Ex Parte Smith

Patent Trial and Appeal Board

Mar 12, 2013

12579383 (P.T.A.B. Mar. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AARON SMITH
____________________

Appeal 2012-007631
Application 12/579,383
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, LINDA E. HORNER,
MICHAEL W. KIM, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse. We also enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appellant’s Invention
Appellant’s invention is directed to updating user reviews of a product
based on, for instance, extended use, new revelations, additional features,
and upgrades. Spec. ¶ 0001; Abstract. Claims 1, 8, and 15 are independent.
Claims 1 and 8 are illustrative of the invention:
1. A computer system comprising:
memory; and
a processor in communication with the memory, the processor
programmed to:
receive, from a user, a first review of an asset;
store the first review of the asset in association with a
user identifier in a memory device;
receive, from the user, a second review of the asset;
store the second review in association with the first
review and the user identifier in a memory device; and
generate an opinion timeline for the asset for the user
associated with the user identifier.
8. A computer-implemented method comprising:
receiving, from a user, a first review of an asset;
storing the first review of the asset in association with a user
identifier in a memory device;
receiving, from the user, a second review of the asset;
storing the second review in association with the first review
and the user identifier in a memory device; and
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generating an opinion timeline for the asset for the user
associated with the user identifier.1
Rejection on Appeal
The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as being
anticipated by Brown (US 2002/0143608 A1, pub. Oct. 3, 2002).

ISSUE ON APPEAL
Does Brown disclose generating an opinion timeline for the asset for
the user associated with the user identifier?

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1-7 under 35 U.S.C. § 112, second paragraph,
for indefiniteness. Specifically, we construe “a processor . . . programmed
to . . . generate an opinion timeline for the asset for the user associated with
the user identifier” as recited in independent claim 1, as a “means-plus-
function” limitation subject to 35 U.S.C. § 112, sixth paragraph, and
conclude that the Specification’s failure to disclose an algorithm
corresponding to the recited function renders the claim indefinite under
35 U.S.C. § 112, second paragraph. We also enter a new ground of rejection
for claims 8-20 under 35 U.S.C. § 112, first paragraph, for failure to satisfy
the written description requirement.

1 Independent claim 15 is directed to “[a] non-transitory computer-readable
storage media having computer executable instructions stored thereon which
cause a computer system to carry out a method when executed” wherein the
method comprises the same steps as called for in method claim 8.
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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Appellant’s Invention
FF1. The Specification states “[t]he server 104 includes a processor
116 and memory 120, which are in communication with one another.” Spec.
¶ 0029; Fig. 1. The Specification discloses that, when a user is browsing a
web page, a request to access content is communicated to the server 104
over the network 108, and the processor 116 accesses the memory 120 to
provide requested content, which is communicated to the user over the
network 108. Spec. ¶ 0032; Fig. 1.
FF2. The Specification discloses a computer system 600 within
which a set of instructions may be executed for performing any one or more
of the methodologies discussed in the disclosure. Spec. ¶ 0052; Fig. 6. The
“computer system 600 includes a processor 602 (e.g., a central processing
unit (CPU), a graphics processing unit (GPU) or both) . . . .” Spec. ¶ 0053;
Fig. 6.
FF3. The Specification discloses that instructions 626 embodying
any of the functions described in the Specification may reside within the
processor. Spec. ¶ 0055; Fig. 6 (instructions 626).
FF4. The Specification discloses a system 300 for creating an
opinion timeline that includes an opinion timeline engine 304, which
includes a logic layer 308 configured to generate an opinion timeline using
data in the data stores 316-322. Spec. ¶¶ 0038-40; Fig. 3.
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FF5. The Specification discloses that “[t]he logic layer 308 . . .
associates these two user reviews together using the user identification
information and/or asset identification information associated with both
reviews.” Spec. ¶ 0041. The logic layer 308 can then generate the opinion
timeline. Id.
FF6. The Specification discloses a process 400 for creating an
opinion timeline that includes allowing a user to submit a first review of an
asset on a website (step 404), storing the first review of the asset on the
website with a user identifier (step 408), allowing the user to submit a
second review of the asset on the website (step 412), storing the second
review with the first review and the user identifier (step 416), and generating
an opinion timeline for the asset for the user associated with the user
identifier (step 420). Spec. ¶¶ 0046-49; Fig. 4.
