Ex Parte SHANK

Patent Trial and Appeal Board

Sep 28, 2018

11422066 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/422,066 06/02/2006
22908 7590 10/02/2018
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
FIRST NAMED INVENTOR
SAM SHANK
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.
007985.00281\US 3600
EXAMINER
MURRAY, DANIEL C
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
eofficeaction@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAM SHANK
Appeal2017-010599
Application 11/422,066
Technology Center 2400
Before MAHSHID D. SAADAT, CARLA M. KRIVAK, and
STACY B. MARGOLIES, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 6, 8, 15, 17, 18, 21, and 23-29, which are all the claims pending
in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Kayak Software
Corporation. App. Br. 2.
2 Claims 2-5, 7, 9-14, 16, 19, 20, 22 have been canceled.
Appeal2017-010599
Application 11/422,066
STATEMENT OF THE CASE
Introduction
Appellant's disclosure describes "[a] method, apparatus and system
for compiling and filtering user ratings of products." Spec. ,r 28.
Exemplary claim 1 under appeal reads as follows:
1. A method executed by a computer system for
providing hotel information to a user of a website, the method
compnsmg:
using the computer system to perform:
receiving a request for hotel information obtained
based on input provided by the user of the website, the
request including a location specified by the user;
identifying a plurality of hotels based on their
physical location relative to the location specified by the
user;
receiving a review filtering criteria selected by the
user, the review filtering criteria including at least one
review filtering parameter by which reviews from users
of the website that stayed at the identified hotels are
filtered, the at least one review filtering parameter
including a travel budget, a purpose for staying at a hotel,
and/ or a rate paid for staying at a hotel;
for each identified hotel:
accessing reviews submitted by users of the
website for the hotel;
filtering, based at least in part on the travel budget,
the purpose for staying at the hotel, and/ or the rate paid
for staying at the hotel, the reviews accessed for the hotel
to produce a filtered set of reviews, wherein the filtered
set of reviews includes only those reviews that meet the
review filtering criteria and excludes reviews that do not
meet the review filtering criteria such that the filtered set
of reviews is smaller in number than the reviews
accessed; and
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generating a score for the hotel based on the hotel's
filtered set of reviews; and presenting a list of the identified
hotels to the user via the website, the list sorted based on the
score generated for each hotel.
The References and Rejections3
Claims 1, 6, 8, 15, 17, 18, 21, and 23-29 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. See Final
Act. 3-5, Ans. 3-5.
Claims 1, 6, 8, 18, 21, 23, and 24 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Schneider (US 5,832,452, iss. Nov. 3, 1998),
Floss (US 2002/0147619 Al, pub. Oct. 10, 2002), Calabria (US
2006/0143068 Al, pub. June 29, 2006), and Clendinning (US 2002/0107861
Al, pub. Aug. 8, 2002). See Final Act. 8-15, Ans. 7-15.
Claim 15 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Schneider, Floss, Calabria, Clendinning, and Gerace (US 5,991,735;
iss. Nov. 23, 1999). See Final Act. 15-17, Ans. 15-17.
Claim 17 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Schneider, Calabria, and Clendinning. See Final Act. 17-22, Ans. 17-
21.
Claims 25, 28, and 29 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Schneider, Robinson (US 5,790,426; iss. Aug. 4, 1998),
Calabria, and Clendinning. See Final Act. 22-33, Ans. 22-33.
3 The Examiner has withdrawn the rejection of claims 8, 23, and 24 under
35 U.S.C. § 112(d) or pre-AIA 35 U.S.C. § 112, 4th paragraph, as being of
improper dependent form for failing to further limit the subject matter of the
claim upon which it depends, or for failing to include all the limitations of
the claim upon which it depends. See Ans. 37, Final Act. 2-3.
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Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schneider, Robinson, Calabria, Clendinning, and Gerace.
