Ex Parte 7685276 et alDownload PDFPatent Trial and Appeal BoardOct 28, 201495001699 (P.T.A.B. Oct. 28, 2014) Copy Citation MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. 95/001,699 08/03/2011 7685276 EXAMINER DENTONS US LLP P.O. BOX 061080 CHICAGO, IL 60606-1080 DESAI, RACHNA SINGH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/31/2014 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ PERSONALIZED USER MODEL LLP Patent Owner and Appellant v. GOOGLE INC. Requester and Respondent ____________ Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 Technology Center 3900 ____________ Before BRADLEY W. BAUMEISTER, JENNIFER L. McKEOWN, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 2 DECISION ON APPEAL Patent Owner, Personalized User Model LLP (“Patent Owner”), appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s rejecting claims 1, 3, 5–7, 14, and 21–24, all reexamined claims. PO App. Br. 1. 1 We have jurisdiction under 35 U.S.C. §§ 134 and 315. Oral arguments were heard on September 24, 2014. We affirm. STATEMENT OF THE CASE Google Inc. (“Requester”) filed a Request for Inter Partes Reexamination on July 29, 2011, of claims 1, 3, 5–7, 14, and 21–24 of United States Patent 7,685,276 B2 (hereinafter the “’276 patent”).2 According to the Patent Owner, the ’276 patent describes a method of personalizing user interactions across one or more modes of interaction and applications, including searching, browsing, email reading and navigation.[] Learning about user interests in one mode benefits all other modes.[] Users are modeled independent of any specific representation or data structure, allowing use of a variety of knowledge sources and the addition of new knowledge sources into the user model.[] The user model estimates user interest in unseen documents by generalizing from the information learned about the user. 1 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed August 17, 2012 (“RAN”); (2) the Examiner’s Answer mailed January 10, 2014 (“Ans.”) (incorporating the RAN by reference); (3) Patent Owner’s Appeal Brief filed November 19, 2012 (“PO App. Br.”); (4) Requester’s Corrected Respondent Brief filed October 23, 2013 (“TPR Resp. Br.”); and (5) Patent Owner’s Rebuttal Brief filed February 10, 2014 (“PO Reb. Br.”). 2 The ’276 patent issued to Konig, et al., on March 23, 2010, from Application 12/008,148, filed January 8, 2008. Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 3 PO App. Br. 6–7 (citation to various passages of the ’276 patent omitted). Claims 1 and 23, reproduced below, are illustrative of the claimed subject matter: 1. A computer-implemented method for providing personalized information services to a user, the method comprising: transparently monitoring user interactions with data while the user is engaged in normal use of a browser program running on the computer; analyzing the monitored data to determine documents of interest to the user; estimating parameters of a user-specific learning machine based at least in part on the documents of interest to the user; receiving a search query from the user; retrieving a plurality of documents based on the search query; for each retrieved document of said plurality of retrieved documents: identifying properties of the retrieved document, and applying the identified properties of the retrieved document to the user-specific learning machine to estimate a probability that the retrieved document is of interest to the user; and using the estimated probabilities for the respective plurality of retrieved documents to present at least a portion of the retrieved documents to the user. 23. A computer-implemented method for providing personalized information services to a user, the method comprising: transparently monitoring user interactions with data while the user is engaged in normal use of a browser program running on the computer; analyzing the monitored data to determine documents of interest to the user; estimating parameters of a user-specific learning machine based at least in part on the documents of interest to the user; Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 4 collecting a plurality of documents of interest to a user; for each of said plurality of collected documents: identifying properties of the collected document, and applying the identified properties of the collected document to the user-specific learning machine to estimate a probability that the collected document