Ex Parte KLEMM

Patent Trials and Appeals Board

Oct 17, 2018

13173983 - (D) (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/173,983 06/30/2011
48500 7590 10/19/2018
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Reinhard KLEMM
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.
4366-847 1093
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REINHARD KLEMM 1
Appeal2017-007450
Application 13/173 ,983
Technology Center 3600
Before ROBERT E. NAPPI, BETH Z. SHAW, and
JASON M. REPKO, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1 through 20. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Avaya Inc. Br. 2.
Appeal2017-007450
Application 13/173,983
INVENTION
Appellant's disclosed invention is directed to providing a user with
online reviews of an item being displayed on a user interface. See
paragraphs 7 through 9 of Appellant's Specification. Claim 1 is
representative of the invention and reproduced below.
1. A method comprising:
crawling, via a processor, one or more internet
sources to detect online user activity of a user viewing an
item being displayed on a graphical user interface;
identifying, by the processor, a plurality of
feedbacks provided by respective users for the item;
inferring, by the processor, a characteristic of the
user based on the online user activity;
determining, by the processor, respective user
characteristics of the respective users associated with the
plurality of feedbacks by analyzing at least one of online
user activity associated with the respective users or
online content associated with the respective users;
receiving, from the user via the graphical user
interface, a desired ratio of expert and non-expert
feedbacks for the item, the desired ratio defining a
number of expert feedbacks to non-expert feedbacks;
determining, by the processor, a respective degree
of similarity between the user and each of the respective
users by analyzing the characteristic of the user with the
respective user characteristics of the respective users;
identifying, by the processor, relevant feedbacks
for the item from the plurality of feedbacks based on the
respective degree of similarity between the user and the
respective users, wherein the relevant feedbacks are
associated with a portion of the respective users each
having a degree of similarity to the user above a
similarity threshold, and wherein the relevant feedbacks
have the desired ratio of expert and non-expert
feedbacks; and
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outputting, by the processor, the relevant
feedbacks to the user.
REJECTIONS AT ISSUE2
The Examiner rejected claims 1 through 20 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Final Act. 3-5; Answer 2.
The Examiner rejected claims 1, 2, 8 through 11, 13, 14, and 17
through 20 under 35 U.S.C. § 103 for being unpatentable over Trajkovic (US
2007/0028266 Al), Ruiz-Velasco (US 2009/0019488 Al), Norton (US
2007/0011161) and Ramakrishnan (US 2010/0138443 Al). Final Act. 6-9;
Answer 2.
The Examiner rejected claims 3 and 12 under 35 U.S.C. § 103 for
being unpatentable over Trajkovic, Ruiz-Velasco, Norton, Ramakrishnan
and Padgette (US 2004/0172357 Al). Final Act. 6-9; Answer 2.
The Examiner rejected claims 4 and 5 under 35 U.S.C. § 103 for being
unpatentable over Trajkovic, Ruiz-Velasco, Norton, Ramakrishnan and
Golan (US 2008/0235005 Al). Final Act. 9-10; Answer 2.
The Examiner rejected claims 6 and 15 under 35 U.S.C. § 103 for
being unpatentable over Trajkovic, Ruiz-Velasco, Norton, Ramakrishnan
and DeBonet (US 2012/0042337 Al). Final Act. 10-11; Answer 2.
The Examiner rejected claims 7 and 16 under 35 U.S.C. § 103 for
being unpatentable over Trajkovic, Ruiz-Velasco, Norton, Ramakrishnan
and Richman (US 2011/0145073 Al). Final Act. 11; Answer 2
2 Throughout this Decision, we refer to the Appeal Brief filed January 9,
2017, Reply Brief filed April 10, 2017, Final Office Action mailed August 5,
2016, and the Examiner's Answer mailed February 9, 2017.
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PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S.Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). The Supreme Court sets
forth a two-part "framework for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S.Ct. at 2355.
Id.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... [Mayo, 566 U.S. at
76-77]. If so, we then ask, "[w]hat else is there in the claims
before us?" Id., at [77-78]. To answer that question, we consider
the elements of each claim both individually and "as an ordered
combination" to determine whether the additional elements
"transform the nature of the claim" into a patent-eligible
application. Id., at [78-79]. We have described step two of this
analysis as a search for an "'inventive concept"'-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself." Id., at [71-73].
Although an abstract idea itself is patent ineligible, an application of
the abstract idea may be patent eligible. Alice, 134 S.Ct. at 2355. Thus, we
must consider "the elements of each claim both individually and 'as an
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Application 13/173,983
ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78). The claim must contain elements or a
combination of elements that are "sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ abstract idea]
itself." Id. (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit has
explained that, in determining whether claims are patent-eligible under
Section 101, "the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided." Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
The Federal Circuit also noted in that decision that "examiners are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts."
Id. at 1294 n.2.
