Ex Parte Strauss et al

Patent Trial and Appeal Board

May 31, 2018

13287118 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/287,118 11/01/2011
80680 7590
Wilson Legal Group P.C.
16610 Dallas Parkway
Suite 1000
Dallas, TX 75248
06/04/2018
FIRST NAMED INVENTOR
Brett Strauss
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.
08-001675-10 1458
EXAMINER
FEATHERSTONE, MARK D
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
john @wilsonlegalgroup.com
USPTO@wilsonlegalgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRETT STRAUSS and HIMANSU KARUNADASA
Appeal 2017-011706
Application 13/287, 118
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 6-10, and 12-14, which are all the claims pending in this
application. Claims 5, 11, and 15 are cancelled. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 "The real parties in interest in this appeal are Brett Strauss of Dallas,
Texas, and Himansu Karunadasa of Dallas, Texas." App. Br. 1.
Appeal 2017-011706
Application 13/287,118
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to:
[a] method and system for designing a knowledge portal
for retrieving, organizing[,] and delivering information and
content to portal users, wherein the information and content
viewed, modified[,] or accessed by each portal user has been
analyzed, compared, rated, ranked[,] or tagged against the
user's profile, user's prior content consumption, other portal
user profiles[,] and by portal user consumption of similar
information and content within the community of portal users.
Abstract.
Representative Claim
1. A method of designing a content recommendation engine
for retrieving, organizing and delivering content to users
belonging to a community of users, the method comprising
identifying a community of users characterized by a common
interest with respect to each user's consumption of content
without regard to defined organizational business processes;
analyzing patterns of said user consumed content through
a Bayesian calculation to identify and rank specific content and
common interests associated with said user consumption of
content;
storing said Bayesian calculation identifying and ranking
specific content and common interests associated with said user
consumption of content in a database for use by said content
recommendation engine;
constructing consumed content profiles which include
data selected from a group consisting of:
content name, content location, type of consumed
content, consumed content creation date, consumed
content publication date, consumed content experience
level rating, a series of consumption indices associated
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Application 13/287,118
with users who have consumed content associated with
said consumed content profiles, and a combination of
said data;
analyzing said content profiles or patterns ofuser-
consumed content associated with said content profiles through
a Bayesian calculation to identify and rank specific content and
common interests associated with said content profiles;
concurrently analyzing patterns of user-consumed
content for a single user and patterns of consumed content for
said community of users;
providing content recommendations based upon a basis
selected from a group consisting of:
the analysis of content profiles, the concurrent
analysis of patterns of user-consumed content for a
single user and patterns of consumed content for said
community of users, and a combination of bases; and
constructing a content portal such that said user is
automatically displayed relevant content as determined
by said analysis of content profiles, said concurrent
analysis of patterns of user-consumed content for a single
user and patterns of consumed content for said
community, or both.
(Contested limitations emphasized, i.e., "a content recommendation engine
which utilizes a collaborative model-building approach in conjunction with a
single-user model building approach," as argued by Appellants on page 17
of the Appeal Brief). See n.3, infra.
Rejections
A. Claims 1--4, 6-9, and 12 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Horvitz et al.
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Application 13/287,118
(US 2006/0004763 Al, published Jan. 5, 2006) (hereinafter "Horvitz") and
Zee (US 2003/0065642 Al, published April 3, 2003). 2 Final Act. 4--8.
B. Claim 10 is rejected under 35 U.S.C. § I03(a) as being obvious
over the combined teachings and suggestions of Horvitz, Zee, and Hyder et
al. (US 2009/0299826 Al, published Dec. 3, 2009) (hereinafter "Hyder").
Final Act. 8.
C. Claims 13 and 14 are rejected under 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of Horvitz, Zee, and
Cialowicz et al. (US 2011/0251977 Al, published Oct. 13, 2011)
(hereinafter "Cialowicz"). Final Act. 9.
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of rejection A
of claims 1--4, 6-9, and 12 on the basis of representative claim 1. We
address rejections Band C, infra. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv). We disagree with Appellants' arguments,
and we adopt as our own: (1) the findings and reasons set forth by the
Examiner in the Final Office Action from which this appeal is taken, and (2)
the reasons and rebuttals set forth in the Examiner's Answer in response to
2 The Examiner erroneously refers to cancelled claim 11, and omits rejected
claims 1--4, 6-9, and 12 from the heading of rejection A. Final Act. 4.
However, the detailed statements of rejection under the heading of Rejection
A correctly enumerates rejected claims 1--4, 6-9, and 12. Final Act. 4--8.
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Application 13/287,118
Appellants' arguments. Ans. 2--4. However, we highlight and address
specific findings and arguments for emphasis in our analysis below.
Rejection A of Independent Claim 1 under 35 US. C. § 103 (a)
The Examiner finds the proffered combination of Horvitz and Zee
teaches or suggests all the contested limitations of representative
independent claim 1. Final Act. 4---6; Ans. 2--4. We note that method
claim 1 is the sole independent claim before us on appeal.
Appellants disagree. Appellants aver that "neither Horvitz nor Zee -
nor the combination of the two - teach a content recommendation engine
which utilizes a collaborative model-building approach in conjunction with a
single-user model building approach, as taught by Applicants." App. Br. 16-
17. 3
However, in support, Appellants merely contend the references have
been improperly combined by the Examiner. App. Br. 17. In particular,
Appellants urge that Horvitz "teaches away" from using a collaborative
model in conjunction with a single-user model. Id.
3 We note Appellants' argued limitations are not literally commensurate
with the language of claim 1, which, for example, is silent regarding the
argued "collaborative model-building approach." See App. Br. 16-17.
Thus, Appellants are arguing limitations that are not claimed. A basic canon
of claim construction is that one may not read a limitation into a claim from
the written description. Renishaw plc v. Marposs Societa'per Azioni, 158
F.3d 1243, 1248 (Fed. Cir. 1998). Patentability is based upon the claims. "It
is the claims that measure the invention." SRI Int 'l v. Matsushita Elec. Corp.
of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en bane). Therefore, we
only consider Appellants' limitation arguments to the extent that such
arguments are directed to claimed subject matter.
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Appellants argue that Horvitz refers to the single-user model and
collaborative model as "alternative" model building approaches. App.
Br. 18. Appellants note that Horvitz's Figure 5 shows the "alternative"
model-building approaches are constructed from mutually-exclusive inputs.
Appellants further contend, inter alia:
In the present appeal, Horvitz clearly discourages utilizing the
single-user model and collaborative model in conjunction with
each other. For instance, the use of the word "alternative,"
which means "a proposition or situation offering a choice
between two or more things, only one of which may be
chosen," [(footnote 58 omitted)] inherently suggests that the
collaborative model and single-user model are mutually
exclusive of each other.
App. Br. 19.
Appellants support the above contention with a dictionary definition.
Footnote 5 8 on page 19 of the Appeal Brief cites to "Alternative Definition,
MERRIAM-WEBSTER, http://www.merriam-webster.com/dictionary/
alternative (last accessed September 29, 2015)."
We reproduce below the pertinent definitions for the word
"alternative" as described at the cited MERRIAM-WEBSTER web site (id.):
"1: offering or expressing a choice [-] several alternative plans, and
"3: occurring or succeeding by turns: ALTERNATE."
In response, the Examiner further explains the basis for the rejection:
Even though Horvitz states in paragraphs 21 and 68 that the
single-user model and the collaborative model are alternative
model building architectures, it does not state that they are
alternatives to each other ( emphasis added). Further, nowhere
does Horvitz indicate the two models cannot or should not be
used in conjunction with each other, let alone them being
mutually exclusive.
(Ans. 3).
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In support, the Examiner cites to Horvitz (i1i1 14--15) as evidence:
Horvitz explicitly teaches in paragraph 15 lines 19 - 22 that "the
predictive models can be employed in collaborative filtering
applications, in addition to learning patterns of routine
browsing and associated displays related to a single user"
( emphasis added). Further, Horvitz states in paragraph 14 lines
9 - 10 that "predictive models can be employed for a single
user and/or in collaborative applications" ( emphasis added).
We find the use of the conjunctive term "and" with "or" in paragraph
14, line 10 of Horvitz ("and/ or") is dispositive of this issue, particularly in
light of the guidance of our reviewing courts:
"[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious." KSR, 550 U.S. at 416 (citation omitted). However,
merely teaching an alternative or equivalent method, does not teach away
from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438
(CCPA 1965). Moreover, "[a] finding that two inventions were designed to
resolve different problems ... is insufficient to demonstrate that one
invention teaches away from another." Nat 'l Steel Car, Ltd. v. Canadian
Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). See DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
("A reference does not teach away ... if it merely expresses a general
preference for an alternative invention but does not 'criticize, discredit, or
otherwise discourage' investigation into the invention claimed") ( citations
omitted).
This reasoning is applicable here. As found by the Examiner, Horvitz
teaches "alternative model building approaches." Horvitz ,r,r 68, 71, Ans. 3
(citing Horvitz ,r 15, 11. 19-22). As discussed above, Horvitz (i-f 14)
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expressly describes: "In addition, predictive models can be employed for a
single user and/or in collaborative applications." Horvitz (i-f 15) further
describes: "predictive models can be employed in collaborative filtering
applications, in addition to learning patterns of routine browsing and
associated displays related to a single user." Emphasis added.
We find Horvitz's alternative designs of a single model builder and
collaborative model do not teach away, because "the mere disclosure of
alternative designs does not teach away" and "just because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes." In re Mouttet, 686 F.3d 1322, 1334
(Fed. Cir. 2002) (citations omitted).
Here, we find Appellants have not substantively contested the claim
limitations, beyond advancing a "teaching away" argument. See n.3, supra.
Moreover, we conclude the contested claim limitations are obvious because
Appellants "asserted no discovery beyond what was known to the art" and
"[a] known or obvious composition does not become patentable simply
because it has been described as somewhat inferior to some other product for
the same use." In re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994). "All of the
disclosures in a reference must be evaluated for what they fairly teach one of
ordinary skill in the art." In re Boe, 355 F.2d 961,965 (CCPA 1966). "[I]n
a section 103 inquiry, 'the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered."' Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747,750 (CCPA 1976)).
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For the aforementioned reasons, we find Appellants' "teaching away"
argument unavailing. On this record, we find Appellants have not shown
that Horvitz criticizes, discredits, or otherwise discourages the invention
claimed. We further note Appellants have not filed a Reply Brief and,
therefore, have not rebutted the Examiner's additional findings and
explanations, as set forth in the Answer (2--4).
Therefore, based upon a preponderance of the evidence, we are not
persuaded of error regarding the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness.
Accordingly, we sustain rejection A of representative independent
claim 1. The remaining dependent claims 2--4, 6-9, and 12, also rejected
under rejection A, fall with claim 1. See "Grouping of Claims" supra. See
37 C.F.R. § 4I.37(c)(l)(iv).
Rejections Band C of remaining dependent claims 10, 13, and 14
Appellants advance no separate arguments regarding claim 10, as
rejected under rejection B, or for claims 13 and 14, as rejected by the
Examiner under rejection C. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 6-10, and
12-14 under 35 U.S.C. § 103(a).
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. § 4I.50(f).
AFFIRMED
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