Ex Parte Chakravarthy et alDownload PDFPatent Trial and Appeal BoardFeb 29, 201612501423 (P.T.A.B. Feb. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/501,423 07/11/2009 Ananth Chakravarthy 52021 7590 03/02/2016 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 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. IN920090011US1_8150-0283 4334 EXAMINER POLLACK, MEL VIN H ART UNIT PAPER NUMBER 2445 NOTIFICATION DATE DELIVERY MODE 03/02/2016 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANANTH CHAKRAVARTHY and INDIVER N. DWIVEDI Appeal2014-002859 Application 12/501,423 Technology Center 2400 Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and JOHN D. HAMANN, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20. 1 We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants identify IBM Corporation as the real party in interest. (App. Br. 1.) Appeal2014-002859 Application 12/501,423 THE INVENTION Appellants' invention is directed to a determination of whether user- generated proposed additions to a tag set associated with a web module are appropriate. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system comprising: a server including a processor and a memory device for storing a web module and a tag set comprising one or more associated user-generated tags associated with the web module; a network adapter configured to receive a user-generated request to add a proposed tag to the tag set; and a tagging system configured to evaluate the acceptability of the proposed tag and to add the proposed tag to the existing tag set only ifthe proposed tag is evaluated as being acceptable. REJECTIONS The Examiner rejected claims 14--20 under 35 U.S.C. § 101 as directed to non-statutory subject matter. (Final Act. 14--15.) The Examiner rejected claims 1, 7, and 14 under 35 U.S.C. § 103(a) as being unpatentable over Magdalin et al. (US 8,001,125 Bl, issued Aug. 16, 2011) ("Magdalin") and Barton et al. (US 2009/0240692 Al, pub. Sept. 24, 2009) ("Barton"). (Final Act. 15-16.) The Examiner rejected claims 2, 8, and 15 under 35 U.S.C. § 103(a) as being unpatentable over Magdalin, Barton, and Houghton (US 2010/0293195 Al, pub. Nov. 18, 2010). (Final Act. 16-17.) 2 Appeal2014-002859 Application 12/501,423 The Examiner rejected claims 3-5, 9-11, and 16-18 under 35 U.S.C. § 103(a) as being unpatentable over Magdalin, Barton, and Duman et al. (US 2010/0332964 Al, pub. Dec. 30, 2010) ("Duman"). (Final Act. 18-19.) The Examiner rejected claims 6, 12, 13, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Magdalin, Barton, Houghton, and Duman. (Final Act. 19-20.) ISSUES ON APPEAL Appellants' arguments in the Appeal Brief present the following issues: 2 Issue One: Whether the Examiner errs in rejecting claims 14--20 as directed to non-statutory subject matter. (App. Br. 10-32.) Issue Two: Whether Barton is non-analogous prior art. (App. Br. 32- 34.) Issue Three: Whether the combination of Magdalin, Barton, and Houghton teaches or suggests the limitations of claims 2, 8, and 15. (App. Br. 34--42.) Issue Four: Whether the combination of Magdalin, Barton, and Duman teaches or suggests the limitations of claims 3, 9, and 16, and whether the combination of Magdalin, Barton, Houghton, and Duman 2 Rather than reiterate the arguments of Appellants and positions of the Examiner, we refer to the Appeal Brief (filed Jun. 19, 2013) ("App. Br."), Reply Brief (filed Dec. 18, 2013) ("Reply Br."), Final Office Action (mailed Mar. 5, 2013) ("Final Act."), and the Examiner's Answer (mailed Oct. 18, 2013) ("Ans.") for the respective details. 3 Appeal2014-002859 Application 12/501,423 teaches or suggests the limitations of claims 6, 12, and 19. (App. Br. 42- 47.) ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. With respect to the Examiner's rejection of claims 14--20 pursuant to 35 U.S.C. § 101, and the Examiner's obviousness rejections of claims 1, 7, and 14 over Magdalin and Barton and of claims 2, 8, and 15 over Magdalin, Barton, and Houghton, we disagree with Appellants' arguments: we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 14--17) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 3-33), and we concur with the conclusions reached by the Examiner. We emphasize the following. Issue One Independent claim 14 is directed to "[a] computer program product comprising a computer usable storage medium having stored therein computer-usable program code [,which code is] executed by a server." Claims 15-20 are dependent from claim 14. Although the code is executed by a server, the server itself is not recited as part of the claim. The Examiner concludes, "the claims as currently drawn do not limit the embodiments to machines nor to non-transitory mediums," and thus are invalid pursuant to 35 U.S.C. § 101. (Ans. 8; see also Final Act. 5-8.) 