Ex Parte Sutter et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201813559945 (P.T.A.B. Feb. 27, 2018) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/559,945 07/27/2012 Mark SUTTER P-75105-US 1066 49443 7590 03/01/2018 Pearl Cohen Zedek Latzer Baratz LLP 1500 Broadway 12th Floor New York, NY 10036 EXAMINER FILIPCZYK, MARCIN R ART UNIT PAPER NUMBER 2158 NOTIFICATION DATE DELIVERY MODE 03/01/2018 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): US PTO @ PearlCohen .com Arch-USPTO @ PearlCohen. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK SUTTER, SIMON YELSKY, and JEFF WEINSTEIN Appeal 2017-002863 Application 13/559,945 Technology Center 2100 Before JOSEPH L. DIXON, CATHERINE SHIANG, and STEVEN M. AMUNDSON, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-002863 Application 13/559,945 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—5, 7—9, and 15—20. Claim 6 has been canceled and claims 10-14 have been withdrawn from consideration and were subject to a restriction requirement on July 8, 2014. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a system and method for the intelligent suggestion and evaluation of content. Claim 12 reproduced below, is illustrative of the claimed subject matter: 1. A method of creating a []new article, the method comprising: recording a plurality of search sessions for articles electronically stored in one or more article databases, wherein each search session includes at least one search term; compiling the search sessions into a plurality of search clusters based on a commonality of search terms used across sessions in each cluster of the plurality of search clusters; calculating a rating for each of the plurality of search clusters based on the success of the search sessions in yielding usable search results, wherein the success of []a search session is defined by explicit and implicit user action, explicit user action comprising indicating that a search result was responsive or nonresponsive to the search conducted, and implicit user action comprising viewing a document or not viewing a document resulting from that search; 1 Appellants indicate that RightAnswers, Inc. is the real party in interest. (App. Br. 1). 2 We note the residual strike through from amendments to the claims, filed on July 16, 2015, has been deleted. 2 Appeal 2017-002863 Application 13/559,945 accepting user input regarding a cluster of the plurality of search clusters which is rated as unsuccessful; automatically populating a new article with search terms from the cluster rated as unsuccessful; and storing the new article in the one or more document databases. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Zamir et al. US 2006/0224608 A1 Oct. 5, 2006 Venolia et al. US 2008/0319944 Al Dec. 25, 2008 REJECTIONS The Examiner made the following rejections: Claims 1—5, 7—9, and 15—20 stand rejected under 35 U.S.C. § 112, second paragraph. Claims 1 and 15 recite the limitation “the one or more document databases.” There is insufficient antecedent basis for this limitation in the claims.3 Claims 1—5, 7—9, and 15—20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Zamir in view of Venolia. ANALYSIS 35 U.S.C. § 112, Second Paragraph With respect to independent claims 1 and 15, Appellants do not substantively respond to the argument or amend the claim language to remedy the noted deficiency. Appellants “request that this rejection be held 3 We note that each of the dependent claims depends from and includes the deficient subject matter of independent claims 1 and 15. 3 Appeal 2017-002863 Application 13/559,945 in abeyance until the prior art rejections are decided, as Applicants can readily fix this defect.” (App. Br. 12). The Examiner maintains all rejections from the Final Office action unless expressly withdrawn. (Ans. 2). As a result, we summarily affirm the Examiner’s rejection of independent claims 1 and 15 and their respective dependent claims 2—5, 7—9, and 16—20, which contain the same deficient subject matter. 35U.S.C. § 103(a) With respect to independent claims 1 and 15, we find the claims have similar limitations as argued by Appellants. As a result, we select independent claim 1 as the illustrative claim and will address Appellants’ arguments thereto. Appellants argue the general differences in the prior-art references. Appellants contend: In contrast with the cited prior art, which focusses on the success of searches, embodiments of the present invention save and act on the lack of success of searches to help create new content. In some embodiments this may be useful in for example in creating content or articles which are responsive to searches which in the past have not produced results — where other content or articles have been non-responsive in the past. (App. Br. 4). Appellants identify the individual deficiencies in each of the prior-art references relative to four of the claim limitations as recited in illustrative independent claim 1. (App. Br. 5—11). Appellants emphasize that the claimed invention is “regarding a cluster of the plurality of search clusters which is rated as unsuccessful.'1'’ (App. Br. 5). Appellants further argue that the Examiner’s “misinterpretation of claim elements, and ignoring of claim 4 Appeal 2017-002863 Application 13/559,945 elements, allows the Office Action to ignore the interrelationship of various claim elements.” (App. Br. 5—6). The Examiner responds to Appellants’ arguments regarding the four claim limitations as they relate to the Zamir and Venolia references. (Ans. 3-9). Appellants further emphasize the differences between the prior-art references and the claimed invention where the prior art is directed to the “results” (“results clicks”) and the claimed invention is directed to the “search sessions” and “search clusters.” (Reply Br. 5). With respect to the claimed step of “calculating a rating for each of the plurality of search clusters,” Appellants contend that the Examiner alleges: it would have been obvious to apply Venolia’s alleged unsuccessful/not useful information to Zamir. However, as discussed above, Venolia at best disclosed bundling queries, providing the most relevant search results, a user rating results, and classifying results as non-useful; and Zamir at best disclosed matching existing queries to a new query, ordering query information, grouping queries based on relevance to a new query, separately from ordering queries ranking results based on result clicks, displaying query sessions with results (without describing the relationship between the queries and results), and annotating a query or results with user input. Neither [reference] applied a rating or describing results to the queries. (Reply Br. 7—8). We agree with Appellants that the Zamir and Venolia references do not clearly teach or suggest the claimed “calculating a rating for each of the plurality of search clusters.” With respect to the additional limitations of “automatically populating a new article” and “storing the new article in a database,” we do not reach 5 Appeal 2017-002863 Application 13/559,945 these limitations because Appellants have shown error in the Examiner’s underlying factual findings in the conclusion of obviousness of illustrative independent claim 1. (App. Br. 8—12; Reply Br. 8—9). With respect to independent claim 15 and dependent claims 2—5, 7—9, and 16—20, Appellants rely upon the same arguments proffered with respect to illustrative independent claim 1. As a result, we cannot sustain the rejection of independent claim 15 and dependent claims 2—5, 7—9, and 16—20 for the reasons discussed above with respect to illustrative independent claim 1. CONCLUSIONS The Examiner did not err in rejecting claims 1—5, 7—9, and 15—20 under 35 U.S.C. § 112, second paragraph, but the Examiner erred in rejecting claims 1—5, 7—9, and 15—20 based upon obviousness under 35 U.S.C. § 103(a). DECISION For the above reasons, we summarily affirm the Examiner’s indefmiteness rejection of claims 1—5, 7—9, and 15—20 under 35 U.S.C. §112, second paragraph, and we reverse the Examiner’s obviousness rejection of claims 1—5, 7—9, and 15—20 under 35 U.S.C. § 103(a). Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner’s decision rejecting claims 1— 5, 7-9, and 15-20. See 37 C.F.R. § 41.50(a)(1). 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 6 Copy with citationCopy as parenthetical citation