold number of electronic communications, the system alters
the user’s sending capabilities (Abstract).

IV. ANALYSIS
35 U.S.C. § 112, second paragraph
Claim 32
The Examiner rejects claim 32 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to set forth adequate disclosure for
the means-plus-function claim limitation in that Appellants have failed to set
for the “corresponding structure for a computer-implemented function must
include the algorithm as well as the general purpose computer” (Suppl. Ans.
24). In particular, the Examiner notes that the “[S]pecification and drawings
do not disclose sufficient corresponding structure, material or acts for
performing the claimed function” and “[t]he Specification is silent as to the
algorithm for generating the client profile” (id.). The Examiner notes that
although the Specification “describe[s] collecting data,” it “do[es] not
describe what type of data is collected or how it is analyzed to generate a
profile” (id.). The Examiner also finds that there is “no algorithm showing
what part of the profile helps to generate a score or how the score is
generated” (Suppl. Ans. 24-25).
Appellants contend that the “[S]pecification explicitly states this
means [for generating a client profile on a client computer] is an observer
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module 208 shown in [F]igure 2 …[on] p. 8, line 17 - p. 9, line 12” (Reply
Br. 2).
After reviewing the record on appeal, we agree with Appellants.
Although the Examiner finds that “the specification and drawings do not
disclose sufficient corresponding structure, material or acts for performing
the claimed function” (Supp. Ans. 24), we disagree with the finding that the
claim is indefinite since we find that the Specification does provide support
for both the “means for generating a client profile on a client computer” and
the “means for scoring the pointer message with respect to the profile to
generate a score” (claim 32). In particular, the Specification discloses that
the observer module monitors and collects internal and external data by
capturing, processing, and adding this data to a file that is analyzed and
formatted (FF 3). The Specification further discloses that system module
generates an aggregate score by capturing, calculating, and adding the sub-
scores together including the content sub-score, the popularity sub-score, the
time relevance sub-score, and the external ranking sub-score (FF 4).
Accordingly, we find that the Examiner erred in rejecting claim 32
under 35 U.S.C. § 112, second paragraph.
35 U.S.C. § 103
Claims 17, 21, 30, and 32
Appellants contend that “Subramonian uses web browsing activities to
generate a client profile” which “is very different than the elements in the
claims” (App. Br. 20). Appellants argue that “Subramonian does not teach
or suggest receiving a pointer message containing an information resource
pointer that refers to an address that is accessible by a receiving client
computer over a network” (id.). Appellants finally contend that
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“Subramonian uses the web browsing activities for an entirely different
purpose (i.e., building a client profile), [and] not for receiving and scoring”
(id.).
However, the Examiner finds that “Subramonian discloses a method
of building [a] user’s profile[] based upon collected user’s browser related
activities” (Ans. 25). The Examiner finds further that “Subramonian
discloses a client computer receives information including URLs/Links
information for the web pages those are accessible by the users;” “where,
‘webpage’ reads on ‘a pointer message’” and “‘hyperlinks/or URLs’ read on
‘information resource pointer’” (Ans. 24-25).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 17 does not define what a “pointer message” or “information
resource pointer” means, includes, or represents other than the pointer
message contains an information resource pointer that refers to a network
accessible address. The Specification discloses that a pointer can refer to
data (FF 1) and that a pointer message contains the current pointer (FF2).
Thus, we give “receiving a pointer message containing an information
resource pointer that refers to an address that is accessible by a receiving
client computer over a network” its broadest reasonable interpretation as
receiving data that refers to a network accessible address, as consistent with
the Specification and claim 17.
Subramonian discloses creating personalized user profiles on a client
computer based on user activities associated with the client computer;
wherein, the client computer determines the user’s level of interest regarding
a concept by collecting user activity information and generates a weighted
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value associated with the concept based upon the user’s level of interest (FF
5 and 7). The collected information may include electronic mail related
activities and webpage browsing history including the contents of the
webpages along with the corresponding URL (web-address) (FF 6). We find
that the method of creating a user profile comprises generating a client
profile on a client computer. We find further that the monitoring of the
electronic mail related activities comprises receiving data that refers to a
network accessible address. That is, we find that Subramonian discloses
“generating a client profile on a client computer” and “receiving a pointer
message containing an information resource pointer that refers to an address
that is accessible by a receiving client computer over a network” (claim 17).
Thomas discloses analyzing e-commerce competition that collects
web-pages and scores the pages based on all the information collected to
determine statistics (FF 8). We find the web-pages to be the data (pointer
messages) which are scored. That is, we find that Thomas discloses
“scoring the pointer message with respect to the client profile to generate a
score” (claim 17).
