Ex Parte 8041699 et al

Patent Trial and Appeal Board

Dec 22, 2014

95002348 (P.T.A.B. Dec. 22, 2014)

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.
95/002,348 09/14/2012 8041699 21SRL-699reex 3231
74642 7590 12/22/2014
CLIFFORD H. KRAFT
320 ROBIN HILL DR.
NAPERVILLE, IL 60540
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/22/2014 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
____________
EBAY INC. AND GSI COMMERCE SOLUTIONS, INC.
Requester and Respondent

v.

21 SRL
Patent Owner and Appellant
____________________

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Technology Center 3900

____________

Before MARC S. HOFF, DENISE M. POTHIER, and ANDREW J.
DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
This proceeding arose from a request by eBay Inc and GSI Commerce
Solutions, Inc. (“Requester”) for an inter partes reexamination of United
States Patent No. 8,041,699 B2, entitled “PROCESS OF DYNAMIC
TAXONOMY FOR BROWSING AND RETRIEVING INFORMATION IN
LARGE HETEROGENEOUS DATA BASES” (issued to Giovanni Sacco
on October 18, 2011 from Application No. 12/829,249, filed July 1, 2010
(“the ‘699 Patent”)). We have jurisdiction under 35 U.S.C. § 315 (2002).
The ‘699 Patent describes the invention as follows:
A process is disclosed for retrieving information in large
heterogeneous data bases, wherein information retrieval
through visual querying/browsing is supported by dynamic
taxonomies; the process providing the steps of: initially
showing (Fl) a complete taxonomy for the retrieval; refining
(F2) the retrieval through a selection of subsets of interest,
where the refining is performed by selecting concepts in the
taxonomy and combining them through boolean operations;
showing (F3) a reduced taxonomy for the selected set; and
further refining (F4) the retrieval through an iterative execution
of the refining and showing steps.

Abstract.
Patent Owner, 21 SRL (“Owner”) appeals under 35 U.S.C. §§ 134(b)
and 315(a) from the Examiner’s decision to reject claims 9–11, 18, 21, 23,
24, 28, 29, 44, and 45 over the prior art. See PO App. Br.1
1

1
Throughout this opinion, we refer to (1) the Request for Inter Partes
Reexamination filed September 14, 2012 (“Request”); (2) the Action
Closing Prosecution filed July 12, 2013 (“ACP”); (3) the Patent Owner
Appeal Brief filed December 16, 2013 (“PO App. Br.”); and, (4) the
Examiner’s Answer mailed April 23, 2014 (“Answer”).
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We review the appealed rejections for error based upon the issues
identified by Owner, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential)(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).

We affirm.
THE INDEPENDENT CLAIMS

Independent claim 9 is illustrative of the claimed invention:

Claim 9. A method for retrieving information from databases, said
databases being structured or unstructured, said databases being
homogeneous or heterogeneous, wherein retrieval is performed
through visual queries on dynamic taxonomies, said dynamic
taxonomies being an organization of concepts that ranges from a most
general concept to a most specific concept, said concepts and their
generalization or specialization relationships may be being called an
intension, items in said databases being classified under one or more
concepts, said items and their classification being called an extension,
said method comprising, given an initial current subset of interest:
using a computer for providing a taxonomy for the current subset of
interest;

using the computer for refining the current subset of interest of said
reduced taxonomy with the combination of one or more taxonomy
concepts through Boolean operations; and

using the computer for iteratively repeating said steps of providing a
reduced taxonomy for the current subset of interest to further refine
said retrieval and of refining the current subset of interest, wherein:

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said initial subset of interest includes all the items in the extension of
the dynamic taxonomy or a subset of them;

said reduced taxonomy being derived from said taxonomy by using
the computer for pruning concepts under which no item in said current
subset of interest is classified;

said step of pruning concepts includes eliminating from the taxonomy
all the concepts under which no item in the current subset of interest is
classified, or preventing said concepts from being displayed, or
preventing said concepts from being selected in order to refine interest
sets;

said step of providing a reduced taxonomy either reports only the
concepts belonging to the reduced taxonomy or, for each such concept
also reports how many items in the current interest set are classified
under the concept;

said intension is organized as a hierarchy of concepts or as a directed
acyclic graph of concepts, thereby allowing a concept to have multiple
fathers;

in said extension, there exists at least one item such that said item is
classified under at least two different concepts such that each of said
two concepts is neither an ancestor nor a descendant of the other
concept in the intension.

THE REJECTIONS

Lewak and Barrett

1. Claims 9-11, 21, 23, 24, 28, 29, 44, and 45 are rejected under 35
U.S.C. §102(a) or alternately under 35 U.S.C. §102(b) as
anticipated by Lewak (United States Patent No. 5,544,360, issued
August 6, 1996).
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2. Claim 18 is rejected under 35 U.S.C. §103(a) as unpatentable over
Lewak and Barrett (United States Patent No. 5,727,129, issued
March 10, 1998).
3. Claims 9-11, 21, 23, 24, 28, 29, 44, and 45 are rejected under 35
U.S.C. §103(a) as unpatentable over Lewak.

Danish and Barrett

4. Claims 9-11, 21, 23, 24, 28, 29, 44, and 45 are rejected under 35
U.S.C. §102(a) or alternately under 35 U.S.C. §102(b) as
anticipated by Danish (United States Patent No. 5,715,444, issued
February 3, 1998).
5. Claims 18 and 21 are rejected under 35 U.S.C. §103(a) as
unpatentable over Danish and Barrett.
6. Claims 9-11, 21, 23, 24, 28, 29, 44, and 45 are rejected under 35
U.S.C. §103(a) as unpatentable over Danish.

Hearst, Maki, and Barrett

7. Claims 9-11, 21, 23, 24, 28, 29, 44, and 45 are rejected under 35
U.S.C. §103(a) as unpatentable over M. A. Hearst et al, Cat-a-
Cone: An Interactive Interface for Specifying Searches and
Viewing Retrieval Results using a Large Category Hierarchy,
Annual International ACM-SIGIR Conference on Research and
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Development Hierarchy in Information Retrieval, ACM, 1997, pp.
246-255 (“Hearst”) and Maki, (United States Patent No. 5,201,047,
issued April 6, 1993).
8. Claim 18 is rejected under 35 U.S.C. §103(a) as unpatentable over
Hearst, Maki and Barrett.

Claims 9-11, 21, 23, 24, 28, 29, 44, and 45
With respect to the rejection of claims 9-11, 21, 23, 24, 28, 29, 44,
and 45, under both §102 and §103 over Lewak, Owner only argues features
set forth within claim 9 and does not provide substantive arguments for
separate patentability for any other claim within this group. PO App. Br.
10–15. Accordingly, we will decide the appeal of these claims on the basis
of claim 9 alone. See 37 C.F.R. § 41.67(c)(1)(vii).
In response to the rejections under both §102 and §103 over Lewak,
Owner argues that Lewak fails to disclose a “dynamic taxonomy,” noting
that the preamble of claim 9 recites "said dynamic taxonomies being an
organization of concepts that ranges from a most general concept to a most
specific concept, ... said concepts and their generalization or specialization
relationships may be being called an intension." Consequently, Owner
believes that the alleged lack of disclosure of a “dynamic taxonomy” is
sufficient for “defeating the rejection under 35 U.S.C. §102.” PO App. Br.
11.
Owner further argues that Lewak teaches a category description table
“containing a plurality of category descriptions, each category description
comprising a descriptive name, the category descriptions having no
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predefined hierarchical relationship with such list or each other[] (Lewak,
quoting from claim 1, 16:63-6).” PO App. Br. 11. Owner believes that this
recitation constitutes a teaching away from the use of hierarchical
relationships, which Owner believes are a prerequisite for taxonomy. Id. at
11-12.
Owner also argues that the physical directories and hybrid folders in
Lewak are not a dynamic taxonomy or concepts, in response to Requester’s
proposed construction which relies on Figure 2 of Lewak, and column 2,
lines 30-45 to show a dynamic taxonomy. As further evidence that Figure 2
does not depict a dynamic taxonomy, Owner argues that the structure
depicted in Figure 2 of Lewak is not visible to the user, contrary to the claim
9 requirement that “retrieval is performed by visual queries on dynamic
taxonomies.” Id. at 13-14.
The Examiner finds that while “dynamic taxonomies” are
defined within the ‘699 Patent, “dynamic taxonomy” is defined in the
preamble of claim 9 as "an organization of concepts that ranges from
a most general concept to a most specific concept, said concepts and
their generalization or specialization relationships may be being sic)
called an intension." Ans. 4.
The Examiner finds that claim 9 refers repeatedly to
“taxonomies” and believes the broadest reasonable interpretation of
“taxonomy” should not be limited to “dynamic taxonomy.” However,
even if Owner’s arguments regarding the necessity of “hierarchical
relationships” is accurate, the Examiner points out that Lewak
includes hierarchical categories, illustrating multi-level categorization,
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which are arranged in a multi-level hierarchical structure. Id. at 4-5(
citing Lewak 9:56–10:9).
In response to Owner’s arguments that Lewak fails to disclose a
taxonomy which may be visually searched, the Examiner cites Lewak
at column 12, lines 21-25, which describes “graying out” categories
which were not selected. Id. at 5.
Finally, the Examiner responds to Owner’s argument that
physical directories and hybrid folders are not “concepts” in the sense
of the ‘699 patent by finding that the broadest reasonable
interpretation of “concept” encompasses Lewak’s teaching of
category descriptions and multi-level categorization of concepts. Id.
We find that dynamic taxonomies are, in accordance with the
definition contained within the preamble of claim 9, merely
organizations of concepts which include both general and specific
concepts. Further, we find that, although Lewak may claim an
implementation that excludes predefined hierarchical relationships,
Lewak’s disclosure contains examples of hierarchical relationships, as
noted by the Examiner in the above discussion.
It is well settled that "[T]he prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternative because such disclosure does not criticize, discredit, or otherwise
discourage the solution claimed . . ." In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
As for whether or not the physical directories and hybrid folders of
Lewak constitute “concepts” in “the ‘699 sense,” we agree with the
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Examiner. We find the term “concept” to be quite broadly recited and further
find that any ordinary and reasonable definition of that term will encompass
the directories and folders of Lewak.
We further determine that Lewak shows or suggests the invention set
forth within claim 9 within the bounds of 35 U.S.C. §103 and we are
convinced that the Examiner did not err in rejecting that claim. We adopt the
Examiner’s findings and conclusions concerning this obviousness rejection.
Ans. 2 (citing the Right of Appeal mailed September 20, 2013, which further
incorporates the ACP); ACP 22–44 (discussing Lewak), 93 (incorporating
November 15, 2012 Order 5–6 (citing Request, Ex. CC-A and CC-D)). In
the absence of any substantive arguments for separate patentability with
respect to claims 10, 11, 21, 23, 24, 28, 29, 44, and 45, we find no error in
the Examiner’s position.
With respect to claim 18, Owner argues that Lewak and Barrett fail to
show or suggest:
accounting for the popularity of items by representing a
measure of popularity through a branch in the taxonomy,
wherein said measure of popularity for an item is derived
from the number of predefined actions, being including access
or purchase, applied to said item, or is supplied by an external
source, being including user or editorial reviews.

