Ex Parte Bayardo et al

Patent Trial and Appeal Board

Jun 21, 2016

12107381 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/107,381 04/22/2008 Roberto J. Bayardo
26192 7590 06/23/2016
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
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.
16113-0622001 9623
EXAMINER
BER ONA, KIMBERLY SUE
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO J. BAYARDO,
RAJAT JAIN,
RAMAKRISHNAN SRIKANT, and
DIANE L. TANG
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Application 12/107 ,3 81 1
Technology Center 3600
Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
JAMES A. WORTH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roberto J. Bayardo, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1, 6-11, 15, 16 and 19-21.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Google Inc. as the real party in interest. Br. 1.
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THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method, comprising:
determining, by data processing apparatus, a baseline
performance metric for first online content that was provided in
response to previously received search queries, the baseline
performance metric for the first online content being determined
based on a first number of user interactions with the first online
content when provided in response to the received search queries;
determining, by data processing apparatus, a second
performance metric for second online content that is selected to be
provided based on an expanded query, the expanded query including a
search query that was received from a user device and additional
terms that were selected based on a query expansion rule, the second
performance metric being based on a second number of user
interactions with the second online content when provided in response
to the expanded query;
determining, by data processing apparatus, that the second
performance metric is less than the baseline performance metric;
classifying, by data processing apparatus, the query expansion
rule as an invalid query expansion rule based on the second
performance metric being less than the baseline performance metric;
and
preventing the invalid query expansion rule from being used to
select additional online content.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bern US 7,647,242 B2 Jan. 12,2010
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Efron, "Bootstrap Methods: Another Look as the Jackknife," 1977.
[Efron]
Zoubir et al., "The Bootstrap and its Application in Signal
Processing," 1998. [Zoubir]
Dupret at al., "Recommending Better Queries Based on Click-
Through Data" 2005. [Dupret]
Caverlee et al., "Distributed Query Sampling: A Quality-Conscious
Approach," 2006. [Caverlee]
The following rejections are before us for review:
1. Claims 1, 6-11, 15, 16 and 19-21 are rejected under 35 U.S.C. §101
as being directed to non-statutory subject matter.
2. Claims 1, 6-16 and 19-21 are rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description
requirement. 2
3. Claims 1, 6-16, and 19-21 are rejected under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
2 This rejection on appeal concerns changes to the claims made by an
Amendment filed on September 28, 2011. The Answer also includes, as a
new ground, a rejection of claims 1, 6-11, 15, 16, and 19-21 under 3 5
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, that concerns changes to the claims made by an
earlier Amendment filed on April 14, 2011. We will address them together.
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distinctly claim the subject matter which applicants regards as the
invention. 3
4. Claim 1 is rejected under 35 U.S.C. §102(b) as being anticipated by
Du pr et.
5. Claims 1, 9-11, and 19-21 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Bern and Dupret.
6. Claims 6, 7, 15, and 16 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Bern, Dupret and Zoubir.
7. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bern, Dupret, Zoubir, Efron, and Caverlee.
ISSUES
Did the Examiner err in rejecting claims 1, 6-11, 15, 16, and 19-21
under 35 U.S.C. §101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1, 6-16, and 19-21 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement?
Did the Examiner err in rejecting claims 1, 6-16, and 19-21 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
3 This rejection on appeal concerns changes to the claims made by an
Amendment filed on Sep. 28, 2011. The Answer also includes, as a new
ground, a rejection of claims 1, 6-11, 15, 16 and 19-21under35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicants regards as the
invention, that concerns changes to the claims made by an earlier
Amendment filed on Apr. 14, 2011. We will address them together.
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particularly point out and distinctly claim the subject matter which
applicants regards as the invention?
Did the Examiner err in rejecting claim 1 is rejected under 35 U.S.C.
§ 102(b) as being anticipated by Dupret?
