Martin B. Scholz et al.

Patent Trials and Appeals Board

Nov 14, 2019

12533763 - (D) (P.T.A.B. Nov. 14, 2019)

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.
12/533,763 07/31/2009 Martin B. Scholz 82258100 8212
146568 7590 11/14/2019
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
ALMANI, MOHSEN
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
11/14/2019 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARTIN B. SCHOLZ, SHYAM SUNDAR RAJARAM,
GEORGE FORMAN, RAJAN LUKOSE, and HENRI J. SUERMONDT
____________________

Appeal 2018-000772
Application 12/533,763
Technology Center 2100
____________________
Before JEFFREY S. SMITH, TERRENCE W. McMILLIN, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which are all the claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hewlett-
Packard Development Company, LP. Appeal Br. 3. On January 24, 2018, a
statement under 37 C.F.R. § 3.73(b) was filed showing an assignment to
ENTIT Software LLC.
2 Our Decision refers to Appellant’s Appeal Brief filed June 1, 2017
(“Appeal Br.”); Appellant’s Reply Brief filed October 31, 2017 (“Reply
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Application 12/533,763

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CLAIMED SUBJECT MATTER
Claims 1, 8, and 16 are independent claims. Claim 1 is reproduced
below.
1. A method of receiving Website content, comprising:
generating a user profile comprising a cluster type
obtained from a list of cluster types, wherein the list of cluster
types is generated by processing, via a clustering algorithm, a
word-Website matrix generated from a database of search
queries performed by a plurality of users;
wherein the cluster type is added to the user profile in
response to Web activity associated with the user profile;
wherein each cluster type in the list of cluster types
corresponds with a unique cluster generated by the clustering
algorithm and includes a grouping of Websites and grouping of
words that pertain to the Websites; and
providing the cluster type included in the user profile to a
selected Website, wherein the cluster type provided to the
Website is used by the Website, at least in part to personalize
content to the user profile.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Pashupathy et al. US 6,574,660 B1 June 3, 2003
Turpin et al. US 2008/0189169 A1 Aug. 7, 2008
Zamir et al US 7,693,827 B2 Apr. 6, 2010

REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Turpin, Zamir, and Pashupathy. Final Act. 2–19.

Br.”); Examiner’s Answer mailed September 1, 2017 (“Ans.”); and Final
Office Action mailed January 5, 2017 (“Final Act.”).
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Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Ans. 3–5.

ANALYSIS
Rejection under 35 U.S.C. § 103(a)
Appellant argues the Examiner erred in finding the combination of
Zamir and Turpin teaches the limitation of claim 1 reciting that “the list of
cluster types is generated by processing, via a clustering algorithm, a word-
Website matrix generated from a database of search queries performed by a
plurality of users.” Appeal Br. 8–11; Reply Br. 7–10. In particular,
Appellant argues that, in Turpin, “the keyword/webpage matrix is generated
by its web crawling application crawling web pages on the Internet, not by
considering a database of search queries performed by a plurality of users.”
Appeal Br. 8. The Examiner, however, relies on Zamir to teach “a database
of search queries performed by a plurality of users,” as recited in claim 1.
Final Act. 3–4 (citing Zamir, col. 2, ll. 56–65, col. 20, ll. 46–47). Zamir
discloses that “a search engine utilizes user profiles to customize search
results,” that “[a] user profile comprises multiple items that characterize a
user’s interests or preferences,” and that “[t]hese items are extracted from
various information sources, including previous search queries submitted by
the user.” Zamir, col. 2, ll. 56–65. Zamir also discloses that “[t]he user’s
profile is obtained (1104) from a database or repository of user profiles.”
Zamir, col. 20, ll. 46–47. Thus, Zamir teaches retrieving user profiles from a
database and using the user profiles, which include previous search queries
by the users, to customize search results. Zamir’s database contains search
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queries, and, therefore, we disagree with Appellant’s assertion that Zamir’s
database does not teach “a database of search queries.” See Reply Br. 10.3
Appellant also argues that Zamir does not “disclose[] or render[]
obvious a word-Website matrix generated from a database of search queries
performed by a plurality of users.” Appeal Br. 9. The Examiner, however,
relies on Turpin in combination with Zamir to teach this subject matter.
Final Act. 3–4; see In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citation omitted) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
Appellant argues that “no plausible reason has been set forth to
explain why one of ordinary skill in the art would have derived the claimed
invention, absent impermissible hindsight gleamed solely from the present
application” (Appeal Br. 10), but Appellant fails to address the Examiner’s
stated rationale for combining the teachings of Turpin and Zamir. In
particular, the Examiner concludes that “it would have been obvious to one
of the ordinary skill in the art, at the time of the invention, to combine the
applied references and include ‘a database of search queries performed by a
plurality of users’ in Turpin because doing so would provide ‘a list of
sources of user information that are beneficial for user profile construction.’”
Final Act. 3–4 (quoting Zamir, col. 4, ll. 45–46). Zamir discloses that “a
search engine user’s past search activities provide useful hints about the
user’s personal search preferences” and “provides a list of sources of user

