Ex Parte WetherellDownload PDFPatent Trial and Appeal BoardAug 28, 201411246657 (P.T.A.B. Aug. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER JASON WETHERELL ____________ Appeal 2011-012594 Application 11/246,657 Technology Center 3600 ____________ Before HUBERT C. LORIN, MICHELLE R. OSINSKI, and NINA L. MEDLOCK, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christopher Jason Wetherell (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE.1 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Mar. 7, 2011) and Reply Brief (“Reply Br.,” filed July 21, 2011), and the Examiner’s Answer (“Ans.,” mailed May 23, 2011). Appeal 2011-012594 Application 11/246,657 2 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer-implemented method of presenting content, comprising: receiving, by a client system distinct from a server system, a plurality of feed content items from the server system; presenting, by the client system, a list of feed content items received from the server system, including displaying identifying information associated with at least a subset of the feed content items in the list at a given time; in response to user selection of a respective feed content item in the list of feed content items, identifying, by the client system, one or more additional feed content items in the list of feed content items, the one or more additional feed content items having a same content type as the selected feed content item; and presenting, by the client system, previews of the selected and additional feed content items. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Herrington Kahn US 2005/0033657 A1 US 2005/0289468 A1 Feb. 10, 2005 Dec. 29, 2005 “The following assertion of facts . . . are considered as admitted prior art: [a.] presenting image contents in thumbnail and presenting video or audio contents in a playlist format; [b.] presenting selected content along with related content item; and [c.] presenting content in an interleaved list.” [APA] The following rejections are before us for review: 1. Claims 9–18 are rejected under 35 U.S.C. §102(e) as being anticipated by Kahn. Appeal 2011-012594 Application 11/246,657 3 2. Claims 1–18 are rejected under 35 U.S.C. §103(a) as being unpatentable over Kahn, Herrington, and APA. ISSUES Did the Examiner present a prima facie case of anticipation for the subject matter of claims 9–18 over Kahn? Did the Examiner present a prima facie case of obviousness for the subject matter of claims 1–18 over Kahn, Herrington, and APA by a preponderance of the evidence? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claims 9–18 under 35 U.S.C. §102(e) as being anticipated by Kahn. The Examiner’s position is that Kahn anticipates the subject matter of claims 9–18. Claims 9, 11 and 18 are the independent claims. All the independent claims, and therefore the dependent claims as well, include “instructions” for a computer-implemented system to (a) present a list of items, including identifying information associated with at least a subset of the content items in the list at a given time, (b) identify other items in the list in response to selecting an item from the list, and (c) presenting previews of the selected and additional items. Claim 9 in particular includes Appeal 2011-012594 Application 11/246,657 4 instructions, stored in the memory and configured for execution by the one or more processors, that, when executed by the one or more processors, cause the system: to present a list of content items received from an external server system, including instructions to display identifying information associated with at least a subset of the content items in the list at a given time; in response to user selection of a content item in the list of content items, to identify one or more additional content items in the list of content items, the one or more additional content items satisfying predefined criteria with respect to the selected content item; and to present previews of the selected and additional content items. With regard to these instructions, the Examiner states that “the language is broad enough to read on [an] operating system since the operating system is [a] set of instructions stored in a memory and is configured for execution by one or more processors caus[ing] the system to regulate application software use.” Ans. 4–6. According to the Examiner, because Kahn describes an operating system (citing ¶¶ 34; 117; and 126), Kahn necessarily describes the instructions, as claimed. The Appellant disagrees, arguing that the Examiner has failed to present a prima facie case of anticipation. “The Examiner provides no justification for ignoring the specific instructions recited in claims 9–18.” App. Br. 10. The Examiner responded by arguing that “Kahn is sufficient in terms of art. . . . [T]he instructions are not functionally tied to the medium. See MPEP 2106.01.” Ans. 12. After careful review of the record, we find that the Examiner has not satisfied the initial burden of establishing a prima facie case of anticipation. Appeal 2011-012594 Application 11/246,657 5 Anticipation is a question of fact. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). The Examiner factually finds that the claimed specific instructions read on the set of instructions employed by Kahn’s operating system. However, this is not supported by a preponderance of the evidence. Kahn does not expressly describe any of the instructions plainly recited in the claims. Kahn may nevertheless anticipate the claimed invention if Kahn inherently describes the instructions as claimed. But “[t]o serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991). In that regard, the Examiner has not supplied any further evidence to show that the instructions as claimed, which are missing from Kahn, are necessarily present in Kahn’s “set of instructions stored in a memory and [ ] configured for execution by one or more processors [to] cause[ ] the system to regulate application software use.” Ans. 5–6. Because there is no evidence to support the finding that the specific instructions as claimed are ‘necessarily present,’ not merely probably or possibly present, in Kahn, we find that Kahn does not inherently describe the claimed subject matter. See Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). Appeal 2011-012594 Application 11/246,657 6 It is well settled that in order for the Examiner to establish a prima facie case of anticipation, each and every element of the claimed invention, arranged as required by the claim, must be found in a single prior art reference, either expressly or under the principles of inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Because, for the foregoing reasons, a preponderance of the evidence does not support finding that Kahn expressly or inherently describes what is claimed, a prima facie case of anticipation has not been made out in the first instance. To the extent that the Examiner is taking the position that claim limitations that define computer-enabled instructions in more functional detail need not be given patentable consideration, we disagree. We note the Examiner’s reliance on MPEP 2106.01. Ans. 12. But that section is directed to patent subject matter eligibility, which is not at issue here. Nevertheless, it does not say there that claim limitations defining computer- enabled instructions in more functional detail are patentably inconsequential. In fact, the MPEP is quite clear. “USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art.” MPEP 2111.05, 9th Edition. This section (MPEP 2111.05) explains the approach to be taken when the claimed subject matter at issue is the relationship between the programming and the intended computer system. Here instead, without further explanation, a conclusion is reached that “the [claimed] instructions are not functionally tied to the medium.” Ans. 12. This is inadequate as a basis for finding the claim limitations that define computer-enabled instructions in more functional detail patentably inconsequential - especially given that “[w]here the programming performs Appeal 2011-012594 Application 11/246,657 7 some function with respect to the computer with which it is associated, a functional relationship will be found.” MPEP 21105 (III). The rejection is not sustained. The rejection of claims 1–18 under 35 U.S.C. §103(a) as being unpatentable over Kahn, Herrington, and APA. With respect to claims 1, 2, 9, 11, and 18, the independent claims, the Examiner takes the position that Kahn discloses all the claim limitations except for a. “identifying one or more additional items related to the selected item, the item having a same content type as the selected item in response to user selection of a respective item; and b. presenting previews of the selected item and additional items.” Ans. 7. Herrington is relied on as disclosing these limitations. Ans. 7–8. APA is also relied on for “disclos[ing] presenting selected content along with related content item.” Ans. 8. According to the Examiner, “it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teaching of identifying one or more additional items related to the selected item and presenting preview of the selected item as disclosed in Herrington to Kahn’s aggregation and filtering of existing feed, e.g. ‘in the list’ to improve presentation of feed/content display.” Ans. 8. The Appellant challenges the Examiner’s position, in part, on the ground that “Herrington, however, does not disclose ‘identifying one or Appeal 2011-012594 Application 11/246,657 8 more additional content items’ in a list, ‘in response to user selection’ of a content item ‘in the list.’ as the claims require.” App. Br. 13. The Examiner relied on Figs. 6, 7, 9A and 9B; ¶¶ 46–68, 82, 96 and 108 as evidence that Herrington discloses said claim limitation. See Ans. 7– 8. Taking claim 1 as representative of the rejected claims, the question is whether Figs. 6, 7, 9A and 9B and ¶¶ 46–68, 82, 96 and 108 of Herrington adequately supports finding that Herrington discloses in response to user selection of a respective feed content item in