Ex Parte Dalessio et al

Patent Trial and Appeal Board

Oct 30, 2017

13770198 (P.T.A.B. Oct. 30, 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.
13/770,198 02/19/2013 John Alexander Dalessio 31547-173 / LEN0046PA 3221
146524 7590 10/30/2017
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
EXAMINER
HEFFERN, JAMES E
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
10/30/2017 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 JOHN ALEXANDER DALESSIO, GAURAV MEHRA,
SANJAY SHARMA, MAHESH PENDYALA,
and RAMJI SREENIVASAN
____________

Appeal 2016-007899
Application 13/770,198
Technology Center 2100
____________

Before DENISE M. POTHIER, JOHN A. EVANS, and
TERRENCE W. McMILLIN, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 1–20. App. Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 Appellants identify LexisNexis, a division of Reed Elsevier Inc., as the real
party in interest (App. Br. 2).
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed Oct. 27, 2015, “App. Br.”), the Reply Brief
(filed Aug. 17, 2016, “Reply Br.”), the Examiner’s Answer (mailed June 21,
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STATEMENT OF THE CASE
The Invention
The claim relates to a system and methods for ranking a plurality of
documents based on user activity. See Abstract.
Claims 1, 15, and 18 are independent. Claim 1 is illustrative and is
reproduced below with some formatting added:
1. A method for ranking a plurality of documents based on
user activity, the method comprising:
receiving, automatically by a computer, first user activity
data indicative of a first user activity and second user activity
data indicative of a second user activity, wherein a first user
activity point value is associated with the first user activity and
a second user activity point value is associated with the second
user activity;
identifying a first data item based on the first user
activity data;
identifying a second data item based on the second user
activity data;
updating a first score of the first data item based on the
first user activity point value;
updating a second score of the second data item based on
the second user activity point value;
identifying the plurality of documents based on the first
data item and the second data item; and
ranking the plurality of documents based on the first
score and the second score.

2016, “Ans.”), the Final Action (mailed May 20, 2015, “Final Act.”), and the
Specification (filed Feb. 19, 2013, “Spec.”) for their respective details.
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References and Rejection
Dumais, et al., US 2007/0016553 A1 Jan. 18, 2007
Acharya, et al., US 2007/0094255 A1 Apr. 26, 2007
Pedersen, et al., US 2007/0130145 A1 June 7, 2007
Sisk, et al., US 2008/0195596 A1 Aug. 14, 2008
Yang US 2009/0024605 A1 Jan. 22, 2009
Zhang, et al., US 2010/0268708 A1 Oct. 21, 2010
Procopio US 8,458,193 B1 June 4, 2013
(filed Jan. 31, 2012)

Sinha, et al., US 2012/0296919 A1 Nov. 22, 2012

1. Claims 1, 2, 5, 15, 18, and 19 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Pedersen. Final Act. 2–8.
2. Claims 3, 4, 17, and 20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Pedersen and Zhang. Final Act. 8–10.
3. Claims 8, 9, and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over Pedersen and Acharya. Final Act. 10–12.
4. Claim 10 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Pedersen, Acharya, and Zhang. Final Act. 13–14.
5. Claim 14 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Pedersen, Acharya, and Sinha. Final Act. 14–16.
6. Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as obvious
over Pedersen, Zhang, and Dumais. Final Act. 16–17.
7. Claims 7 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Pedersen and Yang. Final Act. 18–19.
8. Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
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obvious over Pedersen and Procopio. Final Act. 19–20.
9. Claim 13 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Pedersen and Sisk. Final Act. 20–21.
ANALYSIS
We have reviewed the rejection of Claims 1–20 in light of Appellants’
arguments that the Examiner erred. We have considered in this Decision
only those arguments Appellants actually raised in the Brief. Any other
arguments which Appellants could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We are
not persuaded that Appellants identify reversible error.
Upon consideration of the arguments presented in the Appeal Brief
and the Reply Brief, we agree with the Examiner that all the pending claims
are unpatentable under 35 U.S.C. §§ 102 or 103. We adopt as our own the
findings and reasons set forth in the rejections from which this appeal is
taken and in the Examiner’s Answer, to the extent consistent with our
analysis below. We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellants’ arguments seriatim, as they are presented in the Appeal
Brief, pages 13–21.
CLAIMS 1, 5, 18, AND 19: ANTICIPATION BY PEDERSEN
Appellants argue these claims as a group in view of the limitations of
Claim 1. See App. Br. 13–20.
First and second user activity point values.
Appellants contend that Pedersen does not expressly or inherently
disclose that enumerated user activity point values are associated with
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respective user activities, as recited in independent Claims 1 and 18. App.
Br. 13. Appellants argue the cited paragraph of Pedersen merely teaches
using document-specific activities to rank a document or to relate a
document to one or more other documents. Id. (citing Pedersen ¶ 21, cited
in Final Act. 3). Appellants maintain Pedersen is wholly silent with respect
to associating a user activity point value in any capacity. Id.; Reply Br. 2–3.
We are not persuaded by Appellants’ arguments.
As found by the Examiner (Ans. 2–3), Pedersen discloses:
The identified 102 document-specific activity is then used 104
to rank one document or relate one document to one or more
other documents. For example, if a first user activity of a first
document has been identified 102, and a second user activity of
a second document has been identified, the first and second
activities may be used 104 to relate the first and second
document. Or, if a third user activity has been identified 102,
that use[r] activity may be used 104 to increase or decrease a
rank or importance rating of a document affected or targeted by
the activity.
Pedersen ¶ 21. The Examiner finds that because Pedersen’s user activities
are being used for building a ranking or importance rating, these activities
must be used as a type of score, which would be synonymous with the “user
activity points,” discussed in the claims. Ans. 2–3. That is, each activity has
an associated value used to build the ranking or importance rating. See id.
We therefore agree with the Examiner Pedersen’s disclosure meets the
limitations recited in the claims.
Updating scores based on user activity point values.
Appellants contend Pedersen discloses using document-specific
activities to rank or relate a document to one or more other documents. App.
Br. 14. Appellants argue Pedersen is wholly silent with respect to updating a
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score of a data item based on a user activity point value, as claimed. Id.;
Reply Br. 3.
The Examiner finds because the first and second user activities are
used to build a ranking or importance rating, the various user actions must
inherently have an associated type of score. Ans. 2–3. Furthermore,
Pederson discloses a document’s ranking or importance rating can be
increased or decreased (e.g., updated) based on user activity. Pederson ¶ 21,
cited in Final Act 3. Appellants have not persuaded us the Examiner errs.
Ranking documents based on scores.
Appellants contend Pedersen fails to disclose ranking documents
based on first and second scores. App. Br. 14–15. The Examiner finds the
user activities and the associated user actions help to contribute to a ranking.
Although the word score is not explicitly used, some form of score must be
utilized to ensure a proper ranking of the activities and the associated data
items. Ans. 3. We are not convinced of error.
Identifying documents based on first and second data items.
Appellants contend Pedersen teaches using document-related activity
as the only means of relating documents, but does not teach identifying
documents based on first and second data items. App. Br. 16; Reply Br. 4–
5.
The Examiner finds the claimed “data item” is not explicitly defined
in the disclosure. Ans. 3. The Examiner interprets “data item” as any
feature or piece of data that could be associated with a document, such as a
title, name or any other piece of metadata, including the identified
“document-specific activity,” disclosed in Pedersen. Id. at 4 (citing
Pedersen ¶ 21).
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We thus disagree with Appellants that the Examiner maps Pedersen’s
first and second documents to the recited first and second data items and
therefore fails to disclose the “identifying the plurality of documents” step as
recited in claim 1. See App. Br. 15–16. Appellants provide no rebuttal to
the Examiner’s findings in the Answer and essentially repeat the arguments
presented in the Appeal Brief. See Reply Br. 4. We thus are not persuaded
of error.