3 Although Appellant refers to column 20 of Turpin, we understand
Appellant’s argument to be directed to column 20 of Zamir, on which the
Examiner relied.
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information that are beneficial for user profile construction.” Zamir, col. 4,
ll. 43–46. Thus, the Examiner’s articulated reasoning for the combination
finds support in the disclosure of the prior art, namely Zamir’s teaching of
the benefit of considering the past search activities of users.
Based on the foregoing, we are not persuaded the Examiner erred in
finding the combination of Zamir and Turpin teaches the limitation of
claim 1 reciting that “the list of cluster types is generated by processing, via
a clustering algorithm, a word-Website matrix generated from a database of
search queries performed by a plurality of users.” We also are not persuaded
of error in the Examiner’s articulated reasoning in support of the
combination of Zamir and Turpin. Thus, we sustain the Examiner’s
obviousness rejection of claim 1. Appellant does not present additional
persuasive arguments as to the Examiner’s obviousness rejection for
claims 2–20. See Appeal Br. 11–13. Therefore, we sustain the Examiner’s
obviousness rejection of claims 1–20.

Rejection under 35 U.S.C. § 101
Principles of Law
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
the following implicit exceptions: laws of nature, natural phenomena, and
abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
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Labs., Inc., 566 U.S. 66, 75–77 (2012)). The first step determines what
concept the claim is “directed to.” See id. at 219. The second step
“examine[s] the elements of the claim to determine whether it contains an
‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Id. at 221 (citation omitted). That “search for
an ‘inventive concept’” examines “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id. at
217–18 (alterations in original) (quoting Mayo, 566 U.S. at 77).
The PTO has published revised guidance on the application of § 101,
which describes considerations in determining whether recited elements
amount to “significantly more” than the abstract idea itself. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(USPTO Jan. 7, 2019) (“Eligibility Guidance”). In its Step 2B, the
Eligibility Guidance explains that the second step of the Alice and Mayo
framework considers whether an additional element or combination of
elements recited in the claim “[a]dds a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept” or “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.”
Id. at 56.
Our reviewing court has explained that “whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) (citing Microsoft Corp. v. i4i Ltd.
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P’ship, 564 U.S. 91, 95 (2011)). The PTO released guidance addressing the
requirements of Berkheimer in its April 19, 2018 Memorandum of Changes
in Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (“Berkheimer
Memorandum”). The Berkheimer Memorandum requires the Examiner to
support a finding that claim elements are well-understood, routine, and
conventional by providing any of the four categories of information:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional element(s). . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood, routine,
conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the additional
element(s). . . .
Berkheimer Memorandum at 3–4.

Discussion
The Examiner’s § 101 rejection focuses on claim 1 as representative
of the independent claims (Ans. 3–5), and Appellant argues the § 101
rejection by focusing on claim 1 (Reply Br. 2–7). We select independent
claim 1 as representative of Appellant’s arguments for the § 101 rejection of
independent claims 1, 8, and 16. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
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Ans. 3. Addressing the second step of the Alice patent-eligibility inquiry,
which corresponds to Step 2B of the Eligibility Guidance, the Examiner
finds as follows:
[R]epresentative claim 1 does not amount to significantly more
than “Collecting information, analyzing it, and displaying certain
results of the collection and analysis (Electric Power Group)”
and “Customizing information and presenting it to users based
on particular characteristics (Int. Ventures v. Cap One Bank)”
because clustering algorithm and word-Website are generic
computing elements for analyzing data; the features do not
provide meaningful limitations to transform the abstract idea into
a patent eligible application of the abstract idea such that the
claim amounts to significantly more than the abstract idea itself.
Ans. 5.
Appellant argues that “the Examiner’s Answer summarily concludes
that the ‘clustering algorithm’ and ‘word-Website’ are generic computing
elements for analyzing data” but “fails to introduce any evidence or
reasoning, to support such a conclusion.” Reply Br. 6.
We are persuaded that the Examiner has not established that the
recited “clustering algorithm” and “word-Website matrix” “do not provide
meaningful limitations to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim amounts to significantly
more than the abstract idea itself.” See Ans. 5. In particular, the Examiner
finds that these “are generic computing elements for analyzing data”
(Ans. 5), but the Examiner does not establish that these are well-understood,
routine, and conventional as required by the Berkheimer Memorandum,
discussed above. The record clearly establishes that this subject matter was
known in the prior art because Turpin discloses “a clustering algorithm [that]
is applied to the keyword/webpage matrix to compute keyword clusters.”
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Turpin ¶ 82; see also Appeal Br. 8 (quoting this disclosure of Turpin). As
the Federal Circuit has explained, however, “[w]hether a particular
technology is well-understood, routine, and conventional goes beyond what
was simply known in the prior art. The mere fact that something is disclosed
in a piece of prior art, for example, does not mean it was well-understood,
routine, and conventional.” Berkheimer, 881 F.3d at 1369. Thus, the
Examiner’s obviousness rejection and our affirmance of that rejection are
not by themselves sufficient to sustain the § 101 rejection on this record.
Therefore, we are constrained by the record to reverse the Examiner’s
§ 101 rejection of claim 1, as well as the § 101 rejection of independent
claims 8 and 16, which also recite “clustering algorithm” and “word-Website
matrix,” and the § 101 rejection of dependent claims 2–7, 9–15, and 17–20.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 103(a) Turpin, Zamir,
Pashupathy
1–20
1–20 101 Eligibility 1–20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED