Ex Parte GlanceDownload PDFPatent Trial and Appeal BoardFeb 4, 201511454301 (P.T.A.B. Feb. 4, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NATALIE GLANCE ____________ Appeal 2012-008785 Application 11/454,301 Technology Center 2100 ____________ Before JOHN A. JEFFERY, ANDREW J. DILLON, and IRVIN E. BRANCH, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–27. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s invention extracts individual posts from a weblog by (1) providing an associated feed, and (2) “screen scraping” the weblog into a representation for weblog posts using feed data containing partial weblog content. See generally Abstract. Claim 1 is illustrative: 1. A method of extracting individual posts from a web log, comprising: accessing a home page of the weblog; identifying at least one feed associated with the weblog; Appeal 2012-008785 Application 11/454,301 2 determining whether the at least one feed contains sufficient content for feed-guided segmentation; if the at least one feed contains sufficient content for feed-guided segmentation, determining whether the at least one feed contains full content or partial content of the weblog; if the at least one feed contains full content of the web log, mapping data found in the at least one feed into a representation for web log posts; and if the at least one feed contains partial content of the web log, screen scraping the web log into a representation for web log posts using the data. THE REJECTIONS The Examiner rejected claims 1–12, 17, and 18 under 35 U.S.C. § 102(e) as anticipated by Moore (US 2006/0173985 A1; pub. Aug. 3, 2006; filed Sept. 10, 2005). Ans. 4–9.1 The Examiner rejected claims 13–16 and 19–27 under 35 U.S.C. § 103(a) as unpatentable over Moore and Sifry (US 2006/0004691 A1; Jan. 5, 2006). Ans. 10–14. THE ANTICIPATION REJECTION The Examiner finds that Moore discloses every recited element of claim 1 including (1) determining whether at least one feed contains full or partial weblog content, and (2) screen scraping the weblog into a representation for weblog posts using the data if the associated feed contains partial weblog content. Ans. 4–5, 15. According to the Examiner, Moore 1 Throughout this opinion, we refer to (1) the Appeal Brief filed December 5, 2011 (“App. Br.”); (2) the Examiner’s Answer mailed March 12, 2012 (“Ans.”); and (3) the Reply Brief filed May 14, 2012 (“Reply Br.”). Appeal 2012-008785 Application 11/454,301 3 determines whether RSS2 content is complete based on the feed’s metadata, and if the feed contains partial content, using the metadata to extract content stored in a database. Ans. 15. In this regard, the recited screen scraping limitation is said to be anticipated by deriving content structure from a knowledge structure inherent in interrelated OPML3 outlines in Moore’s paragraph 176. Ans. 5. Appellant argues that not only does the relied-upon subject matter in Moore’s paragraph 176 not qualify as prior art to the present application, but the relied-upon subject matter in Moore does not teach or suggest the recited full or partial content determination and screen scraping limitations even if the relied-upon subject matter qualifies as prior art. App. Br. 6–10; Reply Br. 2–6. ISSUE Under § 102, has the Examiner erred in rejecting claim 1 by finding that Moore anticipates the recited limitations? This issue turns on whether the relied-upon subject matter in Moore’s paragraph 176 qualifies as prior art. ANALYSIS We begin by noting that claim 1 contains several conditional limitations, the first of which is “if the at least one feed contains sufficient content for feed-guided segmentation . . . .” (emphasis added). If this 2 “RSS” stands for “Really Simple Syndication.” Moore ¶ 30. 3 “OPML” stands for “Outline Programming Markup Language” that is based on “Extensible Markup Language” (XML). Moore ¶¶ 189, 113; Fig. 6. Appeal 2012-008785 Application 11/454,301 4 conditional limitation is considered optional, everything that follows this limitation (i.e., determining whether the feed contains full or partial content and the associated conditional steps for full and partial content, respectively) need not occur to satisfy claim 1. Nevertheless, the Examiner does not articulate such an interpretation; nor will we speculate whether the Examiner intended to not give the three recited conditional limitations patentable weight as merely optional. Rather, the record indicates otherwise. That is, the record tends to suggest that the Examiner gave the three conditional limitations patentable weight by finding that Moore anticipates not only the initial sufficient-content condition in claim 1, but also the two subsidiary conditions, namely that the feed contains both full and partial content, and performing the associated steps under those conditions. See Ans. 4–5. It is this interpretation — and reliance on Moore based on that interpretation — that forms the basis for this dispute. Given this position, the key threshold question is whether certain subject matter relied upon by the Examiner in Moore’s paragraph 176 qualifies as prior art. Notably, the Examiner cites this paragraph for anticipating the last three limitations of claim 1, the last two of which the Examiner relies solely on paragraph 176.4 See Ans. 5. 4 The Examiner also cites Moore’s paragraphs 140 and 162 in connection with the recited full or partial content determination step. See Ans. 5, 15. The Examiner, however, relies solely on Moore’s paragraph 176 for anticipating the last two limitations of claim 1. Accord App. Br. 8 (noting this point). Appeal 2012-008785 Application 11/454,301 5 Moore’s application published after the present application’s effective filing date (June 16, 2006),5 but nonetheless refers to a number of provisional applications—16 of which predate Appellant’s effective filing date. See Moore, front page (“Related U.S. Application Data”); see also App. Br. 6 n.1 (listing these 16 provisional applications). In response to Appellant’s argument that none of Moore’s 16 earlier- filed provisional applications support the relied-upon subject matter in paragraph 176 (App. Br. 6), the Examiner cites one of those provisional applications as support for this subject matter, namely provisional application 06/594,478, filed April 12, 2005 (“the ’478 Provisional”). Ans. 15. Therefore, the dispute before us hinges on whether the relied-upon subject matter in Moore’s paragraph 176 is supported by at least Moore’s earlier-filed ’478 provisional application in accordance with 35 U.S.C. § 112, first paragraph. See In re Giacomini, 612 F.3d 1380, 1383–85 (Fed. Cir. 2010); see also Ex parte Yamaguchi, 88 USPQ2d 1606, 1609 (BPAI 2008) (precedential); MPEP §§ 2136.03(III), 706.02(VI)(D). A key aspect of the Examiner’s findings from Moore’s paragraph 176 is deriving a structure from a feed’s content. See Ans. 5. Specifically, the Examiner finds that Moore’s paragraph 176 discloses (1) determining if metadata included in a feed has sufficient information about the content to determine the content’s structure; (2) deriving content structure from metadata in RSS tags; and (3) deriving content structure from a knowledge structure inherent in interrelated OPML outlines. Id. Notably, the Examiner 5 Although Appellant’s effective filing date is based on U.S. provisional application 60/691,200, there is no dispute that Appellant’s provisional application supports the subject matter of the present application. Appeal 2012-008785 Application 11/454,301 6 relies on these findings in the rejection for anticipating the last three clauses of claim 1, respectively. See id. Moore’s paragraph 176 discloses, among other things, that “[s]tructure may be derived from the content, such as a knowledge structure inherent in interrelated OPML outlines, or metadata contained in RSS tags.” According to the Examiner, Moore’s ’478 Provisional supports this structure derivation by extracting content from an RSS feed. Ans. 15. But we fail to see—nor has the Examiner shown—how this content extraction teaches deriving a structure from content, let alone supports the relied-upon structure-derivation passage in Moore’s paragraph 176 under § 112, first paragraph for that disclosure to constitute prior art to the present application. Although it is undisputed that paragraph 8 of the ’478 Provisional teaches extracting content from an RSS feed,6 to say that this extraction supports the particular relied-upon structure derivation in Moore’s paragraph 176 under § 112, first paragraph strains reasonable limits on this record, particularly in view of the particular content and derived structures described in that paragraph. See Moore ¶ 176; see also Ans. 5 (finding that Moore derives content structure from a knowledge structure inherent in interrelated OPML outlines in paragraph 176). To the extent that the Examiner contends that extracting the whole content from the feed in the ’478 Provisional’s paragraph 8 somehow supports the particular structure derivation described in Moore’s paragraph 176 under § 112, first paragraph (see Ans. 15), such a position is untenable on this record. We reach this conclusion emphasizing that although the written description requirement under § 112 does not demand any particular form of 6 See Reply Br. 3 (acknowledging this extraction). Appeal 2012-008785 Application 11/454,301 7 disclosure or require a verbatim recitation, a description that merely renders the invention obvious does not satisfy the requirement. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (citations omitted). Therefore, to the extent that the Examiner contends that the relied- upon passages in Moore’s paragraph 176 would have been obvious from paragraphs 8 and 14 of the ’478 Provisional, such a position is unavailing in light of Ariad. We reach the same conclusion regarding the Examiner’s reliance on paragraph 14 of the ’478 Provisional. Ans. 15. It is undisputed that this paragraph describes using metadata to determine RSS channel content. See Reply Br. 4 (acknowledging this determination). But even assuming, without deciding, that this metadata is extracted to derive the entire content as the Examiner contends (Ans. 15), to say that a particular structure, namely a “whole content structure” in the Examiner’s parlance, is derived from that content to support the relied-upon passage in Moore’s paragraph 176 is unreasonable on this record. In short, the Examiner has not shown that determining content derives a structure from that content, at least in the sense contemplated by Moore’s paragraph 176. And even assuming, without deciding, that such a derivation would have been obvious from the ’478 Provisional’s content determination, that alone is insufficient to provide written description support for the relied-upon passage in Moore’s paragraph 176 as noted above. See Ariad, 598 F.3d at 1352. Therefore, the Examiner has not shown that Moore’s ’478 provisional application (or any other predating provisional application)7 supports the 7 Although Moore’s Provisional Application 60/684,092 filed May 23, 2005 discloses using outlined or OPML data including (1) receiving OPML data; Appeal 2012-008785 Application 11/454,301 8 subject matter relied upon in Moore’s paragraph 176. Accordingly, the Examiner has not shown that this relied-upon disclosure qualifies as prior art to the present application. Because the Examiner relies on Moore’s paragraph 176 for anticipating the last three limitations of independent claim 1 (Ans. 5), we are persuaded that the Examiner erred in rejecting that claim, and dependent claims 2–12, 17, and 18 for similar reasons. Because this issue is dispositive regarding our reversing the rejection of these claims, we need not address Appellant’s other arguments. THE OBVIOUSNESS REJECTION Because the Examiner has not shown that Sifry cures the foregoing deficiencies regarding independent claim 1, we will not sustain the obviousness rejection of dependent claims 13–16 and 19–27 (Ans. 10–14) for similar reasons. CONCLUSION The Examiner erred in rejecting (1) claims 1–12, 17, 18 under § 102, and (2) claims 13–16 and 19–27 under § 103. (2) converting the OPML data into a suitable database form to create an OPML database; (3) indexing OPML data field(s) in the database; and (4) searching against those fields on page 7 of that application, we decline to speculate in the first instance here on appeal whether that disclosure supports the relied-upon subject matter in Moore’s paragraph 176 under § 112, first paragraph. Nor will we speculate whether the data clustering techniques described in paragraph 197 of Moore’s Provisional Application 60/594,416 filed April 6, 2005 similarly support the relied-upon subject matter. Rather, we leave those questions to the Examiner to consider after this opinion. Appeal 2012-008785 Application 11/454,301 9 DECISION The Examiner’s decision rejecting claims 1–27 is reversed. REVERSED msc Copy with citationCopy as parenthetical citation