Ex Parte Wilson

Board of Patent Appeals and Interferences

May 22, 2007

09731019 (B.P.A.I. May. 22, 2007)

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for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte DAVID J. WILSON
___________

Appeal 2007-0896
Application 09/731,019
Technology Center 2100
___________

Decided: May 22, 2007
___________

Before HUBERT C. LORIN, STUART S. LEVY and ANTON W. FETTING,
Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF CASE
This appeal involves claims 1, 2, and 7-17, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C. §§ 6 and
134.

We AFFIRM.

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The Appellant invented a way for users of content on a distributed
communication network to collectively indicate the degree of helpfulness or
usefulness of individual items of content, such as for example reviews of
commercially available products and/or services, usenet postings, news articles,
etc., by interactively voting or indicating that particular items of content were
helpful or otherwise valuable to the user. Subsequent users then are able to sort
retrieved items of content by degree of helpfulness or usefulness according to the
number of previous users who have indicated that the individual items of content
were helpful or otherwise valuable (Specification 1). An understanding of the
invention can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. A method for identifying as being helpful or otherwise valuable
product/service reviews in a database coupled to a distributed
communication network, the method comprising:
displaying product/service reviews from the database on a client
display connected to the database over the network;
providing an interactive element associated with each of the displayed
reviews on the client display, which when clicked by a user, indicates
that the user has found a displayed review associated with a
product/service helpful in determining whether or not to purchase or
use the product/service;
receiving at the database an indication that the user has clicked the
interactive element, and incrementing a count of a stored number of
indications for the review (1) in response to the indication and (2) if
the stored number of indications does not exceed one indication for
the review from the user; and
displaying the count of the stored number of indications for the review
on the client display together with the review.

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This appeal arises from the Examiner’s Non-Final Rejection, mailed June 21,
2005. The Appellant filed an Appeal Brief in support of the appeal on May 3,
2006, and the Examiner mailed an Examiner’s Answer to the Appeal Brief on July
13, 2006. A Reply Brief was filed on September 18, 2006.
PRIOR ART
The prior art references of record relied upon by the Examiner in rejecting the
appealed claims are:
Klingman US 5,950,172 Sep. 7, 1999
Salas US 6,230,185 B1 May 8, 2001
(Jul. 15, 1998)
Epinions.com Preview,
http://web.archive.org/web/19991204120227/www.epinions.com/, Original Date
12/4/99, Printed 2/24/04
NowThis.com, Log 1999 11 November, http://nowthis.com/log/1999/11/24.html,
Original Date 11/24/99, Printed 8/28/04

REJECTIONS
Claims 1-2 and 7-17 stand rejected under 35 U.S.C. § 102(a) as anticipated by,
or in the alternative, under 35 U.S.C. § 103(a) as obvious over NowThis.
Claims 1-2 and 7-17 stand rejected under 35 U.S.C. § 103(a) as obvious over
Epinions and Salas.
Claims 1-2 and 7-17 stand rejected under 35 U.S.C. § 103(a) as obvious over
Klingman.

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ISSUES
The issues pertinent to this appeal are
• Whether the rejection of claims 1-2 and 7-17 under 35 U.S.C. § 102(a) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious
over NowThis is proper.
o Whether NowThis shows or suggests a user interface and whether
NowThis shows or suggests that the interface would have limited
votes to one per person (Br. 9-12).
• Whether the rejection of claims 1-2 and 7-17 under 35 U.S.C. § 103(a) as
obvious over Epinions and Salas is proper.
o Whether the art applied shows or suggests one vote per person,
whether it shows or suggests votes applied toward rating usefulness or
product or service reviews, and whether what the nature of the textual
material the votes apply to can define the invention over the art (Br.
12-15).
• Whether the rejection of claims 1-2 and 7-17 under 35 U.S.C. § 103(a) as
obvious over Klingman is proper.
o Whether the art applied shows or suggests votes applied toward rating
usefulness or product or service reviews, and whether what the nature
of the textual material the votes apply to can define the invention over
the art (Br. 15-16).
In particular, the Appellant contends that what the interface written about in
NowThis is speculative, that the Examiner may not rely on official notice of the
notoriety of one voter per person because other voting methods also exist, that
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Epinions would render Salas unsuitable for its intended purpose, and that
Klingman does not show application to reviewing reviews.

