Ex Parte Round et al

Board of Patent Appeals and Interferences

May 25, 2010

10262609 (B.P.A.I. May. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATTHEW J. ROUND, JEFFREY P. BEZOS, RYAN J.
SNODGRASS, JEREMY C. YORK, RUSSELL A. DICKER, and JOANNA
L. POWER
____________

Appeal 2009-004882
Application 10/262,609
Technology Center
____________

Decided: May 25, 2010
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and JAMES R.
HUGHES, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-3, 5-12, and 53-64. The
Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
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INVENTION
The Appellants describe the invention at issue on appeal as follows.
Information retrieval systems and methods are disclosed for
presenting items of interest to a user of a computer-based data
repository, where the items are presented in the form of lists
generated by other users. Users of a data repository may
generate lists of items from the repository that are accessible by
other users . . . . . The information retrieval systems and
methods store the user-generated lists for future presentation to
other users. When a user of the data repository submits a
search query, items returned in the query's results are
interpreted to be items of interest to the user, and in response,
one or more lists determined to be similar to the items of
interest are presented to the user.
(Spec. 59.)

ILLUSTRATIVE CLAIM
57. A computer-implemented system that assists users in
locating items represented within a data repository, the system
comprising:
a database of user-created lists of items selected from the
data repository, wherein at least a first user generates one or
more of the user- created lists by selecting the items for
inclusion in the user-created lists, wherein the first user further
associates user-defined titles with the user- created lists, and
wherein the first user submits the user-created lists and the
associated user-defined titles for storage in the database;
a first component configured to enable a second user to
submit queries to a search engine with respect to the data
repository;
a second component configured to monitor the results of
a search query submitted by the second user; and
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a third component configured to select at least one user-
created list from the database, based at least in part on the
results of the search query submitted by the second user,
wherein the third component is configured to rank at least one
of the user-created lists relative to other user-created lists based
at least in part on the effectiveness of the user-created lists and
wherein the effectiveness of the user-created lists is determined
at least in part by actions of other users who accessed the user-
created lists, and wherein the third component is further
configured to suggest the user-created lists to the second user
by presenting a portion of a top-ranking user-created list to the
second user to assist the second user in locating items of
interest.

REJECTIONS
Claims 53-60 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 53-56 and 61-64 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by WIPO Publication WO 99/41694 ("Graham").
Claims 1-3, 5-12, and 57-60 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Graham and WIPO Publication WO 00/62223
("Bezos").

REJECTION UNDER § 101
The Examiner concludes that "claims 53-60 are . . . 'software per se'."
(Ans. 4.) The Appellants argue "that the intrinsic evidence indicates that a
computer- implemented system as set forth in Claims 53-60 is not software
per se and is comprised of hardware elements and is thus considered
statutory." (Reply Br. 2.)

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ISSUE
Therefore, the issue before us is whether the Examiner has erred in
concluding that claims 53-60 are directed toward software per se.

FINDINGS OF FACT
Independent claim 53 recites in pertinent part the following
limitations: "[a]computer-implemented information retrieval system . . . ."
Similarly, independent claim 57 recites in pertinent part the following
limitations: "[a] computer-implemented system . . . ."
For its part, the Specification includes the following pertinent
disclosures.
[0064] As depicted by FIGURE 1, the Web server 16
communicates with the components of the list system 26. The
components may advantageously be configured to execute on
one or more processors. The components include, but are not
limited to: software or hardware components, modules such as
software modules, object-oriented software components, class
components and task components, processes, methods,
functions, attributes, procedures, subroutines, segments of
program code, drivers, firmware, microcode, circuitry, data,
databases, data structures, tables, arrays, and variables.
[0065] The list system components 26 comprise a list
creation process 28, a list selection process 32, and supporting
data structures, such as a list repository 30 and a list
effectiveness table 36. The term "process" is used herein to
refer generally to one or more code modules that are executed
by a computer system to perform a particular task or set of
related tasks. The list creation process 28 and the list selection
processes 32 of the list system may run, for example, on one or
more Unix or NT based workstations or physical servers (not
shown) of the website 10, and may be replicated across multiple
machines to accommodate heavy loads.
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(emphases added.)