INDEPENDENT CLAIM 15: ANTICIPATION BY PEDERSEN
In addition to the foregoing arguments which we found not
persuasive, Appellants contend Pedersen fails to teach “identifying a user
objective based on the first user activity data,” or “identifying the plurality
of documents based on the first data item, the second data item, and the
identified user objective,” as recited in independent Claim 15. App. Br. 17.
Specifically, Appellants contend Pedersen fails to teach “identifying a
user objective based on the first user activity data,” or “identifying the
plurality of documents based on the first data item, the second data item,
and the identified user objective,” as recited in independent Claim 15. App.
Br. 17. Appellants analyze Pedersen as teaching the use of document-
specific activity to rank or relate documents. Id. (citing Pedersen, ¶ 22).
Appellants argue Pedersen is silent as to identifying a user objective. Id.
Appellants disclose: “when the first user activity data is indicative of a
user viewing a legal brief, the user objective may be identified as drafting a
brief.” Spec., ¶ 32. Consistent with Appellants’ example in the disclosure,
the Examiner finds Pedersen discloses: “certain types of activities performed
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by a user are assumed to reflect the subjective importance of documents
affected by those activities.” Final Act. 5 (citing Pederson ¶¶ 21–22); see
also Ans. 3–4 (discussing this disputed limitation). The Examiner finds, and
we agree, that determining “the subjective importance [to the user] of
documents affected by those activities” is reasonably equated to the claimed
“identifying a user objective.” Id. For example, Pedersen teaches this
ranking or relating process models user activities and determines what
activities are significant (e.g., significant data being indicative of a user
objective). See Pedersen ¶ 22.
Therefore, we are not persuaded that the Examiner errs in finding that
Pedersen teaches identifying a user objective based on the first user activity
data” and “identifying the plurality of documents based on the first data
item, the second data item, and the identified user objective,” as recited in
Claim 15.

DEPENDENT CLAIMS 2 AND 19: ANTICIPATION BY PEDERSEN
Appellants re-allege their contention that Pedersen fails to teach
“identifying a user objective based on the first user activity” as recited in
Claims 2 and 19. App. Br. 19. We are not persuaded in view of our
foregoing discussion.
DEPENDENT CLAIMS 7 AND 16: OBVIOUSNESS OVER PEDERSEN AND YANG
Clam 7 depends from claim 1 and further recites “wherein the first
user activity point value is based on a probativeness of the first user activity,
such that the first user activity point value is higher for a higher
probativeness first user activity than for a lower probativeness first user
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activity.” Appellants contend Yang fails to teach a “first user activity point
value is based on [e.g., proportional to] a probativeness of the first user
activity.” App. Br. 19–20.
The Examiner synthesizes the accused limitation from the combined
teachings of Pedersen and Yang. Final Act. 18–19. Specifically, the
Examiner finds Pedersen teaches scoring and ranking data items while Yang
teaches the claimed “probative” aspects. Id. In particular, the Examiner
finds Yang teaches:
The weight dynamically changes depending on factors such as
reference activity in the category or related categories or in the
category hierarchy, the total number of reference anchors, the
number of ranked users that are active, the scores of various
users in the system, etc. The purpose of balancing the
weighting of ranked users is so that there is not a situation
where too many low level users actually negate the positive
ratings of experts for a document because the document is too
advanced for the low level users.
Final Act. 18 (citing Yang, ¶ 69).
Appellants’ rebuttal is not persuasive. See App. Br. 19–20; Reply Br.
5–6. As Appellants admit (App. Br. 20), Yang discusses in paragraph 69
dynamically changing a weight (e.g., a value based on probativeness) of
activities in certain categories (e.g., a first user activity point value is higher
for certain activity (e.g., higher probativeness activity) than other (e.g., a
lower probativeness activity). Yang ¶ 69. Although Yang does not use the
term “probativeness,” identity of terminology is not required to reject a
claim. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Other than the
mere assertion that Yang fails to disclose “a user activity point value that is
based on a probativeness of a user activity,” Appellants provide no
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compelling response to this determination. We are not persuaded the
Examiner errs.

DEPENDENT CLAIMS 3, 4, 6, 8–14, 17, AND 20: OBVIOUSNESS OVER PEDERSEN
AND VARIOUSLY ZHANG, ACHARYA, SINHA, DUMAIS, PROCOPIO, AND SISK
Appellants do not separately argue dependent Claims 3, 4, 6, 8–14,
17, and 20 and thus fall with their associated independent claims.
DECISION
The rejection of Claims 1, 2, 5, 15, 18, and 19 under 35 U.S.C. § 102
is AFFIRMED.
The rejection of Claims 3, 4, 6–14, 16, 17, and 20 under 35 U.S.C.
§ 103 is AFFIRMED.

AFFIRMED