Ex Parte Gardner

Patent Trial and Appeal Board

Jan 28, 2019

13706071 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/706,071 12/05/2012 Mark Joseph Gardner
150601 7590 01/30/2019
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl720US1/EBAY.281030 9143
EXAMINER
PEACH, POLINA G
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK JOSEPH GARDNER
Appeal2018-006755
Application 13/706,071
Technology Center 2100
Before PHILLIP J. KAUFFMAN, JENNIFER S. BISK, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-3, 5, 7-10, 12, 14--17, 19, 21, and 23-26.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 This Decision uses the following abbreviations: "Spec." for the
Specification, filed December 5, 2012; "Final Act." for the Final Office
Action, mailed August 11, 2017; "App. Br." for the Appeal Brief, filed
January 11, 2018; "Ans." for the Examiner's Answer, mailed April 20, 2018;
and "Reply Br." for the Reply Brief, filed June 20, 2018.
2 Appellant identifies the real party in interest as eBay Inc. App. Br. 3.
Appeal2018-006755
Application 13/706,071
BACKGROUND
Appellant's invention relates to generating a search results page that
allows a user to access a data item stored in an external system without
navigating away from the search results page. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
determining that a plurality of search result pages were
generated in response to a plurality of enterings of a
search term at a search engine by a plurality of users;
identifying that a portion of the plurality of users navigated
away from the search results pages to a web site of a
networked system that is external from the search engine,
the networked system facilitating transactions pertaining
to a plurality of items featured in a plurality of listings
posted on the networked system;
identifying an action that the portion of the plurality of users
typically performed with respect to the plurality of
listings at the web site after navigating away from the
search results pages to the web site;
identifying an additional entering of the search term by an
additional user at the search engine; and
based on the portion of the plurality of users transgressing a
predetermined threshold and the identifying of the action
that the portion of users typically performed at the web
site, generating an additional search results page in
response to the additional entering of the search term by
the additional user, the generating of the additional
search results page including embedding, using a
processor, a user interface in the additional search results
page, the user interface providing the additional user with
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an option to perform the action without navigating away
from the additional search results page.
App. Br. 14 (Claims Appendix).
THE REJECTIONS
1. Claims 1-3, 5, 8-10, 12, 15-17, 19, 21, and 23-25 stand rejected under
35 U.S.C. § I03(a) as being obvious over Govani (US 2010/0293178 Al,
published November 18, 2010) and Scofield (US 8,386,509 Bl, filed June
30, 2006). 3 Final Act. 3-12.
2. Claims 7, 14, and 26 stand rejected under 35 U.S.C. § I03(a) as being
obvious over Govani, Scofield, and Jain (US 2007 /0050251 A 1, published
March 1, 2007). 4 Final Act. 12-13.
3. Claims 1, 8, and 15 stand alternatively rejected under 35 U.S.C. § I03(a)
3 Although claims 4, 11, and 18 are listed as rejected in the Answer (Ans. 3),
Appeal Brief (App. Br. 6), and the Office Action (Final Act. 3), those claims
were canceled in an Amendment filed prior to the Rejection on appeal. See
Amendment filed July 6, 2017. Although claim 25 is not listed in the
heading of the rejection, it is addressed in the body of the rejection, and
Appellant recognized that claim 25 was rejected. Final Act. 3, 10-12; App.
Br. 6.
4 The Examiner lists Rejection 2 as including claim 25 (Final Act. 12, 13),
but the Examiner discusses the contents of claim 26 instead of claim 25 (id.
at 13). Appellant identifies Rejection 2 as including claim 26, rather than
claim 25. App. Br. 6. As such, we consider the reference to claim 25 rather
than claim 26 to be a typographical error. In addition, the Examiner did not
list Scofield as a cited reference in Rejection 2 (Final Act. 12); however, the
Examiner relied upon the combination of Govani and Scofield to reject
independent claims 1 and 8 and dependent claim 25, from which claims 7,
14, and 26 depend. Appellant identifies Rejection 2 as including the
Scofield reference. App. Br. 6. As such, we consider the lack of reference
to Scofield in the heading to be a typographical error as well.
