Ex Parte Kent

Patent Trial and Appeal Board

Apr 20, 2017

13348561 (P.T.A.B. Apr. 20, 2017)

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.
13/348,561 01/11/2012 James Kent 098981-0475 1440
10575 7590
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
DYER, ANDREW R
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
04/24/2017 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES KENT
Appeal 2015-006386
Application 13/348,561
Technology Center 2100
Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
JOHN R. KENNY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—24, all the pending claims in the
present application. See Claim Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on April 6, 2017.
We AFFIRM.
The present invention relates generally to improving a display element
on a web page. See Abstract.
Appeal 2015-006386
Application 13/348,561
Claim 1 is illustrative:
1. A method of improving a display element on a web page,
the display element configured for a visitor to the web page to
perform a specified action on the web page, the method
comprising:
identifying keywords on a web page to determine a target
industry to which the web page relates;
determining a target industry to which the web page
relates by performing a lookup for the identified keywords in an
industry database that includes a plurality of keywords
associated with one or more industries;
generating, using a template database comprising a
plurality of display elements indexed according to industries in
which the display elements have been or may be used, a
plurality of replacement display elements, wherein the
replacement display elements are determined based on the
target industry;
determining, for each of the replacement display
elements, a predicted conversion rate for the display elements,
the predicted conversion rate representing a likelihood that a
visitor to the web page will perform the action specified by the
display element;
generating, based on the predicted conversion rates, an
ordered list of replacement display elements; and
receiving, from a user, a selection input, the selection
input selecting at least one of the replacement display elements
from the ordered list.
Appellant appeals the following rejections:
Rl. Claims 1, 5—8, 12—16, and 20-24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Khopkar (US 2007/0271392 Al, Nov.
22, 2007), Chi (US 2007/0106758 Al, May 10, 2007), Gregoire (US
2006/0026114 Al, Feb. 2, 2006), and Underwood (US 2006/0200751 Al,
Sept. 7, 2006); and
R2. Claims 2—4, 9-11, and 17—19 are rejected under 35 U.S.C.
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Application 13/348,561
§ 103(a) as being unpatentable over Khopkar, Chi, Gregoire, Underwood,
and Chopra (Paras Chopra, Multivariate Testing in Action: Five Simple Steps
to Increase Conversion Rates, SmashingMagazine.com (Nov. 24, 2010)).
ANALYSIS
Issue 1: Did the Examiner err in combining the cited art by using
hindsight and/or by failing to cite any portion of the cited art to show
motivation?
Appellant contends that “the Examiner has used the claims as a
roadmap to assemble a combination of unrelated references which
themselves offer no motivation for making the combination. Instead, the
Examiner has used hindsight reasoning” (App. Br. 11). Appellant further
contends that “the Examiner has failed to cite to any portion[] of Chi or
Gregoire to show any motivation whatsoever to combine Chi or Gregoire
with Khopkar or with one another” (id.).
In response, the Examiner finds that “any judgment on obviousness is
in a sense necessarily a reconstruction based upon hindsight reasoning”
(Ans. 5). The Examiner further finds that “Appellant[] appear[s] to be under
the mistaken belief that prior art can only be combined when the secondary
art explicitly discloses a motivation to combine” (id. at 3) and finds that “the
Supreme Court [has] explicitly rejected the notion that the art must provide
an explicit teaching, suggestion, or motivation to combine prior art” (id. at
4). We agree with the Examiner.
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that “if
a technique has been used to improve one device, and a person of ordinary
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Application 13/348,561
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Furthermore,
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Here, the Examiner has found actual teachings within Khopkar, Chi,
Gregoire, and Underwood to show the knowledge which was within the
level of ordinary skill of an artisan at the time the claimed invention was
made (see Final Act. 3—7). Appellant fails to persuasively illustrate that any
such knowledge was gleaned only from Appellant’s disclosure. Therefore,
we find the Examiner’s combination reconstruction to be proper.
Furthermore, we highlight, as noted supra by the Examiner, “[t]he
motivation need not be found in the references sought to be combined, but
may be found in any number of sources, including common knowledge, the
prior art as a whole, or the nature of the problem itself.” DyStar Textilfarben