See Final Act. 34--36, Ans. 34--36.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments in the Briefs. For the reasons discussed below, we are not
persuaded by Appellant's arguments that the Examiner erred in rejecting
claims 1, 6, 8, 15, 17, 18, 21, and 23-29 under 35 U.S.C. § 101 and
35 U.S.C. § 103(a). Unless otherwise indicated, we incorporate by reference
herein, and adopt as our own, the findings and reasons set forth by the
Examiner in the Office Action from which this appeal is taken and in the
Examiner's Answer in response to Appellant's Appeal Brief. See Final Act.
3-36, Ans. 37-54. We also concur with the conclusions reached by the
Examiner. For emphasis, we consider and highlight specific arguments as
presented in the Briefs.
A. Rejection under§ 1 OJ
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
The Supreme Court, however, has long interpreted § 101 to include an
implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas
are not patentable." See, e.g., Alice Corp. Pty Ltd. v. CLS Banklnt'l, 134 S.
Ct. 2347, 2354 (2014) (internal quotation marks and citation omitted).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75-77 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355-57. The
"directed to" inquiry asks not whether "the claims involve a patent-ineligible
concept," but instead whether, "considered in light of the specification, ...
'their character as a whole is directed to excluded subject matter."' Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal
citations omitted). In that regard, we determine whether the claims "focus
on a specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, in applying the first step of the Alice analysis, we conclude that the
claims are not directed to a patent-ineligible concept, they are considered
patent eligible under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
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elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "search for an "'inventive concept"'-
i.e., an element or combination of elements that is 'sufficient to ensure that
the patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (brackets in original) (quoting Mayo, 566
U.S. at 72-73). The prohibition against patenting an abstract idea "'cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant post solution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted).
Mayo/Alice Step One
The Examiner determines the following:
The claim(s) is/are directed to the abstract idea of
"filtering products/services based on product/service related
information ( e.g. location, price, reviews, etc.), compiling the
results, and producing a sorted list of products/services based
on product/service related information ( e.g. location, price,
reviews, ratings, ranking, etc.)" ( (i) a fundamental economic
practice, (ii) a method of organizing human activities, and/or
(iii) an idea of itself). The additional element(s) or combination
of elements in the claim( s) other than the abstract idea per se
amount(s) to no more than: (i) mere instructions to implement
the idea on a computer, and/or (ii) recitation of generic
computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known in the art.
Final Act. 3--4; Ans. 3--4.
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Appellant contends the Examiner's assessment that the claims are
directed to an abstract idea is in error. App. Br. 10. 4 Appellant argues:
The present claims are not directed to an abstract idea
because the present claims are directed to improvements to
computer-related technology. See Enfish; see also DDR
Holdings, LLC v. Hotels.com et al., 773 F.3d 1245 at 1257 (Fed.
Cir. 2014) ("these claims stand apart because they do not
merely recite the performance of some business practice known
from the pre-Internet world along with the requirement to
perform it on the Internet. Instead, the claimed solution is
necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer
networks."). The present claims are necessarily rooted in
computer technology and overcome a problem specifically
arising in the realm of the human-computer interface. The
present claims thus set forth systems and methods to improve
the human-computer interface.
Id. In this regard, Appellant further argues different aspects of a human-
computer interface (HCI) and asserts the appealed claims "set forth tools that
improve the efficiency with which a user can locate desired information and
that improve the relevancy of the information presented to the user." See id.
at 10-13. Appellant points to the recited sorting/filtering method based on
filtering the user reviews according to specific criteria that meet the user
request for information, which would not be possible using conventional
sorting/filtering techniques. See id. at 13-16.
4 Independent claims 1, 17, and 25 recite methods, independent claims 18
and 28 recite systems, and independent claims 21 and 29 recite computer
program products. Appellant argues claims 1, 6, 8, 15, 17, 18, 21, and 23-
29 as a group. App. Br. 10-20. We select independent claim 1 as
representative. The remaining claims stand or fall with claim 1. See 37
C.F.R. § 4I.37(c)(l)(iv).
