Ex Parte Garbow et al

Patent Trials and Appeals Board

Jun 6, 2014

12061107 - (D) (P.T.A.B. Jun. 6, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/061,107 04/02/2008 Zachary A. Garbow ROC920080081US1 7920
46797 7590 06/09/2014
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
HASAN, SYED HAROON
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
06/09/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ZACHARY A. GARBOW and KEVIN G. PATERSON
____________________

Appeal 2012-001845
Application 10/061,107
Technology Center 2100
____________________

Before CARLA M. KRIVAK, JASON V. MORGAN, and
HUNG H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-24. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 The Real Party in Interest is International Business Machines Corporation.
2 Our decision refers to Appellants’ Appeal Brief filed May 23, 2011 (“App.
Br.”); Reply Brief filed October 17, 2011 (“Reply Br.”); Examiner’s Answer
Appeal 2012-001845
Application 10/061,107

2

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to metadata describing users accessing a
network and network content. Abstract. As online multimedia content
continues to grow, categorization of content through the usage of descriptive
tags grows increasingly more important. A search engine may utilize tags to
determine content and/or optimize search results. Spec. ¶ [0022]. When a
user selects a particular piece of online multimedia content, one or more tags
in the user profile may be added to the multimedia content, in a step known
as “pollination.” Id. at ¶¶ [0049]-[0050]. The advantage of pollination is
that the descriptive tags for the multimedia content may become more
comprehensive over time. Id. at ¶ [0051]. One particular method of
Appellants’ invention utilizes receiving a selection of an item of network
content from a user, selecting one or more user tags of a user profile
associated with the user based on a weight of the user tags, and adding a user
tag to a list of content tags upon determining that a user tag is not present in
a list of content tags. Id. at ¶ [0005].

mailed August 17, 2011 (“Ans.”); the original Specification filed April 2,
2008 (“Spec.”).
Appeal 2012-001845
Application 10/061,107

3

Claims on Appeal
Claim 1, the only independent claim on appeal and representative of
the invention, is reproduced below with disputed limitations emphasized:
1. A method for describing content on a network,
comprising:
receiving a selection of an item of network content from a user
associated with a user profile comprising a list of user tags describing
the user;
in response to receiving the selection, selecting a set of user
tags from the one or more user tags based on a weight of each of the
user tags, wherein the weight of the user tag defines a correlation
between the user tag and the user;
determining whether any of the user tags included in the set of
user tags are present in a list of content tags included in the set of user
tags are present in a list of content tags for the selected item, wherein
the content tags describe the selected item;
upon determining that a user tag in the set of user tags is present
in the list of content tags, adjusting a weight of the respective content
tag, wherein the weight of the content tag defines a correlation
between the content tag and the item; and
upon determining that a user tag in the set of user tags is not
present in the list of content tags, adding the user tag to the list of
content tags.

Evidence Considered
Bergh et al. US 6,112,186 August 29, 2000

Examiner’s Rejection
Claims 1-24 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Bergh. Ans. 4-17.

Issue on Appeal
Appeal 2012-001845
Application 10/061,107

4

Based on Appellants’ arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting claims 1 and 7 under 35 U.S.C.
§ 102(b) as being anticipated by Bergh. In particular, the appeal turns on:
(1) Whether Bergh discloses “receiving a selection of
an item of network content from a user associated with a user
profile comprising a list of user tags describing the user; in
response to the selection, selecting a set of user tags from the
one or more user tags based on a weight of each of the user
tags, wherein the weight of the user tag defines a correlation
between the user tag and the user,” as recited in independent
claim 1. App. Br. 14-15; and

(2) Whether Bergh teaches “removing a user tag from
the user profile and removing a content tag from the list of
content tag [sic] if a weight of the respective user tag and
content tag is not increased by a predetermined value within a
predetermined period of time,” as recited in dependent claim 7.
App. Br. 15-16.

ANALYSIS
With respect to independent claim 1, the Examiner finds Bergh
discloses a method for describing content on a network comprising receiving
a selection of an item of network content from a user associated with a user
profile comprising a list of user tags describing the user, and in response to
receiving the selection, selecting a set of user tags from the one or more user
tags, wherein the weight of the user tag defines a correlation between the
user tag and the user. Ans. 5 (citing Bergh, col. 2, ll. 9-10; col. 3, ll. 48-50,
54-61; col. 4, ll. 15-26; col. 5, ll. 1-3; col. 7, ll. 65-67; col. 8, ll. 1-10; col.
13, ll. 55-67; col. 14, ll. 1-37, and Abstract). The Examiner also finds Bergh
discloses: determining whether any of the user tags included in the set of
user tags are present in a list of content tags for the selected item; upon
Appeal 2012-001845
Application 10/061,107

5

determining that a user tag in the set of user tags is present in the list of
content tags, adjusting a weight of the respective content tag; upon
determining that a user tag in the set of user tags is not present in the list of
content tags, adding the user tag to the list of content tags; and each of the
corresponding wherein clauses. Id. at 5-6 (citing Bergh, col. 4, ll. 15-26;
col. 5, ll. 1-5; col. 7, ll. 66-67; col. 8, ll. 1-10).
Appellants contend that “the items recommended to the user in Bergh
are selected based on the ratings stored in neighboring users’ profiles, not
the user profile associated with the user, as required by the plain language of
claim 1.” App. Br. 14 (emphasis in the original). Appellants also argue that
selecting a set of user tags is made on a basis of a user tag defining a
“correlation between the user tag and the user, not the neighboring users.”
Id. at 15 (emphasis added). According to Appellants, the Examiner’s
interpretation [that a user is associated with a neighboring user’s profile as
well as the user’s profile] “is unreasonably broad because the items in the
neighboring users’ profiles are completely independent from the original
user and depend only on the actions and ratings given to an item by that
particular neighboring user.” Reply Br. 6.
We are not persuaded by the Appellants’ arguments. At the outset, we
note that “[T]he PTO gives claims their 'broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321(Fed. Cir.
1989)).
Appeal 2012-001845
Application 10/061,107

6

As correctly noted by the Examiner, claim 1 does not recite nor
require that a user profile be solely associated with a particular user. Ans.
19-20. Nor does the broad language of claim 1 preclude a correlation
between the user tag and the user based on weights provided by the
neighboring users. Id. at 20-21. Bergh teaches “a correlation between the
user tag and the user,” because a neighboring user’s positive rating of an
item likewise influences a user to also rate the item highly. Id. at 20 (citing
Bergh, col. 13, ll. 63-67).
Appellants’ Specification describes a user in general but does not
provide a particular definition for “user.” Spec. ¶¶ [0049], [0051], [0054],
[0056], and [0059]. In addition, Appellants’ Specification also describes
generally associating a user with a user profile comprising a list of user tags,
but does not provide a particular definition for the root word “associate” or
variations thereof. Spec. ¶¶ [0005]-[0006], [0037], and [0039]-[0041].
Similarly, Appellants’ Specification also discusses a correlation between the
user tag and the user, but does not provide a particular definition for the
word “correlation.” Spec. ¶¶ [0049], [0055], [0058], and [0064].
In the absence of an explicit definition by Appellants, we accord the
claim terms “user,” “associate,” and “correlation” their ordinary and plain
meanings unless those plains meaning are inconsistent with Appellants’ own
specification. In re Zletz, 893 F.2d 319, 321, (Fed. Cir. 1989) (discussed
below); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed.
Cir. 2004). (Ordinary, simple English words whose meaning is clear and
unquestionable, absent any indication that their use in a particular context
changes their meaning, are constructed to mean exactly what they say.). An
Appeal 2012-001845
Application 10/061,107

7

ordinary and plain meaning of the term “user” is “one that uses.”3 Similarly,
the plain meaning of the term “associate” is to “bring together or into
relationship in any of various intangible ways.”4 Likewise, a correlation is
“the state of relation of being correlated; specif: a relation existing between
phenomena or things. . .”5
The Examiner’s interpretation of these claim terms is reasonable in
light of the above plain meanings and also consistent with Appellants’ own
Specification. A user could therefore include neighboring users. An
association could therefore include a relationship between a user and user
profile describing both the user and a neighboring user. A correlation could
therefore include relationships between a user tag, a user, and neighboring
user(s).
With respect to dependent claim 7, the Examiner finds Bergh further
discloses removing a user tag from the user profile and removing a content
tag from the list of content tags if a weight of the respective user tag and
content tag is not increased by a predetermined value within a predetermined
period of time. Ans. at 8 (citing Bergh, col. 5, ll. 30-38; col. 13, ll. 55-67).
Appellants contend Bergh does not teach removing a user tag,
corresponding to an old rating, from the user profile. In particular,
Appellants argue Bergh teaches weighting an old rating less than a new
rating when generating a list of recommended items. App. Br. 15-16.
The Examiner responds in part that a recommended item, which
corresponds to the instant claimed user tag, is constructively removed from a

3 Merriam-Webster’s Collegiate Dictionary 1302 (10th ed. 1997).
4 Id. at 70.
5 Id. at 260.
Appeal 2012-001845
Application 10/061,107

8

user profile when ratings are adversely affected. Ans. 22-23. The Examiner
further adds that a broad reading of claim 7 does not require physical
deletion of the user tag from the user profile. Id.
We agree with the Examiner. Again, we note that claim terms are to
be given their broadest reasonable interpretation consistent with the
specification, and the language should be read in light of the specification as
it would be interpreted by one of ordinary skill in the art.
Claim 7 recites, in part, “removing a user tag” which does not
necessarily require the deletion of a user tag, as Appellants contend.
Appellants’ Specification does not provide a particular definition for the
term “removing,” although one embodiment discloses removal of a tag from
an inherited tag list (320). See Spec. ¶ [0057]. “[A]lthough the specification
often describes very specific embodiments of the invention,” Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005), the U.S. Court of
Appeals for the Federal Circuit “ha[s] repeatedly warned against confining
the claims to those embodiments.” Id.
Again, we turn to the plain meaning of the claim limitations. To
remove is to “change the location, position, station or residence of.”6 A
change in an item’s recommendation, based on an invalid or old rating that
is weighted less, could therefore reasonably be considered a change in
position. At the least, such a change to an item would be constructive
removal. We further note the Examiner has equated the recommended item
with the instant claimed user tag, not the rating itself, as Appellants contend.
Given the above interpretation, we agree with the Examiner and adopt the

6 Id. at 990.
Appeal 2012-001845
Application 10/061,107

9

Examiner’s findings that Bergh teaches all the limitations of “removing a
user tag.”
In addition, we note Appellants do not dispute the Examiner’s finding
with regard to the limitation in claim 7 of “removing a content tag . . . if a
weight of the respective user tag . . . [is] within a predetermined period of
time.” (Emphasis Added). Regardless, we note Appellants’ claim 7 contains
a conditional limitation. We find conditional limitations employed in
Appellants’ method claim 7 need not be found in the prior art if, under the
broadest scenario, the method need not invoke the steps. See Ex parte Katz,
2011 WL 514314, *4 (BPAI 2011) (citing In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). See also MPEP § 2111.04 (claim
scope is not limited by claim language that suggests or makes optional but
does not require steps to be performed). Therefore, because the step of
removing a content tag is conditional on an event that may not occur, this
step is optional and is not entitled to patentable weight. In re Johnston, 435
F.3d. 1381, 1384 (Fed. Cir. 2006) (“[O]ptional elements do not narrow the
claim because they can always be omitted.”). Based on such interpretation,
the Examiner is not required to find the disclosure of the conditional step of
identifying a weight of the respective user tag . . . within a predetermined
period of time in the cited prior art. See Ex parte Gary M. Katz, 2011 WL
514314, *4 (BPAI 2011).
For the reasons set forth above, Appellants’ contentions have not
persuaded us of any error in the Examiner’s position. Accordingly, we
sustain the Examiner’s anticipation rejection of independent claims 1 and 7
based on Bergh.
Appeal 2012-001845
Application 10/061,107

10

With respect to remaining dependent claims 2-6 and 8-24, Appellants
present no separate patentability arguments. Accordingly, we sustain the
Examiner’s rejection of claims 2-6 and 8-24 for the same reasons discussed.
When the patentability of dependent claims is not argued separately, the
claims stand or fall with the claims from which they depend. In re King,
801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991
(Fed. Cir. 1983).

CONCLUSION
On the record before us, we conclude the Examiner has not erred in
rejecting claims 1-24 under 35 U.S.C. §102 (b).

DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1-24.
See 37 C.F.R. § 41.50(a) (1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

dm