Ex Parte DeLuca et al

Patent Trials and Appeals Board

Jan 31, 2016

12560736 - (D) (P.T.A.B. Jan. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/560,736 09/16/2009
63675 7590 02/02/2016
PATTERSON & SHERIDAN, LLP/IBM SVL
24 Greenway Plaza
SUITE 1600
HOUSTON, TX 77046-2472
FIRST NAMED INVENTOR
Lisa Seacat DeLuca
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.
S VL92009003SUS1 1934
EXAMINER
THATCHER, PAULA
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
02/02/2016 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):
P AIR_eofficeaction@pattersonsheridan.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LISA SEACAT DELUCA and STEVEN M. MILLER
Appeal2014-001916
Application 12/560,736
Technology Center 2100
Before ALLEN R. MacDONALD, CARLA M. KRIVAK, and
MICHAEL M. BARRY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-001916
Application 12/560,736
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
9-27 and 30-32. Claims 28 and 29 are not rejected. Claims 1-8 have been
cancelled. App. Br. 30. We have jurisdiction under 35 U.S.C. § 6(b ).
Exemplary Claims
Exemplary claims 9, 25, and 26 under appeal read as follows
(emphasis added):
9. A computer-readable storage medium containing a program which,
when executed on a processor, performs an operation for generating a
webpage for display, the operation comprising:
receiving, from a user, a request to view the webpage
comprising a plurality of portlets;
identifying a time of the request;
retrieving a browsing history of the user and an interaction
history of the user with at least one of the plurality of portlets;
arranging the plurality of portlets on the \vebpage based on the
browsing history, the interaction history, and the identified time of
the request, wherein the arranging is performed by operation of the
processor; and
outputting the webpage for display, responsive to the request.
25. The computer-readable storage medium of claim 9, whereby an
arrangement of the portlets in the webpage is generated based on the
interaction history of the user with the portlets in the webpage, the
interaction history being qualified by the time period matching that of
the request from the user.
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26. The computer-readable storage medium of claim 25, whereby
generation of the arrangement of the portlets in the webpage is further
based on the browsing history of the user, wherein the browsing
history of the user is different from the interaction history of the
user, the browsing history being qualified by the time period
matching that of the request from the user, the browsing history
specifying one or more websites visited the [sic] by the user
independent of any interaction between the user and the portlets,
wherein the one or more websites are associated with a portlet of the
plurality of portlets.
Rejections on Appeal 1
1. The Examiner rejected claims 9 and 17 provisionally on the
ground of non-statutory obviousness-type double patenting as being
unpatentable over Claim 1 of copending U.S. Application No. 11/957, 103
(Final Act. 19).2
2. The Examiner rejected claims 30-32 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
(Final Act. 3; Advisory Act. 2 (Apr. 19, 2013); Ans. 2-3). 3
3. The Examiner rejected claims 9-11, 13, 17-19, 21, and 25
under 35 U.S.C. § 102(e) as being anticipated by Dewar et al. (US
2009/0158166 Al) (Final Act. 7-11).4
1 The rejections of claims 28-32 under 35 U.S.C. § 103(a) have been
withdrawn. Ans. 19. The rejection of claims 27 and 28 under
35 U.S.C. § 112, first paragraph has not been maintained. Advisory Action.
2 Arguments are not presented for this provisional rejection. Therefore, we
affirm the Examiner's rejection proforma. Except for our ultimate decision,
this rejection of these claims is not discussed further herein.
3 The rejection of claims 31 and 32 was added in the Answer at pages 2-3.
4 Separate patentability is not argued for claims 10, 11, 13, 17-19, 21,
and 25. See App. Br. 11. Except for our ultimate decision, the Examiner's
rejection of these claims is not discussed further herein.
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Application 12/560,736
4. The Examiner rejected claims 26 and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Dewar and Chua
(US 2009/0276716 Al) (Final Act. 10-11).5
5. The Examiner rejected claims 12, 15, 20, and 23 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Dewar
and Sah et al. (US 2007/0204010 Al) (Final Act 7-8). 6
6. The Examiner rejected claims 14 and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Dewar and Flores et
al. (US 2005/0021765 Al) (Final Act. 8-9).7
7. The Examiner rejected claims 16 and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Dewar and TDobes
(Scheduler 1 drupal.org (September 28, 2003), http://web.archive.org/
web/20051212044002/http://drupal.org/proj ect/scheduler, hereinafter
TDobes) (Final Act. 9-10). 8
Appellants · Contentions
1. Appellants contend the Examiner erred in rejecting claim 30
under 35 U.S.C. § 112, first paragraph, for the reasons set forth at pages 26-
28 of the Appeal Brief.
5 Separate patentability is not argued for claim 27. Except for our ultimate
decision, the rejection of this claim is not discussed further herein.
6 In addressing these § 103 rejections, Appellants merely reference the
arguments directed to the§ 102 rejection. Without more, the patentability of
these claims rejected under 103(a) is not separately argued from that of their
base claims rejected on a separate basis under§ 102. Except for our ultimate
decision, the rejections of these claims are not discussed further herein.
7 See supra note 8.
8 See supra note 8.
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Application 12/560,736
2. Appellants contend the Examiner erred in rejecting claim 9
under 35 U.S.C. § 102(e) because
Dewar does not disclose at least the following limitation recited
in independent claim 9:
"[A ]rranging the plurality of portlets on the
webpage based on the browsing history, the
interaction history, and the identified time of the
t " reques ....
The cited portions of Dewar generally discuss monitoring user
interactions associated with modules displayed on a content
aggregated webpage, see Dewar, i-f [0027]. At the same time,
even assuming, arguendo, that the user interactions in Dewar
correspond to the recited "interaction history", [Dewar] is still