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Appellant's arguments do not persuade us of Examiner error. The
claims are not directed to improvements to computer-related technology, as
in Enfzsh and DDR Holdings. Rather, the claims are directed to filtering and
sorting information based on input from a user. Appellant fails to point to
any language in the claims directed to improving the technology of, for
example, the user interface. We agree with the Examiner's analysis on
pages 3 8--40 of the Answer that the claims are not directed to a specific
asserted improvement in computer capabilities and that the claims are
directed to using a computer merely as a tool. Implementing an abstract idea
using a "physical machine" does not impart patent eligibility. See Mayo,
566 U.S. at 84; see also Ans. 2-3. "[N]ot every claim that recites concrete,
tangible components escapes the reach of the abstract-idea inquiry." In re
TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016). The
inability of a human to accomplish each step "does not alone confer
patentability." See FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016). In Alice, for example, "[a]ll of the claims [we]re
implemented using a computer." 134 S. Ct. at 2353, 2360.
Additionally, Appellant's argument that the claims recite "tools that
improve the efficiency with which a user can locate desired information and
that improve the relevancy of the information presented to the user" (App.
Br. 13) is not persuasive because Appellant has not demonstrated that the
purported advantages shown in Figures 6 and 7 are tied to an improvement
in computer-related technology. See App. Br. 13-16 (relying on Figures 6
and 7 as allegedly illustrating the technical advantages provided by the
claimed subject matter). Although a computer and its related components,
such as a processor, a network interface, and a storage, are used to achieve
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the recited process of receiving a hotel information, filtering reviews of the
hotel, and generating a score for the hotel, those process steps are
nonetheless directed to an abstract idea that, in essence, is a fundamental
economic and business practice. Final Act. 3--4. Similar to the computer-
based anonymous loan shopping system in Mortgage Grader Inc. v. First
Choice Loan Services Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016), the
claims here are not directed to specific improvements in the way computers
and networks carry out their basic functions, but rather merely are directed
to filtering products/services based on product/service related information
and producing a sorted list of products/services, which constitute a
fundamental economic practice. Although this filtering technique may be
beneficial, a claim for a useful or beneficial abstract idea is still an abstract
idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379--
80 (Fed. Cir. 2015).
As the Examiner explains, the claims are directed to "a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool" in order "to provide hotel information to a user via a website by
filtering and sorting such information based on input provided by the user."
Ans. 38. Therefore, we agree with the Examiner that claim 1 is directed to
the abstract idea of filtering products/services based on product/service-
related information, compiling the results, and producing a sorted list of
products/services based on product/service-related information. Final Act.
3-5; Ans. 3-5, 37-39.
Mayo/Alice Step Two
The Examiner determines:
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The claims are directed to an abstract idea and do not
recite any additional elements that amount to significantly more
than an abstract idea. The claims require no more than a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known in the industry and amount to no more than generally
linking the use of the particular judicial exception ( the abstract
idea of filtering/compiling/sorting products/services based on
product/service related information) to a particular
technological environment or field of use (e-commerce).
Final Act. 4; Ans. 4. The Examiner further determines that carrying out the
claimed steps requires no more than the existing computers with no need for
"new mechanism." Final Act. 4; Ans. 4. According to the Examiner, the
claimed process merely requires routine process of filtering
products/services based on some type of information, compiling the results,
and producing a sorted list, which constitute "well-understood, routine and
conventional activity." Final Act. 4--5; Ans. 4--5.
Appellant contends that "[ e ]ven if the claims are determined to be
accurately directed to this purported abstract idea, the claims nevertheless
amount to significantly more than this purported abstract idea." App. Br. 17.
Appellant points to the holdings in BASCOM Global Internet Services, Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) and Enfzsh and
argues that a claim reciting generic components can nonetheless be
considered to amount to significantly more than an abstract idea. App. Br.
18. Appellant asserts:
[T]he present claims set forth "filtering ... reviews" (the
alleged product/service related information) "accessed for the
hotel" based on varying user details ( e.g., travel budget,
purpose for staying at the hotel, rate paid for staying at the
hotel, demographic data, etc.), "generating a score for the hotel"
( the alleged product/ service) "based on the hotel's filtered set of
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reviews", and "presenting a list of the identified hotels ...
sorted based on the score." Filtering product/service related
information in order to sort products rather than filtering
products/services is an example of claiming beyond well-
understood, routine and conventional activity.
