Ex Parte Minter

Board of Patent Appeals and Interferences

Nov 15, 2002

08960787 (B.P.A.I. Nov. 15, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDREW GEORGE MINTER
____________
Appeal No. 2001-1664
Application No. 08/960,787
____________
ON BRIEF
____________
Before HAIRSTON, LALL, and GROSS, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the Examiner's final rejection of claims 1-7, which constitutes
all the pending claims in the application.
The disclosed invention is directed to a method and
apparatus for identifying desired items of information from the
vast amounts of information available in the modern world. The
problem addressed by the present invention is that of finding a
practical, scalable method of assisting a given user in finding
items of interest from a large set of available items, for
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example on the World Wide Web. In essence, the method derives a
list of suggested items based on the observed behavior of other
users of the system. The selection of items of interest is
further constrained by calculating a score used to quantify
commonality of interest between pairs of users and based on this
score, each user is allocated a set of “friends.” Items are then
suggested to a given user in response to his request, which (a)
that user has not yet requested and which (b) a friend of that
user has requested at least twice before the present request by
the user.
Further understanding of the invention can be achieved by
the following claim.
1. A method of identifying items of information from an
information system, for at least one of a group of users of the
information system, said method comprising the steps of:
(i) obtaining a first record indicative of items of
information requested from the information system by each
user in the group;
(ii) obtaining a second record indicative of items of
information responsive to their having been requested from
the information system on more than one occasion by the same
user;
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(iii) for each pair of users in the group determining a
score responsive to identification of a number of items from
the second record requested by one user in the pair, that
were also requested by the other user in the pair;
(iv) for each user allocating one or more group members
as friends for the user on the basis of the scores for pairs
containing that user; and
(v) for each user identifying items of information
responsive both to their having been requested by a friend
of the user and to their not having been requested by the
user.
The Examiner relies on the following references:
de Hond 5,796,395 Aug. 18, 1998
(filed Mar. 11, 1997)
Herz et al. (Herz) 5,835,087 Nov. 10, 1998
(filed Oct. 31, 1995)
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over de Hond in view of Herz.
Rather than repeat the arguments of Appellant and the
Examiner, we make reference to the brief (paper no. 14), reply
brief (paper no. 16) and the Examiner’s answer (paper no. 15) for
the respective details thereof.
Reference is also made to paper no. 4 which is a statement
of the rejection adopted by the Examiner as an explanation of the
rejection in the Examiner’s answer at page 3.
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OPINION
We have considered the rejections advanced by the Examiner
and the supporting arguments. We have, likewise, reviewed the
Appellant's arguments set forth in the briefs.
We reverse.
REJECTION UNDER 35 U.S.C. § 103
As a general proposition, in an appeal involving a rejection
under 35 U.S.C. § 103, an examiner is under a burden to make out
a prima facie case of obviousness. If that burden is met, the
burden of going forward then shifts to the applicant to overcome
the prima facie case with argument and/or evidence. Obviousness,
is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986);
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976).
At the outset, we note that Appellant has elected, to have
all the claims on appeal stand or fall together, claim 1 being
elected as a representative of the group (brief at page 3).
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The Examiner gives a detailed explanation of the rejection
of claim 1 at pages 4-6 of paper no. 4. The Examiner concludes
(id. at page 6) that “[i]t would have been obvious . . . to
integrate De Hond’s system for publishing and searching interests
of individual with Herz et al.’s customized electronic
identification of desirable objects to join groups of user or
friends in distributed communication environment to interact with
each other, identify selected or non selected items within the
group and also to point some items [that] are not selected by
others to make information retrieval system more user friendly
and interactive.”
Appellant argues (brief at page 5) that, contrary to the
Examiner’s assertion, de Hond does not generate, or make use of,
a second record as recited in claim 1. Appellant further argues
(id. at page 6) that “[f]urthermore, Herz also neither teaches,
discloses, nor in any other form suggests a step involving use of
a record indicative of items of information responsive to their
having been requested from the information systems on more than
one occasion by the same user [that is, the use of the recited
second record].”
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Appellant further argues (id. at page 7) that “[s]ince
neither Herz nor De Hond teaches nor suggests a second record
. . ., it is evident that they cannot therefore teach or suggest
this third step which makes explicit use of said second record.”
Appellant also argues (brief at page 7 and 8) that neither Herz
nor de Hond teaches the concept of creating the recited “friends”
using the score, and creating a set of items of information
responsive to a user’s request, by identifying those items of
information having been already requested by a friend of that
user, though not by the user himself.
The Examiner responds to these arguments at pages 4, 5 and 6
of the Examiner’s answer. However, the Examiner merely
reiterates his position explained in the statement of rejection.
We agree with the Appellant’s position. The de Hond
reference does not create the recited second record indicative
of the items of information responsive to their having been
requested from the information system on more than one occasion
by the same user. It may be possible to create such a record by
the method disclosed by de Hond, however, de Hond does not have
a need for creating such a record; or a need for the recited
subsequent steps which make use of such a record. Consequently,
the recited concept of determining a score based on the second
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record is missing in de Hond. We further find that whereas Herz
does create sub-sets of information which are aligned with the
frequent search for the same items of information by the same
user, Herz also does not create a second record as recited in the
claims and therefore does not disclose the concept of creating
a score, which in turn is used to create “friends” which in turn
are used to execute a more efficient searching of the information
using the results created by “friends” of the user.
Therefore, we do not sustain the rejection of claim 1 over
de Hond in view of Herz. The other independent claim 7, is an
apparatus claim which corresponds to the method of claim 1 and
contains the same limitations. Therefore, we do not sustain the
rejection of all the appealed claims, 1-7, over de Hond in view
of Herz.
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Accordingly, the rejection of claims 1-7 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
PSL/jrg
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WILLIAM M. LEE JR.
LEE, MANN, SMITH, McWILLIAMS, SWEENEY & OHLSON
P.O. BOX 2786
CHICAGO, IL 60690-2786