Ex Parte Gao et al

Patent Trial and Appeal Board

Jun 8, 2017

12762423 (P.T.A.B. Jun. 8, 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.
12/762,423 04/19/2010 Bin Gao 329249.01 3470
69316 7590 06/12/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
PEACH, POLINA G
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
06/12/2017 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIN GAO and TIE-YAN LIU
Appeal 2016-008488
Application 12/762,423
Technology Center 2100
Before JOSEPH L. DIXON, MATTHEW J. McNEILL, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008488
Application 12/762,423
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—10 and 21—30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to an active prediction of diverse search intent
based upon user browsing behavior. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method comprising:
identifying a candidate query set for a particular web page,
the candidate query set comprising a plurality of different natural
language queries that were previously submitted to a search
engine by previous users after visiting the particular web page;
extracting query features of the different natural language
queries of the candidate query set;
ranking the different natural language queries of the
candidate query set based at least upon the extracted query
features;
selecting a diverse subset of natural language queries from
within the ranked natural language queries, the diverse subset of
natural language queries being associated with a diverse range of
topics within the particular web page and including at least a first
natural language query that was submitted by a first previous user
of the search engine after visiting the particular web page and a
second natural language query that was submitted by a second
previous user of the search engine after visiting the particular
web page; and
responsive to a current user accessing the particular web
page, presenting the diverse subset of natural language queries to
the current user, including presenting at least the first natural
language query that was submitted by the first previous user of
2
Appeal 2016-008488
Application 12/762,423
the search engine after visiting the particular web page and the
second natural language query that was submitted by the second
previous user of the search engine after visiting the particular
web page.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Roulland et al. US 2009/0106224 Al Apr. 23, 2009
Gabriel US 2010/0235338 Al Sept. 16,2010
Horling et al. US 7,827,170 B1 Nov. 2, 2010
Timm et al. US 2010/0306229 Al Dec. 2, 2010
Scofield et al. US 8,386,509 B1 Feb. 26, 2013
Sadikov et al. US 8,423,538 B1 Apr. 16, 2013
Haahr et al. US 8,583,675 B1 Nov. 12, 2013
REJECTIONS
The Examiner made the following rejections:
Claims 1—10 and 23 stand rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. The claim(s) contains subject matter which
was not described in the specification in such a way as to reasonably convey
to one skilled in the relevant art that the inventor or a joint inventor, or for
pre-AIA the inventor(s), at the time the application was filed, had possession
of the claimed invention.
Claims 1, 2, 6, and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Timm in view of Scofield and in further view of
Roulland.
3
Appeal 2016-008488
Application 12/762,423
Claims 3, 4 and, 9 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Timm as modified and in further view of Sadikov.
Claim 5 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Timm as modified and in further view of Gabriel.
Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Timm as modified and in further view of Haahr.
Claim 10 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Timm as modified (Timm, Scofield, and Roulland) and in
further view of Gabriel.
Claims 21 and 24 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Timm in view of Scofield and in further view of
Gabriel.
Claim 22 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Timm as modified (Timm, Scofield, and Gabriel) and in
further view of Harling.
Claim 23 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Timm as modified and in further view of Roulland et al.
Claims 25 and 26 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Timm as modified and in further view of Sadikov.
Claims 27—29 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Sadikov in view of Gabriel.
Claim 30 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Sadikov in view of Gabriel and in further view of Haahr.
4
Appeal 2016-008488
Application 12/762,423
ANALYSIS
35U.S.C. § 112, first paragraph
“[Compliance with the ‘written description’ requirement of § 112 is a
question of fact. . . Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991) (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989);
Utter v. Hiraga, 845 F.2d 993, 998 (Fed. Cir. 1988)). A written “description
must ‘clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.’” AriadPharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc) (quoting Vas-Cath, 935 F.2d
at 1563). “In other words, the test for sufficiency is whether the disclosure
of the application relied upon reasonably conveys to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date.” Id. (citing Vas-Cath, 935 F.2d at 1563).
In order to satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention
claimed.” Ariad Pharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010)(en banc). “[T]he test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date.” Id. (citations omitted). One shows possession “by such descriptive
means as words, structures, figures, diagrams, formulas, etc. that fully set
forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997).
With respect to independent claim 1, the Examiner finds:
5
Appeal 2016-008488
Application 12/762,423
In summary, the applicant is making an assumption that the
queries shown in paragraphs [0026]-[0027] are natural language
queries. However, it is still merely an assumption and not an
actual disclosure. Based on broadest interpretation, such queries
can also be assumed to be a prior user’s navigational links, or
category selections. Further, given lack of disclosure, it is also
reasonable to conclude that the query suggestions can be
machine generated queries based on previous user queries.
(Final Act. 3—4). The Examiner further finds:
It is respectfully noted that the main inventive concept of
the claims as a whole refers to something that is completely not
supported by the specification. While trying to overcome the
presented prior art, the Appellant arguments address differences
between the claims and references, while relying on the support
that is not present in the specification. The one of ordinary skill
in the art can make various reasonable assumption with respect
to a user making an inquiry about healthy food. It is also
arguable of what constitutes a natural language query - (i.e. a
query that the user can comprehend or a query the user is actually
written). If the query is generated by a machine in a human
readable form, does it constitutes as a natural language query? If
the user selects a link in a readable form of to submit an inquiry,
does it constitutes as a natural language query? Such questions
have to be answered in view of the specification and without
undue interpretations.
(Ans. 2-3).
Appellants contend that whether a query is generated by a machine or
a human does not change whether it is a “natural language query.” (Reply
Br. 2). We agree with Appellants.
Additionally, Appellants identify paragraph 35 of the Specification
and Fig. 4 to support Appellants’ position that Appellants had written
description support for the limitation.
6
Appeal 2016-008488
Application 12/762,423
We disagree with the Examiner and find that whether the natural
language query is generated by a human or a computer is not relevant to
whether it is a “natural language query.” While we agree with the Examiner
that the phrase “natural language” is not expressly found in the
Specification, the various originally filed figures clearly demonstrate
possession of “natural language queries.”
Furthermore, we find paragraph 21 of the Specification discloses “In
this way, a diverse subset of queries having diverse topics may be suggested
to users,” and paragraph 26 discloses “The dissimilarity measurement
feature may select ‘sports’, ‘travel’, and ‘health foods’ as a diverse subset of
queries because their respective topics cover a wide range of interests. This
allows for query suggestions to be presented to users having diverse
interests.”
Therefore, we cannot sustain the rejection of independent claim 1 and
dependent claims 2—10 and 23 based upon a lack of written description
support.
35U.S.C. § 103(a)
With respect to independent claims 1,21, and 27, Appellants
generally contend that three of the prior art references used in the
prosecution must find support in their provisional applications. (App. Br.
10). Because Appellants have not identified any specific deficiency in any
of the provisional applications, we find Appellants have waived this
argument. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
Appellants contend that the Timm reference does not disclose
deriving query suggestions from queries that users have submitted “after
7
Appeal 2016-008488
Application 12/762,423
visiting” a particular website. Therefore, “Timm does not teach or suggest at
least ‘responsive to a current user accessing the particular web page . . .
presenting at least the first natural language query that was submitted by the
first previous user of the search engine after visiting the particular web
page,’ as recited by independent claim 1.” (App. Br. 11—12).
The Examiner maintains that Figure 3 of the Timm reference:
clearly shows a subsequent query/queries were issued after
visiting (clicking) a URL
Such queries and corresponding clicked URLs are recorded and
stored in a log maintained by a search engine. However, not only
queries and URLs are recorder, but also a distinct paths and path
lengths are stored and analyzed as well - “graph 300 may
associate two or more query nodes along a path defined by any
number of intermediate URL nodes and by any number of
intermediate query nodes” ([0041]). For example a different
paths with different length can be determined from Query 1 to
URL 4 can be —
Query 1 => URL2 =>Query C => URL3 =>Query G =>URL4
Or it can be a short path Query 1 => URL4
(Ans. 4).
We disagree with the Examiner’s factual findings and conclusions.
From our review of Figure 3 of the Timm reference, we find no clear
teaching or suggestion of any temporal relationship relative to a specific
user’s input and visiting of websites, but merely there exists a relationship
between URLs and queries.
Moreover, paragraph 15 of the Timm reference clearly states “FIG. 3
is an exemplary bi-partite graph representative of data within a query-click
8
Appeal 2016-008488
Application 12/762,423
log of a search engine, according to disclosed embodiments.” From our
review of paragraphs 35—40, the click log is indicative of visiting URLs after
search queries submitted rather than the search queries submitted after
visiting the website.
We find the Examiner’s factual findings very limited and conclusory.
Additionally, we find the Examiner’s abbreviated conclusion to be
unsupported by corresponding underlying factual findings. The Examiner
concludes “[t]hus, it is reasonable to conclude that query C is a first natural
language query that was submitted by a previous user of the search engine
after visiting the intermediate URL 2, as required by claim 1.” (Ans. 5).
Whether it would have been obvious for a person of ordinary skill in
the art to combine two or more references is a flexible inquiry. A factfinder
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim” and “can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int 7 Co.
v. Teleflex. Inc., 550 U.S. 398, 418 (2007). Nevertheless, obviousness
cannot be established “by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)). And “references to ‘common sense’ . . . cannot be
used as a wholesale substitute for reasoned analysis and evidentiary
support.” Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1362 (Fed. Cir.
2016).
For a prima facie case of obviousness to be established, the reference
need not recognize the problem solved by the Appellant. See In re Kemps,
97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int.
9
Appeal 2016-008488
Application 12/762,423
1985) (“The fact that appellant has recognized another advantage which
would flow naturally from following the suggestion of the prior art cannot
be the basis for patentability when the differences would otherwise be
obvious.”). There is no requirement that the problem solved by the
secondary reference be discussed by the primary reference to apply the
teachings of the secondary reference in a rejection under 35 U.S.C. § 103.
The Supreme Court has held that in analyzing the obviousness of combining
elements, a court need not find specific teachings, but rather may consider
“the background knowledge possessed by a person having ordinary skill in
the art” and “the inferences and creative steps that a person of ordinary skill
in the art would employ.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417-18 (2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions,” and the basis for an obviousness rejection must include an
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Id.
Based on the foregoing, we find that the Examiner has not properly
established factual determinations and articulated reasoning with a rational
underpinning to support the legal conclusion of obviousness for independent
claim 1, resulting in a failure to establish a prima facie of obviousness. The
Examiner has not identified how the additional teachings of the Sadikov,
Haahr, and Gabriel references remedy the noted deficiency above for claims
3—5, 8, and 9. (Final Act. 8—12). As a result, we cannot sustain the
rejection of claims 1—5 and 7—9.
10
Appeal 2016-008488
Application 12/762,423
Dependent claim 6
Appellants present additional arguments, but we do not reach these
because the Examiner has not identified how the combination remedies the
deficiency noted above.
Claims 21—26
With respect to independent claim 21, Appellants generally contend
that the portions of the Timm reference relied upon by the Examiner in the
rejection are not supported by the ’991 provisional application which the
Timm reference relies upon for priority. The Examiner addresses the
support argument and provides reasonable factual finding and analysis.
(Ans. 6—7). We agree with the Examiner.
Appellants further present similar arguments advanced with respect to
independent claim 1 regarding the temporal limitation concerning “queries
users have submitted after visiting a particular web page.” (App. Br. 13—
15). The Examiner additionally adds the Gabriel reference to the
combination instead of the Roulland reference, but does not identify how the
Gabriel reference would remedy the noted temporal deficiency. As a result,
we cannot sustain the Examiner’s obviousness rejection of independent
claim 21, and its respective dependent claims 22—26, for the reasons
discussed with respect to independent claim 1.
Claims 27—29
With respect to claims 27—29, Appellants contend:
Sadikov at best seems to discuss probabilities that certain
queries lead to certain document selections, not that visiting
certain documents lead users to submit certain queries. Thus,
Sadikov does not teach or suggest at least “determine . . .
respective likelihoods that visiting a particular webpage
11
Appeal 2016-008488
Application 12/762,423
triggered different users to submit . . . different queries to the
search engine,” as recited by independent claim 27.
(App. Br. 16). Appellants further contend:
Sadikov discloses a method that includes building a graph
for a query with nodes representing the query, refinements of the
query, and documents accessed via the query and the query
refinements (Sadikov, abstract). Sadikov also discloses
providing query suggestions derived from the query refinements
to the user (Sadikov, col. 17, lines 37-41). However, Sadikov
provides the query suggestions in response to the user submitting
a query, not in response to the user accessing a particular
webpage that has triggered other users to submit the query. Thus,
Sadikov does not teach or suggest at least “select a subset . . .
including at least... a first query . . . that was submitted to the
search engine by a first user after visiting the particular web page,
and responsive to a third user visiting the particular web page,
suggest the first query ... to the third user,” as recited by
independent claim 27.
(App. Br. 17).
The Examiner finds:
The word “trigger” or “triggering” is given a plain
dictionary meaning - “cause (an event or situation) to happen or
exist”; or “something that causes something else to happen”.
Sadikov in the cited paragraphs teaches that after inspecting
results, by clicking on them, a user might issue another query
(C8L3-11). One of ordinary skill in the art might reasonably
conclude that un satisfaction [sic] with the received result caused
or triggered the user to submit another, more precise search.
Clearly, if the user were satisfied with the results, the subsequent
search would not be triggered (i.e. the lack of desired information
triggers the user to keep searching). The subsequent query is
clearly different (i.e. query “mars” is different from query “mars
venus”), as required by the claim 27.
Sadikov further teaches that association between queries
and webpages is made into a graph and probability is assigned to
12
Appeal 2016-008488
Application 12/762,423
the edges. Please note that the algorithm to make such
determination closely resembles an algorithm disclosed in the
Appellant’s own specification.
(Ans. 7—8). We disagree with the Examiner and find the Examiner has not
identified the algorithm in the Specification or the algorithm in the Sadikov
reference to support the specific finding.
The Examiner further maintains “[ijndeed, as was stated on the
record, Sadikov does not teach in response to the user accessing a particular
webpage that has triggered other users to submit the query. The reference of
Gabriel is used to teach such feature.” (Ans. 8). We disagree with the
Examiner and find that the Examiner did rely upon the Sadikov reference for
this limitation. (See Final Act. 18—20). The Examiner finds:
a first query that is associated with a first topic discussed
within the particular web page and that was submitted to the
search engine by a first user after visiting the particular web page
(C8L3-11, C9L5-18), and
a second query that is associated with a second topic
discussed within the particular web page (f see note below) and
that was submitted to the search engine by a second user after
visiting the particular web page (C8L3-11, C9L5-18, C18L1-11);
and
responsive to a third user visiting a search web page,
suggest the first query and the second query to the third user
(C17L59-63).
tNOTE Sadikov teaches storing in a search log popular
query reformulations performed by previous users after visiting
a particular website (C18L2-11). Thus, it is reasonable to
conclude that such popular refinements are associated with
information (aka topic) discussed within the particular web page.
It is also noted that algorithm disclosed by Sadikov which
determines subsequent queries is essentially the same to the
applicant’s own disclosure.
13
Appeal 2016-008488
Application 12/762,423
On the other hand, if such interpretation isn’t sufficient
and Sadikov does not explicitly teach a first and second queries
that are associated with a first a second topic discussed within
the particular web page, Gabriel discloses the same in paragraphs
[0085] “specific area/page where relevant content to a keyword
is kept and has been found before by other users”, [0090]-[0091]
“what keywords were searched for in the past on this site and
results that were returned. Thus, a community of users will
contribute to a centralized database which is based on the users’
own searches. By collecting data from many users”, [0130]
(“initiate a new search based on the results obtained”).
It would have been obvious to one of ordinary skill in the
art at the time of invention to modify the teachings of Sadikov to
include queries based on topics discussed within the particular
web page as disclosed by Gabriel. Doing so would allow many
such users to help other users in finding results that are relevant
to them (Gabriel [0091]).
(Final Act. 18—20). In the alternative, the Examiner relied upon the Gabriel
reference. (Final Act. 19). Furthermore, the Examiner generally addresses
Appellants’ argument and the Examiner does not address how the Gabriel
reference remedies the deficiency in the Sadikov reference in the Examiner’s
Answer. From our review of the relied upon portions of the Gabriel
reference, we find the Gabriel reference is additionally directed to previously
submitted queries and the associated webpages. Consequently, the Gabriel
reference does not clearly teach or suggest the claimed:
select a subset. . . including at least... a first query . . .
that was submitted to the search engine by a first user after
visiting the particular web page, and
responsive to a third user visiting the particular web page,
suggest the first query ... to the third user ....
(Reply Br. 9; claim 27). Accordingly, we agree with Appellants and cannot
sustain the rejection of independent claim 27.
14
Appeal 2016-008488
Application 12/762,423
With respect to dependent claims 28 and 29, Appellants and the
Examiner relied upon the same arguments as set forth with respect to
independent claim 27. Therefore, we cannot sustain the rejection of
dependent claims 28 and 29 for the same reasons discussed above.
Dependent claim 30
With respect to dependent claim 30, the Examiner relies upon the
same findings and additionally adds the Haahr reference, but does not
identify how the Haahr reference remedies the deficiency’s noted above with
respect to independent claim 27. Therefore, we cannot sustain the rejection
of dependent claim 30.
CONCLUSIONS
The Examiner erred in rejecting claims 1—10 and 23 based upon a lack
of written description. The Examiner erred in rejecting claims 1—10 and 21—
30 based upon obviousness.
DECISION
For the above reasons, we reverse the Examiner’s rejections of claims
1-10 and 21-30.
REVERSED
15