Ex Parte Ponte

Board of Patent Appeals and Interferences

Mar 10, 2004

09283268 (B.P.A.I. Mar. 10, 2004)

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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today was not written for publication and is not
binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JAY PONTE
________________
Appeal No. 2002-2321
Application 09/283,268
________________
ON BRIEF
________________
Before KRASS, JERRY SMITH and BLANKENSHIP, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1-8, 10-18, 20, and 21.
Claims 9 and 19 have been indicated to contain allowable subject
matter.
The disclosed invention pertains to a method and system for
targeting banner advertisements used in electronic commerce. The
invention utilizes a computer system that improves relevancy
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Application 09/283,268
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ranking of advertisements to user queries. This relevancy-
ranking improvement is achieved by establishing super-category
term lists for data queries by obtaining categories of documents
retrievable via the query, establishing document super-
categories, mapping each category to a super-category
automatically in accordance with at least one previously-
determined mapping of categories to super-categories, and
creating a super-category term list including the terms of the
super-category as well as the terms of the categories mapped to
the super-category.
Representative claim 1 is reproduced as follows:
1. A method executed in a computer system for establishing
super-category term lists for use in performing a data query,
comprising:
obtaining categories of documents that may be retrieved in
accordance with said data query, each of the categories having at
least one term;
establishing super-categories for the documents;
mapping each of the categories to a super-category, wherein
at least one of said categories is mapped to a super-category
automatically in accordance with one or more previously
determined mappings of categories to super-categories; and
establishing a super-category term list for each term
appearing in a super-category or a category, each element of a
list including the terms in the super-category and the terms in
the categories that are mapped to that super-category.
Appeal No. 2002-2321
Application 09/283,268
1 Although the examiner’s answer states on page 3 that claims 1, 3-8, 10, 11,
13-18, 20, and 21 are rejected under 35 U.S.C. § 102(b), the examiner
subsequently states that appellant’s arguments with respect to claims 3, 4,
10, 13, 14, and 20 are “deemed to be persuasive.” [examiner’s answer, page
5.] After considering the examiner’s admission in light of the totality of
the record before us, we presume the examiner did not intend to maintain the
rejection with respect to claims 3, 4, 10, 13, 14, and 20. Rather, we presume
the examiner intended to object to those claims as being dependent upon a
rejected base claim, but would consider such claims to be allowable if
rewritten in independent form including all of the limitations of the base
claim and any intervening claims. Therefore, we consider this rejection as
applied only to claims 1, 5-8, 11, 15-18, and 21.
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The examiner relies on the following references:
Cochran et al. (Cochran) 5,206,949 Apr. 27, 1993
Kamakura et al. (Kamakura) 6,047,310 Apr. 4, 2000
(filed Jul. 10, 1996)
Claims 1, 3-8, 10, 11, 13-18, 20, and 21 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by the disclosure
of Cochran.1 Claims 2 and 12 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness, the examiner offers Cochran
in view of Kamakura.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
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Application 09/283,268
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OPINION
We have carefully considered the subject matter on appeal,
the rejections advanced by the examiner, and the evidence of
anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us,
that the evidence relied upon does not support either of the
rejections made by the examiner. Accordingly, we reverse.
We consider first the rejection of claims 1, 5-8, 11, 15-18,
and 21 under 35 U.S.C. § 102(b) as being anticipated by the
disclosure of Cochran. Anticipation is established only when a
single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984), cert. dismissed, 468 U.S. 1228 (1984);
W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
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Application 09/283,268
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220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The examiner has indicated how he has read the claims on the
disclosure of Cochran [answer, pages 4 and 5]. Cochran discloses
a database search and retrieval system that displays search terms
created from dynamic lists obtained from data fields
corresponding to a selected category. The data fields are
obtained from each record in the database [Cochran, col. 3, lines
38-43].
With regard to claim 1, appellant first argues that Cochran
does not disclose establishing super-categories for documents
[brief, page 5]. Although appellant concedes that Cochran
discloses a super-category (Criteria) and a group of categories
(Rate, Size, Meeting Rooms, Activities on Site, and Activities
off Site), appellant argues that this teaching merely shows the
existence of a super-category, but does not teach or suggest a
super-category for documents retrievable in accordance with a
data query as required by the claims. In response, the examiner
notes that because Cochran discloses (1) each term of the dynamic
list corresponding to at least one database record, and (2)
database records classified in different categories (e.g.,
“Article,” “Book Review,” etc.) within a super-category (e.g.,
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Application 09/283,268
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“Legal Resource Index”), the reference reads on the limitation
[answer, pages 3 and 4].
According to the instant specification on page 141, lines
15-17, “[t]he super-categories may consist of a sub-set of the
categories, or other categories. The super-categories are
preferably smaller in number than the categories....” Given the
broadest reasonable interpretation of the claimed limitation of
“establishing super-categories for the documents” read in light
of the specification, the examiner’s interpretation of the “Legal
Resource Index” as a super-category for documents is reasonable.
Appellant argues that even if Cochran’s “Legal Resource
Index” is construed to be a super-category, the reference “does
not disclose or suggest establishing super-categories for
documents, but merely that a super-category could contain
articles” having certain classifications [reply brief, page 4].
We disagree. Cochran’s clear teaching of the existence of the
“Legal Resource Index” super-category reasonably suggests that it
is “established” given the term’s broadest reasonable
interpretation. Additionally, because the “Legal Resource Index”
super-category expressly refers to documentary legal resources,
it is reasonably construed as a super-category “for documents”
retrievable in accordance with a data query as claimed. The
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Application 09/283,268
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examiner has also reasonably construed the classifications of the
various database records (“Article,” “Book Review,” etc. under
categorical identifier “Article Type”) as documentary categories
within the “Legal Resource Index” super-category.
Nevertheless, we are convinced that the examiner has failed
to show an essential claimed feature recited in independent
claims 1, 11, and 21 – namely, mapping each of the categories to
the super-category such that at least one of the categories is
mapped to a super-category automatically in accordance with at
least one previously determined mappings of categories to super-
categories. The examiner argues that Cochran teaches mapping
each data field from every index to the main file to form a
record [answer, page 4]. In support of this argument, the
examiner cites Fig. 14 of Cochran as an example of forming a
record from selections from various indexes.
We are not persuaded that this example from Cochran
reasonably teaches or suggests mapping each category to a super-
category. But, assuming for the sake of argument that the
examiner’s interpretation of “mapping” indexes to the main file
can somehow be construed as mapping each category to a super-
category, we agree with appellant that there is no support in
Cochran for automatically mapping categories to super-categories
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Application 09/283,268
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in accordance with at least one previously determined mappings of
categories to super-categories. In short, the examiner has not
adequately shown where Cochran expressly teaches or suggests a
previously-determined category-to-super-category mapping, much
less automatically mapping categories to super-categories in
accordance with this previously-determined mapping. Therefore,
because Cochran does not anticipate each and every limitation in
the claims, we will not sustain the examiner’s rejections under
35 U.S.C. § 102(b).
We now consider the rejection of claims 2 and 12 under 35
U.S.C. § 103(a) based on Cochran and Kamakura. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the examiner
to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). In so doing, the examiner is expected to
make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art would
have been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason must
stem from some teaching, suggestion or implication in the prior
art as a whole or knowledge generally available to one having
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ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the examiner are an essential part of complying with
the burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). If that burden is met, the burden 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 Id.; 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). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
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Application 09/283,268
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We will not sustain this rejection of the examiner because
the examiner failed to establish a prima facie case of
obviousness. Cochran is deficient for the reasons discussed
above. The additional teachings of Kamakura do not overcome the
deficiencies of Cochran. Therefore, the examiner’s rejection
which relies on Cochran does not establish a prima facie case of
obviousness for the reasons discussed above.
In summary, we have not sustained either of the rejections
made by the examiner. Therefore, the decision of the examiner
rejecting claims 1, 2, 5-8, 11, 12, 15-18, and 21 is reversed.
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Application 09/283,268
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JS/ki
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Application 09/283,268
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A B Clay
IBM Corp Intellectual Property Law
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