In view of our claim construction above, we find that the combination
of Subramonian and Thomas at least suggests all the claim limitations of
claim 17.
The Supreme Court has stated that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). Thus, we find no error in the Examiner’s conclusion
that combining Subramonian’s system (that generates a user profile) that
receives data referring to a network accessible address (pointer message)
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with the scoring function, as disclosed in Thomas, would at least have
suggested a system that generates a client profile and scores a received
pointer message (Ans.5; FF5, 6, and 8).
Accordingly, we find no error in the Examiner’s rejection of claim 17
under 35 U.S.C. § 103(a) over Subramonian in view of Thomas. Further,
independent claims 30 and 32 having similar claim language and claim 21
(depending from claim 17) which have not been argued separately, fall with
claim 17.
Claim 18
Appellants contend that “Subramonian never teaches or even suggests
receiving and scoring hyperlinks and URLs” (App. Br. 20). However, such
contention is not commensurate in scope with the specific language of claim
18, since claim 18 does not recite such “receiving and scoring hyperlinks
and URLs” as Appellants argue. Instead, claim 18 merely requires “wherein
the information resource pointer includes hyperlinks and Universal Resource
Locators (URLs)” (claim 18).
As noted supra, Subramonian discloses monitoring and collecting
information including electronic mail related activities and webpage
browsing history including the contents of the webpages along with the
corresponding URL (web-address) (FF 5 and 6). That is, Subramonian’s
method comprises receiving data relating to a hyperlink or a URL.
Accordingly, we find no error in the Examiner’s rejection of claim 18
under 35 U.S.C. § 103(a) over Subramonian in view of Thomas.
Claim 37
Appellants contend that “Thomas is not related to scoring a pointer
message that refers to an address with respect to a profile and yielding a
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content score” (App. Br. 21). However, the Examiner finds that “Thomas
discloses method of scoring pages based on collected information” (Ans.
27). The Examiner finds further that “Subramonian teaches method of
calculating the received content information and its context content (e.g.
hyperlinks/ or URLs/ or webpages) against previous information stored in
the user profile” (Ans. 28).
As noted supra, Subramonian discloses creating personalized user
profiles on a client computer based on user activities associated with the
client computer (FF 5). We find that a user profile comprises a client
profile.
In addition, Thomas discloses a system that collects pages and scores
the web-pages based on all the information collected (FF 8). We find that
the scoring of the web pages comprises scoring of pointer messages.
Accordingly, we conclude that the combination of Subramonian and Thomas
at least suggests providing “scoring the pointer message with respect to the
profile, yielding a content score” (claim 37). Accordingly, we find no error
in the Examiner’s rejection of claim 37 under 35 U.S.C. § 103(a) over
Subramonian in view of Thomas.
Claim 19
Appellants contend that “Sobeski does not [disclose] what pointers are
frequently transmitted over a network;” rather, “Sobeski tracks favorite
websites of users” (App. Br. 21). However, the Examiner finds that
“Sobeski discloses generating favorite websites list including users access
frequently URLs” (Ans. 10). The Examiner notes that “[b]ased upon the
[Appellants]’ admissions, the claimed term ‘pointer’ is interpreted as same
as ‘hyperlinks or URLs’” (Ans. 27). Thus, “teaching from Subramonian …
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reads on claimed subject matter of ‘pointers frequently transmitted over a
network’” (id.).
As noted supra, Subramonian discloses monitoring and collecting
information including electronic mail related activities and webpage
browsing history including the contents of the webpages along with the
corresponding URL (web-address) (FF 5 and 6). We find that webpages and
the electronic mail comprise pointer messages and the collection of this
information comprises a “pointer list” (claim 19).
In addition, Sobeski discloses a user favorites list that includes
Universal Resource Locators (URLs) for certain preferred Web sites the user
accesses frequently (FF 9). We find that the list of favorite webpages
comprises a “list of pointers frequently transmitted over a network” (claim
19).
We conclude that the combination of Subramonian, Thomas, and
Sobeski at least suggests a method including “generating a ‘what’s hot’
pointer list of pointers frequently transmitted over a network” (claim 19).
Accordingly, we find no error in the Examiner’s rejection of claim 19 under
35 U.S.C. § 103(a) over Subramonian in view of Thomas and Sobeski.
Claims 24, 25, and 33
Appellants contend that “[t]he combination of Barrett and
Subramonian would teach clients communicating with hosts through links”
and would “never suggests transmitting messages that refer to an address
accessible through a link and then scoring the message,” and that “Bates
fails to cure these deficiencies” (App. Br. 23). However, the Examiner finds
that although “Barrett does not explicitly disclose referring to an address that
is accessible through a link by a receiving client computer over a network,”
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“Subramonian discloses a client computer receives information including
URL/link information for the web pages accessed by the user and/or
information related to links on web pages accessed by the users” (Ans.13).
