Ex Parte SOHN

Patent Trial and Appeal Board

Aug 13, 2018

13783000 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/783,000 03/01/2013
101198 7590 08/13/2018
Patent Docket Administrator
Lowenstein Sandler LLP
One Lowenstein Drive
Roseland, NJ 07068
FIRST NAMED INVENTOR
Timothy Y oungjin SOHN
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.
25832.2565 (L2565) 1264
EXAMINER
MEKONEN, TESFU N
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
08/13/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY YOUNGJIN SOHN
Appeal2018-002035
Application 13/783,000 1
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 4, and 6-26, which are all claims pending in the
application. Claims 2, 3, and 5 are cancelled. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Google Inc. App.
Br. 3.
Appeal2018-002035
Application 13/783,000
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed "subject matter relates to a
machine-implemented method including receiving an indication of a user
request to view content at a social networking site." Spec. ,r 2.
Exemplary Claim
Claim 21, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
21. A device comprising:
at least one processor circuit configured to:
receive a post including a first item and a second item;
determine a first product brand associated with the first
item of the post;
determine a genre mapped to first product brand
associated with the first item of the post, wherein the genre acts
as proxy for a grouping of content that is visually similar;
identify a second product brand associated with the
second item of the post; and
map the genre to the second product brand associated
with the second item of the post, wherein the mapping is based
at least in part on the first item and the second item being
included in the same content item.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
June 14, 2017); Reply Brief ("Reply Br.," filed Dec. 18, 2017); Examiner's
Answer ("Ans.," mailed Oct. 18, 2017); Final Office Action ("Final Act.,"
mailed Nov. 25, 2016); and the original Specification ("Spec.," filed
Mar. 1, 2013).
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Application 13/783,000
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Meek et al. ("Meek") US 2008/0005073 Al Jan 3, 2008
Macadaan et al. ("Macadaan") US 2008/0209343 Al Aug. 28, 2008
Felder US 2012/0197755 Al Aug. 2, 2012
Rejections on Appeal3
RI. Claims 1, 4, and 8-26 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Macadaan and
Felder. Final Act. 4.
R2. Claims 6 and 7 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Macadaan, Felder,
and Meek. Final Act. 16.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 11-19) and our discretion
under 37 C.F.R. 4I.37(c)(iv), we decide the appeal of obviousness Rejection
3 In the event of further prosecution, we direct the Examiner's attention to
the question of whether claims 1, 4, and 6-26 are patent eligible under 35
U.S.C. § 101 in light of the Supreme Court Decision in Alice Corporation
Pty. Ltd. v. CLS Bank International, et al., 134 S. Ct. 2347 (2014). Abstract
ideas have been identified by the courts by way of example, including
fundamental economic practices, certain methods of organizing human
activities, an idea "of itself," and mathematical relationships/formulae. All
claims on appeal appear to be directed to organizing human activities and
associating, comparing, and providing particular types of data intended for
human perception. Although the Board is authorized to reject claims under
37 C.F.R. § 4I.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP) 1213.02.
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Application 13/783,000
RI of claims 8-13, 15-17, 19-21, and 23-26 on the basis of representative
claim 21. We decide the appeal of separately argued independent claims 1,
14, and 18, separately, infra. We decide the appeal of separately argued
dependent claims 4 and 22, separately, infra.
Remaining claims 6 and 7 in Rejection R2, not argued separately or
substantively, stand or fall with the respective independent claim from which
they depend. 4
ISSUE AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
Based on our review of the record, we disagree with Appellant's
arguments with respect to Rejection RI of claims 1, 4, and 8-26 under§ 103
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellant's arguments.
We highlight and address specific findings and arguments regarding
claims 1, 4, 21, and 22 for emphases as follows.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 13/783,000
1. § 103 Rejection RI of Claims 1, 4, and 8-26
Appellant argues (App. Br. 11-19; Reply Br. 3---6) the Examiner's
rejection of claim 21 under 35 U.S.C. § 103(a) as being obvious over the
combination of Macadaan and Felder is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "processor circuit" configured to
receive a post including a first item and a second item;
determine a first product brand associated with the first item of
the post;
determine a genre mapped to first product brand associated with
the first item of the post, wherein the genre acts as proxy for a
grouping of content that is visually similar;
identify a second product brand associated with the second item
of the post; and
map the genre to the second product brand associated with the
second item of the post, wherein the mapping is based at least
in part on the first item and the second item being included in
the same content item,
as recited in claim 21?
