Ex Parte Moroney

Patent Trial and Appeal Board

Mar 30, 2016

12815034 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/815,034 06/14/2010
22879 7590 04/01/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Nathan Moroney
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.
82262396 1544
EXAMINER
SPOONER, LAMONT M
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN MORONEY
Appeal2014-006550
Application 12/815,034
Technology Center 2600
Before ROBERT E. NAPPI, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-11, 13-16, and 18-20, which constitute all of the claims pending in
this application. Claims 12 and 17 have been cancelled. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Hewlett-Packard Development Company, LP
("HPDC") as the real party in interest. HPDC is a wholly-owned affiliate of
Hewlett-Packard Company. The general or managing partner of HPDC is
HPQ Holdings, LLC. App. Br. 2.
Appeal2014-006550
Application 12/815,034
THE INVENTION
The claimed invention is directed to a method and system for lexical
navigation of items including the generation of a top-level lexical cloud
wherein the size of the keywords is proportional to the frequency the
keywords appear in a data structure. Following the selection of a keyword, a
lower-level lexical cloud is generated based on removing items not
associated with the selected keyword. Spec. i-fi-f 14, 16, 17.
Claims 1 and 13, reproduced below with the disputed claim language
emphasized, are illustrative of the claimed subject matter:
1. A system for lexical navigation of a corpus of items,
compnsmg:
a processor; and
a memory, wherein the memory compnses code
configured to direct the processor to:
generate a data structure comprising:
a plurality of items;
a plurality of keywords, wherein a portion of the
plurality of keyivords for the data structure
are based at least in part upon a
measurement from a sensor; and
a frequency that each of the plurality of keywords is
associated with each of the plurality of items;
generate a top-level lexical cloud, comprising a subset of
the plurality of keywords, wherein each keyword in the top-level
lexical cloud has an associates[ sic] size that is proportional to the
keywords frequency of appearance in the data structure; and
generate a lower-level lexical cloud, wherein the lower
level lexical cloud is generated from a temporary data structure
created by removing any items not associated with a selected
keyword from the top-level lexical cloud.
13. A method for lexical navigation of a corpus of items,
compnsmg:
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Application 12/815,034
generating a data structure in a non-transitory, computer
readable medium, comprising:
a plurality of items;
a plurality of keywords, wherein at least a portion
of the plurality of keywords for the data
structure are generated from aesthetic
descriptions provided during physical
examination of the items; and
a frequency that each of the plurality of keywords is
associated with each of the plurality of items;
and
generating a top-level lexical cloud, wherein the top-level
lexical cloud comprises a subset of the plurality of keywords, and
wherein each keyword in the subset is proportional in size to an
overall frequency of occurrence of the keyword in the data
structure; and
generating a plurality of lower-level lexical clouds,
wherein each lower-level lexical cloud is generated by:
eliminating any one of the plurality of items not
associated with a particular one of the
plurality of keywords from the data structure;
and
generating the lower level lexical cloud as a second
subset of the plurality of keywords that
remain in the data structure, wherein each
keyword in the second subset is proportional
in size to an overall frequency of occurrence
of the keyword in the data structure.
THE REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Singh US 2009/0144240 Al June 4, 2009
Majko US 2009/0182727 Al July 16, 2009
Hubert US 2010/0131899 Al May 27, 2010
Assadollahi US 8,374,846 B2 Feb. 12,2013
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Application 12/815,034
THE REJECTIONS
Claims 1-11, 13, 14, 16, and 18-20 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Hubert in view of Majko and
Assadollahi. Final Act. 5-17.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hubert in view of Majko, Assadollahi, and Singh. Final
Act. 17-18.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellant. We disagree
with Appellant's arguments regarding the pending claims.
Claims 1-11
The Examiner finds the combination of Hubert, Majko and
Assadollahi teach or suggest all of the limitations recited in independent
claim 1. Final Act. 5-9; Ans. 3-11. More specifically, the Examiner finds
Hubert and Majko teach all of the limitations relating to the claimed data
structure and generating the lexical clouds except for the use of keywords
"based at least in part upon a measurement from a sensor" as recited 1. Id.
Appellant does not argue the Examiner erred in the findings regarding
Hubert and Majko relating to claim 1. See App. Br. 9-11. Instead,
Appellant's only argument focuses on how the keywords were generated and
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Application 12/815,034
argues that none of the cited prior art teach using keywords "based at least in
part upon a measurement from a sensor" as recited 1. App. Br. 8.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
found unpatentable based on the prior art. In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting
that when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms ofpatentability); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any
new and unobvious functional relationship between the printed matter and
the substrate.'") (citations omitted); see also Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential) ("[T]he nature of the information
being manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process."); Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative), aff'd, 191 Fed. App'x 959 (Fed. Cir.
2006) ("[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art."); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff'd, (Fed.
Cir. 2006-1003) (June 12, 2006) ("Nonfunctional descriptive material cannot
render nonobvious an invention that would have otherwise been obvious.").
Although we do not disregard any claim limitations and assess the claimed
invention as a whole, we follow the Federal Circuit's guidance from Gulack
and do not give patentable weight to printed matter absent a new and
unobvious functional relationship between the printed matter and the
substrate. Gulack, 703 F.2d at 1385.
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"The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter." In re
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if
it is "claimed for what it communicates." Id., at 849. Because the keywords
of claim 1 are being claimed for what they communicate about the items, we
find them to be printed material.
If a claim in a patent application claims printed material, "one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is 'no' is the printed