ANALYSIS
Rejection under 35 U.S.C. § 101
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellant's
arguments. On this record, the Examiner has not demonstrated claim 1
through 20 are directed to patent-ineligible subject matter.
Appellant argues that the Examiner's rejection under§ 101 is in error
as claim 1 is not directed to an abstract idea. App. Br. 11-12. Appellant
argues that claim 1 as a whole improves an existing computer technology as
the claim invokes a computer elements and cannot "cannot be performed
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using anything other than a processor in communication with Internet
sources as well as a user interface." App. Br. 11. Appellant asserts the
Examiner's characterization of the claim as "'comparing new and stored
information and using rules to identify options' over-summarizes,
mischaracterizes, and simply ignores the claims as a whole." App. Br. 13
Appellant argues the Examiner's analogy to the claims of SmartGene is
improper as in the decision in SmartGene the court was concerned with
claims drawn to a computer performing a routine mental process whereas
claim 1 does not recite such a process. App. Br 13-14 (citing SmartGene
Inc. v. Adv. Bio. Labs. SA, 555 F. App'x 950 (Fed. Cir. 2014) (non-
precedential)). Further, Appellant argues that Examiner overlooked several
of the steps recited in claim 1 such as crawling internet sources to detect user
activity, inferring a characteristic of the user based upon the activity,
determining characteristic of users who provided feedback by analyzing
their activity, determining a degree of similarity the user and the users who
provided feedback, and providing feedback based upon the similarity of the
users. App. Br. 12, 15
The Examiner finds that the claims recite an abstract concept of
providing feedback (recommendations) to a user based upon similarity with
other users. Answer 3, Final Act 3-4. The Examiner finds that the abstract
idea recited in the claims are similar to those found abstract by the courts,
stating that the concepts of collecting data and the use of collected data in
combination with rules in decision making are abstract ideas. Answer 3
(citing CyberSource Corp. v. Retail Decisions Inc., 654 F.3d 1366 (Fed. Cir.
2011) and Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1315 (Fed. Cir. 2016)). Further, the Examiner finds that claimed step of
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crawling one or more internet sources is merely a data gathering step.
Answer 3, Final Act. 3.
We have reviewed the Examiner's rejection and response to
Appellant's arguments and we concur with Appellant that the Examiner does
not demonstrate, on this record, that the claims as a whole recite an abstract
idea. Initially, we note that the Examiner's rejection of claim 1, recited on
page 2 through 4 of the Final Rejection, does not cite to or rely on
SmartGene, nor does it equate the claimed process to a the mental process,
and as such, Appellant's arguments directed to Smart Gene appear to be
misplaced. The Examiner's rejection addresses the limitations in a stating
that:
Claim( s) 1-20 is/ are directed to concept of providing feedback
(i.e., recommendations) to a user based on similarity with
another user wherein the relevant feedbacks are associated with
a portion of users each having a degree of similarity to the user
above a similarity threshold which compares new and stored
information and uses rules to identify options (i.e., the
feedbacks to provide) and is an abstract idea. The step of
comparing characteristics and identifying feedbacks compares
new and stored information using rules to determine options
and is an abstract idea. The limitation of inferring a
characteristic based on user activity uses categories to organize,
store and transmit information.
Final Act 3.
We concur with the Examiner that the limitations of crawling the
internet to detect user activity is merely data gathering. However, the
Examiner's citation to CyberSource Corp. and Intellectual Ventures I LLC v.
Symantec Corp. does not sufficiently explain how Appellant's claims are
similar to the claims in Cybersource or Intellectual Ventures. As such, on
this record, the Examiner's response does not demonstrate the Examiner
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fully considered the limitations of claims 1 through 20, and we therefore do
not sustain the Examiner's§ 101 rejection.
Rejections under 35 U.S.C. § 103
Independent claims 1, 10, and 19 and dependent claims 8, 9, 13, 14,
17 and 18.
Appellant argues that the Examiner's rejection of independent claims
1, 10 and 19, is in error as the combination of the references teach the claim
limitation directed to receiving from the user, desired ratios of expert and
non-expert feedback items for the item. App. Br. 22-23. Appellant's
arguments focus on Ramakrishnan and assert that the teachings cited by the
Examiner are concerned with aggregating feedbacks for items and not an
item as claimed. App. Br. 22-23, Reply Br 8-9. Further, Appellant argues
that the aggregation in Ramakrishnan teaches varying the weighting of
recommendations from experts and users and does not teach adjusting
desired ratios defining a number of expert feedback to non-expert feedbacks
as claimed. App. Br. 23.
The Examiner, in response, states that Trajkovic discusses
determining recommendations based upon feedbacks for a single item.
