Ex Parte Allen et al

Patent Trials and Appeals Board

Jun 25, 2019

14588563 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/588,563 01/02/2015 Carville 0. Allen
50170 7590 06/25/2019
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
1701 N. COLLINS BL VD.
SUITE 2100
RICHARDSON, TX 75080
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
A US920 l 40457US 1 6057
EXAMINER
SHAH, V AISHALI
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
06/25/2019 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
Exparte CORVILLE 0. ALLEN
and LAURA J. RODRIGUEZ
Appeal2018-004722
Application 14/588,563 1
Technology Center 2100
Before LARRY J. HUME, JASON J. CHUNG, and
SCOTT B. HOWARD, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4-12, and 14-20.2 We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
INVENTION
The invention relates to mechanisms for customizing the output of a
question and answer system based on the personality traits of a user
1 According to Appellants, International Business Machines Corporation is
the real party in interest. App. Br. 2.
2 Claims 3 and 13 are canceled. Final Act. 2.
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Application 14/588,563
requesting an answer to an input question. Spec. ,i 1. Claim 1 is illustrative
of the invention and is reproduced below:
1. A method, in a data processing system
implementing a Question and Answer (QA) system, for
performing a personalized context based search of a corpus of
information, comprising:
receiving, by the QA system via at least one data
communication link coupled to the QA system, a request
communication from a first user via a source computing device
coupled to the at least one data communication link, the request
communication comprising an original question for processing
by the QA system to generate an answer result;
generating, by the QA system, an answer, and
supplemental information about the answer, to the original
question based on natural language processing of the original
question and a search of a corpus of electronic content based on
results of the natural language processing of the question,
wherein the supplemental information comprises a plurality of
different levels of detail of information about the answer;
identifying, by a user profile engine of the QA system,
one or more personality traits associated with the first user from
a first user profile stored in a user profile data storage, based on
an identification of the first user determined from the received
request communication;
selecting, by the QA system, a subset of the supplemental
information to present along with the answer to the first user
based on the one or more personality traits associated with the
first user, wherein the subset of supplemental information
comprises a level of detail of information about the answer that
corresponds to the one or more personality traits associated
with the first user; and
outputting, by the QA system, the answer and the subset
of supplemental information to the first user via the source
computing device.
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REJECTIONS AT ISSUE3
Claims 7, 9, 10, 17, and 19 stand rejected under a provisional non-
statutory obviousness-type double patenting rejection over various claims of
Application number 14/588,547 as identified in the rejection. Final Act.
10-17.
Claims 1, 2, 4-12, and 14-204 stand rejected under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter. Final Act. 17-24.
Claims 1, 2, 6, 11, 12, 16, and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Baldwin (US 2013/0151347
Al; published June 13, 2013), Vest (US 2007/0087313 Al; published Apr.
19, 2007), and Stiver (US 2011/0179024 Al; published July 21, 2011).
Final Act. 24-39.
Claims 4, 5, 7-10, 14, 15, and 17-19 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Baldwin, Vest, Stiver,
and Moxley (US 2011/0246910 A 1; published Oct. 6, 2011 ). Final Act. 39-
46.
3 The rejection of claims 1-20 under 35 U.S.C. § 112 (b) has been
withdrawn. Final Act. 5.
4 Although the heading of the rejection states that claims 1-20 are rejected,
we interpret this statement as a typographical error because claims 3 and 13
are canceled. Compare Final Act. 17 with Final Act. 2; App. Br. 53, 56, 57.
We, therefore, interpret the heading as claims 1, 2, 4-12, and 14-20 are
rejected under 35 U.S.C. § 101.
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Application 14/588,563
ANALYSIS
I. Claims 1, 8, 10, 11, 18, and 20 Rejected Under a Provisional Non-
Statutory Obviousness-Type Double Patenting Rejection
The Examiner provisionally rejects claims 7, 9, 10, 17, and 19 under
the judicially-created doctrine of non-statutory obviousness-type double
patenting over Claims 1, 8, 10, and 18 of Application number 14/588,547.
