Ex Parte Dubey et al

Patent Trials and Appeals Board

May 1, 2019

13689296 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/689,296 11/29/2012 San jay Sureshchandra Dubey
45839 7590 05/03/2019
Schwegman Lundberg & Woessner/ Linkedln/Microsoft
POBOX2938
MINNEAPOLIS, MN 55402
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.
900326-US-NP
(3080.104US1
CONFIRMATION NO.
1067
EXAMINER
ROBINSON, KYLE G
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/03/2019 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANJA Y SURESHCHANDRA DUBEY
and JOSEPH PAUL BETZ
Appeal2018-003747
Application 13/689,296 1
Technology Center 3600
Before JENNIFER L. McKEOWN, JASON J. CHUNG, and
MATTHEW J. McNEILL, 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
Examiner's Final Rejection of claims 1-23. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to combining sponsored and unsponsored
content in a social network. Spec. ,r 1. Claim 1 is illustrative of the
invention and is reproduced below:
1. A memory device, the memory device
communicatively coupled to a processor and comprising
1 According to Appellants, Linkedin, Corporation is the real party in interest.
App. Br. 2.
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instructions which, when performed on the processor,
cause the processor to perform operations comprising:
obtain an unsponsored content group from each of a
plurality of unsponsored content group sources, each
unsponsored content group comprising at least two
unsponsored content elements, wherein the unsponsored
content groups are obtained based on a relevance of at
least two unsponsored content elements of at least two
unsponsored content groups to a user profile characteristic
of a user;
generate a master content group based on the
unsponsored content groups and a sponsored content
group, the sponsored content group comprising at least one
sponsored content element and an associated bid, wherein
the master content group is generated based on the
relevance of the at least two unsponsored content elements
and a relevance of the sponsored content element to the
user profile characteristic of the user and the associated
bid·
' reformat the content items of the master content
group according to a uniform grammatical format by
individually populating a plurality of fields, arranged in a
predetermined grammatical relationship with respect to
one another, from words included in the respective content
items; and
transmit the master content group as reformatted to
a user device associated with the user.
REJECTIONS AT ISSUE
Claims 1-23 stand rejected under 35 U.S.C. § 101 as being patent
ineligible. Final Act. 2--4.
Claims 1, 6-8, 11, 16-18, and 23 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Bratsos (US 6,766,315 B 1;
issued July 20, 2004), Lymberopoulos (US 2012/0323876 Al; filed June 16,
2011), Tarantino (US 2010/0125507 Al; published May 20, 2010), Zamir
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(US 7,693,827 B2; issued Apr. 6, 2010), and O'Neil (US 2013/0073280 Al;
filed Sept. 21, 2011 ). Final Act. 4--9.
Claims 2 and 12 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Bratsos, Lymberopoulos, Tarantino,
Zamir, O'Neil, and Modzelewski (US 2009/0144243 Al; published June 4,
2009). Final Act. 10-11.
Claims 3-5, 9, 10, 13-15, 19, and 20 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Bratsos,
Lymberopoulos, Tarantino, Zamir, O'Neil, and Huang (US 2012/0284114
Al; filed May 6, 2011). Final Act. 11-14.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bratsos, Lymberopoulos, Tarantino,
Zamir, O'Neil, and Knittel (US 2007 /0260627 Al; filed Nov. 8, 2007).
Final Act. 14.
ANALYSIS
I. Claims 1-23 Rejected Under 35 U.S.C. § 101
A. The Examiner's Conclusions and Appellants' Arguments
The Examiner concludes the present claims are analogous to TL!
Communications LLC Patent Litigation v. AV Automotive, L.L.C. 823 F.3d
607 (Fed. Cir. 2016), which recites claims directed to certain methods of
organizing human activity. Final Act. 2-3. 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 a computer
using generic components that are well-understood, routine, and
conventional activities previously known to the industry. Id. at 3--4.