Analysis
Appellant contends neither of the cited references teaches or suggests
any of the limitations of claim 21. App. Br. 11. In particular, Appellant
contends:
The disclosure in Felder of "advanced filters ... based on ...
style," (Felder, ,r 44), does not disclose or suggest that the filters
can be used to map a style to a "second product brand," as
recited in independent claim 1, nor is any such disclosure
implicit in Felder. Instead, Felder discloses that "[s]hoppers will
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Application 13/783,000
shop by advanced filters ... based on ... style ... and then
select which ... brands ... they want to shop by." Felder, ,r 44.
In other words, Felder does not disclose or suggest that any
mapping of data can be effectuated by the "online shopping
tool," such as "map the genre to the second product brand," as
recited in independent claim 21.
Furthermore, although Felder discloses that "the present
invention may ... send fashion vendors a message with
descriptions and a image [sic] of the blouse as a sales leads,"
(Felder, i-f38). Felder does not disclose or suggest that any
determinations are made from the content of the message. Thus,
Felder does not disclose or suggest "determine a first product
brand associated with the first item of the post," "determine a
genre mapped to first product brand associated with the first
item of the post, wherein the genre acts as proxy for a grouping
of content that is visually similar," or "identify a second product
brand associated with the second item of the post," as recited in
independent claim 21.
App. Br. 13.
Appellant also argues against the Examiner's mapping of Felder's
wear categories and brand categories to the product "brand" and "genre."
App. Br. 13-14, citing Final Act. 13, Felder Fig. 2, ,r 44.
The Examiner finds Felder's online shopping portals with rows of
fashion items, i.e., hats, and columns of brands, i.e., Donna Karan, teaches
or at least suggests the disputed limitations including "determine a genre
mapped to first product brand associated with the first item of the post ... "
Ans. 3-8, citing Felder Fig. 2, ,r,r 24, 44.
Appellant's contentions are not persuasive, because claim terms are to
be given their broadest reasonable interpretation, as understood by those of
ordinary skill in the art and taking into account whatever enlightenment may
be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
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1997). While we are cautioned by our reviewing court not to import
limitations from the Specification into the claims (see In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004)), our reviewing court
guides that our claim construction must not be overly broad, unreasonable,
or inconsistent with Appellant's Specification. See In re Smith Int'!, Inc.,
871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
First, on this record, Appellant does not point to, nor does Appellant's
Specification provide, any express definitions 5 for the claim terms "genre"
or "brand" or "mapping" a brand to a genre that would indicate the
Examiner's claim interpretation is overly broad, unreasonable or inconsistent
with the Specification. We find the supporting portions of the Specification
merely describe exemplary, illustrative, non-limiting embodiments. See
Spec. ,r,r 2, 5, 9. Appellant's assertions amount to unsupported attorney
argument, and therefore we give them little weight. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139-
140 (Fed. Cir. 1996).
Second, device claim 21 recites functional limitations which, as a
matter of claim construction, carry little weight in an apparatus claim. Our
5 See Helmsderfer v. Bobrick Washroom Equipment, Inc., 527 F.3d 1379,
1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and
assign to a term a unique definition that is different from its ordinary and
customary meaning; however, a patentee must clearly express that intent in
the written description." (Citations omitted)). Any special meaning assigned
to a term "must be sufficiently clear in the specification that any departure
from common usage would be so understood by a person of experience in
the field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998).
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reviewing court further guides, the patentability of an apparatus "depends on
the claimed structure, not on the use or purpose of that structure." Catalina
Marketing Int'!. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002), "a system claim generally covers what the system is, not what the
system does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990).
Moreover, "[an intended] use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates." Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Although "[s]uch statements often ... appear in the claim's preamble," In re
Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or
purpose can appear elsewhere in a claim. Id.
