Ex Parte Linden

Board of Patent Appeals and Interferences

Jan 17, 2008

09538679 (B.P.A.I. Jan. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte GREG LINDEN 8
___________ 9
10
Appeal 2007-0702 11
Application 09/538,679 12
Technology Center 3600 13
___________ 14
15
Decided: January 17, 2008 16
___________ 17
18
Before HUBERT C. LORIN, ANTON W. FETTING, and 19
JOSEPH A. FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
STATEMENT OF CASE 24
Greg Linden (Appellant) seeks review under 35 U.S.C. § 134 of a 25
Final Rejection of claims 1-36, 56, and 57, the only claims pending and not 26
withdrawn in the application on appeal.1 27

1 Claims 42-53 are cancelled and claims 37-41 and 54-55 are withdrawn.
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We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 1
(2002). 2
3
We AFFIRM-IN-PART. 4
The Appellant invented a way for automatically identifying similar 5
purchasing opportunities. For example, for an initial auction, the invention 6
can identify auctions, or purchasing opportunities of other types, that offer 7
the same or a similar item, similar prices or other terms (Specification 2:14-8
17). 9
Descriptive information about an initial purchasing opportunity is 10
used to identify purchasing opportunities that are similar to the initial 11
purchasing opportunity. The descriptive information may describe the item 12
offered, as well as other terms of the purchasing opportunity, such as price, 13
availability, seller identity or location, purchasing opportunity type 14
(Specification 2:18-24). 15
Initially, key words occurring in the descriptive information for an 16
initial purchasing opportunity are identified whose occurrence tend to best 17
differentiate the initial purchasing opportunity from others. Then a score is 18
attributed to each key word quantifying this tendency. In a preferred 19
embodiment, key words are identified and scores attributed using the inverse 20
document frequencies of the terms occurring in the descriptive information 21
for the initial purchasing opportunity. The inverse document frequency of a 22
term measures the fraction of occurrences of the term among the descriptive 23
information for all of the purchasing opportunities that occur in the 24
descriptive information for the initial purchasing opportunity. For example, 25
if a particular term occurred three times in the descriptive information for 26
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the initial purchasing opportunity and occurred 100 times in the descriptive 1
information for all of the purchasing opportunities, that term would have an 2
inverse document frequency of 3%, or .03 (Specification 2:25-3:9). 3
The descriptive information is searched for all of the purchasing 4
opportunities to determine, for each key word, which purchasing 5
opportunities' descriptive information contains the key word. Then 6
similarity scores are generated for at least some of the other purchasing 7
opportunities by, for each such purchasing opportunity, summing the scores 8
of key words that occur in the purchasing opportunities (Specification 3:10-9
17). 10
The purchasing opportunity scores may then be used to order the 11
purchasing opportunities based upon their level of similarity to the initial 12
purchasing opportunity (Specification 3:18-27). 13
An understanding of the invention can be derived from a reading of 14
exemplary claims 1 and 2, which are reproduced below [bracketed matter 15
and some paragraphing added]. 16
1. A method in one or more computer systems for identifying 17
auctions offering units of the same item, comprising: 18
[1] displaying information about a first auction, 19
the information including a description of a first item unit 20
offered in the first auction; 21
[2] receiving user input requesting information about other 22
auctions offering item units that are units of the same item as 23
the first item unit; 24
[3] determining, 25
for the description of the first item unit 26
among descriptions of item units 27
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offered in a group of auctions including the first 1
auction, 2
the inverse document frequency of terms occurring 3
within the description of the first item unit; 4
[4] selecting a plurality of terms 5
within the description of the first item unit 6
having the largest inverse document frequencies; 7
[5] for each of the selected terms, 8
conducting a search for auctions in the group 9
whose item descriptions contain the selected term; 10
[6] for each auction found in at least one of the conducted 11
searches, 12
determining which of the selected terms occur in the 13
auction's item description; 14
[7] identifying 15
as an auction offering an item unit that is a unit of the 16
same item as the first item unit[,] 17
an auction among the found auctions 18
