Ex Parte Winter

Patent Trial and Appeal Board

May 31, 2013

10805888 (P.T.A.B. May. 31, 2013)

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.
10/805,888 03/22/2004 Robert William Winter 51432/RRT/A784 2212
79456 7590 05/31/2013
Robert W. Winter
1601 Barton Rd.
Apt. 1302
Redlands, CA 92373
EXAMINER
MYINT, DENNIS Y
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
05/31/2013 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 ROBERT WILLIAM WINTER1
____________________

Appeal 2010-011093
Application 10/805,888
Technology Center 2100
____________________

Before JEAN R. HOMERE, JASON V. MORGAN, and LARRY J. HUME,
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 second,
Non-Final Rejection of claims 1, 2, 4-29, and 31-40. Appellant has
previously canceled claims 3 and 30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 The Real Party in Interest is the pro se Appellant, Robert William Winter.
App. Br. 17, Ans. 3 et seq.
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STATEMENT OF THE CASE 2
The Invention
Appellant invented a computer system and method for identifying
material on a computer network and, more specifically, for searching content
information based on standardized categories and selectable categorizers.
Spec. p. 1, ll. 15-19 (“FIELD OF THE INVENTION”).
Exemplary Claims
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):
1. A method performed by one or more computers for
identifying content in a computer network, the method
comprising:
storing a plurality of predetermined categories in a
database;
categorizing a plurality of pre-existing items
corresponding to one or more of the plurality of predetermined
categories, by a plurality of categorizers, respectively, wherein
a subsequent categorizer is capable of categorizing an item
already categorized by an early categorizer;
displaying at least a portion of the stored plurality of
predetermined categories;

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Jul. 2, 2008); Supplemental Appeal Brief with Corrected Claims Appendix
(“Supp. App. Br.” filed May. 15, 2009); First Reply Brief (“1st Reply Br.,”
mailed Nov. 18, 2008); Second Reply Brief (“2nd Reply Br.,” filed June 6,
2009); Examiner’s Answer (“Ans.,” mailed May 28, 2009); Non-Final
Office Action (“NFOA,” mailed Mar. 3, 2008); and the original
Specification (“Spec.,” filed Mar. 22, 2004).
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selecting a category from the displayed predetermined
categories by a user;
displaying categorizers for the selected category;
selecting a categorizer from the displayed categorizers by
the user;
initiating a search for one or more pre-existing items in
the computer network based on the selected category and the
selected categorizer as search parameters;
displaying results of the search on a display;
selecting one or more of the displayed results for more
detail description of the selected item;
providing incentive to one or more categorizers based on
number of users who have selected an item categorized by the
one or more categorizers; and
sharing the incentive among the early categorizer and
the subsequent categorizer whose subsequent categorization is
based on the categorization of the early categorizer and
allocating the incentive between the early categorizer and the
subsequent categorizer.
Claim 7 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):
7. The method of claim 1, wherein the number of
users who have selected an item categorized by the one or more
categorizers is a function of the number of users who have
selected the item and have come back to the search results
within a substantially short time.
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Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Edwards US 2002/0038430 A1 Mar. 28, 2002
Gonzales US 2002/0152087 A1 Oct. 17, 2002
Boyd US 2002/0194049 A1 Dec. 19, 2002
Covington US 2003/0009448 A1 Jan. 9, 2003
Pundarika US 2003/0043144 A1 Mar. 6, 2003
Montemer US 2004/0010518 A1 Jan. 15, 2004
Pinsonnault US 2004/0193480 A1 Sep. 30, 2004
Robinson US 7,072,846 B1 Jul. 4, 2006
Rejections on Appeal 3
1. Claim 7 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 6.
2. Claims 1, 4-6, 14, 15, 19-23, 28-29, 31-33, and 38-40 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Covington, Pundarika, and Montemer. Ans. 6.
3. Claims 2, 7-9, 12, 13, 17, 25-27, and 34-37 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Covington, Pundarika, Montemer, and Robinson. Ans. 31-32.
4. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Covington, Pundarika,
Montemer, and Pinsonnault. Ans. 36.

3 We note that the non-statutory subject matter rejection of claims 28-29 and
31-40 under 35 U.S.C. § 101 has been withdrawn by the Examiner. Ans. 4.
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5. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Covington, Pundarika, Montemer, and
Edwards. Ans. 38.
6. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Covington, Pundarika, Montemer,
Robinson, and Gonzales. Ans. 39.
7. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Covington, Pundarika, Montemer, and
Boyd. Ans. 40.
ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Except to the extent noted below
with respect to the indefiniteness rejection of claim 7, we disagree with
Appellant’s conclusions with respect to the rejections of claims 1, 2, 4-29,
and 31-40, and we 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 by the Examiner in the Examiner’s Answer in
response to Appellant’s Arguments. However, we highlight and address
selected findings and arguments regarding claims 1 and 7 for emphasis as
follows.
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1. Indefiniteness Rejection of Claim 7
Issue 1
Did the Examiner err in finding that the phrase “within a
substantially short time” in claim 7 is indefinite?
Analysis
Appellant admits (App. Br. 49-50; 1st Reply Br. 6) that the limitation
in dispute is vague, and that the Examiner’s indefiniteness rejection of claim
7 under 35 U.S.C. § 112, ¶ 2 was not in error. Accordingly, we affirm the
Examiner’s rejection of this claim.4
2. Unpatentability Rejection of Claims 1, 2, 4-29, and 31-40
Issue 2
Appellant argues (App. Br. 16-44; 1st Reply Br. 4-10; 2nd Reply
Br. 3-9) that the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as

