Ex Parte Kumar et al

Patent Trial and Appeal Board

Aug 30, 2018

11544789 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/544,789 10/05/2006 Amit Kumar
73066 7590 09/04/2018
HICKMAN PALERMO BECKER BINGHAM I Excalibur
1 Almaden Boulevard
Floor 12
San Jose, CA 95113
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.
50269-0836 1722
EXAMINER
MINCEY, JERMAINE A
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIT KUMAR and PRIY ANK S. GARG
Appeal2017-006730
Application 11/544,789 1
Technology Center 2100
Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
MICHAEL M. BARRY, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part and enter a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2015).
1 Appellants identify Yahoo! Inc. as the real party in interest. Appeal Br. 2.
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Application 11/544,789
INTRODUCTION
Appellants' Specification describes "a technique for providing
aggregate tag views of a website." Spec. ,r 1. According to the
Specification, a tag is "a keyword or descriptive term associated with an
item as a means of classification. Spec. ,r 2. The Specification provides an
example in which a user accesses a website devoted to Indian cooking.
Spec. ,r 2. A tag for such a website might be "Indian cooking." Spec. ,r 2.
Among other things, the Specification states "[ w ]hen multiple tags are
associated with multiple webpages of a single website, a relationship
between the multiple tags may be deduced and the multiple tags may
represent the website as a whole." Spec. ,r 27. Further, the Specification
states "[t]his information may be used by users to discover more information
about a single website, discover similar websites, enhance the users'
homepage experience, and assist in searching the Web." Spec. ,r 27.
Claims 1, 9, 13, 16, and 17 are independent claims. Claim 1 is
reproduced below:
1. A method, performed on one or more computing devices,
for allowing tags that were created by one user to be
viewed by another user, comprising:
receiving, from a first user, a particular tag that the first
user associated with a first webpage that
corresponds to a Uniform Resource Locator (URL)
and that is publicly available;
wherein the particular tag is received from the first user
after the first webpage is published;
wherein the particular tag is a keyword or descriptive
term that is associated with the first webpage as a
means of classification of the first webpage;
wherein the first webpage belongs to a website;
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storing information that associates the particular tag with
the website; wherein storing the information does
not cause the particular tag to be contained within
the content of the first webpage;
receiving an indication that a second user, who is
different than the first user, requests a second
webpage that belongs to said website and that is
different than the first webpage;
wherein neither the first user nor the second user is
authorized to remove or change content of the
website; and
in response to receiving the indication and based on the
information, causing to be displayed, to the second
user, with said second webpage, a view of tags that
includes the particular tag.
Appeal Br. 35 (Claims Appendix).
THE REJECTIONS
Claims 1-35 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 3-12.
Claims 1-35 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Vassallo2 and one or more of Imes, 3
Lu, 4 Anderson, 5 Peterson, 6 Frieden, 7 Siegel, 8 Bowden, 9 and Kim. 10 Non-
Final Act. 11-36.
2 Vassallo et al. (US 7,603,352 Bl; Oct. 13, 2009) ("Vassallo").
3 Imes (US 7,978,219 Bl; July 12, 2011) ("Imes").
4 Lu et al. (WO 2007/019311 A2; Feb. 15, 2007) ("Lu").
5 Anderson et al. (US 2008/0034291 Al; Feb. 7, 2008) ("Anderson").
6 Peterson (WO 00/75840 A2; Dec. 14, 2000) ("Peterson").
7 Frieden et al. (US 2008/0016098 Al; Jan. 17, 2008) ("Frieden").
8 Siegel (US 2008/0114778 Al; May 15, 2008) ("Siegel").
9 Bowden et al. (US 2007 /0073704 Al; Mar. 29, 2007) ("Bowden").
1° Kim et al. (US 2008/0195588 Al; Aug. 14, 2008) ("Kim").
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ANALYSIS
Rejection under 35 U.S.C. § 101
Appellants dispute the Examiner's conclusion that claims 1-35 are
directed to patent-ineligible subject matter under 35 U.S.C. § 101. Reply
Br. 3-23. The Examiner characterizes Appellants' claimed invention as
directed to "receiving a tag from a user associated with a webpage and then
the user is presented with tags from other users for the same webpage."
Ans. 4--11. We agree with Appellants that this statement mischaracterizes
the claimed invention, because, with reference to claim 1 for example, the
Examiner's statement does not reflect the second webpage of a website, as
claimed. See Reply Br. 4.
Although we agree with Appellants that the Examiner's analysis
included errors, we agree with the Examiner's conclusion that claims 1-35
are directed to patent-ineligible subject matter under 35 U.S.C. § 101. See
Ans. 3-12. Because our analysis differs from that of the Examiner, we
reverse the Examiner's rejection and enter a new ground of rejection.
In Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014), the
Supreme Court reiterated the framework set out in Mayo Collaborative
Services, v. Prometheus Labs., Inc., 566 U.S. 66 (2012) for "distinguishing
patents that claim ... abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. If a claim falls
within one of the statutory categories of patent eligibility (i.e., a process,
machine, manufacture or composition of matter), the first step is to
determine whether the claim is directed to one of the judicially recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
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Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any
element, or combination of elements, amounts to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355.
Although Appellants' claimed invention broadly falls within the
statutory categories of patent eligibility, step one of the Mayo/Alice
framework requires us to evaluate "the 'focus of the claimed advance over
the prior art' to determine if the claim's 'character as a whole' is directed to
excluded subject matter." Intellectual Ventures I LLC v. Erie Indemnity Co.
850 F.3d 1315, 1325 (Fed. Cir. 2017) (citations omitted). As characterized
by Appellants, claim 1 "is directed to allowing a user to view, on a webpage
of a website, a tag that was created by another user that associated the tag
with a different webpage of the same website." Reply Br. 4 (emphasis
omitted).
Appellants' Specification describes a tag database for managing user-
created tags, explaining that making the tag database public allows other
users with similar interests to search the database and view webpages
associated with one or more tags. Spec. ,r 21; see also Spec. ,r 5 ( stating that
user-created tags that are made public allow other users to use the tags when
search for websites or webpages ). The Specification states that a
relationship may be made between tags of different webpages on a website
because "[t]ypically, different webpages of the same website have similar
content." Spec. ,r 26.
According to Appellants, though, "[a] problem that the claims address
is that user-created tags are associated with only the webpage to which they
were initially assigned." Reply Br. 5. Appellants state that claim 1 solves
that problem "by associating tags with other webpages of a website and
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allowing other users viewing the other webpages to view those tags." Reply
Br. 5.