FF7. The Specification describes an example of steps 404 and 408 in
which the opinion timeline engine 304 may receive a user review of an asset
stored in one of the data stores 316-320 and stores that user review in the
user opinion data store 322. Spec. ¶ 0047.
FF8. The Specification describes an example of steps 412 and 416 in
which the opinion timeline engine 304 may receive a user review related to
the first review and stores that user review in the user opinion data store 322.
The second review may be an edit of the first review or an addition to the
first review. The second review may be based on, for example, a change in
opinion over time, a change in opinion based on an update, a comparison of
a similar asset, and the like. Spec. ¶ 0048.
FF9. The Specification describes an example of step 420 in which
the opinion timeline engine 304 may generate an opinion timeline using the
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first review and the second review (e.g., by matching the user identifier of
the first review with the user identifier of the second review). Spec. ¶ 0049.
FF10. Originally-filed claim 8 recited “[a] computer-implemented
method comprising: allowing a user to submit a first review of an asset on a
website; storing the first review of the asset on the website with a user
identifier; allowing the user to submit a second review of the asset on the
website; storing the second review with the first review and the user
identifier; and generating an opinion timeline for the asset for the user
associated with the user identifier.”
Dictionary Definitions
FF11. AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
1398 (4th ed. 2006) (defining “processor” as “2. Computer Science a. A
computer. b. A central processing unit. c. A program that translates another
program into a form acceptable by the computer being used.”).
FF12. MICROSOFT COMPUTER DICTIONARY 92 (5th ed. 2002)
(defining “central processing unit” as “CPU”); id. at 132 (defining “central
processing unit” as “[a]cronym for central processing unit. The
computational and control unit of a computer. The CPU is the device that
interprets and executes instructions . . . By definition, the CPU is the chip
that functions as the ‘brain’ of a computer. In some instances, however, the
term encompasses both the processor and the computer’s memory or, even
more broadly, the main computer console (as opposed to peripheral
equipment.)”).
FF13. MICROSOFT COMPUTER DICTIONARY 239 (5th ed. 2002)
(defining “graphics coprocessor” as “[a] specialized microprocessor,
included in some video adapters, that can generate graphical images such as
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lines and filled areas in response to instructions from the CPU, freeing the
CPU for other work”); id. at 240 (entry for “graphics processor” indicating
“[s]ee graphics coprocessor”).
FF14. AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
1810 (4th ed. 2006) (defining “timeline” as “2a. A chronology”).
Brown’s Disclosure
FF15. Brown discloses a system and method for electronically
modifying historic sales baselines by evaluating product and consumer
characteristics to accurately predict the impact of promotions on sales to
specific groups of consumers (¶ 0002). A user adjusts a baseline by
identifying and assigning values to factors that would have caused the
baseline to be different had the factors been included to generate the baseline
(¶ 0008).
FF16. Brown describes a main menu of a baseline modifying system
(¶ 0051) which preferably includes an Add/Edit Modifying Factors option to
adjust modifying factors (¶ 0053).
FF17. Brown discloses a preferred embodiment in which the
modifying factors can be thought of as describing the nature of the
relationship between the product and consumers. When a product is brand
new, the user will at first estimate what values should be used for the various
factors. As the user gains more experience with the product over time, the
user is able to refine the values used for the modifying factors. (¶ 0057).

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PRINCIPLES OF LAW
35 U.S.C. § 112, Sixth Paragraph
Special rules of claim construction allow for claim limitations drafted
in functional language and are set forth in 35 U.S.C. § 112, sixth paragraph,
which provides for:
[a]n element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.
35 U.S.C. § 112, sixth paragraph (emphasis added). While this provision
permits a claim limitation to be set forth using solely functional language, it
operates to restrict such claim limitations to those structures, materials, or
acts disclosed in the specification (or their equivalents) that perform the
claimed function. Personalized Media Commc’ns, LLC v. Int’l Trade
Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998).
The Federal Circuit has established that use of the term “means” is
central to the analysis of whether a claim limitation should be interpreted in
accordance with 35 U.S.C. § 112, sixth paragraph: use of the word “means”
creates a rebuttable presumption that the inventor intended to invoke § 112,
sixth paragraph, whereas failure to use the word “means” creates a
rebuttable presumption that the inventor did not intend the claims to be
governed by § 112, sixth paragraph. Id. at 703-04; Flo Healthcare
Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012).
When an inventor has not signaled an intent to invoke § 112, sixth
paragraph, by using the term “means,” the presumption against its
invocation is strong but can be overcome if “the claim term fails to recite
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sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function.” Lighting World, Inc. v.
Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002)
(internal quotation marks omitted) (citation omitted)). A claim limitation
that “essentially is devoid of anything that can be construed as structure” can
overcome the presumption. Flo Healthcare, 697 F.3d at 1374. The
presumption may be overcome by a claim limitation that uses a non-
structural term that is “simply a nonce word or a verbal construct that is not
recognized as the name of structure” but is merely a substitute for the term
“means for” associated with functional language. Lighting World, 382 F.3d
at 1360. Claim language that further defines a term that otherwise would be
a nonce word can denote sufficient structure to avoid construction under
§ 112, sixth paragraph, MIT v. Abacus Software, 462 F.3d 1344, 1354 (Fed.
Cir. 2006), as can a claim limitation that contains a term that “is used in
common parlance or by persons of skill in the pertinent art to designate
structure,” Lighting World, 382 F.3d at 1359. Nor will claim language
invoke a § 112, sixth paragraph, construction if persons of ordinary skill in
the art reading the specification understand the term to be the name for a
structure that performs the function, even when the term covers a broad class
of structures or identifies the structures by their function. Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many
devices take their names from the functions they perform.”).
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Indefiniteness Analysis for Computer-Implemented
Claim Limitations Interpreted Under
35 U.S.C. § 112, Sixth Paragraph
A claim limitation interpreted in accordance with 35 U.S.C. § 112,
sixth paragraph, is construed to cover the corresponding structures,
materials, or acts disclosed in the specification (and their equivalents) that
perform the claimed function. Personalized Media, 161 F.3d at 703. For a
computer-implemented claim limitation interpreted under § 112, sixth
paragraph, the corresponding structure must include the algorithm needed to
transform the general purpose computer or processor disclosed in the
specification into the special purpose computer programmed to perform the
disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game
Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Thus, the specification must
sufficiently disclose an algorithm to transform the general purpose computer
or processor to a special purpose processor programmed to perform the
disclosed algorithm. Id. at 1338. An algorithm is defined, for example, as
“a finite sequence of steps for solving a logical or mathematical problem or
performing a task.” MICROSOFT COMPUTER DICTIONARY 23 (5th ed. 2002).
An applicant may express the algorithm in any understandable terms
including as a mathematical formula, in prose, in a flow chart, or “in any
other manner that provides sufficient structure.” Finisar Corp. v. DirecTV
Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
An indefiniteness rejection under § 112, second paragraph, is
appropriate if the specification discloses no corresponding algorithm
associated with a computer or processor. Aristocrat, 521 F.3d at 1337-38.
Mere reference to a general purpose computer or processor with appropriate
programming without providing an explanation of the appropriate
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programming, or to “software” without providing detail about the means to
accomplish the software function, is not an adequate disclosure. Id. at 1334;
Finisar, 523 F.3d at 1340-41. In addition, simply reciting the claimed
function in the specification, while saying nothing about how the computer
or processor ensures that those functions are performed, is not a sufficient
disclosure for an algorithm which, by definition, must contain a sequence of
steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed.
Cir. 2009).
If the specification explicitly discloses an algorithm, the sufficiency of
the disclosure must be determined in light of the level of ordinary skill in the
art. Aristocrat, 521 F.3d at 1337. The specification must sufficiently
disclose an algorithm to transform a general purpose processor to a special
purpose processor so that a person of ordinary skill in the art can implement
the disclosed algorithm to achieve the claimed function. Id. at 1338.
35 U.S.C. § 112, First Paragraph
The first paragraph of 35 U.S.C. § 112 contains a written description
requirement that is separate and distinct from the enablement requirement.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010)
(en banc). The purpose of the written description requirement is to “ensure
that the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.” Id. at 1353-54 (citation omitted). This
requirement “ensures that the public receives a meaningful disclosure in
exchange for being excluded from practicing an invention for a period of
time.” Id.
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To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562-63 (Fed. Cir. 1991). Specifically, the specification must
describe the claimed invention in a manner understandable to a person of
ordinary skill in the art and show that the inventor actually invented the
claimed invention. Id.; Ariad, 598 F.3d at 1351. The written description
requirement does not demand any particular form of disclosure; however, “a
description that merely renders the invention obvious does not satisfy the
requirement.” Ariad, 598 F.3d at 1352 (citations omitted). The written
description requirement of 35 U.S.C. § 112, first paragraph, applies to all
claims including original claims that are part of the disclosure as filed. Id. at
1349. Original claim language does not necessarily satisfy the written
description requirement for the claimed subject matter. Id.

ANALYSIS
Claim Construction – Claim 1
Claim 1 recites a computer system comprising (a) memory and (b) a
processor in communication with the memory and programmed to (i)
“receive, from a user, a first review of an asset,” (ii) “store the first review of
the asset in association with a user identifier in a memory device,” (iii)
“receive, from the user, a second review of the asset,” (iv) “store the second
review in association with the first review and the user identifier in a
memory device,” and (v) “generate an opinion timeline for the asset for the
user associated with the user identifier.” The “processor” limitation is set
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forth using functional language, raising the issue whether the limitation
should be treated as a “means-plus-function” limitation under 35 U.S.C.
§ 112, sixth paragraph. The absence of the word “means” creates the strong
– but rebuttable – presumption that the inventors did not intend the
“processor” limitation to be governed by § 112, sixth paragraph. See Flo
Healthcare, 697 F.3d at 1373. To determine whether the presumption is
overcome, we must decide whether the term “processor” as used in claim 1
is one that connotes structure, or is instead a verbal construct devoid of
structure that is used as a substitute for the term “means for.” See Lighting
World, 382 F.3d at 1360.
First, we consider how an ordinarily skilled artisan would understand
the term “processor” as used in claim 1. Based on our review of dictionary
definitions, we conclude that a skilled artisan would not recognize
“processor” as the name of a sufficiently definite structure for generating an
opinion timeline and performing the other functions recited by the
“processor” limitation. Rather, a person skilled in the art of computer
programming would recognize the term “processor” to mean a general
purpose computer, a central processing unit (“CPU”), or a program that
translates another program into a form acceptable by the computer being
used. FF11, FF12; see Lighting World, 382 F.3d at 1360-61 (consulting
dictionaries to determine whether a claim term has a generally understood
meaning that denotes structure).
This interpretation is consistent with Appellant’s Specification, which
provides only non-limiting examples of a CPU, a graphics processing unit
(GPU), or both a CPU and a GPU for a “processor” without providing a
definition of “processor.” FF1, FF2; see Lighting World, 382 F.3d at 1361
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(consulting specification to determine whether a claim term denotes
structure). We are not convinced that the disclosure of a CPU or a GPU
(FF2) is sufficient structure for generating an opinion timeline or performing
the other functions recited by the “processor” limitation without additional
programming. Instead, one skilled in the art of computer programming
would recognize the term “central processing unit” as a computer’s
computational and control unit that interprets and executes instructions.
FF12. Similarly, one skilled in the art of computer programming would
recognize the term “graphics processing unit” as a synonym for graphics
processor or co-processor, which is a specialized microprocessor that can
generate graphical images such as lines and filled areas in response to
instructions from a CPU, freeing the CPU for other work. FF13.
Nor does Appellant’s Specification provide any additional description
sufficient to inform an ordinarily skilled artisan that the term processor
connotes a sufficiently definite structure for generating an opinion timeline
or performing the other functions recited by the “processor” limitation. FF1,
FF2. Appellant’s Figure 6 depicts, inside the processor 602, “Instructions
626” which represent software that may embody any of the functions
described in the Specification (FF3) and, as such, does not connote a
sufficiently definite structure for generating an opinion timeline.
We also consider whether the functions performed by the processor in
claim 1 are functions typically found in a commercially available off-the-
shelf processor. If a general purpose processor would be capable of
performing the claimed functions, then a skilled artisan might understand the
claim term “processor” to provide sufficient structure for performing those
functions. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d
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1303, 1316 (Fed. Cir. 2011) (functions such as “processing,” “receiving,”
and “storing” that can be achieved by any general purpose computer without
special programming do not require disclosure of more structure than the
general purpose processor that performs those functions). In this case,
however, we conclude that at least generating the opinion timeline by the
processor in claim 1 is not a typical function found in a general purpose
processor and would require additional programming of the processor to
implement, even where the processor is an off-the-shelf GPU. Therefore,
unlike the claimed “control unit” comprising “a CPU and a partitioned
memory system” that was held to provide sufficient structure to perform the
claimed function of “controlling the communication unit,” see LG Elecs.,
Inc. v. Bizcom Elecs., Inc., 453 F.3d 1364, 1372 (Fed. Cir. 2006), rev’d on
other grounds, Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617
(2008), here at least one of the claimed functions cannot be executed by a
general purpose processor without additional programming. Accordingly,
the claimed “processor” alone is not sufficient structure to perform the
functions in claim 1.
The term “processor” also appears in claim 1 by itself without a
structural modifier, which is further evidence that the term is a nonce word
that is not recognized as the name of structure. See Flo Healthcare, 697
F.3d at 1374 (holding that “the generic term ‘mechanism’ standing alone
may connote no more structure than the term ‘means,’” but the term “height
adjustment mechanism” designates a class of generally-understood
structures). Nor does claim 1 include any structure connected to the
processor that would indicate the processor itself is a sufficiently definite
structure. Claim 1 is unlike the claims in Inventio AG v. ThyssenKrupp
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Elevator Americas Corp., 649 F.3d 1350, 1359-60 (Fed. Cir. 2011), in which
the claimed “computing unit” that was held to connote sufficiently definite
structure was claimed to be connected to a modernizing device and to
generate a destination signal for transmission to the modernizing device and
was further claimed to be connected to floor terminals of the elevator system
and evaluate incoming call reports, destination floors, and identification
codes to generate the destination signal for processing by the modernizing
device. In contrast, claim 1 does not recite any structure connected to the
“processor” other than memory, which is not sufficient structure for
performing all the recited functions. Nor does claim 1 recite the specific
steps that the processor undertakes to perform all the recited functions,
including the specific steps to generate an opinion timeline recited by
claim 1.
The term “processor” in claim 1 is also different from the claim terms
“circuit” and “circuitry,” which have been held to denote sufficiently
definite structure to avoid the application of § 112, sixth paragraph. See
MIT, 462 F.3d at 1354-56; Linear Tech. Corp. v. Impala Linear Corp., 379
F.3d 1311, 1320-21 (Fed. Cir. 2004); Apex Inc. v. Raritan Computer, Inc.,
325 F.3d 1364, 1374 (Fed. Cir. 2003). The term “circuit” coupled with a
description in the claims of the circuit’s operation typically conveys the
structural arrangement of the circuit’s components. See MIT, 462 F.3d at
1355; Linear Tech., 379 F.3d at 1320; Apex, 325 F.3d at 1373. In contrast,
the recited processor and claim language here do not convey to a person
skilled in the art anything about the internal components, structure, or
specific operation of the processor.
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For these reasons, we conclude that the term “processor” as used in
claim 1 is a non-structural term that would not be understood by an
ordinarily skilled artisan as having sufficiently definite structure to perform
all the recited functions. The term is used as merely a substitute for the term
“means for” associated with recited functional language and thus invokes the
application of § 112, sixth paragraph. We also conclude that dependent
claims 2-7 contain no additional language connoting structure sufficient to
perform the recited functions, nor do they recite specific steps that the
processor undertakes to perform the recited functions. These claims,
therefore, are also interpreted under § 112, sixth paragraph.
New Ground of Rejection under 35 U.S.C. § 112,
Second Paragraph – Claim 1
Having concluded that the “processor” limitation in claim 1 invokes
the application of § 112, sixth paragraph, we now consider whether
Appellant’s Specification discloses sufficient corresponding structure for
performing the claimed functions. See Aristocrat, 521 F.3d at 1333.
Because the limitations of claim 1 are computer-implemented and cannot all
be performed by a general purpose computer without any special
programming, we must determine whether the Specification discloses an
algorithm that transforms a general purpose processor into a special purpose
processor that performs the claimed functions. Id.; cf. Katz, 639 F.3d
at 1316.
Only two portions of the Specification describe the processor and any
associated functions. In the first portion, the Specification discloses the
server 104 includes a processor 116 and memory 120, which are in
communication with one another, and the processor 116 accesses the
memory 120 to provide requested content stored in the memory. FF1. That
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description is merely a general statement that fails to mention the specific
functions recited in claim 1, much less provide any detailed steps as to how
the processor would perform generating an opinion timeline for the asset for
the user associated with the user identifier or any of the other functions
recited by claim 1.
The second portion of the Specification that describes the processor
and its associated functions provides that instructions 626 embodying any of
the functions described in the Specification may reside within the processor
602. FF2 (citing Fig. 6). Here, too, the Specification merely provides a
general statement that fails to mention the specific functions recited in
claim 1.
The Specification does disclose “an opinion timeline engine”
including “a logic layer” configured to generate an opinion timeline using
data in the data stores. FF4. The Specification, however, only discloses
how two reviews of a user may be associated together – by using
identification information and/or asset identification information associated
with both reviews. FF5. This general description does not disclose how to
generate an opinion timeline for the asset for the user associated with the
user identifier, as recited in claim 1.
The Specification also contains a flow chart illustrating a five-step
process for creating an opinion timeline, including “generating an opinion
timeline” as the fifth step. FF6. The Specification, however, merely
provides non-limiting examples for each step, which generally include
identifying a component from Figure 3 which may be involved in the step.
FF7-FF9. The Specification indicates that “[f]or example, the opinion
timeline engine . . . may generate an opinion timeline using the first review
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and the second review (e.g., by matching the user identifier of the first
review with the user identifier of the second review).” FF6. The
Specification does not specifically indicate that either processor 106 or
processor 616 may generate an opinion timeline. Even if the opinion
timeline engine could be understood as corresponding to the claimed
processor, the flow chart step to generate an opinion timeline simply restates
the function “generating an opinion timeline” and provides an example that
the first and second reviews of a user could be used. The Specification,
however, does not state how the first and second reviews of a user could be
used to generate an opinion timeline. Although the Specification states how
the reviews may be associated – that is, for example, by matching the user
identifier of the first review with the user identifier of the second review
(FF9) – this is not an algorithm for generating an opinion timeline, the
function recited in claim 1. There is no algorithm to transform a general
purpose processor into a special purpose processor for performing the
function of generating an opinion timeline.
Even if the five steps shown in the flow chart could be understood as
corresponding to the five functions ascribed to the claimed processor and the
opinion timeline engine could be understood to be the claimed processor, the
flow chart and accompanying description in the Specification simply restate
the claimed functions without conveying to an ordinarily skilled artisan how
the processor ensures that the functions, including the function “generate an
opinion timeline,” are performed. This determination is consistent with the
Examiner’s understanding. See Ans. 8 (noting the claim language
“generating an opinion timeline” lacks any details of how such a timeline is
generated).
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As such, the Specification fails to disclose an algorithm that
transforms the general purpose processor into a special purpose processor
programmed to perform the functions recited in claim 1, including
“generating an opinion timeline.” See Blackboard, 574 F.3d at 1384;
Aristocrat, 521 F.3d at 1334. Because Appellant’s Specification fails to
disclose an algorithm for performing all of the functions recited in the
“processor” limitation of claim 1, it fails to describe sufficient corresponding
structure as required for a limitation interpreted under 35 U.S.C. § 112, sixth
paragraph.
Accordingly, we enter a new ground of rejection of claim 1 as being
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. Claims
2-7 depend from claim 1 and therefore are also indefinite under 35 U.S.C.
§ 112, second paragraph. We also enter a new ground of rejection of claims
2-7 on this same basis.
New Ground of Rejection under 35 U.S.C. § 112,
First Paragraph – Claims 8-20
Claim 8 is directed to a computer-implemented method including,
among other limitations, “generating an opinion timeline for the asset for the
user associated with the user identifier.” As an initial matter, we note that
originally-filed claim 8 recited generating an opinion timeline (FF10).
Although originally-filed claim 8 may have disclosed the asset for which the
opinion timeline is generated, originally-filed claim 8 did not disclose how
the “opinion timeline” itself is generated and so does not provide the
necessary written description support for pending claim 8. Accord Ariad,
598 F.3d at 1349 (indicating original claim language does not necessarily
satisfy the written description requirement for the claimed subject matter).
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Although Appellant points to paragraph 0041 of his Specification as
disclosing the generating limitation (App. Br. 3), the cited portion merely
describes a means for associating two user reviews and does not describe
how an opinion timeline can be generated (FF5). Further, as discussed in the
previous section, the Specification only identifies a generic processor (FF1-
FF2) and does not disclose an algorithm for “generating an opinion timeline
for the asset for the user associated with the user identifier” (FF10). Beyond
general statements of the function to be performed, which, at most, may
render the claimed function obvious, the inventor has not shown how the
recited opinion timeline is generated. This disclosure is not sufficient
because a description that merely renders the invention obvious does not
satisfy the written description requirement. Ariad, 598 F.3d at 1352.
