Ex Parte Stefik et al

Patent Trial and Appeal Board

Jan 27, 2017

11495426 (P.T.A.B. Jan. 27, 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.
11/495,426 07/28/2006 Mark J. Stefik PARC-20060126-US-NP 3117
35699 7590
PVF - PARC
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 FIFTH STREET
DAVIS, CA 95618-7759
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/31/2017 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):
sy_incoming @parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK J. STEFIK, STUART K. CARD, ED H. CHI,
LICHAN HONG, and BARBARA STEFIK
Appeal 2015-001222
Application 11/495,4261
Technology Center 3600
Before MICHAEL W. KIM, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—7, 9—19, and 21—31. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Palo Alto
Research Center Incorporated. Appeal Br. 2.
Appeal 2015-001222
Application 11/495,426
ILLUSTRATIVE CLAIM
1. A method for creating and using context-aware guides
comprising:
displaying, by a computer, a visible content portion from
a corpus in a reading pane to a user;
deriving user interest information from the visible content
portion;
determining a set of index items from the corpus;
determining a set of guide elements for the corpus that
correspond to information items from a content portion that
includes the visible content portion;
comparing an index item from the corpus to the user
interest information to determine an item of interest based on a
degree of semantic overlap with the user interest information,
wherein the item of interest corresponds to a guide element from
the set of guide elements;
displaying the item of interest with an indicator indicating
that the item of interest is interesting; and
displaying the set of guide elements in a guide pane.
REJECTIONS
I. Claims 1—7, 9-19, and 21—31 are rejected under 35 U.S.C.
§ 101 as ineligible subject matter.2
II. Claims 1—7, 9-19, and 21—29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sotomayor (US 5,708,825, iss. Jan. 13, 1998)
and Krause et al. (US 6,154,757, iss. Nov. 28, 2000) (“Krause”).
III. Claims 30 and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sotomayor, Krause, and Gifford et al. (US 2007/0118526
Al, pub. May 24, 2007).
2 The rejection under 35 U.S.C. § 101 was introduced in the Answer as a
new ground of rejection. Answer 2—6.
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FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 2—11 and the Answer at pages 6—8, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
Rejection Under 35 U.S.C. §101
The Appellants contend that the Examiner erred in rejecting claims 1—
7, 9-19, and 21—31 under 35 U.S.C. § 101 as ineligible subject matter,
because the claimed subject matter is not directed to an abstract idea and —
notwithstanding any such determination to the contrary — the claimed
subject matter is nevertheless patent-eligible because it improves an existing
technological process. Reply Br. 7—8.
According to the Examiner, under the first step of the analytical
approach of Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347, 2355 (2014), claim 1 recites “a method of organizing human
activities,” which “includes an abstract idea.” Answer 4. Under Alice’s
second step, the Examiner determines that claim 1 does not amount to
significantly more that the excluded abstract idea because the claim
“requires] no more than a generic computer to perform generic computer
functions” and the claimed features are “well-understood, routine and
conventional activities previously known in the industry.” Id. at 5.
In response, the Appellants argue:
The claimed invention includes subject matter that is concrete,
because the claimed invention includes a computer that displays
a document corpus in a reading pane for a user, and also improves
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the user’s reading experience by using the guide pane to display
relevant guide content that may be of interest to the user.
Reply Br. 7. In addition, the Appellants argue that, notwithstanding the
dispute over whether the claims are directed to an abstract idea, the claimed
invention is patent eligible because it “improves how readers read a
document corpus.” Id. at 8.
The Appellants’ argument is persuasive. Although the Examiner finds
that claim 1 amounts to “a method of organizing human activities”
(Answer 4), the Examiner does not identity what “human activities” are
purportedly being “organized” by claim 1. Moreover, the Examiner’s
finding that the steps of claim 1 must be performed by a computer
(Answer 5 (the claimed steps “requir[e] no more than a generic computer to
perform generic computer functions”)) is at odds with the determination that
claim 1 is “a method of organizing human activities” {id. at 4 (emphasis
added)). Further, the Examiner’s statement that “claim 1 includes an
abstract idea” (id. (emphasis added)) injects uncertainty as to “whether the
claims at issue are directed to [a] patent-ineligible concept^ ],” per Alice’s
framework. Alice, 134 S. Ct. at 2355 (emphasis added). After all, “[a]t
some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.’” Id. at 2354 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94
(2012)). Therefore, the Examiner has not established sufficiently that the
claimed subject matter is directed to an abstract idea in accord with Alice.
