Ex Parte Dyor et al

Patent Trial and Appeal Board

Apr 17, 2018

13601910 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/601,910 08/31/2012 Matthew G. Dyor
110832 7590 04/19/2018
Lowe Graham Jones PLLC
701 Fifth Avenue, Suite 4800
Seattle, WA 98104
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.
INVS-1-2422(1010-003-010) 7141
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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):
patentdocketing@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW G. DYOR,
ROYCE A. LEVIEN, RICHARDT. LORD,
ROBERT W. LORD, MARK A. MALMUD,
XUEDONG HUANG, and MARC E. DA VIS
Appeal2016--003649 1
Application 13/601,910
Technology Center 3600
Before: ANTON W. PETTING, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Elhwa, LLC, as the real party in interest.
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Application 13/601,910
STATEMENT OF THE CASE2
Matthew G. Dyor, Royce A. Levien, Richard T. Lord, Robert W. Lord,
Mark A. Malnmd, Xuedong Huang, and Marc E. Davis (Appellants) seek
review under 35 U.S.C. § 134 of the Examiner's Final rejection of claims 1,
2,5,6,9-13, 15-17, 19,21-23,26,28,32-36,45--47,51-55,57,60,66,69,
70, 90, 101, 104, 108, 116, 120, 128, 129, 391, and 392, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of automatically presenting commercial
opportunities such as advertising based upon gestured input. Specification
para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method in a computing system
for presenting opportunities for commercialization in
conjunction with browsing and/or searching for information,
the method comprising: under control of the computing system
having a memory, a computer processor, a presentation device,
and an input device capable of providing gesture input on the
presentation device:
[ 1] presenting via the presentation device associated with the
computing system
2 Our decision will make reference to the Appellants' Appeal Brief filed
July 13, 2015 (hereinafter "Br.") and the Examiner's Answer mailed
October 23, 2015, (hereinafter "Ans."), and Final Action mailed March 11,
2015, (hereinafter "Final Act.").
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one or more instances of electronic content containing
information relating to a first topic in which a user has
indicated an interest,
the information relating to the first topic presented as a
result of a computer implemented search indicating that
the user seeks knowledge about the first topic,
intends to buy something, and/ or seeks additional
information about the first topic;
[2] receiving, from the input device capable of providing
gesture input,
an indication of a user inputted gesture that corresponds
to an indicated portion of the presented electronic
content,
the indicated portion of electronic content identifying a
second topic related to the first topic, an object related to
the first topic, and/or an action related to the first topic,
the user inputted gesture formed by a user drawing the
gesture on a display of the presentation device to indicate
the portion of the electronic content, the gesture
approximating a circle shape, an oval shape, a closed
path, or a polygon;
[3] dynamically determining, by the computer processor,
sponsor supplied content associated with an opportunity
for commercialization that corresponds to at least one of
the identified first topic, second topic, object, and/or
action
by using a statistical model to determine a likelihood of
at least one of:
a location where the user is likely to navigate to or
a next topic, object, or action the user is likely to
explore,
wherein the dynamically determining the sponsor
supplied content comprises:
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and
determining which content to present and one or
more occasions for presenting the content;
and
charging a sponsor
based upon a likelihood the determined
sponsor supplied content associated with the
opportunity for commercialization will be
participated in by the user
and
based upon a determined occasion of the one
or more occas10ns;
[ 4] presenting, via the computer processor,
the determined sponsor supplied content associated with
the opportunity for commercialization
in conjunction with the presented first topic and the
identified second topic, object, and/or action,
therein presenting and providing an opportunity for
commercialization that relates to the first topic to which
the user has indicated interest in obtaining information in
conjunction with the corresponding first topic and second
topic, object, and/or action.
