Ex Parte Bastide et al

Patent Trial and Appeal Board

May 23, 2016

13344216 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/344,216 01/05/2012
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
05/25/2016
FIRST NAMED INVENTOR
Paul Roger Bastide
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.
RSW920110 l l 9US 1 5985
EXAMINER
HUYNH, LINDA TANG
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ROGER BASTIDE, MATTHEW E. BROOMHALL,
ROBERT EDWARD LOREDO, and MATTHEW STEPHEN ROSNO
Appeal2014-007834
Application 13/344,216
Technology Center 2100
Before JOHNNY A. KUMAR, MELISSA A. RAAP ALA, and
KAMRAN JIVANI, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 14--16, 19, 20, and 26-40, which are all of the claims
currently pending in the application. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Claims 1-13, 17, 18, and 21-25 have been canceled. App. Br. 4.
Appeal2014-007834
Application 13/344,216
fNVENTION
Appellants' invention is directed to tag clouds that identify tags
contextually relevant to users. Spec. i-f 1. Claim 14 is exemplary of the
subject matter on appeal:
14. A system for customizing a tag cloud, comprising:
at least one processor to access and execute computer
readable instructions stored on a computer readable storage
medium;
said computer readable instructions to cause said at least
one processor to, upon execution of said computer readable
instructions:
identify tags from a source, wherein a tag is
considered to be a new tag until any of an expiration of a
set time duration and a user clicks on said tag;
assign a score to each tag in said source based on a
tag attribute;
increase said score for said new tag during a time
period measured from a creation of said new tag and
remove said increase after said new tag is no longer
considered new; and
create a tag cloud in a graphical user interface that
emphasizes each tag according to its score.
REJECTIONS ON APPEAL
Claims 14, 19, and 27 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 14--16 of
copending Application No. 13/860,232.2 Ans. 5-7.
2 As of the mailing date of this Decision, copending child Application No.
13/860,232 has not issued as a patent (see related PTAB Appeal No. 2015-
003448); therefore, this rejection remains provisional. We note that in the
2015-003448 appeal of the child application, Appellants fail to cite this case
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Appeal2014-007834
Application 13/344,216
Claims 19 and 20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 8.
Claims 14--16, 19, 20, 26-28, 30-34, and 36-40 stand rejected under
35 U.S.C. § 103(a) as being obvious over the combination of Majko (US
2009/0182727 Al; published July 16, 2009) and Tuttle (US 2006/0218141
Al; published Sept. 28, 2006). Ans. 9--23.
Claims 29 and 35 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Majko, Tuttle, and You (US 2010/0083131
Al; published Apr. 1, 2010). Ans. 23-24.
ISSUES
Appellants' contentions present us with the following issues: 3
A) Did the Examiner err in rejecting claims 19 and 20 under 35
U.S.C. § 101?
B) Did the Examiner err in finding the combination of Majko and
Tuttle teaches or suggests wherein a tag is considered to be a new tag until
as a related appeal as required by 37 C.F.R. § 41.37(c)(ii). We remind
Appellants to review pending proceedings before the Board and ensure that
all related Appeals are identified.
3 Appellants present additional contentions that the claim objections (see
Final Act. 3--4), have been addressed in an amendment under 37 C.F.R.
§ 41.33, filed concurrently with the brief. App. Br. 11-12; Reply Br. 3--4.
We remind Appellants that the Board normally only considers matters
affecting the merits of the invention, i.e., the rejections of claims. See 37
C.F .R. § 41.31 ( c ). Matters not affecting the merits of the invention, such as
objections to the claims or allegations of procedural errors by the Examiner,
are to be raised by petition to the Director or to the PTO official to whom the
Director has delegated the authority to determine the petition. See 3 7 C.F .R.
§§ 1.181-183. However, we note the Examiner indicated in the Advisory
Action (mailed Mar. 19, 2014) that the amendment has been entered.
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Appeal2014-007834
Application 13/344,216
any of an expiration of a set time duration and a user clicks on said tag
("new tag" limitation) and increase said score for said new tag during a time
period measured from a creation of said new tag and remove said increase
after said new tag is no longer considered new ("increase score" limitation),
as recited in independent claim 14?
C) Did the Examiner err in finding the combination of Majko and
Tuttle teaches or suggests where said time period ends in response to
clicking said new tag, as recited in dependent claim 28?
D) Did the Examiner err in finding the combination of Majko, Tuttle,
and You teaches or suggests said new tag is one of said each tag that has
been created since a user last visited said source, as recited in dependent
claim 29?
ANALYSIS
We have reviewed the Examiner's rejections in consideration of
Appellants' contentions. We disagree with Appellants' conclusions that the
Examiner's rejections of the claims are in error.
Double-Patenting Rejection
Appellants do not submit any arguments contesting the provisional
double patenting rejection, but instead request the rejection be held in
abeyance. App. Br. 12. We decline. Accordingly, we summarily sustain
this provisional rejection. See Hyatt v. Dudas, 551F.3d1307, 1314 (Fed.
Cir. 2008) ("When the appellant fails to contest a ground of rejection to the
Board, ... the Board may treat any argument with respect to that ground of
rejection as waived.").
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Appeal2014-007834
Application 13/344,216
Issue A: 35USC§101 Rejection
The Examiner finds claims 19 and 20 are directed to non-statutory
subject matter because the claims recite computer usable storage medium,
which can be interpreted as including transitory signals under the broadest
reasonable interpretation of the term in light of the Specification. Ans. 25-
26. We agree.
We are not persuaded by Appellants' contention the rejection is in
error because the recited "storage medium" only includes media that stores
data, which Appellants argue necessarily excludes transitory medium. App.
Br. 12-14; Reply Br. 9-10. In support of this contention, Appellants cite to
a non-precedential Board decision, which is not binding on this panel.
Indeed, it is now settled that, absent a narrowing definition in the
Specification, "storage medium" encompasses a signal per se and thus must
be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter.
Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential).
Appellants argue that paragraphs 1 7 and 18 of the Specification restrict
"storage medium" to exclude signal medium. Reply Br. 9-10. We disagree.
The cited paragraphs of the Specification merely provides a non-limiting
("non-exhaustive") list of examples of what "computer readable storage
medium" and "computer readable signal medium" may be. Spec. i-fi-f 17, 18.
The Specification does not indicate that the terms are mutually exclusive and
does not provide an explicit definition that narrows "storage medium" to
exclude signals. See id.
Appellants fail to persuade us the Examiner errs in finding claims 19
and 20 are directed to non-statutory subject matter. Accordingly, we sustain
the 35 U.S.C. § 101 rejection of these claims.
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Appeal2014-007834
Application 13/344,216
Issue B: Claims 14-16, 19, 20, 26, 27, 30-40
Appellants contend the combination of Majko and Tuttle does not
teach or suggest the "new tag" and "increase score" limitations recited in
claim 14. App. Br. 14--16; Reply Br. 11-13. Specifically, Appellants argue
Majko fails to teach the claimed "new tags" as defined in the Specification
and Tuttle only teaches ranking of websites. App. Br. 15; Reply Br. 12.
Appellants additionally argue the combination is improper because the
references are not analogous art. App. Br. 17-18; Reply Br. 13-14. We
disagree with Appellants' contentions.
We agree with the Examiner that the broadest reasonable
interpretation of "new tags" encompasses a tag that has not been previously
presented to a user. Ans. 28. Contrary to Appellants' argument that
paragraph 32 of the Specification requires a narrower definition (Reply Br.
12), the cited paragraph merely uses permissive language that a particular
type of tag may be a new tag and is not a limiting definition. See Spec. i-f 32.
The Examiner finds, and we agree, Majko teaches new tags. Ans. 2, 28
(citing Majko i-f 56). We further agree Tuttle teaches a recency ranking that
increases a ranking value (score) of a result if an expiration time has not
expired from the current date and when the record was found. Ans. 29-30
(citing Tuttle i-fi-1 23-28). Thus, we agree with the Examiner that the
combination of Majko and Tuttle teaches the "new tag" and "increase score"
limitations. Appellants' argument that Tuttle only teaches ranking of
websites is not persuasive because one cannot show non-obviousness by
attacking references individually where the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981 ).
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Application 13/344,216
We also agree with the Examiner that the references are from the
same field of endeavor (ranking content for presentation to a user). Ans. 30.
Appellants' conclusory statements do not provide persuasive argument or
evidence that the Examiner's articulated reasoning (Ans. 30-31 ), supported
by evidence of record, is not a proper rationale for the combination.
For the reasons stated above, Appellants fail to persuade us of error in
the rejection of claim 14. Accordingly, we sustain the 35 U.S.C. § 103(a)
rejection of: (1) claim 14; (2) independent claims 19 and 26, for which
Appellants present substantially the same arguments made for claim 14 (see
App. Br. 19--24); and (3) dependent claims 15, 16, 20, 27, 30-24, and 36-40,
which are not separately argued. We further sustain the 35 U.S.C. § 103(a)
rejection of claim 35, which depends from claim 14 and is not separately
argued. See App. Br. 25-26.
Issue C: Claim 28
Appellants contend the combination of Majko and Tuttle does not
teach or suggest where said time period ends in response to clicking said
new tag, as recited in claim 28 because neither reference teaches ending a
time period as a result of clicking a tag. App. Br. 25; Reply Br. 15-16. We
are not persuaded by this argument.
As set forth in is parent claim 14, the recited time period is "a time
period measured from a creation of said new tag . . . [until] said new tag is
no longer considered new." We agree with the Examiner that Majko teaches
displaying new words after a user clicks on a tag and Tuttle teaches a
recency score that ends after an expiration time period. Ans. 31 (citing
Majko i-f 53; Tuttle i-fi-123-28). We also agree with the Examiner that one of
ordinary skill in the art would understand a user clicking on the tag would
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Appeal2014-007834
Application 13/344,216
necessarily mean the user had seen the tag and it is no longer new, and the
proposed substation yields predictable results. Ans. 31-32. Therefore,
Appellants do not persuade us of error and we sustain the 35 U.S.C. § 103(a)
rejection of claim 28.
Issue D: Claims 29 and 35
With respect to claim 29, Appellants argue the combination of Majko,
Tuttle, and You, does not teach or suggest said new tag is one of said each
tag that has been created since a user last visited said source. App. Br. 25-
26; Reply Br. 16-18. We disagree. Rather, we agree with the Examiner that
Majko teaches a time value of when a webpage of a tag cloud was last
visited. Ans. 32 (citing Majko i-f 40). We further agree that You teaches
identifying new tags over a determined period of time. Ans. 32 (citing You
i-fi-133-34). Therefore, we agree with the Examiner that the combination of
cited references teaches or suggests the disputed limitation. Ans. 32-33.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim 29.
DECISION
We affirm the Examiner's decision to reject claims 14--16, 19, 20, and
26-40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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