Answer 5 (citing Trajkovich para. 0023). Further, the Examiner finds that
Ramakrishnan teaches the aggregation of feedback that allows the user to
adjust the recommendation to reflect higher confidence in experts then other
users. Answer 5 (citing para. 0041--44 and Fig lB of Ramakrishnan). The
Examiner reasons that if the user were to set the weights for experts to O. 7 5
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and others to 0.25 there would be three times as many reviews from experts
than from others. Answer 5.
Appellant's arguments do not persuade us the Examiner erred in
finding that the claim limitation directed to receiving from the user desired
ratios of expert and non-expert feedback for the item, is taught by
Ramakrishnan. The Examiner finds that the combination of Trajkovich and
Ramakrishnan teach the limitation directed to the recommendations for one
item. Further, Appellant's arguments directed to the weighting of reviews
by experts and users do not persuade us of error. We concur with Appellant
that the Examiner's example of weighting experts at .75 and non-experts at
.25 does not necessarily mean the results will have three times the experts as
non-experts. However, weighting experts 1.0 and non-experts at 0.0 ( or vice
versa) will result in the weighting defining a ratio of a number of experts to
non-experts, in that all reviews will be from experts and none from non-
experts (or vice versa). Representative claim 1 does not recite a limitation
that precludes ratios from being all experts ( or no experts). 3 In addition to
the above weighting of reviews, we also note that Ramakrishnan teaches that
a user can narrow the population of reviews being considered to include or
exclude certain populations, see para. 19 and para. 22, and as such includes
other teachings of defining a ratio of a number of reviewers in one group
(experts) over another. Accordingly, Appellant's arguments do not persuade
us the Examiner erred in finding Ramakrishnan teaches the claim limitation
3 We note that Appellant's Specification contemplates the ratio can be
adjusted to all experts or all user reviews. See Spec., 42. Thus, in light of
Appellants' Specification, the claim encompasses a ratio of 1 : 0 or O: 1.
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directed to receiving from the user, desired ratios of expert and non-expert
feedback items for the item.
Appellant also argues that the Examiner does not provide a proper
motivation to combine the references. App. Br. 25. We are not persuaded
of error by these arguments. Appellant's arguments rely upon the teaching,
suggestion, or motivation (TSM) test to determine obviousness. In KSR, the
Supreme Court rejected the rigid application of the teaching, suggestion, or
motivation (TSM) test in favor of a more expansive and flexible approach to
the determination of obviousness. KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 415 (2007). Specifically, the Court stated that "the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." Id. at 418.
The determination of obviousness can be supported with an "articulated
reasoning with [a] rational underpinning to support the legal conclusion of
obviousness." Id. In this case, the Examiner provides a reasoned rationale
why the skilled artisan would take the cited teaching of each reference and
combine them. See Final Act 7-8. Appellant's arguments do not show error
in the Examiner's reasoning or rationale. Thus, we are not persuaded the
Examiner erred in concluding the skilled artisan would combine the
teachings as set forth in the rejection. Accordingly, we sustain the
Examiner's obviousness rejection of independent claims 1, 10 and 19. We
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also sustain the Examiner's rejection of dependent claims 8, 9, 13, 14, 17
and 18 which are similarly rejected and not separately argued.
Dependent claims 2, 11 and 20
Appellant argues claim 2 recites sorting the feedback based upon
degree of similarity, which is not taught by the combination of the
references. App. Br. 24, Reply Br. 10. Appellant's arguments address the
teachings of Norton, asserting that Norton is directed to sorting items based
upon a keyword suggested by a user, and as such fails to suggest sorting
feedbacks based upon degree of similarity. App. Br. 24.
The rejection relies upon Trajkovich to teach generating similarity
scores, but since it does not disclose an ordered (or ranked) list, Norton was
cited to demonstrate using a ranked list. Answer 5-6 ( citing Trajkovich, ,r 26
and Norton, ,r 5 6).
Appellant's arguments do not persuade us of error in the Examiner's
rejection. Appellant's arguments do not address the combined teachings of
the references, which the Examiner finds meets the claim limitations. We
concur with the Examiner's findings that Trajkovich teaches determining
similarities between profiles and generating a metric of the similarly. See
Trajkovich ,r 26. Further, we concur with the Examiner that Norton teaches
a ranked list. See Norton ,r 56. While Norton's ranked list may be of other
data, it nonetheless teaches that the use of a ranked list is known.
Accordingly, we are not persuaded of error in the Examiner's rejection of
claims 2, 11 and 20 and we sustain the Examiner's rejection of these claims.
Rejections of claims 3 through 7, 12, 15 and 16
Appellant does not addresses the Examiner's obviousness rejections
of dependent claims 3 through 7, 12 15, and 16. Accordingly, there are no
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issues for us to consider with respect to these rejections, and we sustain
these rejections for the same reasons discussed above with respect to
independent claims 1, 10 and 19, upon which they depend.
DECISION
We reverse the Examiner's rejections of claims 1 through 20 under
35 U.S.C. § 101.
We affirm the Examiner's rejections of claims 1 through 20 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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