Oath Inc.

Patent Trials and Appeals Board

Aug 30, 2021

2020003782 (P.T.A.B. Aug. 30, 2021)

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.
14/012,961 08/28/2013 Michael Metcalf Y09296US00 7181
123510 7590 08/30/2021
Cooper Legal Group LLC
1388 Ridge Road, Unit 1
Hinckley, OH 44233
EXAMINER
SULTANA, NARGIS
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
08/30/2021 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):
VZPatent123510@verizon.com
docketing@cooperlegalgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL METCALF, ROGER WILLIAM GRAVES,
ALEXANDRE LINARES, and PEDRO VALENTE

Appeal 2020-003782
Application 14/012,961
Technology Center 2100

Before JEAN R. HOMERE, JAMES B. ARPIN, and MICHAEL J. ENGLE,
Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s rejections of claims 1, 3–11, and 13–21, all of the pending
claims. Appeal Br. 5. Claims 2 and 12 are canceled. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We refer to the Specification, filed Aug. 28, 2013 (“Spec.”); Final Office
Action, mailed Feb. 5, 2019 (“Final Act.”); Appeal Brief, filed Nov. 8, 2019
(“Appeal Br.”); Examiner’s Answer, mailed Feb. 21, 2020 (“Ans.”), and
Reply Brief, filed Apr. 21, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Oath Inc. Appeal Br. 3.
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II. CLAIMED SUBJECT MATTER
The claimed subject matter relates to a method and system for
recommending to a user online media content associated with a topic
identified by a media provider from the user’s browsing history. Spec. ¶¶ 1,
5. In particular, upon receiving a user’s selection of media content for
sharing, the media provider renders on the user interface the selected media
content, along with a list of related topics from which the user selects a topic
that further defines the content being shared. Id. ¶ 6.
Figure 1a, reproduced below, is useful for understanding the claimed
subject matter:

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Figure 1a above illustrates a system including recommendation engine
210 in server 200 for recommending a list of topics related to media content
selected by client 100. Id. ¶ 26. In particular, recommended topic list
generator 218 analyzes the user’s interaction with the recommended topics
identified by extraction engine 210 to generate the associated list of topics as
well as to provide the user the options to search for a different topic or add a
new topic capable of offering a different perspective of the media content
that cannot be identified by the topics provided by extraction engine 210. Id.
¶¶ 36–42.
Independent claim 1, with disputed limitations emphasized, is
illustrative:
1. A method, comprising:
receiving a recommendation signal from a media page
rendering content at a client device, the recommendation signal
being triggered by user action at a recommendation signal tool
included in the media page, and is associated with the user
viewing the media page;
generating a list of topics for rendering at the client
device, the list includes topics that are related to content of the
media page and topics from the following history of the user,
the generating further includes,
providing an option for the user to define a new topic for
associating with the content of the media page;
detecting selection of a topic to associate with the content
of the media page, wherein the topic selected is the new topic or
one of the topics from the following history of the user, wherein
the selected topic is associated with a corresponding topic
forum;
associating the selected topic to the content of the media
page, wherein the association allows the content of the media
page to be published under the corresponding topic forum
associated with the selected topic, such that other users
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following the selected topic are able to see the content of the
media page in the corresponding topic forum; and
generating recommendation data for presenting to the
other users following the selected topic, the recommendation
data includes a list of media pages associated with the selected
topic including the media page from where the recommendation
signal was triggered,
wherein after providing the recommendation data,
evaluating interactions from the other users at the media page in
the corresponding topic forum for the selected topic, to derive
user related metrics of the user defining the selected topic, the
user related metrics of the user used in determining a relative
ranking of the media page in the list of media pages included in
the recommendation data,
wherein method operations are performed by a processor
of a server computing device that publishes the content.
Claims App. (emphasis added).

III. REFERENCES

The Examiner relies upon the following references.3
Name Reference Date
Smith US 8,078,615 B2 Dec. 13, 2011
King US 9,195,753 B1 Nov. 24, 2015
Lu US 2014/0101086 A1 Apr. 10, 2014
IV. REJECTIONS
The Examiner rejects claims 1, 3–11, and 13–21 as follows:
Claims 1, 3–11, 13, 14, and 18–21 are rejected under 35 U.S.C. § 103
as obvious over the combined teachings of King and Smith. Final Act. 8–17.

3 All reference citations are to the first named inventor only.
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Claims 15–17 are rejected under 35 U.S.C. § 103 as obvious over the
combined teachings of King, Smith, and Lu. Id. at 17–20.
V. ANALYSIS
Appellant argues, inter alia, that the Examiner errs in finding that
Smith cures the admitted deficiencies of King to teach or suggest “providing
an option for the user to define a new topic for associating with the content
of the media page,” as recited in independent claim 1. Appeal Br. 13. In
particular, Appellant argues that Smith discloses a dropdown menu with
options to view and update information of interest, as opposed to defining a
new topic for associating therewith the content of the media page. Id. at 13–
14 (citing Smith 21:17–46).
Appellant’s arguments are persuasive of reversible Examiner error.
As a preliminary matter, we agree with Appellant that the disputed
claim limitations set forth above require providing to a user an option to
define a new topic for associating therewith the content of a media page. Id.
at 13.
Smith relates to a server for recommending media content to a user for
viewing based on the user’s browsing history, preferences, and demographic
data. Smith Abstr. In particular, Smith discloses a dropdown menu
containing various options including My Info, Top Stumblers, Update
Interests, Get Suggested Interests, Toolbar Preferences, Change Current, etc.
Smith 12:17–23. More particularly, Smith discloses that “‘Update Interests’
directs the user to the interests page where a selection of categories of
interest can be made from the toolbar.” Id. at 12:35–37.
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We do not agree with the Examiner that Smith’s disclosure of the
“Update Interests” option teaches the disputed limitation. Ans. 4. As
persuasively argued by Appellant, Smith merely discloses the “Update
Interests” option allows the user to select an existing category from the
toolbar in the interests page, as opposed to defining, creating, or adding to
the dropdown menu a new topic that can be selected for associating
therewith the media content. Appeal Br. 8 (citing Spec. ¶¶ 32, 42–45); Reply
Br. 4. The Examiner’s finding is speculative, and wholly unsupported on the
record before us. We decline to engage in such speculation. “A rejection . . .
must rest on a factual basis . . . .” In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). “The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies in its factual basis.” Id.
The proposed combination of Smith and King would at best result in an
online recommendation system that provides to users a dropdown menu with
options to select from prepopulated entries a topic pertaining to a selected
media page. As persuasively argued by Appellant, however, the applied
combination falls short of providing to a user an option to define, create, or
add to the dropdown menu a new topic for associating therewith the content
of a media page. Appeal Br. 8. Because the record is devoid of evidence to
support providing to a user an option to define a new topic for associating
therewith the content of a media page, we agree with Appellant that the
proposed combination of Smith and King does not teach or suggest the
disputed limitations of claim 1.
Because Appellant shows at least one reversible error in the
Examiner’s obviousness rejection of independent claim 1, we do not reach
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Appellant’s remaining arguments. Accordingly, we do not sustain the
Examiner’s obviousness rejection of independent claim 1. Likewise, we do
not sustain the rejections of claims 3–11 and 13–21, which also recite the
disputed limitations.
VI. CONCLUSION
For the above reasons, we reverse the Examiner’s rejections of claims
1, 3–11, and 13–21.
VII. DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
1, 3–11, 13, 14,
18–21 103 King, Smith
1, 3–11, 13,
14, 18–21
15–17 103 King, Smith, Lu 15–17
Overall
Outcome
1, 3–11, 13–
21

REVERSED