The Federal Circuit has consistently held that claims analogous to
claim 1 are directed to abstract ideas. The Federal Circuit has concluded, for
example, that claims directed to "collecting information, analyzing it, and
displaying certain results of the collection and analysis" were directed to
abstract ideas. Elec. Pwr. Grp., LLC. V. Alstom S.A., 830 F.3d 1350, 1353-
54 (Fed. Cir. 2016). Similarly, in In re TL! Communications LLC Patent
Litigation, the Federal Circuit concluded that classifying data ( an image) and
storing it based on its classification is abstract under step one of the
Mayo/Alice test. 823 F.3d 607, 611-13 (Fed. Cir. 2016). In Content
Extraction and Transmission LLC v. Wells Fargo Bank, N.A., the Federal
Circuit held that the concept of data collection, recognition, and storage is an
abstract idea, explaining that "humans have always performed these
functions." 776 F.3d 1343, 1347--48 (Fed. Cir. 2014). In Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, the Federal Circuit held that a
claim to a "content filtering system for filtering content retrieved from an
Internet computer network" was directed to an abstract idea. 827 F.3d 1341,
1348--49 (Fed. Cir. 2016). And in Intellectual Ventures I LLC v. Erie
Indemnity Co., the Federal Circuit held that claims directed to creating an
index of descriptive tags and metadata and using the index to search for and
retrieve data is an abstract idea. 850 F.3d 1315, 1328 (Fed. Cir. 2017).
The reasoning in Intellectual Ventures I is instructive in our analysis
of claim 1, including the following explanation:
organizing and accessing records through the creation of an
index-searchable database, includes longstanding conduct that
existed well before the advent of computers and the Internet.
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For example, a hardcopy based classification system (such as
library-indexing system) employs a similar concept .... There,
classifiers organize and cross-reference information and
resources ( such as books, magazines, or the like) by certain
identifiable tags, e.g., title, author, subject. Here, tags are
similarly used to identify, organize, and located the desired
resources.
Id. at 1327. Applying the Federal Circuit's reasoning, even
considering Appellants' characterization of claim 1 as "directed to
allowing a user to view, on a webpage of a website, a tag that was
created by another user that associated the tag with a different
webpage of the same website" (Reply Br. 4 ( emphasis omitted)) and
"associating tags with other webpages of a website and allowing other
users viewing the other webpages to view those tags" (Reply Br. 5), it
follows that claim 1 is directed to an abstract idea.
Claim 1 is also similar to the claims in Electric Power Group,
which were directed to methods of receiving data, analyzing the data,
and displaying the results. Ans. 4--5; Elec. Pwr. Grp., 830 F.3d at
1351-52. There, the court explained the claims were directed to
ineligible abstract ideas because "[t]he advance they purport to make
is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions," Elec. Pwr.
Grp., 830 F.3d. at 1354. Here, Appellants suggest that "for [c]laim 1,
the improvement is sharing webpage-specific tags with other
webpages of a website" (Reply Br. 4), not any particular assertedly
inventive technology for performing such functions. See Elec. Pwr.
Grp., 830 F.3d. at 1354; see also Intellectual Ventures I, 850 F.3d at
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1328 (noting that the high-level nature of the focus of the claims
where "the claims simply call for XML-specific tags in the index
without any further detail" and "[t]he claims are not focused on how
usage of the XML tags alters the database").
In sum, following the Federal Circuit's guidance, claim 1
recites an abstract idea-receiving from a first user a tag associated
with a webpage, associating the received tag with the website of the
webpage, and displaying the tag to a second user in response to a
query-that is analogous to the abstract ideas of using an index to
search for and retrieve data and collecting information, analyzing the
information, and displaying the results. See Ans. 4--5. The abstract
idea recited in claim 1 is analogous as well to the aforementioned
abstract ideas of data collection, recognition, and storage; collecting,
classifying, or otherwise filtering data; classifying data and storing it
based on its classification; andfiltering content retrieved from a
network. Appellants' characterizations of claim !-"allowing a user
to view, on a webpage of a website, a tag that was created by another
user that associated the tag with a different webpage of the same
website" and "sharing webpage-specific tags with other webpages of a
website" (Reply Br. 4}-provide some context to the abstract idea, but
such context does not make claim 1 any less abstract. See SAP Am.
Inc. v. InvestPic LLC, 890 F.3d 1016, 1022 (Fed Cir. May 15, 2018)
("As many [Federal Circuit] cases make clear, even if a process of
collecting and analyzing information is 'limited to a particular
content' or a particular 'source,' that limitation does not make the
collection and analysis other than abstract." (quoting Elec. Pwr, Grp.,
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830 F.3d at 1353, 1355 (citing cases)); accord Bilski v. Kappas, 561
U.S. 593, 612 (2010) (explaining that Parker v. Flook, 437 U.S. 584
(1978) "established that limiting an abstract idea to one field of use or
adding token postsolution components did not make the concept
patentable").
For similar reasons, we also conclude that claim 9 is directed to an
abstract idea under controlling case law. The steps of method claim 9 recites
receiving from multiple users multiple associations between a set of tags
( associated with a first website) and a plurality of webpages, determining a
level of co-occurrence (that exceeds a certain threshold) of tags among the
set of tags and a second set of tags associated with a second website,
determining the first and second website are related, and storing information
indicating an association between the first and second websites. According
to Appellants, "[ c ]laim 9 is directed to leveraging tags of different websites
to determine whether two websites are related" (Reply Br. 4--5) and "solves
the problem [of user-created tags being associated only with the webpage to
which they were initially assigned] by comparing sets of tags on a website
level to determine that two websites are related" (Reply Br. 5).
Accordingly, claim 9 is directed to an abstract idea----determining
whether a first website is related to a second website based on determining
whether a co-occurrence of tags between the two websites exceeds a
threshold-that is analogous to the abstract ideas of collecting information,
analyzing the information, and displaying the results and data collection,
recognition, and storage found to be abstract by the Federal Circuit.
Additionally, the abstract idea recited in claim 9 is analogous to the abstract
ideas discussed above of collecting, classifying, or otherwise filtering data;
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classifying data and storing it based on its classification; and using an index
to search for and retrieve data. Nothing in claim 9, even considering
Appellants' characterization of claim 9 ("leveraging tags of different
websites to determine whether two websites are related" (Reply Br. 5)),
renders it any less abstract under our controlling guidance. See SAP Am.,
890 F.3d at 1022 (explaining that field of use limitations do not render an
abstract idea patentable).
We also conclude that claim 13 is directed to an abstract idea. The
steps of method claim 13 relate to receiving user login information,
generating and providing a homepage for the user, determining the user has
associated one or more tags with one or more webpages of a website, and
generating and providing a second homepage that includes a reference to the
website. According to Appellants, "[c]laim 13 is directed to updating a
user's homepage based upon the user's online tagging activity" (Reply Br.
5) and "solves the problem [ of user-created tags being associated only with
the webpage to which they were initially assigned] by updating a user's
homepage to contain a link to a website that contains a webpage that the user
tagged" (Reply Br. 5---6).
Accordingly, claim 13 recites an abstract idea-as characterized by
Appellants, updating a user's homepage based on the user's online tagging
activity-that is analogous to the abstract idea of collecting information,
analyzing the information, and displaying the results. See Ans. 8-9.
Additionally, claim 13 is directed to updating a data record to account for
any new or modified data, which is analogous to the aforementioned abstract
idea of data collection, recognition, and storage. See SAP Am., 890 F.3d at
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1022 ( explaining that field of use limitations do not render an abstract idea
patentable).
We also conclude that claim 16 is directed to an abstract idea under
controlling case law. Claim 16 relates to the steps of receiving tags from
multiple users concerning different webpages of a website, receiving a set of
search query terms from a particular user ( other than the multiple users),
determining that each search query term is associated with a different
webpage of the website, providing the results of the search (including a
reference to said website) to the particular user. According to Appellants,
"[ c ]laim 16 is directed to leveraging online tagging activity of multiple users
to determine results of a search of websites" (Reply Br. 5) and solves the
problem "[of user-created tags being associated only with the webpage to
which they were initially assigned] by considering tags from multiple
webpages of a website when performing a search" (Reply Br. 6).
