Ex Parte Jayakody et alDownload PDFPatent Trial and Appeal BoardFeb 8, 201613286720 (P.T.A.B. Feb. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/286,720 11/01/2011 34395 7590 02/10/2016 OLYMPIC PA TENT WORKS PLLC P.O. BOX 4277 SEATTLE, WA 98104 FIRST NAMED INVENTOR Prasantha Jayakody 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. VULP-BUND-OOlCl 6959 EXAMINER NGUYEN, KIM T ART UNIT PAPER NUMBER 2163 NOTIFICATION DATE DELIVERY MODE 02/10/2016 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): joanne@olympicpatentworks.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRASANTHA JAY AKODY, LINH DINH TRAN, and JIAXIN WANG Appeal2014-002404 Application 13/286,720 Technology Center 2100 Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-002404 Application 13/286,720 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 4, 7-18, and 21-24. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The invention relates to "a tag-suggestion method and system that provides a concise list of candidate tags most likely to be associated with a data object that is to be stored in a tag-associated data-object storage system" (Spec. 1: 11-13). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A tag-suggestion system included as a component of a tag- associated data-object storage system that is implemented as one or more software programs, hardware circuits, or a combination of software programs and hardware circuits within one or more computer systems that include, or that access, one or more data- storage devices, the tag-suggestion system comprising: a set of defined tags stored in the tag-associated data- object storage system; tag-associated data objects stored in tag-associated data- object storage system; a comparator that compares a data object to other data objects stored in the tag-associated data-object storage system in order to determine those data objects stored in the tag-associated data-object storage system which are most similar to the data object for which tags are to be associated, storing results of comparisons in the one or more data-storage devices; and 1 The Examiner has indicated claims 5, 6, 19, and 20 contain allowable subject matter (see Final Act. dated January 3, 2013, p. 13), and thus they are not part of the appeal. 2 Appeal2014-002404 Application 13/286,720 a tag selector that selects tags associated with a number of data objects stored in tag-associated data-object storage system most similar to the data object for which tags are to be associated. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Sommer Mac Laurin US 7,483,892 Bl Jan. 27, 2009 US 2011/0010388 Al Jan. 13, 2011 REJECTIONS The Examiner made the following rejections: Claims 1--4 and 7-14 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1, 3, 4, 7, 8, 11-15, 17, 18, and 21-24 stand rejected under 35 U.S.C. §102(e) as being anticipated by MacLaurin. Claims 2, 9, 10, and 16 stand rejected under 35 U.S.C. §103(a) as being unpatentable over MacLaurin and Sommer. ANALYSIS The Non-Statutory Subject Matter Rejection The Examiner finds claims 1--4 and 7-14 recite neither a machine, a manufacture, a process, nor a composition of matter, and thus "fail to fall within a statutory category [of patent-eligible subject matter]. They are, at best, functional descriptive material per se." (Non-Final Rejection2 2.) Appellants contend the claimed tag-suggestion system is statutory because it "controls the computer system to compare a data object to other data objects 2 The Non-Final Rejection dated July 13, 2012. 3 Appeal2014-002404 Application 13/286,720 and to select tags associated with a number of data objects stored in a tag- associated data object storage system" and "[ c ]omputer systems, data- storage devices, and control systems implemented as software programs and/or hardware circuits are most decidedly physical objects" (App. Br. 5- 6). We agree with Appellants. Claim 1 is drawn to a system that includes software implemented on a computer that accesses a data storage device, and thus, on its face, comprises physical hardware. This falls within the 35 U.S.C. § 101 category of a "machine." Accordingly, the Examiner erred in finding claim 1 cannot be classified in one of the four broad statutory categories. We therefore find the Examiner erred in rejecting as non-statutory claim 1, and claims 2--4 and 7-14 which depend therefrom. 3 The Anticipation Rejection Appellants contend MacLaurin fails to disclose "a comparator ... to determine those data objects stored in the tag-associated data-object storage system which are most similar to the data object for which tags are to be associated," as recited in claim 1. Specifically, Appellants argue: The statement [relied on by the Examiner in paragraph 26] in MacLaurin suggests that the selection-based tagging component can heuristically determine a tag suggestion based on a tag associated with a similar item. There is nothing in this statement that in any way teaches, discloses, or even remotely suggests how 3 We do not look beyond the issue raised in the Appeal that the Examiner improperly rejected claims 1--4 and 7-14 as failing to fall within a statutory category as functional descriptive material per se. However, upon further prosecution, the Examiner may want to consider whether, despite nominally falling within a statutory category, the claims on appeal are nevertheless drawn to a patent-ineligible abstract idea, in view of the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.Ct. 2347 (2014). 