Ex Parte Bhasin et al

Patent Trial and Appeal Board

Jun 27, 2018

13931471 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/931,471 06/28/2013 Anmol Bhasin
45839 7590 06/29/2018
Schwegman Lundberg & Woessner I Linkedln/Microsoft
POBOX2938
MINNEAPOLIS, MN 55402
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.
3080.052US 1 1812
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANMOL BHASIN, CHRISTIAN POSSE, WING H. LI, and
KUN LIU
Appeal2016-003353
Application 13/931,471 1, 2
Technology Center 3600
Before JAMES W. DEJMEK, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-22. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Linkedin Corporation as the real party in interest. App.
Br. 2.
2 Appellants indicate the following pending application is related to the
instant application: Application No. 13/932,748 (Appeal No. 2016-003355).
App. Br. 3.
Appeal 2016-003353
Application 13/931,471
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention relates to "analyzing and
processing a variety of data for the purpose of determining and quantifying a
member's intent and a member's interests in connection with how and why
the member interacts with a social networking service." Spec. i-f 2. In a
disclosed embodiment, a score-generating module collects and uses various
member data (e.g., member profile data, social graph data, and member-
activity or behavioral data) to derive various member-intent and member
interest scores for members. Spec. i-f 8. According to the Specification, "a
member-intent score is a measure of a member's attitude or desire for certain
activities, while a member-interest score represents a more granular level of
insight into a particular intent of the member." Spec. i-f 8. After the
particular scores have been determined, they may be made available to other
services and applications that may then be personalized for the member
based on the derived scores. Spec. i-f 7.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A method comprising:
with a processor-based score-generating module:
detecting and logging activities of a member of a social
networking service;
analyzing one or more of profile data, social graph data, and
historical activity data of a member of a social networking service to
derive for the member:
i) a plurality of member-intent scores, with each member-
intent score comprising a combination of counts of specified user
2
Appeal 2016-003353
Application 13/931,471
interactions with a particular application or service of the social
networking service, and
ii) a plurality of member-interest scores for each member-
intent score, with each member-interest score comprising a
combination of the counts of the specified user interactions that
relate to a particular subject matter specified as being associated
with the particular member-intent score;
storing the plurality of member-intent scores and the
corresponding member-interest scores in association with a member
identifier of the member; and
providing the plurality of member-intent scores and the
corresponding member-interest scores via an application-programming
interface (API).
The Examiner's Rejections
1. Claims 1-22 stand provisionally rejected under the doctrine of
obviousness-type double patenting over claims 1, 5, 11, 13, and 17 of co-
pending Application No. 13/932,748. Final Act. 1--4.
2. Claims 1-22 stand rejected under 35 U.S.C. § l 12(a) as failing
to comply with the written description requirement. Final Act. 5---6.
3. Claims 1-22 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 6-7.
4. Claims 1--4, 9, 11-15, 20, and 22 stand rejected under
35 U.S.C. § 103 as being unpatentable over Wana et al. (US 2012/0290565
Al; Nov. 15, 2012) ("Wana") and Green et al. (US 2009/0240647 Al;
Sept. 24, 2009) ("Green"). 3 Final Act. 8-13.
3 Appellants claim priority to provisional Application No. 61/770,628 (filed
February 28, 2013). Spec. i-f 1. AIA 35 U.S.C. § 103 applies "to any patent
application that contains or contained at any time a claim to a claimed
invention that has an effective filing date that is on or after March 16, 2013."
3
Appeal 2016-003353
Application 13/931,471
5. Claims 5, 6, 16, and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wana, Green, and Calderaro et al. (US
2003/0004790 Al; Jan. 2, 2003) ("Calderaro"). Final Act. 13-14.
6. Claims 7, 8, 10, 18, 19, and 21 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Wana, Green, and Gurion et al. (US
2012/0095931 Al; Apr. 19, 2012) ("Gurion"). Final Act. 14--15.
ANALYSIS 4
Rejection under doctrine of obviousness-type double patenting
Appellants do not respond to the Examiner's provisional rejection of
claims 1-22 under the doctrine of obviousness-type double patenting other
than to request that the rejection "be held in abeyance." App. Br. 7; Reply
Br. 2. Appellants have not filed a terminal disclaimer, nor has the Examiner
withdrawn the rejection or agreed to hold the rejection in abeyance. See
Ans. passim.
To the extent Appellants have not advanced separate, substantive
arguments for particular claims or issues, such arguments are considered
waived. See 37 C.F.R. § 41.37(c)(l)(iv)(2015); see also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
MPEP § 2159.02. We leave it to the Examiner to determine whether the
rejection is more properly identified as under pre-AIA 35 U.S.C. § 103(a).