Did the Examiner err in rejecting claims 1, 9-11, and 19-21 under
35 U.S.C. §103(a) as being unpatentable over Bern and Dupret?
Did the Examiner err in rejecting claims 6, 7, 15, and 16 under
35 U.S.C. §103(a) as being unpatentable over Bern, Dupret and Zoubir?
Did the Examiner err in rejecting claim 8 under 35 U.S.C. §103(a) as
being unpatentable over Bern, Dupret, Zoubir, Efron, and Caverlee?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1, 6--11, 15, 16and19-21under35 U.S.C. §101 as
being directed to non-statutory subject matter.
The Appeal Brief contains no argument challenging this rejection.
Accordingly it is sustained.
The rejection of claims 1, 6--16, and 19-21 under 35 U.S.C. §112,first
paragraph, as failing to comply with the written description requirement.
Regarding the Amendment filed on April 14, 2011,
which involved rewriting almost every word in the claim
[Claim 1] .... However, Examiner was unable to find any support for
'determining, by data processing apparatus, a baseline performance
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metric for first online content that was provided in response to
previously received search queries"; for example, the idea of
"previously received" search queries is nowhere in the Specification,
and also, the word "content" is not combined with "provide" or
"provided" or "providing" in the sense used in the claim.
Examiner's Answer 24-25.
The Appeal Brief contains no argument challenging the Examiner's
position. Accordingly the rejection is sustained for the reasons stated by the
Examiner.
Regarding the Amendment filed on September 28, 2011, the
Examiner takes the position that the following limitations lack written
descriptive support in the Specification:
1. "2nd performance metric [for second online content] being less
than baseline performance metric [for first online content] leading
to classification of query expansion rule as invalid";
2. "preventing invalid rule from being used to select additional online
content"· and
' '
3. "'performance metric based on a {first, second} number of user
interactions'."
Non-Final Rejection4 9.
Compliance with the written description requirement is a question of
fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985). To satisfy this requirement, the specification must describe the
invention "in sufficient detail [so] that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing
4 Mailed Oct. 24, 2011.
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date sought." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997); see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d
1336, 1345 (Fed. Cir. 2005); Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed.
Cir. 1995).
As to the second performance metric being less than a baseline
performance metric, the Appellants argue that FIGURE 3 and paragraphs 72,
73, and 77 of the Specification provide adequate written descriptive support.
See Br. 5.
There is no mention of a second performance metric being less than a
baseline performance metric in FIGURE 3. Nor do paragraphs 72, 73, and
77. Paragraphs 72 and 73 describe an expansion rule performance based on
the performance of a content items and "[t]he number of clicks can be
compared to the baseline performance to determine if the content items
outperform the baseline performance." And paragraph 77 describes
preventing invalid query expansion rules from being used when they "result
in underperforming content items relative to the baseline performance."
"[T]he specification must contain an equivalent description of the
claimed subject matter." Lockwood, 107 F.3d at 1572. "To satisfy this
requirement, the [S]pecification must describe the invention in sufficient
detail so 'that one skilled in the art can clearly conclude that the inventor
invented the claimed invention as of the filing date sought.'" In re Alonso,
545 F.3d 1015, 1019 (Fed. Cir. 2008) (citation omitted.).
The disclosures cited by Appellants describe an expansion rule
performance based on a determination that content items outperform a
baseline performance and preventing invalid query expansion rules from
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being used if the content items underperform. But the claims require more.
What is disclosed is not equivalent to what is claimed. According to
claim 1, for example, the second performance metric is for second online
content selected to be provided based on an expanded query based on a
second number of user interactions with the second online content when
provided in response to the expanded query. If this particular second
performance metric is determined to be less than the baseline performance
metric, then the query expansion rule is classified as an invalid query
expansion rule and prevented from being used to select additional online
content.
It may be obvious from the disclosure in the Specification to
determine if the claimed second performance metric is less than a baseline
performance metric and, if so, classifying a query expansion rule as an
invalid query expansion rule and preventing the query expansion rule from
being used to select additional online content as claimed. But, "[ o ]ne shows
that one is 'in possession' of the invention by describing the invention, with
all its claimed limitations, not that which makes it obvious." Lockwood, 107
F.3d at 1572 (citation omitted).