Appellants argue the present claims recite specific operations that do
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not preempt distributing sponsored content alongside unsponsored content,
in a specific format. App. Br. 14, 16. Additionally, Appellants argue,
similar to the claims at issue in Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016), the present claims focus on an improvement to
computer functionality ( e.g., the reformatted master content group provides
an efficient, consistent, and easy to process graphical display). App. Br. 15-
16.
Appellants argue the present claims subject matter is related to
problems that are necessarily rooted in computer technology and specifically
arise from the realm of online social networking. App. Br. 16-17.
Furthermore, Appellants argue the Examiner provides no basis for asserting
that such elements are conventionally and generically arranged in online
social networking systems. App. Br. 17. We agree with Appellants' last
argument.
B. 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 Bankint'l, 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, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
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 176; 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
§ 2106.0S(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.
C. Discussion
1. Step 2A, Prong 1 (Alice Step 1)
We consider claim 1 (with emphasis), reproduced below.
1. A memory device, the memory device
communicatively coupled to a processor and comprising
instructions which, when performed on the processor,
cause the processor to perform operations comprising:
obtain an unsponsored content group from each of a
plurality of unsponsored content group sources, each
unsponsored content group comprising at least two
unsponsored content elements, wherein the unsponsored
content groups are obtained based on a relevance of at
least two unsponsored content elements of at least two
unsponsored content groups to a user profile
characteristic of a user;
generate a master content group based on the
unsponsored content groups and a sponsored content
group, the sponsored content group comprising at least
one sponsored content element and an associated bid,
wherein the master content group is generated based on
the relevance of the at least two unsponsored content
elements and a relevance of the sponsored content element
to the user profile characteristic of the user and the
associated bid;
reformat the content items of the master content
group according to a uniform grammatical format by
individually populating a plurality of fields, arranged in a
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predetermined grammatical relationship with respect to
one another, from words included in the respective content
items; and
transmit the master content group as reformatted to
a user device associated with the user.
We conclude the emphasized text above is directed to the generation
of a master content group based on a relevance of at least two unsponsored
content elements and a relevance of a sponsored content element to a user
profile characteristic and reformatting of the content items of the master
content group according to a uniform grammatical format. That is, the
emphasized text is akin to targeting advertising to a user profile, which is a
commercial interactions (including advertising). These commercial
interactions (including advertising) are certain methods of organizing human
activity. See Memorandum. These certain methods of organizing human
activity are an abstract idea. See id.
Because the present claims recite an abstract idea, we proceed to
prong 2.
2. Step 2A, Prong 2 (Alice Step 1)
The present claims do not integrate the abstract idea into a practical
application because it does not impose any meaningful limits on practicing
the abstract idea. In particular, the present claims do not recite
improvements to the functioning of a computer or to any other technology or
technical field.
Unlike the claims of Enfish, the present claims are not directed to "a
specific improvement to the way computers operate, embodied in the self-
referential table." Enfish, 822 F.3d at 1336. Instead, the present claims
focus on abstract ideas that merely use computers as tools.
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Specifically, Appellants' argument about a specific improvement in
computer capabilities because the reformatted master content group provides
an efficient, consistent, and easy to process graphical display (App. Br. 15-
16) is unpersuasive because the present claims are focused on improving the
relevance of data being fed to and processed by the computer, not improving
the computer itself. And "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,
13 7 6 (Fed. Cir. 2016) ( citation omitted). Contrary to Appellants' arguments,
the present claims are directed to an abstract idea-not an improvement to
computer functionality, as Appellants assert. App. Br. 15-16.
Additionally, we disagree with Appellants' argument that the present
claims are patent eligible because they do not preempt any abstract idea
(App. Br. 14, 16); while preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See Fair Warning IP, LLC v.
Iatric Systems, 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 step 2A,
prong 2. Because the present claims are directed to an abstract idea, we
proceed to Step 2B.
