Ex Parte Barsness et al

Board of Patent Appeals and Interferences

Sep 8, 2010

09921332 (B.P.A.I. Sep. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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www uspto gov
26517 7590 09/09/20 10
WOOD, HERRON & EVANS, L.L.P. (IBM)
2700 CAREW TOWER
APPLICATION NO.
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
091921,332 08/02/2001 Eric Lawrence Barsness IBM / 189 5017
FILING DATE
BEKERMAN, MICHAEL
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
MAIL DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
PTOL-90A (Rev. 04/07)
09/09/2010 PAPER
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte ERIC LAWRENCE BARSNESS and
JOHN MATTHEW SANTOSUOSSO
Appeal 2009-009192
Application 09/92 1,3 32
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009192
Application 09/92 1,3 32
STATEMENT OF THE CASE
Eric Lawrence Barsness and John Matthew Santosuosso (Appellants)
seek review under 35 U.S.C. 5 134 (2002) of a final rejection of claims 1-31,
the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b)
(2002).
We AFFIRM.
THE INVENTION
The Appellants invented a method for computer-assisted advertising and
marketing. Specification 1 : 10- 1 1.
An understanding of the invention can be derived from a reading of
exemplary claims 1, 8, 14, and 15, which are reproduced below [bracketed
matter and some paragraphing added].
1. A computer-implemented method of advertising, comprising:
(a) searching a plurality of electronic messages associated with
at least one electronic community to locate a first electronic
message including a query directed to a topic of interest; and
(b) subsequent to locating the first electronic message, sending
a second electronic message including a reply to the query and
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed November 20, 2006) and the Examiner's Answer ("Ans.," mailed
February 9, 2007), and Final Rejection ("Final Rej.," mailed June 16, 2006).
Appeal 2009-009192
Application 09192 1,3 32
an advertisement related to the topic of interest to which the
query is directed.
8. The method of claim 1, wherein the reply includes an answer
to the query.
14. The method of claim 1, further comprising determining
whether the query is capable of being answered, wherein
sending the second electronic message is performed if it is
determined that the query is capable of being answered.
15. The method of claim 1, further comprising determining
whether the query has already been answered, wherein sending
the second electronic message is performed if it is determined
that the query has not yet been answered.
THE REJECTIONS
The Examiner relies upon the following prior art:
Messina et al. US 200410172415 A1 Sep. 2,2004
Claims 1-3 1 stand rejected under 35 U.S.C. 5 103(a) as unpatentable
over Messina and Admitted Prior Art.
ISSUES
The issue of whether the Examiner erred in rejecting 1-31 under 35
U.S.C. 5 103(a) as unpatentable over Messina and Admitted Prior Art turns
on whether Messina and the Admitted Prior Art describe replying to a query,
Appeal 2009-009192
Application 09/92 1,3 32
whether there is a motivation to modify Messina to include the Admitted
Prior Art, and whether such a combination requires impermissible hindsight.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants' Disclosure
01. There are various known search engine algorithms that
determine best fit matches to a particular query and answer based
upon keyword comparisons. Specification 17: 17- 19.
Facts Related to the Prior Art
Messina
02. Messina is directed to systems, methods, and software for
automating the posting and retrieval of content from multiple data
services, such as newsgroups, message boards, forums, as well as
encouraging active participation and growth of on-line
communities. Messina ¶ 0008. Messina is specifically concerned
with searching for and collecting relevant information. Messina
¶'s 0005-0006.
03. Messina describes a method that begins by determining a theme
or topic for a database by storing one or more keywords, concepts,
or other attributes in the fitness and/or theme data. Messina ¶'s
0067-0068. Subsequently, sets of candidate members, which
include websites or portions of websites, are identified, evaluated,
Appeal 2009-009192
Application 09/92 1,3 32
and ranked based on research citations, research numbers, quality
of research papers, and the number and quality of posts as they are
related to the fitness or theme data. Messina ¶' s 0070-007 1. The
identification of candidate members can be done with the use of a
crawler module that has the capability to parse metadata to
determine the fitness of the content. Messina ¶ 0072. After
candidate members are identified, expert, contributor, or
community candidates are recruited or invited to join the website.
Messina ¶ 0074. The crawler module posts messages
encouraging participants of newsgroups, message boards, etc.,
from which it retrieves content to visit or request information
about one or more of its affiliated websites. Messina ¶ 0075. The
messages can include hyperlinks or URLs to the site and an
incentive to visiting the website. Messina ¶ 0075. Based on the
content of a candidate member's post, a reply directly to that post
can include information, such as websites, on-line forums,
newsgroups, etc., with which the candidate member would be
interested in. Messina ¶ 0075.
Facts Related To The Level Of Skill In The Art
04. Neither the Examiner nor the Appellants have addressed the
level of ordinary skill in the pertinent arts of electronic marketing
and advertising systems. We will therefore consider the cited prior
art as representative of the level of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350,1355 (Fed. Cir. 2001)
("[Tlhe absence of specific findings on the level of skill in the art
does not give rise to reversible error 'where the prior art itself
Appeal 2009-009192
Application 09/92 1,3 32
reflects an appropriate level and a need for testimony is not
shown"') (quoting Litton Zndus. Prods., Znc. v. Solid State Sys.
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
Facts Related To Secondary Considerations
05. There is no evidence on record of secondary considerations of
non-obviousness for our consideration.
ANALYSIS
Claims 1-31 rejected under 35 U.S. C. § 103(a) as unpatentable over
Messina and Admitted Prior Art
The Appellants first contend that (1) Messina and the Admitted Prior Art
fail to describe limitations (a) and (b) of claim 1. App. Br. 5. The
Appellants specifically argue that Messina fails to describe the second
message include a specific reply to the query along with an advertisement
related to the topic of interest of the query. App. Br. 6. We disagree with
the Appellants. Limitation (a) requires searching an electronic community's
messages for a message with a query. Limitation (b) further requires
sending a reply message to the query with an advertisement related to the
topic of the query.
Messina describes a method that searches Internet message boards using
a crawler module for content that matches the predetermined content themes
and determines the fitness of that data. FF 03. That is, a crawler reads the
content on message boards for messages that contain content that is related
to the pre-determined theme or fitness criteria. Messina further describes
Appeal 2009-009192
Application 09/92 1,3 32
replying to specific messages by users with websites, on-line forums,
newsgroups, and other information related to the topic of the message posted
by a user. FF 03. As such, Messina describes all of the limitations of claim
1 except that Messina fail to describe that the content of the message
includes a query.
The Appellants admit in the specification that search engine algorithms
that determine best fit matches to a particular query and answer that are
based upon keyword comparisons are known. FF 01. That is, determining
whether a message contains a query is well-known in the art. The
Appellants specifically argue that a reply to a query is distinguished from a
reply to a message (App. Br. 6 and 10); however, the Appellants fail to
provide any specific rationale that highlights the differences between
replying to a message as opposed to replying to a query. Regardless, the
Admitted Prior Art describes detecting a query and the Appellants fail to
provide any further rationale distinguishing the claimed invention from the
prior art. As such, the combination of Messina and the Admitted Prior Art
describes all of the features of limitations (a) and (b) of claim 1. The
Appellants reiterate this argument in support of claims 8, 14-15, 23, and 28-
29 (App. Br. 10- 13); however, this argument is not found persuasive for
claims 8, 14-15,23, and 28-29 for these same reasons discussed supra.
The Appellants additionally contend that (2) the Examiner has relied on
impermissible hindsight since the Examiner used the Appellants' disclosure
in constructing the rejection and there is no motivation to modify Messina in
the manner proposed by the Examiner. App. Br. 6-7. The Appellants
reiterate this argument in support of claims 14-15 and 28-29. App. Br. 12-
13. We disagree with the Appellants. Messina is concerned with the ability
Appeal 2009-009192
Application 09/92 1,3 32
to search for relevant information and provide related information. FF 02.
Messina solves this problem by describing a method that searches through
the Internet for messages with specific content, defined by the user as theme
or fitness data, and providing related information based on that specific
content. FF 03. The Appellants admit that the ability to use search engines
to search messages for queries and answers is known. FF 01. A method that
includes such a feature increases the accuracy and utility of the method by
providing users with information directly related to their message or query.
Since this information was known in the art at the time of the invention, a
person with ordinary skill in the art would have recognized to modifying
Messina's theme or fitness data to require queries or messages that include
questions and such a modification would have yielded predictable results.
Therefore, a person with ordinary skill in the art would have been led to
modify Messina, at the time of the claimed invention, in order to increase the
accuracy and utility of providing replies to messages. As such, this
information and motivation were available to persons with ordinary skill in
the art at the time of the claimed invention.
The Appellants also contend that (3) Messina fails to describe "an
answer to the query" as required by claims 8 and 23. App. Br. 10-1 1. The
Examiner found that a reply to a query is inherently an answer to that query
(Ans. 6); however, the Appellants further argue that an "answer" is
distinguished from a "reply" and therefore the Examiner's rationale is
incorrect. App. Br. 10- 1 1. We disagree with the Appellants. The
Appellants point to two portions of the specification that describes two
different embodiments of an answer. App. Br. 10. However, the
specification explicitly states that these embodiments are only provided as
Appeal 2009-009192
Application 09/92 1,3 32
examples without the intention to limit the scope of the invention.
Specification 5: 19-21. Since these embodiments of the term "answer" are
only examples, the term "answer" is not specially defined in the
specification and the claims do not further limit the scope of an answer.
Therefore, the Appellants are merely arguing limitations that are not
required by the claims. Furthermore, the construction of an "answer" by the
Examiner is reasonable since an answer can reasonable be any response to a
question or query. As such, the Appellants' argument is not found
persuasive.
The Appellants further contend (4) Messina and the Admitted Prior Art
fail to describe determining whether a query is capable of being answered,
such that the second message is sent only if it is determined that the query is
capable of being answered, as per claims 14 and 28. App. Br. 11-12. We
disagree with the Appellants. Messina specifically describes that message
boards are searched for theme and fitness data that is based on keywords or
concepts. FF 03. These replies to the messages are based on the searched
keywords and concepts. FF 03. That is, if a message does not contain data
on a topic or concept that is being searched for, that message is not
responded to. Since the Admitted Prior Art includes the concept of
searching for queries and providing answer (FF Ol), the combination of
Messina and the Admitted Prior Art describe searching for messages that
include queries on specific topics and responding to those specific. As such,
Messina and the Admitted Prior Art describe the limitations of claims 14 and
28.
The Appellants further contend that (5) Messina fails to describe or
suggest determining whether the query has already been answered, wherein
Appeal 2009-009192
Application 09/92 1,3 32
sending the second electronic message is performed if it is determined that
the query has not yet been answered. App. Br. 13. We disagree with the
Appellants. As discussed supra, Messina describes the reading of the
content of messages for keywords and concepts. A person with ordinary
skill in the art would have recognized to include the concept of not
answering a message or query that has already been answered. The
modification of Messina to include this feature would only require minor
adjustments to the key concepts of searching messages and would be done
so as to not appear impersonal and computerized. As such, a person with
ordinary skill in the art would have recognized to modify Messina to include
such a feature in order to maintain an appearance that the replies are not
impersonal or computer and such a modification can be done with
predictable results.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-31 under 35 U.S.C.
5 103(a) as unpatentable over Messina and Admitted Prior Art.
DECISION
To summarize, our decision is as follows.
The rejection of claims 1-3 1 under 35 U.S.C. 5 103(a) as unpatentable
over Messina and Admitted Prior Art is sustained.
Appeal 2009-009192
Application 09/92 1,3 32
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 3 1.136(a). See 37 C.F.R.
3 1.136(a)(l)(iv) (2007).
AFFIRMED
mev
Address
WOOD, HERRON & EVANS, L.L.P. (IBM)
2700 CAREW TOWER
441 VINE STREET
CINCINNATI OH 45202