Ex Parte Hubner et al

Patent Trial and Appeal Board

May 25, 2016

12487132 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/487,132 06/18/2009
25537 7590 05/27/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Paul V. HUBNER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20090066 6575
EXAMINER
HASAN, SYED HAROON
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL V. HUBNER, KRISTOPHER A. PATE,
STEVEN T. ARCHER, and ROBERT A. CLA VENNA
Appeal2013-010945
Application 12/487,132
Technology Center 2100
Before ERIC S. FRAHM, LARRY J. HUME, and JAMES W. DEJMEK,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-010945
Application 12/487, 132
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-23. We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm.
Appellants 'Disclosed Invention
Appellants' disclosed and claimed invention is a method of and
system for generating a plurality of search results associated with a media
selection based in part on other users who have previously viewed the same
media selection (claims 1, 12; Abs.; Fig. 3).
Exemplary Claim
Exemplary independent claim 12 under appeal reads as follows:
12. A system, comprising:
a network element communicatively coupled to a
network wherein the network element comprises one or more
processors configured to:
receive an indication of an electronic media selection
from a user;
identify a search input in metadata associated with the
electronic media selection;
generate a plurality of search results from one or more
electronic data sources based at least in part on the identified
search input for a plurality of other users who have previously
made the same electronic media selection; and
provide at least one of the plurality of search results via
the network to one or more devices accessible to a user,
wherein the at least one of the plurality of search results are
capable of being delivered during delivery of the electronic
media selection to the user.
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Application 12/487, 132
Examiner ;s Rejections
(1) The Examiner rejected claims 1-21 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Poll et al. (US 2006/0168622
Al; published July 27, 2006) and Oztekin et al. (US 7,440,968 Bl;
published Oct. 21, 2008). Final Act. 3-16; Ans. 3-16.
(2) The Examiner rejected claims 22 and 23 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Poll, Oztekin, and Barrett
et al. (US 2003/0135490 Al; published July 17, 2003). Final Act. 16; Ans.
16-17.
Appellants ' Contentions 1
(1) Appellants contend (App. Br. 8-11; Reply Br. 2-9) the Examiner
erred in rejecting claims 1-21under35 U.S.C. § 103(a) over the
combination of Poll and Oztekin for numerous reasons including:
(a) Oztekin fails to teach providing results based on search inputs
from "a plurality of other users;" (App. Br. 8; Reply Br. 6-7);
(b) Oztekin fails to teach "generating a plurality of search results ...
based at least in part on the identified search input for a plurality of other
users," (App. Br. 9-10; Reply Br. 2-6);
1 Aside from asserting claims 22 and 23 are allowable for the same reasons
argued for claim 1 (which grounds are different because different references
are applied), Appellants' Brief fails to present any arguments with regard to
the rejection of claims 22 and 23 under§ 103(a) over Poll, Oztekin, and
Barrett (see App. Br. 11, Reply Br. 8-9). Therefore, because Appellants
have not disputed the Examiner's rejection set forth in the Answer (see
Ans. 16-17), Appellants have not shown that the Examiner erred in rejecting
claims 22 and 23. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/487, 132
(c) there is no motivation to combine Oztekin with Poll, and, even if
combined, the "teaching of Oztekin, cache search results, would change the
stated principle of operation of Poll, which is to generate new search results"
(App. Br. 10-11; Reply Br. 8).
Issues on Appeal
Appellants, in the Appeal Brief, present arguments to claims 1-23 as a
group, without arguing any specific claim (App. Br. 8-12; see also Reply
Br. 2). In the Reply Brief, Appellants, for the first time, present arguments
on the merits as to claim 1 (Reply Br. 2-8), and rely on those arguments as
to the patentability of remaining claims 2-23 (Reply Br. 8-9). Claims 1 and
12 contain similar features relating to generating search results based upon
user search input. Appellants' arguments in the Reply Brief drawn to claim
1 are untimely, and Appellants have not shown good cause as to why any
new arguments as to claim 1 should be considered. See 3 7 C.F .R.
§ 41.41(a)(2). Accordingly, we select claim 12 as representative of the
group of claims consisting of claims 1-21, and we will address
representative independent claim 12, in our analysis infra.
Based on Appellants' arguments in the Appeal Brief (App. Br. 8-11)
and the Reply Brief (Reply Br. 2-9), the following issues are presented on
appeal:
(1) Did the Examiner err in rejecting claims 1-21 as being obvious
because, allegedly, the combination of Poll and Oztekin does not teach or
suggest the limitation at issue in representative claim 12 of "generat[ing] a
plurality of search results from one or more electronic data sources based at
least in part on the identified search input for a plurality of other users who
have previously made the same electronic media selection?"
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Application 12/487, 132
(2) Did the Examiner err in rejecting claims 1-21 as being obvious
because, allegedly, Poll and Oztekin are not properly combinable and there
is no teaching, suggestion or motivation provided for the combination of
Poll and Oztekin as set forth in representative claim 12?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions in the Appeal Brief that the Examiner has erred. We disagree
with Appellants' conclusions.
A system claim generally covers what the system is, not what the
system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875)
("The inventor of a machine is entitled to the benefit of all the uses to which
it can be put, no matter whether he had conceived the idea of the use or
not."). 2 The only structural limitations in representative claim 12 are a
system comprising a network element with one or more processors, wherein
2 Conversely, computer-implemented functional claim limitations may
narrow the functionality of the device, by limiting the specific structure
capable of performing the recited function. Compare Nazomi