matter owed no patentable weight." Distefano, 808 F.3d at 851. In this
case, we find that the use of keywords as opposed to any other type of
description does not change or affect any machine function. Although the
keywords will be the basis for the lexical clouds, the type of data does not
functionally change either how the processor generates the top-level lexical
cloud or a lower-level lexical cloud. Thus the keywords are merely non-
functional descriptive material and the disputed limitation, which just further
defines an attribute of the keyword, does not define over the prior art.
This is analogous to Curry, where we found the type of data to be
nonfunctional descriptive material when it "does not functionally change
either the data storage system or communication system used in the method
of claim 81." 84 USPQ2d at 1274 (BPAI 2005).
As we recognized in Curry, "if the prior art suggests storing a song on
a disk, merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art at the time
the invention was made." Id. at 1275. Choosing the type of data to use in a
lexical-cloud is no different.
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Application 12/815,034
Concluding otherwise would result not only in Appellant's specific
use of keywords distinguishing over the prior art, but equally would
distinguish every other unique type of data used to create multi-level lexical
clouds. To give effect to Appellant's argument, we would need to ignore
our reviewing court's concerns with repeated patenting. See King Pharm.
Inc. v. Eon Labs., Inc., 616 F.3d at 1279 ("The rationale behind this line of
cases is preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations."); cf Ngai, 367
F.3d at 1339 ("If we were to adopt Ngai's position, anyone could continue
patenting a product indefinitely provided that they add a new instruction
sheet to the product."). We decline to do so.
For the foregoing reasons, we do not give any patentable weight to the
keywords, including how the keywords are generated. Accordingly, we are
not persuaded by Appellant's argument that the Examiner erred in finding
claim 1 obvious over the cited prior art.
Even if we did give patentable weight to the use of keywords, we
would still sustain the Examiner's rejection. In an obviousness analysis,
"the scope and content of the prior art are to be determined; differences
between the prior art and the claims at issue are to be ascertained; and the
level of ordinary skill in the pertinent art resolved." Grahm v. John Deere
Co., 383 U.S. 1, 17 (1966). "Against this background, the obviousness or
nonobviousness of the subject matter is determined." Id.
In this case, the only issue raised by Appellant is whether it would
have been obvious to modify the process for creating multi-level lexical
clouds as taught by Hubert and Majko so that it is used with some keywords
that are based on sensor measurements as opposed to some other source.
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We find such a modification of an old process using a new source of data to
be obvious. In KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007), the Supreme Court held that "if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill." 550 U.S. at
417. "The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results." Id.
at 416; see also id. at 417 ("If a person of ordinary skill in the art can
implement a predictable variation, and would see the benefit of doing so,
§ 103 likely bars its patentability."); In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) ("It is well settled that the recitation of a new intended use
for an old product does not make a claim to that old product patentable."
(citations omitted)). We do not find that the evidence shows using keywords
based in part on sensor measurements is any different than using keywords
based upon any other criteria, and as such would have been "uniquely
challenging or difficult for one of ordinary skill in the art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).2 Accordingly, we do not consider Appellant's
argument to sufficiently demonstrate the Examiner's rejection is in error.
2 We note that claim 1 merely requires the use of keywords that "are based at
least in part upon a measurement from a sensor. App. Br. 16. The system of
claim 1 does not generate any keywords, let alone keywords based on a
measurement from a sensor. Id.
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For the reasons discussed above, we sustain the Examiner's rejection
of claim 1, along with the rejection of dependent claims 2-11, which are not
argued separately.
Claims 13-17 and 18-20
Like claim 1, Appellant's argument regarding independent claims 13
and 18 focus on keywords. The only substantial difference is that instead of
at least some of the keywords being based on readings from a sensor, in
claims 13 and 18 at least some of the keywords are "are generated from
aesthetic descriptions provided during physical examination of the items."
See App. Br. 18, 19. For the same reasons discussed above for claim 1, we
find keywords in claims 13 and 18 to be non-functional descriptive material
and sustain the Examiner's rejection.
Even if we gave patentable weight to the use of keywords, we would
still sustain the Examiner's rejection. Appellant argues Hubert-which
"relates in part to tags used to classify content such as electronically
published information"---does not teach generating keywords "during a
physical examination." App. Br. 12. According to Appellant, because the
tags in Hubert are based on electronically published information and not an
examination of physical, tactile objects, Hubert does not teach the disputed
claim limitation.
The Examiner concludes, and we agree, Appellant's argument is not
commensurate with the scope of the claims. Ans. 13-14. The claims do not
require any tactile based keywords. Id. Nor do the claims require the
presence of a physical item. Id. Because the arguments are not
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commensurate with the scope of the claims, they are unpersuasive. Jn re
Self, 671F.2d1344, 1348 (CCPA 1982).
Instead, the Examiner finds, and we agree, Hubert teaches a physical
examination of the items to generate tags/keywords. Final Act. 13 (citing
Hubert i-fi-15, 20-21); Ans. 11-14. Accordingly, we sustain the Examiner's
rejection of claims 13 and 18, along with the rejection of dependent claims
14, 16, 17, 19 and 20, which are not argued separately.
With respect to dependent claim 15, Appellant merely contends that
because the additional reference used in the rejection of that claim (Singh)
does not cure the deficiencies in claim 13, the Examiner failed to make a
prima facie case of obviousness for that claim. App. Br. 14. Because we
determine there are no deficiencies associated with claim 13 for the reasons
discussed above, we sustain the rejection of claim 15.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-11, 13-16, and 18-20.
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).
AFFIRMED
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