Ex Parte Shacham et alDownload PDFPatent Trial and Appeal BoardApr 17, 201411624179 (P.T.A.B. Apr. 17, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte YAEL SHACHAM, LELAND RECHIS, SCOTT JENSON, and DIPCHAND NISHAR __________ Appeal 2012-000214 Application 11/624,179 Technology Center 2100 __________ Before, LORA M. GREEN, JEFFREY N. FREDMAN, and ERICA A. FRANKLIN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a computer implemented method for content display. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants identify the Real Party in Interest as Google, Inc. (See App. Br. 1.) Appeal 2012-000214 Application 11/624,179 2 Statement of the Case Background The Specification teaches “methods that may be employed to permit more flexibility in the selection and ordering of content for use in a page of electronic content, such as a personalized home page” (Spec. 2 ¶ 0005). According to the Specification, in “certain implementations, a user browsing a web page may select a control on the page to have content relating to the page be referenced on the user’s personalized home page, without the user having to visit a configuration page for the personalized home page” (Spec. 2 ¶ 0005). The Claims Claims 1-7, 9-12, 14, 23-27, 29, and 31-40 are on appeal. Claim 1 is representative and reads as follows: 1. A computer-implemented method, comprising: receiving, at a server system, a first command that is generated by user selection of a first control on a first web page that is displayed on a user device, wherein the first command includes a first uniform resource identifier (URI) that corresponds to first display content that is to be delivered to a personalized page that is hosted by the server system for a user account; associating, by the server system, the first URI with a device identifier that is unique to the user device, wherein at a time that the first URI is associated with the device identifier, the server system has not identified that a user has used the user device to log into the user account; receiving, at the server system, a second command that is generated by user selection of a second control on a second web page that is displayed on the user device, wherein the second command includes a second URI that Appeal 2012-000214 Application 11/624,179 3 corresponds to second display content that is to be delivered to the personalized page; associating, by the server system, the second URI with the device identifier, wherein at a time that the second URI is associated with the device identifier, the server system has not identified that a user has used the user device to log into the user account; receiving, at the server system and after the association by the server system of the device identifier with the first URI and after the association by the server system of the device identifier with the second URI, an indication that a user has used the user device to log into the user account; associating, by the server system and in response to receiving the indication that the user has used the user device to log into the user account, both the first URI and the second URI with the personalized page that is hosted by the server system for the user account; and adding, by the server system and in response to the associating both the first URI and the second URI with the personalized page, the first display content and the second display content to the personalized page based on the selection of the first control and the selection of the second control. The issues A. The Examiner rejected claims 1, 4, 6, 7, 9, 11, 12, 14, 23-27, 29, and 31-40 under 35 U.S.C. § 103(a) as obvious over Diab,2 Dicker,3 and Wun4 (Ans. 3-12). B. The Examiner rejected claims 2 and 3 under 35 U.S.C. § 103(a) as obvious over Diab, Dicker, Wun, and Shavit5 (Ans. 12-13). 2 Diab et al., US 2006/0230021 A1, published Oct. 12, 2006. 3 Dicker et al., US 7,720,723 B2, issued May 18, 2010. 4 Wun, A., US 7,711,256 B2, issued May 4, 2010. Appeal 2012-000214 Application 11/624,179 4 C. The Examiner rejected claims 5 and 10 under 35 U.S.C. § 103(a) as obvious over Diab, Dicker, Wun, and Salinas6 (Ans. 13-14). A. 35 U.S.C. § 103(a) over Diab, Dicker, and Wun The Examiner finds that Diab teaches the elements of claim 1 (Ans. 5- 6), differing in that Diab “does not expressly disclose receiving more than one URI at the server system, or associating and adding the more the [sic] one URI by the server system to the personalized page, before logging into the user account” (Ans. 6). The Examiner finds that “Dicker discloses a user interface that allows user to add multiple items to a user’s shopping cart prior to user signing into a personal account” (Ans. 6). The Examiner finds it obvious to “include Dicker’s teachings in Diab’s user interface in an effort to provide a more user friendly interface that allows user to freely search and accumulate URIs without interruption” (Ans. 6). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Diab, Dicker, and Wun render the claims obvious? Findings of Fact 1. Diab teaches Portal server 180 and/or search-server system 160 advantageously access this user information to provide a range of personalization or customization capabilities for particular users. In one embodiment, users may interact with portal server 180 and/or search-server system 160 (e.g., they may execute searches or view standardized content) 5 Shavit et al., US 2007/0130518 A1, published Jun. 7, 2007. 6 Salinas et al., US 2008/0072139 A1, published Mar. 20, 2008. Appeal 2012-000214 Application 11/624,179 5 without first registering with the service, signing in, or otherwise identifying themselves. (Diab 4 ¶ 0045.) 2. Figure 4A of Diab is reproduced below: “FIG. 4A is an example of a search-results page generated in response to a user query” (Diab 2 ¶ 0015). Appeal 2012-000214 Application 11/624,179 6 3. Diab teaches that “button 408 allows the user to view the XML source of the RSS feed. Button 410 allows the user to request the addition of the RSS feed to his or her personal portal page” (Diab 5 ¶ 0051). 4. Diab teaches that “any Web page (e.g., a third party Web page) that is configured to provide an RSS feed might include an Add button or a Remove button for respectively adding or removing the RSS feed” (Diab 5 ¶ 0054). 5. Diab teaches that the “URL might be associated with a link that points to the page associated with the RSS feed. Each search hit might further include an ‘Add’ button 1008 or a ‘Remove’ button 1010” (Diab 6 ¶ 0058). 6. Diab teaches that: If the user’s identifier is not known when “Add” button 506 is clicked, a login page may be displayed so that the user can log in. After determining the user ID, portal server 180 updates the customization information for the user’s portal page in user database 182 to include a subscription to the selected feed. (Diab 5 ¶ 0052.) 7. Diab teaches that in “another embodiment, rather than launching a separate page, button 408 is configured to launch a confirmation field window 512 on results page 400” (Diab 5 ¶0051). 8. Dicker teaches that: The Shopping Cart recommendations service is preferably invoked automatically when the user displays the contents of a shopping cart that contains more than a threshold number (e.g., 1) of popular items. The service generates the recommendations based exclusively on the Appeal 2012-000214 Application 11/624,179 7 current contents of the shopping cart (i.e., only the shopping cart contents are used as the “items of known interest”). As a result, the recommendations tend to be highly correlated to the user’s current shopping interests. In other implementations, the recommendations may also be based on other items that are deemed to be of current interest to the user, such as items in the recent shopping cart contents of the user and/or items recently viewed by the user. (Dicker, col. 23, ll. 41-53.) 9. Figures 14 and 15 of Dicker are reproduced below: “FIG. 14 illustrates one example of a page for presenting recommendations to a user, together with a condensed view of the shopping cart, when the user adds an item to the shopping cart. FIG. 15 illustrates a ‘full’ shopping cart Appeal 2012-000214 Application 11/624,179 8 page that may be accessed from the page shown in FIG. 14” (Dicker, col. 5, ll. 30-35). 10. Dicker teaches a “Session Recommendations service that stores a history or ‘click stream’ of the products viewed by a user during the current browsing session, and uses some or all of these products as the user’s ‘items of known interest’ for purposes of recommending products to the user during that browsing session” (Dicker, col. 24, ll. 47-52). 11. Dicker teaches that in “one embodiment, the session records are stored anonymously (i.e., without any information linking the records to corresponding users), such that user privacy is maintained” (Dicker, col. 26, ll. 16-19). 12. Wun teaches when “messages are received by the message server 268, they are typically stored in a data store associated with the message server 268” (Wun, col. 13, ll. 5-7). Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Analysis Claim 1 We agree with the Examiner that the method of claim 1 would have been obvious in view of Diab, Dicker, and Wun (FF 1-11). We address Appellants’ arguments below. Appeal 2012-000214 Application 11/624,179 9 Appellants contend that the “rejection depends on at least two fundamental errors in reasoning” (App. Br. 7). Appellants contend that “a skilled artisan would not have modified Diab’s system to achieve the subject matter of the pending claims because Diab’s system teaches away from the claimed subject matter by extolling the benefit of prompting users to login to their user accounts when they select an ‘Add’ button” (App. Br. 7). We are not persuaded. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). Appellants do not identify, and we do not find, any teaching in Diab which criticizes personalizing information for users who are not logged in. Indeed, Diab teaches an embodiment where “users may interact with portal server 180 and/or search-server system 160 . . . without first registering with the service, signing in, or otherwise identifying themselves” (Diab 4 ¶ 0045; FF 1). Thus, rather than teach away, Diab suggests an embodiment where users may interact without logging in (FF 1). Appellants next contend that [T]he Dicker reference does not provide the claimed subject matter that the Diab reference fails to teach. Indeed, the Examiner has impermissibly failed to consider the Dicker reference as a whole, including portions that teach away from the claimed subject matter—i.e., portions that indicate that Dicker does not wait for a user log in to associate selected items with a user account. Appeal 2012-000214 Application 11/624,179 10 (App. Br. 7.) Appellants contend that “the Examiner has improperly failed to consider the description that accompanies FIG. 15 which explains that the products in the shopping cart are associated with the user account before the user signs in” (App. Br. 8). Appellants contend that the “Dicker reference does not disclose the emphasized claim language as, at times that items are added to Dicker’s shopping cart, Dicker’s system has already identified the user that previously signed into the user account. (See Dicker, at 33:7-18.)” (App. Br. 10). We are not persuaded. Dicker teaches that in “one embodiment, the session records are stored anonymously (i.e., without any information linking the records to corresponding users), such that user privacy is maintained” (Dicker, col. 26, ll. 16-19; FF 11). Thus, while Dicker certainly encompasses embodiments where the user logs into the system, Dicker expressly teaches an embodiment where the user does not log in, and remains anonymous (FF 11). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Claims 23-25 Appellants contend that “office action (at page 8) fails to identify in the prior art the recited tracking database, the recited personalized web page database, and the recited association” (App. Br. 11; see Reply Br. 7). The Examiner does not address this argument in the Answer, nor does the Examiner specifically identify support for the “tracking database” required by claim 23 or the “personalized web page database” of claim 25 in Appeal 2012-000214 Application 11/624,179 11 the rejection itself, instead finding only that “Claims 23 and 25 are similar in scope to claim 1 and are therefore rejected under similar rationale” (Ans. 9). We are constrained to reverse this rejection as failing to address all of the limitations of claims 23-25. “[O]bviousness requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003). Claims 31, 38, 39, and 40 Appellants contend, regarding each of these claims, that the “Dicker reference discloses a system that associates multiple products with a user account before the user has used the user device to sign into a user account” (App. Br. 13). We are not persuaded. As discussed above, Dicker teaches that in “one embodiment, the session records are stored anonymously (i.e., without any information linking the records to corresponding users), such that user privacy is maintained” (Dicker, col. 26, ll. 16-19; FF 11). Thus, the person of ordinary skill would have recognized that the session records could be associated with a device without being associated with a user account, as required by claims 31, 38, 39, and 40. Conclusion of Law The evidence of record supports the Examiner’s conclusion that Diab, Dicker, and Wun render claims 1, 31, 38, 39, and 40 obvious. The evidence of record does not support the Examiner’s conclusion that Diab, Dicker, and Wun render claims 23-25 obvious. Appeal 2012-000214 Application 11/624,179 12 B-C. 35 U.S.C. § 103(a) Appellants do not argue separately the claims in these obviousness rejections. Having affirmed the obviousness rejection of claims 1, 31, 38, 39, and 40 over Diab, Dicker, and Wun, we also find that the further combination with Shavit and Salinas renders the remaining claims obvious for the reasons given by the Examiner (see Ans. 12-14). SUMMARY In summary, we affirm the rejection of claims 1, 31, 38, 39, and 40 under 35 U.S.C. § 103(a) as obvious over Diab, Dicker, and Wun. Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 4, 6, 7, 9, 11, 12, 14, 26, 27, 29, and 31-37, as these claims were not argued separately. We reverse the rejection of claims 23-25 under 35 U.S.C. § 103(a) as obvious over Diab, Dicker, and Wun. We affirm the rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as obvious over Diab, Dicker, Wun, and Shavit. We affirm the rejection of claims 5 and 10 under 35 U.S.C. § 103(a) as obvious over Diab, Dicker, Wun, and Salinas. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART cdc Copy with citationCopy as parenthetical citation