Ex Parte Mohan et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612495617 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/495,617 0613012009 49845 7590 06/01/2016 SCHWEGMAN LUNDBERG & WOESSNER/EBAY P.O. BOX 2938 MINNEAPOLIS, MN 55402 SunilMohan 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. 2043.692US 1 3083 EXAMINER LO,ANNJ ART UNIT PAPER NUMBER 2166 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): USPTO@SLWIP.COM SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUNIL MOHAN, ROOPNATH GRANDHI, STEPHEN CHANG, SHALINI VIKAS AGARWAL, MANISH K. KALBANDE, and RANDALL SCOTT SHOUP Appeal2014-008922 Application 12/495,617 Technology Center 2100 Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and MELISSA A. RAAP ALA, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-8, 24, and 25. 1 Claims 9-23 are canceled. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Final Office Action, mailed July 2, 2013. Appeal2014-008922 Application 12/495,617 STATEivIENT OF THE CASE Invention The invention on appeal relates to "presenting a related item using a cluster" (Spec. i-f 13). Representative Claim 1. A computer-implemented method to present a related item, the method comprising: [Ll] evaluating a first item to determine a cluster identifier of an existing cluster; accessing via a hardware-implemented module the cluster identifier based on the evaluation of the first item, the cluster identifier identifying a cluster of items that represents a plurality of items identified based on a query expression that defines membership in the cluster of items; accessing a data structure that associates the cluster identifier with a second item in the cluster of items; [L2] identifying the second item based on the data structure and based on the cluster identifier; and presenting the second item as the related item. (Emphasis and bracketed lettering added to highlight contested limitations Ll-L2). Rejection Claims 1-8, 24, and 25 are rejected under 35 U.S.C. § 102(b) as being anticipated by Zelevinsky et al. (US 2008/0133479 Al; pub. June 5, 2008). 2 Appeal2014-008922 Application 12/495,617 Grouping of Claims Based on Appellants' arguments, we decide the appeal of rejected claims 1, 4--8, 24, and 25, on the basis of representative claim 1. We separately address the rejection of claims 2 and 3, infra. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS Rejection of Claims 1, 4-8, 24, and 25 under§ 102(b) Representative Claim 1 As a threshold issue, we decide the question of whether the Examiner erred by improperly relying on a combination of unrelated embodiments within the Zelevinsky reference to show anticipation. Appellants note, "the text cited by the Examiner [for limitation L 1] is part of the Background of the Invention section of Zelevinsky." (App. Br. 11 ). Appellants object to the Examiner's subsequent reliance on paragraphs 45 and 51 from Zelevinsky' s "Detailed Description" to show anticipation of the remaining limitations. According to Appellants, such reliance requires one to "combine the technique of paragraphs [0045] and [0051] of Zelevinsky with the techniques disclosed in the Background of the Invention section of Zelevinsky." (id. at 12).2 2 In an anticipation rejection, "it is not enough that the prior art reference ... includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference must "clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference" (id. (quoting In re Arkley, 3 Appeal2014-008922 Application 12/495,617 Although the Examiner (Final Act. 3) mapped limitation L 1 to Zelevinsky (i-f7), the Examiner clarifies the basis for the rejection by citing to paragraph 45 in the "Response to Argument." (Ans. 3). Paragraph 7 of Zelevinsky is a summary of search results assigned to clusters. We find paragraph 7 covers the specific search example described in paragraphs 44 and 45, which groups the associated "salient terms" for the search result "set of articles into clusters" (i-f44), and is, therefore, directly related. Cf with Net Money!N, Inc., 545 F.3d at 1371 (discussing improperly "picking, choosing, and combining various disclosures not directly related" to support an anticipation rejection, emphasis added). Specifically, Zelevinsky (i-f7) introduces the concept of "search results being assigned to one or more groups of results, also known as clusters." Cf with paragraph 44, that discloses a working example of the concept, whereby a "result set of articles" for example, that was obtained using the search term "java," is segmented into three clusters of java-related topics. For this reason, we are not persuaded the Examiner improperly combined embodiments not directly related within the Zelevinsky reference, to show anticipation. Claim 1 - Contested Limitation LI Issue: Under § 102, did the Examiner err in finding Zelevinsky discloses contested limitation L 1, "evaluating a first item to determine a cluster identifier of an existing cluster," within the meaning of claim 1? 455 F.2d 586, 587 (CCPA 1972) (emphasis added)). Thus, while "[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection ... it has no place in the making of a 102, anticipation rejection." Arkley, 455 F.2d at 587-88. 4 Appeal2014-008922 Application 12/495,617 As an initial matter of claim construction, we observe Appellants and the Examiner each interpret claim 1 differently. Therefore, to determine whether the contested limitations read on the cited prior art, we must first resolve the scope of claim 1, by construing the contested limitations under a broad but reasonable interpretation. 3 Appellants focus on the temporal aspects of limitation L 1, and urge the recitation of an "existing" cluster requires the clusters to exist prior to evaluating the first item. (Cf with App. Br. 11 (arguing Zelevinsky instead discloses "the clusters are formed after the search terms are evaluated" and "do not even exist when the alleged 'first item' is allegedly evaluated.") Appellants additionally contend the Examiner's interpretation of a "first item" reading on items in a search query is overly broad: [T]he present disclosure states that, "as used herein, the term 'item' refers to a physical or non-physical item potentially or actually available for sale, as well as to a representation of such an item within a network-based merchandising system."[] Contrary to the Examiner; s assertion, an "item;; is not equivalent to a "search term." (Id. at 10 (citing Spec. ,-r 16).)4 3 "During prosecution ... the PTO gives claims their 'broadest reasonable interpretation."' In re Bigio, 381F.3d1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)). 4 Appellants base this argument in part on an oral statement purportedly made by the Examiner during a telephonic interview. However, the Examiner's statement is not part of the written record, as defined under 37 C.F.R. § 41.30. Our review of the Examiner's claim interpretation is constrained to the record before us, including the Final Office Action and the Examiner's Answer, in which the Examiner mapped the first item to Zelevinsky' s search terms (see Ans. 2). 5 Appeal2014-008922 Application 12/495,617 The Examiner adopts a broader claim interpretation, and finds Zelevinsky' s description of clustering a result set after evaluating an item in a search (e.g., ')ava") falls within the scope of contested limitation L 1. (Ans. 2-3). We agree with the Examiner's broad but reasonable claim construction (id.), and adopt it as our own. 5 In parsing contested limitation L 1 ("evaluating a first item to determine a cluster identifier of an existing cluster"), we conclude the plain meaning of "an existing cluster" requires at least one cluster to be created before determining at least one corresponding "cluster identifier." (Claim 1 ). 6 However, we conclude the statement of intended purpose "to determine" broadens the scope of the claim to cover a temporal sequence where the "first item" is evaluated before the cluster exists. (Id.). In other words, the claim 1 term "to determine" broadens limitation L 1 to be read as evaluating a first item to determine the cluster identifier of a cluster once it exists. We conclude this construction is reasonable in the context of Appellants' Specification, which describes: "[i]tems are grouped 5 Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 6 See SanDisk Corp. v. Kingston Technology Co., Inc., 695 F.3d 1348, 1360 (Fed. Cir. 2012) (citing Baldwin Graphic Systems, Inc. v. Siebert, 512 F.3d 1338, 1342 (Fed. Cir. 2008))("[T]his court has repeatedly emphasized that an indefinite article "a" or "an" in patent parlance carries the meaning of "one or more" in open-ended claims containing the transitional phrase "comprising."). 6 Appeal2014-008922 Application 12/495,617 into clusters that are defined by query expressions applied to descriptions of the items." (Spec. ,-r 14).7 Regarding the broadest reasonable interpretation of the recited "a first item," the support Appellants quote from the Specification defines "item" as "a physical or non-physical item potentially or actually available for sale." (id. i-f 16) (emphasis added). Appellants fail to explain why a query expression-which describes a user's inquiry into whether a certain item is available for sale, such as using "java" to search for coffee (Zelevinsky i-f 44}-is not equivalent to an item "potentially" or actually available for sale. Therefore, on this record, we are not persuaded the Examiner's interpretation of "a first item" is overly broad or unreasonable. (Claim 1, emphasis added). Given our broad but reasonable claim construction, we review the Examiner's findings regarding contested limitation LI, which the Examiner mapped to Zelevinsky (i-f44). Paragraph 44 describes, inter alia: The system, receiving the search term "java", will obtain an original result set of articles that all include the exact term "java". The system will group the associated salient terms for the set of articles into clusters. In general, the clusters suggest the topical segmentation of the result set. These clusters will typically correspond to the primary meanings of the search term; in this case, "java" as (1) an island, (2) a programming language, and (3) a synonym for coffee. We find Zelevinsky discloses limitation L 1 by identifying (evaluating) "java" as a first item from a search query, clustering the results 7 Appellants cite paragraph 14 of the Specification as support for limitation L 1 in the "Summary of Claimed Subject Matter" section of their principal Brief (App. Br. 5). 