Ex Parte TSO

Board of Patent Appeals and Interferences

Oct 27, 2003

09000759 (B.P.A.I. Oct. 27, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MICHAEL MAN-HAK TSO

Appeal No. 2002-0144
Application No. 09/000,759

ON BRIEF

Before KRASS, BARRY and BLANKENSHIP, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-4, 6, 11-13 and 21-26.
The invention is directed to the filtering of network
content to be downloaded to a network client in a computer
system. While conventional blocking techniques were based on URL
classifications, the instant invention bases the blocking of
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Application No. 09/000,759
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certain objects on the content itself. A data object to be
rendered on a client device is dynamically filtered by scanning
the object for content satisfying a predetermined selection
criterion and, if the predetermined selection criterion is
satisfied, the data object is selectively provided to the client
in accordance with a predetermined filtering preference.
Representative independent claim 1 is reproduced as follows:
1. A method for dynamically filtering content in a data
object to be rendered on a client device, said method comprising
the steps of:
receiving a request for a user-specified data object from a
client device;
retrieving the user-specified data object in response to the
request from the client device;
scanning the user-specified data object for content
satisfying a predetermined selection criterion;
modifying content in the user-specified data object in
accordance with a predetermined filtering preference if said
predetermined selection criterion is satisfied; and
providing the modified user-specified data object to the
client device.
The examiner relies on the following reference:
Herz et al. (Herz) 5,835,087 Nov. 10, 1998
(filed Oct. 31, 1995)
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Claims 1-4, 6, 11-13 and 21-26 stand rejected under
35 U.S.C. § 102(e) as anticipated by Herz.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
At the outset, we note that claim 6, as reproduced in the
appendix to the principal brief, depends from a non-existent
claim 5.
We also note that, in accordance with the grouping of the
claims at the top of page 6 of the principal brief, all claims
will stand or fall together as a single group. Accordingly, we
will focus on independent claim 1.
An anticipatory reference is one which describes all of the
elements of the claimed invention so as to have placed a person
of ordinary skill in the art in possession thereof. In re Spada,
911 F.2d 205, 15 USPQ2d 1655 (Fed. Cir. 1990).
We have reviewed the examiner’s statement of the rejection
as well as the rationale therefor and appellant’s responses
thereto and we will not sustain the rejection of claims 1-4, 6,
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Application No. 09/000,759
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11-13 and 21-26 under 35 U.S.C. § 102(e) because, in our view,
the examiner has not established a prima facie case of
anticipation.
We agree with appellant that, “[r]ather than being concerned
with modifying the content of target objects, Herz is instead
concerned with reducing the number of target objects presented to
a user” (reply brief-page 5). Accordingly, Herz does not
disclose the claimed “modifying content in the user-specified
data object in accordance with a predetermined filtering
preference if said predetermined selection criterion is
satisfied.” Herz customizes a list of objects presented to a
user by enabling a user access to only those objects of interest
without requiring the user to go through each and every object to
determine those of interest. This is clearly set forth at column
4, lines 37-43, of Herz. While the number of objects presented
to a user is reduced in Herz, it is in no way reasonable to
conclude that this is equivalent to modification of the content
of an object, as required by the instant claims.
One might say that Herz reasonably scans a user-specified
data object for content satisfying a predetermined selection
criterion because a user specifies certain types of objects
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(e.g., news articles relating to a certain subject) which the
system then retrieves and inspects for such content before
reducing the number of articles which may be of specific interest
via a target profile. However, once this is done, Herz does not
further modify the content of the user-specified data object, or
news article, in accordance with any predetermined filtering
preference, as required by the instant claims. The news articles
themselves, albeit reduced in number, are provided to the user in
Herz but the content of those news articles which are presented
to the user is not modified before providing the data object to
the client device.
In the response section of the answer, the examiner argues
that the “active queries” of Herz are treated as any other target
object (citing column 69, lines 10-13), that these active queries
are used to determine the relevant ranking of target objects for
the user and to generate a customized list of relevant target
objects. The examiner further contends that various filters
comprising user profiles are used to dynamically customize and
modify a list which is then transmitted to the user (citing Herz,
Figures 10 and 13A) (see answer-page 7).
If the examiner is arguing that the “list” presented to a
user is modified, that may be so. However, the “list” of
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relevant target objects is not the “user-specified data object,”
as claimed. The user-specified data object in Herz is not the
customized list of relevant target objects. Rather, the user-
specified data objects in Herz are the news items of interest to
the user. So, while the customized list in Herz may be modified,
the list is not a user-specified data object and while Herz’s
news items of interest may be user-specified data objects, the
news items are not modified. Accordingly, Herz does not
anticipate the instant claimed subject matter.
It might even be argued that all of the news items retrieved
by a general server in Herz comprise a universal set of all news
items of the type specified by a user and that the filtered list
results in a “modified” set of news items, the set of news items
themselves being the user-specified data object, resulting in a
modification of the “content” of the universal set by deleting
some of the content of this universal set prior to display to the
user. However, it is our view that such an interpretation of
Herz would be strained. Though the claimed subject matter may be
broad in scope, we simply do not view it as reasonable to contend
that the entirety of the content of the list of objects retrieved
in Herz is a “user-specified data object” which is then scanned
for content satisfying a predetermined selection criterion and
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subsequently content-modified.
The examiner’s decision rejecting claims 1-4, 6, 11-13 and
21-26 under 35 U.S.C. § 102(e) is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
)
LANCE LEONARD BARRY ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
EK/RWK
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