4 Appeal2014-002859 Application 12/501,423 Appellants argue that the Examiner misapplied In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), and assert "the term 'storage medium' cannot be properly construed to be a transitory, propagating signal per se." (App. Br. 21.) In the Reply Brief, after the Examiner cited the then-recent opinion in Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential), Appellants maintain that the holding in Mewherter on the meaning of computer readable storage material is not consistent with the art-recognized meaning of the term. (Ans. 18; Reply Br. 5-7.) When the broadest reasonable interpretation of a claim covers non- patentable subject matter such as a transitory signal, the claim is unpatentable under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d at 1356-57 (transitory embodiments are not directed to statutory subject matter). Unless limited to non-transitory embodiments, the broadest reasonable interpretation of the phrase "computer readable storage medium" includes both transitory and non-transitory embodiments and would be unpatentable under section 101. Ex parte Mewherter, 107 USPQ2d at 1862. When determining whether a "computer readable storage medium" limitation covers non-patentable subject matter, the following factors must be considered: ( 1) Extrinsic evidence relevant to the meaning as would be understood by one skilled in the art at the time of the effective filing date of the patent application .... (2) Whether there is express intent in applicant's specification to limit the term, i.e., applicant's specification is not silent as to the meaning of such terms. (3) Whether the claim expressly limits the medium to "non- transitory" embodiments. 5 Appeal2014-002859 Application 12/501,423 ( 4) Whether the claim implicitly limits the medium to "non- transitory" embodiments. The most common form of this is the use of "means plus function" elements in the claim (i.e., a true Beauregard type claim). Such means plus function elements are limited by statute to the corresponding structure in the specification and equivalents thereof. Such a structure requirement limits the claim to non-transitory embodiments. Ex Parte Mewherter, 107 USPQ2d at 1860 n.5. To the extent argued in Appellants' Appeal Brief or Reply Brief, we have considered the various Mewherter factors and do not find the Examiner erred. Accordingly, we sustain the Examiner's rejection of claims 14--20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Issue Two In response to the Examiner's obviousness rejection of independent claims 1, 7, and 14 over Magdalin and Barton, Appellants argue "Barton is nonanalogous prior art that cannot be properly applied against the claimed invention," and further assert: The claimed invention is within the field of tagging systems for web modules. However, Barton is within the field of tagging multimedia contents (e.g., television shows). Thus, Burton is not within the same field of endeavor. (App. Br. 32, 33.) We are not persuaded that the Examiner errs in combining Barton and Magdalin. A prior art reference must either be in the field of applicant's endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Barton is directed to generating and maintaining tags 6 Appeal2014-002859 Application 12/501,423 describing multimedia content. (Barton Abstract.) We agree with the Examiner: In the instant case, the applicant's invention is of tagging web content for organization and labeling, i.e. allowing groups to tag web pages ... but one of ordinary skill in the art would recognize that the content is irrelevant to the meets and bounds of the applicant's field of endeavor and of the known problem, i.e. one may look not just to tagging web pages but to all web content including multimedia content. (Ans. 24.) Accordingly, we sustain the rejection of claims 1, 7, and 14. Issue Three Claims 2, 8 and 15 require: "determination of triviality of a proposed tag" based on one or more of certain specified tests, including whether the proposed tag is "part of a dictionary definition," rejecting tags that fail to satisfy the tests, and preliminarily accepting proposed tags that satisfy the tests. In rejecting these claims, the Examiner relies on the disclosure in Houghton of tagging Internet content by matching items in the content (e.g., words in an article) with potential categories stored in a database, and tagging such matches accordingly after resolving ambiguities or "false positives." (Final Act. 17; Houghton Abstract, i-fi-15, 29-31, 35, 42, 46-50.) Appellants argue the Examiner's findings on the scope and content of Houghton are in error, including: The notion of a "triviality of a proposed tag" is entirely absent from Houghton. . . . Houghton does not teach "rejecting any proposed tag that fails to satisfy any of the selected tests" and "preliminarily accepting any proposed tag that satisfies all of the selected tests." (App. Br. 35.) 