Communications, Inc. v. Nokia Corp., 739 F.3d 1339, 1345, (Fed Cir. 2014)
(where claims were drawn to a CPU that can perform processing of both
register-based and stack-based instructions, and Appellants alleged
infringement of claims based on claim construction requiring only hardware
capable of performing the claimed functionalities with Intel Corp. v. US.
Int'! Trade Comm 'n, 946 F.2d 821, 832, (Fed. Cir. 1991) (where the court
found that "[ s ]ince hardware cannot meet these limitations in the absence of
enabling software, the claims are properly construed as claiming an
apparatus comprising a combination of hardware and software capable of
practicing the claim limitations.").
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Application 12/487, 132
the network element is communicatively coupled to a network. The
Examiner teaches each structural limitation (Ans. 6 citing Poll i-fi-f 15-20
which disclose a system having a network element which consists of one or
more processors) and further addresses the functional limitations as
discussed in the analysis below.
Claims 1-21
With regard to representative claim 12, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 6-9; Ans. 6-9), and (2) the reasons set forth by
the Examiner in the Examiner's Answer in response to Appellants' Appeal
Brief (see Ans. 17-25). We concur with the conclusions reached by the
Examiner with regard to the obviousness of claims 1-21 in view of the
combination of Poll and Oztekin.
The Examiner is correct that Oztekin teaches a plurality of users
(Ans. 8; Final Act. 4--5; see also Oztekin col. 7, 11. 51-52).
Although Appellants criticize Oztekin for not teaching "generating a
plurality of search results ... based at least in part on the identified search
input for a plurality of other users" (App. Br. 8), Poll, not Oztekin, is relied
upon by the Examiner for "generating a plurality of search results ... "as
part of the combination of references. (Final Act. 4 ). Oztekin teaches
"based at least in part on the identified search input for a plurality of other
users" (Ans. 9-10; Final Act. 4--5; Oztekin, col. 8, 11. 31-55). Each
reference relied upon by the Examiner must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot show
non-obviousness by attacking references individually where the rejections
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Application 12/487, 132
are based on combinations of references) (citation omitted). In this light, we
are not persuaded by Appellants' arguments (App. Br. 8-10; Reply Br. 2---6)
that the combination of Poll and Oztekin fail to teach the limitation in
representative claim 12 of "generate a plurality of search results from one or
more electronic data sources based at least in part on the identified search
input for a plurality of other users who have previously made the same
electronic media selection."
We are also unpersuaded by Appellants' contention (App. Br. 10-11)
that the Examiner has failed to provide evidentiary support for the
motivation to combine Poll with the teachings of Oztekin. Evidentiary
support from the teaching reference is not necessary because the motivation
can come, for instance, from general knowledge within the art. 3 However,
Appellants have not responded to or refuted the Examiner~s citation (A.ns. 8,
25; Final /\ct. 8) to Oztekin (coL 8) lL 31----55\ which provides support for
3 In re Sernaker, 702 F.2d 989) 994----95 (Fed. Cir. 1983); see also Dystar
Texti(farhen GrnbH & Co. Deutschland KG v. CJ!. Patrick, Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006 ):
Indeed, we have repeatedly held that an implicit motivation to
cornbine exists not onlv when a suggestion rnav be gleaned
J ~ J
from the prior art as a whole) but when the 'improvement' is
technology-independent and the combination of reforences
resu1 ts in a product or process that is more desirable, for
exarnple because it is stronger, cheaper, cleaner) faster, lighter,
smaller) more durable, or more efficient Because the desire to
enhance commercial opportunities by improving a product or
process is universal--------and even comrnon-sensical-------we have
held that there exists in fhese situations a motivation to combine
prior art references even absent any hint of suggestion in the
references themselves.
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Application 12/487, 132
the Exarniner;s motivation to combine PoH and Oztekin (to increase search
efficiency by storing search results because the average response time and
cost of a search is lowered by storing the search results of previously
requested search queries in a cache).
Claims 2 2 and 2 3
Appellants have failed to show that the Examiner erred in determining
that the combination of Poll and Oztekin teaches or suggests the method and
system further comprising tracking user responses recited in claims 22
and 23 because Appellants do not address the merits of the inclusion of
Barrett in the combination, or otherwise present arguments on the merits
with regard to these claims (see App. Br. 11; Reply Br. 8-9). See 37 C.F.R.
§ 41.37(c)(l)(iv) (requiring a statement in the briefs as to each ground of
rejection presented by Appellants for review); 37 C.F.R. § 41.37(c)(l)(iv)
(stating that arguments not presented in the briefs by Appellants will be
refused consideration). As such, Appellants have not separately argued that
the Examiner erred in rejecting claims 22 and 23 or otherwise shown this
obviousness rejection to be in error. See 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSIONS
( 1) The Examiner did not err in determining the combination of Poll
and Oztekin teaches or suggests the limitations of representative claim 12 as
being obvious, because (a) the combination of Poll and Oztekin teaches or
suggests the contested limitation "generate a plurality of search results from
one or more electronic data sources based at least in part on the identified
search input for a plurality of other users who have previously made the
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Application 12/487, 132
same electronic media selection," as recited in representative claim 12; and
(b) Poll and Oztekin are properly combinable.
(2) Appellants have not shown the Examiner erred in rejecting claims
22 and 23 as being unpatentable under 35 U.S.C. § 103(a) over the
combination of Poll, Oztekin, and Barrett.
DECISION
We affirm the Examiner's rejections of claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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