Ex Parte MA et al

Patent Trial and Appeal Board

Dec 20, 2017

13551284 (P.T.A.B. Dec. 20, 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.
13/551,284 07/17/2012 CHUN E. MA CN920090060US2_8150-0266 4897
73109 7590 12/22/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
ABEDIN, NORMIN
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
12/22/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUN E. MA, XIN SHENG MAO, MATTHEW WANG
LI YI, and JUN ZHANG
Appeal 2017-0069251
Application 13/551,284
Technology Center 2400
Before DENISE M. POTHIER, CARL L. SILVERMAN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—12. Claims 13—20 have been canceled. App. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part.
1 Throughout this opinion, we refer to (1) the Final Action (Final Act.)
mailed March 24, 2016, (2) the Appeal Brief (App. Br.) filed August 16,
2016, (3) the Examiner’s Answer (Ans.) mailed February 13, 2017, and
(4) the Reply Brief (Reply Br.) filed March 30, 2017.
Appeal 2017-006925
Application 13/551,284
Invention
Appellants’ invention relates to a method for processing services. See
Spec. 1:5—6. Example web services include conference organization, flight
booking, and hotel reserving. Id. at 1:13—14. The disclosure explains that
for each of these web services, there are correlated services. Id. at
1:18—20. For example, in addition to booking a flight online, the user may
also need to check the flight’s departure time, to check the airline company’s
information, to confirm the flight, or to pay for the flight. Id. at 1:17—18.
According to Appellants, there are no associations between these services on
networks, requiring copying and pasting of data between services. Id. at
1:22—25. Appellants’ invention is directed to solving this problem. Id. at
1:29-2:3.
Claim 1 is reproduced below with emphasis:
1. A method for processing services, comprising:
receiving a request for a service;
sending the result of the service in which at least one data
item is tagged;
responsive to a selection of the tagged data item,
determining, using a processor, other services associated with
the service based on a service template of the service', and
providing, as options and with the result, the other
services associated with the service;
wherein the other services take the at least one data item
as inputs and provide outputs thereof.
App. Br. 22 (Claims App’x).
The Examiner relies on the following as evidence of unpatentability:
McNeely
Kreder
US 2002/0069222 A1 June 6, 2002
US 2006/0155656 A1 July 13, 2006
2 The real party in interest is listed as IBM Corporation. App. Br. 1.
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Application 13/551,284
The Rejection
Claims 1—12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kreder and McNeely. Ans. 2—10.
THE CONTENTIONS
Claims 1, 11, and 12
Appellants argue Kreder is non-analogous art. App. Br. 7—9. In
particular, Appellants assert Kreder is not in the same field of endeavor as
the inventors’ efforts and “is directed to identifying booksellers for a
textbook associated with a particular course.” Id. at 8. Appellants also
argue Kreder fails to teach the limitation “responsive to a selection of the
tagged data item, determining . . . other services associated with the service
based on a service template of the service” in claim 1. App. Br. 10—11.
Specifically, Appellants argue that the single service being requested in
paragraph 41 of Kreder is comparative pricing/sourcing information for a
textbook and not a requested service and other services associated with the
service as recited in claim 1. Id. at 11, 14.
Appellants further argue the Examiner has not identified the “service
template of the service” and pertinent book information (Ans. 3) is not a
template directly associated with the requested service. App. Br. 14—15.
Appellants also contend the Examiner uses the pertinent book information as
both the recited “data item” and the “service template of the service.” Id. at
15. Lastly, Appellants assert, because only one service exists in Kreder,
there are not “other services associated with the service” and there are not
outputs provided as recited. App. Br. 16; Reply Br. 4.
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ISSUES
(I) Is Kreder analogous art?
(II) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Kreder and McNeely collectively would have taught or
suggested “responsive to a selection of the tagged data item, determining . . .
other services associated with the service based on a service template of the
service”?
(III) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Kreder and McNeely collectively would have taught or
suggested “the other services . . . provide outputs”?
ANALYSIS
I.
Based on the record before us, we determine Kreder is analogous art.
As Appellants correctly indicate (App. Br. 7), “[t]he analogous-art test
requires that the Board show that a reference is either in the field of the
applicant’s endeavor or is reasonably pertinent to the problem with which
the inventor was concerned in order to rely on that reference as a basis for
rejection.” In re Kahn, 441 F.3d 977, 986—87 (Fed. Cir. 2006) (citing In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)).
Turning to the disclosure, the Specification broadly states the
invention relates to “a method ... for processing services.” Spec. 1:6.