The Examiner relies upon the following prior art:
O'Kelley US 2006/0122879 Al June 8, 2006
Hinckley US 2008/0250012 Al Oct. 9, 2008
Khosravy US 2009/0319181 Al Dec. 24, 2009
Hudson US 2012/0044179 Al Feb.23,2012
Huang US 2012/0197857 Al Aug.2,2012
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Claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36, 45--47, 51-55,
57, 60, 66, 69, 70, 90, 101, 104, 108, 116, 120, 128, 129, 391, and 392 stand
rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36, 45--47, 51-55,
57, 60, 66, 69, 70, 90, 101, 104, 108, 116, 120, 128, 129, 391, and 392 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Huang, Hinckley,
and O'Kelley.
Claims 1, 2, 5, 6, 9, 11-13, 15-17, 19, 21-23, 26, 28, 32-36, 45--47, 51-
55, 57, 60, 66, 69, 70,90, 101, 104, 108, 116, 120, 128, 129,391,and392
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hudson,
Hinckley, and O'Kelley.
Claims 10, 90, and 120 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hudson, Hinckley, O'Kelley, and Khosravy.
Claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36, 45--47, 51-55,
57, 60, 66, 69, 70, 90, 101, 104, 108, 116, 120, 128, 129, 391, and 392 stand
rejected under the judicially created doctrine of obviousness type double
patenting as claiming the patentably indistinguishable subject matter as
another U.S. Patent.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
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The issues of obviousness tum primarily on whether an opportunity for
commercialization is sufficiently narrow to distinguish data content from
data in the art.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "gesture"
or "drawing."
02. The ordinary meaning of "gesture" is a motion of the limbs or
body made to express or help express thought or to emphasize
speech. 3
03. The ordinary meaning of "drawing" as a verb in the context of a
gesture is to make a likeness of on a surface, using mostly lines. 4
3 American Heritage Dictionary, 2017 last viewed April 5, 2018.
https://www.ahdictionary.com/word/search.html?q=gesture
4 American Heritage Dictionary, 2017 last viewed April 5, 2018
https://www.ahdictionary.com/word/search.html?q=draw
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Facts Related to the Prior Art
O'Kelley
04. O'Kelley is directed to electronic advertising. O'Kelley para. 3.
05. O'Kelley describes algorithms for pricing an ad and charging
for it. O'Kelley paras. 37--40.
Hinckley
06. Hinckley is directed to active note taking by coupling pen-and-
ink interfaces with an in situ (e.g., situated in the original, natural,
or existing place or position, and the like) search facility that
flows directly from content in a digital "notebook" containing one
or more of ink strokes, passages of text, bitmaps and/ or digital
photos, other in situ searches, and hyperlinks to documents on the
local store, remote shares, or the internet. Hinckley para. 5.
07. Embedding search within users' task contexts enables them to
locate content without switching to "search applications," that
could derail users from the creative flow of active note taking,
particularly on a tablet where screen real estate is limited, text
entry is slow, and keyboard shortcuts can be unavailable. In situ
search also naturally affords several other key design properties,
such as for example, leveraging pre-existing ink to initiate
searches thereby reducing the cognitive barrier between creating
ink on the page and creating queries based on that ink (e.g., users
do not waste time or have to break flow by transcribing terms to a
separate query box, rather they can recycle the effort of writing
notes by triggering queries from already existing ink on the page);
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promoting queries as first class objects commingled with ink notes
(e.g., users are allowed to indicate that a search needs to be
performed, but to defer opening the search results until later, when
time and attention permit), such that the resulting queries,
represented by an embeddable graphical object (hereinafter also
interchangeably referred to as a "breadcrumb") that can be
manipulated (e.g., copied, pasted, or rearranged, etc.) just like any
of the surrounding inked notes on the page; interleaving inking,
searching, and gathering so that users can freely move back and
forth between ink notes and search results thereby permitting users
to jot notes, trigger a search, browse search results, make new
margin notes, start additional searches for side-by-side
comparison, or defer an ongoing search in favor of some other
activity; and tightly coupling queries with application content by
allowing users to incorporate individual query results into their
notes (e.g., the user, through the mechanism of the breadcrumb,
can drag search results directly into his or her notes for future
reference or to create ad hoc arrangements of useful documents, or
can pull selected parts of a document into his or her notes by
taking a snapshot of it). Hinckley para. 23.
08. Artificial intelligence based systems (e.g., explicitly and/or
implicitly trained classifiers) can be employed in connection with
performing inference and/or probabilistic determinations and/or
statistical-based determinations as in accordance with one or more
aspects of the claimed subject matter as described hereinafter.
The terms "inference," "infer," and variations in form thereof refer
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generally to the process of reasoning about or inferring states of
the system, environment, and/or user from a set of observations as
captured via events and/or data. Inference can be employed to
identify a specific context or action, or can generate a probability
distribution over states, for example. The inference can be
probabilistic-that is, the computation of a probability distribution
over states of interest based on a consideration of data and events.
Inference can also refer to techniques employed for composing
higher-level events from a set of events and/or data. Such
inference results in the construction of new events or actions from
a set of observed events and/or stored event data, whether or not
the events are correlated in close temporal proximity, and whether
the events and data come from one or several event and data
sources. Various classification schemes and/or systems (e.g.,
support vector machines, neural networks, expert systems,
Bayesian belief networks, fuzzy logic, data fusion engines ... )
can be employed in connection with performing automatic and/or
inferred action in connection with the claimed subject matter.
Hinckley para. 58.
Huang
09. Huang is directed to performing a search based on a search
gesture. Huang para. 2.
10. Huang's user may perform a search on all or a portion of the
displayed content simply by making a search gesture. The client
device detects the search gesture, and initiates a search in response
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to completion of the search gesture. The search gesture may
define a region of content, and the client device formulates a
search query based on the region of content defined by the search
gesture. The search query may be formulated based on subject
matter from the region of content and/or context information
indicating a context in which the subject matter is presented. The
search gesture may be the motion of a cursor controlled by a
mouse or other user input device. The search gesture may include
a generally circular gesture. Huang para. 3.
11. Huang's content analysis module may incorporate context
information related to the displayed content, a location of the
client device such as GPS data, the application and/or one or more
historical actions and/or sessions of the user, and formulate the
search query based on this additional information. The content
analysis module may determine that based on recent email
correspondence, the user is planning a trip, and may infer that the
instant search is related to planning the trip. Additionally or
alternatively, the content analysis module may determine that
based on past email correspondences on a subject/topic and/or
with another user, the user is planning a trip with another user, and
may infer that the instant search is related to planning the trip.
Thereupon, the content analysis module may formulate the search
query based upon the region of content and/or context information
related to the region of content such as information in the past
email correspondences, in view of the determined intent of the
user to plan the trip. Thus, in the trip example, the content
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analysis module may infer that if the region of content includes a
location, the user may be planning a trip to that location and may
formulate the search query accordingly. Furthermore, the content
analysis module may further incorporate other context information
such as GPS data of the client device, a website from which the
content is being served, a calendar entry that the user has open
with details about a trip, or the like, to formulate the search query.
Referring back to the trip example, even though the gesture does
not define content relating to a particular location, the content
analysis module may still determine that the search relates to
planning a trip based on the fact that the website serving the
content is a travel web site, or a title of the article involves travel,
for example. Huang para. 45.
12. Huang's search service may return one or more search results to
the client device which may then present the one or more search
results to the user. Additionally or alternatively, the search engine
or the search service may interpret the search query and identify a
task the user wants to complete (e.g., make a reservation, get
directions, etc.). The search service may further interpret the
search query and identify the task the user may want to complete
based on context information related to the region of content. For
example, the search engine or the search service may identify that
the user looking for a location of a restaurant based on identifying
the name of the restaurant in the search query and/ or identifying
the context information including a name of an application, e.g., a
calendar application, from which the region of content is obtained.
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For another example, the client device may receive and/or provide
recommendations and/or advertisements based on the identified
task of the user. Huang para. 57.
Hudson
13. Hudson is directed to input mechanisms for user
communications with a touch-sensitive device. Hudson para. 2.
14. A user may also be presented an option to redraw the second
portion 814B of continuous gesture 810B. In one example, such
an option may be provided with a "redraw" button presented via
option list 818B. In other examples, a "redraw" option may be
presented to a user via modification of a representation of a
drawn/detected gesture 810B, such as causing the drawn gesture
or the selected content to change in visual intensity or to flash,
thereby indicating that recognizable content or functionality has
not been identified by gesture processing engine 336, and enabling
a user to redraw the gesture 81 OB or one of the first and second
portions 812B, 814B of gesture 810B. Hudson para. 73.
ANALYSIS
Appellants mention the gesture limitation in arguing rejections as to each
of eligible subject matter and obviousness. Thus, we begin by construing
the limitation to determine its scope. Claim 1 is exemplary, and recites
receiving, from the input device capable of providing
gesture input, an indication of a user inputted gesture that
corresponds to ... the user inputted gesture formed by a
user drawing the gesture on a display of the presentation
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device to indicate the portion of the electronic content, the
gesture approximating a circle shape, an oval shape, a
closed path, or a polygon.
The Specification does not lexicographically define gesture or drawing.
The ordinary meaning of "gesture" is a motion of the limbs or body made to
express or help express thought. The ordinary meaning of "drawing" as a
verb in the context of a gesture is to make a likeness of on a surface, using
mostly lines. FF 01---03. Thus, this limitation uses some input device that
responds to motion of the limbs making some likeness of a shape such as a
polygon. Conventional highlighting of text with a mouse to select text such
as for copying is within this scope as the mouse or similar input is moved
with the hand to make a likeness of a polygonal rectilinear shape defined by
the highlighted selection. This technique dates back to the Xerox Palo Alto
Research Center in the 1970's. 5
Claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36, 45--47, 51-55, 57,
60, 66, 69, 70, 90, 101, 104, 108, 116, 120, 128, 129, 391, and 392 rejected
under 35 U.S.C. § 101 as directed to non-statutory subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
5 Tesler, A Personal History of Modeless Text Editing and Cut/Copy-Paste,
Interactions, (last visited July-August 2012)
http://worrydream.com/refs/T esler%2 0-
%20A %20Personal %20 History%20of0/o20Modeless%20T ext%20Editing%2
Oand%20Cut-Copy-Paste.pdf
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claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [ ]If so, we then ask, "[ w ]hat
else is there in the claims before us?[ ]To answer that
question,[] consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. [The Court] described
step two of this analysis as a search for an "'inventive
concept'"-i.e., an element or combination of elements that is
"sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72
(2012)).
The preamble to claim 1 recites that it is a method for presenting
opportunities for commercialization in conjunction with browsing and/or
searching for information. The steps in claim 1 result in presenting sponsor
supplied content associated with an opportunity for commercialization. The
Specification at paragraph 1 recites that the invention relates to presenting
commercial opportunities such as advertising based upon gestured input.
Thus, all this evidence shows that claim 1 is directed to presenting data
representing opportunities, i.e. data search and retrieval.
Claims that focus on data collection, analysis, and display, and that do
not recite any particular inventive technology for performing those
functions, are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (Holding that claims focused
on "collecting information, analyzing it, and displaying certain results of the
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collection and analysis" are in "a familiar class of claims 'directed to' a
patent ineligible concept."); see also In re TL! Commc 'ns LLC Patent Litig.,
823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claim 1, unlike the claims found
non-abstract in prior cases, uses generic computer technology to perform
data entry, analysis, and presentation and does not recite an improvement to
a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (Finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation."). As such, claim 1 is directed to the abstract idea of
entering, analyzing, and presenting data.
The remaining claims merely describe parameters for such analysis and
presentation. We conclude that the claims at issue are directed to a patent-
ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two:
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
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process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea[] on a generic
computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, analyze, and present data amounts to electronic data
query and retrieval---one of the most basic functions of a computer. The
limitation of receiving a user inputted gesture by drawing on the screen is
not a technological limitation, but a recitation of conventional use of a genus
of well-known input devices, and is no more than abstract conceptual advice
to use such a device. All of these computer functions are well-understood,
routine, conventional activities previously known to the industry. In short,
each step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants' method claims
simply recite the concept of data search and retrieval as performed by a
generic computer. To be sure, the claims recite doing so by advising one to
have a user indicate some portion of presented data of interest and select and
present some other content based on that, charging for the presentation along
the way. But this is no more than abstract conceptual advice on the
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parameters for such data search and retrieval and the generic computer
processes necessary to process those parameters, and do not recite any
particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of data search and retrieval under different scenarios.
They do not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of data search and retrieval
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd. 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art. '
Alice Corp. Pty. Ltd. 134 S.Ct at 2360.
We are not persuaded by Appellants' argument that Appellant's
independent claims are not directed to an abstract idea. App. Br. 14--16. As
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we find supra, these claims involving data collection, analysis, and display
are directed to an abstract idea. Id.; see also Elec. Power Grp., 830 F.3d at
1353-54.
We are not persuaded by Appellants' argument that Appellant's
independent claims recite significantly more than any alleged abstract ideas.
App. Br. 16-18. Appellants contend that
many actions of the independent claims perform operations that
are not abstract and mere conventional computer operations,
taking advantage of the computer based search and
computational technology: for example, presenting electronic
content and receipting gestured input thereon, dynamically
determining sponsor supplied content (related to the gestured
input) using a statistical model, and presenting it in conjunction
with the topics/objects/actions to which the user has indicated
interest. These steps describe a computer implemented user
interface that cannot be performed manually. Thus, the
operations of claim clearly recite significantly more than an
abstract idea.
Id. Appellants do not say why these actions are not abstract and so the
contention is conclusory. As we find supra, the claims do not recite how the
gesture input is implemented but only advises one to use such an input. The
claims similarly do no more than advise one to use some statistical model.
Appellants do not purport to have invented a particular statistical model or
gesture input.
Appellants further contend that "computers cannot perform these
operations 'out of the box,' without specific, specialized configuration and
programming by one of skill in the art." Id. As the claim do not recite how
such programming is implemented, this contention is unpersuasive.
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The patents claim systems including menus with particular
features. They do not claim a particular way of programming
or designing the software to create menus that have these
features, but instead merely claim the resulting systems.
Essentially, the claims are directed to certain functionality-
here, the ability to generate menus with certain features.
Alternatively, the claims are not directed to a specific
improvement in the way computers operate.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (2016).
Claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36, 45--47, 51-55, 57,
60, 66, 69, 70, 90, 101, 104, 108, 116, 120, 128, 129, 391, and 392 rejected
under 35 U.S. C. § 103 (a) as unpatentable over Huang, Hinckley, and
O'Kelley
Appellants' major problem with the art is that the independent claims do
little more than accept some portion of text that is displayed and retrieve
related text. The only somewhat specific techniques recited are selecting
input with a device such as a mouse and using a statistical model to select
output, each of which is notoriously known. Huang does this much
including the use of gesture input and arguably using a statistical model,
although the Examiner applies Hinkley for that. The Examiner also applies
O'Kelley for charging for the service. The remainder of the limitations
recites the nature of the input and output data, which is discemable only in
the human mind, and accorded no patentable weight. See In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969).
We are not persuaded by Appellants' argument that Hinckley does not
teach determining the content to present through use of a statistical model.