where the sum of the inverse document 19
frequencies of the selected terms that occur in the 20
item description for the auction exceeds a 21
threshold; and 22
[8] displaying information about the identified auction. 23
2. A method in a computer system for identifying purchasing 24
opportunities within a set of purchasing opportunities that are 25
similar to a distinguished purchasing opportunity, the 26
distinguished purchasing opportunity having descriptive 27
information associated with it, comprising: 28
[1] for each of a plurality of terms occurring in the descriptive 29
information associated with the distinguished purchasing 30
opportunity, 31
generating a term score 32
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reflecting the extent to which 1
the occurrence of the term in the descriptive 2
information associated with the 3
distinguished purchasing opportunity 4
differentiates 5
the distinguished purchasing opportunity 6
from other purchasing opportunities in the 7
set; 8
[2] selecting as key words a plurality of terms having the 9
highest term scores; 10
[3] identifying purchasing opportunities of the set containing 11
one or more key words; 12
[4] establishing a purchasing opportunity score 13
for each identified purchasing opportunity 14
by summing the term score of the one or more key words 15
occurring in descriptive information associated with the 16
identified purchasing opportunities; and 17
[5] displaying information about one or more of the identified 18
purchasing opportunities. 19
20
This appeal arises from the Examiner’s Final Rejection, mailed June 21
14, 2004. The Appellant filed an Appeal Brief in support of the appeal on 22
May 9, 2005. An Examiner’s Answer to the Appeal Brief was mailed on 23
May 19, 2006. A Reply Brief was filed on July 19, 2006. The Appellant 24
presented arguments telephonically at a hearing on December 19, 2007. 25
PRIOR ART 26
The Examiner relies upon the following prior art: 27
Ishikawa US 5,848,407 Dec. 8, 1998 28
Sato US 6,212,517 B1 Apr. 3, 2001 29
30
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Phillips Semiconductors; PIP for Compandor SA571, 1
http://www.kwantlen.bc.ca/electroncis/eltn2319/edata/lab/datasheets/compa2
ndor571.html (last visited Aug. 27, 2003). 3
REJECTIONS 4
Claim 1 stands rejected under 35 U.S.C. § 112, first paragraph, as not 5
enabling a person of ordinary skill in the art to make and use the claimed 6
subject matter from the original disclosure. 7
Claim 1 stands rejected under 35 U.S.C. § 112, second paragraph, as 8
failing to particularly point out and distinctly claim the invention. 9
Claims 1-36, 56, and 57 stand rejected under 35 U.S.C. § 103(a) as 10
unpatentable over Phillips, Sato, and Ishikawa. 11
ISSUES 12
The issues pertinent to this appeal are 13
• Whether the Appellant has sustained its burden of showing that the 14
Examiner erred in rejecting claim 1 under 35 U.S.C. § 112, first 15
paragraph, as not enabling a person of ordinary skill in the art to make 16
and use the claimed subject matter from the original disclosure. 17
• Whether the Appellant has sustained its burden of showing that the 18
Examiner erred in rejecting claim 1 under 35 U.S.C. § 112, second 19
paragraph, as failing to particularly point out and distinctly claim the 20
invention. 21
• Whether the Appellant has sustained its burden of showing that the 22
Examiner erred in rejecting claims 1-36, 56, and 57 under 35 U.S.C. § 23
103(a) as unpatentable over Phillips, Sato, and Ishikawa. 24
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The pertinent issues turn on whether (1) the claim 1 limitation of a 1
same item is enabled and definite, and whether (2) the art describes the use 2
of an inverse document frequency as recited in claim 1, and whether (3) the 3
art describes the use of terms scores as recited in claim 2. 4
FACTS PERTINENT TO THE ISSUES 5
The following enumerated Findings of Fact (FF) are believed to be 6
supported by a preponderance of the evidence. 7
Claim Construction 8
01. The disclosure contains no lexicographic definition of “same.” 9
02. The ordinary and customary meaning of “same” is (1) being the 10
very one; identical; (2) similar in kind, quality, quantity, or 11
degree; (3) conforming in every detail; or (4) being the one 12
previously mentioned or indicated; aforesaid.2 13
Phillips 14
03. Phillips is an electronic manufacturer’s sales information sheet 15
describing a particular electronic device referred to as model 16
SA571 of a compandor.3 17
Sato 18
04. Sato is directed toward a subsystem of a document retrieval 19
system for receiving a list of documents (or texts) selected from a 20

2 American Heritage Dictionary of the English Language (4th ed. 2000).
3 A compandor is a combination of a signal compressor and expander, each
of which may be used independently (www.atis.org/tg2k/_compandor.html).