4 Appellant states that assistance in formulating the claims on appeal has
been requested from the Examiner, but that the requested guidance has not
been provided. App. Br. 50; 1st Reply Br. 5-6. Although our Decision
in response to the Appeal to the Patent Trial and Appeal Board (PTAB) is
not the proper venue for advising pro se Appellants, we would suggest
that Appellant either re-obtain the services of a registered Patent Attorney
or Agent or, if continuing to proceed pro se, familiarize himself with the
contents of the Manual for Patent Examining Procedure (MPEP)
(http://www.uspto.gov/web/offices/pac/mpep). In addition, we note that pro
se Applicants may potentially avail themselves of limited guidance from and
dialogue with the Examiner by way of an Examiner Interview using an
appropriate procedure in view of the status of this application following our
Decision. Present Office policy places great emphasis on telephone
interviews initiated by the Examiner (e.g., See MPEP § 408), however
Applicants may also initiate Examiner interviews. See MPEP § 713.
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being unpatentable over the combination of Covington, Pundarika, and
Montemer is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellant’s claimed
method is rendered unpatentable over the combination of
Covington, Pundarika, and Montemer because the combination
teaches or suggests the steps of “displaying at least a portion of
the stored plurality of predetermined categories . . . initiating a
search for one or more pre-existing items in the computer
network based on the selected category and the selected
categorizer as search parameters . . . [and] sharing the incentive
among the early categorizer and the subsequent categorizer
whose subsequent categorization is based on the categorization
of the early categorizer and allocating the incentive between the
early categorizer and the subsequent categorizer,” as recited in
claim 1?
Analysis
Appellant provides extensive background information and arguments
in the Appeal Brief (App. Br. 1 et seq., 1st Reply Br. 1 et seq., and 2nd Reply
Br. 1 et seq.) which, while informative as to the overall goals and potential
social and economic benefits of Appellant’s disclosed and claimed
invention, are generally not directed with specificity towards the Examiner’s
interpretation of the claims on appeal in light of the noted citations to the
prior art. As discussed below, Appellant’s arguments are not commensurate
with the scope of the claims.
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Appellant contends that the cited prior art shares many components
with Pinpointer5, but is incapable of enabling the Internet to provide a viable
alternative to traditional media businesses, and potentially supplant them,
which is what Appellant’s invention purports to do. App. Br. 27. In
particular, Appellant contends that Covington teaches components whose
commonality with the claimed invention is not disputed, e.g., storing a set of
categories that can be used to describe content; assigning content to these
categories; displaying search results; and displaying more information when
an item is selected from a set of search results. App. Br. 29.
However, Appellant contends (id.) that the section of Covington cited
by the Examiner (FOA 7 (citing Covington ¶ [0045] and [0047])) does not
describe displaying categories, but instead relates to the Database Manager’s
activities of posting, indexing, and cross-referencing content items on a web
site. As part of these activities, creating a new category may be included,
but the reference does not teach displaying pre-existing categories to either
the Database Manager or to the user. App. Br. 29.
In addition, Appellant contends that Covington’s disclosure is only
relevant to one element of searching in which a human Database Manager
applies a category to a content item, which is, by itself, insufficient to
connect users with content that they are likely to enjoy, “because it fails to
accommodate different users’ varying tastes,” and instead only illustrates the
inadequacies of the prior art as discussed in Appellant’s Specification. App.
Br. 30.