Owner argues that Barrett fails to disclose “a taxonomy, much less a
dynamic taxonomy” and thus cannot be said to show or suggest “accounting
for the popularity of items by representing a measure of popularity through a
branch in the taxonomy.” Owner also argues that the concept of
“popularity” set forth in Barrett only pertains to an individual’s website visit
history, thereby considering a user in isolation from other users, as opposed
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to the “popularity” of claim 18, which may rely on other users. PO App. Br.
15-16.
The Examiner finds that Owner’s arguments are based upon an unduly
narrow interpretation of “taxonomy” and also notes that there is no language
within claim 18 that requires multiple users. Barrett teaches tracking user
visits and under a broad, but reasonable interpretation of “popularity” the
Examiner finds that Barrett discloses measuring popularity.
We concur with the Examiner and find that the Examiner did not err
in rejecting claim 18 under 35 U.S.C. §103 as unpatentable over the
combination of Lewak and Barrett. Ans. 2
We affirmed the rejection of claims 9-11, 21, 23, 24, 28, 29, 44, and
45 under 35 U.S.C. §103(a) as unpatentable over Lewak and claim 18 under
35 U.S.C. §103(a) as unpatentable over Lewak and Barrett. Consequently,
we find it unnecessary to reach a decision regarding the cumulative
rejections of the claims: under 35 U.S.C. §102 over Lewak or Danish; ,
under 35 U.S.C. §103(a) as unpatentable over Hearst and Maki; under 35
U.S.C. §103(a) as unpatentable over Danish and/or Barrett; and, under 35
U.S.C. §103(a) as unpatentable over Hearst, Maki, and Barrett. See 37
C.F.R. § 41.50(a)(1) ("The affirmance of the rejection of a claim on any of
the grounds specified constitutes a general affirmance of the decision of the
examiner on that claim . . . .").
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DECISION
The Examiner’s decision adverse to the patentability of claims 9-11,
18, 21, 23, 24, 28, 29, 44, and 45 is affirmed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).

AFFIRMED

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Patent Owner:

CLIFFORD H. KRAFT
320 ROBIN HllL DR.
NAPERVILLE, IL 60540

Third Party Requester:

SCHWEGMAN LUNDBERG & WOESSNER! REEXAMS
P.O. BOX 2938
MINNEAPOLIS, MN 55402