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text base and providing a list of keywords ranked in order of 1
importance in the selected text group (Sato 1:7-11). 2
05. Sato describes a computation of a degree of importance for each 3
search term that is based upon, among other variables, an inverse 4
document frequency for that term. Sato performs a search based 5
upon the degree of importance of terms (Sato 5:58 – 7:33). 6
06. Sato does not describe identifying information based on a 7
measure exceeding a threshold. 8
Ishikawa 9
07. Ishikawa is directed toward a hypertext document retrieving 10
apparatus in which a plurality of hypertext documents likely to 11
meet a user's retrieval request are retrieved from a large volume of 12
hypertext documents and are presented to the user (Ishikawa 1:7-13
12). 14
08. Ishikawa describes a computation of a product for each search 15
term of an occurrence frequency (TF) with an inverse document 16
frequency (IDF). Sato performs a ranking of results based upon 17
these products of the terms (Ishikawa 7:45 – 8:9). This ranking 18
may also be on the sum of the products (Ishikawa 11:31-40). 19
09. Ishikawa describes a user entering keywords for a search, and 20
documents containing one or more of those keywords are 21
retrieved. These documents are then ranked as in FF 08. 22
10. Ishikawa does not describe identifying information based on a 23
measure exceeding a threshold. 24
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PRINCIPLES OF LAW 1
Claim Construction 2
During examination of a patent application, pending claims are 3
given their broadest reasonable construction consistent with the 4
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 5
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 6
Limitations appearing in the specification but not recited in the claim 7
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 8
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 9
specification” without importing limitations from the specification into the 10
claims unnecessarily). 11
Although a patent applicant is entitled to be his or her own 12
lexicographer of patent claim terms, in ex parte prosecution it must be 13
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 14
must do so by placing such definitions in the specification with sufficient 15
clarity to provide a person of ordinary skill in the art with clear and precise 16
notice of the meaning that is to be construed. See also In re Paulsen, 30 17
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 18
specific terms used to describe the invention, this must be done with 19
reasonable clarity, deliberateness, and precision; where an inventor chooses 20
to give terms uncommon meanings, the inventor must set out any 21
uncommon definition in some manner within the patent disclosure so as to 22
give one of ordinary skill in the art notice of the change). 23
Enablement 24
The test of enablement is whether one reasonably skilled in the art 25
could make and use the claimed invention based on the specification coupled 26
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with information known in the art without undue experimentation. 1
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 2
(Fed. Cir. 1986), cert. denied, 107 S.Ct. 1606 (1987). 3
Indefiniteness 4
If a claim is amenable to construction, “even though the task may be 5
formidable and the conclusion may be one over which reasonable persons 6
will disagree,” the claim is not indefinite. Exxon Res. & Eng’g Co. v. United 7
States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). 8
Obviousness 9
A claimed invention is unpatentable if the differences between it and 10
the prior art are “such that the subject matter as a whole would have been 11
obvious at the time the invention was made to a person having ordinary skill 12
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 13
1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 14
(1966). 15
In Graham, the Court held that that the obviousness analysis is 16
bottomed on several basic factual inquiries: “[(1)] the scope and content of 17
the prior art are to be determined; [(2)] differences between the prior art and 18
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 19
in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex 20
Inc., 127 S.Ct. at 1734. “The combination of familiar elements according to 21
known methods is likely to be obvious when it does no more than yield 22
predictable results.” KSR, at 1739. 23
“When a work is available in one field of endeavor, design incentives 24
and other market forces can prompt variations of it, either in the same field 25
or [in] a different one. If a person of ordinary skill [in the art] can 26
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implement a predictable variation, § 103 likely bars its patentability.” Id. at 1
1740. 2
“For the same reason, if a technique has been used to improve one 3
device, and a person of ordinary skill in the art would recognize that it would 4