Accordingly, claim 16 recites the abstract idea-receiving multiple
tags from multiple users for different webpages of a website, analyzing and
filtering the tags in response to a user's query, and returning the results to
the user-that is analogous to the aforementioned abstract ideas of collecting
information, analyzing the information, and displaying the results and using
an index to search for and retrieve data. See Ans. 10-11. See SAP Am., 890
F.3d at 1022 (explaining that field of use limitations do not render an
abstract idea patentable). Additionally, to the extent claim 16 is reciting a
search engine, we note that "search engines, content-based filtering, and
collaborative filtering were all well-known in the art at the time of the
claimed invention." !IP Engine, Inc. v. AOL Inc., 576 F. App'x 982, 986
(Fed. Cir. 2014) ( citing US Patent 6,314,420 B 1, col. 1 11. 20-45 (issued
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Nov. 6, 2001) ("A user typically connects to a portal or other web site
having a search capability, and thereafter enters a particular query, i.e., a
request for information relevant to a topic, a field of interest, etc. Thereafter,
the search site typically employs a 'spider' scanning system and a content-
based filter in a search engine to search the internet and find information
which match the query.")).
We also conclude that claim 1 7 is directed to an abstract idea under
controlling case law. Claim 17 relates to the steps of storing data that
associates a plurality of related websites with a website community,
receiving a tag from a user associated with a webpage of a website of the
website community, storing information that associates the tag with the
website community. According to Appellants, "[ c ]laim 17 is directed to
associating a website-specific tag with other related websites" (Reply Br. 5)
and "solves the problem [of user-created tags being associated only with the
webpage to which they were initially assigned] by associating tags from one
webpage of a website with one or more other websites" (Reply Br. 6).
Accordingly, claim 17 recites an abstract idea-storing data that
associates multiple websites as a website community, associating a user's
tag for a webpage on one of the website with the website community that is
analogous to the abstract ideas of using an index to search for and retrieve
data and data collection, recognition, and storage. See Ans. 12. Further,
the abstract idea recited in claim 17 is analogous to the aforementioned
abstract ideas of collecting, classifying, or otherwise filtering data; and
classifying data and storing it based on its classification.
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In view of the foregoing, we find independent claims 1, 9, 13, 16, and
17 are directed to abstract ideas. We similarly find dependent claims 2-8,
11, 12, 14, 15, and 18-35 are directed to an abstract idea for the same
reasons explained for their respective independent claims.
Because the claims are directed to an abstract idea, we must consider
whether any element, or combination of elements, amounts to significantly
more than the judicial exception. Alice, 134 S. Ct. at 2355. Appellants
assert that even if claims 1, 3, 9, 13, 16, and 17 were directed to an abstract
idea, the following additional elements are "significantly more" than an
abstract idea:
Claim 1:
receiving an indication ... that a second user, who is
different than the first user, requests a second
webpage that belongs to said website and that is
different than the first webpage;
in response to receiving the indication and based on the
information, causing to be displayed, to the second
user, with said second webpage, a view of tags that
includes the particular tag;
Claim 3:
the particular tag is weighted differently than other tags
in the view of tags; and
the particular tag is weighted based on at least one of the
following factors: whether the first user is
registered with said website, whether the first user
has paid money to be registered with said website,
an amount of time the first user has been registered
with said website, whether and how often other
users have selected other tags created by the first
user, or a generated reputation metric of the first
user;
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Claim 9:
determining a level of co-occurrence of tags among a
first plurality of tags of the set of tags and a second
plurality of tags of the set of tags, wherein the first
plurality of tags is associated with a first website
that comprises a first subset of the plurality of
webpages and the second plurality of tags is
associated with a second website that comprises a
second subset of the plurality of webpages;
in response to determining that the level of co-occurrence
of tags among the first plurality of tags and the
second plurality of tags exceeds a certain
threshold, determining that the first website is
related to the second website;
Claim 13:
in response to receiving the login information,
generating, based on the determination that the
particular user has associated one or more tags
with one or more webpages of the particular
website, a second homepage that includes a
reference to the particular website, wherein the
first homepage did not include a reference to the
particular website;
Claim 16:
determining that each term of said plurality of query
terms in the set of query terms is associated with a
different webpage of said website; and
in response to determining that each term of said plurality
of query terms in the set of query terms is
associated with different webpages of said website,
providing, to the particular user, results of the
search, wherein the results include a reference to
said website; and
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Claim 17:
storing data that associates a plurality of related websites
with a particular website community that
comprises the plurality of related websites;
in response to receiving the tag and based on the data,
storing information that associates the tag with the
particular website community.
Reply Br. 10, 12, 17, 21-22. According to Appellants, "[t]hese additional
elements are not well-understood, routine, or conventional in the field
because nobody has, prior to this invention, even suggested leveraging tags
in the manner recited." Reply Br. 22. Further, Appellants contend "the
'additional elements' of the present claims qualify as 'significantly more'
not only because they are not generic computer functions, but also because
they add specific limitations that are unconventional. Reply Br. 22.
We disagree with Appellants. In determining whether a claim recites
"significantly more" than the abstract idea, "we must examine the elements
of the claim to determine whether it contains an 'inventive concept'
sufficient to 'transform' the claimed abstract idea into a patent-eligible
application." Alice, 134 S. Ct. at 2357. First, Appellants' claims recite
methods performed "on one or more computing devices" (claims 1-17, 35)
or a "machine-readable storage medium storing ... instructions ... executed
by one or more processors" (claims 18-34), but "the use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter." FairWarning IP,
LLC, v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR
Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)).
Indeed, the claims do not require ( and the Specification does not describe)
any nonconventional computing or network components, or even a "non-
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conventional and non-generic arrangement of known, conventional pieces"
(BASCOM, 827 F.3d at 1350).
Further, Appellants' claims recite steps described in the Specification
as functions performed with a "tag database." See Spec. 21. Specifically,
Appellants' Specification describes collecting and managing users' tags in a
tag database that allows users to search the database to view webpages
associated with one or more tags. Spec. ,r 21; see also Spec. ,r 5. Nothing in
the Specification describes the tag database as anything more than a generic
database, and what Appellants alleged to be the "improvement" of claim I-
sharing webpage-specific tags with other pages of a website (Reply Br. 4}-
amounts to a simple correlation between data in a database based on a
common trait, i.e., the website common to the webpages on which the tags
were created. The reason for this correlation, as explained in the
Specification, is the common-sense recognition that, "[t]ypically, different
webpages of the same website have similar content" (Spec. ,r 26). And what
Appellants allege to be "significantly more" in claim I-the "receiving an
indication" and "causing to be display" limitations-simply recite steps
performed by any database, i.e., receiving a data request and displaying the
results. See Intellectual Ventures I, 850 F.3d at 1329 (explaining that
receiving a request to execute a database search and delivering records are
routine computer functions that can only be described as generic or
conventional).
Similarly, the "additional elements" cited by Appellants in claim 3-
that a tag is "weighted" differently than other tags based on at least one of a
list of recited factors-similarly recite routine data processing performed in
a database, not something transformative beyond the abstract idea itself. See
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Intellectual Ventures I, 850 F.3d at 1329. Notably, too, claim 3 recites that a
tag is "weighted," but nothing in claim 3 requires using the weight
associated with the particular tag for any purpose.
The "additional elements" of claim 9 similarly recite routine functions
of a database. Contrary to Appellants' arguments that the "determining"
steps and the "storing" steps of claim 9 "have elements that are far more
specific than the asserted abstract idea" (Reply Br. 10), the steps simply
recite processing data in a database according to a rule ( the claimed "level of
co-occurrence of tags") to assign and store "information that indicates an
association between the first website and the second website." As the
Specification explains, "tags may be associated with a website community
instead of just with a single webpage" because, for example, "multiple
websites may be related in a variety of ways, such as being owned by a
common website owner [or] being related in the type of content they
provide" (Spec. ,r 31 ). One example described in the Specification is that
http://espn.com and http://mlb.com are related websites because each
provides stories and information about Major League Baseball. Spec. ,r 31.
Nothing about the recognition that websites may be related in a variety of
ways, with a level of co-occurrence of tags determining such an association,
transforms claim 9 beyond the abstract idea itself. See SAP, 890 F.3d at
1023 ("What is needed is an inventive concept in the non-abstract
application realm. . . . [L ]imitation of the claims to a particular field of
information ... does not move the claims out of the realm of abstract
ideas.").
Appellants' arguments regarding the purported "additional elements"
of claims 13, 16, and 17 are equally unavailing. See Reply Br. 21.
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Appellants argue "[t]hese additional elements are not well-understood,
routine, or conventional in the field because nobody has, prior to this
invention, even suggested leveraging tags in the manner recited." Reply
Br. 22. For the same reasons explained in Intellectual Ventures I, "although
leveraging tags in the manner recited" narrows the scope of the claims, the
recited elements are akin to limiting an abstract idea to one field of use or
adding token post solution components that do not convert the otherwise
ineligible concept into an inventive concept. See Intellectual Ventures I, 850
F.3d 1328-29 (explaining that using XML tags as a guide to locate
information stored in a database is akin to limiting an abstract idea to one
field of use or adding token post solution components). Indeed, nothing in
the claims or Appellants' Specification supports Appellants' arguments that
the "additional elements" amount to anything more than routine organization
and processing of information stored in a generic database.
Further, Appellants' suggestions that the cited additional elements are
novel or non-obvious is also unavailing. "The [Supreme] Court has held that
whether a claimed process is novel or non-obvious is irrelevant to the § 101
analysis." In re Bilski, 545 F.3d 943, 958 (Fed. Cir. 2008) (citing Diehr, 450
U.S. at 188-91); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716 (Fed. Cir. 2014) ("that some of the [recited] steps were not previously
employed in this art is not enough-standing alone-to confer patent
eligibility upon the claims at issue").
Having considered the elements of each of Appellants' claims both
individually and as ordered combinations, we disagree with Appellants'
arguments that the elements recited in the pending claims amount to
"significantly more" than an abstract idea. Accordingly, having considered
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the Examiner's rejection in light of each of Appellants' arguments and the
evidence of record, we agree with the Examiner's conclusion that claims 1-
35 are directed to patent ineligible subject matter under 35 U.S.C. § 101.
Nevertheless, because our analysis deviates from the reasoning in the
Examiner's Answer (see Ans. 3-12), we reverse the Examiner's§ 101
rejection of claims 1-35 and enter a new ground of rejection for these claims
pursuant to 37 C.F.R. § 4I.50(b).
Rejection under 35 U.S.C. § 103
Claim 1
Appellants contend the Examiner erred in finding the combination of
Vassallo and Imes teaches or suggests "receiving an indication that a second
user ... requests a second webpage ... different than the first webpage" and
"in response to receiving the indication ... causing to be displayed ... a
view of tags that includes the particular tag," as recited in claim 1.
Appeal Br. 8-1 O; Reply Br. 25-26. In particular, Appellants assert the cited
disclosures of Imes do not explicitly teach and, at best, "may suggest" that
two different webpages are provided for two different users. Appeal Br. 8-
9. Even so, Appellants assert that "the suggestion is not explicit and has no
bearing on (and is completely unrelated to) the ['causing to be displayed']
limitation of claim 1." Appeal Br. 9. Appellants also assert Imes fails to
teach or suggest the recited tag. Appeal Br. 9. Further, Appellants argue
there is no teaching or suggestion in Vassallo "that a user is able to view, on
a webpage, a tag that another user associated with another webpage of the
same website." Appeal Br. 9; see also Appeal Br. 10. Instead, Appellants
assert one of the cited disclosures of Vassallo "merely states that a user can
select a tag (e.g., 'food') in a list of tags and, as a result, view a list of pages
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that were tagged with that tag by that user or other users." Reply Br. 25. In
addition, despite acknowledging Vassallo discloses embodiments in which
"users can view other users' tags," Appellants assert that, in order to view
the other users' tags, "the viewing user is visiting a website that is different
than the website that the particular user tagged." Reply Br. 26. Thus,
Appellants argue "an important part that the Examiner's analysis is missing
is that the recited second user is visiting a second webpage of a website that
includes a webpage that was tagged by the first user." Reply Br. 25.
As an initial matter, regarding the "receiving an indication" limitation,
we agree with the Examiner that Imes' s disclosure of dynamically
generating a webpage of a website for a specific user teaches, or at least
reasonably suggests performing the process for a plurality of users, resulting
in different webpages for the same website. Non-Final Act. 13 ( citing Imes,
col. 11, 11. 42--47); Ans. 40--41 (citing Imes, col. 11, 11. 35--45). Contrary to
Appellants' assertion that Imes is deficient because the cited disclosure does
not explicitly suggest the disputed limitation and has no bearing on the
"causing to display" limitation, "[t]he test for obviousness is not ... that the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413,425 (CCPA 1981).
Regarding the "causing to display" limitation, Appellants' arguments
do not substantively address the combined teachings and suggestions of the
prior art-in particular, Vassallo's disclosure that users can view other
users' tags in combination with Imes's disclosure that a user may login to a
website and the webpage for the user may be dynamically generated by a
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process operably associated with generating a website for the specific user.
Non-Final Act. 13-14 (citing Vassallo, col. 4, 11. 13-14; Imes, col. 11,
11. 42--47); Ans. 40-41 (citing Vassallo, col. 3, 11. 29-36, col. 4, 11. 13-15;
Imes, col. 11, 11. 35--45). Contrary to Appellants' arguments, the Examiner
does not rely on Vassallo or Imes alone, but rather relies on the combination
of Vassallo and Imes for the "causing to be displayed" limitation.
More specifically, the Examiner relies on Vassallo for the known
technique of displaying to a user other users' tags on a web application such
as a web browser. Non-Final Act. 11-14. We agree with the Examiner that
Vassallo teaches this technique with its disclosures of displaying tags to a
user in a web browser and that in some embodiments, a user can view other
users' tags. Non-Final Act. 11-14 (citing Vassallo, col. 2, 11. 47-51
( disclosing that the application is shown to display objects such as tags and
can be displayed in a web browser), col. 4, 11. 13-14 ("In some
embodiments, a user can view other users' tags.")); Ans. 40-41 (citing
Vassallo, col. 3, 11. 29-36, col. 4, 11. 13-15). The Examiner relies on Imes,
not Vassallo, as teaching displaying a first webpage of a website to a first
user and a second webpage of the same website to a second user. Non-Final
Act. 13 (citing Imes, col. 11, 11. 42-27). As discussed above, we agree with
the Examiner that the cited disclosure of Imes teaches or suggests the
"receiving an indication" limitation. Accordingly, Appellants' arguments
attacking the teachings of Vassallo and Imes individually are not responsive
to the Examiner's rejection of the "causing to display" limitation and do not
substantively address what a person of ordinary skill would have understood
from the combined teachings of Vassallo and Imes. See Keller, 642 F .2d at
426 ("[O]ne cannot show non-obviousness by attacking references
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individually where, as here, the rejections are based on combinations of
references."). Further, Appellants cite no evidence to suggest that applying
Vassallo' s known technique ( displaying to a user other users' tags) to Imes' s
system (that dynamically generates user webpages of a website }-to produce
a system that displays a first user's tag ( associated with a first webpage of a
website) to a second user on a second webpage of the same website-would
have been uniquely challenging or anything more than a routine exercise of
applying known techniques to achieve predictable results. See KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 416-17 (2007) (explaining as examples of
combinations likely to be obvious "[t]he combination of familiar elements
according to known methods ... when it does no more than yield predictable
results" and "the mere application of a known technique to a piece of prior
art ready for the improvement"); Leapfrog Enters. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
In view of the foregoing, Appellants have not persuaded us that the
Examiner erred in rejecting claim 1 over the combination of Vassallo and
Imes.
Claim 2
Appellants argue Vassallo does not teach or suggest "receiving the
particular tag from the first user includes receiving, from the first user, a
second indication that the particular tag is to be shared with other users that
visit the website to which the first webpage belongs," as recited in claim 2.
Appeal Br. 10-11; Reply Br. 26-27. In particular, Appellants assert that
although the cited disclosure of Vassallo states that an owner of an object,
i.e., the alleged particular tag, can designate the object as public, it fails to
teach or suggest the "second indication that the particular tag is to be shared
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with other users that visit the website to which the first webpage belongs."
Appeal Br. 11. In other words, Appellants assert "merely indicating that a
tag is public is not the same as indicating that a tag is to be shared with other
users that visit the website to which the first webpage belongs."
Appeal Br. 11. Appellants additionally assert the cited disclosure of
Vassallo does not teach or suggest the recited "second information that
indicates that the particular tag is to be shared with other users that visit said
website in response to receiving the second indication." Reply Br. 27.
We disagree with Appellants and agree with the Examiner that the
cited disclosures of Vassallo render obvious the disputed limitations. Non-
Final Act. 14 (citing Vassallo, col. 2, 11. 50-52, col. 11, 11. 53-59); Ans. 41.
In Vassallo, the owner's act of designating the object, or "tag," as "public"
or "private" teaches an indication that the particular tag is to be shared with
other users. Vassallo, col. 2, 11. 50-52, col. 11, 11. 53-59. This disclosure
also would have suggested to one of ordinary skill in the art that, after
designating an object as "public," an indicator is stored with respect to the
particular object that enables the object to be accessed and viewed by
("shared with") other applications and users. Vassallo, col. 2, 11. 50-52, col.
11, 11. 53-59; see also Vassallo, col. 16, 11. 28-30 ("In this example, the
comment submitted by Joe is private. If it were instead public, then it would
then become available to other applications and users for accessing and
viewing."). Additionally, logic dictates that such "public" access and
viewing permissions would extend to other users that visit the website or
webpage associated with the object. See Spec. ,r 5 ( describing "public"
tags); see also KSR, 550 U.S. at 418 ("[A] court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
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employ."), 421 ("Rigid preventative rules that deny factfinders recourse to
common sense ... are neither necessary under our case law nor consistent
with it.").
In view of the foregoing, AppeHants have not persuaded us that the
Examiner erred in rejecting claim 2 over the combination of VassaUo and
Imes. See Appeal Br. 10----11; Reply Br. 26----27.
Claim 3
Claim 3 recites, in relevant part,
the particular tag is weighted based on at least one of the
following factors: whether the first user is registered with said
website, whether the first user has paid money to be registered
with said website, an amount of time the first user has been
registered with said website, whether and how often other users
have selected other tags created by the first user, or a generated
reputation metric of the first user.
In finding the prior art teaches or suggests this limitation, the Examiner
relies on Lu's disclosure that
if a user enters many tags then the user may be considered to
tag documents frequently, and the weight of any given tag by
that user may be considered to be of less weight than the tag of
a user who tags infrequently .... [T]ags may be considered to
be of less weight if they were created earlier in time, and of
more weight if they were created more recently.
Non-Final Act. 15 (citing Lu, 16:32-17:6).
Appellants contend, among other things, the Examiner erred in
finding Lu discloses or suggests the quoted limitation of claim 3. Appeal
Br. 11-12; Reply Br. 27. Appellants assert that although the cited disclosure
of Lu "states that different tags can have different weights and that factors in
weighting include ( 1) the number of times a user has tagged documents
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overall and (2) when a tag was created, neither of these two factors is the
same as the recited factors in Claim 3." Appeal Br. 12.
We disagree with Appellants. Appellants' Specification broadly
defines a reputation system as follows:
A "reputation system" is a system of developing an absolute or
relative reputation ... of a user of a website, based on the
evaluation of past activities or contributions of the user by
website administrators or other users of the site. The system
may incorporate other attributes such as longevity, frequency,
level of service, etc. to affect the user's reputation.
Spec. ,r 40. As cited by the Examiner, Lu's system teaches or suggests
evaluation of a user's past activities (tagging frequency) and applying a
weight to the user's tags based on that evaluation. See Lu, 16:32-17:6.
Reading claim 3 in view of Appellants' Specification, we agree with the
Examiner that at least the claimed "reputation metric" factor is taught or
suggested by Lu's system that evaluates a user's past tagging activities,
including whether the user tags frequently or infrequently. Lu, 16:32-17:6.
In view of the foregoing, AppeHants have not persuaded us that the
Examiner erred in rejecting claim 3 over the combination of Vassallo, Imes,
and Lu.
Claim 5
Claim 5 recites, in part, "the view of tags includes one or more terms
that are not tags" and "the one or more terms are based on at least one of the
following: (1) one or more keywords specified, as meta-data in one or more
webpages of said website, by a webmaster of said website, (2) anchor text of
one or more links that link to one or more webpages of said website, or (3)
analysis of said website by a web crawler for key concepts that said website
is about." In finding the prior art teaches or suggests this limitation , the
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Examiner cites Anderson's disclosures of programming that causing a list of
tags to appear, including, for example, standard or default tags as well as
tags which a particular user or group of users have used in the past. Non-
Final Act. 17 ( citing Anderson ,r 16). The Examiner further cites
Anderson's disclosures of hotlinks associated with tags that appear when a
cursor is positioned over a corresponding tag, which are seen as one or more
links that link to one or more webpages of a website. Non-Final Act. 9
( citing Anderson ,r 15).
Appellants argue the Examiner errs because paragraph 16 of
Anderson "fails to teach or suggest that a term in list 35 (i.e., the alleged
view of tags) is based on (a) keywords specified as meta-data in a webpage
of a website or (b) anchor text of links that link to one or more webpages of
the website," as required by claim 5. Appeal Br. 13. Appellants further
assert Anderson's disclosure of hot links "is the only portion of Anderson
that mentions 'hot links"' and "is merely stating that results of a search may
be accessed through a link." Appeal Br. 14.
In response, the Examiner cites Anderson's disclosure of a web
application that contains associated tags that correspond to content which is
either displayed or accessible by the web-based application. Ans. 42 ( citing
Anderson ,r 13). The Examiner explains "[t]he tags which correspond to
content which is accessible by the web-page based application is [sic] seen
as links that link to one or more webpages of said website." Ans. 42.
In reply, Appellants submit that "[ c ]laim 5 specifically states that the
one or more terms ( which are in the view of tags) are not tags whereas
paragraph 13 of Anderson is all about tags." Reply Br. 28. Appellants
further submit that "paragraph 13 of Anderson fails to teach or suggest that
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its tags are (a) the recited one or more keywords of Claim 5 or (b) the recited
anchor text of Claim 5." Reply Br. 28.
Having considered the Examiner's rejection in light of each of
Appellants' arguments and the evidence of record, we are unpersuaded of
Examiner error. We agree with the Examiner that Anderson, in combination
with Vassallo and Imes, teaches or suggests the disputed requirements of
claim 5 with its disclosures of programming that causes a list of tags to
appear, including standard or default tags and hotlinks associated with the
tags. Non-Final Act. 9 (citing Anderson ,r 15), 17 (citing Anderson ,r 16);
accord Anderson ,r 16 (explaining that list 35 can include standard or default
tags and "potential tags" to assist users in tagging data). Importantly,
Appellants' Specification describes "terms that are not tags" as "auto-tags,"
or terms that were not associated by users with any webpage of the website.
Spec. ,r 47 (distinguishing "'real' (i.e., user-created) tags"). Anderson's
standard or default tags, like Appellants' "auto-tags," are not associated by
users with any webpage of the website because Anderson describes its
standard or default tags as being separate from "tags of this or other users."
Anderson ,r 16. .
In view of the foregoing, Appellants have not persuaded us that the
Examiner erred in rejecting claim 5 over the combination of Vassallo, Imes,
and Anderson.
Claim 7
Appellants argue Frieden does not teach or suggest "said one or more
options include at least one of the following: display tags only, display terms
provided by a webmaster of the website, or display trusted tags differently
than non-trusted tags," as recited in claim 7. Appeal Br. 15-16;
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Reply Br. 29-30. As quoted by Appellants, Frieden states, in relevant part:
"Custom views can filter the tags only to those tags which have been
associated with content by members of the specified view." Appeal Br. 16;
accord Reply Br. 30. According to Appellants, "Frieden implies that only
tags are provided to begin with and that a filter can limit the tags to tags that
satisfy one or more criteria. In contrast, one of the recited options is to
display tags only as opposed to tags and other data items, such as terms
provided by a webmaster of the website." Appeal Br. 16.
We disagree with Appellants' interpretation of claim 7. Contrary to
Appellants' assertion, the recitation of "at least one" option is satisfied by
prior art that discloses any one of the options. See Rhine v. Casio, Inc., 183
F.3d 1342, 1345 (Fed. Cir. 1999) ("Use of the phrase 'at least one' means
that there could be only one or more than one."). Accordingly, we agree
with the Examiner that Frieden broadly but reasonably teaches the disputed
limitation with Frieden's disclosure of custom views whereby an end-user
can filter the tags only to those tags which have been associated with content
by members of the specified view. Non-Final Act. 19-20 (citing Frieden
,r 84).
In view of the foregoing, Appellants have not persuaded us that the
Examiner erred in rejecting claim 7 over the combination of Vassallo, Imes,
and Frieden.
Claim 8
Claim 8 recites "wherein trusted tags are tags that have been created
by users who have done at least one of [a list of recited options]," one of
which is "interacted with one or more webpages of the website to such an
extent that a reputation system, associated with said website, identifies each
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of said users as reputable." Appellants dispute the Examiner's finding that
Siegel teaches or suggests that option. Appeal Br. 17; Reply Br. 30-31.
Appellants assert "Siegel's approach involves how a tag performs," not a
user. Appeal Br. 17. According to Appellants, "a tag's reputation metric
says nothing about the user that create [sic] the tag, but about the composite
scores of other tags from the same user. Furthermore, a tag's reputation
metric says nothing about users who have interacted with one or more
webpages of a particular website." Reply Br. 31.
We disagree with Appellants. Siegel teaches a reputation system that
includes determining the "the composite score" of multiple tags submitted
by the same user. As such, Siegel's reputation system associates the
composite score with the user, and Siegel's composite score reflects the
user's interactions with the website, as broadly recited in claim 8.
Accordingly, we agree with the Examiner.
In view of the foregoing, Appellants have not persuaded us that the
Examiner erred in rejecting claim 8 over the combination of Vassallo, Imes,
Frieden, and SiegeL
Claim 16
Claim 16 recites, in part, "determining that each term of said plurality
of query terms in the set of query terms is associated with a different
webpage of said website" and "in response to determining that each term of
said plurality of query terms in the set of query terms is associated with
different webpages of said website, providing, to the particular user, results
of the search, wherein the results include a reference to said website."
Appellants argue Anderson does not teach or suggest the "determining" and
"providing" limitations as recited in claim 16. Appeal Br. 28-30; Reply Br.
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41--42. In particular, Appellants assert that although the cited disclosure of
Anderson "states that a search is performed based on a tag, this portion
merely states that a search is performed based a single tag, whereas Claim
16 recites a plurality of query terms." Appeal Br. 29. Further, Appellants
state in their Reply Brief that "the fact that one paragraph of Anderson
discloses tagged websites and another paragraph discloses performing a
search for data associated with a single tag is insufficient to disclose the
[disputed] limitations." Reply Br. 42.
We disagree with Appellants. Contrary to Appellants' assertions, the
cited disclosures of Anderson teach "a plurality of query terms" and are not
limited to performing a search based on a single tag. See Non-Final
Act. 33-34 (citing Anderson ,r,r 3, 15). More specifically, paragraph 15 of
Anderson discloses that "when cursor 25 is positioned over a corresponding
one of tags 22, suitable programming searches for data which has been
associated with such tag, and the results of such search are suitably
displayed." Anderson ,r 15. This disclosure pertains to Figure 2 of
Anderson, which clearly shows a tag bar 23 including a plurality of tags 22
("articles, spam filters, customizing"), or "a plurality of query terms," for the
user to search by moving the cursor over any one of them. Anderson Fig. 2
(items 22, 23). To the extent Appellants contend claim 16 requires more
than one of the plurality of query terms as part of a single search, the claim
language is not so limiting. Rather, the relevant portion of claim 16 merely
recites "a set of query terms for a search," which Anderson satisfies.