is of interest to the user; using the estimated probabilities for the respective plurality of collected documents to select at least a portion of the collected documents; presenting said selected collected documents to said user. RELATED PROCEEDINGS We are informed that the ’276 patent and its parent, United States Patent 6,981,040 B1 (“the ’040 patent”), are the subject of litigation in Personalized User Model LLP v. Google, Inc., Case No. 1:09-CV-525-LPS, USDC D. Del. This panel, in reexamination control No. 95/001,569, affirmed the Examiner’s rejection of all reexamined claims of the ’040 patent. See Decision on Appeal 2014-002460 mailed May 30, 2014. THE APPEALED REJECTIONS Patent Owner appeals the Examiner’s rejecting the claims as follows: 1. Claims 1, 3, 5, 6, 14, 21, and 22 over Wasfi3 and Mladenic4 under 35 U.S.C. § 103(a); 3 Ahmad M. Ahmad Wasfi, Collecting User Access Patterns for Building User Profiles and Collaborative Filtering, School of Computer Sciences (1999). Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 5 2. Claims 23 and 24 over Wasfi under 35 U.S.C. § 102(a); 3. Claim 7 over Wasfi, Mladenic, and Refuah5 under 35 U.S.C. § 103(a); 4. Claims 1, 3, 5, 6, 7, 14, and 21–24 over Refuah under 35 U.S.C. § 102(a); 5. Claims 1, 3, 6, 7, 21, 22, and 23 over Culliss6 under 35 U.S.C. § 102(e); 6. Claim 5 over Culliss and Mladenic under 35 U.S.C. § 103(a); 7. Claim 24 over Culliss and Montebello7 under 35 U.S.C. § 103(a); 8. Claims 1, 3, 6, 7, and 21–24 over Montebello under 35 U.S.C. §§ 102(a) and 102(b); 9. Claim 5 over Montebello and Mladenic under 35 U.S.C. § 103(a); 10. Claims 1, 3, 5, 6, 21, and 22 over Barrett8 and Mladenic under 35 U.S.C. § 103(a); 11. Claim 7 over Barrett, Mladenic, and Refuah under 35 U.S.C. § 103(a); 12. Claims 23 and 24 over Barrett under 35 U.S.C. §§ 102(a) and 102(b); 13. Claims 23 and 24 over Asnicar9 under 35 U.S.C. §§ 102(a) and 102(b); 4 Dunja Mladenić (hereinafter “Mladenic”), Personal Web Watcher: design and implementation, Dpt. for Intelligent Systems, J. Stefan Institute, School of Computer Science, Carnegie Mellon University (1996). 5 Refuah et al., US 7,631,032 B1, issued December 8, 2009. 6 Gary Culliss, US 6,182,068 B1, issued January 30, 2001. 7 M. Montebello, et al., A Personal Evolvable Advisor for WWW Knowledge- Based Systems, Computer Science Department, University of Wales, Cardiff. (1998). 8 Rob Barrett, et al., How to Personalize the Web, IBM Almaden Research Center (1997). Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 6 14. Claims 1, 5, 6, 14, 21, and 22 are patentable over Asnicar in view of Mladenic under 35 U.S.C. § 103(a); 15. Claims 3 and 7 are patentable over Asnicar, Mladenic, and Culliss under 35 U.S.C. § 103(a); 16. Claims 23 and 24 over Stefani10 under 35 U.S.C. §§ 102(a) and 102(b); 17. Claims 1, 5, 6, and 21 over Stefani and Mladenic under 35 U.S.C. § 103(a); 18. Claims 3 and 7 over Stefani, Mladenic, and Culliss under 35 U.S.C. § 103(a); and 19. Claim 22 over Stefani, Mladenic, and Refuah under 35 U.S.C. § 103(a). THE REJECTION OF CLAIMS 23 AND 24 OVER WASFI The Examiner rejected claims 23 and 24 as anticipated by Wasfi. RAN 6 (adopting Third Party Requester’s proposed rejection); see Request for Inter Partes Reexamination (“Request” filed July 29, 2011) 29–33 and Claim Chart CC-B; see also RAN 23–28. 9 Fabio A. Asnicar, et al., ifWeb: A Prototype of User Model-Based Intelligent Agent for Document Filtering and Navigation in the World Wide Web, Proceedings of the workshop “Adaptive Systems and User Modeling on the World Wide Web”, Sixth International Conference on User Modeling, Chia Laguna, Sardinia (1997). 10 Anna Stefani, et al., Personalizing Access to Web Sites: The SiteIF Project, “Proceedings of the 2 nd Workshop on Adaptive Hypertext and Hypermedia HYPERTEXT’98”, Pittsburgh, USA (1998). Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 7 Wasfi discloses “ProfBuilder,” a recommendation system for individual pages found within a single web site. Wasfi p. 57. See also PO App. Br. 7. Wasfi creates two recommendation lists for pages within a single web site a user is currently visiting. Wasfi Fig. 2 and pp. 60–63. One list is created by a content-based filter, and the other is created by a collaborative filter. Id. Wasfi’s content-based filter “translate[s] pages of [a] web site to a representation used for a user profile and determines similarities between the pages and the profile.” PO App. Br. 7 (citing Wasfi p. 61). “Similarity is computed as the scalar product of weighted coefficients (specifically, keywords) of the page vector and the user profile vector.” Id. “Those pages deemed most similar to ones the user has already visited are ranked higher than others.” Id. Patent Owner argues Wasfi “fails to teach any application of identified properties of documents to a user-specific learning machine to estimate a probability that a document is of interest to the user.” PO App. Br. 14. Patent Owner further argues that neither Wasfi’s “similarity measures” nor Wasfi’s “probabilities” is “equivalent to the claimed probability of a user’s interest in a document.” Id. Patent Owner points out that Wasfi’s similarity measures are not probabilities because they can have a value between 0 and infinity and infinity cannot be normalized to a probability. Id. at 13. Patent Owner reasons that “[i]nasmuch as no probabilities regarding whether the document is of interest to a user are estimated, no such probabilities are available to use in making any selections.” Id. at 14. Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 8 Requester argues “Wasfi’s vector-space measurements are simply a means for estimating the probability that a document is of interest to the user — a smaller distance between document and user vectors means a greater probability that the document is interesting to the user, while a larger distance means a lesser probability that the document is interesting to the user.” TPR Resp. Br. 3. Requester also argues that “even if Patent Owner were correct that Wasfi’s methods would not yield a true probability in the extreme case of infinitely dissimilar vectors, Wasfi would still yield a probability in every other case.” Id. at 5. We agree. Wasfi describes recommending pages to a user based on 1) the user’s continuously updated profile determined by pages visited by the specific user; 2) the similarity among pages as determined by a text analysis of the pages; and 3) the patterns of other users based on their navigation among the pages. See, e.g., 61. Patent Owner’s argument that “the interestingness of any page at the subject web site is dependent upon (and determined solely by) the visiting patterns of other users and cannot be deemed a user-specific learning machine, as claimed” (PO Reb. Br. 3) is unpersuasive because it fails to consider that Wasfi takes into consideration the instant user’s actions with respect to pages visited. Whether Wasfi is unable to compute interestingness absent knowledge of others’ accesses to web pages that the subject user might visit next (id.) is unpersuasive because Wasfi describes using both a user’s specific actions and page similarities based on keywords (i.e., properties) as claimed. Moreover, the fact that Wasfi operates within a specific web site (PO App. Br. 8) does not negate that Wasfi’s learning module operates to recommend other pages (i.e., documents) within that site. Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 9 Id. In other words, one skilled in the art would understand Wasfi describes “identifying properties of the collected document, and applying the identified properties of the collected document to the user-specific learning machine to estimate a probability that the collected document is of interest to the user.” Accordingly, we are unpersuaded of error in the rejection of claim 23. Patent owner does not argue separately the rejection claim 24 over Wasfi. THE REJECTION OF CLAIMS 1, 3, 5, 6, 14, 21, AND 22 OVER WASFI AND MLADENIC The Examiner rejected claims 1, 3, 5, 6, 14, 21, and 22 as obvious over Wasfi and Mladenic. RAN 6 (adopting Third Party Requester’s proposed rejection); see Request 33–39 and Claim Chart CC-B; see also RAN 28. Patent Owner argues Wasfi and Mladenic fail to teach or suggest claim 1’s “receiving a search query” and “retrieving a plurality of documents based on the search query.” PO App. Br. 11–12; PO Reb. Br. 1–2. Patent Owner cites the Examiner’s statement, while discussing whether Mladenic anticipates certain claims (RAN 12–22), that Mladenic does not “disclose” the limitations relating to search. PO App. Br. 11 (citing RAN 14). Patent Owner also argues that, when considered in its entirety, Mladenic would have led one away from “a scheme based on or requiring search.” Id. See also PO Reb. Br. 1–2. Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 10 Requester points out that, in addition to describing “Personal Web Watcher,” which “eschews the use of search,” Mladenic also discloses “Web Watcher,” which does use search. TPR Resp. Br. 1–2 (citing Mladenic at 2). We agree. In Mladenic’s Web Watcher “the user provides a few keywords describing a search goal and WebWatcher [] suggest[s] pages related to the current page.” Mladenic at 2. Hence, we are persuaded that Mladenic’s Web Watcher teaches or suggests “receiving a search query” and “retrieving documents based on the search query.” Moreover, we are not persuaded Mladenic teaches away from query- based search. It is true that “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternative because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Hence, while Mladenic’s Personal Web Watcher provides an alternative to Web Watcher, Patent Owner does not argue persuasively that Mladenic criticizes, discredits, or discourages query-based search. Patent Owner also argues error in the Examiner’s rejection of claims 1, 3, 5, 6, 14, 21, and 22 over Wasfi and Mladenic because, according to Patent owner, Wasfi does not “identify[] properties of [a] retrieved Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 11 document,” apply the properties to a “user-specific learning machine,” or estimate probabilities as recited in claim 1. PO App. Br. 12–14. See also PO Reb. Br. 3. Claim 1 is identical to claim 23 in this regard, so we are unpersuaded by Patent Owner’s arguments for the reasons discussed supra. Patent Owner does not argue separately the rejection of claims 3, 5, 6, 14, 21, and 22 over Wasfi and Mladenic. THE REJECTION OF CLAIMS 1, 3, 5–7, AND 21–24 OVER REFUAH The Examiner rejected claims 1, 3, 5–7, and 21–24 as anticipated by Refuah. RAN 7 (adopting Third Party Requester’s proposed rejection); see Request 40–50 and Claim Chart CC-C; see also RAN 29–37. Refuah discloses tracking a user’s interactions with the Internet and adopting future interactions based on the tracked interactions, including future interactions related to site content. Refuah Abstract. Patent Owner argues Refuah does not disclose “applying the identified properties of the retrieved document to the user-specific learning machine to estimate a probability that the retrieved document is of interest to the user” and “estimating parameters of a user-specific learning machine.” PO App. Br. 15–19 (emphasis omitted). Patent Owner asserts Refuah does not discuss the concept of probabilities because information-dependent results are “incongruent” with estimating probability. Id. at 16. Patent Owner also argues that, when “applying the identified properties of the retrieved document to the user-specific learning machine to estimate a probability that the retrieved document is of interest to the user” is properly construed, “[t]here is no learning machine in Refuah in or to which to apply Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 12 the identified properties of the retrieved document.” Id. at 16–18. Patent Owner also argues that Refuah does not teach receiving a search query and, therefore, does not teach the limitations that flow therefrom. Id. at 18. We are unpersuaded of error at least for the reasons stated by the Examiner. See RAN 29–37. We specifically note the factual underpinnings embodied in Requester’s claim chart CC-C. See Request Appendix CC-C. We further note the following for emphasis. Patent Owner’s argument that “on the face of the Refuah patent, nowhere are the terms ‘learning,’ ‘learning machine,’ ‘probability,’ or ‘estimating a probability’ described” (PO App. Br. 15) is unpersuasive because there is no ipsissimis verbis test for determining whether a reference discloses a claim element, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Patent Owner’s arguments relating to Refuah’s lack of teaching relating to probabilities is belied by, for example, Refuah’s teaching that “[i]n a preferred embodiment of the invention, depending on a persona [“user-specific learning machine”], several characteristics [“properties”] of a site [web site having pages or “documents”] may be defined, which may be used in filtering out [not recommending] and/or prioritizing [sorting based on a numeric predictor] such a site.” Refuah 7:53–58. We are persuaded that one skilled in the art would understand Refuah’s filtering to be a measure of the probability that the web site is of interest to the user and Refuah’s prioritizing to be reflective of the actual probability. Patent Owner’s argument that Refuah operates on web sites and therefore does not describe “documents of interest to a user” (PO App. Br. Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 13 18) is unavailing. Patent Owner does not provide argument or evidence sufficient to persuade us that the Examiner was unreasonable in construing “document” such that it includes web sites or html web pages within a web site, as Refuah describes. Moreover, the ’276 patent states that “document” “includes not just text, but any type of media, including, but not limited to, hypertext, database, spreadsheet, image, sound, and video.” The ’276 patent 9:15–18. We find a web site and its pages are encompassed by “any type of media.” We are persuaded that Refuah describes receiving a search query because Refuah states “a persona is used to personalize information retrieval . . . search engines return matches for a particular query, while personality and mood are designed to affect the results of substantially any query.” Refuah 17:21–30. See also id. at 34–43. Accordingly, we are persuaded that Refuah describes “applying the identified properties of the retrieved document to the user-specific learning machine to estimate a probability that the retrieved document is of interest to the user.” We are unpersuaded by Patent Owner’s arguments (PO App. Br. 18– 19) that Refuah does not describe “estimating parameters of a user-specific learning machine.” Refuah describes that “parameters” of a persona “may define the traits [that] should be evaluated when determining a suitability of a site to a persona” and may define “how to modify the persona and/or a mood based on user activities.” Refuah 6:49–64. Patent Owner argues further in the rebuttal brief that Requester’s and Patent Owner’s experts in the related litigation refute that Refuah discloses a learning machine. PO Reb. Br. 4–5. These arguments are unavailing. We Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 14 are unpersuaded that Refuah does not describe a learning machine for the reasons discussed supra. We are not bound by the experts’ statements, at least because they are based on a construction of learning machine that we are not bound to adopt. For at least the foregoing reasons, we are unpersuaded by Patent Owner’s arguments and find Refuah describes “estimating parameters of a user-specific learning machine based at least in part on the documents of interest to the user” and “applying the identified properties of the retrieved document to the user-specific learning machine to estimate a probability that the retrieved document is of interest to the user.” Accordingly, we are unpersuaded of error in the rejection of claims 1, 3, 5–7, and 21–24 as anticipated by Refuah. THE REJECTION OF CLAIM 7 OVER WASFI, MLADENIC, AND REFUAH The Examiner rejected claim 7 as obvious over Wasfi, Mladenic, and Refuah. RAN 6–7 (adopting Third Party Requester’s proposed rejection); see Request 39–40 and Claim Chart CC-B; see also RAN 28–29. Patent owner argues claim 7 is patentable over Wasfi, even when considered in combination with Mladenic and Refuah. PO App. Br. 15. Patent Owner’s arguments, however, are premised on shortcomings in the rejections of claim 1 over Wasfi or Refuah (id.), which we do not find. See supra. Accordingly, we are unpersuaded of error in the rejection of claim 7 over Wasfi, Mladenic, and Refuah. Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 15 CONCLUSIONS We sustain the Examiner’s rejections of claims 23 and 24 as anticipated by Wasfi; claims 1, 3, 5, 6, 14, 21, and 22 as obvious over Wasfi and Mladenic; claims 1, 3, 5–7, and 21–24 as anticipated by Refuah; and claim 7 as obvious over Wasfi, Mladenic, and Refuah. Affirmance of these rejections renders it unnecessary to reach the remaining rejections, as all claims subject to reexamination have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional obviousness rejections). DECISION We affirm the Examiner’s decision to reject claims 1, 3, 5–7, 14, and 21–24. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED alw Appeal 2014-007047 Reexamination Control 95/001,699 Patent 7,685,276 B2 16 Patent Owner: DENTONS US LLP P.O. BOX 061080 CHICAGO, IL 60606-1080 Third-Party Requester: ROBERT WILSON QUINN, EMANUEL, URQUHART & SULLIVAN, LLP 51 MADISON AVENUE 22 ND FLOOR NEW YORK, NY 10010 Copy with citationCopy as parenthetical citation