ANALYSIS
The Examiner admits that "claims 53-56 are addressed to 'a computer-
implemented information retrieval system'" (Answer 4), and that
"[s]imilarly, . . . claims 57-60 are addressed to 'a computer- implemented
system' . . . ." (Id. at 5.) One of ordinary skill in the art knows, furthermore,
that computer-implemented systems include hardware (as well as software).
The Specification explains that components of the system include
software components, object-oriented software components, class
components and task components, and processes. We agree with the
Appellants, however, that "in paragraph 0064, lines 2-4 of the application,
the disclosure states that the components of the list system 26 execute on one
or more processors . . . ." (Reply Br. 2.) More specifically, "[t]he
components may advantageously be configured to execute on one or more
processors." (Spec. ¶ 0064.) Furthermore, we observe that the same
paragraph explains that the components "are not limited to" the
aforementioned software components and processes but include hardware
components and circuitry.
We further agree with the Appellants that "[i]n addition, in
paragraph 0065, lines 3-5 of the application, the disclosure states that the
components are executed by a computer system . . . ." (Reply Br. 2.) More
specifically, "[t]he term 'process' is used herein to refer generally to one or
more code modules that are executed by a computer system to perform a
particular task or set of related tasks." (Spec. ¶ 0065.) Furthermore, we
observe that the same paragraph explains that "[t]he list creation process 28
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and the list selection processes 32 of the list system may run, for example,
on one or more Unix or NT based workstations or physical servers (not
shown) of the website 10, and may be replicated across multiple machines to
accommodate heavy loads."
Therefore, although the claimed systems may include software, the
systems also include hardware, and the software executes on at least some of
that hardware.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Examiner has erred in concluding that claims 53 and 57 and claims 54-56
and 58-60, which depend therefrom, are directed toward software per se.

REJECTIONS UNDER § 102(b) AND § 103(a)
The Examiner finds that "[o]n page 2 lines 27, 32 (Graham) disclosed
is the user query regarding an interest and a search module taking the query
input followed by page 3 lines 1 - 3 (Graham) to create the users created list"
(Answer 21), and "[p]age 6 lines 18 - 33 (Graham) teach the ranking of the
user created lists and relative to other results." (Id.) The Appellants argue
that "there is no teaching why one would want to rank one hit list relative to
another hit list." (Reply Br. 14.)

ISSUE
Therefore, the issue before us is whether the Examiner has erred in
finding that Graham ranks at least one user-created list relative to other user-
created lists as recited in independent claims 1, 8, 53, 57, and 61.
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FINDINGS OF FACT
Independent claims 1, 8, 53, 57, and 61 recite in pertinent part "user-
created lists."
The Specification discloses "a list system that allows users (known in
this capacity as 'list-makers') to create lists in which they can share their
opinions, preferences, experiences, or other information related to a
repository of data with other users." (¶ 0008.) "The list system stores these
lists for future presentation to other users (known in this capacity as
'viewers,' . . . as appropriate to the viewer's needs." (¶ 0009.)
Graham "relates to search engines . . . used to locate goods and
services on the Internet." (p. 1.) "The process . . . begins with a user using a
client to submit a query, Q, to a search engine (step 1). Typically, queries
are in the form of search strings, such as 'chocolate cake' or 'digital video
camera' . . . ." (p. 4.) "The search engine then uses query Q to come up with
a hit list, H. Hit list H has entries that either represent specific pages,
specific sites or both." (p. 5.) "[T]he search engine returns a list of target
pages, ranked by a combination of a textual match and additional data about
the sales associated with the queries used by users." (p. 6.)

ANALYSIS
"Claims must be read in view of the specification, of which they are a
part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995) (en banc) (citations omitted). Here, independent claims 1, 8, 53, 57,
and 61 recite in pertinent part the ranking of at least one "user-created list"
relative to other "user-created lists." The Specification discloses that users
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known as "list-makers" create lists in which they can share information
related to a repository of data with other users, known in this capacity as
"viewers." Reading the independent claims in view of the Specification, we
construe the claims as requiring ranking a list made by a human user
relative to other lists made by human users.
In response to a query submitted by a human user, Graham's search
engine returns a hit list comprising entries or "hits" ranked by a combination
of a textual match and additional data about the sales associated with the
queries used by users. Consequently, we agree with the Appellants that
"Graham appears to describe methods for ranking the hypertext links or 'hits'
relative to other hits in the hit list . . . ." (Reply Br. 13.) We also agree with
them that "[t]he ranking of user-created lists relative to each other [as in the
claims] is much different than ranking particular items within a search result
[as in Graham]." (Id. at 14.) Furthermore, the Examiner does not allege, let
alone show, that the addition of Bezos cures the aforementioned deficiency
of Graham.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Examiner has erred in finding that Graham ranks at least one user-created
list relative to other user-created lists as recited in claims 1, 8, 53, 57, and 61
and claims 2, 3, 5-7, 8-12, 54-56, 58-60, and 62-64, which depend
therefrom.

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DECISION
We reverse the rejection of claim 53-60 under § 101. We also reverse
the rejection of claims 53-56 and 61-64 under §102(b) and of claims 1-3, 5-
12, and 57-60 under § 103(a).

REVERSED
erc

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