7 Appeal2014-008922 Application 12/495,617 of the query into three clusters, and then determining a cluster identifier for each now-existing cluster (e.g., "Cluster 1," "Cluster 2," etc.). For at least these reasons, and by a preponderance of the evidence, Appellants have not persuaded us that the Examiner's interpretation of contested limitation L 1 is overly broad, unreasonable, or inconsistent with the Specification. Therefore, we find Zelevinsky (i-fi-f 44--45) discloses limitation L 1, as claimed, under § 102. Claim 1 - Contested Limitation L2 Issue: Under § 102, did the Examiner err in finding Zelevinsky discloses contested limitation L2, "identifying the second item based on the data structure and based on the cluster identifier," within the meaning of claim 1? The Examiner found contested limitation L2 (and the recitation of a "second item" throughout claim 1) is described in Zelevinsky (i-f45): When the user selects one cluster-for example, the first one [(i.e., "Cluster 1" from i144)]-in this embodiment, the system can narrow down the selected document set according to the first clustered set of terms to documents that correspond generally to Java, an island in Indonesia. (Final Act. 4.) Thus, Zelevinsky discloses identifYing one or more second items based on a user's selection of the Cluster 1 identifier for the cluster data structure. 8 Appeal2014-008922 Application 12/495,617 In the Appeal Brief (11-13), Appellants reproduce the record and assert Zelevinsky does not disclose limitation L2. 8 Appellants principally ground their argument regarding limitation L2 on the observation that the text cited by the Examiner in paragraph 7 "is part of the Background of the Invention section of Zelevinsky" (App. Br. 11 ). We have fully addressed this argument supra, regarding claim 1, and found it unpersuasive. For at least these reasons, and on this record, we find a preponderance of the evidence supports the Examiner's finding of anticipation regarding contested limitations LI and L2. (Claim 1). Because Appellants have not persuaded us the Examiner erred, we sustain the anticipation rejection of representative claim 1 over Zelevinsky. Grouped claims 4--8, 24, and 25, (not separately argued), fall with claim 1. See Grouping of Claims, supra. Rejection of Dependent Claim 2 and 3 under §102(b) Claim 2 recites, inter alia, "receiving the first item; determining that the first item is identified by the query expression; and generating the data structure to associate the first item with the cluster identifier prior to the accessing of the cluster identifier." (emphasis added). Appellants advance an argument similar to the contention addressed above with respect to the rejection of claim 1, regarding the timing of the creation of clusters: 8 See 37 C.F.R. § 41.37(c)(l)(iv) (noting that "[a] statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."). 9 Appeal2014-008922 Application 12/495,617 [T]he clusters [in Zelevinsky] are formed aiter the search terms are evaluated; the clusters do not even exist when the alleged "first item" is allegedly evaluated. Zelevinsky does not teach, or suggest, "generating the data structure to associate the first item with the cluster identifier prior to the accessing of the cluster identifier." (App. Br. 15.) Claim 2 further limits the temporal requirements of limitation L 1 of claim 1. As we explained supra, the statement of intended purpose ("to determine") broadens limitation L 1, permitting it to be read as evaluating a first item to determine the cluster identifier of a cluster once the cluster exists. The additional limitations recited in claim 2 do not change the timing of when the first item must be evaluated to determine a cluster identifier, because the "generating" step of claim 2 occurs between the end of limitation L 1, and the beginning of the "accessing via a hardware- implemented module" step of claim 1. Because Appellants' argument for dependent claim 2 is essentially grounded on the same erroneous premise previously advanced regarding parent claim 1, we sustain the anticipation rejection of dependent claim 2 for the same reasons addressed above regarding claim 1. Claim 3, not separately argued, falls with claim 2 from which it depends. See 37 C.F.R. § 41.37(c)(l)(iv). Reply Brief To the extent Appellants advance new arguments in the Reply Brief not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2). 10 Appeal2014-008922 Application 12/495,617 Conclusion For at least these reasons, on this record, we are not persuaded the Examiner erred. We find a preponderance of the evidence supports the Examiner's finding of anticipation for all claims on appeal. DECISION We affirm the Examiner's decision rejecting claims 1-8, 24, and 25 under§ 102(b). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±). AFFIRMED 11 Copy with citationCopy as parenthetical citation