Final Act. 10-17.
Appellants argue because the rejection is a provisional rejection, it is
not a subject of the present Appeal and should be held in abeyance. App.
Br. 5. We disagree with Appellants.
Appellants do not proffer adequate substantive arguments. We,
therefore, summarily sustain the Examiner's rejection of claims 7, 9, 10, 17,
and 19. See 37 C.F.R. § 41.39(a)(l).
II. Claims 1, 2, 4-12, and 14-20 Rejected Under 35 U.S.C. § 101
A. Legal Principles
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. 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 what concept the claim is "directed to." See Alice, 573
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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. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "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 PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
(1) 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) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
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:
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(3) adds a specific limitation beyond the judicial exception that are 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 Memorandum.
B. The Examiner's Conclusions and Appellants' Arguments
The Examiner concludes the present claims are directed to collecting
and comparing known information. Final Act. 17; Ans. 3-4. The Examiner
also determines the present claims do not amount to significantly more than
an abstract idea because the Examiner finds the abstract idea is implemented
on generic components that are well-understood, routine, and conventional
previously known to the industry. Final Act. 18, 21, 24; Ans. 5.
Appellants argue the Examiner generalizes and oversimplifies the
claim, but ignores recitation of specific technology that can only be
performed in a computer environment and not in the abstract, such as in the
human mind. App. Br. 6-10; Reply Br. 2. Appellants argue the present
claims are directed to a particular technological solution by finding
previously successfully completed searches that are semantically and
syntactically similar and associated with users having similar personality
traits to an originating user submitting a search request or question. App.
Br. 10 (citing Spec. ,-J,-J 13, 14, 56, 99). Appellants argue the present claims
do not preempt any abstract idea. App. Br. 13; Reply Br. 2.
Appellants argue, similar to Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335-36 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games
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America Inc., 837 F.3d 1299, 1308-14 (Fed. Cir. 2016), and Finjan, Inc. v.
Blue Coat Systems, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018), the present
claims are directed to an improvement to computer-related technology by
improving the functionality of a cognitive computer system (i.e., a QA
system, to answer natural language questions posed to it by leveraging
knowledge of similar questions asked by other users having a similar
personality trait to that of the questioning user, and the answers the QA
system had previously provided to those questions). App. Br. 14-19; Reply
Br. 12-15. Appellants argue the present claims improves the functioning of
the computer itself because it provides functionality not previously present
in any computing system. App. Br. 19-20. Appellants argue the present
claims recite a specific machine that is configured to implement a QA
system having a user profile engine, the QA system being coupled to at least
on data communication link over which the QA system communicates with a
source computing device, the user profile engine interacting with a user
profiles data storage, etc. Id. at 20. Appellants argue the present claims are
directed to a useful application of computer based cognitive answering of
user questions via an improved QA system. Id.
Appellants contend the present claims are patent eligible because they
recite many operations being performed by a QA system, the user profile
engine of the QA system, interacting with a user profile data storage,
interacting with a source computing device over at least one data
communication link. Id. at 21. Appellants assert, similar to BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1353
(Fed. Cir. 2016), the present claims are directed to an ordered combination
of elements that sets forth a technology-based solution to a computer-based
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problem, namely improving the accuracy of computerized answering of
natural language questions posed to a QA system. Id. at 21-23; Reply
Br. 9-11. 5 We disagree with Appellants.
C. Discussion
1. Step 2A, Prong 1
We consider claim 1 (with emphases) reproduced below.
1. A method, in a data processing system
implementing a Question and Answer (QA) system, for
performing a personalized context based search of a corpus of
information, comprising:
receiving, by the QA system via at least one data
communication link coupled to the QA system, a request
communication from a first user via a source computing device
coupled to the at least one data communication link, the request
communication comprising an original question for processing
by the QA system to generate an answer result;
generating, by the QA system, an answer, and
supplemental information about the answer, to the original
question based on natural language processing of the original
question and a search of a corpus of electronic content based
on results of the natural language processing of the question,
wherein the supplemental information comprises a plurality of
different levels of detail of information about the answer;
identifying, by a user profile engine of the QA system,
one or more personality traits associated with the first user
from a first user profile stored in a user profile data storage,
based on an identification of the first user determined from the
received request communication;
selecting, by the QA system, a subset of the supplemental
information to present along with the answer to the first user
based on the one or more personality traits associated with the
5 Appellants' arguments pertaining to Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (App. Br. 10) are moot
because we do not rely on the Examiner's Classen conclusions to reach our
Decision.
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first user, wherein the subset of supplemental information
comprises a level of detail of information about the answer that
corresponds to the one or more personality traits associated
with the first user; and
outputting, by the QA system, the answer and the subset
of supplemental information to the first user via the source
computing device.
The present claims, 6 as a whole, recite a QA system answering a
user's posed questions and identifying and presenting a subset of
supplemental information that provides a level of detail of information about
the answer to the question that is specifically tailored to the personality trait
of the user submitting the question. Stated differently, these claims recite
managing personal behavior (including following rules or instructions).
According to the Memorandum, managing personal behavior (including
following rules or instructions) fall into the category of certain methods of
organizing human activity, which the Memorandum explains is one category
of abstract ideas. 7 See Memorandum.
We disagree with Appellants' argument that the Examiner generalizes
and oversimplifies the claim, and ignores recitation of specific technology
that can only be performed in a computer environment and not in the
abstract, such as in the human mind. App. Br. 6-10. We note the issue of
whether a claim falls into the category of certain methods of organizing
6 Claim 1, reproduced above with emphases, recites similar features as
independent claims 11 and 20. Appellants do not argue claims 2, 4-10, 12,
and 14-19 separately. App. Br. 5-28. We, therefore, group claims 1, 2, 4-
12, and 14-20 together and refer to claims 1, 2, 4-12, and 14-20 as the
"present claims."
7 We identify the specific limitations of the abstract idea in italics above.
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human activity need not consider whether or not limitations can be
performed in the human mind.
Because the present claims recite an abstract idea, we proceed to
prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, for reasons discussed below, we disagree
with Appellants' argument that the present claims recite a technological
improvement by finding previously successfully completed searches that are
semantically and syntactically similar and associated with users having
similar personality traits to an originating user submitting a search request or
question. App. Br. 10, 14-19 (citing Spec. ,i,i 13, 14, 56, 59); Reply Br.
12-15.
Unlike the claims of McRO, Enfish, and Finjan, the present claims are
not directed to an improvement to computer-related technology. Instead, the
present claims recite an abstract idea as discussed supra, in§ II.C. l. or at
best, improving an abstract idea-not a technological improvement. The
Specification indicates the additional elements (i.e., QA System, source
computing device, processor, data communication link, data storage) recited
in the present claims are merely tools used to implement the abstract idea.
Spec. ,i,i 3, 4, 6, 38, 51, 76; see also MPEP 2106.05([) ("Use of a computer
or other machinery in its ordinary capacity for economic or other tasks (e.g.,
to receive, store, or transmit data) or simply adding a general purpose
computer or computer components after the fact to an abstract idea ( e.g., a
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fundamental economic practice or mathematical equation) does not provide
significantly more.").
We disagree with Appellants' argument that the present claims
improves the functioning of the computer itself because it is a useful
application of a computer and provides functionality not previously present
in any computing system. App. Br. 20. This argument is unpersuasive
because the present claims recite an abstract idea as discussed supra, in
§ II.C.1.-not an improvement to computer functionality. Additionally, "a
claim for a new abstract idea is still an abstract idea." Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). "[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
( or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility .... "
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
( citations omitted).