App. Br. 19. Appellant further argues: "[C]onventional ranking of
products/services take account of all reviews ( e.g., from business people and
families alike). The present claims introduce the unconventional step of
filtering reviews to provide accurate representations of hotels for a particular
user." Id.
Appellant's assertions do not persuade us of Examiner error. As the
Examiner explains, the claims are directed to filtering products/services
based on product/service-related information (e.g. location, price, reviews,
etc.), which include using a generic computer system for performing
receiving a request, receiving a review filtering criteria, and accessing
previously submitted reviews. See Ans. 40-41. The purported
"unconventional" filtering is not claimed ( or even described) as an
improvement in the way a computer operates, as in Enfzsh. See Enfish, 822
F.3d at 1336, 1339 (concluding that the self-referential table recited in the
claims is designed to improve the way a computer stores and retrieves data
in memory). BASCOM similarly is distinguishable because, in determining
that BASCOM had adequately alleged that the claims pass step two of
Alice's two-part framework, the Federal Circuit concluded that the claimed
invention "provid[ es] individualized filtering at the ISP server" and is
directed to improving the performance of the computer system itself.
BASCOM, 827 F.3d at 1351, 1352. Here, Appellant fails to point to any
language in the claims directed to improving the way the computer system
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operates. Rather, claim 1 broadly recites "receiving a request ... ,
identifying a plurality of hotels ... , receiving a review filtering criteria ... ,
and accessing reviews ... ," "filtering," and "generating a score" with the
generic, programmed computer system. See Spec. ,r,r 29, 32, 34, 51
(describing the processor's role).
We agree with the Examiner that the recited subject matter is similar
to the concepts found to be patent-ineligible in Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). See Ans. 42. Similar to the
claimed subject matter in Electric Power Group, the claims' invocation of a
computer system ( or a processor, a network interface and a storage medium)
here does not transform the claimed subject matter into patent-eligible
applications. Electric Power Grp., 830 F.3d at 1355. Nothing in the claims,
understood in light of the specification, requires anything other than off-the-
shelf, conventional computer technology for performing the claimed
filtering. See id.; Spec. ,r,r 32--40, 61.
In summary, the claimed subject matter does not transform the
abstract idea into a patent-eligible invention.
Preemption
Appellant argues that ( 1) "[ t ]he present claims ... do not preempt the
use of the purportedly abstract idea the examiner asserts, namely 'filtering
products/services based on product/service related information ( e.g. location,
price, reviews, etc.), compiling the results, and producing a sorted list of
products/services based on product/service related information' in all
fields;" and (2) "[ t ]here are infinite other applications of 'filtering
products/services,"' such as filtering products/services without filtering
reviews. App. Br. 16-17. Appellant further asserts "the claims do not seek
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to tie up any judicial exception such that other[s] cannot practice it." App.
Br. 17.
Appellant's arguments do not persuade us of Examiner error. See
Ans. 43 (addressing monopolization and preemption). While preemption
may denote patent ineligibility, its absence does not demonstrate patent
eligibility. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."); FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1098 (Fed. Cir. 2016).
Summary
For the reasons discussed above, Appellants' arguments have not
persuaded us of any error in the Examiner's findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the§ 101 rejection of
claims 1, 6, 8, 15, 17, 18, 21, and 23-29.
B. Rejections under 35 USC§ 103(a)
Independent Claim 1
In rejecting claim 1, the Examiner relies on Schneider as disclosing
the recited computer system for receiving a request for hotel information,
identifying a plurality of hotels, and receiving a review filtering criteria. See
Final Act. 7-9; Ans. 8-9. The Examiner further finds Floss discloses the
recited review filtering criteria as the personal travel advice provided to a
user based on user-specific data. See Final Act. 9-10; Ans. 9-10.
Additionally, the Examiner relies on Calabria as disclosing the recited
process of receiving a review filtering criteria, accessing reviews, and
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filtering the reviews to produce a filtered set of reviews, and generating a
score for the hotel to be presented to the user. See Final Act. 11-13; Ans.
11-12. Lastly, the Examiner finds Clendinning teaches collecting and
displaying information on a product website. See Final Act. 13-14; Ans.