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3. Step 2B (Alice Step 2)
Appellants' argument that the present claims' subject matter is related
to problems that are necessarily rooted in computer technology and
specifically arise from the realm of online social networking (App. Br. 10-
13; Reply Br. 3--4), is unpersuasive for at least the reasons discussed supra
in § C.2. That is, the present claims focus on abstract ideas that merely use
computers as tools. And "a claim for a new abstract idea is still an abstract
idea." Synopsys, Inc., 839 F.3d at 1151.
Turning to whether Appellants' argument that the Examiner provides
no basis for asserting that such elements are conventionally and generically
arranged in online social networking systems (App. Br. 17), we agree the
Examiner has not established, on this record, that these elements, considered
individually and as an ordered combination, are well-understood, routine,
and conventional. Regarding a determination that "additional" claim
elements are merely routine and conventional, the Federal Circuit has
explained that:
Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a
factual determination. Whether a particular technology is
well-understood, routine, and conventional goes beyond what
was simply known in the prior art. The mere fact that something
is disclosed in a piece of prior art, for example, does not mean it
was well-understood, routine, and conventional.
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).
To find an element to be well understood, routine, or conventional, the
Examiner must support the rejection with one of the following:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
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demonstrates the well-understood, routine, conventional nature of
the additional element(s).
2. A citation to one or more of the court decisions discussed in MPEP
§ 2106.05( d)(II) as noting the well-understood, routine,
conventional nature of the additional element( s ).
3. A citation to a publication that demonstrates the well-understood,
routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-
understood, routine, conventional nature of the additional
element( s ).
Berkheimer Memo. 2
The Examiner does not support the rejection with one of these
statements or citations. For these reasons, we find the rejection
insufficiently supported on the record before us. Accordingly, we do not
sustain the rejection of: (1) independent claims 1, 11, and 23; and
(2) dependent claims 2-10 and 12-22 under 35 U.S.C. § 101.
II. Claims 1-23 Rejected Under 35 U.S.C. § 103
A. Claims 1, 6---8, 11, 16--18, and 23
1. The Combination of Bratsos and Lymberopoulos
The Examiner finds Bratsos teaches unsponsored content group
sources (Final Act. 4--5) and that it would have been obvious to a person
having ordinary skill in the art at the time of the invention ("PHOSITA") to
combine Bratsos and Lymberopoulos' obtaining an ordered set of search
2 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018) available at:
https ://www. uspto. gov/ sites/ default/files/ documents/memo-berkheimer-
20180419 .PDF
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results to provide a more personalized search experience. Final Act. 5
( citing Lymberopoulos, claim 1, ,r 1 ).
Appellants argue that combining Bratsos with L ymberopoulos is
based on improper3 hindsight because Bratsos does not teach a user profile
characteristic of a user who enters a search term, so there is no basis for
saying that a PHOSITA would make the leap to combine Lymberopoulos.
Appellants argue L ymberopoulos teaches an ordered set of search results
rather than content "obtained based on a relevance." App. Br. 24--25. We
disagree with Appellants.
As an initial matter, the Examiner finds Lymberopoulos's claim 1
teaches obtaining an ordered search result, which teaches the limitation
"obtained based on a relevance" recited in claim 1. Final Act. 5 ( citing
Lymberopoulos, claim 1, ,r 1 ); Ans. 6.
Regarding Appellants' hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight. In KSR
International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme Court
guides that "[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning." KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court
qualified the issue of hindsight by stating, "[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it." Id.
3 Throughout the Appeal Brief and Reply Brief, Appellants appear to argue
only "hindsight" rather than "improper hindsight." We construe Appellants'
arguments as Appellants meaning to argue "improper hindsight."
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In reviewing the record here, we find Appellants have not identified
any knowledge relied upon by the Examiner that was gleaned only from
Appellants' disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of application filing. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, the Examiner
relies on paragraph 1 of Lymberopoulos for their finding that a PHOSITA
would have combined Bratsos and Lymberopoulos. Final Act. 5 (citing
Lymberopoulos, claim 1, ,r 1 ). Therefore, the Examiner's knowledge was
not gleaned only from Appellants' disclosure.