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Application 13/706,071
as obvious over Scofield in view of Govani. Final Act. 13-17.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Claims 1-3, 5, 8-10, 12, 15-17, 19, 21, and 23-25
Appellant argues claims 1-3, 5, 8-10, 12, 15-17, 19, 21, and 23-25
together as a group. See App. Br. 7-10. Therefore, consistent with the
provisions of 37 C.F.R. § 4I.37(c)(l)(iv), we limit our discussion to
independent claim 1. Claims 2, 3, 5, 8-10, 12, 15-17, 19, 21, and 23-25
stand or fall with claim 1.
The Examiner rejects claim 1 over a combination of Govani and
Scofield. Final Act. 3-6. The Examiner relies on Govani as teaching most
of the limitations of claim 1. The Examiner relies on a combination of
Govani and Scofield as teaching "identifying an action that the portion of the
plurality of users typically performed with respect to the plurality of listings
at the web site after navigating away from the search results pages to the
web site" (referred to in this Decision as the "identifying an action
limitation"). And the Examiner relies solely on Scofield for teaching "based
on the portion of the plurality of users transgressing a predetermined
threshold" (referred to in this Decision as the "threshold limitation"). Final
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Act. 3---6. The Examiner also relies on Scofield for providing a motivation to
combine these features with Govani. Final Act. 6.
"identifying an action that the portion of the plurality of users typically
peiformed with respect to the plurality of listings at the web site after
navigating away from the search results pages to the web site" 5
Appellant argues that the references fail to teach or suggest
identifying an action that users performed on an external web site after
navigating to that web site from search results. App. Br. 7-11. For this
limitation, the rejection relies on a combination of Govani and Scofield.
Final Act. 4---6 ( citing Govani ,r 32 and Scofield col. 40, 11. 54---64 & Fig.
17B, item 1702). The cited paragraph of Govani states:
Targeted information 318 illustrates a customer service phone
number, which has been taken directly from the target search
result and saved to a database for future retrieval. In this
instance it has been previously determined that a customer
service number is what many users are searching for when
entering the query "amazon," and therefore it is subsequently
presented to users who enter the same query.
Govani ,r 32. According to the Examiner, Scofield teaches identifying an
action that users typically performed at an external website. Final Act. 6
5 Appellant also quotes another limitation of claim !-"identifying that a
portion of the plurality of users navigated away from the search results pages
to a web site of a networked system that is external from the search engine,
the networked system facilitating transactions pertaining to a plurality of
items featured in a plurality of listings posted on the networked system."
See, e.g., App. Br. 7. Appellant's arguments, however, are directed to the
identifying an action limitation. We find Appellant does not show error with
regard to this other limitation of claim 1.
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( citing Fig. 17B); see Scofield Fig. 17B ("People are leaving this source to
follow these paths: Content src D[;] Content src E.") (emphasis removed).
First, Appellant argues that Govani does not teach or suggest
identifying an action performed at an external website. App. Br. 7-8. In
particular, Appellant notes that Govani teaches the generation of search
results based on past user behavior and the creation of targeted information
to associate with those search results, but Appellant argues that Govani does
not indicate "how" it identifies that targeted information. App. Br. 7-9. The
Examiner explains that it would have been obvious to analyze users' past
behavior at the search web page and at the web site( s) associated with the
search results, using the disclosure of Scofield. Ans. 4---6. The Examiner
reasons that "common behavior at the external site has to come first and be
tracked" for Govani' s system to identify popular targeted information to
provide with search results. Ans. 5. Appellant replies that the claim
limitation is not obvious because Govani does not provide an express
disclosure to this effect and there are "a variety of other ways" to identify
the targeted information, for example "human knowledge" or "search results
clicked by users in the search results page." Reply Br. 3--4.
Appellant has not shown that the Examiner's proposed modifications
are beyond the level of skill of one of ordinary skill in the art, or that the
modifications are more than the use of known elements to yield predictable
results. The Appellant's recitation of two other, potential ways that Govani
could have identified targeted information does not demonstrate that the
claims are nonobvious. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421
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(2007) ( explaining that obviousness may be shown where there are a "finite
number of identified, predictable solutions").
Second, Appellant argues that Scofield fails to cure the deficiencies of
Govani because Scofield navigates between content sources, in contrast to
the claim where "the action can be done without navigating away from the
search results page." App. Br. 10 (emphasis removed). However, the
disputed claim language does not require "without navigating away"; rather,
this phrase is found in a different claim limitation that has not been
challenged on appeal. Accordingly, we are not persuaded by this argument.
See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review.").
Appellant does not persuade us of error in the Examiner's finding.
Govani improves search results using past user behavior, including actions
taken at both its search result page ( e.g., selecting a search result) and the
search result's external web site (e.g., how long a user stays on a webpage
associated with a search result). Govani ,r 26. Scofield tracks user request
traffic to determine the most popular destinations for users leaving a
particular content source. Scofield, col. 40, 11. 51-62; Fig. 17B. The
Examiner explained, and we agree, that it would be obvious to use past user
behavior at an external web site to improve the targeted information
provided with the search results of Govani. Thus, we agree with the
Examiner that a person of ordinary skill in the art would have found obvious
the identifying an action limitation based on the combined disclosures of
Govani and Scofield.
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"based on the portion of the plurality of users transgressing a
predetermined threshold"
Appellant contends that the references fail to teach or suggest the
threshold limitation. The Examiner found that Scofield uses thresholds to
evaluate user request traffic (e.g., to determine a popular content source).
Final Act. 6 (citing Scofield, col. 12, lines 13-21; col. 35, lines 61---65; col.
40, lines 52---60). The Examiner found that it would have been obvious to
modify Govani "to include a predetermined threshold of a plurality of other
users" because it "would help locate interest data for the most popular []
content sources." Final Act. 6.
Appellant argues that Govani fails to teach or suggest a threshold and
that Scofield does not use a threshold to provide "an action [] within a search
results page based on a number of users who performed an action at a
website after navigating to the website from [the] search results." App. Br.
11-12.
Appellant does not address the Examiner's rational to combine the
references to yield the threshold limitation. By arguing that neither Govani
nor Scofield alone teaches all aspects of the limitation at issue, Appellant
does not address the rejection as articulated, in which the Examiner relies on
certain combined teachings of the prior art. See Final Act. 6; see also In re
Keller, 642 F.2d 413,425 (CCPA 1981) ("[T]he test [for obviousness] is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art."). We determine that the Examiner's
reasoning supports a prima facie case of obviousness for claim 1. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Claims 7, 14, and 26
The Examiner rejects claims 7, 14, and 26 over a combination of
Govani, Scofield, and Jain. Final Act. 12-13. For each of these claims,
Appellant relies on the same arguments made with respect to claim 1. App.
Br. 12. These arguments however, are not persuasive for the reasons
discussed above. Consequently, we find Appellant's arguments do not show
error in the Examiner's factual findings and the conclusion of obviousness of
claims 7, 14, and 26.
Alternative Ground for Claims 1, 8, and 15
The Examiner alternatively rejects claims 1, 8, and 15 over a
combination of Scofield and Govani. Final Act. 13-17. For this Rejection,
Appellant simply references arguments made with respect to claim 1 in
Rejection 1. App. Br. 13. As discussed above, we find Appellant's
arguments do not show error in the Examiner's factual findings and the
conclusion of obviousness of claims 1, 8, and 15.
DECISION
We affirm the Examiner's decision to reject claims 1-3, 5, 7-10, 12,
14--17, 19, 21, and 23-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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