GMBH & Co. Deutschland KG v. C.H. Patrick Co., and Bann Quimica
LTDA, 464 F.3d 1356, 1361 (Fed. Cir. 2006); see also In re Bozek, 416 F.2d
1385, 1390 (CCPA 1969) (“Having established that this knowledge was in
the art, the examiner could then properly rely, as put forth by the solicitor,
on a conclusion of obviousness ‘from common knowledge and common
sense of the person of ordinary skill in the art without any specific hint or
suggestion in a particular reference.’”). Thus, we find unavailing
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Application 13/348,561
Appellant’s contention that “the Examiner has failed to cite to any portion[]
of Chi or Gregoire to show any motivation whatsoever to combine Chi or
Gregoire with Khopkar or with one another” (see App. Br. 11), given that
there is no requirement that the Examiner must cite the references sought to
be combined to find the motivation, i.e., the motivation may be found in any
number of sources.
Issue 2: Did the Examiner err in finding that Gregoire teaches or
suggests identifying keywords on a web page to determine a target industry
to which the web page relates, as set forth in claim 1?
Appellant contends that “[njowhere in paragraph [0027] does
Gregoire teach or suggest identifying keywords on a web page to determine
a target industry to which the web page relates. Gregoire describes a method
and system for extracting information ... for classifying that information
according to industry” (App. Br. 15). Appellant contends that “Gregoire
classifies the extracted information, which is very different from the web
page from which the information is extracted[,] . . . which are unlikely to be
classified in any industry except for news as these websites are likely to have
content that is constantly changing” (id.).
The Examiner finds that “[bjecause the extracted information [in
Gregoire], and the keywords used from that information, comes from web
pages, Gregoire unequivocally discloses ‘identifying keywords on a web
page’” (Ans. 9) and that “the extracted information is used to determine to
what industry the extracted information belongs” (id. at 10). We agree with
the Examiner.
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Application 13/348,561
In essence, Appellant contends that there is a difference between
classifying information from a web page and classifying the web page itself
because the websites are likely to have constantly changing content. We
find Appellant’s reasoning to be unpersuasive.
Firstly, we note that even if web content is constantly changing, as
proffered by Appellant, Appellant has not necessarily shown that this means
that the industry to which the website relates is also constantly changing as
the content could merely be different/changing aspects of the same industry.
Secondly, as noted by the Examiner and we agree, “the claim
limitation does not require that the web page itself is classified with a target
industry, but only that a target industry is determined relating to the web
page [and] [b]y classifying information from a web page, that classification
relates to the web page” (Ans. 10). In other words, the Examiner finds that
classifying information toward a specific industry will also give you a target
industry to which the web page relates because the classified information
was gathered from the web page.
Similarly, Gregoire discloses that “the extractor 12 may locate and
extract information from predefined websites” (127), “[t]he classifier 16
receives the extracted information and attempts to classify the information”
(129), and “[t]he classifier 16 also consults the industry database 20 and
attempts to determine if the extracted information is associated with or
related to a particular industry . . . based upon a keyword search within the
extracted information” (131). Gregoire further discloses that “the system
may categorize the type of website based upon the initial information
obtained from the website .... Keywords located in the metadata or other
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Application 13/348,561
portions of the website assist the system in categorizing the website
appropriately” (161).
In other words, Gregoire uses the extracted information from the
website both to associate the information with a particular industry and to
categorize the website itself. Thus, we find unavailing Appellant’s
contention that Gregoire fails to identity keywords on a web page to
determine a target industry to which the web page relates, given the
aforementioned disclosures in Gregoire.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant’s arguments regarding the Examiner’s rejection of independent
claims 8, 15, and 23 rely on the same arguments as for claim 1, and
Appellant does not argue separate patentability for the dependent claims.
See App. Br. 9-16. We, therefore, also sustain the Examiner’s rejection of
claims 2—24.
DECISION
We affirm the Examiner’s § 103(a) rejections R1 and R2.
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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