Moreover, Appellants have not provided persuasive evidence that
combining the respective teachings of the references ( as proffered by the
Examiner - Final Act. 5) would have been "uniquely challenging or difficult
for one of ordinary skill in the art," or that such a combination would have
"represented an unobvious step over the prior art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor have
Appellants provided any objective evidence of secondary considerations,
which, as our reviewing court explains, "operate[] as a beneficial check on
hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Accordingly, we are not persuaded of error in the Examiner's finding
that Lymberopoulos teaches the limitation "obtained based on a relevance"
and the Examiner's finding that a PHOSIT A would have combined Bratsos
and Lymberopoulos.
2. The Combination of Bratsos and Zamir
The Examiner finds that it would have been obvious to a PHOSITA to
combine Bratsos and Zamir to combine unsponsored and sponsored content
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so as to provide advertisers an opportunity to present content that interests a
user. Final Act. 5 ( citing Zamir, 2:56-58).
Appellants argue that combining Bratsos and Zamir is based on
improper hindsight because there is no basis in Bratsos for assuming that the
teaching of Bratsos is improved by incorporating sponsored advertising.
App. Br. 25-26. We disagree with Appellants.
We agree with the Examiner's finding that it would have been
obvious to a PHOSIT A to combine Bratsos with Zamir to combine
unsponsored and sponsored content so as to provide advertisers an
opportunity to present content that interests a user. Final Act. 5 ( citing
Zamir, 2:56-58). Furthermore, Appellants' argument that there is no basis
to combine Bratsos and Zamir is based on improper hindsight is conclusory.
Appellants have not identified any knowledge relied upon by the
Examiner that was gleaned only from Appellants' disclosure and that was
not otherwise within the level of ordinary skill in the art at the time of
application filing. See In re McLaughlin, 443 F.2d at 1395.
Furthermore, Appellants have not provided persuasive evidence that
combining the respective teachings of the references ( as proffered by the
Examiner - Final Act. 5) would have been "uniquely challenging or
difficult for one of ordinary skill in the art," or that such a combination
would have "represented an unobvious step over the prior art." Leapfrog,
485 F.3d at 1162. Nor have Appellants provided any objective evidence of
secondary considerations, which, as our reviewing court explains, "operate[]
as a beneficial check on hindsight." Cheese Systems, Inc .. , 725 F.3d at 1352.
Accordingly, we are not persuaded of error in the Examiner's finding
that a PHOSIT A would have combined Bratsos and Zamir.
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3. The Combination of Bratsos and Tarantino
The Examiner finds that it would have been obvious to a PHOSITA to
combine Bratsos and Tarantino' s presenting content similar to a user's
viewing history to recommend similar content to a user's interest. Final Act.
6 (citing Tarantino ,r,r 4, 38, and 39).
Appellants argue the combination of Bratsos and Tarantino is based
on improper hindsight. App. Br. 26. Appellants argue combining Bratsos
and Tarantino requires changing the function of Tarantino because Tarantino
pertains to relevance to a target content item previously presented to a user,
whereas claim 1 requires relevance to a user profile characteristic. Id. at 26-
27. We disagree with Appellants.
At the outset, the Examiner finds, and we agree, Tarantino's
presenting content similar to a user's viewing history to recommend similar
content to a user's interest teaches or suggests the limitation "relevance ...
to a user profile characteristic" recited in claim 1. Ans. 6-7; Final Act. 6
( citing Tarantino ,r,r 4, 38, 39). Thus, we disagree with Appellants that
combining Bratsos and Tarantino requires changing the function of
Tarantino (App. Br. 26-27).