13-14. The Examiner concludes it would have been obvious to one of
ordinary skill in the art to combine the teachings of Schneider with Floss,
Calabria, and Clendinning in order to take into account the requested and
filtered information and provide the most relevant information to a user. See
Final Act. 10-14; Ans. 12-14.
Appellant contends the proposed combination is improper because
Paragraph 27 of Calabria "describes a system 'to provide an ordered list of
reviews based on the stored reviews relating to the subject as ordered by a
social distance as calculated in the review engine 3 8,"' and that "ordering a
list of reviews does not disclose or suggest filtering reviews." App. Br. 21.
Appellant argues Calabria also fails to disclose or suggest "generating a
score for something other than reviews based on filtered reviews" and thus
fails to disclose or suggest the claimed generating a score for the hotel.
App. Br. 22. Additionally, Appellant contends the other applied references
in general, and Clendinning in particular, fail to teach the recited filtering the
reviews and "generating a score for the hotel based on the hotel's filtered set
of reviews." App. Br. 23. Appellant specifically argues "Clendinning fails
to disclose or suggest 'generating a score for the hotel based on the hotel's
filtered set of reviews"' because the "'composite user rating 40' is [not]
generated for the product based on a filtered set of the 'user ratings 45. "'
Id.
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In response, the Examiner finds the cited portions of Calabria teach
filtering the reviews based on a specific subject or category to produce a
filtered set of reviews that fits the filtering criteria and generating a score for
the hotel based on the hotel's filtered set of reviews. Ans. 48--49, 51-52
(citing Calabria at Abstract, Fig. 13, ,r,r 5, 26, 27, 39, 65, 67, 68, 71, 78, 83).
The Examiner further explains
Calabria clearly discloses using the exemplary social
network information as above, whenever a user requests
reviews for a given subject, the computer review system 10
executes an exemplary process as shown in FIG. 6. After
starting the process enacts step 110 where a user requests
reviews for a given subject. All reviews pertaining to the given
subject (excepting those that may be filtered as disclosed later)
are selected in step 112. In step 114 it is determined if the user
is known and signed in. If the user is registered and signed in
and the user's userID becomes available to the review-provider
as part of the query, either through a cookie or any other means,
the "social distance" of each selected review is calculated in
step 116 with respect to the user; the reviews are displayed in
sorted order and using privacy settings that include "social
distance" in step 118. If the user's userID cannot be
determined, step 120 is enacted where the reviews are displayed
in sorted order and using privacy settings that do not include
"social distance." It is noted that other embodiments of this
process 108, particularly with regard to the sequence (for
example, the retrieval and reviews and the computation of
"social distance" can occur nearly simultaneously), and that
there are many ways that the "social distance" can be used to
influence the sort order and/ or the privacy settings of the
reviews. (Calabria; paragraph [0039])(emphasis added).
Ans. 49-50. The Examiner further points to paragraphs 71 and 78 of
Calabria as disclosing the recited filtering of the reviews. Ans. 50-51.
The Examiner also finds "Calabria clearly discloses generating a rank
and rate (score) for a product/service (something other than a review) and
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generating a rate and rank (score) for the subject (i.e. product, service,
etc.)(hotel) based on the subject's (i.e. product's, service's, etc.)(hotel's)
filtered set of reviews." Ans. 52. The Examiner correctly explains that
Calabria discloses that the rate and rank engine assigns an overall rating
number to each subject (i.e., product, service, etc.) and that overall rating
number is based in part on a filtered set of reviews. Ans. 51-52; see also id.
at 50 ( quoting Calabria ,r 71 ).