We disagree with Appellants' argument that the present claims recite
a specific machine that is configured to implement a QA system having a
user profile engine, the QA system being coupled to at least on data
communication link over which the QA system communicates with a source
computing device, the user profile engine interacting with a user profiles
data storage, etc. App. Br. 20. The Specification indicates the additional
elements (i.e., QA System, source computing device, processor, data
communication link, data storage) recited in the present claims are merely
generic tools used to implement the abstract idea. Spec. ,-J,-J 3, 4, 6, 38, 51,
76; see also MPEP 2106.05(b) ("Merely adding a generic computer, generic
computer components, or a programmed computer to perform generic
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computer functions does not automatically overcome an eligibility
rejection.").
Additionally, we disagree with Appellants' argument that the present
claims are patent eligible because they do not preempt any abstract idea
(App. Br. 13); although preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims
covering a patent-ineligible concept, preemption concerns "are fully
addressed and made moot" by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Appellants do not make any other arguments pertaining to integration
of the abstract idea into a practical application as now set forth in our
guidance for Step 2A, Prong 2 analysis. Because the present claims recite an
abstract idea, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner's determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional previously known to the industry. Final Act. 18, 21, 24;
Ans. 5. As evidentiary support, we note the Specification supports the
determination that the additional elements (i.e., QA System, source
computing device, processor, data communication link, data storage) are
generic components. Spec. ,-J,-J 3, 4, 6, 38, 51, 76. Appellants' Specification
indicates these elements were well-understood, routine, and conventional
components previously known to the industry because it describes them at a
high level of generality and in a manner that indicates that they are
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sufficiently well-known. Id.
We disagree with Appellants' argument that the present claims are
patent eligible because they recite many operations being performed by a
QA system, the user profile engine of the QA system, interacting with a user
profile data storage, interacting with a source computing device over at least
one data communication link. App. Br. 21. The present claims recite an
abstract idea using additional generic elements as tools to implement the
abstract idea as discussed supra, in §§ II.C. l ., II.C.2.-not an inventive
concept.
We disagree with Appellants' argument that, similar to BASCOM, the
present claims are directed to an ordered combination of elements that sets
forth a technology-based solution to a computer-based problem, namely
improving the accuracy of computerized answering of natural language
questions posed to a QA system. App. Br. 21-23; Reply Br. 9-11. Rather,
the present claims recite an abstract idea using additional generic elements
as tools to implement the abstract idea as discussed supra, in§§ II.C. l.,
II.C.2.-not an inventive concept.
Appellants do not argue claims 2, 4-12, and 14-20 separately with
particularity, but assert the rejections of those claims should be withdrawn
for at least the same reasons as argued in independent claim 1. App. Br. 5-
26. Accordingly, we sustain the Examiner's rejection of: (1) independent
claims 1, 11, and 20; and (2) dependent claims 2, 4-10, 12, and 14-19 under
35 U.S.C. § 101.
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III. Claims 1-20 Rejected Under 35 U.S.C. § 103
A. Claims 1, 11, and 20
The Examiner finds Stiver teaches the limitation "natural language
processing" recited in claims 1, 11, and 20. Final Act. 28-29, 32-33, 37
( citing Stiver ,i,i 78-79); Ans. 8. The Examiner finds Baldwin teaches users
of a social networking system provide information describing themselves,
wherein the information is stored, displayed in pages called user profiles,
and used to generate answers to a user's questions, which the Examiner
maps to the limitation
generating ... supplemental information about the answer ... ,
wherein the supplemental information comprises a plurality of
different levels of detail of information about the answer . . .
[ and] selecting . . . based on one or more personality traits
associated with the first user, wherein the subset of supplemental
information about the answer that corresponds to the one or more
personality traits associated with the first user
recited in claim 1 (and similarly recited in claims 11 and 20). Final Act. 26,
30-31, 35 (citing Baldwin ,i 15); Ans. 8-9 (citing Baldwin ,i,i 15, 64). The
Examiner finds Vest teaches personality traits. Final Act. 27, 31-32, 36
(citing Vest ,i,i 25, 45, 47).
Appellants argue Baldwin does not teach the limitation "natural
language processing" recited in claims 1, 11, and 20. App. Br. 30; Reply Br.