Accordingly, the rejection of independent claim 1 (as well as its
dependent claims 2—7, 9-19, 21—27, and 30) under 35 U.S.C. § 101 is not
sustained. For the same or similar reasons, the rejection of independent
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claims 28 and 29 (and dependent claim 31) under 35 U.S.C. § 101 is also not
sustained.
Rejections Under 35 U.S.C. § 103(a)
Independent claims 1, 28, and 29 are argued as a group. Appeal Br.
22—30. Claim 1 is selected for analysis herein. See 37 C.F.R.
§41.37(c)(l)(iv).
The Appellants present two reasons for Examiner error in the rejection
of claim 1.
First, the Appellants contend (Appeal Br. 23—28) that neither
Sotomayor nor Krause discloses features of the following limitation:
comparing an index item from the corpus to the user
interest information to determine an item of interest based on a
degree of semantic overlap with the user interest information.
Specifically, the Appellants argue that the cited references do not teach the
claimed “index item,” “user interest information,” and “comparing . . . based
on a degree of semantic overlap.”
Second, the Appellants contend that the proposed combination of
Sotomayor and Krause would improperly change Krause’s principle of
operation. Id. at 29-30.
As explained below, with regard to each of these two reasons, the
Appellants’ arguments are unpersuasive. Accordingly, the rejection of
claims 1, 28, and 29 — and of their dependent claims 2—7, 9-19, 21—27, 30,
and 31, no separate arguments being presented on their behalf— under 35
U.S.C. § 103(a) is sustained.
1. The References Teach the Claimed Features
The Examiner finds that Krause teaches the identified claim features
identified above. Final Action 3; see a Iso Answer 6—8. Alternatively, the
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Examiner finds that Sotomayor teaches the feature of “comparing . . . based
on a degree of semantic overlap.” Answer 8.
The Appellants argue that Krause compares a document to words in a
wordlist and that a wordlist does not constitute the claimed “index item.”
Appeal Br. 25—26.
Further, the Appellants argue that Krause’s wordlist is defined by the
author of the document and, thus, Krause’s technology does not employ the
claimed “user interest information.” Id. at 26; see also Reply Br. 9.
In addition, the Appellants argue that Krause compares words literally
— i.e., based solely on how they are spelled — rather than “based on a
degree of semantic overlap.” Appeal Br. 26—27; see also Reply Br. 9—10.
Thus, Krause’s system may yield irrelevant search results — such as results
concerning the “bark” of a tree, even where the meaning of what is being
sought is the “bark” of a dog. Appeal Br. 27.
With regard to Sotomayor, the Appellants acknowledge that
Sotomayor performs a semantic analysis of text to identity key topics and
compiles the key topics into summary pages with various types of indexes,
but the Appellants argue that Sotomayor does not perform a semantic
analysis on the generated index and, therefore, Sotomayor does not teach the
claimed “comparing an index item from the corpus to the user interest
information to determine an item of interest based on a degree of semantic
overlap with the user interest information.” Appeal Br. 24; see also Reply
Br. 11-12.
The Appellants’ arguments are unpersuasive.
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As to Krause, the Appellants have not shown error in the Examiner’s
findings that Krause teaches the claimed “index item” or “user interest
information.”
Although the Appellants contend that Krause’s wordlist cannot be the
claimed “index item,” the Examiner has pointed to disclosure in Krause
showing that the wordlist can be generated from the text. Final Action 3
(citing Krause, col. 7,11. 25—29). This conforms to the Specification, which
explains that “index items” may include entities, topics, themes, and topics
extracted from the corpus. Spec. 123.
The Appellants assert that Krause requires a wordlist created by the
author, such that Krause lacks the claimed “user interest information.” See
Appeal Br. 26; Reply Br. 9. Yet, the Examiner finds that Krause’s user
selects the text for processing, in relation to what the user is currently
looking at. Answer 7 (citing Krause, col. 27,11. 41—61). The identified
disclosure of Krause conforms to the “user interest information” described in
the Appellants’ Specification, which states that “user interest information is
determined by analyzing the document in the reading pane.” Spec. 122; see
also Spec. 127.
As to the claimed “comparing . . . based on a degree of semantic
overlap,” the Examiner finds that Krause’s matching words of interest in a
text to words of interest in an index is “based on a degree of semantic
overlap,” noting that the Specification identifies single words as semantic
units. Answer 6, 7—8 (citing Spec. 55, 56). Yet, even though the
Specification may regard a single word as a semantic unit, the mere
matching of textually identical words does not amount to comparing their
respective meanings, as required by the claimed “comparing . . . based on a
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degree of semantic overlap.” See Appeal Br. 21, 26-27. Therefore, the
Appellants persuasively argue that the Examiner erred in finding that Krause
teaches the claimed “based on a degree of semantic overlap.”
However, the Appellants’ argument regarding the Examiner’s
alternative position — i.e., that Sotomayor teaches making determinations
“based on a degree of semantic overlap” — is not persuasive. Sotomayor
(col. 3,11. 47^48) recognizes that “some words having identical spelling
have quite different meanings” — the very problem that the Appellants
contend to be a critical defect of the Krause reference (see Appeal Br. 26—
27; see also Reply Br. 9-10). Sotomayor (col. 3,11. 43—50) solves this
conundrum through its use of semantic analysis technology. The Appellants
argue that Sotomayor must be limited to using semantic analysis to create an
index, which is a particular application of the semantic analysis technology
described in the reference itself. Reply Br. 11—12. Yet, a reference is
evaluated for what it fairly teaches one of ordinary skill in the art — not only
what it characterizes as its invention or the exact problem that it addresses.
In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (citing In re Boe, 355
F.2d 961, 965 (1966)). After all, “familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). A person
of ordinary skill in the art would have appreciated that Sotomayor teaches a
technique for making a determination “based on a degree of semantic
overlap,” as claimed. Indeed, the Appellants concede that this is true:
“Appellant respectfully submits that a person of ordinary skill in the art
would understand that using semantics to determine interesting items for a
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user can produce more relevant results than mere searching and matching.”
Reply Br. 12
2. Principle of Operation
As to the Appellants’ second reason for Examiner error, the
Appellants contend that Krause searches for words that are in the document
author’s pre-defmed index (rather than the claimed “index items” that are
“determin[ed]” “from the corpus” and comparing them to the “user interest
information”), whereas Sotomayor discusses generating an index, such that
combining Sotomayor and Krause would improperly change Krause’s
principle of operation. Appeal Br. 29-30; see also Reply Br. 12.
The Examiner’s response is directed to the reliance upon Sotomayor
for a different claim limitation (“displaying, by a computer, a visible content
portion from a corpus in a reading pane to a user”) and points out that
Krause has no bearing on this limitation. Answer 8. In addition, the
Examiner states that “[wjhether the index is created by the user or by the
author is irrelevant” because “Krause merely references the index to
determine related information that is of interest to the user.” Id.
The response in the Examiner’s Answer does not address the same
issue that the Appellants raise, but the Appellants’ argument is unpersuasive,
nonetheless. The Appellants begin from the mistaken premise that Krause
does not teach the claimed “index item” and that the combination with
Sotomayor relies upon Sotomayor’s disclosure of generating an index. See
Reply Br. 12. As discussed above, the Appellants’ argument that Krause
fails to teach the “index item” is unpersuasive. In addition, the combination
of references does not involve an index created by Sotomayor. See Final
Action 3; see also Answer 8. As discussed above, the Examiner’s
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alternative combination relies upon Sotomayor’s semantic analysis
technology, but for the purpose of comparing the claimed “index item” to
the “user interest information” (both of which are taught by Krause).
Employing Sotomayor’s semantic analysis technology in place of Krause’s
word-matching technique replaces one information searching approach for
another, but does not violate Krause’s principle of operation.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—7, 9—19,
and 21-31 under 35 U.S.C. § 101.
We AFFIRM the Examiner’s decision rejecting claims 1—7, 9—19, and
21-31 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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