Ex Parte DeLuca et alDownload PDFPatent Trial and Appeal BoardJan 31, 201612560736 (P.T.A.B. Jan. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/560,736 09/16/2009 63675 7590 02/02/2016 PATTERSON & SHERIDAN, LLP/IBM SVL 24 Greenway Plaza SUITE 1600 HOUSTON, TX 77046-2472 FIRST NAMED INVENTOR Lisa Seacat DeLuca 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 ATTORNEY DOCKET NO. CONFIRMATION NO. S VL92009003SUS1 1934 EXAMINER THATCHER, PAULA ART UNIT PAPER NUMBER 2172 NOTIFICATION DATE DELIVERY MODE 02/02/2016 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): P AIR_eofficeaction@pattersonsheridan.com PSDocketing@pattersonsheridan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte LISA SEACAT DELUCA and STEVEN M. MILLER Appeal2014-001916 Application 12/560,736 Technology Center 2100 Before ALLEN R. MacDONALD, CARLA M. KRIVAK, and MICHAEL M. BARRY, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-001916 Application 12/560,736 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 9-27 and 30-32. Claims 28 and 29 are not rejected. Claims 1-8 have been cancelled. App. Br. 30. We have jurisdiction under 35 U.S.C. § 6(b ). Exemplary Claims Exemplary claims 9, 25, and 26 under appeal read as follows (emphasis added): 9. A computer-readable storage medium containing a program which, when executed on a processor, performs an operation for generating a webpage for display, the operation comprising: receiving, from a user, a request to view the webpage comprising a plurality of portlets; identifying a time of the request; retrieving a browsing history of the user and an interaction history of the user with at least one of the plurality of portlets; arranging the plurality of portlets on the \vebpage based on the browsing history, the interaction history, and the identified time of the request, wherein the arranging is performed by operation of the processor; and outputting the webpage for display, responsive to the request. 25. The computer-readable storage medium of claim 9, whereby an arrangement of the portlets in the webpage is generated based on the interaction history of the user with the portlets in the webpage, the interaction history being qualified by the time period matching that of the request from the user. 2 Appeal2014-001916 Application 12/560,736 26. The computer-readable storage medium of claim 25, whereby generation of the arrangement of the portlets in the webpage is further based on the browsing history of the user, wherein the browsing history of the user is different from the interaction history of the user, the browsing history being qualified by the time period matching that of the request from the user, the browsing history specifying one or more websites visited the [sic] by the user independent of any interaction between the user and the portlets, wherein the one or more websites are associated with a portlet of the plurality of portlets. Rejections on Appeal 1 1. The Examiner rejected claims 9 and 17 provisionally on the ground of non-statutory obviousness-type double patenting as being unpatentable over Claim 1 of copending U.S. Application No. 11/957, 103 (Final Act. 19).2 2. The Examiner rejected claims 30-32 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement (Final Act. 3; Advisory Act. 2 (Apr. 19, 2013); Ans. 2-3). 3 3. The Examiner rejected claims 9-11, 13, 17-19, 21, and 25 under 35 U.S.C. § 102(e) as being anticipated by Dewar et al. (US 2009/0158166 Al) (Final Act. 7-11).4 1 The rejections of claims 28-32 under 35 U.S.C. § 103(a) have been withdrawn. Ans. 19. The rejection of claims 27 and 28 under 35 U.S.C. § 112, first paragraph has not been maintained. Advisory Action. 2 Arguments are not presented for this provisional rejection. Therefore, we affirm the Examiner's rejection proforma. Except for our ultimate decision, this rejection of these claims is not discussed further herein. 3 The rejection of claims 31 and 32 was added in the Answer at pages 2-3. 4 Separate patentability is not argued for claims 10, 11, 13, 17-19, 21, and 25. See App. Br. 11. Except for our ultimate decision, the Examiner's rejection of these claims is not discussed further herein. 3 Appeal2014-001916 Application 12/560,736 4. The Examiner rejected claims 26 and 27 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Dewar and Chua (US 2009/0276716 Al) (Final Act. 10-11).5 5. The Examiner rejected claims 12, 15, 20, and 23 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Dewar and Sah et al. (US 2007/0204010 Al) (Final Act 7-8). 6 6. The Examiner rejected claims 14 and 22 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Dewar and Flores et al. (US 2005/0021765 Al) (Final Act. 8-9).7 7. The Examiner rejected claims 16 and 24 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Dewar and TDobes (Scheduler 1 drupal.org (September 28, 2003), http://web.archive.org/ web/20051212044002/http://drupal.org/proj ect/scheduler, hereinafter TDobes) (Final Act. 9-10). 8 Appellants · Contentions 1. Appellants contend the Examiner erred in rejecting claim 30 under 35 U.S.C. § 112, first paragraph, for the reasons set forth at pages 26- 28 of the Appeal Brief. 5 Separate patentability is not argued for claim 27. Except for our ultimate decision, the rejection of this claim is not discussed further herein. 6 In addressing these § 103 rejections, Appellants merely reference the arguments directed to the§ 102 rejection. Without more, the patentability of these claims rejected under 103(a) is not separately argued from that of their base claims rejected on a separate basis under§ 102. Except for our ultimate decision, the rejections of these claims are not discussed further herein. 7 See supra note 8. 8 See supra note 8. 4 Appeal2014-001916 Application 12/560,736 2. Appellants contend the Examiner erred in rejecting claim 9 under 35 U.S.C. § 102(e) because Dewar does not disclose at least the following limitation recited in independent claim 9: "[A ]rranging the plurality of portlets on the webpage based on the browsing history, the interaction history, and the identified time of the t " reques .... The cited portions of Dewar generally discuss monitoring user interactions associated with modules displayed on a content aggregated webpage, see Dewar, i-f [0027]. At the same time, even assuming, arguendo, that the user interactions in Dewar correspond to the recited "interaction history", [Dewar] is still silent on the modules being arranged based on the interaction history and based further on a browsing history of the user. In this regard, [Dewar] does not teach any browsing history serving as a further basis - apart from the interaction history - in rearranging the modules. (App. Br. 10-11). 