7 Appeal2014-002859 Application 12/501,423 Being ambiguous is not the same as being trivial. Moreover, the ambiguity described by Houghton refers to the ambiguity of an entity being tagged - not the ambiguity of a proposed tag. (App. Br. 39.) [T]he "dictionary processing" of Houghton refers to the evaluation of entity names - not the evaluation/testing of proposed tags. (App. Br. 40.) Houghton does not describe the evaluation/testing of proposed tags. Instead, Houghton describes resolving the ambiguity of the meaning of certain entities - not proposed tags. (App. Br. 42.) None of these arguments, or the other arguments posed by Appellants, are persuasive. As the Examiner correctly finds, under the broadest reasonable interpretation of "determination of triviality of a proposed tag," the measures taken to disambiguate proposed tags as described in Houghton, including the "weeding out" of false positives, at least teach or suggest the limitations at issue. (Ans. 29; Houghton i-fi-15, 29, 35, 46.) Appellants argue that none of the required tests to determine triviality are disclosed in Houghton. (App. Br. 39--41.) This argument fails at least because the claims are satisfied if only one of the specified tests are taught or suggested ("selecting one or more tests"), and the Examiner correctly finds that Houghton discloses use of dictionaries to evaluate proposed tags. (Ans. 27- 28; Houghton i-fi-147--49.) Nor are Appellants correct in asserting that Houghton is directed to evaluation of entity names rather than of proposed tags - as Houghton explicitly discloses, after the matches between candidate entities and known entities are disambiguated and false positives are eliminated, "a database identifier of the corresponding known entity is 8 Appeal2014-002859 Application 12/501,423 associated with each member candidate entity ... (i.e., each candidate entity is tagged)." (Houghton i-f 46.) (Emphasis added.) In sum, Appellants have not persuaded us that the Examiner errs in rejecting claims 2, 8, and 15. Issue Four Claims 3, 6, 9, 12, 16, and 19 each require, inter alia, "determining whether the number of tags in the existing tag set exceeds a predetermined threshold." In finding this limitation taught or suggested by the cited references, the Examiner relies on the disclosure in Duman: "Next, an appropriate number of tags to be suggested [to describe resources] from the user's personal tag list ... and each of the group tag lists ... is calculated .... " (Final Act. 18; Duman i-f 58.) Appellants argue: Paragraph [0058] does not teach the claimed "determining whether the number of tags in the existing tag set exceeds a predetermined threshold." The Examiner's cited passage refers to calculating "an appropriate number of tags to be suggested from the user's personal tag list." The "number of tags" does not refer to the number of tags in the user's personal tag list- instead, it refers to the number of tags to be suggested. (App. Br. 42--43.) The Examiner responds: In this case, the claim is interpreted as placing a threshold limit upon the number of choices a user may make in his tagging procedure, i.e.[,] as including embodiments where a threshold number of choices are displayed as suggestions. The office considers this list as currently defined to be separate from the number of tags to be accepted or rejected. In this light, it is clear that Duman teaches a threshold that limits the existing tag set. (Ans. 34.) We agree with Appellants. The Examiner's explanation does not address the limitation of the claim. We are persuaded that the portion of 9 Appeal2014-002859 Application 12/501,423 Duman on which the Examiner relies does not teach or suggest the limitation at issue. On the record before us, we are constrained to not sustain the rejection. CONCLUSION For the reasons discussed above, we sustain the rejection of claims 14--20 pursuant to 35 U.S.C. § 101, and the Examiner's obviousness rejections of claims 1, 7, and 14 over Magdalin and Barton and of claims 2, 8, and 15 over Magdalin, Barton, and Houghton. For the reasons also discussed above, we do not sustain the obviousness rejection of claims 3, 9, and 16 over Magdalin, Barton, and Duman, or of claims 6, 12, and 19 over Magdalin, Barton, Houghton, and Duman. Furthermore, we do not sustain the obviousness rejection of claims 4, 5, 10, 11, 17, and 18 over Magdalin, Barton, and Duman, or of claims 13 and 20 over Magdalin, Barton, Houghton, and Duman, which claims are dependent, directly or indirect! y, from claims 3, 9, 12, 16, or 19. 3 DECISION The Examiner's rejection of claims 1, 2, 7, 8, and 14--20 is affirmed. The Examiner's rejection of claims 3---6 and 9-13 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)(l )(iv). 3 In the event of further prosecution, we note that claim 11, dependent from method claims, incorrectly claims a "system." 10 Appeal2014-002859 Application 12/501,423 AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation