Ex Parte Gieseke et al

Patent Trial and Appeal Board

Jul 26, 2017

13242807 (P.T.A.B. Jul. 26, 2017)

United States Patent and Trademark Office
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.
13/242,807 09/23/2011 Eric James Gieseke P5478US00 7278
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
EXAMINER
CHANNAVAJJALA, SRIRAMA T
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC JAMES GIESEKE
and ANINDITA MAHAPATRA
Appeal 2016-005636
Application 13/242,8071
Technology Center 2100
Before DEBRA K. STEPHENS, BRADLEY W. BAUMEISTER, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20 and 47, which are all of the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to an online store presenting content items of
potential interest to a user, such as applications or games. Spec. 11.
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1 Appellants state the real party in interest is Nokia Corp. App. Br. 1.
Appeal 2016-005636
Application 13/242,807
1. A method comprising facilitating a processing of and/or
processing (1) data and/or (2) information and/or (3) at least one
signal, the (1) data and/or (2) information and/or (3) at least one
signal based, at least in part, on the following:
a specification of one or more hierarchical layers for
managing content associated with one or more content stores;
at least one content collection associated with the one or
more content stores;
one or more rules comprising instructions and/or filters
for enabling application content programming to be performed
at the one or more hierarchical layers; and
at least one determination, by a processor, to organize the
at least one content collection into one or more bins associated
with respective ones of the one or more hierarchical layers,
based, at least in part, on the one or more rules.
Rejections
Claims 1—3, 6, 9-12, 15, and 18—20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Licon et al. (US 2004/0172381
Al; Sept. 2, 2004) and Peregrine et al. (US 2009/0125482 Al; May 14,
2009). Final Act. 9-14.
Claims 4, 5, 13, 14, and 47 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Licon, Peregrine, and Kirshenbaum et al.
(US 2006/0248054 Al; Nov. 2, 2006). Final Act. 1^U16.
Claims 7, 8, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Licon, Peregrine, and Lamba et al.
(US 8,122,016 Bl; Feb. 21,2012). Final Act. 17-19.
ISSUE
Did the Examiner err in finding the combination of Licon and
Peregrine teaches or suggests “one or more rules comprising instructions
and/or filters for enabling application content programming to be performed
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Application 13/242,807
at the one or more hierarchical layers” and “at least one determination, by a
processor, to organize the at least one content collection into one or more
bins associated with respective ones of the one or more hierarchical layers,
based, at least in part, on the one or more rules,” as recited in claim 1 ?
ANALYSIS
The Examiner relies on a combination of Licon and Peregrine for
teaching the disputed limitations. Final Act. 9—11. Licon “relates generally
to a system and method for selecting content for displaying over the Internet
based upon some user input,” such as a search query. Licon H 3, 9,
Fig. 3-A; see also Final Act. 5. Peregrine relates to a “rule filter” for
“modifying the results of a search performed in a collection of items.”
Peregrine Abstract; see also Final Act. 5—6.
Appellants argue “the claims require the rules to be provided for use
in the actual hierarchical determination/organization of content into bins and
not simply to be used for filtering.” Reply Br. 3. According to Appellants,
[t]he Examiner does not and cannot point to how Peregrine
applies rules to hierarchical content. Instead the rules and rules
filters are simply used to modify search queries. Nothing
provided by the Examiner describes the potential ability to apply
those modifications to search queries to include changes to the
hierarchical structure of a database.
App. Br. 12.
We are not persuaded the Examiner erred. First, the Examiner relies
on Licon, not Peregrine, for teaching the claimed hierarchy and bins. Final
Act. 9-10. Thus, Appellants’ argument attacking Peregrine individually
rather than in the Examiner’s proposed combination is not persuasive. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
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rejection is based upon the teachings of a combination of references.”).
Second, we are not persuaded the claims are presently written as
narrowly as Appellants contend. Due to the recitation of “one or more”
rules, hierarchical layers, and bins, Claim 1 requires only one rule, one
hierarchical layer, and one bin. Appellants have failed to explain
sufficiently how providing filtered search results would not meet such a
limitation. The Specification discloses “the rules specify one or more
filters” that “enables the service providers to direct content for specific
product promotions (e.g., whitelists) or to prohibit content (e.g., blacklists)
in the online store for specific hierarchical levels such as countries, regions,
etc.” Spec. 1 32. For example, based on the user’s region, the system “adds
content popular in the region as well as removes content that may be
perceived as offensive to customers in that region.” Id. 163. Thus, patrons
in a specific region may see content regarding local sports teams (129) or
promotions within that region (175).
We agree with the Examiner that Peregrine teaches the same types of
rules, bins, and hierarchy as the Specification. Final Act. 3—5. Using wine
as an example, Figure 2 IB of Peregrine shows a hierarchy of geographies,
such as “Europe” containing a sub-entry for “Italy.” See Ans. 5 (citing
Peregrine Figs. 21—22); see also Peregrine Fig. 20B. Figure 22 then shows a
filter for Italian wines returns a different bin of results than a filter for
European wines. See Peregrine H 163—165. Peregrine also teaches showing
promotional content for certain regions or on certain dates. See Peregrine
Fig. 10,H 129, 39 (“For example, a rule may cause the search results from a
retailer’s database to include additional items, such as promotional items,
when the query includes a particular keyword.”); see also Final Act. 9
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(citing Peregrine Fig. 10). This is identical to the whitelisting disclosed in
the Specification. See also Peregrine Fig. 5B, || 102 (adding results for
Pinot Grigio when searching for Pinot Noir), 106 (adding results for
climbing equipment for users known to be mountain climbers). Thus, given
the breadth of the claim and the similarity of Peregrine to the Specification,
we are not persuaded the Examiner erred in finding Peregrine teaches or
suggests one rule comprising filters for enabling application content
programming to be performed on one hierarchical layer and one
determination to organize the content collection into one bin associated with
the hierarchical layer based at least in part on the rule.
We also are unpersuaded by Appellants’ argument that “Peregrine’s
‘rules’ cannot be fit to Licon’s ‘subject category identifiers.’” App. Br. 13.
Without further explanation from Appellants, we see no substantive
difference in filtering a category rather than filtering a specific web page.
We further are unpersuaded by Appellants’ argument that Licon and
Peregrine are “not analogous prior art.” App. Br. 14. “A reference qualifies
as prior art for an obviousness determination under § 103 only when it is
analogous to the claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed.
Cir. 2011). “Prior art is analogous where either (1) the art is from the same
field of endeavor, regardless of the problem addressed or (2) even if the
reference is not within the same field of endeavor, the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed. Cir. 2017)
(quotations omitted). Here, Appellants concede the two prior art references
are “related” and in “the similar art of doing a search or querying.” App. Br.
14; see also Spec. 11. Thus, we agree with the Examiner that Licon and
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Peregrine both are “from the same field of endeavor, regardless of the
problem addressed” and therefore qualify as analogous art. Ans. 4.
Appellants further contend neither Kirshenbaum (for claims 4, 5, 13,
14, and 47) nor Lamba (for claims 7, 8, 16, and 17) cures the deficiencies of
Licon and Peregrine. App. Br. 15—16. We are not persuaded that Licon or
Peregrine are deficient for the reasons above.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2—20 and 47, which Appellants argue are patentable for similar
reasons. See App. Br. 6, 15—16; 37 C.F.R. § 41.37(c)(l)(iv).2
DECISION
For the reasons above, we affirm the decision rejecting claims 1—20
and 47. No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).
AFFIRMED
2 In the event of further prosecution, the Examiner may wish to
consider whether in claim 19, “the claim term ‘machine-readable storage
medium’ would include signals per se” and therefore claim 19 is directed to
ineligible subject matter under 35 U.S.C. § 101. Ex parte Mewherter, 107
USPQ2d 1857, 1862 (PTAB 2013) (precedential).
The Examiner likewise may wish to consider whether claims 1—9 and
47 should be rejected under § 101 for being directed to a signal per se. See,
e.g., claim 1 (“method comprising facilitating a processing of. . . at least one
signal, the . . . at least one signal based, at least in part, on the following”).
The Examiner also may wish to consider with respect to claims 1—9
and 47 whether any of the claimed specification, content collection, rules,
and determination(s) patentably distinguishes or further limits the only
affirmatively recited method step, i.e., “facilitating a processing of and/or
processing.” That is, the Examiner should consider whether the act of
turning on a computer, for example, anticipates these claim by virtue of
doing so facilitating a processing of data, information, or at least one signal.
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