Ex Parte Boudalier

Patent Trial and Appeal Board

Apr 30, 2018

12597290 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/597,290 10/23/2009 Pascal Boudalier
56436 7590 05/02/2018
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82228877 9185
EXAMINER
NGUYEN, TAND
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
hpe.ip.mail@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAS CAL BOUDALIER 1
Appeal2016-008599
Application 12/597 ,290
Technology Center 3600
Before JOHN A. JEFFERY, LARRY J. HUME, and SCOTT B. HOWARD,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3, 5-10, 12, 13, 15, 16, and 18-22, which are all
claims pending in the application. Appellant has canceled claims 2, 4, 11,
14, and 17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Hewlett Packard
Enterprise Development LP. Br. 1.
Appeal2016-008599
Application 12/597,290
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention "relate to
obtaining feedback for an accessed information item." Original
Specification ("Orig. Spec.," filed Oct. 23, 2009) 1, 11. 5---6 ("FIELD OF
THE INVENTION").
Exemplary Claims
Claims 1 and 6, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A method comprising:
determining that a user has accessed an information item
on a web server, said information item being one of a review
and a comment published on said web server;
associating said user to said information item;
providing an accessed-information-delayed-feedback-
prompt that is designed to obtain feedback on said accessed
information item at a later time that is dependent upon said
accessed information item, including determining a
predetermined context at which said user is most likely to
provide said feedback when prompted, based on a user profile
of historical information regarding said user including
preferences of said user, said predetermined context including
a time of day at which said user is most likely to provide said
feedback when prompted;
2 Our Decision relies upon Appellant's Appeal Brief ("Br.," filed
Dec. 1, 2015); Examiner's Answer ("Ans.," mailed May 18, 2016); Final
Office Action ("Final Act.," mailed July 1, 2015); and the Substitute
Specification ("Spec.," filed Oct. 23, 2009). We note Appellant did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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at said later time, provisioning, to said user, said
accessed-information-delayed-feedback-prompt, including
matching a current context of said user to said predetermined
context;
obtaining feedback in response to said provisioning of
said accessed-information-delayed-feedback-prompt that is
designed to obtain said obtained feedback on said accessed
information item at said later time that is dependent upon said
accessed information item; and
publishing said obtained feedback to said information
item on said web server to make said obtained feedback
available to other users.
6. A non-transitory computer usable storage medium
comprising instructions that when executed provide a method
for obtaining feedback for an accessed information item, said
method comprising:
determine that a user has access an information item on a
web server, said information item being one of a review and a
comment published on said web server;
associate said user to said information item;
assign a first context to said accessed information item,
said first context being that at which said user is most likely to
provide said feedback when prompted, said first context
including a time of day at which said user is most likely to
provide said feedback when prompted;
monitor a current second context of said user;
determine a later time by identifying a time when said
current second context matches said assigned first context;
provide an accessed-information-delayed-feedback-
prompt that is designed to obtain feedback on said accessed
information item at said later time that is dependent upon said
accessed information item;
at said later time, provision, to said user, said accessed-
information-delayed-feedback-prompt;
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obtain feedback in response to said provisioning of said
accessed-information-delayed-feedback-prompt that is designed
to obtain said obtained feedback on said accessed information
item at said later time that is dependent upon said accessed
information item; and
publishing said obtained feedback to said information
item on said web server to make said obtained feedback
available to other users,
wherein said associate said assign, said identify, said
monitor, said determine, said provide, said provision and said
obtain are performed by one or more processing circuitries.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Falk et al. ("Falk") US 2001/0037206 Al Nov. 1, 2001
Potenza US 2002/0173934 Al Nov. 21, 2002
Gross US 2006/0155575 Al July 13, 2006
Simons et al. ("Simons") US 2007 /0027830 Al Feb. 1,2007
Farkas et al. ("Farkas") US 2008/0046320 Al Feb.21,2008
Abbott et al. ("Abbott") US 2009/0282030 Al Nov. 12, 2009
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Rejections on Appeal
RI. Claims I, 3, 5-IO, I2, I3, I5, I6, and I8-22 stand rejected
under 35 U.S.C. § IOI as being directed to patent-ineligible subject matter.
Final Act. 4. 3
R2. Claims I, 3, 5-IO, I2, I3, I5, I6, and I8-22 stand rejected
under 35 U.S.C. § I I2, second paragraph, as being indefinite. Final Act. 8.
R3. Claims I, 3-5, 7-9, 11, I2, I5, I6, 2I, and 22 stand rejected
under 35 U.S.C. § I03(a) as being unpatentable over the combination of
Simons, Falk, Gross, and Farkas. Final Act. I3.
R4. Claims 6, IO, and I8-20 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Simons, Falk, Gross,
Farkas, and Potenza. Final Act. 26.
R5. Claims 3, 9, and I8 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Simons, Falk, Gross, Farkas,
and Abbott. Final Act. 29.
CLAIM GROUPING
Based on Appellant's arguments (Br. 5-I 7), we decide the appeal of
patent-ineligible subject matter Rejection RI of claims I, 3, 5-IO, I2, I3,
I 5, I 6, and I 8-22 on the basis of representative claim I; we decide the
appeal of obviousness Rejection R3 of claims I, 3-5, 7-9, 11, I2, I5, I6, 2I,
3 The Examiner states Rejection RI is for non-statutory subject matter under
§ IOI. Final Act. 4. We note, however, a more accurate characterization of
the rejection under§ IOI in this Appeal is for patent-ineligibility, as the
claims are directed to a judicial exception to the otherwise statutory classes
of inventions.
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and 22 on the basis of representative claim 1; and we decide the appeal of
obviousness Rejection R4 of claims 6, 10, and 18-20 on the basis of
representative claim 6. We decide indefiniteness Rejection R2 of claims 1,
3, 5-10, 12, 13, 15, 16, and 18-22, infra.
Remaining claims 3, 9, and 18 in obviousness Rejection R5, not
argued separately, stand or fall with the respective independent claim from
which they depend. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to indefiniteness Rejection R2 of claims 1, 3, 5-10, 12, 15, 16, and 18-22,
and obviousness Rejections R3-R5 of claims 1, 3-10, 11, 12, 15, 16, and
18-22, for the specific reasons discussed below. 5
However, we disagree with Appellant's arguments with respect to
patent-ineligible subject matter Rejection RI of claims 1, 3, 5-10, 12, 13,
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
5 We note indefiniteness Rejection R2 of dependent claim 13 is affirmed.
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15, 16, and 18-22 and, unless otherwise noted, with respect to Rejection RI,
we incorporate by reference herein and adopt as our own: ( 1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments.
We highlight and address specific findings and arguments regarding
claims 1 and 6 for emphasis as follows.
1. § 101 Rejection RI of Claims 1, 3, 5-10, 12, 13, 15, 16, and 18-22
Issue 1
Appellant argues (Br. 5-9) the Examiner's rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in
error. These contentions present us with the following issue:
Did the Examiner err in concluding claim 1 is drawn to a judicial
exception, i.e, an abstract idea, without significantly more, sufficient to
transform the abstract idea into a patent-eligible invention?
Analysis
Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
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Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice, 134 S. Ct. at 2354 (internal quotation marks,
citation, and bracketing omitted). First, we "determine whether the claims at
issue are directed to ... [a] patent-ineligible concept[]." Id. at 2355. If so,
we "examine 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 2357 (quoting Mayo, 566 U.S. at 72, 79).
While the two steps of the Alice framework are related, the "Supreme
Court's formulation makes clear that the first-stage filter is a meaningful one,
sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court
"has not established a definitive rule to determine what constitutes an
'abstract idea"' for the purposes of step one. Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
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economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice, 134 S. Ct.
at 2355-57. Under this guidance, we must, therefore, ensure at step one that
we articulate what the claims are directed to with enough specificity to
ensure the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully
in construing this exclusionary principle lest it swallow all of patent law").
Under the "abstract idea" step, we must evaluate "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 Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016) (internal
citation omitted). If the claims are not directed to a patent-ineligible
concept, the inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867
F.3d 1253, 1262 (Fed. Cir. 2017). If the concept is directed to a patent-
ineligible concept, we proceed to the "inventive concept" step. For that
second step, we must "look with more specificity at what the claim elements
add, in order to determine 'whether they identify an "inventive concept" in
the application of the ineligible subject matter' to which the claim is
directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830
F.3d at 1353).
Alice Step I -Abstract Idea
Our reviewing court has held claims ineligible as being directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
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at 71. Under this guidance, we must, therefore, ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law").
Appellant contends:
[T]he Examiner's rejection fails ... [the first step of the Mayol
Alice] test. The Examiner has not decided exactly what the
abstract idea the claim language is directed to, and further
provides no explanation whatsoever as to why the claim
language is directed to an abstract idea. The Examiner simply
alleges that the idea is "obtaining user feedback for accessed
information" ... is an abstract idea because it is a "fundamental
economic practice," or in the alternative because it is a "method
of organizing human activities".
Br. 5 (citing Final Act. 4). In addition, Appellant contends, "the Examiner
provides no reasoning whatsoever as to how obtaining user feedback for
accessed information is an abstract idea." Br. 6.
Under the "abstract idea" step, we must evaluate "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, 838 F.3d at
1257 (internal citation omitted).
Turning to the claimed invention, claim 1 recites:
A method comprising:
determining that a user has accessed an information item
... [that is] one of a review and a comment ... ;
associating said user to said information item;
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providing [a] ... feedback-prompt ... to obtain feedback
on said accessed information item at a later time ... , including
determining a predetermined context at which said user is most
likely to provide said feedback when prompted ... said
predetermined context including a time of day at which said
user is most likely to provide said feedback when prompted;
at said later time, provisioning, to said user, said
accessed-information-delayed-feedback-prompt ... ;
obtaining feedback in response to said provisioning of
said accessed-information-delayed-feedback-prompt ... ; and
publishing said obtained feedback. ...
Claim 1.
In response to Appellant's contentions, the Examiner concludes the
appealed claims are directed to a judicial exception, i.e., an abstract idea
without significantly more because " [ c ]laim 1 recites an abstract idea of
obtaining feedback based on [an] accessed information item." Ans. 5. The
claim includes the steps of "determining that a user has accessed an
information [item], associating the user to said information item, providing a
prompt, obtaining feedback from the user, and publishing the obtained
feedback," and such concepts of obtaining feedback have been identified by
the courts as abstract ideas, e.g., collecting information about an activity and
comparing collected information with stored information. Id.; see also id. at
6.
The Examiner determined the claimed invention "appears to include
the steps of the combination of the SmartGene and Cyberfone cases wherein
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the option is to send a prompt at a later time to the user for collecting
feedback at the user's convenience." 6 Ans. 6 (emphases added).
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1, 6, and 7 are directed to an abstract
idea, i.e., methods of organizing human activity, including collecting
information about an activity and comparing collected information with
stored information. See Ans. 5---6.
As the Specification describes,
[a]ccording to various embodiments of the invention there is
provided a method comprising: associating a user and an
information item accessed by the user; and delaying provision
to the user of a prompt to provide feedback on the accessed
information item until a later time that is dependent upon the
accessed information item.
Spec. ,-r 15.7
We find this type of activity, i.e., obtaining feedback from a
consumer/ customer at a later time, includes longstanding conduct that
existed well before the advent of computers and the Internet, and could be
carried out by a human with pen and paper, e.g., using a paper reminder or
"tickler." See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
6 See SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed.Appx. 950
(Fed. Cir. 2014) (non-precedential); Cybeifone Sys., LLC v. CNN Interactive
Grp., Inc., 558 Fed.Appx. 988 (Fed. Cir. 2014) (non-precedential).
7 See also Spec. "Abstract"; "[a] method comprising: associating a user and
an information item accessed by the user; and delaying provision to the user
of a prompt to provide feedback on the accessed information item until a
later time that is dependent upon the accessed information item."
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even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson"). 8
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to "treat[ ] analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
In this regard, the claims are similar to claims our reviewing court has
found patent ineligible in Electric Power Group., 830 F.3d at 1353-54
(collecting information and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, ...
[are] essentially mental processes within the abstract-idea category").
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. We further refer to Content
Extraction, where the Federal Circuit has provided additional guidance on
the issue of statutory subject matter by holding claims to collecting data,
recognizing certain data within the collected data set, and storing that
8 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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recognized data in memory were directed to an abstract idea and therefore
unpatentable under § 101. Content Extraction & Transmission LLC v. Wells
Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014).
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 - Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe ... [the] abstract method" and, thus, transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
In arguing under Step 2 of the Alice analysis, Appellant alleges the
claims are directed to statutory subject matter because they address a
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business challenge particular to the Internet and are "rooted in computer
technology to overcome a problem particular to computer networks." Br. 7.
Evaluating representative claim 1 under Step 2, we agree with the
Examiner that it lacks an inventive concept that transforms the abstract idea
of identifying, collecting, storing, comparing, and generating data, i.e.,
managing user feedback, into a patent-eligible application of that abstract
idea. See Ans. 7-8. 9
We agree with the Examiner because, as in Alice, we find the
recitation of managing user feedback using "a web server" (claim 1 ); "a non-
9 The Examiner concludes:
[T]he method claims simply recite the concept of obtaining
user feedback for accessed information, as performed by a
generic computer (see i-fi-1 [0036-0038]) above. As shown in the
specification, and i-fi-1 [0012-0083], the method claims do not,
for example, purport to improve the functioning of the
computer itself nor do they effect an improvement in any other
technology or technical field. Instead, the claims at issue
amount to nothing significantly more than an instruction to
apply the abstract idea of managing a business, by various data
processing mechanism using some unspecified, generic
computer.