As to "preventing invalid rule from being used to select additional
online content," we are unpersuaded by the Appellants' arguments. The
Appellants argue that "one of ordinary skill in the art would understand that
'prevent[ ing] an invalid query expansion rule from being used,' as recited by
stage 325 of FIGURE 3 prevents the 'invalid rule from being used to select
additional online content,' as recited by claim 1" and
one of ordinary skill in the art would understand from this disclosure
that "the query expansion rule [is classified] as an invalid query
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Br. 6.
expansion rule based on the second performance metric being less
than the baseline performance metric," and that "the invalid query
expansion rule [is prevented] from being used to select additional
online content," as recited by claim 1.
But we can find no disclosure relative stage 325 of FIGURE 3
describing preventing an invalid rule from being used "to select additional
online content." According to the Specification, "stage 325 prevents invalid
query expansion rules from being used. Invalid query expansion rules
identify expanded queries that result in under-performing content items
relative to the baseline performance." Para. 77. Based on this disclosure,
stage 325 of FIGURE 3 would appear to prevent an invalid rule from being
used to select under-performing content items relative to the baseline
performance, rather than, more broadly, "additional online content." Again,
it may be obvious but "[o]ne shows that one is 'in possession' of the
invention by describing the invention, with all its claimed limitations, not
that which makes it obvious." Id. For that reason, the Appellants' argument
which focuses on stage 325 of FIGURE 3 as providing adequate written
descriptive support is unpersuasive as to error in the rejection.
As to "'performance metric based on a {first, second} number of user
interactions'," the Appellants argue that the Specification at paragraphs 20
and 21 provide adequate written descriptive support for the claimed "user
interactions." Br. 7. We agree. The disclosure of, for example, a user
completing an action on a website and clicks are sufficient detail so that one
skilled in the art can clearly conclude that the Appellants had possession of
using a number of "user interactions" on which a basis for a performance
metric as of the filing date sought. Other possibilities that the phrase "user
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interactions" would reasonably broadly cover as of the filing date are not
apparent.
For the foregoing reasons, the rejection is sustained.
The rejection of claims 1, 6-16, and 19-21under35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regards as the invention.
Regarding the Amendment filed on April 14, 2011,
[t]he above difficulty ["unable to find any support"] is compounded
by inability to determine the subject of "was provided", i.e. to which
"that" refers: grammatically it should be "content", but the subject and
verb do not obviously agree, as content may be plural, as suggested by
"in response to ... queries" and not clarified by the Specification,
which makes numerous uses of "content items" ( "topics engine 235
can identify keywords related to the content items, for example, by
retrieving text snippets from a web page associated with the content
items" "the content items can be a variety of other content (e.g., video,
audio, text, news feeds, digital print, and images)" ) and some of
"content item" or "content request" or "content server", wherein
"content" is used as an adjective, rather than being used "as a noun.
Whether the claim phrase means instead "baseline performance ... that
was provided" or "metric ... that was provided" is not clear.
Examiner's Answer 25.
The Appeal Brief contains no argument challenging the Examiner's
position. Accordingly the rejection is sustained for the reasons stated by the
Examiner.
Regarding the Amendment filed on September 28, 2011, the
Examiner takes the position that the following limitations render the claims
indefinite:
1. "when provided," and,
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2. "bas[ing] the first metric on multiple previously received search
queries, and a second metric on only one search query received
from a user device and additional terms based on an expansion
rule"
Non-Final Action 11.
We disagree with the Examiner's position for the reasons stated in the
Brief. Moreover, the Examiner's statements give no indication that the
claims have been read in light of the Specification. Nor has a claim
construction analysis been conducted in an attempt to ascertain the meaning
of the claim terms. "If the claims, read in the light of the specification,
reasonably apprise those skilled in the art both of the utilization and scope of
the invention, and if the language is as precise as the subject matter permits,
the courts can demand no more." Georgia-Pacific Corp. v. U.S. Plywood
Corp., 258 F.2d 124, 136 (2d Cir. 1958). The questions of scope and the
hypothetical possibilities the claims could cover reflects a concern over the
breadth of the claims. But "[b]readth is not indefiniteness." In re Gardner,
427 F.2d 786, 788 (CCPA 1970).
The rejection of claim 1 is rejected under 35 U.S. C. §102(b) as being
anticipated by Dupret.
We reverse this rejection. The Examiner's position is difficult to
follow. Claim 1 is reproduced and then the reader is directed to "see" large
sections of pages 4---6 of Dupret, also reproduced, that apparently "teach[ ]"
all the subject matter that is claimed. Non-Final Action 13-16. It is not clear
and the Examiner does explain in any detail where, for example, Dupret
describes, expressly of inherently,
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classify[ ing] a query expansion rule based on the "number of user
interactions with second online content" that occur when the second
online content is "provided in response to the expanded query"
relative to the "number of user interactions with the first online
content" that occur when the first online content is "provided in
response to the received search queries,"
as claimed as the Appellants have argued. Br. 12.
We observe that a detailed explanation, albeit belated, is provided in
the Response to Argument section of the Examiner's Answer. See
Answer 40-47. Nevertheless, that explanation relies heavily on the
Examiner's interpretation of various claim terms. For example, "[t]he
'redefined' query [of Dupret] is the expanded query [of claim 1]."
Answer 41. However, the interpretations are not supported by a claim
construction analysis that gives the claim terms, like "expanded query," the
broadest reasonable interpretation in light of the Specification as they would
be interpreted by one of ordinary skill in the art. "[C]laims are to be read in
the light [of the specification], not in a vacuum." In re Dean, 291F.2d947,
951 (CCP A 1961 ). Anticipation is determined by first construing the claims
and then comparing the properly construed claims to the prior art. In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1346 (Fed. Cir. 2002)
Futhermore, the Examiner's interpretations lead the Examiner to
argue, in effect, that Dupret inherently describes what is claimed. For
example, after finding that "Dupret teaches consistency of a query and a
document," the Examiner reasons that
the consistency of the set of documents returned with the query
causing those documents to be returned (or lack of consistency) might
represent the second measure of performance, that consistency having
been defined as "based on a second number of user interactions with
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[second] online content provided in response to [multiple submissions
of] the query" ....
Answer 43-44 (emphasis added). Yet "[i]nherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient."
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939), quoted in
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991 ).
The rejection is not sustained.
The rejection of claims 1, 9-11, and 19-21under35 U.S.C. §103(a) as
being unpatentable over Bem and Dupret.
The rejection of claims 6, 7, 15and16 under 35 U.S.C. §103(a) as being
unpatentable over Bem, Dupret and Zoubir.
The rejection of claim 8 under 35 U.S.C. §103(a) as being unpatentable over
Bem, Dupret, Zouhir, Efron, and Caverlee.
We will reverse these rejections for reasons similar to those stated
above with respect to the anticipation rejection; that is, the discussion at
Non-Final Action 17-20 does not provide any detail as to where, for
example, Dupret discloses,
"classifying ... the query expansion rule as invalid based on the second
performance metric being less than the baseline performance metric,"
where "the baseline performance metric for the first online content [is]
determined based on a first number of user interactions with the first
online content when provided in response to the received search
queries," and where "the second performance metric [is] based on a
second number of user interactions with the second online content
when provided in response to the expanded query,"
as claimed as the Appellants have argued. Br. 12.
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CONCLUSIONS
The rejection of claims 1, 6-11, 15, 16, and 19-21under35 U.S.C.
§ 101 as being directed to non-statutory subject matter is affirmed.
The rejection of claims 1, 6-16, and 19-21under35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement is
affirmed.
The rejection of claims 1, 6-16, and 19-21under35 U.S.C. §112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regards as the invention
is reversed.
The rejection of claim 1 is rejected under 35 U.S.C. § 102(b) as being
anticipated by Dupret is reversed.
The rejection of claims 1, 9-11, and 19-21under35 U.S.C. § 103(a)
as being unpatentable over Bern and Dupret is reversed.
The rejection of claims 6, 7, 15 and 16 under 35 U.S.C. §103(a) as
being unpatentable over Bern, Dupret and Zoubir is reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Bern, Dupret, Zoubir, Efron, and Caverlee is reversed.
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DECISION
The decision of the Examiner to reject claims 1, 6-11, 15, 16, and 19-
21 is affirmed.
AFFIRMED
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