improve similar devices in the same way, using the technique is obvious 5
unless its actual application is beyond his or her skill.” Id. 6
“Under the correct analysis, any need or problem known in the field 7
of endeavor at the time of invention and addressed by the patent can provide 8
a reason for combining the elements in the manner claimed.” Id. at 1742. 9
ANALYSIS 10
Claim 1 rejected under 35 U.S.C. § 112, first paragraph, as not enabling a 11
person of ordinary skill in the art to make and use the claimed subject 12
matter from the original disclosure. 13
The Examiner has failed to make out a prima facie case of a lack of 14
enablement. As best we understand it, the Examiner takes the position that 15
the claimed method is inoperable if the term “same” used in claim 1 means 16
identical. However, the test for enablement is whether one reasonably skilled 17
in the art could make and use the claimed invention based on the 18
specification coupled with information known in the art without undue 19
experimentation, not whether the Examiner has interpreted the claim so as to 20
read on an inoperable embodiment. The Examiner does not appear to have 21
considered the Specification and thus has not established that one reasonably 22
skilled in the art could not make and use the claimed invention based on the 23
specification coupled with information known in the art without undue 24
experimentation. It is examiner’s burden to show that one skilled in the art 25
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would have to resort to undue experimentation in order to practice the 1
invention as broadly claimed. See In re Marzocchi, 439 F.2d 220, 224, 169 2
USPQ 367, 370 (CCPA 1971). 3
The Examiner erred in rejecting claim 1 under 35 U.S.C. § 112, first 4
paragraph, as not enabling a person of ordinary skill in the art to make and 5
use the claimed subject matter from the original disclosure. 6
Claim 1 rejected under 35 U.S.C. § 112, second paragraph, as failing to 7
particularly point out and distinctly claim the invention. 8
The Examiner found that the Appellant gave the word “same” a 9
meaning different from identical, and further found the use of the word 10
“same” to be indefinite because claim 1 is not specific regarding which 11
definition applies (Answer 5). 12
The Appellant contends that its use of the term "same" in the context 13
of "units of the same item" is consistent with its ordinary and customary 14
meaning. Taking an item example of the Specification, a same item might 15
be an item of the exact same model. This understanding of the term "units 16
of the same item" is consistent both with the ordinary meaning of the term 17
"same" and with the use of the term in the Specification itself (Appeal Br. 18
7:Bottom ¶ - 8:Top ¶). 19
We agree that one of ordinary skill would have known that a same 20
item would be something like an item with the same model number. 21
Although this is merely an example, one of ordinary skill in sales and 22
auctions would understand the word “same” applied to “item” to be within 23
the context of the items sold or auctioned. While the term is broad, it is 24
amenable to construction. 25
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The Appellant has sustained its burden of showing that the Examiner 1
erred in rejecting claim 1 under 35 U.S.C. § 112, second paragraph, as 2
failing to particularly point out and distinctly claim the invention. 3
Claims 1-36, 56, and 57 rejected under 35 U.S.C. § 103(a) as unpatentable 4
over Phillips, Sato, and Ishikawa. 5
Claim 1 6
The Appellant argues claims 1, 56, and 57 as a group. 7
Accordingly, we select claim 1 as representative of the group. 8
37 C.F.R. § 41.37(c)(1)(vii) (2007). 9
The Examiner found that Phillips described elements [1], [2], and [8], 10
except for being applied to an auction, but took official notice of the 11
notoriety of auctions. The Examiner found that Sato described elements [3] 12
and [4], and that Ishikawa describes elements [5], [6], and [7] (Answer 5-6). 13
The dispositive Appellant contentions are that (1) neither reference 14
selects a plurality of terms within the description of the first item unit having 15
the largest inverse document frequencies (Reply Br. 9:First full ¶); and (2) 16
neither reference identifies something where the sum of the inverse 17
document frequencies of the selected terms that occur in the item description 18
for the auction exceeds a threshold (Reply Br. 9:Bottom ¶ - 12:First ¶). 19
The Examiner cites Sato column 7, lines 27-30 for the largest inverse 20
document frequency selection. The Appellant argues this portion of Sato 21
examines Sato’s degree of importance, not its inverse document frequency. 22
We agree (FF 05). Since the Examiner has not shown that either reference 23
selects terms having the largest inverse document frequency selection, the 24
Examiner has not made a prima facie case as to element [4]. 25
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The Examiner cites Ishikawa column 7, line 53 to column 8 line 9 and 1