As noted supra, Subramonian discloses monitoring and collecting
information including electronic mail related activities and webpage
browsing history including the contents of the webpages along with the
corresponding URL (web-address) (FF 5 and 6). We find that a URL
comprises a link through which the pointer is accessible. That is, we find
that Subramonian’s method comprises “receiving a pointer message at a
client computer over a network, containing an information resource pointer
that refers to an address that is accessible through a link by a receiving client
computer over a network” (claim 24).
Accordingly, we find no error in the Examiner’s rejection of claim 24
under 35 U.S.C. § 103(a) over Barrett in view of Subramonian and Bates.
Further, independent claim 33 having similar claim language and claim 25
(depending from claim 24) which have not been argued separately, fall with
claim 24.
Claims 38 and 39
Appellants contend that “Barrett never totals a number of times an
information resource pointer is received” and does “not [disclose] sending
such pointers” (App. Br. 26, emphasis omitted). However, the Examiner
finds that “Barrett teaches method of counting the numbers of electronic
communications communicated by sender based on the information
identifying received from the sender” (Ans. 30).
Claim 38 does not define what “popularity score” other than it is the
total number of times the information resource pointer is received by a
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receiving client computer, over a predetermined time period. We note that
the terms “popularity” and “information resource” do not change the
functionality of or provide any additional function to the “totaling” step of
claim 38, i.e., do not limit how the score is generated. That is, the terms
“popularity” and “information resource” are merely descriptions of the type
of data that is being totaled or scored.
Non-functional descriptive material will not distinguish the invention
from the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004) and In re Gulack, 703 F.2d 1381, 1385 (Fed. Circ.
1983). Thus, we give “totaling a number of times that the information
resource pointer is received by a receiving client computer, over a
predetermined time period, yielding a popularity score” its broadest
reasonable interpretation as deriving a score by summing the number of
times data is received over a predetermined time period, as consistent with
the Specification and claim 38.
As noted supra, Subramonian discloses monitoring and receiving data
(pointer messages having information resource pointers) (FF 5 and 6).
Further, Thomas discloses analyzing e-commerce competition that collects
web-pages and scores the pages based on all the information collected (FF
8). We find that the method of Thomas comprises deriving a score of the
web-pages (pointer messages).
In addition, Barrett discloses monitoring the number and frequency of
electronic data communications received from a sender or group of senders
during a period of time, checking for when the count rises above a threshold
number of electronic communications (FF 10). We find Barrett discloses
counting the number of times the electronic data (pointer message) is
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received represents deriving a count by summing the number of times the
data is received within a predetermined threshold. That is, Barrett’s method
comprises “totaling a number of times that the information resource pointer
is received by a receiving client computer, over a predetermined time period,
yielding a popularity score” (claim 38).
Thus, we find that the combination of Subramonian, Thomas, and
Barrett at least suggests all the claim limitations of claim 38.
Accordingly, we find no error in the Examiner’s rejection of claim 38
under 35 U.S.C. § 103(a) over Subramonian in view of Thomas and Barrett.
Further, claim 39(depending from claim 17) which has not been argued
separately, falls with claim 38.
Claims 20, 22, 23, 26-29, and 34
Appellants argue that claims 20, 22, 23, 26-29, and 34 are patentable
over the cited prior art for the same reasons asserted with respect to claim 17
(App. Br. 21, 22, 26, and 27). As noted supra, however, we find that the
combined teachings of Subramonian and Thomas at least suggest all the
features of claim 17.
Therefore, we also affirm the Examiner’s rejection of claim 20 under
35 U.S.C. § 103 over Subramonian in view of Thomas and Adjaoute, of
claim 22 under 35 U.S.C. § 103 over Subramonian in view of Thomas and
Green, of claim 23 under 35 U.S.C. § 103 over Subramonian in view of
Thomas and Bates, of claim 27 under 35 U.S.C. § 103 over Subramonian in
view of Barrett, Thomas, and Melhado, of claims 28 and 29 under 35 U.S.C.
§ 103 over Subramonian in view of Thomas, Barrett, Melhado, and
Adjaoute, and of claims 26 and 34 under 35 U.S.C. § 103 over Bannister in
view of Barrett and Subramonian.
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V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 17-30, 32-34, and 37-39 under
35 U.S.C. § 103(a) is affirmed while the Examiner’s rejection of claim 32
under 35 U.S.C. § 112, second paragraph is reversed.
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).

AFFIRMED

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