Ex Parte Baggott et al

Patent Trial and Appeal Board

Nov 6, 2017

13536283 (P.T.A.B. Nov. 6, 2017)

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.
13/536,283 06/28/2012 George Thomas Baggott 1233-312US01 4048
98449 7590 11/08/2017
Shumaker & Sieffert, P.A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
SANTOS-DIAZ, MARIA C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/08/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pairdocketing @ ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE THOMAS BAGGOTT and
THOMAS GERMANO O’NEILL
Appeal 2016-0040611
Application 13/536,283
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1—27. We have
jurisdiction to review the case under 35 U.S.C. §§134 and 6.
We AFFIRM.
1 The Appellants identify Google Inc. as the real party in interest. Br. 3.
Appeal 2016-004061
Application 13/536,283
The invention relates generally to generating and aggregating
feedback for media objects, such as electronic books. Spec. 11.
Claim 1 is illustrative:
1. A computer-implemented method for providing feedback for
an electronic book comprising a plurality of portions, the method
comprising:
receiving, at a processor, a plurality of user feedback
measures, each of the user feedback measures corresponding to
one of the plurality of portions;
analyzing, by a processor, the user feedback measures to
determine rating information corresponding to the plurality of
portions;
receiving, at a processor, a current reading position
associated with the electronic book;
identifying a current portion of the plurality of portions
based on the current reading position;
identifying a first subset of the rating information, the first
subset corresponding to the current portion;
identifying a second subset of the rating information, the
second subset corresponding to at least one subsequent portion
of the plurality of portions, the at least one subsequent portion
located after the current portion in the electronic book; and
preparing, by a processor, presentation information for
presentation at a client device, the presentation information
indicating a trend in the rating information based on a difference
between the first subset of the rating information and the second
subset of the rating information.
Claims 1—27 are rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter in the form of an abstract idea. Final Act. 4.
Claims 1—5, 8—22, and 25—27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mbenkum (US 2012/0324392 Al, published Dec. 20,
2012) and Ji (US 2008/0147483 Al, published June 19, 2008). Final
Act. 10.
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Appeal 2016-004061
Application 13/536,283
Claims 6, 7, 23, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mbenkum, Ji, and Broussard (US 2005/0130676 Al,
published June 16, 2005). Final Act. 32.
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner finds claims 1—27 are directed to the abstract idea of
“providing feedback for an electronic book,” as a form of fundamental
business practice, which operates by “comparing new and stored information
(comparing a first and a second rating) and using rules to identity an option
(identifying a trend in the data based on the difference between the ratings),
which is similar in scope to the abstract idea identified by the courts in
SmartGene, Inc. v. Advance Biological LabsFinal Act. 4—5.
In response, the Appellants argue first that the Examiner “fails to
show that the specific combination of features recited by claim 1 will
disproportionately tie up their use,” and does not establish that the claims
would create a monopoly because the Examiner “does not identify a single
previously known application of the alleged abstract idea that would be
preempted.” Br. 13—14.
We are not persuaded of error by the Appellants’ argument. Although
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjhat the claims
do not preempt ah price optimization or may be limited to price optimization
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Appeal 2016-004061
Application 13/536,283
in the ecommerce setting do not make them any less abstract.”). And,
“[wjhere a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d
at 1379.
We are also unpersuaded by the Appellants’ second argument, that the
recited claim “features improve the operation of electronic reading devices
by, in certain particular implementations, providing recommendations to
readers regarding whether they should persevere with a particular book.”
Br. 14.
The steps of independent method claim 1 recite preparing
“information indicating a trend in the rating information.” We discern that
content is provided to the electronic reader that may improve the experience
for the user. We do not discern, however, that this would alter, or improve,
the operation of the electronic reading device. This is because the electronic
reading device displays information, and merely altering the content of the
information displayed does not improve the display of information. The
Appellants have not shown any other functional improvement in the
operation of the device itself, as a result of altering the content displayed, by
adding “trend” information.
For these reasons, the Appellants have not shown error in the
Examiner’s rejection of claims 1—27 as being directed to an abstract idea.
Therefore, we sustain the rejection of claims 1—27 under 35 U.S.C. § 101.
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Appeal 2016-004061
Application 13/536,283
Rejections under 35 U.S.C. § 103(a)
Each of independent claims 1, 10, 18, and 27 recites language
substantially similar to the following recitation of independent claim 1:
“preparing, by a processor, presentation information for presentation at a
client device, the presentation information indicating a trend in the rating
information based on a difference between” a current portion and a
subsequent portion of the book.
We are persuaded by the Appellants’ arguments that the cited
references fail to disclose the determination of a trend in rating information
about material following a particular location in a book, because the
references instead merely display information about product comparisons
without any “indication of how the rating of a related sequence of things (in
this case, book portions) changes through the sequence.” Br. 9—10.
At best, cited paragraph 80 of Ji discloses displaying “a quasi table
that provides the data comparing two items. As shown this is by ‘better’,
‘same’ and ‘worse.’” Ji 1 80. Ji’s displayed numeric score data, provided
for each of the three categories of better, same, and best, could be interpreted
by a user to arrive at an overall score covered by the three displayed
better/same/best score. Ji, however, does not disclose determining or
displaying any such overall score. Even if Ji did determine and display an
overall score, that score would not indicate a trend, especially of a
“subsequent portion” of the book as compared to a “current portion” of a
book based on “a current reading position,” as claimed. The Examiner has,
thus, failed to support the assertion that Ji meets the claim language of
determining a trend, as claimed.
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Application 13/536,283
For this reason, we do not sustain the rejection of claims 1, 10, 18,
and 27. We also do not sustain the rejection of dependent claims 2—5, 8, 9,
11—17, 19—22, 25, and 26 that depend from claims 1,10, and 18, and which
were rejected along with claims 1,10, and 18. We further do not sustain the
rejection of claims 6, 7, 23, and 24, because the Examiner has not shown on
the record that Broussard remedies the identified shortcomings in Ji.
DECISION
We AFFIRM the rejection of claims 1—27 under 35 U.S.C. § 101.
We REVERSE the rejections of claims 1—27 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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