15-1 7. Appellants argue Baldwin merely teaches a manual process, but fails
to teach an automatic answer generation for a question. App. Br. 31.
Appellants argue Baldwin fails to teach the limitation
generating ... supplemental information about the answer ... ,
wherein the supplemental information comprises a plurality of
different levels of detail of information about the answer . . .
[ and] selecting . . . based on one or more personality traits
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associated with the first user, wherein the subset of supplemental
information about the answer that corresponds to the one or more
personality traits associated with the first user
recited in claim 1. Id. at 31-32; Reply Br. 15-17. Appellants argue Vest
teaches personality traits in the context of an online dating system, but Vest
does not teach using personality traits in the context of a Question and
Answer system. App. Br. 34. We disagree with Appellants.
Regarding Appellants' argument that Baldwin does not teach natural
language processing (App. Br. 30), one cannot show nonobviousness "by
attacking references individually" where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F .2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (CCPA 1981)). In
this case, Stiver teaches the limitation "natural language processing" recited
in claims 1, 11, and 20. Stiver ,-J,-J 78-79 (cited at Final Act. 28-29, 32-33,
37; Ans. 8).
As for Appellants' argument that Baldwin does not teach "automatic"
(App. Br. 31 ), we note that claims 1, 11, and 20 do not recite "automatic."
" [ A Jppellant' s arguments fail from the outset because ... they are not based
on limitations appearing in the claims." See In re Self, 671 F.2d at 1348
(CCPA 1982). Even if claims 1, 11, and 20 recite automatic, which they do
not, Appellants admit that Baldwin teaches automatic (App. Br. 30 ("[ w ]hile
the users may tag terms in the questions/answers with social networking
system objects, or such tagging may be done automatically" ( emphasis
added)). Moreover, we note that Baldwin teaches automatically tagging
objects in answers based on objects associated with the question. Baldwin
,-i,-i 5 4, 7 4.
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Regarding Appellants' third argument (App. Br. 31-32), Baldwin
teaches users of a social networking system provide information describing
themselves, wherein the information is stored, displayed in pages called user
profiles, and used to generate answers to a user's questions, which teaches
the limitation
generating ... supplemental information about the answer ... ,
wherein the supplemental information comprises a plurality of
different levels of detail of information about the answer . . .
[ and] selecting . . . based on one or more personality traits
associated with the first user, wherein the subset of supplemental
information about the answer that corresponds to the one or more
personality traits associated with the first user
recited in claim 1 (and similarly recited in claims 11 and 20). Baldwin
,i,i 15, 64 (cited at Final Act. 26, 30-31, 35; Ans. 8-9).
As for Appellants' argument that Vest does not teach personality traits
in the context of a question and answer system (App. Br. 34), one cannot
show nonobviousness "by attacking references individually" where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425
(CCPA 1981)). In this case, Vest teaches personality traits. Vest ,i,i 25, 45,
47 ( cited at Final Act. 27, 31-32, 36). Moreover, Baldwin teaches a
question and answering system. Baldwin ,i,i 15, 64, Abstract (cited at Final
Act. 25-26, 30-31, 35; Ans. 8-9).
Appellants do not argue independent claims 11 and 20 separately with
particularity, but assert the rejections of those claims should be withdrawn
for at least the same reasons as argued in independent claim 1. App. Br.
27-36. Accordingly, we sustain the Examiner's rejection of independent
claims 1, 11, and 20 under 35 U.S.C. § 103.
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B. Claims 2, 4, 5, 12, 14, and 15
The Examiner finds Baldwin's answering questions using information
from their social networking profile teaches the limitations recited in claims
2 and 12. Final Act. 38; Ans. 9-10 (citing Baldwin ,i,i 62, 64).
Appellants argue Baldwin fails to teach "correlating the one or more
personality traits associated with the first user with pre-determined
personality traits" recited in claims 2 and 12. App. Br. 36-38; Reply Br. 18.
We agree with Appellants.
As an initial matter, the broadest reasonable interpretation differs
from the broadest possible interpretation. In re Smith Int 'l, Inc., 871 F .3d
1375, 1383 (Fed. Cir. 2017); see also MPEP § 2111 ("The broadest
reasonable interpretation does not mean the broadest possible interpretation.
Rather, the meaning given to a claim term must be consistent with the
ordinary and customary meaning of the term (unless the term has been given
a special definition in the specification), and must be consistent with the use
of the claim term in the specification and drawings."). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is "an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
that is 'consistent with the specification."' Smith, 871 F.3d at 1382-83
(quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). We are
mindful, however, that limitations are not to be read into the claims from the
Specification. Van Geuns, 988 F.2d at 1184.
In this case, although the Specification describes personality traits in
the context of example embodiments (Spec. ,i,i 22, 28, 64), we conclude the
broadest reasonable construction of "personality traits" includes traits such
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as whether a person is an extrovert, conscientious, or agreeable. Moreover,
the cited portions of Baldwin relied upon by the Examiner teach users of a
social networking system providing information describing themselves in
user profiles; however, the information pertains to age, gender, geographical
location, education history, employment history. Baldwin ,-J,-J 15, 62, 64
(cited at Final Act. 26, 38; Ans. 9-10). Baldwin's age, gender, geographical
location, education history, employment history is not a reasonable teaching
or suggestion of traits such as whether a person is an extrovert,
conscientious, or agreeable as required by claims 1, 11, and 20.
In addition, we note that the Examiner did not cite to Vest in their
analysis for dependent claims 2 and 12 for teaching "personality traits"
recited in dependent claims 2 and 12. Nor did the Examiner provide a
rationale as to how a person having ordinary skill in the art at the time of the
invention would modify Baldwin's question and answering system with
Vest's personality traits to teach the limitation "correlating the one or more
personality traits associated with the first user with pre-determined
personality traits" recited in claims 2 and 12. Accordingly, we do not
consider whether Vest teaches the additional limitations recited in claims 2
and 12.
Accordingly, based on the current record, we do not sustain the
Examiner's rejection of: (1) claims 2 and 12; and (2) claims 4, 5, 14, and
15, which depend from one of claims 2 and 12 under 35 U.S.C. § 103.
C. Claims 6 and 16
The Examiner finds Baldwin teaches providing an answer with an
explanation that four of your friends are seeing the concert "Adele" in
Oakland on 2/1/12 in response to the question "what concert should I see,"
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which teaches the limitation "outputting the answer and the supplemental
information to the first user via the source computing device comprises
outputting the answer and the supplemental information as one or more
natural language statements" recited in claims 6 and 16. Final Act. 38-39
( citing Baldwin, Fig. 4); Ans. 10-11.
Appellants argue Baldwin fails to teach the limitations recited in
claims 6 and 16 because the suggested answers are not natural language
statements. App. Br. 38-39; Reply Br. 18-19. We disagree with
Appellants.
Baldwin teaches providing an answer with an explanation (i.e., the
supplemental information as natural language statements) that four of your
friends are seeing the concert "Adele" in Oakland on 2/1/12 in response to
the question "what concert should I see," which teaches the limitation
"outputting the answer and the supplemental information to the first user via
the source computing device comprises outputting the answer and the
supplemental information as one or more natural language statements"
recited in claims 6 and 16. Baldwin, Fig. 4 (cited at Final Act. 38-39; Ans.
10-11 ). That is, the response includes both the answer to the question-the
Adele concert-and the supplemental information used to determine the
answer-the recommendation is based on what four of your friends are
doing and is displayed as natural language statements.
Accordingly, we sustain the Examiner's rejection of claims 6 and 16
under 35 U.S.C. § 103.
D. Claims 7 and 17
The Examiner finds the combination of Baldwin, Stiver, and Moxley
teach the limitations recited in claims 7 and 17, and Baldwin teaches
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personality traits. Final Act. 41-43 (citing Baldwin ,i,i 15, 63, 64); Ans.
12-14.
Appellants argue Baldwin fails to teach personality traits. App. Br.
43-48; Reply Br. 20-22. We agree with Appellants.
As an initial matter, the broadest reasonable interpretation differs
from the broadest possible interpretation. Smith, 871 F .3d at 13 83; see also
MPEP § 2111. The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is "an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is 'consistent with the
specification."' Smith, 871 F.3dat 1382-83 (quotingMorris, 127F.3dat
1054). We are mindful, however, that limitations are not to be read into the
claims from the Specification. Van Geuns, 988 F.2d at 1184.
In this case, although the Specification describes personality traits in
the context of example embodiments (Spec. ,i,i 22, 28, 64), we conclude the
broadest reasonable construction of "personality traits" includes traits such
as whether a person is an extrovert, conscientious, or agreeable. Moreover,
the cited portions of Baldwin relied upon by the Examiner teach users of a
social networking system providing information describing themselves in
user profiles; however, the information pertains to age, gender, geographical
location, education history, employment history. Baldwin ,i,i 15, 63, 64
(cited at Final Act. 41-43; Ans. 12-14). Baldwin's age, gender,
geographical location, education history, employment history is not a
reasonable teaching or suggestion of traits such as whether a person is an
extrovert, conscientious, or agreeable as required by claims 1, 11, and 20.
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In addition, we note that the Examiner did not cite to Vest in their
analysis for dependent claims 7 and 17 for teaching "personality traits"
recited in dependent claims 7 and 17. Nor did the Examiner provide a
rationale as to how a person having ordinary skill in the art at the time of the
invention would modify Baldwin, Stiver, and Moxley to include the
teachings of Vest to teach the half-page length of limitations recited in
claims 7 and 1 7. Accordingly, we do not consider whether Vest teaches the
additional limitations recited in claims 7 and 17.
Accordingly, based on the current record, we do not sustain the
Examiner's rejection of claims 7 and 17 under 35 U.S.C. § 103.
E. Claims 8 and 188
The Examiner finds Baldwin teaches a first user on a social network
connected to other users, wherein the first user asks the other users a
question and the other users answer the question and Moxley teaches users
posting blog posts and other users make comments on the post, which
teaches the limitation:
wherein the one or more second users are second users logically
connected to the first user by a common context, wherein the
common context is a context in which the first user has
performed computer based actions relative to the context,
wherein the common context stores information about the
performed computer based actions, and wherein, the corpus of
electronic content comprises a portion of electronic content
associated with the common context
8 In the event of further prosecution, the Examiner may want to consider
whether 35 U.S.C. § l 12(b) applies because there does not appear to be
antecedence for the limitation "the one or more second users" recited in
claim 8. While the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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recited in claims 8 and 18. Final Act. 43-44 (citing Baldwin ,i,i 10, 16, 19,
20; Moxley ,i,i 7, 70).
Appellants argue the cited references fail to teach the limitations
recited in claims 8 and 18. App. Br. 43-48; Reply Br. 22. We agree with
Appellants. Final Act. 41-43 (citing Baldwin ,i,i 15, 63, 64); Ans. 12-14.
We disagree with Appellants.
As an initial matter, Appellants' arguments are conclusory.
Moreover, Baldwin teaches a first user on a social network connected to
other users (i.e., the one or more second users are second users logically
connected to the first user by a common context), wherein the first user asks
the other users a question and the other users answer the question (i.e.,
wherein the common context is a context in which the first user has
performed computer based actions relative to the context) and Moxley
teaches users posting blog posts and other users make comments (i.e., the
corpur of electronic content comprises a portion of electronic content
associated with the common context) on the post, which teaches the
limitation:
wherein the one or more second users are second users logically
connected to the first user by a common context, wherein the
common context is a context in which the first user has
performed computer based actions relative to the context,
wherein the common context stores information about the
performed computer based actions, and wherein, the corpus of
electronic content comprises a portion of electronic content
associated with the common context
recited in claims 8 and 18. Baldwin ,i,i 10, 16, 19, 20; Moxley ,i,i 7, 70
( cited at Final Act. 43-44).