Described services in the disclosure include online booking for flights and
hotels, organizing a conference, retrieving a book, obtaining a stock quote, a
searching service, a comparing-performance service, a comparing-price
service, a paying service, and a delivery service. Id. at 1:11—12, 3:19—21,
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26—32, 4:11—28. Kreder likewise is a method for processing services,
including providing a user a course-material list (e.g., retrieving a book) and
comparing prices for the course materials in various ways (e.g., price-
comparison services). Kreder, Abstract, || 19, 41, Fig. 6.
Notably, Appellants do not state what the field of endeavor for the
instant invention is. App. Br. 7—10. At best, Appellants identify “[t]he
function of the claimed invention involves receiving a request for a service,
providing a service, and determining other services associated with the
requested service.” Id. at 8 (emphasis added). Assuming the above-
identified function is what Appellants consider to be within the field of
endeavor, Kreder is still within this field. That is, Kreder receives a request
for course materials, provides this service, and additionally determines other
services (e.g., price comparisons) associated with the course-material
service. Kreder || 19, 41.
Thus, although classified differently (App. Br. 10), the above
discussion demonstrates Kreder is analogous art.
II.
We next consider the disputed limitation of representative claim l3
which calls for, in pertinent part, “responsive to a selection of the tagged
data item, determining . . . other services associated with the service based
on a service template of the service.” Appellants argue that Kreder only
teaches requesting a single service (i.e., comparative pricing/sourcing
3 Appellants have not separately argued dependent claims 11 and 12. See
generally App. Br. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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information for a textbook) and not a requested service and other services
associated with the service as claimed. Id. at 11—12. We are not persuaded.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted). The phrase
“other services” has not been defined in the Specification, such that we must
construe the phrase to have a particular meaning. See generally Spec.
Notably, the disclosure also does not provide an explicit example of what the
recited “other services associated with the service” are. See generally Spec.
For example, the Specification includes an example of a request for
retrieving a book and that other services associated with the service are
provided, but the disclosure does not identify other services other than
possibly providing book prices. See Spec. 4:11—17, 25—28. On the other
hand, as previously noted, the Specification provides examples of
“correlated services” or associated services in the disclosure. Id. at 1:15—18,
3:19-22. The disclosure explains that for each of the discussed web services
(e.g., flight booking), there are other, correlated services (e.g., checking the
flight’s department time, confirming the flight, or paying for the flight). Id.
at 1:13-18.
Although this informs our construction of the recited phrase, “other
services associated with the service,” we decline to import such
embodiments into claim 1. We thus construe the phrase “other services
associated with the service” in claim 1 to have its ordinary meaning, which
includes another tool or function related to the requested service.
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As noted above, Kreder receives a request for course materials,
provides the requested course materials (e.g., the recited “service,”), and
provides other tools or services to the user (e.g., different tools for
comparing prices of course materials) associated with the requested course
materials. Kreder H 19, 41, Figs. 5—6, 8—10; see also Ans. 3. That is,
Kreder teaches various services/tools that relate to the initial service of
providing requested course materials, including (1) the service of providing
the single, cheapest source for the materials (Figure 8), (2) the service of
providing multiple cheapest sources for the materials (Figure 9), and (3) the
service of providing all sources for the materials (Figure 10). Kreder
1130-31, 41, Figs. 5—10; see also Ans. 3 (explaining “‘displaying] the
cheapest single or multiple cheapest suppliers for the required course
material’ . . . could be interpreted as ‘other services associated with the
service . . . .”’) (italics and underlining omitted). The Examiner additionally
states links are generated in Kreder, which direct the user to a book on a
specific vendor’s website (e.g., yet another “other service”). Ans. 3, 12
(citing Kreder 141).
Although initially arguing that providing comparative-pricing
information is a service and is the requested service in Kreder (App. Br. 11),
Appellants later state such providing of comparison book prices cannot be
“other services” because “[information alone is neither a service nor a
plurality of services” (id. at 14). We disagree for the above-stated reasons.
To the extent Appellants contend these comparative-pricing functions are “a
single service” (see Reply Br. 4), we disagree because, as broadly as recited,
each tool (i.e., a service) in Kreder is different, such as one functions to
provide a single cheapest source for the course material (e.g., Figure 8),
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Application 13/551,284
another functions to provide multiple cheapest sources for the course
material (e.g., Figure 9), and yet another functions to provide all sources for
the course material (e.g., Figure 10). See Kreder, Figs. 8—10.
Appellants next assert that the Examiner has not identified the recited
“service template of the service” in the limitation “other services associated
with the service based on a service template of the service.” App. Br. 14.
Appellants contend “‘the service template’ [of the service] is directly
associated with the ‘service’ (i.e., the initially requested service.)” Id. at 15.