Because Appellant’s disclosure, as originally filed, does not convey to
an ordinarily skilled artisan that Appellant had possession of the claimed
invention, we conclude that claim 8 does not have sufficient written
description support to satisfy 35 U.S.C. § 112, first paragraph.
Accordingly, we enter a new ground of rejection of claim 8 as being
unpatentable under 35 U.S.C. § 112, first paragraph, for failure to satisfy the
written description requirement. Claims 9-14 depend from claim 8 and
therefore are unpatentable under 35 U.S.C. § 112, first paragraph for failure
to satisfy the written description requirement. We also enter a new ground
of rejection of claims 9-14 on this same basis.
Independent claim 15, from which claims 16-20 depend, also recites
“generating an opinion timeline for the asset for the user associated with the
user identifier.” Claims 15-20 therefore are unpatentable under 35 U.S.C.
§ 112, first paragraph for failure to satisfy the written description
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requirement. Accordingly, we enter a new ground of rejection of claims 15-
20 on this basis.
If claims 1-7 were not construed under § 112, sixth paragraph, and
therefore were not indefinite under § 112, second paragraph, we would also
reject claims 1-7 as failing to satisfy the written description requirement
§ 112, first paragraph, because claim 1 contains similar limitations to claim
8 and claims 2-7 depend from claim 1.
Rejection under 35 U.S.C. § 102(e)
In rejecting independent claims 1, 8, and 15 under 35 U.S.C. § 102(e),
the Examiner finds that Brown discloses the claimed invention. Ans. 5
(citing Brown ¶¶ 0031-32, 0042-43, 0046-49, 0053, 0057, 0078-80, 0086), 6
(indicating independent claims 8 and 15 are rejected on the same basis as
claim 1). Appellant contends that the Examiner erred in rejecting the claims
under 35 U.S.C. § 102 because Brown does not disclose, among other
things, “generating an opinion timeline for the asset for the user associated
with the user identifier,” as recited in the independent claims. App. Br. 4-
13; Reply Br. 1-2.
The issue regarding the anticipation rejection is whether Brown
discloses generating an opinion timeline. We therefore begin by construing
the term “opinion timeline.” The broadest reasonable interpretation of
“timeline” is a chronology (FF14), so an ordinarily skilled artisan would
understand “opinion timeline” to mean chronologically arranged opinions.
Accord App. Br. 6 (providing dictionary definitions for “timeline”); Reply
Br. 2. This construction is consistent with the Specification, which discloses
a user interface depicting an original user review 504 and an updated user
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review 508 arranged in chronological order as an opinion timeline. Spec.
¶ 0051; Fig. 5B; accord App. Br. 6; Ans. 8.
With this construction, we also agree with Appellant that the portions
of Brown cited by the Examiner do not disclose “generating an opinion
timeline for the asset for the user associated with the user identifier” recited
in claim 8. Rather, Brown generally discloses modifying historical sales
information to more accurately predict sales of products. FF15-FF17. In the
particular portions of Brown on which the Examiner relies, Brown discloses
adding or modifying factors used to adjust historical sales information.
FF16-FF17; Ans. 5. Although Brown describes how a user of the sales
information system may refine factors entered when a product was new as
the user gains experience with the product over time (FF17), this does not
meet the limitation of generating an opinion timeline which requires
generating a chronology of opinions. Enabling a user to refine factors does
not disclose showing how the factors change over time.
For the foregoing reasons, we will not sustain the Examiner’s § 102(e)
rejection of claim 8, as well as the rejection of its dependent claims 9-14.
Nor will we sustain the Examiner’s § 102(e) rejection of independent claim
15, which contains similar limitations, as well as its dependent claims 16-20.
We also will not sustain the Examiner’s § 102(e) rejection of independent
claim 1 and dependent claims 2-7 on the same basis in that Brown does not
disclose the function of generating an opinion timeline.

DECISION
The Examiner’s decision to reject claims 1-20 under 35 U.S.C.
§ 102(e) is reversed.
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Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1-7 under 35 U.S.C. § 112, second paragraph,
and enter a new ground of rejection for claims 8-20 under 35 U.S.C. § 112,
first paragraph.
Section 41.50(b) provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the newly rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

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