FACTS PERTINENT TO THE ISSUES (FF)
The following facts, supported by a preponderance of substantial evidence, are
pertinent to the above issues.
01. NowThis shows a copy of a textual display as it appeared on the
Amazon.com web site.
02. At the end of the textual display, as it appeared on the Amazon.com web
site, there is a statement that “1 people found this review helpful. 0 did
not.” This is followed by the question “Was it helpful to you?”. This
question in turn is followed by two possible answers in brackets, “[YES]”
and “[NO].” The brackets with answers within them imply the reader is to
select one of the answers, and that the selection would be transmitted to
Amazon.com. Such a query followed by potential answers to select would
have presented a user interface on the Amazon.com web site to solicit the
requested information.
03. The statement as to how many people did and did not find the review
helpful, implies that Amazon retains a count of how may YES and NO
responses are transmitted.
04. Thus, NowThis shows that the Amazon.com web site had a user interface
that displayed product/service reviews from a database on a client display
connected to the database over the network; provided an interactive
element associated with each of the displayed reviews on a client display,
which when clicked by a user, indicated that the user has found a
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displayed review associated with a product/service helpful in determining
whether or not to purchase or use the product/service; received at the
database an indication that the user has clicked the interactive element, and
incrementing a count of a stored number of indications for the review in
response to the indication; and displayed the count of the stored number of
indications for the review on the client display together with the review.
05. However, NowThis is silent as to whether the count was incremented if
the stored number of indications did not exceed one indication for the
review from the user.
06. The Examiner has taken official notice of the notoriety of one vote per
person (Answer 3-7).
07. It is clear that any count of the number of positive and negative reviews
would be meaningless were a single voter able to cast multiple votes.
08. Thus, the nature of the subject matter being voted on in NowThis suggests
that the count was incremented if the stored number of indications did not
exceed one indication for the review from the user.
09. Epinions presents a user interface similar to that discussed regarding
Amazon.com in FF02& 03 at the bottom of the page marked 10.
10. Epinions is explicitly a review of reviews (Epinions, p. 8, “Who needs
another buying guide… to rate the opinions …”)
11. Salas explicitly limits votes to one per voter (Salas, col. 16, ll. 51-54).
12. Salas’s votes apply to questions posed by a discussion group related to
products and services.
13. Thus, a person of ordinary skill in the art would have consulted both
Epionions and Salas in the design of a user interface for reviews related to
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products, and would have understood from Salas the importance of Salas’
teaching of one vote per voter in designing Epinion’s voting.
14. A display of reviews is non-functional descriptive material.
15. Thus, claim 1 is directed toward voting on a review of non-functional
descriptive material.

PRINCIPLES OF LAW
In order to determine whether a prima facie case of obviousness has been
established, we considered the three factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art. We also considered the requirement, as recently re-stated
in In re Kahn, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006), for a showing of a
“teaching, suggestion, or motivation” to modify or combine the prior art teaching.
As to this test, the court explained,
The ‘motivation-suggestion-teaching’ test asks not merely what the
references disclose, but whether a person of ordinary skill in the art,
possessed with the understandings and knowledge reflected in the
prior art, and motivated by the general problem facing the inventor,
would have been led to make the combination recited in the claims….
From this it may be determined whether the overall disclosures,
teachings, and suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons having
ordinary skill in the art at the time of the invention – support the legal
conclusion of obviousness.