As for the use of a system, as shown in Fig. 1, to carry
out the steps (a)-(t) above, it does not impose meaningful limits
on the claims. Specifically, the storage device merely stores the
data, and the computer system just performs insignificant,
conventional, and routine steps (e.g., store, acquire, extract,
attach, identify, and identify) these pre- and post-solution
activities do not impose meaningful limits on the scope of the
claims and are not integral to the invention as a whole.
Ans. 5---6. We note Appellant does not rebut the Examiner's findings and
conclusions by filing a Reply Brief.
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transitory computer usable medium," "a web server," and "one or more
processing circuitries" (claim 6); or "a web server," "memory," and
"processing circuitry" (claim 7) are simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention"). We conclude that providing a computer-based prompt to the
customer does not provide "significantly more" as suggested by the Step 2
Alice analysis, and particularly does not improve the underlying
computer/network technology. 10
10 As evidence of the conventional nature of the claimed network
components and processes, we highlight Appellant's Specification, i.e.,
[t]he processing circuitry 12 may be implemented using
any suitable combination of hardware, firmware and software.
In the example illustrated, the processing circuitry is one or
more processors of a computer that reads a computer program
18 from the memory 14. In other implementations, the
processing circuitry 12 may be provided by hardware, for
example, an application specific integrated circuit.
(Spec. i-f 28); [t]he content server 6 may be a web-server" (Spec. i-f 25); and
[ f]igure 2 schematically illustrates one of various
potential implementations of the system 8. The illustrated
system 8 comprises processing circuitry 12; an input/output
interface 16 and a memory 14 configured to store a computer
program 18, one or more data structures 19 associating one or
more users and one or more information items and one or more
user profiles.
Spec. ,-r 27.
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Accordingly, based upon the analysis above, on this record, we are not
persuaded of error in the Examiner's conclusion that the appealed claims are
directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's§ 101 rejection of independent claim 1, and grouped claims 3,
5-10, 12, 13, 15, 16, and 18-22, which fall therewith. See Claim Grouping,
supra.
2. § 112, ,-r 2, Rejection R2 of Claims 1, 3, 5-10, 12, 13, 15, 16, 18-22
Issue 2
Appellant argues (Br. 10-11) the Examiner's rejection of claim 1
under 35 U.S.C. § 112, second paragraph, as being indefinite is in error.
These contentions present us with the following issue:
Did the Examiner err in concluding the recited "obtain[ing] feedback
on said accessed information item at a later time that is dependent upon said
accessed information item, including determining a predetermined context at
which said user is most likely to provide said feedback when prompted" and
"matching a current context of said user to said predetermined context"
(emphases added) lack definiteness?
Analysis
Appellant contends the Examiner is conflating claim breadth with
indefiniteness because the claim does not define the phrase "current
context." Br. 10. Further, "[t]he claim language recites a current context
and a predetermined context, and recites that the current context is matched
to the predetermined context. There is no lack of precision and no
unreasonable certainty- and thus no lack of definiteness - in such claim
language." Br. 11.
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Based upon our reading of the Specification (e.g., see Spec.i-fi-f 58-59),
we agree with Appellant's arguments. We agree with Appellant because we
find the use of the phrase "current context" in claim 1 contemplates a current
time and/ or location, and the "pre-determined context" is defined within the
claim itself, i.e., "determining a predetermined context at which said user is
most likely to provide said feedback when prompted," which we interpret to
mean a time and/or place at which the user is judged as being more
amenable to providing feedback. See claim 1. Independent claims 6 and 7
recite similar definite claim language.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's conclusion that the claims
under Rejection R2 are indefinite. Therefore, we do not sustain the
Examiner's indefiniteness rejection of independent claims 1, 6, and 7, and
dependent claims 3, 5, 8-10, 12, 15, 16, 18-22 which stand therewith.
However, claim 13 depends from canceled claim 4, and we sustain the
indefiniteness Rejection R2 of claim 13.