Here, Appellant does not argue the structure of device claim 21 is
different from the stn1cture taught or suggested in the cited prior art.
Instead, Appellant's arguments focus on the purported functional dffferences
and/or the intended uses of the device of claim 21, as compared to the
functions taught in the prior mi, i.e., "a processor circuit configured to .... "
Claim 21. Therefore, we find unavailing Appellant's contentions regarding
the contested functional limitations and intended uses of the device
(apparatus) recited in claim 21. 6
6 To the extent that the "device comprising at least one processor circuit
configured to" language covers a single processor (device) that is intended
to perform all the recited functions of claim 21, we leave it to the Examiner
to consider whether the "device" of claim 21 uses "device" as a nonce word
for a means plus function limitation, thus resulting in a single means claim.
Where a means recitation does not appear in combination with another
recited element of means, such claim would be subject to an undue breadth
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In addition, "[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416 (2007).
Applying this reasoning here, we find the combination of mapping a "genre"
to multiple product brands of multiple items would have yielded no more
than predictable results.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance upon the combined teachings
and suggestions of the cited prior art combination to render obvious the
disputed limitations of claim 21. 'Accordingly, we sustain the Examiner's
rejection under 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712,
714-715 (Fed. Cir. 1983) (A single means claim which covered every
conceivable means for achieving the stated purpose was held nonenabling
for the scope of the claim because the specification disclosed at most only
those means known to the inventor.).
Moreover, "[s]tructure disclosed in the specification qualifies as
'corresponding structure' if the intrinsic evidence clearly links or associates
that structure to the function recited in the claim." Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (en bane) (citing B.
Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)).
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'! Game
Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see also Function Media,
L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013). "[T]he fact
that one of skill in the art could program a computer to perform the recited
functions cannot create structure where none otherwise is disclosed."
Williamson, F.3d at 1351 (citing Function Media, 708 F.3d at 1319).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 4I.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) §1213.02.
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obviousness rejection of representative independent claim 21, and claims 8-
13, 15-17, 19, 20, and 23-26, which fall therewith. See Claim Grouping,
supra.
Regarding dependent claim 22, Appellant contends:
Felder does not disclose or suggest "brands ... can categorize
or grouping based on their similarities." Final Office Action,
p. 14. Instead, Felder discloses that "[s]hoppers will shop by
advanced filters ... based on ... style ... and then select
which ... brands ... they want to shop by." Felder, ,r 44. Thus,
Felder does not disclose or suggest "identify a plurality of posts
associated with the first product brand or the second product
brand mapped to the genre," as recited in dependent claim 22.
App. Br. 14--15.
The Examiner finds Felder's filtering similar items displayed by
different brands or designers by selecting from a dropdown menu teaches or
at least suggests the disputed limitation of claim 22, i.e., "identify a plurality
of posts associated with the first product brand or the second product brand
mapped to the genre." Ans. 8, citing Felder, Fig. 2, ,r 24.
We find Appellant's argument regarding Felder's filtering of similar
items is unpersuasive. We agree with the Examiner's finding (Ans. 8) that
Felder's selecting, based on brands and product similarities, teaches or at
least suggests the disputed limitation of claim 22 because, under the broadest
reasonable interpretation standard, and the Examiner's construction of the
term "genre," discussed supra, Felder's disclosure of comparison of different
brands of particular clothing items (e.g, see Felder Fig. 2) teaches or
suggests identifying posts associated with first and/or second brand item
products that are mapped to the particular genre.
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Although Appellant argues claims 1, 4, 14, and 18 separately, we find
those arguments unpersuasive and we sustain the Examiner's rejection of
these claims for at least the same reasons articulated by the Examiner (Ans.
8-9, Final Act. 4--16), as discussed above.
3. Rejection R2 of Claims 6 and 7
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claims 6 and 7 under§ 103, we sustain the
Examiner's rejection of these claims. Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 3---6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
and R2 of claims 1, 4, and 6-26 under 35 U.S.C. § I03(a) over the cited
prior art combinations of record, and we sustain the rejections.
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DECISION
We affirm the Examiner's decision rejecting claims 1, 4, and 6-26.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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