441 F.3d at 988, 78 USPQ2d at 1337 (internal citations omitted). It is not just
the explicit teachings of the art itself, but also the understandings and knowledge
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of persons having ordinary skill in the art, that play a role in applying the
motivation-suggestion-teaching test.
The Federal Circuit has repeatedly recognized that to establish a prima facie
case of obviousness, the references being combined do not need to explicitly
suggest combining their teachings. See e.g., In re Kahn, 441 F.3d at 987-88, 78
USPQ2d at 1336 (“the teaching, motivation, or suggestion may be implicit from
the prior art as a whole, rather than expressly stated in the references”); and In re
Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (“for the
purpose of combining references, those references need not explicitly suggest
combining teachings”). The court recently noted,
An explicit teaching that identifies and selects elements from different
sources and states that they should be combined in the same way as in
the invention at issue, is rarely found in the prior art. As precedent
illustrates, many factors are relevant to the motivation-to-combine
aspect of the obviousness inquiry, such as the field of the specific
invention, the subject matter of the references, the extent to which
they are in the same or related fields of technology, the nature of the
advance made by the applicant, and the maturity and congestion of the
field.
In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006).
Nonfunctional descriptive material cannot render nonobvious an invention that
would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d
1862, 1864 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ
401, 404 (Fed. Cir. 1983) (when descriptive material is not functionally related to
the substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability).
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ANALYSIS
We note that the Appellant argue these claims as a group. Accordingly, we
select claim 1 as representative of the group.
Claims 1-2 and 7-17 rejected under 35 U.S.C. § 102(a) as anticipated by, or in the
alternative, under 35 U.S.C. § 103(a) as obvious over NowThis.
From the above Findings of Fact, supported by substantial evidence, we
conclude that
• NowThis suggests, but does not anticipatorily show, a user interface and
whether that NowThis shows or suggests that the interface would have
limited votes to one per person (FF 04& 08).
As to the Appellants’ contention that Amazon.com’s user interface is
speculation, the interface display is presented directly in NowThis, and the
question and answers imply how a person of ordinary skill in the art would have
understood Amazon.com’s site to have reacted to selection of an answer. As to the
Appellants’ contention that there are other voting methods available, the nature of
the material being voted on requires one vote per person, and thus the general
problem facing the inventor would have led a person of ordinary skill in the art to
the use of one vote per person.
Accordingly we sustain the Examiner's rejection of claims 1-2 and 7-17 under
35 U.S.C. § 103(a) as obvious over by NowThis, but we do not sustain the
rejection under 35 U.S.C. § 102(a) as anticipated by NowThis.

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Claims 1-2 and 7-17 rejected under 35 U.S.C. § 103(a) as obvious over Epinions
and Salas.
From the above Findings of Fact, supported by substantial evidence, we
conclude that
• The art applied shows or suggests one vote per person, and it shows or
suggests votes applied toward rating usefulness or product or service
reviews (FF 10&13).
• The nature of the textual material the votes apply to cannot define the
invention over the art because the descriptive material is not functionally
related to the substrate (see Ngai).
As the Examiner has shown how the combination of Epinions and Salas
describes the remaining claimed subject matter, we do not find reversible error.
Accordingly we sustain the Examiner's rejection of claims 1-2 and 7-17 under
35 U.S.C. § 103(a) as obvious over Epinions and Salas.

Claims 1-2 and 7-17 rejected under 35 U.S.C. § 103(a) as obvious over Klingman.
From the above Findings of Fact, supported by substantial evidence, we
conclude that
• The nature of the textual material the votes apply to cannot define the
invention over the art because the descriptive material is not functionally
related to the substrate (see Ngai).
As the Examiner has shown how Klingman describes the remaining claimed
subject matter, we do not find reversible error.
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Accordingly we sustain the Examiner's rejection of claims 1-2 and 7-17 under
35 U.S.C. § 103(a) as obvious over Klingman.

DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-2 and 7-17 under 35 U.S.C. § 102(a) as anticipated
by NOWTHIS is not sustained, but the rejection under 35 U.S.C. § 103(a) as
obvious over NOWTHIS is sustained.
• The rejection of claims 1-2 and 7-17 under 35 U.S.C. § 103(a) as obvious
over Epinions and Salas is sustained.
• The rejection of claims 1-2 and 7-17 under 35 U.S.C. § 103(a) as obvious
over Klingman is sustained.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).

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vsh
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SCHWEGMAN, LUNDBERG, WOESSNER & KLUTH/EBAY
P.O. BOX 2938
MINNEAPOLIS MN 55402

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