Korst, Jan et al.

Patent Trials and Appeals Board

Feb 4, 2021

2019005096 (P.T.A.B. Feb. 4, 2021)

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.
14/239,836 02/20/2014 Jan Korst 536-044.018 3909
4955 7590 02/04/2021
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET
MONROE, CT 06468
EXAMINER
NGUYEN, LOAN T
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
02/04/2021 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):
mail@warefressola.com
uspatents@warefressola.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN KORST, SERVERIUS PETRUS PAULUS PRONK,
MAURO BARBIERI, and RAMON CLOUT
Appeal 2019-005096
Application 14/239,836
Technology Center 2100
Before JASON V. MORGAN, JON M. JURGOVAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 8, and 9. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We Reverse.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Funke Digital TV
Guide GmbH. Appeal Br.3.
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Application 14/239,836

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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for generating a
sorted list of items. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An electronic device for automatic generation of a sorted list
of items from further items related to a seed item, the electronic
device comprising a query generator for generating multiple
queries to be sent to item repositories and that are based on the
seed item and for receiving results from the queries representing
a plurality of further items;
the electronic device further comprising a relatedness
determinator configured to compare the seed item with the
plurality of further items and to thus determine a relatedness
value for each further item with respect to the seed item, the
electronic device further comprising a clustering engine
configured to cluster the further items by assigning the plurality
of further items of each query to one respective cluster, and the
electronic device further comprising a list generator configured
to generate a sorted result list, wherein the list generator
comprises a cluster creditor and an item selector, wherein the
cluster creditor is configured to initially assign initial credits to
the clusters and wherein the cluster creditor is configured in
further iterative steps:
to update the credits by adding added credit to the clusters
while not amending the relatedness value of the items in the
clusters, and wherein the item selector is configured in each of
the further iterative steps:
to select an item that is to be added to the sorted list that
has the highest relatedness value in a cluster having the highest
credit, to add the selected item to the sorted list, and to remove
the selected item from the cluster it belonged to and wherein the
cluster creditor is configured in each of the further iterative steps:
to decrease the credit of the cluster from which the selected item
that was added to the sorted list was removed.
Appeal Br. 34 (Claims App.).
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Application 14/239,836

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sanders US 2004/0194141 A1 Sept. 30, 2004
Rose et al. US 2008/0154878 A1 June 26, 2008

REJECTIONS2
Claims 1, and 3–4 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 1, and 3–4 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 1, 3–4, and 8–9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Rose in view of Sanders.
OPINION
Claim Construction
The Examiner’s rejections under 35 U.S.C. §112 are premised on the
Examiner’s construing certain claims term as mean-plus-function
limitations. See Final Act. 9–10. Appellant contends that the limitations
should not be construed as mean-plus-function limitations. Appeal Br. 16.
Before we can address the issues of adequate written description and
indefiniteness, we need to resolve to resolve the issue of whether certain
claim limitations should be construed as means plus function limitations.

2 Claims 1, 3, 4, 8, and 9 were rejected under 35 U.S.C. §101 are directed to
patent ineligible subject matter. Final Act. 3. That rejection has been
withdrawn. Ans. 3.
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Application 14/239,836