the list of feed content items, identifying, by the client system, one or more additional feed content items in the list of feed content items, the one or more additional feed content items having a same content type as the selected feed content item. Figs. 6, 7, 9A and 9B depict “screenshots of various graphical user interfaces and portions thereof from the personalized content management and presentation systems provided in accordance with the [Herrington] invention.” ¶29. Herrington describes a “Personalized Notification[]” scheme (¶34) whereby “KeepMedia users can choose to receive notifications of content which has been identified as potentially being of interest to them, based on personalization functionality updates which have run on the KeepMedia website.” ¶37. The “Personalization Functionality” is described at ¶¶46–66. Herrington explains that “[i]n order to personalize the media content offerings that can be viewed on a website or other media platform, the invention as described herein implements content profiling.” ¶46. This is accomplished in part by automatically monitoring user actions, such as searching, viewing, keeping and tracking content, and storing them in customer databases for future use. See ¶47–58. “The Appeal 2011-012594 Application 11/246,657 9 personalization functionality can be expanded to allow additional dimensions of user control.” ¶64. For instance, the user could be allowed to control the date range, publication or topic of the content returned by the personalization functionality. In fact, any of the control elements described herein can be exposed to and controlled by the user. ¶64. Herrington further discloses that the system can “automatically organize the selected articles by a user according to predefined categories or topics, or each may decide to explicitly create their own item headers or point headings.” ¶108. The system can display the personalized content in a variety of ways, including “a list [ ] identifying in order the most popular content items within a defined topic from various magazines, newspapers, journals and any other type of media. Accordingly, the personalization functionality of the content management and presentation systems herein can automatically create lists of sources, topics and individual items that may interest a specific user . . . .” ¶96. We have carefully reviewed the passages in Herrington relied upon to show that Herrington discloses the claim limitation: in response to user selection of a respective feed content item in the list of feed content items, identifying, by the client system, one or more additional feed content items in the list of feed content items, the one or more additional feed content items having a same content type as the selected feed content item. In our view, the cited passages are inadequate as evidence to show that Herrington discloses said claim limitation. This is so because nowhere in Herrington is there any mention of “identifying one or more additional feed content items in the list of feed content items” (claim 1) in response to and Appeal 2011-012594 Application 11/246,657 10 having a same content type as a feed content item a user has selected from said list. Although Herrington may lead one of ordinary skill in the art to select feed content items and categorize them, Herrington is insufficient to lead one further to identify an additional feed content item in a list of feed content items in response to and having a same content type as a feed content item a user has selected from said list as claimed. That Herrington discloses said claim limitation is not supported by a preponderance of the evidence. The Examiner also relies on Admitted Prior Art, which the Examiner characterizes as “disclos[ing] presenting selected content along with related content item.” Ans. 4–5 and 8. Assuming the Examiner’s characterization of the Admitted Prior art is accurate, knowledge of “presenting selected content along with related content item” is insufficient to lead one of ordinary skill in the art to identify an additional feed content item in a list of feed content items in response to and having a same content type as a feed content item a user has selected from said list. Such knowledge may lead one to present a selected feed content item along with related feed content items but it is insufficient to lead one further to identify an additional feed content item in a list of feed content items in response to and having a same content type as a feed content item a user has selected from said list as the claims require. For the foregoing reasons, the rejection is not sustained. CONCLUSIONS The rejection of claims 9–18 under 35 U.S.C. §102(e) as being anticipated by Kahn is not sustained. Appeal 2011-012594 Application 11/246,657 11 The rejection of claims 1–18 under 35 U.S.C. §103(a) as being unpatentable over Kahn, Herrington, and APA is not sustained. DECISION The decision of the Examiner to reject claims 1–18 is reversed. REVERSED Klh Copy with citationCopy as parenthetical citation