4 Throughout this Decision, we have considered the Appeal Brief, filed
July 29, 2015 ("App. Br."); the Reply Brief, filed February 8, 2016 ("Reply
Br."); the Examiner's Answer, mailed December 8, 2015 ("Ans."); and the
Final Office Action, mailed June 4, 2015 ("Final Act."), from which this
Appeal is taken.
4
Appeal 2016-003353
Application 13/931,471
respect to that ground of rejection as waived."). Additionally, "[i]f a ground
of rejection stated by the examiner is not addressed in the appellant's brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it unless the examiner subsequently withdrew the
rejection in the examiner's answer." Manual of Patent Examining Procedure
("MPEP") § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018).
Accordingly, we summarily sustain the Examiner's rejection of claims
1-22 under the doctrine of obviousness-type double patenting.
Rejection under 35USC§l12(a)
The Examiner rejected claims 1-22 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 5---6.
The Examiner identifies the claim terms "member-intent scores" and
"member-interest scores" and finds "the scope of the claims encompasses all
techniques to attain that result ('all solutions') without describing how the
terms are functionally related." Final Act. 5. Additionally, the Examiner
finds the Specification fails to describe in sufficient detail how the scores are
computed. Final Act. 5; Ans. 16-17.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Specifically, the
description must "clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed" and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in
the art. Based on that inquiry, the specification must describe an
5
Appeal 2016-003353
Application 13/931,471
invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.
Ariad Pharms., Inc., 598 F.3d at 1351 (internal quotations and citations
omitted). Additionally, the Examiner has the initial burden of presenting
evidence or reasons why persons skilled in the art would not recognize in an
applicant's disclosure a description of the invention defined by the claims.
In re Wertheim, 541F.2d257, 265 (CCPA 1976).
Here, we agree with Appellants (see App. Br. 8-10; Reply Br. 3--4)
that both the claims and Specification provided adequate written description
support for the claimed member-intent and member-interest scores.
Appellants' Specification broadly describes how the intent and interest
scores may be calculated based on the combination of input data. Spec.
i-f 28. Further, the data comprising the combined score may be weighted or
subject to timing parameters such that more recent activities have a greater
impact on the determined score. Spec. i-f 28. Additionally, the claim
language recites that member intent scores "compris[ e] a combination of
counts of specified user interactions with a particular application or service"
and member-interest scores "compris[e] a combination of the counts of the
specified user interactions that relate to a particular subject matter specified
as being associated with the particular member-intent score." Claim 1.
Although very broadly claimed, we agree with Appellants that a person of
ordinary skill in the art would understand the intent and interest scores are
determined by combining counts of particular detected and logged activities
(e.g., user interactions with an application) and that the inventors had
possession of the claimed subject matter (i.e., the member-intent and
member-interest scores) as of the filing date.
6
Appeal 2016-003353
Application 13/931,471
Accordingly, we do not sustain the Examiner's rejection of claims 1-
22 under 35 U.S.C. § 112(a).
Rejection under 35 USC§ 101
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter under 35 U.S.C. § 101. App.
Br. 10-24; Reply Br. 4--7. In particular, Appellants assert the Examiner
failed to make an evidentiary showing to establish a prima facie case of
ineligibility. App. Br. 10-15. Further, Appellants argue the claims are not
directed to patent-ineligible subject matter, but rather "to a particular
technical solution for detecting and logging a user's network activities and
generating data that is descriptive of the detected and logged activities for
storage and dissemination via an API [ (application programming
interface)]." App. Br. 15-19; Reply Br. 4--6.
Contrary to Appellants' assertions, neither Alice Corp. v. CLS Bank
Int'!, 134 S. Ct. 2347 (2014), nor the Board's holdings in PNC Bankv.
Secure Axcess, LLC, Case No. CBM2014-00100 (PTAB Sept. 9, 2014) or Ex
Parte Renald Poisson, Appeal No. 2010-011084 (PTAB Feb. 27, 2015),
stand for the proposition that Examiners must provide evidentiary support in
every case before a conclusion can be made that a claim is directed to an
abstract idea. There is no such requirement. See, e.g., para. IV "July 2015
Update: Subject Matter Eligibility" to 2014 Interim Guidance on Subject
Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The
courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Accordingly, courts do not rely on
7
Appeal 2016-003353
Application 13/931,471
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings.") (emphasis added). Further, the Office did not change the
standard in the May 4, 2016 Memorandum, Formulating a Subject Matter
Eligibility Rejection and Evaluating the Applicant's Response to a Subject
Matter Eligibility Rejection. Evidence may be helpful in certain situations
where, for instance, facts are in dispute. However, it is not always
necessary. It is not necessary in this case.
