Ex Parte DROR et al

Patent Trial and Appeal Board

Jun 22, 2017

13709396 (P.T.A.B. Jun. 22, 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.
13/709,396 12/10/2012 Omer DROR TYKYP0031 5045
122066 7590
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
06/26/2017 EXAMINER
CAO, PHUONG THAO
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
pair@mb-ip.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OMER DROR and NIV MIZRAHI
Appeal 2017-003939
Application 13/709,396
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
rejection of claims 1—5, 7—13, and 15—17, which are all the claims remaining
in the application. Claims 6 and 14 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003939
Application 13/709,396
Invention
The disclosed and claimed invention on appeal relates to “a system
and methods for detecting demographic information respective of a user
over the web using information extracted from social networks.” Spec. 12.
Exemplary Claim
Claim 1, reproduced below, is exemplary of the subject matter on
appeal (emphasis added to contested limitation):
1. A system for detecting hidden demographic information
related to a user, comprising:
a network interface for accessing of one or more data sources;
a plurality of agents for collecting textual information from the
one or more data sources;
a processing unit;
a data warehouse; and
a memory coupled to the processing unit that contains therein
instructions that when executed by the processing unit configures
the system to:
analyze the collected textual information to detect phrases
in the textual information and separate between sentiment
phrases and non-sentiment phrases in the detected phrases;
extract, from the detected phrases, explicit demographic
information revealed by the user;
generate implicit demographic information related to the
user based on the non-sentiment phrases and on a frequency that
the non-sentiment phrases appear in the non-sentiment phrases
from which is extracted explicit demographic information; and,
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store the identified explicit and implicit demographic
information in the data warehouse.
(Emphasis added regarding contested “generate” limitation).
Rejections
Rl. Claims 1—5, 7—13, and 15—17 are rejected under pre-AIA
35 U.S.C. § 112, second paragraph, as being indefinite.
R2. Claims 1—5, 7—13, and 15—17 are rejected under pre-AI A
35 U.S.C. § 103(a) as being unpatentable over the combined teachings and
suggestions of Kadam et al. (US 2012/0136959 Al, publ. May 31, 2012)
(“Kadam”), Zhou et al. (US 2012/0110071 Al, publ. May 3, 2012)
(“Zhou”), and Nair (US 2011/0225048 Al, publ. Sept. 15, 2011).
Grouping of Claims
We address rejection Rl under §112, infra. Based on Appellants’
arguments (App. Br. 10-18), we decide the appeal of claims 1—5, 7—13, and
15—17, rejected under § 103(a) rejection R2, on the basis of representative
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented.
Rejection Rl of Claims 1—5, 7—13, and 15—17 under pre-AIA
35 U.S.C. §112, second Paragraph—Indefiniteness
Issue: Under pre-AIA 35 U.S.C. § 112, second paragraph, did the
Examiner err in concluding the claim language “a frequency that the non­
sentiment phrases appear in the non-sentiment phrases from which is
extracted explicit demographic information,” as recited in claim 1, is
indefinite? (App. Br., Claims App’x (Emphasis added)).
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Application 13/709,396
The Examiner concludes the subject limitation is unclear regarding
the frequency of “non-sentiment phrases” appearing in the same non­
sentiment phrases because such frequency of the same set of phrases is
“always equal to 1.” (Final Act. 5; Ans. 2—3).
We disagree with the Examiner. Whether a claim is indefinite is a
question of law. Credle v. Bond, 25 F.3d 1566, 1576 (Fed. Cir. 1994). The
Supreme Court’s interpretation of the second paragraph of 35 U.S.C. § 112
requires that the claims, viewed in light of the Specification and prosecution
history, must inform those skilled in the art about the scope of the invention
with reasonable certainty. Nautilus, Inc. v. Biosig, Instruments, Inc., 134 S.
Ct. 2120, 2129—30 (2014). Indefiniteness is to be evaluated from the
perspective of a person with ordinary skill in the relevant art at the time of
the invention — when the patent application was filed. Id. at 2128.
Here, we find an artisan of ordinary skill in the art would not have
understood the recited “frequency” of non-sentiment phrases to be limited to
one, as found by the Examiner. (See Final Act. 5; Ans. 2—3). When viewed
in light of the Specification (| 39), we find an artisan would have understood
the meaning of the claim term “a frequency” as the numerical occurrence of
non-sentiment phrases that appear in the non-sentiment phrases from which
explicit demographic information is extracted. (Claim 1; see also Spec.
139).
Therefore, we conclude the disputed claim language would have
informed those of ordinary skill in the art about the scope of the invention
with reasonable certainty under 35 U.S.C. § 112, second paragraph. See
Nautilus, 134 S. Ct. at 2129-30. Even under the lower threshold of
indefiniteness applicable to pending patent application claims (which may be
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amended during prosecution), we conclude the disputed claim language is
not indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
Accordingly, for essentially the same reasons argued by Appellants in
the Briefs (App. Br. 7—10; Reply Br. 2—5), as further discussed above, we
reverse the Examiner’s rejection R1 of claims 1—5, 7—13, and 15—17 under
§112, second paragraph.
Rejection R2 of Representative Claim 1 under § 103(a)
We find Appellants’ arguments regarding Rejection R2 unpersuasive
for the reasons discussed infra. We adopt as our own: (1) the findings and
legal conclusions regarding Rejection R2 set forth by the Examiner in the
Final Office Action (7—11) from which this appeal is taken, and (2) the
findings, legal conclusions, and explanations set forth in the Answer (3—11)
in response to Appellants’ arguments regarding Rejection R2.
We highlight and address specific findings and arguments for
emphasis in our analysis below.
Issues:
(1) Under 35 U.S.C. § 103, did the Examiner err by finding the cited
combination of Kadam, Zhou, and Nair would have taught or suggested the
contested limitation:
generate implicit demographic information related to the user
based on the non-sentiment phrases and on a frequency that the
non-sentiment phrases appear in the non-sentiment phrases from
which is extracted explicit demographic information[,]
within the meaning of representative claim l?1 (emphasis added).
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). See Spec. 144 (“All examples and conditional
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(2) Further, did the Examiner err in combining the cited references
under § 103?
Appellants contend, inter alia:
[T]he Examiner acknowledges that Kadam does not separate
between sentiment and non-sentiment phrases. Therefore,
without such a categorization, the name in Kadam cannot be
considered a non-sentiment phrase. Put another way, since
Kadam does not separate sentiment and non-sentiment phrases,
and Kadam does not define or make use of these terms in any
way, any separation or usage of phrases by Kadam must, by its
very nature, be for a different purpose and regardless of any
categorization of the phrase as sentiment or non-sentiment. Thus
any assertion of an assignment of any sentiment or non-sentiment
value in Kadam must be by way of a retrofit reading into Kadam
by the Examiner of something that is not actually taught or
suggested by Kadam.
In other words it is only by looking back with improper
hindsight from the teaching of Appellants' invention can the
Examiner even begin to consider to decide to assign the name
mentioned by Kadam as a non-sentiment phrase. Kadam itself
does not do so, nor does Kadam suggest to do so.
(App. Br. 12 (emphasis omitted)).
At the outset, we find Appellants are arguing the references
separately.* 2 The Examiner cites Zhou, not Kadam, for teaching separating
language recited herein are intended for pedagogical purposes to aid the
reader in understanding the principles of the invention and the concepts
contributed by the inventor to furthering the art, and are to be construed as
being without limitation to such specifically recited examples and
conditions”) (emphasis added).
2 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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between sentiment phrases and non-sentiment phrases in the detected phrase.
(Final Act. 9).
Regarding Appellants’ hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight. In KSR
Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the U.S. Supreme Court
guides that “[a] factfinder should be aware, of course, of the distortion
caused by h indsight bias and must be cautious of argument reliant upon ex
post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court
qualified the issue of hindsight by stating, “[rjigid preventative rales that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” Id.
In reviewing the record here, we find Appellants have not identified
any knowledge relied upon by the Examiner that was gleaned only from
Appellants’ disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
Moreover, Appellants have not provided persuasive evidence that
combining the respective teachings of the references (as proffered by the
Examiner — Final Act. 7—11) would have been “uniquely challenging or
difficult for one of ordinary skill in the art,” or that such a combination
would have “represented an unobvious step over the prior art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Nor have Appellants provided any objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
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check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, in light of the above discussion, and after reviewing the
respective teachings and suggestions of the references cited by the Examiner
(Final Act. 7—11), we find the Examiner provided sufficient articulated
reasoning with some rational underpinning to establish why an artisan would
have been motivated to combine the references. (Id.).
Appellants further argue:
a “name”, as used by the Examiner, is really just a first name,
and first names are not phrases at all, so it appears to be incorrect
to characterize the name as a nonsentiment phrase should such a
concept even exist in Kadam, which Appellants dispute, as noted
above.
(App. Br. 13).
We are not persuaded by Appellants’ arguments because Appellants
do not point to a definition in the Specification that would exclude first
names from non-sentiment phrases. Therefore, we agree with the
Examiner’s broad but reasonable interpretation that a non-sentiment phrase
encompasses first names? Furthermore, Appellants’ own Specification
teaches that single words, i.e., love, hate, beautiful, great, can be sentiment
phrases. (Spec. 124).
Appellants further contend the cited Kadam and Zhou references are
not properly combined, based on “teaching away.” (App. Br. 13—14):
3 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007).
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But, in direct contrast to the claimed invention, which requires
separating sentiment phrases and non-sentiment phrases, Zhou
does not even teach or suggest separating between sentiment
words and non-sentiment words in the messages. In fact, Zhou
does not suggest any analysis or separation process to extract the
“non-sentiment” words. Thus, Zhou fails to teach the claimed
feature of separating between sentiment phrases and non­
sentiment phrases in the detected phrases.
(App. Br. 14 (emphasis omitted)).
However, we are not persuaded by Appellants’ arguments because we
find Zhou’s sentiment analysis of keywords indicative of particular topics
(i.e., sports, shopping, assessing the degree of sentiment associated with a
particular topic), teaches, or at least suggests, separating between sentiment
and non-sentiment phrases.4 (Zhou 1 50). We agree with the Examiner’s
findings (Final Act. 9), because we find Zhou’s sentiment analysis
invariably teaches, or at least suggests, separating sentiment phrases from
non-sentiment phrases while searching for keywords. (Zhou 150).
Accordingly, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred in combining the cited
references. We, therefore, sustain the Examiner’s rejection R2 of
representative independent claim 1, and rejection R2 of grouped claims 2—5,
7—13, and 15—17 (not separately argued), which fall therewith. See
Grouping of Claims, supra.
4 “[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F. 2d 804, 807—808 (Fed. Cir. 1989) (emphasis
added).
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DECISION
We reverse the Examiner’s decision rejecting claims 1—5, 7—13, and
15—17 under pre-AIA 35U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision rejecting claims 1—5, 7—13, and
15—17 under pre-AIA 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See
37 C.F.R. § 41.50(a)(1).
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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