As for Appellants' hindsight argument (App. Br. 26), this argument is
unpersuasive because it is conclusory. In addition, when reviewing the
record here, we find Appellants have not identified any knowledge relied
upon by the Examiner that was gleaned only from Appellants' disclosure
and that was not otherwise within the level of ordinary skill in the art at the
time of application filing. See In re McLaughlin, 443 F.2d at 1395.
Additionally, Appellants have not provided persuasive evidence that
combining the respective teachings of the references ( as proffered by the
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Examiner - Final Act. 6) would have been "uniquely challenging or
difficult for one of ordinary skill in the art," or that such a combination
would have "represented an unobvious step over the prior art." Leapfrog,
485 F.3d at 1162. Nor have Appellants provided any objective evidence of
secondary considerations, which, as our reviewing court explains, "operate[]
as a beneficial check on hindsight." Cheese Systems, Inc., 725 F.3d at 1352.
Accordingly, we are not persuaded of error in the Examiner's finding
that a PHOSITA would have combined Bratsos and Tarantino.
4. The Combination of Bratsos and O'Neil
The Examiner finds that it would have been obvious to a PHOSITA to
combine Bratsos and O'Neil to generate sentences using objects and actions
thereby allowing user experiences with external systems to be integrated in a
social networking system. Final Act. 7 (citing O'Neil ,r,r 7, 65----67).
Appellants argue the combination of Bratsos and O'Neil is based on
improper hindsight because Bratsos pertains to intelligent internet searching
dealing with hidden databases and bears no relationship to social
networking. App. Br. 27-28. We disagree with Appellants.
Appellants have not identified any knowledge relied upon by the
Examiner that was gleaned only from Appellants' disclosure and that was
not otherwise within the level of ordinary skill in the art at the time of
application filing. See In re McLaughlin, 443 F.2d at 1395. In this case, the
Examiner relies on paragraphs 7, 65, and 66 of O'Neil for their finding that a
PHOSITA would have combined Bratsos and O'Neil. Final Act. 7 (citing
O'Neil ,r,r 7, 65, 67). Therefore, the Examiner's knowledge was not gleaned
only from Appellants' disclosure.
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Additionally, Appellants have not provided persuasive evidence that
combining the respective teachings of the references ( as proffered by the
Examiner - Final Act. 7) would have been "uniquely challenging or
difficult for one of ordinary skill in the art," or that such a combination
would have "represented an unobvious step over the prior art." Leapfrog,
485 F.3d at 1162. Nor have Appellants provided any objective evidence of
secondary considerations, which, as our reviewing court explains, "operate[]
as a beneficial check on hindsight." Cheese Systems, Inc., 725 F.3d at 1352.
Accordingly, we are not persuaded of error in the Examiner's finding
that a PHOSITA would have combined Bratsos and O'Neil. In addition, we
sustain the Examiner's rejection of: (1) independent claims 1, 11, and 23;
and (2) dependent claims 6-8 and 16-18 under 35 U.S.C. § 103.
B. Claims 2 and 12
The Examiner finds that it would have been obvious to a PHOSITA to
combine the base combination and Modzelewski to remove duplicate data
that results in an improved system that diversifies content viewed by users as
well as preventing spam. Final Act. 10 ( citing Modzelewski ,r 163).
Appellants argue that the combination of the base combination and
Modzelewski is based on improper hindsight because Bratsos does not
appear to hint at the existence of duplication. App. Br. 29-30. We disagree
with Appellants.
Appellants have not identified any knowledge relied upon by the
Examiner that was gleaned only from Appellants' disclosure and that was
not otherwise within the level of ordinary skill in the art at the time of
application filing. See In re McLaughlin, 443 F.2d at 1395. In this case, the
Examiner relies on paragraph 163 of Modzelewski for their finding that a
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PHOSITA would have combined the references from independent claim 1 's
rejection and Modzelewski. Final Act. 10 (citing Modzelewski ,r 163).
Therefore, the Examiner's knowledge was not gleaned only from
Appellants' disclosure.
Additionally, Appellants have not provided persuasive evidence that
combining the respective teachings of the references ( as proffered by the
Examiner - Final Act. 10) would have been "uniquely challenging or
difficult for one of ordinary skill in the art," or that such a combination
would have "represented an unobvious step over the prior art." Leapfrog,
485 F.3d at 1162. Nor have Appellants provided any objective evidence of
secondary considerations, which, as our reviewing court explains, "operate[]
as a beneficial check on hindsight." Cheese Systems, Inc., 725 F.3d at 1352.
Accordingly, we sustain the Examiner's rejection of claims 2 and 12
under 35 U.S.C. § 103.
C. Claims 3-5, 9, 10, 13-15, 19, and 204
The Examiner finds that it would have been obvious to a PHOSITA to
combine the base combination and Huang to show the highest relevance first
that relate to search results. Final Act. 11-12.
Appellants argue that the combination of the base combination and
Huang is based on improper hindsight because the Examiner
mischaracterizes the term "relevance" by relating it to "relevance of a search
term" instead of "relevance to a user profile characteristic of a user." We
4 Although Appellants label this as claims 21 and 22 in their heading (App.
Br. 31), we interpret this as Appellants arguing claims 3-5, 9, 10, 13-15, 19,
and 20 because the arguments in the text pertain to claims 3-5, 9, 10, 13-15,
19, and 20.
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disagree with Appellants.
In this case, the base combination includes the Tarantino reference,
which, as stated supra in§ II.A.3, teaches showing relevant content to the
search results of a user's viewing history (i.e., user's profile). The Examiner
relies on Huang to teach highest relevance. And we agree with the
Examiner's finding that it would have been obvious to a PHOSIT A to
combine the base combination and Huang to show the highest relevance first
that relate to search results of a user's viewing history (i.e., user's profile).
Final Act. 11-12.
Accordingly, we sustain the Examiner's rejection of claims 3-5, 9, 10,
13-15, 19, and 20 under 35 U.S.C. § 103.
D. Claims 21 and 22
The Examiner finds that it would have been obvious to a PHOSIT A to
combine the base combination and Knittel to obtain end-user characteristics
from an end-user profile storage component thereby allowing presentation of
personalized content to users. Final Act. 14 ( citing Knittel ,r 6).
Appellants argue that the combination of the base combination and
Knittel is based on improper hindsight because first relies on Bratsos, which
does not teach a user profile characteristic, then relies on Lymberopoulos to
teach a user profile characteristic, but does not disclose a user profile
characteristic including user profile data, then relies on Knittel to teach user
profile data. We disagree with Appellants.
Appellants have not identified any knowledge relied upon by the
Examiner that was gleaned only from Appellants' disclosure and that was
not otherwise within the level of ordinary skill in the art at the time of
application filing. See In re McLaughlin, 443 F.2d at 1395. In this case, the
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Examiner relies on paragraph 6 of Knittel for their finding that a PHOSIT A
would have combined the references from independent claim 1 's rejection
and Knittel. Final Act. 14 ( citing Knittel ,r 6).
Additionally, Appellants have not provided persuasive evidence that
combining the respective teachings of the references ( as proffered by the
Examiner - Final Act. 10) would have been "uniquely challenging or
difficult for one of ordinary skill in the art," or that such a combination
would have "represented an unobvious step over the prior art." Leapfrog,
485 F.3d at 1162. Nor have Appellants provided any objective evidence of
secondary considerations, which, as our reviewing court explains, "operate[]
as a beneficial check on hindsight." Cheese Systems, Inc., 725 F.3d at 1352.
Accordingly, we sustain the Examiner's rejection of claims 21 and 22
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. § 4I.37(c)(l)(iv).
DECISION
We reverse the Examiner's decision rejecting claims 1-23 under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-23 under
35 U.S.C. § 103.
Because we affirm on at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject claims 1-
23. See 37 C.F.R. § 4I.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. § 1.136(a)(l )(iv).
AFFIRMED
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