App. Br. 21-24. As the Examiner finds,
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Huang teaches inferring (i.e. guessing or predicting information
the user is likely interested in) a user's interest based on several
factors (i.e. inputs) like GPS data, previous location data,
different gestures, weights, and context within the gesture and
then providing that inferred information to the user based on the
several above factors ....
Hinckley is directed towards providing search results based on
a user initiated search through a gesture. Hinckley goes on to
teach that artificial intelligence base systems can be used to
determine inference of probabilistic determinations. This
inference results in the construction of new events or actions
from previous user data or a set of observed data from one or
more data and event sources.
Ans. 72 (citations omitted). Such inferences are described as based upon
statistical models, among other tools. FF 08. Appellants contend that the
specific content is not dynamically determined "sponsor supplied content
associated with an opportunity for commercialization that corresponds to at
least one of the identified first topic, second topic, object, and/or action" or
content determined "to present and different [one or more] occasions for
presenting the content." App. Br. 23; see also Ans. 72. These limitations
are broad enough to encompass the cited prior art.
For example, Huang performs a search that results in content related to
the search text content. This is generally what any text search does. As to
the content being associated with an opportunity for commercialization that
corresponds to the search text, almost any search result is associated with an
opportunity for commercialization, particularly when the result includes an
ad as in Huang. Such an ad would also be sponsor-supplied. As to
determining occasions to present the content, Huang determines occasions
based on inferred tasks, among other bases.
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We are not persuaded by Appellants' argument that the combination of
Huang with Hinckley is motivated by nothing short of improper hindsight.
App. Br. 24--25. The Examiner applies Hinckley primarily as evidence of
the notoriety of using statistical models to select search results. As such, it
is merely evidence of what one of ordinary skill already knew, and the
ubiquity of the use of such models provides sufficient motivation. More
than that, Hinckley is similar to Huang in using gesture inputs for search
selections, and so provides more potential implementations for Huang'
search results.
We are not persuaded by Appellants' argument that 0 'Kelley does not
teach charging a sponsor based upon a likelihood and based upon a
determined occasion of the one. App. Br. 25-28. Again, this is a very broad
limitation. The limitation is "charging a sponsor based upon a likelihood the
determined sponsor supplied content associated with the opportunity for
commercialization will be participated in by the user and based upon a
determined occasion of the one or more occasions." The limitation does not
recite or narrow the implementation or manner of such basis. The pertinence
of search results is directly related to a likelihood the determined sponsor
supplied content associated with the opportunity for commercialization will
be participated in by the user. This is because the likelihood of a user doing
something with the results is based on the pertinence, and any activity by a
user is an opportunity for commercialization. The opportunity is limited
only by the creativity of the one looking for the opportunity.
We are not persuaded by Appellants' argument that the combination of
O'Kelley to Huang and Hinckley is motivated by nothing short of improper
hindsight. App. Br. 28-29. Appellants contend that neither Huang nor
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Hinckley mention charging for advertising. But the Examiner applies
O'Kelley for charging for this. Huang describes advertisements as being
among its search results. So 0 'Kelley is only evidence of the notoriety of
charging for such ads.
We are not persuaded by Appellants' argument that, as to claim 19, the
art fails to describe determining the sponsor supplied content associated with
an opportunity for commercialization in advance of receiving an indication
of the gestured input. App. Br. 29-30. Appellants contend that the
Examiner has assumed with impermissible hindsight that any opportunity to
display results is by definition an opportunity for commercialization. Id.;
see also Final Action 34--35. The Examiner finds that the keywords used for
finding search results are both determined in advance and are such
opportunities. We agree with the Examiner. By definition, keywords stored
for use in searches are determined in advance of a search, and an opportunity
is just that, an opportunity. There is too much commercialization of search
platforms today to argue that one of ordinary skill would not see opportunity
for commercialization of search results.
We are not persuaded by Appellants' argument that, as to claim 21, the
art fails to describe determining the sponsor supplied content associated with
an opportunity for commercialization by retrieving the content from a
storage device associated with the computing system. App. Br. 30-31.
