Ex Parte Dumais et al

Patent Trial and Appeal Board

Nov 28, 2018

12488594 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/488,594 06/22/2009
69316 7590 11/30/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Susan T. Dumais
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.
326769.01 9900
EXAMINER
WILLIS, AMANDA LYNN
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSAN T. DUMAIS, JONATHAN LOUIS ELSAS,
and DANIEL JOHN LIEBLING 1
Appeal2018-000558
Application 12/488,594
Technology Center 2100
Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3, 5-9, 11, 12, 14-16, 19, 21, 23-25, and 27-29, which
are all the claims pending in this application. Claims 2, 4, 10, 13, 17, 18, 20,
22, and 26 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC. App. Br. 2.
Appeal2018-000558
Application 12/488,594
STATEMENT OF THE CASE
Introduction
Appellants' application relates to a search engine that assigns
relevance scores to documents based on changes to the documents over time.
Spec. ,r,r 5-9. Claim 1 illustrates the appealed subject matter and reads as
follows:
1. A method performed by at least one computing device
that executes a search engine, the method comprising:
receiving, via an input interface of the search engine, a
query that comprises a term;
assigning a relevance weight to a document based upon a
term classification assigned to the term in the document, the
term classification being representative of a length of time that
the term has been present in the document over a window of
time, wherein the relevance weight is indicative of relevance of
the document with respect to the query; and
causing a ranked list of search results to be presented on
a display responsive to assigning the relevance weight to the
document, the ranked list of search results comprises the
document, wherein a position of the document in the ranked list
of search results is based upon the relevance weight assigned to
the document.
The Examiner's Rejections
Claims 1, 3, 5-9, 11, 12, 14-16, 19, 21, 23-25, and 27-29 stand
rejected under 35 U.S.C. § 101 as being directed to ineligible subject matter.
Final Act. 2-6.
Claims 1, 3, 5-9, 11, 14-16, 19, 21, 23-25, and 27-29 stand rejected
under 35 U.S.C. § I03(a) as unpatentable over Acharya et al. (US
2007/0100817 Al; May 3, 2007) and Doganata et al. (US 2003/0220913 Al;
Nov. 27, 2003). Final Act. 6-22.
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Application 12/488,594
Claim 12 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Acharya, Doganata, and Lu et al. (US 2007/0185858 Al; Aug. 9,
2007). Final Act. 23.
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 2355-57. If the claim is directed to a judicial exception,
such as an abstract idea, the second step is to determine whether additional
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elements in the claim "'transform the nature of the claim' into a patent-
eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This
second step is described as "a search for an "'inventive concept"'-i.e., an
element or combination of elements that is ' ... significantly more than ...
the [ineligible concept] itself."' Id. (alteration in original) (quoting Mayo,
566 U.S. at 72-73).
Alice Step One
"[T]he first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1854)). "We therefore look to whether
the claims ... focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
In the final rejection, the Examiner finds claim 1 is directed to the
abstract idea of "using categories to organize, store, and transmit
information." Final Act. 2. In the Answer, the Examiner finds claim 1 is
directed to the abstract idea of"[ o ]rganizing information through
mathematical correlations." Ans. 2. The Examiner finds the additional
claim limitations provide further detail regarding how to mathematically
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correlate the data, extra-solution activity, and generic computer components
executing the abstract idea using well-understood, conventional activities
previously known to the industry. Id. at 3. The Examiner also finds claim 1
recites an algorithm that helps process data, not an improvement in
technology. Id. at 4.
Appellants argue the Examiner erred in finding claim 1 is directed to
an abstract idea because the focus of the claim is on an improvement in
computer capabilities. See App. Br. 9-12 (citing Enfzsh, 822 F.3d 1327). In
particular, Appellants argue there is no real world analog to the claimed
invention, which improves search engines by assigning relevance weights
based on temporal features of documents not previously considered when
outputting search results. Id. at 9. Appellants argue conventional search
engines failed to contemplate how occurrences of terms in documents
changed over time, and claim 1 improves search engines by differentially
weighing the relevance of documents based on changes in terms in the
documents over time. Id. at 9-12.
Appellants have persuaded us of Examiner error. The Examiner finds
claim 1 is directed to the abstract idea of "organizing information through
mathematical correlations." Ans. 2. We agree with Appellants (see App.
Br. 7-9) that the Examiner's description of the abstract idea is at too high a
level of abstraction and untethered to the recited claim language. Claim 1
recites a method of executing a search engine, including "receiving ... a
query that comprises a term." The method also includes "assigning a
relevance weight to a document based upon a term classification ...
representative of a length of time that the term has been present in the
document over a window of time." The method also includes "causing a
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ranked list of search results to be presented on a display ... wherein a
position of the document in the ranked list of search results is based upon the
relevance weight assigned to the document." In other words, claim 1 recites
changing the manner in which a search engine ranks documents in its result
list based on the length of time a term in the search query has been present in
the documents.
The Examiner's distillation of this idea into the abstract idea of
"organizing information through mathematical correlations" fails to consider
the claim as a whole. "[D]escribing the claims at such a high level of
abstraction and untethered from the language of the claims all but ensures
that the exceptions to§ 101 swallow the rule." Enfish, 822 F.3d at 1337
( citing Alice, 134 S. Ct. at 2354 ("noting that 'we tread carefully in
construing this exclusionary principle [ of laws of nature, natural phenomena,
and abstract ideas] lest it swallow all of patent law"'); Diamond v. Diehr,
450 U.S. 175, 189 n. 12 (1981) (cautioning that overgeneralizing claims, "if
carried to its extreme, make[ s] all inventions unpatentable because all
inventions can be reduced to underlying principles of nature which, once