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Accordingly, we sustain the Examiner's rejection of claims 8 and 18
under 35 U.S.C. § 103.
F. Claims 9 and J 99
The Examiner finds Moxley teaches comparing a question to similar
questions that have been answered in the past and providing replies to the
question from trusted users, which the Examiner maps to the limitation
"identifying one or more portions of the one or more second questions that
align with the first personality trait of the first user" recited in claims 9
and 19. Final Act. 44-45 (citing Moxley,-J,-J 7, 31, 34, 56); Ans. 15.
Appellants argue Moxley fails to teach the limitation "identifying one
or more portions of the one or more second questions that align with the first
personality trait of the first user" recited in claims 9 and 19 because Moxley
fails to teach aligning with the personality trait of the user that submitted the
original question. App. Br. 43-48; Reply Br. 22-23. We agree with
Appellants.
Moxley merely teaches comparing a question to similar questions that
have been answered in the past and providing replies to the question from
trusted users, which fails to teach the limitation "identifying one or more
portions of the one or more second questions that align with the first
personality trait of the first user" ( emphasis added) recited in claims 9 and
19. Final Act. 44-45 (citing Moxley ,-J,-J 7, 31, 34, 56); Ans. 15. That is,
9 In the event of further prosecution, the Examiner may want to consider
whether 35 U.S.C. § l 12(b) applies because there does not appear to be
antecedence for the limitation "the one or more second questions" recited in
claim 9.
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Moxley teaches trustworthiness of other users (i.e., not the first user asking
the original question) replying to the question.
Accordingly, we do not sustain the Examiner's rejection of claims 9
and 19 under 35 U.S.C. § 103.
G. Claim 1010
The Examiner finds Moxley teaches comparing a question to similar
questions that have been answered in the past and identifying good past
answers and Stiver teaches a ranked listing, which the Examiner maps to the
limitation "applying the one or more supplemental queries to the corpus to
generate the one or more second candidate answers; and generating a ranked
listing of candidate answers comprising the one or more first candidate
answers and the one or more second candidate answers" recited in claim 10.
Final Act. 45-46 ( citing Moxley ,-J,-J 31, 34; Stiver ,-J,-J8, 46); Ans. 15-16.
Appellants argue Moxley and Stiver fail to teach the limitations
recited in claim 10 because Moxley merely teaches matching questions to
advertisers and Stiver merely teaches ranking candidate documents. App.
Br. 50-51; Reply Br. 23. We disagree with Appellants.
We agree with the Examiner that Moxley teaches or suggests
comparing a question to similar questions that have been answered in the
past and identifying good past answers and Stiver teaches a ranked listing,
which the Examiner maps to the limitation "applying the one or more
supplemental queries to the corpus to generate the one or more second
10 In the event of further prosecution, the Examiner may want to consider
whether 35 U.S.C. § l 12(b) applies because there does not appear to be
antecedence for the limitation "applying the one or more supplemental
queries" recited in claim 10.
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candidate answers; and generating a ranked listing of candidate answers
comprising the one or more first candidate answers and the one or more
second candidate answers" recited in claim 10. Moxley ,-J,-J 31, 34; Stiver
,-J,-J 8, 46 (cited at Final Act. 45-46; Ans. 15-16).
Accordingly, we sustain the Examiner's rejection of claim 10 under
35 U.S.C. § 103.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We summarily affirm the Examiner's decision rejecting claims 7, 9,
10, 17, and 19 under a provisional non-statutory obviousness-type double
patenting rejection over various claims of co-pending Application number
14/588,547.
We affirm the Examiner's decision rejecting claims 1, 2, 4-12, and
14-20 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 6, 8, 10, 11, 16,
18, and 20 under 35 U.S.C. § 103.
We reverse the Examiner's decision rejecting claims 2, 4, 5, 7, 9, 12,
14, 15, 17, and 19 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject claims 1,
2, 4-12, and 14-20. See 37 C.F.R. § 41.50(a)(l).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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