Appellants further argue the Examiner has mapped pertinent book
information to both the recited “data item” and “a service template of the
service.” Id.
We disagree that claim 1 requires the recited “service template of the
service” be directly associated with the requested service as argued. Id. at
22 (Claims App’x). That being said, we agree that the “at least one data
item” and “a service template of the service” are separately recited in claim
1 (id.) and cannot be mapped to the same element in Kreder. However, the
Examiner has distinguished the recited “data item” from the recited “service
template.” The Examiner describes the recited “service template” as
comprising an ISBN, title, author, edition, and publisher and the recited
“data item” as comprising the attributes of each of ISBN number, title,
author, edition, and publisher. Ans. 12.
Notably, the phrase “service template of the service” has not been
defined in the Specification. See generally Spec. To be sure, the
Specification states “a service template may refer to the summarized
common features of a kind of service,” and “[//or instance, a URI with a
parameter is a service template.” Spec. 4:15—16, 21 (emphases added). But,
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Application 13/551,284
unlike Appellants’ assertion (Reply Br. 3), these are examples of a service
template. Moreover, Kreder teaches and suggests the ISBN, title, author,
edition, and publisher (e.g., summarized, pertinent information of the
course-material list service) are used to perform the comparative pricing on
the course material in different ways. Kreder || 19, 41, cited in Ans. 3,12.
As such, this information acts as a guide or blueprint of the service (e.g., a
service template of the service) to other services (e.g., determining other
services based on the service template as recited).4 We thus remain
unconvinced, given the record, that the Examiner’s mapping of the recited
“service template of the service” is erroneous.
Moreover, Kreder discloses the results of the request for an initial
service (e.g., providing a list of coursework materials) includes a Title
“Biology” (e.g., a data item). Kreder, Fig. 6. This mapping of the attribute
of title (e.g., “Biology”) to a data item (see Ans. 12) is reasonable, given that
the disclosure has not defined a “data item” and even includes an example of
one such data item that is a book name. See Spec. 3:28—32.
III.
Lastly, Appellants contend Kreder teaches a single service providing
an output and not “other services . . . provide outputs” as recited. App. Br.
16; Reply Br. 4. For the above reasons, we disagree and identified multiple
4 Although not necessary to affirm the Examiner’s rejection, the “other
services” shown in Figures 8—10 are also the result of the user adding the
book name (e.g., selecting a data item, Title “Biology” by ticking the “Add”
box) to the service’s shopping list feature, which has a URI of
www.textbookscene.com/Shopping-List?school=Purdue (e.g., another
example of a service template of the service), for comparison pricing. See
Kreder || 45^49, Figs. 6—10.
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outputs provided by the other services (e.g., a first service of providing the
single, cheapest source for the course material (Kreder’s Figure 8) and the
second service of providing all sources for the course material (Kreder’s
Figure 10)). We refer above for more details.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and dependent claims 11 and 12,
which are not separately argued.
Claims 2, 4, and 7
Representative claim 25 depends from claim 1 and recites in pertinent
part “determining other service templates associated with the service
template.” App. Br. 22 (Claims App’x). Appellants contend that the cited
passage by the Examiner does not mention the pertinent book information,
which has been mapped by the Examiner to the recited “service template.”
Id. at 17 (discussing Kreder 147). We are not persuaded.
First, claim 2 includes the limitations of claim 1. Thus, the rejection
of claim 1 also applies to claim 2’s analysis, including how Kreder teaches
the claimed “service template” and addressing the pertinent book
information. We refer above for more details. Second, paragraph 47 in
Kreder discusses the information the Examiner mapped to the “service
template,” namely the ISBN, title, author, publisher, and edition (e.g., the
collective pertinent information). Kreder 147.
Moreover, Appellants state “the Examiner’s cited passage does not
mention additional ‘pertinent book information’ that is associated with the
5 Appellants have not separately argued dependent claims 4 and 7. See
generally App. Br. We select claim 2 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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initial book information.” App. Br. 17—18. Appellants fail to elaborate, but
we note that claim 2 does not include such a limitation of information
associated with the initial book information. However, to the extent
Appellants are referring to the recitation “other service templates associated
with the service template” in claim 2, we noted previously a service template
is not limited in the disclosure. See generally Spec. Nor do the claims, or
the rejection for that matter, limit the “service template” to one type of
template, such that the service template and other service templates must
both be pertinent book information. See Ans. 5 (discussing Kreder ]f]f 47—
48, Figs. 8—9) (discussing Figures 8 and 9 when addressing “other service
templates” and explaining how pricing charts in the comparative-pricing
tools are generated using the ISBN, title, author, publisher, edition).
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of dependent claim 2 and dependent claims 4 and 7, which
are not separately argued.
Claims 3 and 8—10
Representative claim 36 depends from claim 2 and recites, in relevant
part, “determining the context of the service; and determining the service
template based on the context of that service.” App. Br. 22 (Claims App’x).
Appellants repeat the argument that the Examiner relies on pertinent
information for both the recited “data item” and the recited “service
template.” Id. at 19. We are not persuaded for the above reasons.
Appellants additionally argue that the Examiner has relied on this same
6 Appellants have not separately argued dependent claims 8—10. See
generally App. Br. We select claim 3 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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pertinent information as the recited “context of the service” in claim 3. Id.
We disagree.
Although the Specification states “[t]he context of the service may
comprise its URI” (Spec. 6:1 (emphasis added)), this is not a definition for
“context.” The disclosure further states “[t]he context may comprise one or
more data inputted by users in the service environment, data provided by the
service, or the combinations thereof.” Id. at 6:2-4. As such, “the context of
the service” in claim 3 can include data inputted/selected by the user or data
provided by the service. See id.
As presented, the rejection turns to Kreder’s paragraph 45, Figure 5,
and Figure 6 to teach the recited “context of the service.” Ans. 6, 14.
Specifically, the Examiner states Figure 6 shows a webpage 133 that
“displays the course materials that corresponds to the information previously
entered by the user” shown in Figure 5. Ans. 6 (bolding omitted and italics
added). For example, the user enters or selects the semester, department,
and course (e.g., data selected by the user) from fields 117, 121, and 125 in
Figure 5, and the website determines this previously entered, user
information to generate/display the course materials in Figure 6. See Kreder
|| 44-45, Figs. 5—6. Appellants have not disputed these specific findings
sufficiently. See Reply Br. 6.
Accordingly, Appellants have not persuaded us of error in the
rejection of dependent claim 3 and dependent claims 8—10, which are not
separately argued.
Claims 5 and 6
We reach the opposite conclusion for dependent claims 5 and 6.
Claim 5 depends indirectly from claim 2 and recites, in pertinent part,
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“according to the association scores between the other service templates and
that service template, determining the association scores between the other
services and that service.”7 App. Br. 23 (Claims App’x). Among the
assertions presented, Appellants argue Kreder’s “pricing or availability
information is not an association score, as claimed” because it “is not
reflective of an association ‘between the other service template and that
service template’ as claimed.” Id. at 20.
For this above-quoted limitation, the rejection states Kreder teaches
generating a cheapest single vendor and cheapest multiple vendors. Kreder
141, cited in Ans. 7; see also Ans. 14 (discussing comparative pricing
information addressed in Kreder 141). Kreder’s Figures 8 through 10
suggest to one having ordinary skill in the art determining a score between
the mapped “other services.” Id. H 41—42, Figs. 8—10. For example, Kreder
performs some calculation in order to determine the ordering of the
displayed price comparison features—the Single Source being the first tab
(e.g., 157 given a higher weight), the Multiple Sources being the second tab
(e.g., 158 given a lesser weight), and All Sources being the third tab (e.g.,
161 given the least weight). See id. Fig. 8.
However, the Examiner has not sufficiently explained how Kreder
determines a score between these mapped “other services” (e.g., the various
7 Claim 5 recites “that service template” and “that service.” App. Br. 23
(Claims App’x). Claim 2, from which claim 5 depends indirectly,
previously recited “the service template” and “the service.” Id. at 22. Claim
5 also recites “the association scores” between the other service templates
and the service template, presumably, without previous reciting “association
scores” in claim 5 or in any claims from which claim 5 depends. Similarly,
claim 1 recites “the result of the service” without previously reciting
generating a service result.
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price-comparison tools) and the mapped “service” (e.g., providing the
course-material list) as recited, much less that this score is determined
according to “the association scores between the other service templates and
that service template” as further recited in claim 5. Cited paragraph 41 (Ans.
7, 14) does not assist in explaining the Examiner’s position in this regard,
merely addressing a search that refers to databases to find a course-material
list and a process that allows a user to select books to find pricing
information and links the user to a specific book vendor’s website. See
Kreder 141. The Examiner also fails to explain sufficiently how the
discussed hyperlink a user can use to connect to a book vendor’s website
(see Kreder 142) creates the recited “association scores” in claim 5. Ans. 7,
14.
Accordingly, we do not sustain the rejection of claim 5 and claim 6,
which depends from claim 5.
DECISION
We affirm the Examiner’s rejection of claims 1—4 and 7—12 under
§ 103(a).
We reverse the Examiner’s rejection of claims 5—6 under § 103.
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
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