column 11, lines 33-45 for identifying information where the sum of the 2
inverse document frequencies of the selected terms that occur in the item 3
description for the auction exceeds a threshold. The Appellant argues this 4
portion of Ishikawa examines Ishikawa’s importance degrees, not its inverse 5
document frequency, and the Examiner never has a finding as to identifying 6
by exceeding a threshold. We agree (FF 08, 10, and 06). Since the Examiner 7
has not shown that either reference identifies information where the sum of 8
the inverse document frequencies of the selected terms that occur in the item 9
description for the auction exceeds a threshold, the Examiner has not made a 10
prima facie case as to element [7]. 11
The Appellant has sustained its burden of showing that the Examiner 12
erred in rejecting claims 1, 56, and 57 under 35 U.S.C. § 103(a) as 13
unpatentable over Phillips, Sato, and Ishikawa. 14
Claim 2 15
The Appellant argues claims 2-36 as a group. 16
Accordingly, we select claim 2 as representative of the group. 17
The Examiner found that Phillips described identifying purchasing 18
opportunities and element [5]. The Examiner found that Sato described 19
elements [1] and [2], and that Ishikawa describes elements [3] and [4] 20
(Answer 7-8). 21
The Appellant contends that (1) Ishikawa’s key words are (1a) 22
selected by a user rather than from an item description, and (1b) are 23
computed differently than as computed in the Appellant’s Specification 24
(Reply Br. 13:First ¶); (2) that Ishikawa fails to use term scores in the two 25
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distinct ways recited in claim 2 of (2a) selecting keywords and (2b) scoring 1
purchasing opportunities (Reply Br. 13:Bottom ¶ - 14:Top ¶); and (3) 2
Phillips relies on product categories rather than product descriptions to find 3
products (Appeal Br. 15). 4
As to the arguments regarding the search terms, the scope of the claim 5
is not commensurate with argument (1a) because the terms a user enters in 6
Ishikawa (FF 09), within the context of searching for an item as a purchasing 7
opportunity, such as in Phillips, would be descriptive information associated 8
with a a purchasing opportunity as in claim 2. Whether the terms are 9
selected by a user makes terms no less associated with the item the terms 10
describe. Whether the score for search terms are computed as in the 11
Appellant’s Specification is not pertinent since claims are construed 12
according to their broadest reasonable interpretation during examination, and 13
claim 2 does not specify the steps in scoring. 14
As to the arguments regarding the use of the scores, although both 15
Sato and Ishikawa score keywords, it is Sato, not Ishikawa, that ranks 16
keywords for searching (FF 05) and Ishikawa that ranks the results based on 17
the sum of keyword scores (FF 08) that would represent purchasing 18
opportunities within the context of searching for such opportunities. Thus, 19
Sato teaches choosing the best search terms as in claim elements [1] and [2] 20
and Ishikawa describes ranking results as in claim elements [3] and [4]. 21
As to the argument regarding product category versus product 22
description searching, although Phillips does not explicitly recite searching 23
for items, the very presence of Phillips information in a web based document 24
suggests one of ordinary skill would have alternatively employed the 25
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ubiquitous search engines such as in Sato and Ishikawa to find products if 1
one was not already on the Phillips web site. 2
The Appellant has not sustained its burden of showing that the 3
Examiner erred in rejecting claims 2-36under 35 U.S.C. § 103(a) as 4
unpatentable over Phillips, Sato and Ishikawa. 5
CONCLUSIONS OF LAW 6
The Appellant has sustained its burden of showing that the Examiner 7
erred in rejecting claims 1, 56, and 57, but has not sustained its burden of 8
showing that the Examiner erred in rejecting claims 2-36, under 35 U.S.C. § 9
103(a) as unpatentable over Phillips, Sato, and Ishikawa. 10
DECISION 11
To summarize, our decision is as follows: 12
• The rejection of claim 1 under 35 U.S.C. § 112, first paragraph, as not 13
enabling a person of ordinary skill in the art to make and use the 14
claimed subject matter from the original disclosure is not sustained. 15
• The rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as 16
failing to particularly point out and distinctly claim the invention is 17
not sustained. 18
• The rejection of claims 1, 56, and 57 under 35 U.S.C. § 103(a) as 19
unpatentable over Phillips, Sato, and Ishikawa is not sustained. 20
• The rejection of claims 2-36 under 35 U.S.C. § 103(a) as unpatentable 21
over Phillips, Sato, and Ishikawa is sustained. 22
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 2
AFFIRMED-IN-PART 3
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PERKINS COIE, LLP 8
PATENT-SEA 9
P.O. BOX 1247 10
SEATTLE, WA 98111-1247 11
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