3. Appellants contend the Examiner erred in rejecting claim 26 because The cited portions of Chua generally discuss, inter alia, assigning priority values to content clusters based on a browser history, see Chua, i-fi-1 [0007] and [0015]. At the same time, even assuming, arguendo, that the browser history in Chua corresponds to the recited browsing history, the rationale of the Office for the proposed modification of Dewar using Chua is defective .... Here, [Dewar], even in view of Chua, does not teach any browsing history serving as a further basis - apart from the interaction history - in rearranging the portlets, where the browsing history specifies one or more websites visited by the user independent of any interaction between the user and the portlets. In this regard, Applicants submit it would not have been obvious to a person skilled in the art that visits to websites - independent of any interaction between the person and the 5 Appeal2014-001916 Application 12/560,736 portlets - would serve as a further basis, apart from the interaction history, in rearranging the portlets. The visits serving as a further basis would not have been obvious because the visits are independent of the portlet interaction and yet still influence arrangement of the portlets. Neither [Dewar] nor Chua disclose adapting content based on any such further basis, and furthermore, the Office has not articulated any rational underpinning that would support the legal conclusion of such a further basis being obvious in view of [Dewar] and Chua. (App. Br. 15-16). Issues on Appeal Did the Examiner erred in rejecting claim 30 under 35 U.S.C. § 112, first paragraph? Did the Examiner err in rejecting claim 9 as being anticipated under 35 U.S.C. § 102(e) because Dewar fails to describe the limitation argued by Appellants? Did the Examiner err in rejecting claim 26 as being unpatentable under 35 U.S.C. § 103(a) because the prior art fails to render obvious the limitation argued by Appellants? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. As to Appellants' above contention 1, we agree with Appellants. For the reasons set forth by Appellants, claim 30 complies with the requirements of 35 U.S.C. § 112, first paragraph. As to Appellants' above contention 2, we disagree. Appellants' Specification at i-f 37 states that the "interaction history" may record (1) interactions between the user and the portlets, and (2) websites and/or 6 Appeal2014-001916 Application 12/560,736 webpages visited by the user (e.g., a browsing history of the user). Further, Table I at i-f 39 shows that in addition to the "browsing history of the user" and websites/webpages visited by the user, the "interaction history" may record the "Access time" of that visit. That is, Appellants' Specification shows the claimed "browsing history" and "identified time of the request" as part of the overall "interaction history." We disagree with Appellants' reading of the Dewar reference. Rather, an "interaction history" is shown as monitoring user interactions (Dewar i-f 27) which are used to assign rank values to the modules (Dewar i-f 28). The interactions including "clicking on a hyperlink" (browser history) and numerous other interactions with the modules (Dewar i-f 27). Also, the assignment of rank values can be based on a "time or seasonal usage pattern" (time of a request) of the user interactions with modules accessed by the user (Dewar i-f 29). To the extent that Appellants are arguing the "interaction history" and "browsing history" must be read as completely distinct, we find no basis for such a construction in either Appellants' claim 9 or Specification. As to Appellants' above contention 3, we disagree. Appellants premise their arguments on a narrow construction of claim 26 that requires a level of independence between the "browsing history" and "interaction history" which we do not find supported in Appellants' Specification. However, even adopting this narrow construction, we agree with the Examiner that a browsing history independent from any interaction history is used in Chua to form "content clusters" (which are analogous to Appellants' portlets ), and that Chua assigns priority values to the clusters based on that browsing history. Chua i-fi-17 and 15. We agree with the Examiner that 7 Appeal2014-001916 Application 12/560,736 based on these findings it would have been obvious to arrange (prioritize) the display of portlets based not just on the browsing history that may also include interaction history as taught by Dewar, but also based on an independent browsing history shown by Chua. We also agree with, and adopt, the Examiner's findings and conclusion on the motivation to combine Dewar and Chua (Final Act. 11; Ans. 20-21). CONCLUSIONS (1) The Examiner has not erred in rejecting claims 9-11, 13, 17-19, 21, and 25 as being anticipated under 35 U.S.C. § 102(e). (2) The Examiner has not erred in rejecting claims 12, 14--16, 20, 22- 24, 26, and 27 as being unpatentable under 35 U.S.C. § 103(a). (3) Appellants have established that the Examiner erred in rejecting claims 30-32 as failing to comply with the written description requirement under 35 U.S.C. § 112, first paragraph. (4) Claims 30-32 have not been shown to be unpatentable. (5) Claims 9-27 are not patentable. DECISION The Examiner's provisional rejection of claims 9 and 17 on the ground of nonstatutory obviousness-type double patenting is summarily affirmed. The Examiner's rejection of claims 30-32, as failing to comply with the written description requirement 35 U.S.C. § 112, first paragraph, is reversed. 8 Appeal2014-001916 Application 12/560,736 The Examiner's rejection of claims 9-11, 13, 1 7-19, 21, and 2 5 as being anticipated under 35 U.S.C. § 102(e) is affirmed. The Examiner's rejections of claims 12, 14--16, 20, 22-24, 26, and 27 as being unpatentable under 35 U.S.C. § 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation