Ex Parte WegdamDownload PDFPatent Trial and Appeal BoardMay 9, 201311301425 (P.T.A.B. May. 9, 2013) Copy Citation 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. 11/301,425 12/13/2005 Maarten Wegdam Wegdam 2 (LCNT/127488) 8419 46363 7590 05/09/2013 WALL & TONG, LLP/ ALCATEL-LUCENT USA INC. 25 James Way Eatontown, NJ 07724 EXAMINER BETIT, JACOB F ART UNIT PAPER NUMBER 2158 MAIL DATE DELIVERY MODE 05/09/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MAARTEN WEGDAM ____________ Appeal 2010-011644 Application 11/301,425 Technology Center 2100 ____________ Before DEBRA K. STEPHENS, GEORGIANNA W. BRADEN, and MIRIAM L. QUINN, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appeal 2010-011644 Application 11/301,425 2 Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE According to Appellant, the invention relates to the fields of searching and networking, and, in particular, relates to improving location-based searches in location-based networks. Spec. 1, ll. 6-8. 1 The subject matter on appeal involves a location-based search engine that uses a ranking algorithm that combines clickthrough measurements with implicit user location, where the location is passed to the search, without requiring explicit user input of the location. Spec., Abstract. Details of the appealed subject matter are recited in illustrative independent claim 1, reproduced below from the Claims Appendix of the Appeal Brief:2 1. A method for providing location-based services, the method comprising: receiving, from a user device, a request for a location-based service, the request comprising a search query; determining the user’s location with a predetermined accuracy to maintain the user’s privacy; and 1 References to Appellant’s Specification (“Spec.”) are directed to the specification filed on December 13, 2005. 2 References to the Appeal Brief (“App. Br.”) are directed to Appellant’s Appeal Brief filed on April 19, 2010, and references to the Reply are directed to Appellant’s Reply Brief filed on August 20, 2010. Appeal 2010-011644 Application 11/301,425 3 providing the determined location without violating the user’s privacy together with the search query toward a search engine configured to combine clickthrough measurements and the implicit location of the user to determine and rank a plurality of location-based results of the request, wherein the plurality of location-based results comprise one or more results previously selected by other user devices submitting requests similar to the request received from the user device such that the previously selected results are ranked higher than remaining of the plurality of location-based results. As evidence of unpatentability of the claimed subject matter, the Examiner relies on the following reference at pages 3 to 10 of the Answer:3 Zellner US 6,738,808 B1 May 18, 2004 Ge US 2005/0065916 A1 Mar. 24, 2005 McDonnell US 6,799,032 B2 Sept. 28, 2004 The Examiner provides the following ground of rejection, of which Appellant seeks review: claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zellner, Ge, and McDonnell (Ans. 4-6). ISSUES Based on Appellant’s arguments, the dispositive issues on appeal are: 1) Whether the Examiner erred in rejecting independent claims 1, 8, and 16 under 35 U.S.C. § 103(a) because the combination of Zellner, Ge, and McDonnell fails to teach the following limitations (with disputed language, where applicable, in italics): 3 References to the Examiner’s Answer (“Ans.”) are directed to the Answer mailed on July 8, 2010. Appeal 2010-011644 Application 11/301,425 4 a) “providing the determined location without violating the user’s privacy together with the search query toward a search engine configured to combine clickthrough measurements and the implicit location of the user to determine and rank a plurality of location- based results of the request, wherein the plurality of location-based results comprise one or more results previously selected by other user devices submitting requests similar to the request received from the user device such that the previously selected results are ranked higher than remaining of the plurality of location-based results” (App. Br. 7-9, 11); and b) “determining the user’s location with a predetermined accuracy to maintain the user’s privacy” (App. Br. 11); and 2) Whether the Examiner improperly combined Zellner, Ge, and McDonnell (App. Br. 11-13). ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s contention. Further, we have reviewed the Examiner’s response to Appellant’s arguments. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following arguments for emphasis. Appeal 2010-011644 Application 11/301,425 5 Issue 1a Appellant contends that the cited references do not disclose or suggest “providing the determined location without violating the user’s privacy together with the search query toward a search engine,” a limitation that is recited in independent claims 1, 8, and 16. App. Br. 7-8. In particular, Appellant argues that the Examiner admits Zellner does not teach the limitation, but summarily finds that paragraphs 31-33, 36, and 38 in Ge does teach it. App. Br. 8-9. We are not persuaded that the Examiner erred. First, Appellant’s argument does not squarely address the grounds of rejection, which relies on a combination with McDonnell, not Ge, as teaching the disputed limitation. Ans. 5, 12-13. And we do not find error in the Examiner’s findings that McDonnell teaches the limitation “providing the determined location without violating the user’s privacy together,” as stated on pages 18 to 19 of the Answer. Moreover, we find the Examiner’s reliance on the cited paragraphs in Ge is not in error. Those paragraphs addressed other limitations in the claim, such as the following claim language: a search engine configured to combine clickthrough measurements and the implicit location of the user to determine and rank a plurality of location-based results of the request, wherein the plurality of location-based results comprise one or more results previously selected by other user devices submitting requests similar to the request received from the user device such that the previously selected results are ranked higher than remaining of the plurality of location-based results Ans. 4, 7, and 9. Appeal 2010-011644 Application 11/301,425 6 The subject matter described in Ge at paragraphs 31-33, 36, and 38 reasonably appraises Appellant of the claimed features found in the prior art, and the Examiner’s detailed explanation in the Answer provides an abundance of notice as to how Ge discloses the subject matter recited in Appellant’s claims. See Ans. 14-17. In particular, we note the extensive Examiner’s findings, with which we agree, in the Answer at pages 16 to 17 addressing Appellant’s argument that the Examiner did not give patentable weight to the claim language, “such that the previously selected results are ranked higher than remaining of the plurality of location-based results.” Accordingly, having considered all of Appellant’s arguments made in sections A.1.1 through A.1.3 of the Appellant’s Appeal Brief and corresponding arguments in the Reply Brief, we are not persuaded the Examiner erred.4 Issue 1b Appellant further contends that the cited art fails to disclose the limitation of “determining the user’s location with a predetermined accuracy to maintain the user’s privacy.” App. Br. 10-11. Appellant argues that the Examiner failed to consider the proper construction of the disputed claim language. App. Br. 10. Appellant urges that the Specification provides for a 4 As a point of clarification, the Board does not review allegations of the Examiner’s non-compliance with a requirement, such as that alleged by Appellant’s argument that the Examiner’s rejection did not comply with MPEP §§ 707.05, 707.05, and 37 C.F.R. § 1.104. App. Br. 8-9; Reply 5-7. The Examiner’s alleged non-compliance is petitionable matter. See 37 C.F.R. § 1.181. Petitionable issues are not subject to review by the Board. See In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002). Accordingly, we have no opinion concerning the matter. Appeal 2010-011644 Application 11/301,425 7 person of ordinary skill in the art to understand the disputed claim language to comprise “a city and a state.” App. Br. 10-11. We are not persuaded. The broadest reasonable interpretation consistent with the Specification of the claim language “determining the user’s location with a predetermined accuracy to maintain the user’s privacy” does not limit the scope of the claim to “a city and a state,” even if the Specification provides for that embodiment. We are instead in agreement with the Examiner’s findings and conclusions, at pages 18 to 20 of the Answer, addressing that the teachings in McDonnell disclose the disputed limitation and that the Specification does not define a predetermined accuracy to be either a city or a state, but that “rather[,] a general location with a predetermined accuracy is given instead of a specific location of the user” (Ans. 19). Accordingly, having considered all of Appellant’s arguments made in section A.1.4 of the Appellant’s Appeal Brief and corresponding arguments in the Reply Brief, we are not persuaded the Examiner erred. Issue 2 Appellant contends that Zellner, Ge, and McDonnell cannot be combined because the proposed combination would not yield predictable results (App. Br. 11-12) and because the Examiner used improper motivation to make the suggested combinations (App. Br. 13-14). We have considered all of Appellant’s arguments and are not persuaded that the Examiner erred. Specifically, Appellant argued that the functionalities of McDonnell and Ge are incongruous because Ge requires more location precision than McDonnell requires. App. Br. 12. The Examiner finds this is Appeal 2010-011644 Application 11/301,425 8 not the case and provides a detailed analysis in pages 20-21 of the Answer. We agree with the Examiner’s findings and conclusions. Further, Appellant argues that the Examiner’s proffered motivation to combine the art is erroneous because it allegedly improperly relies on “general benefits of the suggested combinations.” App. Br. 13. However, the Examiner responds to Appellant’s argument with a detailed and well- reasoned rationale for combining Zellner, Ge, and McDonnell (Ans. 21-22) and Appellant’s have not provided sufficient evidence or argument to persuade us of error. Finding no error in the Examiner’s findings and conclusion therewith, we are not persuaded by Appellant’s arguments otherwise. CONCLUSION For the foregoing reasons and adopting the findings and conclusions of the Examiner, we conclude that the Examiner did not err in rejecting the independent claims 1, 8, and 16 under 35 U.S.C. § 103(a) over Zellner, Ge, and McDonnell. Consequently, we sustain the Examiner’s rejection thereto. Because Appellant argues the patentability of dependent claims stand or fall with the patentability of independent claim 1 (App. Br. 23), we also sustain the rejection of claims 2-7, 9-15, and 17-20. DECISION We affirm the Examiner’s decision to reject claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Appeal 2010-011644 Application 11/301,425 9 msc Copy with citationCopy as parenthetical citation