Additionally, the Federal Circuit has repeatedly noted that "the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
court has, thus, held that the USPTO carries its procedural burden when its
rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011 ). Thus, all that is required of the Office is that it set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner as to
meet the notice requirement of 35 U.S.C. § 132. Jung, 637 F.3d at 1362; see
also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132
"is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection."). As set forth in the Final Office Action, the Examiner has met
the notice requirements of Section 132 in rejecting claims 1-22 under 35
U.S.C. § 101. See Final Act. 6-7.
8
Appeal 2016-003353
Application 13/931,471
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice, 134 S. Ct. at 2355. If a
claim falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture, or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any
element, or combination of elements, amounts to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 6-7. In
particular, the Examiner concludes the claims recite a series of steps for
quantifying the intents and interests of users of a social network by
analyzing profile and activity data to derive a score, "which is considered to
be a mathematical relationship or formula and thus directed to an abstract
idea." Final Act. 6. More particularly, the Examiner concludes the claims
are similar to "organizing information through mathematical correlations."
Final Act. 6.
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
9
Appeal 2016-003353
Application 13/931,471
Eligibility (July 30, 2015), https://www.uspto.gov/sites/default/files/
docmnents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea"). As part of this
inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Our reviewing court has concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F .3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea").
Additionally, the collection of information and analysis of information (e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353. Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP
Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) ("merely
presenting the results of abstract processes of collecting and analyzing
information ... is abstract as an ancillary part of such collection and
analysis") (citations omitted). Moreover, our reviewing court recently has
concluded that acts of parsing, comparing, storing, and editing data are
10
Appeal 2016-003353
Application 13/931,471
abstract ideas. Berkheimer v. HP Inc., 881F.3d1360, 1366 (Fed. Cir.
2018).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co. Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
Here, Appellants' claims generally relate to computing scores (i.e.,
member-intent scores and member-interest scores) by analyzing data relating
to member activities that had been detected and logged. Once the scores
have been derived, they are stored and may be provided via an API to a
requesting application. Appellants characterize the claims as being directed
to a particular method for determining member-intent and member-interest
scores. Reply Br. 7.
The detecting and logging of user activity is similar to the collection
and analysis of information, which our reviewing court has concluded to be
an abstract idea. Elec. Power, 830 F.3d at 1354. Further, performing
mathematical operations on the data to derive member-intent and member-
interest scores does not make the analysis of data any less abstract. See
RecogniCorp, 855 F.3d at 1327; see also Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (concluding "a
process of organizing information through mathematical correlations and is
not tied to a specific structure or machine" to be abstract); Parker v. Flook,
437 U.S. 584, 595 (1978) ("If a claim is directed essentially to a method of
11
Appeal 2016-003353
Application 13/931,471
calculating, using a mathematical formula, even if the solution is for a
specific purpose, the claimed method is nonstatutory."). Accordingly, we
agree with the Examiner that the claims are directed to the abstract idea of
calculating member-intent and member-interest scores from detected user
activities, which is organizing information using mathematical correlations.
See Final Act. 6; Ans. 18.
Additionally, we disagree with Appellants that the claimed solution is
necessarily rooted in computer technology and overcomes a problem arising
in the realm of computer networks. See App. Br. 22-23 (referring to DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
In the Specification, Appellants describe that it is known in the industry to
collect and maintain profile information related to users of social networking
services. Spec. i-f 4. Appellants do not present sufficient persuasive
evidence or argument that the claims are directed to an improvement specific
to a computer network. See App. Br. 21-22. Rather, the focus of the claims
is on the calculation of member-intent and member-interest scores based on
collected data using generic computers and networks as tools, not on
improvements in the computer. See Alice, 134 S. Ct. at 2359.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to "significantly more" than
the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79-80 (2012)). The
implementation of the abstract idea involved must be "more than [the]
performance of 'well-understood, routine, [and] conventional activities
12
Appeal 2016-003353
Application 13/931,471
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original). "Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination." Berkheimer, 8 81 F. 3 d at
1369.
Here, we agree with the Examiner that the additional limitations,
separately, or as an ordered combination, do not provide meaningful
limitations (i.e., do not add significantly more) sufficient to transform the
abstract idea into a patent eligible application. Final Act. 6-7; Ans. 18-21.