silent on the modules being arranged based on the interaction
history and based further on a browsing history of the user. In
this regard, [Dewar] does not teach any browsing history
serving as a further basis - apart from the interaction history -
in rearranging the modules.
(App. Br. 10-11).
3. Appellants contend the Examiner erred in rejecting claim 26
because
The cited portions of Chua generally discuss, inter alia,
assigning priority values to content clusters based on a browser
history, see Chua, i-fi-1 [0007] and [0015]. At the same time,
even assuming, arguendo, that the browser history in Chua
corresponds to the recited browsing history, the rationale of the
Office for the proposed modification of Dewar using Chua is
defective ....
Here, [Dewar], even in view of Chua, does not teach any
browsing history serving as a further basis - apart from the
interaction history - in rearranging the portlets, where the
browsing history specifies one or more websites visited by the
user independent of any interaction between the user and the
portlets. In this regard, Applicants submit it would not have
been obvious to a person skilled in the art that visits to websites
- independent of any interaction between the person and the
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Application 12/560,736
portlets - would serve as a further basis, apart from the
interaction history, in rearranging the portlets. The visits
serving as a further basis would not have been obvious because
the visits are independent of the portlet interaction and yet still
influence arrangement of the portlets. Neither [Dewar] nor
Chua disclose adapting content based on any such further basis,
and furthermore, the Office has not articulated any rational
underpinning that would support the legal conclusion of such a
further basis being obvious in view of [Dewar] and Chua.
(App. Br. 15-16).
Issues on Appeal
Did the Examiner erred in rejecting claim 30 under 35 U.S.C. § 112,
first paragraph?
Did the Examiner err in rejecting claim 9 as being anticipated under
35 U.S.C. § 102(e) because Dewar fails to describe the limitation argued by
Appellants?
Did the Examiner err in rejecting claim 26 as being unpatentable
under 35 U.S.C. § 103(a) because the prior art fails to render obvious the
limitation argued by Appellants?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred.
As to Appellants' above contention 1, we agree with Appellants. For
the reasons set forth by Appellants, claim 30 complies with the requirements
of 35 U.S.C. § 112, first paragraph.
As to Appellants' above contention 2, we disagree. Appellants'
Specification at i-f 37 states that the "interaction history" may record
(1) interactions between the user and the portlets, and (2) websites and/or
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webpages visited by the user (e.g., a browsing history of the user). Further,
Table I at i-f 39 shows that in addition to the "browsing history of the user"
and websites/webpages visited by the user, the "interaction history" may
record the "Access time" of that visit. That is, Appellants' Specification
shows the claimed "browsing history" and "identified time of the request" as
part of the overall "interaction history."
We disagree with Appellants' reading of the Dewar reference. Rather,
an "interaction history" is shown as monitoring user interactions (Dewar
i-f 27) which are used to assign rank values to the modules (Dewar i-f 28).
The interactions including "clicking on a hyperlink" (browser history) and
numerous other interactions with the modules (Dewar i-f 27). Also, the
assignment of rank values can be based on a "time or seasonal usage
pattern" (time of a request) of the user interactions with modules accessed
by the user (Dewar i-f 29).
To the extent that Appellants are arguing the "interaction history" and
"browsing history" must be read as completely distinct, we find no basis for
such a construction in either Appellants' claim 9 or Specification.
As to Appellants' above contention 3, we disagree. Appellants
premise their arguments on a narrow construction of claim 26 that requires a
level of independence between the "browsing history" and "interaction
history" which we do not find supported in Appellants' Specification.
However, even adopting this narrow construction, we agree with the
Examiner that a browsing history independent from any interaction history is
used in Chua to form "content clusters" (which are analogous to Appellants'
portlets ), and that Chua assigns priority values to the clusters based on that
browsing history. Chua i-fi-17 and 15. We agree with the Examiner that
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Application 12/560,736
based on these findings it would have been obvious to arrange (prioritize)
the display of portlets based not just on the browsing history that may also
include interaction history as taught by Dewar, but also based on an
independent browsing history shown by Chua. We also agree with, and
adopt, the Examiner's findings and conclusion on the motivation to combine
Dewar and Chua (Final Act. 11; Ans. 20-21).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 9-11, 13, 17-19,
21, and 25 as being anticipated under 35 U.S.C. § 102(e).
(2) The Examiner has not erred in rejecting claims 12, 14--16, 20, 22-
24, 26, and 27 as being unpatentable under 35 U.S.C. § 103(a).
(3) Appellants have established that the Examiner erred in rejecting
claims 30-32 as failing to comply with the written description requirement
under 35 U.S.C. § 112, first paragraph.
(4) Claims 30-32 have not been shown to be unpatentable.
(5) Claims 9-27 are not patentable.
DECISION
The Examiner's provisional rejection of claims 9 and 17 on the
ground of nonstatutory obviousness-type double patenting is summarily
affirmed.
The Examiner's rejection of claims 30-32, as failing to comply with
the written description requirement 35 U.S.C. § 112, first paragraph, is
reversed.
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Appeal2014-001916
Application 12/560,736
The Examiner's rejection of claims 9-11, 13, 1 7-19, 21, and 2 5 as
being anticipated under 35 U.S.C. § 102(e) is affirmed.
The Examiner's rejections of claims 12, 14--16, 20, 22-24, 26, and 27
as being unpatentable under 35 U.S.C. § 103(a) are affirmed.
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-IN-PART
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