Ex Parte Kandogan et al

Patent Trial and Appeal Board

Jul 17, 2014

11928810 (P.T.A.B. Jul. 17, 2014)

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.
11/928,810 10/30/2007 Eser Kandogan YOR920070648US1 7864
48062 7590 07/18/2014
RYAN, MASON & LEWIS, LLP
1175 Post Road East
2nd Floor
Westport, CT 06880
EXAMINER
PENG, HUAWEN A
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
07/18/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ESER KANDOGAN, JIE LU, and MICHELLE XUE ZHOU
____________

Appeal 2011-011194
Application 11/928,8101
Technology Center 2100
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1–20 under 35 U.S.C. § 102(e) as
anticipated by Omoigui (US 2007/0016563 A1, pub. Jan. 18, 2007). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 According to the Appellants, International Business Machines Corporation
is the real party in interest (App. Br. 1).
Appeal 2011-011194
Application 11/928,810

2
Claimed Subject Matter
Claims 1, 14, 18, and 19 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.

1. A method for generating one or more context-sensitive
content recommendations, comprising the steps of:
detecting information needs of a user;
retrieving one or more content-recommendation
templates that substantially match the detected information
needs; and
instantiating the retrieved templates with one or more
parameter values to generate one or more recommended
contents, wherein said steps are performed by a processor.

ANALYSIS
The Appellants contend that the Examiner’s finding that Omoigui
discloses “instantiating the retrieved templates with one or more parameter
values to generate one or more recommended contents,” as recited in claim 1
is inadequately supported. See App. Br. 5–6. We agree.
The Examiner’s finding relies on Omoigui at paragraph 59, lines 11–
13 of paragraph 107, and lines 8–15 of paragraph 162. Ans. 4, 12–13. The
Examiner does not explain, and we cannot understand, how these paragraphs
evidence the aforementioned limitation of claim 1. For example, the
Examiner quotes particular lines of paragraph 162, which state:
At a high level, the philosophy of Dynamic Linking is that the
system determines what the dragged is about and/or
semantically retrieve items, in the context of the template of the
dropped, from the source represented by the dropped. Once the
semantic client retrieves the key concepts from the dragged (as
has been previously described), it passes the metadata to the
server(s) (possibly federated). Each server then asks the KDSes
it is configured with to categorize the context.
Appeal 2011-011194
Application 11/928,810

3
See Ans. 12–13. The Examiner determines that these lines of paragraph 162
correspond to “instantiating the retrieved templates,” as recited in claim 1.
See id. However, these lines of paragraph 162 do not expressly disclose
instantiating a template. Further, the Examiner does not explain why or how
the content of the quotation evidences “instantiating the retrieved templates
with one or more parameter values,” as recited by claim 1. Additionally, we
note that the Appellants assert, in the Reply Brief, that instantiating a
template with parameter values involves “populating” the template with such
parameter values, which is distinct from “categorizing [a] context,” as
described in the above-quoted lines of paragraph 162. Reply Br. 4.
In view of the foregoing, we cannot determine that the Examiner’s
finding is supported by a preponderance of the evidence.
Thus, the Examiner’s rejection of claim 1 as anticipated by Omoigui
is not sustained. Additionally, the Examiner’s rejection of claims 2–13,
which depend from claim 1, is likewise not sustained.
Independent claims 14, 18, and 19, include either the same or a
similar limitation to the above-recited limitation of claim 1. Accordingly,
the Examiner’s rejection of these independent claims is not sustained for the
same or similar reasons as discussed above. Additionally, the Examiner’s
rejection of claims 15–17 and 20, which depend from claim 14 and 19,
respectively, is likewise not sustained.

Appeal 2011-011194
Application 11/928,810

4
DECISION
We REVERSE the rejection of claims 1–20.

REVERSED

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