Ex Parte LI et al

Patent Trial and Appeal Board

May 15, 2014

11117403 (P.T.A.B. May. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KE QIN LI, JUN TAO MA, and PEN ZHANG
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Appeal 2011-009064
Application 11/117,403
Technology Center 2400
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Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-16, 18-20, 23, and 24. App. Br. 4. Claims 17,
21, and 22 have been cancelled. Id. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
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Claimed Subject Matter
Claims 1 and 20 are the independent claims on appeal. Claim 1, reproduced
below, is illustrative of the appealed subject matter.
1. A method for providing information to an instant messaging (IM)
user, the method comprising:
sending, by an information delivery device, information to the
user via an instant message based on interest information provided by
the user, the interest information not being restricted to a
predetermined set of interest information offered by an information
provider; wherein
the information is sent to the user based on the interest
information and priority information provided by the user, the interest
information being in the form of a text string provided by the user,
and the priority information being generated based on the context of
the text string, and
the priority information is indicative of a relative importance of
the interest information to the user.

Rejections
Claims 1-6, 10-16, 18-20, 23, and 24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hutcheson (US 2003/0032409 A1, pub. Feb. 13, 2003) and
Kishore (US 2006/0064431 A1, pub. Mar. 23, 2006).
Claims 7-9 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Hutcheson, Kishore, and Liu (US 2004/0220925 A1, pub. Nov. 4, 2004).

OPINION
Obviousness based on Hutcheson and Kishore
Independent claim 1 recites: “sending, by an information delivery device,
information to the user via an instant message based on interest information
provided by the user . . . wherein the information is sent to the user based on the
interest information and priority information provided by the user, the interest
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information being in the form of a text string provided by the user, and the priority
information being generated based on the context of the text string.” App. Br.,
Clms. App’x. (emphasis added).
The Examiner finds that Hutcheson discloses generation of priority
information “based on the context of the interests provided by the user.” Ans. 4
(citing Hutcheson, para. [0080]). The Examiner interprets the term “context” as
“any information related to the user’s interest, e.g.[,] behavior.” Id. The Examiner
further finds that while Hutcheson lacks a text string, Kishore discloses interest
information in the form of a text string. Ans. 5 (citing Kishore, paras. [0027],
[0038], [0040, [0065]). The Examiner concludes that it would have been obvious
to incorporate Kishore’s “text based user interest information” into Hutcheson’s
invention to “incorporate more types of user interest information and thereby
provide targeted information that more closely matches the user’s interests.” Ans.
5. Thus, the Examiner’s combination solely relies upon Hutcheson for generating
priority information based on context.1
First, the Appellants contend that the Examiner’s interpretation of the term
“context” is unreasonably broad, as it is inconsistent with the plain meaning of the
term. App. Br. 18-20. In this regard, the Appellants assert that the term “context”
refers to “parts of a discourse that surround a word or passage,” or “the interrelated
conditions in which something exists or occurs.” App. Br. 19 (quoting Merriam-
Webster Dictionary, http://www.merriamwebster.com/ dictionary/context (last

1 Notably, although the Examiner cites paragraph [0040] of Kishore, which
discloses that keywords and noun phrases may include weight values, the
Examiner does not modify Hutcheson’s method based on Kishore’s disclosure of
weighting values. See id., Kishore, para. [0040]. Accordingly, the Examiner’s
comments in the “Response to Argument” section regarding the application of
Kishore’s disclosure to “generation of priority information based on context” are
outside the scope of the rejection. See Ans. 12-13.
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visited December 2010). Second, the Appellants contend that when the term
“context” is “properly interpreted,” the portion of Hutcheson relied upon by the
Examiner fails to disclose or suggest generation of priority information based on
context of a text string. App. Br. 20-21.
The Appellants’ first contention is persuasive. The Specification does not
provide a particular definition for the term “context.” 2 As such, the claim term is
given “[its] broadest reasonable interpretation consistent with the specification”
and “in light of the specification as it would be interpreted by one of ordinary skill
in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). The Appellants have provided dictionary definitions of the term “context,”
and the Examiner does not offer evidence that a different meaning should be
ascribed to the term. Therefore, for the purpose of this appeal only, we accept the
Appellants’ dictionary definitions (App. Br. 19) as evidence of ordinary and
customary meanings of the term “context” consistent with how one of ordinary
skill in the art would understand the term when read in light of the Specification.
In light of the foregoing construction of the term “context,” the Appellants’
second contention that Hutcheson fails to disclose or suggest generation of priority
information based on context is also persuasive. Hutcheson discloses, at paragraph
[0080], heuristically predicting user behavior based on data indicative of use of a
wireless device (“use data”). Hutcheson, para. [0080]. In relying on paragraph
[0080] of Hutcheson, the Examiner does not mention elements surrounding a word
or passage which would read on the first definition of the term “context.” See Ans.
4. The Examiner also does not explain how Hutcheson’s use data, any information

2 While the Specification does not expressly define “context,” it does disclose that
“the instant messaging coordinator 310 may generate priority value[s], which may
correspond to the surrounding words . . . .” Spec., para. [0031].

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related to the user’s interest, or user behavior constitute “interrelated conditions in
which something exists or occurs,” so as to read on the second definition of the
term “context.” See id. Although we cannot discount the possibility that some
aspect of user behavior in Hutcheson’s disclosure could constitute “context” as
required by claim 1, the Examiner does not identify an aspect of user behavior that
coincides with the definitions of context accepted for purposes of this appeal.
Accordingly, the Examiner’s finding that Hutcheson discloses “priority
information being generated based on the context,” as recited in claim 1, is
inadequately supported. For the foregoing reasons, the Examiner’s rejection of
claim 1, and claims 2-6, 10-16, 19, and 23, which depend therefrom, as
unpatentable over Hutcheson and Kishore is not sustained.
Independent claim 20 includes a limitation substantially similar to the
above-quoted recitation of claim 1. For the reasons provided above, the
Examiner’s rejection of claim 20, and claim 24, which depends therefrom, as
unpatentable over Hutcheson and Kishore is also not sustained.

Obviousness based on Hutcheson, Kishore, and Liu
The Examiner rejects claims 7-9, which depend from claim 1, by “utilizing
the teachings of Liu” in the proposed combination of Hutcheson and Kishore to
meet the limitations of claims 7-9. Ans. 10-11. The Examiner’s findings
particular to Liu do not remedy the inadequately supported finding discussed
above. Therefore, the Examiner’s rejection of claims 7-9 as unpatentable over
Hutcheson, Kishore, and Liu is also not sustained.
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DECISION
We REVERSE the rejections of claims 1-16, 18-20, 23, and 24.

REVERSED

Klh