In view of the foregoing, Appellants have not persuaded us that the
Examiner erred in rejecting claim 16 over the combination of Vassallo and
Anderson.
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Claim 17
Appellants argue Bowden does not teach or suggest either "a website
community" or "in response to receiving the tag and based on the data [ that
associates a plurality of related websites with a particular website
community], storing information that associates the tag with the particular
website community," as recited in claim 17. Appeal Br. 30-33;
Reply Br. 42--45. In particular, Appellants assert the cited disclosures of
Bowden refer to user communities, not a "website community."
Appeal Br. 31-33; Reply Br. 44. Appellants further assert Bowden does not
teach or suggest storing information that associates a tag with a particular
website community based on "certain data" that associates multiple related
websites with a particular website community. Appeal Br. 33; Reply Br. 44.
More specifically, Appellants assert that "[e]ven if a saved URL could be
considered a tag (which it cannot), Bowden fails to teach or suggest ...
certain data. Indeed, a URL is not a tag. While a tag is associated with a
URL, a tag describes content of a webpage and is received from a user."
Appeal Br. 33; Reply Br. 44.
As an initial matter, we disagree with Appellants that Bowden's
disclosure of user communities does not teach or suggest "a website
community." Appellants' Specification states "[a] 'website community'
may refer to a single website or multiple websites that are related in some
way. By extension, 'users of a website community' refers to the users that
visit a single website or related websites." Spec. ,r 29. The Examiner finds
Bowden discloses the disputed limitation with its "My Interests" page,
through which a user is integrated into a plurality of different user
communities, such that users can communicate with one another and share
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interests, comments, and ratings. Non-Final Act. 35-36 (citing Bowden
,r 63). A user's ratings, bookmarks, and click-throughs are used as feedback
indicating the relevance of web pages, websites, and starting points to the
user within a given user community. Bowden ,r 63. For example, the top
pages returned to a user for a particular interest are based on the user's own
feedback data and the data of other users who have similar feedback.
Bowden ,r 63. Further, the Examiner finds Bowden discloses a community
page that allows a user to view other users' interests, such as saved articles
and URLs. Non-Final Act. 36 (citing Bowden ,r 68).
Contrary to Appellants' assertions, we agree with the Examiner that
Bowden's user communities teach or suggest a "website community," as
claimed. As discussed above, each of Bowden's user communities includes
a My Interests page for each of a plurality of users, wherein a user's My
Interests page can include keywords or URLs associated with web pages and
websites and links to those webpages or websites, which are ranked
according to users' feedback. Bowden ,r,r 63, 66, 68. The Examiner's
findings are consistent with Appellants' Specification, which broadly defines
"website community." See Spec. ,r,r 29, 30 ("A website community may be
categorized as 'implicit' or 'explicit.' In either case, the website community
in this sense refers to the users that frequent the website(s).").
Further, we are unpersuaded of error by Appellants' argument
regarding the "storing information" limitation. As cited by the Examiner,
the user in Bowden can use the My Interests page to make an interest
shareable with other members of the community, to add keywords or URLs
to the search list associated with an interest, and to require links returned
with the results of an interest to contain particular keywords or URLs. See
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Non-Final Act. 36 (citing Bowden ,r 66). These disclosures at least suggest
that after the user adds a keyword or URL (and/or requires a link) associated
with an interest, certain information is stored that associates the added
keyword or URL, or "tag," and its associated website, with the particular
user community so that other members of the user community can access the
newly added keyword or URL and its associated website when searching for
a similar interest to that of the user or when visiting the user's My Interests
Page. Further, contrary to Appellants' assertions, given the Specification's
broad description of a "tag" as "any string of one or more characters that a
user associates with a webpage," we agree with the Examiner that a broad
but reasonable interpretation of a "tag" includes Bowden's keyword or URL.
See Spec. ,r 2. Accordingly, we agree with the Examiner that Bowden
teaches or at least reasonably suggests the "storing information" limitation.
In view of the foregoing, Appellants have not persuaded us that the
Examiner erred in rejecting claim 17 over the combination of Vassallo and
Bowden.
Claim 35
Appellants argue Anderson does not teach or suggest "the indication
is input, from the second user, that indicates a second URL of the second
webpage," as recited in claim 35. Appeal Br. 14--15; Reply Br. 28-29. In
particular Appellants assert the cited disclosure of Anderson fails to even
disclose a URL of a webpage, much less user input that indicates a URL.
Appeal Br. 15.
Having considered the Examiner's rejection in light of each of
Appellants' arguments and the evidence of record, we are unpersuaded of
Examiner error. Appellants' argument improperly attacks Anderson
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individually, whereas the Examiner rejects claim 35 over a combination of
Vassallo, Imes, and Anderson, not Anderson alone. Non-Final Act. 17-18;
Ans. 43; Keller, 642 F.2d at 426. With respect to the rejection of claim I-
upon which claim 3 5 depends-the Examiner finds, and Appellants do not
dispute, that Vassallo teaches "receiving, from a first user, a particular tag
that the first user associated with a first webpage that corresponds to a ...
URL" with its disclosure that "[a] user could bookmark a webpage by
tagging its URL." Non-Final Act. 11 (citing Vassallo, col. 3, 11. 31-33);
Ans. 40-41 (citing Vassallo, col. 3, 11. 29-36). Vassallo further discloses
that a user can request to access an application by entering the URL
associated with the application. Vassallo, col. 12, 11. 59---61, col. 13, 11. 13-
14. Contrary to Appellants' assertion, these disclosures of Vassallo teach a
URL of a webpage and user input that indicates a URL.
Additionally, as discussed above with respect to claim 1, we agree
with the Examiner that Imes teaches or suggests dynamically generating a
webpage for each of a plurality of specific users based on a user's request to
access the webpage. Non-Final Act. 13 (citing Imes, col. 11, 11. 42--47);
Ans. 40-41 (citing Imes, col. 11, 11. 35--45). From these cited disclosures of
Imes, one of ordinary skill in the art would understand that in order for the
web browser to locate the webpage for display to the user, a URL would be
input and used. See, e.g., Akamai Techs. Inc. v. Cable & Wireless Internet
Servs., Inc. 344 F.3d 1186, 1188 (Fed. Cir. 2003) (providing a "general
overview" of how people share information over the Internet through web
pages; "[t]o access the web pages, a computer user enters into the browser a
web page address, or uniform resource locator ('URL')"); CTV, Inc. v. Walt
Disney Co., 346 F.3d 1082, 1084 (Fed. Cir. 2003) (recognizing that a URL
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specifies the location of content on the Internet); see also KSR, 550 U.S. at
418 ( explaining that an obviousness analysis can take account of the
inferences and creative steps of a person of ordinary skill in the art); DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1360 (Fed. Cir. 2006) ( explaining that basic principles unlikely to be
restated in cited references are considered as included in the prior art).
Therefore, in light of the above disclosures of Vassallo and Imes,
which remedy the alleged deficiency in Anderson, Appellants have not
persuaded us that the Examiner erred in rejecting claim 35 over the
combination of Vassallo, Imes, and Anderson.