We are unpersuaded by Appellant's contentions and agree with the
Examiner that Calabria relates to a system for sorting any type of review
based on the user's interest, categories, and other relational features. See
Calabria ,r,r 5-7. As the Examiner finds (see above), Calabria teaches
receiving a user request for reviews of a given subject after the reviews are
filtered and sorted (see ,r 39) based on review filtering criteria set by the user
(see ,r,r 65---67). We also agree with the Examiner's finding that paragraph
71 of Calabria discloses filtering the reviews and meets the filtering criteria,
whereas paragraph 78 further teaches additional criteria set by the user,
which are used to select the reviews that are more relevant to the user's
request. We further agree with the Examiner that Calabria discloses
generating a score for something other than a review and that score is based
in part on reviews. See Ans. 51-52. Specifically, Calabria discloses the
following:
The rate and rank engine 42 provides the function of assigning
an overall rating number to each subject. This would allow
users to quickly rank the providers in a given category, if such a
ranking were desired. The overall rating number is computed
individually for each user that utilizes the review-provider
system, using metrics that include the "social distance" ( as
already disclosed) between the reader/user and the aggregate of
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all authors that have written reviews applicable to that subject.
Other metrics that may be used in conjunction with the "social
distance" include the rating assigned by each author ....
Calabria ,r 71.
We also disagree with Appellant's contentions regarding the teachings
of Clendinning and that the reference does not teach or suggest the
generating and presenting steps. See App. Br. 22-23. First, this argument is
unpersuasive because Appellant is arguing the references individually,
whereas the Examiner's rejection is based upon the teachings of a
combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). The test for obviousness is whether the combination of
references, taken as a whole, would have suggested the patentee's invention
to a person having ordinary skill in the art. In re Keller, 642 F.2d 413, 425
(CCPA 1981). See also Ans. 53. Calabria was relied on for disclosing
generating a score for the hotel based on the hotel's filtered set of reviews,
whereas Clendinning was relied on for disclosing "presenting a list of the
identified hotels (products, services, etc.) to the user via the website, the list
sorted based on the score (rating, ranking, etc.) generated for each hotel
(products, services, etc.)." Ans. 53 (citing Clendinning ,r,r 76, 79). The
Examiner correctly concludes the proposed combination
would have been obvious to one of ordinary skill in art to
incorporate the manner of presentation based on rating, ranking,
etc. (score), as taught by[] Clendinning into the system of
Calabria for the purpose of providing product/service
information to users (Clendinning; abstract), thereby allowing
users to make a selection based on ranking/reviews.
Id. We are not persuaded the Examiner errs in relying on this combination.
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Application 11/422,066
Additionally, we note that, consistent with the guidelines stated in
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Examiner's proposed
combination of Calabria's sorted list of information related to products and
services based on a generated rating, ranking, etc. (score) with Clendinning's
presentation of the sorted hotel list "involves nothing more that [sic] simple
substitution of one known element (generated score related to a product/
service) for another ( another generated score related to a product/ service) to
obtain predictable results (i.e. the presentation of a sorted list)." Ans. 53-54.
In view of our discussion above, we are unpersuaded of Examiner
error in rejecting claim 1.
Remaining Independent Claims
Appellant argues the patentability of claims 17, 18, 21, 25, 28, and 29
based on the same reasoning presented for claim 1. App. Br. 23-27. In
view of our discussion above, we are unpersuaded of Examiner error in
rejecting claims 17, 18, 21, 25, 28, and 29.
CONCLUSION
As discussed herein, Appellant's arguments have not persuaded us the
Examiner erred in finding the claims are directed to patent-ineligible subject
matter. Accordingly, we sustain the Examiner's rejection of claims 1, 6, 8,
15, 17, 18, 21, and 23-29 under 35 U.S.C. § 101.
Similarly, Appellant's arguments have not persuaded us that the
Examiner erred in finding the combination of Schneider with Floss,
Calabria, and Clendinning teaches or suggests the disputed limitations of
claims 1, 17, 18, 21, 25, 28, and 29. Accordingly, we sustain the 35 U.S.C.
§ 103(a) rejections of independent claims 1, 17, 18, 21, 25, 28, and 29, as
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Appeal2017-010599
Application 11/422,066
well as dependent claims 6, 8, 15, and 23, 24, 26, and 27 which are not
argued separately.
DECISION
The decision of the Examiner rejecting claims 1, 6, 8, 15, 17, 18, 21,
and 23-29 under 35 U.S.C. § 101 is affirmed.
The decision of the Examiner rejecting claims 1, 6, 8, 15, 17, 18, 21,
and 23-29 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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