5 Throughout the briefs, Appellant refers to his disclosed and claimed
invention as “Pinpointer” which is said to be an embodiment intended for
commercialization. App. Br. 17.
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In response, the Examiner finds that Covington teaches “displaying
categories,” because the Database Manager can, either directly or through an
agent or software, prepare a Web site containing the relevant information
and post the Web site in the database enabling access by users. Ans. 43
(citing Covington ¶ [0045]). Further, the Database Reviewer can also
provide additional information which would correlate the record with other
pertinent records, e.g., the Database Reviewer or the Database Manager can
identify similarly categorized or otherwise related information records that
may be of interest to the User based on the user’s inquiry. Ans. 43 (citing
Covington ¶ [0047]). We agree with the Examiner’s findings regarding the
limitation in dispute because posting a web site containing relevant
information for user access teaches the recited “displaying relevant
information [i.e., categories] to the user.” Ans. 43.
With respect to the teachings of Pundarika, Appellant contends that
the cited art does not initiate a search for content items based on the category
and taste expert specified by the user. Instead, Appellant contends that
Pundarika actually finds a review of the content item which the user must
then read to determine interest, and not the content item itself sought by the
user. App. Br. 31. “[B]eing guided to a review is different in a fundamental
way from being guided to pre-screened content items themselves, because
with reviews, all the ‘heavy lifting’ of filtering still needs to be done by the
user, after reading and assessing the reviewers’ verbiage.” Id. (emphases in
original).
In response to Appellant’s contention regarding the teachings of
Pundarika, the Examiner finds that this reference teaches the recited
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“initiating a search for one or more pre-existing items in the computer
network based on the selected category and the selected categorizer as
search parameters.” Ans. 11-12. We agree with the Examiner because
Pundarika teaches or suggests that a list of reviewers is organized in various
ways (e.g., geographic, male/female, types of books reviewed) and displayed
at step 550, and the visitor's choice of the specific reviewer is collected at
step 560. Ans. 11-12 (citing Pundarika ¶ [0043] and Fig. 5).
With regard to the limitation “sharing the incentive among the early
categorizer and the subsequent categorizer whose subsequent categorization
is based on the categorization of the early categorizer and allocating the
incentive between the early categorizer and the subsequent categorizer,”
Appellant agrees with the Examiner that that referral fees can be split among
multiple entities based on categorizations made in a database, and that “there
was never any reasonable doubt that this could be done, and anyone of
ordinary proficiency in the art could have devised multiple ways to go about
it.” App. Br. 35-36. However, Appellant goes on to contend that:
The novelty of the Pinpointer invention is in anticipating the
circumstances in which fees must be shared, to prevent
latecomer “big names” whose recommendations users are most
likely to be consulted by users from claiming all the benefits of
the valuable prior labor performed by “little guys” in unearthing
noteworthy new content.
Montemer has nothing at all to say about handling such an
eventuality. It thus provides no significant guidance to
Pinpointer. On balance, it is simply an unneeded illustration of
a common function in the business world.
App. Br. 36 (emphasis in original). We disagree with Appellant’s arguments
regarding the relevance of Montemer because the Examiner finds that
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Covington and Pundarika teaches “sharing the incentive” (Ans. 12 (citing
Covington ¶¶ [0044], [0046]-[0047])), and Montemer teaches “providing
incentive to one or more categorizers based on a number of users who have
selected an item categorized by the one or more categorizers.” Ans. 13
(citing Montemer ¶¶ [0028] (“shared directories”), [0032], and [0034] and
Figs. 1 and 2).
In particular, we agree with the Examiner that Montemer teaches the
final result of an inquiry is a telephone referral wherein the inquiry call is
transferred to the selected advertised directory listing referral number and a
referral business transaction is initiated, e.g., Revenue Sharing Transaction
92. Ans. 13-14 (citing Montemer ¶¶ [0042], [0048]-[0049], and Figs. 2
and 3).
Appellant also provides wide-ranging arguments concerning the
propriety of the motivation to combine the references in the manner set forth
by the Examiner. App. Br. 37-43. In essence, Appellant argues that, while
the cited art may teach all the recited components or steps of claim 1, “the
examiner has given no consideration to either the insight into the problem
being addressed by the feature, or the nature of the improvement obtained,
other than fulfillment of an apparently idle desire to add another
component.” App. Br. 42. We disagree.
In KSR, the Court stated “[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’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007).
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417. In the present case, we find that the Examiner’s proposed
combinations for claim 1 apply the teachings of Pundarika, and Montemer in
a manner that would produce predictable results when used in the method of
Covington. See Ans. 16-18.
Further, our review of the record establishes that the Examiner’s case
for obviousness is based only on knowledge which was within the level of
ordinary skill at the time of Appellant’s invention and does not include
knowledge gleaned only from Appellant’s disclosure, including the broad
aspects of Pinpointer argued by Appellant, cited above. Finally, the
Examiner identifies the relevant portions of each of the references relied on
throughout the Examiner’s Answer. See Ans. 7-15. To the extent that the
Examiner relies on the knowledge of one of ordinary skill in the art to
combine the teachings of the references, this practice is consistent with
current case law, cited supra.
Accordingly, Appellant has not persuaded us of any reversible error in
the Examiner’s characterization of the cited art and related claim
construction. Therefore, we sustain the Examiner’s unpatentability rejection
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of independent claim 1. As Appellant has not provided separate arguments
with respect to independent claims 19, 28, and 38, or dependent claims 2, 4-
18, 20-27, 29, 31-37, and 39-40 (App. Br. 16), we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 103(a).
CONCLUSIONS
(1) The Examiner did not err with respect to the indefiniteness
rejection of claim 7, and the rejection is sustained.
(2) The Examiner did not err with respect to the unpatentability
rejections of claims 1, 2, 4-29, and 31-40, over the various combinations of
the references cited, and the rejections are sustained.
DECISION
The decision of the Examiner to reject claims 1, 2, 4-29, and 31-40 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED

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