Ex Parte Gross

Patent Trial and Appeal Board

May 22, 2014

11855934 (P.T.A.B. May. 22, 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 2011-005628
Application 11/855,934
Technology Center 2100
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Before MAHSHID D. SAADAT, CAROLYN D. THOMAS, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005628
Application 11/855,934

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This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 9-13, 17-22, 30-34, and 37-40.1 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a recommender system for generating
accurate and relevant predictions regarding data items and users in a
community (see Spec. 2:14-17). Claim 9, which is illustrative of the
invention, reads as follows:
9. A method of generating automatic recommendations for
human readable content sources to a first user with a computing
system comprising:
(a) processing a set of first ratings from the first user for a first
content source with the computing system, which first content
source includes at least one of a human author, a non-human
entity, and/or a social network contact; wherein a first user
profile is established for the first user, which first user profile
contains his/her ratings for one or more first user selected
human readable content source entities;
(b) processing a set of second ratings from one or more second
users for said first content source;
(c) correlating said set of first ratings and said set of second
ratings with the computing system to predict a selected set of
second users that are for inclusion as human readable content
source entities within said first user profile;
(d) generating a recommendation with the computing system
which identifies one or more of said selected set of second users
to said first user based at least in part on step (c);

1 Claims 1-8, 14-16, 23-29, 35, and 36 have been cancelled.
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Application 11/855,934

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(e) modifying said first user profile upon receiving a
confirmation from the first user to include one or more of said
selected set of second users.
Rejections on Appeal
The Examiner has rejected claims 9-13, 17-22, 30-34, and 37-40
under 35 U.S.C. § 103(a) as being unpatentable over Korte (US
2006/0004713 A1), Johnson-McCormick (US 2007/0073837 A1), and
Thompson (US 2004/0210661 A1). See Ans. 3-17.
Issues on Appeal
Appellant’s arguments in the Appeal Brief present us with the
following issues:
1. Has the Examiner correctly interpreted the claim term
“recommendations,” as recited in claim 9 (App. Br. 10-12)?
2. Does Korte relate to “a method of generating automatic
recommendations,” as recited in claim 9 (App. Br. 12-13)?
3. Has the Examiner provided proper rationale for the proposed
combination (App. Br. 13-15)?

ANALYSIS
At the outset, Appellant contends that the Examiner erred in equating
the claimed recommendation system with a search engine (App. Br. 10-12).
Specifically, Appellant argues that the term “recommendation” is well-
known and refers to “a recommendation generated by a recommender
system, not simply a generic search result created by a search engine” (App.
Br. 11). According to Appellant, the “Background” section of the instant
Specification indicates that “recommender systems generate predictions for
the desirability of an item to a user based on well-known techniques that
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consider user-to-user correlations (collaborative filtering) or item-to-item
correlations (corroborative or content filtering)” (App. Br. 12). However,
we find that, although the portion of the Specification cited by Appellant
explains certain functionalities associated with “recommender systems,”
each independent claim merely recites “a method of generating automatic
recommendations.” Accordingly, the broadest reasonable interpretation of
the claim term “recommendations,” consistent with the Specification, is its
ordinary meaning, i.e., without any requirement that they are generated by a
specific recommender system.
Next, Appellant contends that Korte does not teach or suggest any
“correlations between users, items, etc., or more importantly making any
kind of a prediction or recommendation as set out in claim 1” (App. Br. 12).
The Examiner responds by pointing to paragraphs 65 and 68 of Korte where
positive endorsements are considered “Recommended” (Ans. 17-18).
Further, as used in claim 1, however, a method of generating automatic
recommendations is not limited to the functionality of a recommender
system and instead, merely requires a system that generates such
recommendations. In fact, we understand the Examiner’s proposed rejection
to be premised not on equating a search engine with a recommender system,
but on characterizing the search engine of Korte as a system that includes the
functionalities of a recommender system recited in claim 9. Thus, we agree
with the Examiner (Ans. 18) that Korte’s search engine performs the same
function as the method of generating automatic recommendations recited in
claim 9, i.e., providing recommendations based on correlating one or more
user profile.
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Appellant further argues that the combination of the references is not
based on any proper rationale (App. Br. 13-15, Reply Br. 3). The Examiner
provides a comprehensive response to Appellant’s arguments by describing
the features of Johnson-McCormick and Thompson the ordinary skilled
artisan would have combined with Korte, consistent with the guidelines
stated in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (Ans. 18-19). The
Examiner specifically identifies (id.) improvements made by the
combination to the recommendations generated by Korte, where the specific
types of the algorithm and the feedback mechanism are disclosed by
Johnson-McCormick and Thompson. Indeed, the Supreme Court has
indicated that:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common
sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
KSR, 550 U.S. at 420 (citation omitted).
As discussed above, Appellant’s arguments have not persuaded us that
the Examiner erred, and we therefore sustain the Examiner’s § 103(a)
rejection of claim 9. Appellant presents similar arguments for the remaining
claims stating the proposed combination of references does not teach or
suggest the recited features of those claims (App. Br. 16). Similarly, we
agree with the Examiner’s findings and conclusion and adopt them as our
own (see Ans. 6-17, 19-20). We therefore sustain the Examiner’s § 103(a)
rejections of claims 10-13, 17-22, 30-34, and 37-40.
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DECISION
The Examiner’s rejection of claims 9-13, 17-22, 30-34, and 37-40 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)(1)(iv).

AFFIRMED

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