In conclusion, having considered the Examiner's§ 103 rejections of
claims 1, 2, 3, 5, 7, 8, 16, 17, and 35 in light of each of Appellants'
arguments and the evidence of record, we disagree with Appellants and
agree with the Examiner's findings, conclusions, and reasoning, which we
adopt as our own. Appellants do not present separate arguments for
dependent claims 4, 6, 17-25, 33, and 34; thus, these claims fall with
representative claim 1. Appeal Br. 11, 13, 14, 16, 18, 30, 34; 37 C.F.R.
§ 4I.37(c)(l)(iv). Thus, we sustain the Examiner's rejections of claims 1, 2,
4--8, 16-19, 21-25, and 33-35.
Claims 9-12 and 26-29
Claim 9 recites, in relevant part,
determining a level of co-occurrence of tags among a first
plurality of tags of the set of tags and a second plurality of tags
of the set of tags, wherein the first plurality of tags is associated
with a first website ... and the second plurality of tags is
associated with a second website.
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In finding the prior art teaches this limitation, the Examiner relies on
Bowden' s disclosure of identifying user queries or interests that are related
to the currently considered element (for example, a tag) by searching a
lookup table or index that relates elements to user queries or interests.
Non-Final Act. 22 (citing Bowden ,r 44).
Appellants contend, among other things, the Examiner erred in
finding Bowden discloses or suggests the "determining a level of co-
occurrence" limitation. Appeal Br. 18-20; Reply Br. 32-34. Appellants
assert "the[] cited paragraphs fail to teach or suggest determining a level of
co-occurrence among two different pluralities of tags, much less that the
different plurality of tags are associated with different websites." Appeal
Br. 20. Appellants further assert that "while paragraph 44 refers to
relatedness, that relatedness is with respect to (a) elements ( or Bowden' s
'tags') and queries or (b) queries themselves, not with respect to websites."
Appeal Br. 20. In response, the Examiner maintains Bowden teaches the
disputed limitation because "[a] level of co-occurrence is broad. Queries
matching entries within a lookup table is seen as a level of co-occurrence."
Ans. 44--45. In reply, Appellants submit the Examiner's Answer ignores
how "a level of co-occurrence" is used in claim 9-in particular, that the
determined level of co-occurrence is among a first plurality of tags
associated with a first website and second plurality of tags associated with a
second website. Reply Br. 33.
Having considered the Examiner's rejection in light of each of
Appellants' arguments and the evidence of record, we find the Examiner
erred. Bowden' s disclosure of identifying user queries or interests that are
related to an element, such as a tag, does not support the Examiner's finding
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that Bowden teaches or suggests the "determining a level of co-occurrence"
limitation, as recited in claim 9. Indeed, the Examiner has not provided
sufficient persuasive evidence or explanation that Bowden' s identifying
procedure can be applied to more than one element at a time or to sets of
elements at the same time. Nor has the Examiner provided sufficient
persuasive evidence that the user queries or interests are associated with a
first website or that a plurality of elements are associated with a second
website. Further, the Examiner does not find or explain that Vassallo
teaches or suggests the "determining a level of co-occurrence" limitation.
See Non-Final Act. 21-24; Ans. 44--45. Additionally, the Examiner has not
provided an adequate rationale to fill the gaps in the cited prior art. See
Non-Final Act. 21-24; Ans. 44--45.
Accordingly, having considered the Examiner's rejection of
independent claim 9 in light of Appellants' arguments and the evidence of
record, we do not sustain the Examiner's rejection of claim 9, nor do we
sustain the Examiner's rejection of dependent claims 10-12 or 26-29.
Claims 13-15 and 30-32
Claim 13 recites, in relevant part, "in response to receiving the login
information, generating, based on the determination that the particular user
has associated one or more tags with one or more webpages of the particular
website, a second homepage that includes a reference to the particular
website." In finding the prior art teaches this limitation, the Examiner relies
on Imes' s disclosures of dynamically generating a webpage for a specific
user, a user associating a reference or webpage with an image, and a
subscriber requesting and accessing an updated list (for example, real-estate
listings) that includes image information, such as a reference or webpage.
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Non-Final Act. 28-29 (citing Imes, col. 5, 11. 34--36, col. 11, 11. 42--47, col.
12, 11. 5-10, col. 13, 11. 31-36); see also Ans. 46 (citing Imes, col. 11, 11. 40-
48). The Examiner explains "the second homepage is seen as the page with
an image associated with a webpage, such as an updated listing." Non-Final
Act. 29.
Appellants contend, among other things, the Examiner erred in
finding Imes discloses or suggests the "generating ... a second homepage"
limitation. Appeal Br. 23-26; Reply Br. 35-38. Instead, Appellants assert
"even if a webpage dynamically generated for a user [is] a homepage, the
cited art fails to even suggest that [the] webpage is generated based on a
determination that the user previously 'tagged' a webpage of a website,
much less that the generated webpage includes a reference to that website."
Appeal Br. 24. Appellants further assert the Office Action improperly
dissects the limitations and evaluates them in in isolation by "separat[ing]
the 'generating' from ( 1) the thing (i.e., a second homepage) that is being
generated and (2) what the generating is based on." Appeal Br. 24--25.
Appellants additionally assert that none of the cited disclosures of Imes
refers to tags and, in fact, the entirety of Imes fails to disclose tags. Appeal
Br. 25.
Having considered the Examiner's rejection in light of each of
Appellants' arguments and the evidence of record, we find the Examiner
erred. The cited disclosures of Imes do not support the Examiner's finding
that Imes teaches or suggests the "generating ... a second homepage"
limitation, as recited in claim 13. Although Imes discloses dynamically
generating a webpage for a user, the Examiner has not provided sufficient
persuasive evidence or explanation that Imes dynamically generates a
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webpage "based on the determination that the particular user has associated
one or more tags with one or more webpages of the particular website," as
required by claim 13. Nor has the Examiner provided sufficient persuasive
evidence or explanation that the other cited disclosures of Imes-relating to
associating a reference or webpage with an image and updating lists of
image information-remedy this deficiency. Although the Examiner cites
Bowden for the preceding limitation of "determining that the particular user
has associated one or more tags with one or more webpages of a particular
website," the Examiner has not provided sufficient persuasive evidence or
explanation that the combined teachings of Bowden and Imes would arrive
at the disputed claim limitation, which requires "generating, based on the
determination ... , a second homepage." See Non-Final Act. 26-30 (citing
Bowden ,r 63); Ans. 46. Additionally, the Examiner has not provided an
adequate rationale to fill the gaps in the cited prior art. See Non-Final Act.
26-30; Ans. 46.
Therefore, having considered the Examiner's rejection of independent
claim 13 in light of Appellants' arguments and the evidence of record, we do
not sustain the Examiner's rejection of claim 13, nor do we sustain the
Examiner's rejection of dependent claims 14, 15, or 30-32.
DECISION
We reverse the Examiner's decision rejecting claims 1-35 under
35 U.S.C. § 101.
We enter a new ground of rejection for claims 1-35 under
35 U.S.C. § 101.
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We affirm the Examiner's decision rejecting claims 1-8, 16-25, and
33-35 under 35 U.S.C. § 103.
We reverse the Examiner's decision rejecting claims 9-15, and 26-32
under 35 U.S.C. § 103.
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 4I.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
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ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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 ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
41