known, make their implementation obvious")).
We agree with Appellants that, like the claims in Enfish, the claims
here are not merely directed to any type of search engine, but instead are
specifically directed to a search engine that ranks documents based on a
length of time that a term has been present in a document over a window of
time. See Enfzsh, 822 F.3d at 1337. Thus, claim 1 is directed to an
improvement in computer technology, rather than the overly generalized
abstract idea identified by the Examiner.
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For these reasons, Appellants have persuaded us the Examiner erred
in finding claim 1 is directed to the abstract idea of "organizing information
through mathematical correlations." We, therefore, do not sustain the
rejection of claim 1 as being directed to patent-ineligible subject matter. We
also do not sustain the rejections of independent claims 14 and 21, which
recite commensurate limitations, or dependent claims 3, 5-9, 11, 12, 15, 16,
19, 23-25, and 27-29.
Obviousness - Independent Claims
Appellants argue the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) as unpatentable over Acharya and Doganata. See App.
Br. 20-24; Reply Br. 7-9. In particular, Appellants argue Acharya teaches
assigning a score to a document based on how often the document is updated
and/or how much of the document is updated. App. Br. 22-23 ( citing
Acharya ,r,r 11, 46). Appellants argue the Examiner concedes Acharya does
not teach "assigning a relevance weight to a document based upon a term
classification assigned to the term in the document, the term classification
being representative of a length of time that the term has been present in the
document over a window of time" and relies on Doganata for this limitation.
Id. at 23.
Appellants argue Doganata teaches assigning documents to categories
based on the text of the documents, and assigning textual descriptors to the
categories. Id. Appellants argue the Examiner's finding that the combined
teachings allow documents to be dynamically and automatically categorized
as the contents of the documents change over time does not result in the
claimed relevance weight assignment. Id. at 24.
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Appellants have not persuaded us of Examiner error. The Examiner
finds Acharya teaches assigning a relevance weight to a document based on
a measure of how the contents of the document change over time. Ans. 10
(citing Acharya ,r,r 11, 36). The Examiner finds Acharya teaches the
measure of how the contents of the document change over time is based on
the rate of change of terms in the document. Id. ( citing Acharya ,r 51 ). The
Examiner finds Acharya, therefore, teaches applying a relevance weight to a
document based on the rate of change of terms within the document, but
does not explicitly teach term classification as required in the claim. The
Examiner finds Doganata teaches associating categories with terms and
using this information to classify documents containing those terms. Ans.
11 (citing Doganata ,r 23). The Examiner's proposed combination
incorporates Doganata's term classification with Acharya's document
relevance weight determination based on the rate of change of terms.
Appellants' argument that the combined teachings "do[] not result in a label
being assigned to a document (or term therein) that is in any way
representative of a length of time that the term has been present in the
document over a window of time as claimed" (see Reply Br. 8) fails to
persuasively identify error in the Examiner's findings.
We, therefore, sustain the rejection of independent claim 1 as
unpatentable over Acharya and Doganata. We also sustain the rejections of
independent claims 14 and 21 and dependent claims 3, 6-9, 11, 12, 15, 16,
19, 23, 25, 28, and 29, for which Appellants do not offer separate arguments.
See App. Br. 25.
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Appeal2018-000558
Application 12/488,594
Obviousness-Dependent Claims 5, 24, and 27
Claim 5 recites "[ t ]he method of claim 1, further comprising:
classifying the query as being a navigational query rather than a seeking
query; and assigning the relevance weight to the document based upon the
query being classified as a navigational query rather than a seeking query."
Appellants argue the Examiner erred in rejecting claim 5 because the
combination of Acharya and Doganata does not teach or suggest "classifying
the query as being a navigational query rather than a seeking query." App.
Br. 24-25. In particular, Appellants argue the Specification defines the
terms navigational query and seeking query and although Doganata teaches
queries can be categorized, Doganata does not teach or suggest a distinction
between navigational and seeking queries. Id.
The Examiner concludes the "terms 'navigational' and 'seeking'
appear to merely be empty term labels used to differentiate between a first
and second type of query. As such, after full and detailed analysis of the
claims, specification and consideration of the terms themselves, these terms
appear to be non-functional descriptive material." Ans. 12-13. The
Examiner finds Doganata teaches navigational and seeking queries by
teaching multiple categories of queries because these terms merely require
"a distinction between two types of queries within the claimed device." Id.
Appellants have persuaded us of Examiner error. The Examiner's
interpretation of "navigational query" and "seeking query" is overly broad
and not reasonable in light of the Specification. In particular, the
Specification states "[a] navigational query is a query that is employed by
users who want to navigate to a particular document (e.g., a homepage of a
particular newspaper). An information seeking query is a query that is
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employed by users to locate particular ( e.g., recent) information." Spec. ,r 8.
The Examiner's interpretation ignores these definitions and essentially reads
the terms "navigational" and "seeking" out of the claim. Accordingly, we
are persuaded the Examiner has not established that the combination of
Acharya and Doganata teaches or suggests the method of claim 5.
We, therefore, do not sustain the rejection of claim 5 as unpatentable
over Acharya and Doganata. We also do not sustain the rejections of claims
24 and 27, which recite commensurate limitations.
DECISION
We reverse the decision of the Examiner rejection claims 1, 3, 5-9,
11, 12, 14-16, 19, 21, 23-25, and 27-29 under 35 U.S.C. § 101 as being
directed to ineligible subject matter.
We affirm the decision of the Examiner rejecting claims 1, 3, 5-9, 11,
12, 14-16, 19, 21, 23-25, and 27-29 based upon obviousness.
We reverse the decision of the Examiner rejecting claims 5, 24, and
27 based upon obviousness.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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