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Construing a means-plus-function claim limitation is a two-step
process. First, the claim must be analyzed to determine whether the claim
language actually invokes the provisions of 35 U.S.C. § 112, sixth
paragraph. See Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360,
1364 (Fed. Cir. 2000) (“If a claim element contains the word ‘means’ and
recites a function, th[e] court presumes that element is a means-plus-function
element under § 112, ¶ 6 . . . . That presumption falls, however, if the claim
itself recites sufficient structure to perform the claimed function.”). The
second step is to “determine what structures have been disclosed in the
specification that correspond to the means for performing that function.”
Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir.
2000).
In the present case the claim terms at issue do not recited the word
means leading to the presumption that the terms should not be construed as
means-plus-function terms. The presumption that a claim limitation that
lacks the word “means” is not subject to 35 U.S.C. § 112, sixth paragraph, is
not a strong one and does not require any heightened evidentiary showing to
overcome. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed.
Cir. 2015). “The standard is whether the words of the claim are understood
by persons of ordinary skill in the art to have a sufficiently definite meaning
as the name for structure.” Id. at 1349.
The claims terms at issue are “a query generator for”, “a relatedness
determinator configured to”, “a clustering engine configured to”, “a list
generator configured to”, “a cluster creditor being configured”, and “a
relatedness based sorting means adapted to.” Final Act. 7. While these
terms are not phrased as means-plus-function limitations, they are terms
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which do not have a well understood meaning in the computer technology
field. They are generic descriptions of software of hardware that performs a
specific function. As such they do not connote sufficiently definite structure
and invoke interpretation as means-pus-function terms. Id. at 1350.
The Rejections Under 35 U.S.C. § 112
Having determined that the claim terms should be construed as
means-plus-function terms, we now turn to the rejections for lack of written
description and indefiniteness. The Examiner bases both rejections on the
alleged failure to disclose a structure in the Specification that corresponds to
each means-plus-function term. Final Act. 9–10; Ans. 4–6.
Appellant contends that the algorithm for each of the disputed claim
terms is described in the Specification. Appeal Br. 18. Appellant contends
that the disclosure of the algorithms satisfies the written description
requirement and renders the claims definite. Id. at 19–22.
We have considered the arguments advanced by the Examiner and
Appellant and conclude that Appellant has the better position.
For a computer-implemented 35 U.S.C. 112, sixth paragraph, claim
limitation, the Specification must disclose an algorithm for performing the
claimed specific computer function, or else the claim is indefinite under 35
U.S.C. 112, second paragraph. See Net MoneyIN, Inc. v. Verisign. Inc., 545
F.3d 1359, 1367 (Fed. Cir. 2008).
As Appellant points out, the Specification includes a discussion of the
algorithms for each of the challenged claim terms. For example, with
respect to a clustering generator the Specification teaches
A clustering step performed by a clustering engine that
clusters the further items (e.g. videos) Rtotal into a set of clusters
C1, C2, . . . , Ck such that each cluster contains similar items
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like, for instance, videos. For convenience, we assume that the
items in a cluster are given as a list of items ordered by
decreasing relatedness. In other words, the item with the highest
relatedness value in a cluster has the highest rank.

Spec. 8. The Specification also teaches:
For the clustering two possible embodiments are
considered. The first embodiment could simply take the
clustering that results from the different queries that were used.
In other words, if n queries q1, q2, . . . , qn are used and the
corresponding item sets are given by R(q1), R(q2), . . . , R(qn),
then we assume n clusters C1, C2, . . . , Cn where cluster Ci is
given by R(qi) and thus represents the results (items) from one
query. The assumption in this embodiment is that each query
gives a set of results (items) that are mutually similar but
dissimilar from items that are the results of other queries.
An alternative embodiment is obtained by first
combining all results of all queries to a single set of items and
then cluster these items based on mutual similarity. To measure
the mutual similarity of two items rik and rjl we can again use
the cosine similarity of the corresponding word vectors. Based
on this similarity, we can use one of numerous well-known
clustering approaches. One of these approaches is to start with
N clusters, where each cluster contains a unique single item.
Next, repeatedly the two most similar clusters are merged,
where similarity between two clusters can be defined by the
minimum or average similarity between its elements (i.e.,
results or items, respectively). The merging of clusters can be
repeated until a sensible number of clusters is obtained.

Id. at 10–11.
Given that the Specification recites the algorithm used for each of the
disputed claim terms and the Examiner has offered no explanation why the
disclosed algorithms are inadequate, we find that the written description
requirement has been met and that the claims are not indefinite.
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The Rejection under 35 U.S.C. § 103
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that the subject matter of
claims 1, 3–4, and 8–9 would have been obvious to one of ordinary skill in
the art at the time the invention was made over Rose combined with
Sanders.
The Examiner has rejected the pending claims as unpatentable under
35 U.S.C. § 103 as obvious over Rose combined with Sanders. Final Act.
11. The Examiner finds that Rose teaches an electronic device which
automatically generates a sorted list of items that are related to a seed item
comprising a relatedness generator that compares the seed item to a plurality
of further items and determines a relatedness value for each item with
respect to the seed item. Id. The Examiner finds that Rose teaches that the
device also comprises a clustering engine that clusters the further items into
clusters based on the relatedness of the further items to each other. Id.
The Examiner finds that Rose teaches that the device also comprises a
list generator that creates a sorted result list of items selected from the
clusters based on the relatedness value of the item. Id. at 12.
The Examiner finds that that Rose teaches that the list generators
include a cluster creditor that initially assigns credits to the clusters where
the credits are related to the relatedness scores of the items in each cluster/
Id. The Examiner finds that the cluster creditor updates the credits assigned
to a cluster as items are added to or removed from the clusters. Id. at 13–14.
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The Examiner finds that Rose does not teach a query generator for
generating multiple queries but finds that Sanders teaches this limitation. Id.
at 14–15.
The Examiner concludes
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the method and
system Rose to generate multiple queries to be sent to item
repositories and that are based on the seed item and to receive
results from the queries representing a plurality in order to
provide a recommendation list based on user profile data and a
generated search by incorporating the generation and issuance
of semantically different search queries that return respective
hit-lists of which are then combined to generate a single
recommendation list as taught by Sanders, thereby achieving a
higher momentary relatedness value depending ranking to the
top of the hit-list.

Id. at 15.
Appellant contends that neither Rose nor Sanders teaches a clustering
engine configured to cluster a plurality of further items by assigning the
items to one respective cluster. Appeal Br. 23–24. Appellant contends that
while Rose may teach clustering on a general level, Rose does not teach
issuing multiple queries. Id. at 25. Appellant also contends that Rose does
not teach assigning credits to the clusters. Id. at 26.
Appellant contends that Rose does not teach or suggest a relatedness
determinator that compares the seed item to a plurality of further items to
determine a relatedness value. Id. at 28.
Appellant contends that neither Rose nor Sanders teaches or suggests
that the cluster generator decreases the credit of the cluster when an item is
removed from the cluster. Id. at 27.
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Legal Principles
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“The factual predicates underlying an obviousness determination
include the scope and content of the prior art, the differences between the
prior art and the claimed invention, and the level of ordinary skill in the art.”
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
Analysis
We have considered the arguments presented by the Examiner and
Appellant as well as the evidence or record and conclude that a
preponderance of the evidence does not support the Examiner’s conclusion
that the subject matter of the rejected claims would have been obvious.
Claims 1 and 8 both include a limitation calling for decreasing the
credit of a cluster when an item is removed from the cluster. See Appeal Br.
34 and 36. (Claims App’x). We agree with Appellant that neither reference
teaches or suggests this limitation. Appeal Br. 27.
The Examiner contends that this limitation is taught in paragraph 18
of Rose. Final Act. 14. Alternatively the Examiner contends that the
discussion in Rose concerning comparison vectors teaches this limitation.
Ans. 7.
We do not find the Examiner’s argument persuasive. Paragraph 18 of
Rose reads:
Techniques are described hereafter for “diversifying”
search results by ranking the search results based, at least in
part, on a “diversifying factor.” As used herein, the term
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“diversifying factor” refers to any factor that alters the ranking
of a matching item, relative to other matching items, based on
how different the matching item is from other matching items.
In one embodiment, the diversifying factor is used to generate
diversity scores for the matching documents. Matching items
that are very different from other highly ranked matching items
are assigned high diversity scores, and have their rankings
improved based on their diversity scores. Conversely, matching
items that are very similar to other highly-ranked matching
items are assigned low diversity scores, and have their rankings
reduced based on their diversity scores.

Rose ¶ 18. A careful reading of this paragraph reveals that it relates to
ranking individual items and not clusters as required by the present claims.
With respect to the concept vector discussion in Rose at paragraphs 67
to 70, we agree with Appellant that this does not teach the assignment of
credits to clusters nor does it teach the concept of reducing a cluster’s credit
value when an item is removed from a cluster. Reply Br. 4–5. While the
recited passage discusses generating concept vectors for comparison groups,
we discern nothing in Rose that teaches removing a selected item from a
comparison group or does it teach reducing the concept vector when an item
is removed from a comparison group. See Rose ¶¶ 67–68.
Conclusion
Based on the foregoing we conclude that a preponderance of the
evidence does not support the Examiner’s finding that the subject matter of
claims 1, 3–4, and 8–9 would have been obvious to one of ordinary skill in
the art at the time the invention was made over Rose combined with
Sanders.
CONCLUSION
The Examiner’s rejections are reversed.
Appeal 2019-005096
Application 14/239,836

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More specifically,
The rejection of claims 1, and 3–4 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The rejection of claims 1, and 3–4 under 35 U.S.C. § 112, second
graph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention is reversed.
The rejection of claims 1, 3–4, and 8–9 under 35 U.S.C. § 103 as
being unpatentable over Rose in view of Sanders is reversed

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 3–4 112 ¶ 1 Written Description 1, 3–4
1, 3–4 112 ¶ 2 Indefiniteness 1, 3–4
1, 3–4, 8–9 103 Rose, Rose, Sanders 1, 3–4, 8–9
Overall
Outcome
1, 3–4, 8–9

REVERSED