4 Appeal2014-002404 Application 13/286,720 that similar item is identified. . . . In addition, the above-quoted passage from the cited paragraph discusses only a single similar item. However, the currently claimed comparator compares a data object to other data objects in order to determine those data objects which are most similar to the data object for which tags are to be associated. Nothing in the cited paragraph of MacLaurin teaches, discloses, or suggests comparing an item, to which tags are to be associated, with multiple items already stored in the system. Another way to think about the differences between the one-phrase description in paragraph [0026] relied on by the Examiner [and] the currently claimed comparator is that, from a purely computational standpoint, to identify those data objects most similar to a particular or target data object, it is necessary to consider all of the data objects in the data store, when they have not been already ranked and ordered. By contrast, in order simply to identify a similar data object, one may need only search through tags associated with a few data objects until one finds a data object with a tag similar to a tag already associated with a target object or with a user seeking additional tags for that data object. (App. Br. 8-10.) We disagree with Appellants. MacLaurin discloses "an improved user interface for applying tags automatically when the user has made a selection of items to be tagged" where the "tag that the user is typing is determined based on factors that can include the item selected, other tags applied to similar items and/or used recently, and/or the most commonly used tags and the like" (MacLaurin, i-f 25) (emphasis added). We find that in order to determine tags applied to similar items to the user's selected item( s ), MacLaurin must perform some determination of which items are similar to the user's selected item( s ). Accordingly, we find MacLaurin discloses determining multiple similar data 5 Appeal2014-002404 Application 13/286,720 objects to a data object for which tags are to be associated. Appellants' argument that MacLaurin only discloses determining a single similar item (App. Br. 8-9) does not consider MacLaurin's disclosure in paragraph 25 quoted above, and thus is not persuasive. Appellants' argument that MacLaurin fails to determine the most similar items because MacLaurin does not necessarily "consider all of the data objects in the data store, when they have not been already ranked and ordered" (App. Br. 10) is also not persuasive. Claim 1 does not recite considering all of the data objects in the data-object storage system, nor does it recite any ranking or ordering algorithm with which to determine the "most" similar items. Accordingly, we broadly, but reasonably, construe the claim 1 language "to determine those data objects stored in the tag- associated data-object storage system which are most similar to the data object for which tags are to be associated" as merely requiring consideration of a number of data objects in the data-object storage system and an identification of some data objects which are deemed more similar to the target data object than other data objects considered. We find MacLaurin discloses this limitation because MacLaurin must consider some number of stored items in order to identify the "other tags applied to similar items" (MacLaurin, i-f 25). Further, the "similar items" must be more similar to the user's selected item( s) than other items considered otherwise there would be no differentiation among MacLaurin's stored items with which to identify "tags applied to similar items" (id.). We are, therefore, not persuaded the Examiner erred in rejecting claim 1, and claims 3, 4, 7, 8, 11-15, 17, 18, and 21-24 not specifically argued separately. 6 Appeal2014-002404 Application 13/286,720 The Obviousness Rejection The Examiner finds MacLaurin and Sommer collectively disclose all the limitations of claim 2, and similar limitations in claims 9, 10, and 16, including that Sommer teaches "the comparator carries out a dot product operation on a characteristic vector that characterizes data contents of the data object for which tags are to be associated and a cumulative characteristic vector that characterizes cumulative data contents of the data objects associated with a particular tag" (Final Act. 10-12). Appellants contend the claimed dot product operation is carried out on two different types of characteristic vectors, one of which includes information about a set of data objects .... Sommer teaches an inner product of two pseudo-document vectors, each describing a particular document. Thus, Sommer' s inner product is carried out between two vectors of the same type while the currently claimed dot product is carried out between two vectors of two different types. (Reply Br. 7-8.) We agree with Appellants. Sommer discloses: Document comparisons are made by taking the inner product of pseudo-document vectors. A resulting set of values for matching any of pseudo-document vectors Dz through Ds to all other pseudo-document vectors Dz through Ds represents a document comparison based on the similarity criteria used for creating the concept database .... The resulting set of matching documents is the set of documents in subset S, ranked by how closely they match each other. (Sommer, col. 22, 11. 29-39.) Sommer's comparisons only compare the vectors of individual documents with each other, as opposed to comparing a vector of one data object with a cumulative vector of a number of data objects as recited in claim 2. Accordingly, we find Sommer fails to teach or fairly suggest the disputed limitation in claim 2. 7 Appeal2014-002404 Application 13/286,720 We are, therefore, constrained by the record to find the Examiner erred in rejecting claim 2, and claims 9, 10, and 16 for similar reasons. CONCLUSIONS Under 35 U.S.C. §101, the Examiner erred in rejecting claims 1--4 and 7-14. Under 35 U.S.C. § 102(e), the Examiner did not err in rejecting claims 1, 3, 4, 7, 8, 11-15, 17, 18, and 21-24. Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 2, 9, 10, and 16. DECISION For the above reasons, We affirm the Examiner's rejection of claims 1, 3, 4, 7, 8, 11-15, 17, 18, and 21-24; and We reverse the Examiner's rejection of claims 2, 9, 10, and 16. 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 tj 8 Copy with citationCopy as parenthetical citation