Ex Parte Woods et al

Patent Trial and Appeal Board

Nov 30, 2017

13964168 (P.T.A.B. Nov. 30, 2017)

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.
13/964,168 08/12/2013 Colin Woods E1395.950(T).USC1W+ 1825
114581 7590
EIP US LLP
2468 Historic Decatur Road
Suite 200
San Diego, CA 92106
EXAMINER
AHN, SANGWOO
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
s andiego @ eip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLIN WOODS and RAJALAKSHMI IYER
Appeal 2017-006584
Application 13/964,168
Technology Center 2100
Before MARC S. HOFF, JUSTIN BUSCH, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—5, 7—13, and 15—20, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Openwave Mobility, Inc.
App. Br. 3.
Appeal 2017-006584
Application 13/964,168
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates generally to “the
provision of personalized information to a user of a user device.” Spec. 12.2
The Specification explains that (1) a user is identified, (2) user information
is obtained, and (3) in response to receiving a message from the user device,
performing a personalization process, which includes: (a) “obtaining context
information relating to the message . . . which context information is
relatable to the user information”; (b) “producing personalized information
for the user of the user device based on the user information and the context
information”; and (c) “transmitting the personalized information to the user
device over the communications network.” Abstract.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. An apparatus for providing personalized information to a
user of a user device connected to a communications network,
the apparatus comprising at least one processor and at least one
memory including computer program code, the at least one
memory and the computer program code being configured to,
with the at least one processor, cause the apparatus at least to
perform:
identifying a user of a user device connected to the
communications network;
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed August 12, 2013; “Final Act.” for the Final Office
Action, mailed January 11, 2016; “App. Br.” for the Appeal Brief, filed
September 21, 2016; “Ans.” for the Examiner’s Answer, mailed January 12,
2017; and “Reply Br.” for the Reply Brief, filed March 13, 2017.
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Application 13/964,168
obtaining user information relevant to the identified user
of the user device;
receiving a message, over the communications network,
from the user device, wherein the message includes at least one
of a request for a resource identified by a uniform resource
locator (URL) and location information of the user device; and
responsive to receipt of the message, performing an
information personalization process, the information
personalization process comprising:
obtaining context information for at least one of
the request for the resource identified by the URL
received from the user device and the location
information of the user device, wherein the context
information is obtained by at least one of performing a
lookup of the URL in a uniform resource locator
categorization database and obtaining a location category
from a land map database based on the location
information, wherein the context information is at least
one of a category for the resource provided by the
database and the location category;
using the context information to obtain, from the
user information, login information for a server that is
relevant to the context information;
using the login information to communicate with
the server to obtain personalized information for the user;
and
transmitting the personalized information to the
user device over the communications network.
App. Br. 16 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
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Application 13/964,168
Debaty et al.
(“Debaty”)
US 2003/0050964 Al Mar. 13, 2003
Madhavan et al.
(“Madhavan”)
US 2008/0086372 Al Apr. 10, 2008
Nadler et al.
(“Nadler”)
US 2009/0131080 Al May 21, 2009
Sahni et al.
(“Sahni”)
US 2010/0023506 Al Jan. 28, 2010
Hartin et al. US 8,234,575 B2 July 31, 2012
(“Hartin”)
The Rejections on Appeal
(filed Nov. 30, 2007)
Claims 1, 7, 9, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Debaty, Madhavan, and Salmi. Final Act. 2—5.
Claims 2, 3, 10, 11, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Debaty, Madhavan, Salmi, and Hartin. Final
Act. 5—7.
Claims 4, 5, 8, 12, 13, 16, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Debaty, Madhavan, Sahni, and Nadler. Final
Act. 7-9.
ANALYSIS
We have reviewed the rejections of claims 1—5, 7—13, and 15—20 in
light of Appellants’ arguments that the Examiner erred. For the reasons
explained below, we disagree with Appellants’ assertions regarding
Examiner error. We adopt the Examiner’s findings and reasoning in the
Final Office Action (Final Act. 2—9) and Answer (Ans. 2—6). We add the
following to address and emphasize specific findings and arguments.
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The § 103(a) Rejection of Claims 1, 7, 9, 15, and 17
“Using the Context Information”
Appellants argue that the Examiner erred in rejecting independent
claims 1, 9, and 17 because “the combination of Sahni and Madhavan” fails
to teach or suggest “using the context information to obtain, from the user
information, login information for a server that is relevant to the context
information,” as recited in each claim. App. Br. 7—9; see Reply Br. 3^4.
More specifically, Appellants assert that “in Sahni, the login information is
only obtained periodically while the harvesting logic is obtaining relevant
tags,” and “[tjhere is simply no usage of ‘context information’ to obtain
login information for the server that is relevant to the context information, as
in Claim 1.” App. Br. 8; see Reply Br. 3—A. Appellants contend that “the
combination of the disclosures of Madhavan and Sahni. . . would only
disclose ‘obtaining login information from user information’ and ‘using
context information to find additional personalized information for the user.”
App. Br. 8-9.
Appellants’ arguments do not persuade us of Examiner error because
the Examiner finds that Madhavan teaches: (1) “providing personalized
information from a server based on context information”; and (2) using
context information, e.g., page-category information, “to obtain personalized
information that is relevant to the context information,” e.g., “to retrieve
advertisements and other content that match the category.” Final Act. 5;
Ans. 2—3 (citing Madhavan || 47—53); see Final Act. 4 (citing Madhavan
14). More specifically, Madhavan discloses a “system and method to
facilitate display of advertising information contextually related to web
pages requested” by a user device. Madhavan 14; see Final Act. 4. When a
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user device requests a web page, the system accesses a database containing
various tables, e.g., page-category tables and user tables with user
information. Madhavan || 46-49; see id. ]Hf 28, 31, 39-41; Final Act. 4.
The system uses the web page’s URL to retrieve from the database a page
category associated with the web page. Madhavan || 48 49; see id. 1132,
40-41; Final Act. 4. An advertising server uses the page-category
information and URL to retrieve personalized-advertising information.
Madhavan || 51—52; see id. ]Hf 42-43; Final Act. 4. The personalized-
advertising information is transmitted over a network to the user device
based on user information, e.g., the user device’s network address.
Madhavan | 53; see id. 144, Figs. 4—5; Final Act. 5. Thus, Madhavan
teaches using context information, e.g., page-category information, and user
information together to obtain from a server information relevant to the
context information, e.g., personalized-advertising information.
Further, the Examiner finds that Sahni teaches that user information
may include login information for accessing (communicating with) various
websites and obtaining further user information. See Final Act. 4—5 (citing
Sahni || 29, 33, 63); Ans. 3 (citing Sahni || 29, 63). More specifically,
Sahni discloses a user profile with “user account information” for “online
content providers,” e.g., websites, that includes a “login name for each
content provider that identifies the user to the content provider” and “may
include passwords.” Sahni 129; see Final Act. 4. If a website requires login
information, the appropriate login information is retrieved from the user’s
profile and supplied to the website. Sahni || 29, 63; see Final Act. 4—5.
After completing the login procedure, further user information is retrieved
from the website. Sahni | 63; see Final Act. 5.
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“[T]he test for combining references is not what the individual
references themselves suggest but rather what the combination of disclosures
taken as a whole would suggest to one of ordinary skill in the art.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see In re Keller, 642 F.2d
413, 425 (CCPA 1981); see also Ans. 2. Here, the combination of
disclosures in Madhavan and Sahni taken as a whole teaches or suggests
“using the context information to obtain, from the user information, login
information for a server that is relevant to the context information.” See,
e.g., Final Act. 4—5; Ans. 2—3; see also Madhavan || 4, 47—53; Sahni || 29,
33,63.
Appellants argue that “[a]t best, the Examiner asserts that both
Madhavan and Sahni disclose servers, but Claim 1 ’s feature of ‘a server that
is relevant to the context information’ is simply ignored.” Reply Br. 4
(emphasis omitted). We disagree. In Madhavan, the requested web page’s
URL and associated page-category information are supplied to an
advertising server that uses the page-category information and URL to
retrieve personalized-advertising information. Madhavan || 48-49, 51—52;
see id. ]Hf 32, 40-43; Final Act. 4. Hence, Madhavan discloses “a server that
is relevant to the context information.” See Spec. Tflf 24—25, 37—38.
“Obtaining Context Information”
Appellants argue that the Examiner erred in rejecting independent
claims 1, 9, and 17 because the following limitation in each claim “can[not]
be said to be found in the cited references”:
obtaining context information for at least one of the request for
the resource identified by the URL received from the user
device and the location information of the user device, wherein
the context information is obtained by at least one of
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performing a lookup of the URL in a uniform resource locator
categorization database and obtaining a location category from
a land map database based on the location information, wherein
the context information is at least one of a category for the
resource provided by the database and the location category.
App. Br. 11—12. In particular, Appellants argue that: (1) “the Examiner . . .
asserts that Debaty discloses ‘producing personalized information for the
user of the user device based on the user information’”; (2) “the claims do
not recite ‘producing personalized information for the user of the user device
based on the user information’”; and (3) “the Examiner’s interpretation . . .
changes the scope of the claims.” App. Br. 11.
Appellants’ arguments do not persuade us of Examiner error because
the Examiner relies on Madhavan, not Debaty, for the “obtaining context
information” limitation in claims 1, 9, and 17. Final Act. 4; Ans. 5—6. The
Examiner explains that the “statement that Debaty teaches ‘producing
personalized information for the user of the user device based on the user
information’ was to inform the Appellants that Debaty does teach the
concept of information personalization, despite its approach lacking some of
the details recited in the claim.” Ans. 5.
Motivation to Modify
Appellants assert that the Examiner erred in rejecting independent
claims 1, 9, and 17 because “there is no reason to modify Madhavan with
Sahni” and the modification would “defeat the purpose of Madhavan and
render Madhavan inoperable.” App. Br. 10; Reply Br. 4. In particular,
Appellants contend that: (1) “there is no server in Madhavan which would
even require a login in order to access the advertising] content within the
server”; and (2) “a person of skill in the art” would not “look to add login
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procedures” to Madhavan “because the advertising storage module of
Madhavan is not accessing private user content that would require a login.”
App. Br. 10; see Reply Br. 5—6. In addition, Appellants contend that
Madhavan’s system “processes requests in real-time” and “requires real-time
analysis and results.” App. Br. 10; Reply Br. 5. Based on that contention,
Appellants assert that “login procedures to access advertising] content
would significantly slow the processing of user requests” in Madhavan and
result “in the system becoming unsuitable for the real-time provision of
advertising content.” App. Br. 10; see Reply Br. 5, 7.
Appellants’ arguments do not persuade us of Examiner error because
the Examiner does not propose modifying Madhavan’s advertising server to
“require a login in order to access the ad[vertising] content.” See Final
Act. 5 (discussing access to content providers, e.g., websites). The
Examiner explains that Appellants “hypothetically constructed” the
modification that allegedly defeats Madhavan’s purpose and renders
Madhavan inoperable. Ans. 4.
Moreover, Madhavan discloses several embodiments and uses the
term “real-time” to describe how some embodiments operate but not others.
See, e.g., Madhavan || 4—5, 23, 39-44, 46—53, Figs. 4—5. Contrary to
Appellants’ contention, Madhavan does not require real-time processing.
See id. Also, Sahni discloses websites that require login information and
comprise multiple web pages, such as Facebook. See, e.g., Sahni || 5, 7, 29;
see also Ans. 4. After a user logs into such a website, Madhavan’s system
could provide personalized-advertising information in real-time without
delay as the user navigates from web page to web page within the website.
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Consequently, the Examiner’s proposed modification does not defeat
Madhavan’s purpose or render Madhavan inoperable.
Further, the Examiner finds that combining Madhavan and Sahni
“would have resulted in a system that retrieves not only the advertisements
matching the category of the user-requested web page, but also other user-
related content... by logging into the user accounts of various
websites/online services.” Ans. 4. The Examiner explains that the system
could “log into these accounts automatically, without asking the user for
login information,” and advantageously “provid[e] the personalized content
in a more prompt manner, by automatically retrieving the account
information and logging into the content providers ... to access user-related
content,” thus “enhanc[ing] user convenience.” Ans. 4—5; see Final Act. 5.
Accordingly, the Examiner provides articulated reasoning with a
rational underpinning for why a person of ordinary skill in the art at the time
of invention would have combined Sahni and Madhavan, including
identifying advantages achieved with the combination. Ans. 4—5; see Final
Act. 5; see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]he law
does not require that the references be combined for the reasons
contemplated by the inventor.” In re Beattie, 91A F.2d 1309, 1312 (Fed. Cir.
1992). “[A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining”
references. KSRIntI Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
Appellants contend that the interface components in Madhavan’s
system “will have security measures to prevent unauthorized users from
accessing” the system. Reply Br. 6. Appellants then contend that “a person
of ordinary skill would not” add a login feature to Madhavan’s system
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because the interface components already prevent unauthorized access. Id.
Appellants’ contentions constitute attorney argument. Attorney argument
“cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Also, the Examiner relies on Sahni for automatically
retrieving login information from a user’s profile when required by a
website, not for adding a login feature to a website lacking it. See Ans. 4—5
(citing websites such as Flickr).
Summary for Independent Claims 1,9, and 17
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claims 1, 9, and 17 for
obviousness based on Debaty, Madhavan, and Sahni. Hence, we sustain the
§ 103(a) rejection of claims 1,9, and 17.
Dependent Claims 7 and 15
Claim 7 depends from claim 1, and claim 15 depends from claim 9.
Appellants do not argue patentability separately for dependent claims 7
and 15. App. Br. 13—14; Reply Br. 8; see In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (explaining that the applicable rules “require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”). Because Appellants do not argue the claims
separately, we sustain the § 103(a) rejection of these dependent claims for
the same reasons as the related independent claims. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The § 103(a) Rejections of Claims 2—5, 8, 10—13, 16, and 18—20
Claims 2—5 and 8 depend directly or indirectly from claim 1; claims
10-13 and 16 depend directly or indirectly from claim 9; and claims 18—20
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depend directly or indirectly from claim 17. Appellants do not argue
patentability separately for these dependent claims. App. Br. 12—15; Reply
Br. 8; see Lovin, 652 F.3d at 1357. Because Appellants do not argue the
claims separately, we sustain the § 103(a) rejections of these dependent
claims for the same reasons as the related independent claims. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 1—5, 7—13, and
15-20.
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. §41.50(f).
AFFIRMED
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