Appellants again contend the lack of opportunity for commercialization of
search results, which is equally unpersuasive here.
We are not persuaded by Appellants' argument that, as to claim 22, the
art fails to describe dynamically determining the sponsor supplied content
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associated with the opportunity for commercialization in near real-time after
receiving the user inputted gesture. App. Br. 31-32. Appellants again
contend the lack of opportunity for commercialization of search results,
which is equally unpersuasive here.
We are not persuaded by Appellants' argument that, as to claim 23, the
art fails to describe determining that the electronic content relates to a live
event. App. Br. 32-33. The Examiner finds that what the content relates to
is unworthy of patentable weight for being non-functional. We agree. See
Bernhart, 417 F.2d at 1399, App. Br. 32-33. Appellants again contend the
lack of opportunity for commercialization of search results, which is equally
unpersuasive here.
We are not persuaded by Appellants' argument that, as to claim 28, the
art fails to describe presenting the determined sponsor supplied content
associated with the opportunity for commercialization in conjunction with
identified first topic, second topic, object, and/or action with a time lag after
the gestured input has been received. App. Br. 33-34. The Examiner finds
Hudson goes on to teach that content like advertisements may
not be provided after a user gesture for example if a user has to
redraw a gesture (see paragraph 0073). The Examiner
interprets this time (e.g. the redraw time) under broadest
reasonable interpretation to include a time lag between the user
gesture and providing content.
Ans. 103. We agree.
Claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36, 45--47, 51-55, 57,
60, 66, 69, 70, 90, 101, 104, 108, 116, 120, 128, 129, 391, and 392 rejected
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under 35 U.S.C. § 103(a) as unpatentable over Hudson, Hinckley, and
O'Kelley
Appellants present the same arguments as in the first art rejection.
Claims 10, 90, and 120 rejected under 35 U.S.C. § 103(a) as unpatentable
over Hudson, Hinckley, O'Kelley, and Khosravy
These claims are dependent on the claims in the first art rejection.
Claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36, 45--47, 51-55, 57,
60, 66, 69, 70, 90, 101, 104, 108, 116, 120, 128, 129, 391, and 392
provisionally rejected under the judicially created doctrine of obviousness
type double patenting as claiming the patentably indistinguishable subject
matter as another U.S. Patent
This provisional rejection is uncontested.
CONCLUSIONS OF LAW
The rejection of claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36,
45--47,51-55,57,60,66,69, 70,90, 101, 104, 108, 116, 120, 128, 129,391,
and 392 under 35 U.S.C. § 101 as directed to non-statutory subject matter is
proper.
The rejection of claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36,
45--47,51-55,57,60,66,69, 70,90, 101, 104, 108, 116, 120, 128, 129,391,
and 392 under 35 U.S.C. § 103(a) as unpatentable over Huang, Hinckley,
and 0 'Kelley is proper.
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The rejection of claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36,
45--47,51-55,57,60,66,69, 70,90, 101, 104, 108, 116, 120, 128, 129,391,
and 392 under 35 U.S.C. § 103(a) as unpatentable over Hudson, Hinckley,
and 0 'Kelley is proper.
The rejection of claims 10, 90, and 120 under 35 U.S.C. § 103(a) as
unpatentable over Hudson, Hinckley, O'Kelley, and Khosravy is proper.
The provisional rejection of claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23,
26,28,32-36,45--47,51-55,57,60,66,69, 70,90, 101, 104, 108, 116, 120,
128, 129, 391, and 392 under the judicially created doctrine of obviousness
type double patenting as claiming the patentably indistinguishable subject
matter as another U.S. Patent is uncontested.
DECISION
The rejection of claims 1, 2, 5, 6, 9-13, 15-17, 19, 21-23, 26, 28, 32-36,
45--47,51-55,57,60,66,69, 70,90, 101, 104, 108, 116, 120, 128, 129,391,
and 392 is 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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