Ex Parte Gross

Patent Trial and Appeal Board

Dec 15, 2014

11856202 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN NICHOLAS GROSS
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Appeal 2012-004079
Application 11/856,2021
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–9. Appellant canceled claims 10–25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is J. Nicholas and
Kristin Gross Trust U/A/D 4/13/2010. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellant's invention relates to "[a]n electronic web page
management system [that] monitors links on a web page and provides
recommendations on alterations to the link set, such as by adding or
removing uniform resource locators (URLs) or other content." Abstract.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added):
1. A method of controlling linkings on a first world
wide web (WWW) electronic page with a computing system:
a. automatically analyzing content of the first WWW
electronic page to identify one or more topics associated with
such page with the computing system;
b. comparing content of the first WWW electronic
page with the computing system with a set of second WWW
electronic pages to identify a selected set of related WWW
electronic pages which also contain content related to said one
or more topics;
c. analyzing a set of links with the computing system
in said selected set of related WWW electronic pages which link
to a set of third WWW electronic pages also having content
related to said one or more topics;

2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
May 16, 2011); Reply Brief ("Reply Br.," filed Nov. 30, 2011); Examiner's
Answer ("Ans.," mailed Sept. 30, 2011); Final Office Action ("Final Act.,"
mailed Dec. 17, 2010); and the original Specification ("Spec.," filed
Sept. 17, 2007).
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d. recommending one or more of said set of third
WWW electronic pages as targets of links to be included on
said first WWW electronic page for said one or more topics.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Cohen et al.
("Cohen")
US 2006/0265670 A1 Nov. 23, 2006
Dean et al.
("Dean")
US 7,716,225 B1 May 11, 2010
Rejection on Appeal
Claims 1–9 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Dean and Cohen. Ans. 4.
GROUPING OF CLAIMS
Based on Appellant's arguments (App. Br. 10–15), we decide the
appeal of the rejection of claims 1–9 on the basis of representative claim 1.3

3 Appellant states (App. Br. 14) "[d]ependent claims 2–7 are believed to
further distinguish for the following reasons. . . . [,]" after which Appellant
merely recites claim language for each of claims 2–5 without substantive,
separate arguments for patentability. App. Br. 14–15. Such statements are
not considered to be arguments. 37 C.F.R. § 41.37(c)(1)(vii) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."). Thus, we do
not find Appellant's arguments (App. Br. 14–15) to be persuasive with

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ISSUES
Appellant argues (App. Br. 5–15; Reply Br. 1–6) the Examiner's
rejection of claims 1–9 under 35 U.S.C. § 103(a) as being obvious over the
combination of Dean and Cohen is in error. These contentions present us
with the following issues:
Issue A
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes all the steps of claim 1, particularly steps
(b), (c), and (d)?
Issue B
Did the Examiner err in combining Dean and Cohen because the
proposed modification purportedly would render Dean unsuitable for its
intended purpose?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
any such arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellant's arguments with respect to claims 1–9,
and we incorporate herein and adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response