The Examiner finds, and we agree, a processor-based score-generating
module for detecting and logging of user activity, analyzing the logged data
to derive intent and interest scores, storing the derived scores and providing
the scores via an API merely uses generic computer elements to perform
"purely generic computer functions." Final Act. 6-7; Ans. 20-21. "The
concept of data collection, recognition, and storage is undisputedly well-
known." Content Extraction, 776 F.3d at 1347. Additionally, we note that
Appellants describe the machine to perform the claimed embodiments as
being either a server computer, personal computer, a tablet PC, "or any
machine capable of executing instructions ... that specify actions to be
taken by that machine." Spec. i-f 34, Fig. 5 (illustrating a block diagram of a
generic computing platform). Accordingly, we do not find that the claims
recite "significantly more" to transform the abstract idea into a patent-
eligible application.
Appellants also contend the pending claims would not preempt
quantifying the intent and interests of users of a social network. App.
Br. 17-18, 22-23.
13
Appeal 2016-003353
Application 13/931,471
"' [W]hile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."'
FairWarning IP, 839 F.3d at 1098 (quotingAriosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Further, "[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379; see also Ans. 19-20.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 101. For similar reasons, we also sustain the
Examiner's rejection of independent claim 12 under 35 U.S.C. § 101.
Additionally, we sustain the Examiner's rejection of claims 2-11 and 13-22,
which depend directly or indirectly therefrom and were not argued
separately. See App. Br. 23-24; Reply Br. 7; 37 C.F.R. § 41.37(c)(l)(iv).
Rejections under 35 US.C. § 103
In rejecting independent claims 1 and 12, the Examiner relies on the
combined teachings and suggestions of Wana and Green. Final Act. 8-9. In
particular, the Examiner finds Wana teaches detecting and logging activities
of a member, and analyzing the collected data to derive a plurality of
member-interest scores. Final Act. 8 (citing Wana i-fi-f 15, 64, 75-77, and
14
Appeal 2016-003353
Application 13/931,471
80). The Examiner finds Green teaches calculating a plurality of member-
intent scores. Final Act. 9 (citing Green i-fi-130, 80-121, 242-243, and 356).
Appellants assert that, as recited in the claims, the member-interest
scores are based on "specified user interactions that relate to a particular
subject matter specified as being associated with the particular member-
intent score." App. Br. 25-28; see claim 1. Appellants note the Examiner
stated that Wana fails to teach a plurality of member-intent scores. App.
Br. 26. Because Wana does not teach member-intent scores, Appellants
argue Wana also fails to teach member-interest scores which are based on
and associated with member-intent scores. App. Br. 26-27.
In response, the Examiner explains:
The W ana reference discusses the sub-scores, which are
read as the member-intent scores, which are then used in Green's
behavioral modeler algorithm to calculate a confidence scores
which are read as the member interest scores; not the master
score of Wana as Appellants state.
Ans. 21. Thus, the Examiner seems to rely on Wana to teach the claimed
member-intent scores and Green to teach the member-interest scores.
However, as the Examiner further explains, the sub-scores of Wana "have
been broadly interpreted ... as the interest scores for a member or user."
Ans. 21 (emphasis added). Additionally, the Examiner "has broadly
interpreted ... the confidence score generated by Green's behavior modeler
algorithm as a member's intent score." Ans. 21 (emphasis added).
The Examiner's findings and explanations are inconsistent regarding
which reference is being relied upon to teach the claimed member-intent
scores and member-interest scores. For us to sustain the Examiner's
rejection, we would need to resort to impermissible speculation or
unfounded assumptions or rationales to cure the deficiencies in the factual
15
Appeal 2016-003353
Application 13/931,471
bases of the rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). We decline to do so.
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner's rejection of independent claim 1 under
35 U.S.C. § 103. For similar reasons, we also do not sustain the Examiner's
rejection of independent claim 12, which recites similar limitations and for
which the Examiner relies on similar findings and reasoning. See Final
Act. 8-9. Additionally, we do not sustain the Examiner's rejection of claims
2--4, 9, 11, 13-15, 20, and 22, which depend directly or indirectly therefrom.
Dependent claims 5, 6, 16, and 17 were rejected over the combined
teachings of Wana, Green, and Calderaro, whereas dependent claims 7, 8,
10, 18, 19, and 21 were rejected over the combined teachings ofWana,
Green, and Gurion. Final Act. 13-15. The Examiner, however, does not
rely on either Calderaro or Gurion to cure the deficiencies related to the
rejection of independent claims 1 and 12. Accordingly, we do not sustain
the Examiner's rejection of dependent claims 5-8, 10, 16-19, and 21.
DECISION
We summarily affirm the Examiner's decision provisionally rejecting
claims 1-22 under the doctrine of obviousness-type double patenting.
We reverse the Examiner's decision rejecting claims 1-22 under
35 U.S.C. § 112(a).
We affirm the Examiner's decision rejecting claims 1-22 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-22 under
35 U.S.C. § 103.
16
Appeal 2016-003353
Application 13/931,471
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
17