respect to dependent claims 2–7, such that they fall with independent
claim 1.
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to Appellant's arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Issue A
Appellant contends, with respect to limitation (b), "[t]he Examiner is
clearly misinterpreting or conflating what Dean teaches in this passage [i.e.,
col. 5, which] merely indicates that he is associating a document with a
'topical cluster.'" App. Br. 10. Appellant further contends Dean "nowhere
hints or suggests that he is comparing content of that page (document) with a
set of second pages (document) to identify a selected set of pages
(documents). In brief, Dean shows no comparison of any kind that could
meet the language of limitation (b)." Id. (emphasis added). With further
regard to limitation (b), Appellant contends Dean also does not teach or
suggest, "comparing content of the first WWW electronic page . . . to
identify a selected set of related WWW electronic pages." Id.
During examination, a claim must be given its broadest reasonable
interpretation consistent with the Specification, as would be interpreted by
one of ordinary skill in the art. Because the Applicant has the opportunity to
amend claims during prosecution, giving a claim its broadest reasonable
interpretation will reduce the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Cir. 1984) (citations omitted); see also In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989) ("During patent examination the pending claims must
be interpreted as broadly as their terms reasonably allow.").
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The Examiner finds, and we agree, the claim 1 limitation (b),
"comparing content," reads on Dean's teaching of using a search query to
identify documents, such as web pages, related to the search query. Dean
col. 9, ll. 28–43; Ans. 11. We note Appellant's Specification4 does not
provide a definition of "comparing content" that would preclude the
Examiner's broad but reasonable interpretation. The Examiner determined
that finding documents using a search query/search term, including web
pages, that each include a common search term, teaches or at least suggests
disputed limitation (b). Id.
With respect to limitation (c), Appellant contends the link analysis in
Dean (col. 6, ll. 33–49) does not work as recited in the claim because "it
simply looks at user behavior in choosing or not choosing the link when it
was presented on the page in order to give it a weight . . . [and i]f the user
clicked on it, the weight is given a positive value . . . [and i]f the user does
not, the link is given a negative value." App. Br. 11. Appellant continues by
arguing, "Dean does not analyze links in a selected set of pages to a third set
of pages, based on a determination that the latter happen to have content in
common." App. Br. 11–12. Appellant concludes by asserting Dean never
considers any page content in carrying out the link analysis, and therefore
does not teach or suggest limitation (c). App. Br. 12.

4 Although not an explicit definition, Appellant's Specification states, "[a]
search engine embodiment of the invention is shown in FIG. 6. The content
of the web page P0 is compared directly to a set of other content related web
pages PC1, PC2, etc, either through explicit textual/multimedia content
references, and/or through semantic relationships." Spec. 13, ll. 8–11
(emphasis added). Thus we find the Examiner's (and our) claim construction
of the broadly recited "comparing content" limitation is consistent with
Appellant's disclosure.
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We disagree with Appellant's overarching contention that Dean does
not consider any page content, at least because of Dean's teaching in
column 9, cited above with respect to limitation (b), of using a search query
to identify specific content related to the search query. We further note
Dean teaches, or at least suggests, "analyzing a set of links with the
computing system in said selected set of related WWW electronic pages
which link to a set of third WWW electronic pages also having content
related to said one or more topics" (claim 1, limitation (c)), at least at Dean,
column 5, lines 29–40.5
Appellant provides no controlling definition of the recited "analyzing"
that would preclude the Examiner's broad, but reasonable interpretation from
being applied in finding Dean's "links are analyzed based on feature data to
determine whether the links are of positive or negative instances." Ans. 12
(citing Dean col. 6, ll. 33–49; and Fig. 7 (illustrating the result of the
disclosed analysis with respect to a linked database with documents A, B,
and C having forward and backward links therebetween.)). We conclude the
recited analyzing step is broadly recited, and find Dean teaches or at least
suggests at least one form of analyzing, thus meeting the disputed limitation.
We note Appellant’s Specification describes one or more
embodiments in which the "analyzing" step may more narrowly include "one
or more statistical algorithms or collaborative filter algorithms in step 130

5 "Examples of features associated with a source document might include
. . . a web site associated with the source document; a number of links in the
source document . . . . This list is not exhaustive and may include more, less,
or different features associated with a source document." Dean col. 5,
ll. 29–40.
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[of Figure 1]." Spec. 3, ll. 13–14. However, we do not import limitations
into the claims from the Specification. SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.")(citation
omitted).
Thus, we do not find Appellant's arguments to be persuasive.
Issue B
With respect to limitation (d), Appellant states, "[e]ven assuming
arguendo Cohen can be considered as teaching 'recommending' targets of
links, the analysis offered by the Examiner is clearly inaccurate and based on
a faulty premise," that is, "Dean somehow teaches determining '. . . whether
links should be modified as changes occur.'" App. Br. 13. Appellant further
argues Dean "does not teach changing the links in the documents; instead it
simply changes the weights given to the links, in order to update the rankings
of the documents." Id.; and see also Reply Br. 3.
Appellant argues, "Dean shows no interest—let alone a suggestion—
in 'modifying' the links in the documents it is ranking . . . . Dean concerns
itself with measuring the meaning and relationship of the links, not altering
this relationship. For Dean to suggest modifying the links would
fundamentally alter the purpose of that disclosure." App. Br. 9.
We note Appellant's arguments are not commensurate with the scope
of the claim which, in limitation (d), merely requires "recommending one or
more of said set of third WWW electronic pages as targets of links to be
included on said first WWW electronic page." We conclude, as a matter of
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claim construction, limitation (d) is recited as an intended use which does
not explicitly change, add, include, or remove links to documents.
"[An intended] use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates." Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although
“[s]uch statements often . . . appear in the claim's preamble,” In re Stencel,
828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose
can appear elsewhere in a claim. Id. Even if we assume, arguendo, the
aforementioned statement of intended use may be accorded patentable
weight by our reviewing court, we find the preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for the reasons discussed below.
Both Cohen and Dean are of the same field of endeavor of
modifying links within a web (Cohen: [0005]; Dean: col. 1,
lines 27-34). It would have been obvious to one of the ordinary
skill in the art at the time of applicant's invention to incorporate
the teachings of Cohen into Dean, that would have allowed
users of Dean to have a useful method of generating a
recommendation for modifying one or more structural
relationships (Cohen: page 8, right column, lines 34-47,
applying a set of rules to said data to generate a
recommendation for modifying one or more of structural
relationships).
Ans. 14.
As for Appellant's argument that combining Dean and Cohen would
render Dean unsuitable for its intended purpose, we are not persuaded.
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An argument that the system is rendered "unsuitable for its intended
purpose" essentially is a "teaching away" argument. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984). The Federal Circuit has held "[a] reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir.1994)).
Appellant has provided no evidence on this record to support the
assertion that Dean and Cohen teach away from Appellant's invention, apart
from mere conclusory statements which are unsupported by factual evidence
and entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Rather, only attorney's argument was presented regarding why (i) Dean's
teaching of measurement of document relevancy and providing document
link recommendations, and (ii) Cohen's teaching of modifying a structural
relationship based upon the recommendation, teach away from limitation
(d). See In re Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Further, Appellant's challenges to the references individually is not
convincing of error in the Examiner's position. See In re Keller, 642 F.2d
413, 426 (CCPA 1981) ("one cannot show non-obviousness by attacking
references individually where . . . the rejections are based on combinations
of references" (citation omitted)). Additionally, the "the combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'l Co. v. Teleflex,
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Inc., 550 U.S. 398, 401, 416 (2007)(citation omitted). Furthermore, the
artisan is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment. See
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Finally, Appellant provides no evidence that combining such
teachings of Dean and Cohen would have been "uniquely challenging or
difficult for one of ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)(citation omitted), nor does
Appellant present evidence that this incorporation would have yielded more
than predictable results at the time of the invention.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and claims 2–9
which fall therewith. See "Claim Grouping," supra.
REPLY BRIEF
To the extent Appellant advances new arguments in the Reply Brief
(Reply Br. 1–6) not in response to a shift in the Examiner's position in the
Answer, we note that "[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived." Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
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issue not raised by an appellant in its opening brief . . . is waived." (Citation
omitted)).6
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1–9 under 35 U.S.C. § 103(a) over the combination of Dean and
Cohen, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1–9.
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) (2011).
AFFIRMED
llw

6 Appellant raises such untimely arguments with respect to the rejection of
dependent claims 2–7 under 35 U.S.C. § 103(a). Reply Br. 4–6. Such
arguments are not in response to a shift in the Examiner's rejection between
the final rejection and the Answer. Compare Final Act. 6–7 and Ans. 7–8.