3. § 103 Rejection R3 of Claims 1, 3-5, 7-9, 11, 12, 15, 16, 21, and 22
Issue 3
Appellant argues (Br. 12-16) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Simons,
Falk, Gross, and Farkas is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of:
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providing an accessed-information-delayed-feedback-
prompt that is designed to obtain feedback on said accessed
information item at a later time that is dependent upon said
accessed information item, including determining a
predetermined context at which said user is most likely to
provide said feedback when prompted, based on a user profile
of historical information regarding said user including
preferences of said user, said predetermined context including a
time of day at which said user is most likely to provide said
feedback when prompted,
as recited in claim 1?
Analysis
Appellant contends:
[A] salient aspect to the invention as recited in claim 1 is
provisioning a prompt designed to obtain feedback from a user
who has previously accessed an information item, at a later time
as to a time of day when the user is most likely to provide this
feedback. This aspect of the claimed invention is not suggested
by the applied art.
Br. 13. Appellant further argues the Examiner's reliance (Final Act. 18
(citing Simons i-fi-1 31, 3 2, Fig. 4)) upon the supposed inherent nature of a
"delayed feedback prompt" in Simons constitutes error. Br. 13. We agree
with Appellant that Simon's prompt is not explicitly or inherently generated
at a time when the user is most likely to provide this feedback.
Appellant additionally contends the Examiner's reliance upon an
explicit teaching of prompting a user at a later time in Falk is misplaced, and
does not teach or suggest the disputed limitation. Id. Appellant points out
that Falk teaches "pre-generating" questions regarding purchase details to
avoid the questions being generated too slowly once user feedback is
ultimately sought and provided, i.e., Falk pre-generates the questions and
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stores them, but does not teach or suggest prompting the user to provide
delayed feedback at a time they are most likely to respond. Br. 13-14
(citing Falk if 36).
In Falk, a user does not provide feedback until he or she desires
to do so, which at best suggests that the user will go back and
on his or her own initiative initiate the feedback process - that
is, in Falk, the user determines when to provide feedback. By
comparison, in the claimed invention, the user's memory is
jogged via the user being explicitly prompted at the time when
the user is most likely to provide feedback - that is, in the
claimed invention, the claimed invention determines the best
time at which to prompt for feedback. Falk thus does not teach
when to prompt the user to provide feedback, but rather when
to pre-generate the questions to speed response when the
customer actually does provide feedback on his or her own
accord.
Br. 14.
We find Appellant's arguments to be persuasive in this regard
because, while Falk prompts the user at a later time to provide feedback,
such a prompt is not taught or suggested to be provided at a time the user is
most likely to respond based upon a "predetermined context," as variously
required in each of independent claims 1 and 7. We find this issue to be
dispositive of the appeal of Rejection R3 under § 103.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art combination to teach or suggest the disputed limitation of claim 1, such
that we find error in the Examiner's resulting legal conclusion of
obviousness. Therefore, we do not sustain the Examiner's obviousness
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rejection of independent claim 1, and grouped claims 3-5, 7-9, 11, 12, 15,
16, 21, and 22 which stand therewith. See Claim Grouping, supra.
4. § 103 Rejection R4 of Claims 6, 10, and 18-20
Issue 4
Appellant argues (Br. 16-17) the Examiner's rejection of claim 6
under 35 U.S.C. § 103(a) as being obvious over the combination of Simons,
Falk, Gross, Farkas, and Potenza is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] non-transitory computer usable storage medium comprising
instructions that when executed provide a method for obtaining feedback for
an accessed information item" in which the steps, inter alia, "provide an
accessed-information-delayed-feedback-prompt that is designed to obtain
feedback on said accessed information item at said later time that is
dependent upon said accessed information item," and "assign a first context
to said accessed information item, said first context being that at which said
user is most likely to provide said feedback when prompted, said first
context including a time of day at which said user is most likely to provide
said feedback when prompted," as recited in claim 6?
Analysis
Appellant contends:
Claim 6 recites subject matter similar to that of claim 1,
and therefore is patentable over the base combination of Simon,
Falk, Gross, and Farkas for the reasons that have been
described above in relation to the third ground of rejection.
Applicant further notes that as to the salient aspect of claim 6
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with respect to determining the context at which a user is most
likely to provide feedback, including determining the time at
which the user is most likely to provide feedback, and
prompting the user at that time, Potenza does not cure the
deficiencies of the base combination of Simon, Falk, Gross, and
Farkas. Potenza discusses a scenario in which a user leaves
feedback, but if there is not a matching transaction regarding
which the feedback has been left, then the transaction is
ignored. Potenza thus teaches that if I review an item, but there
is no record I purchased the item, then my review is ignored.
Br. 16-17.
We find Appellant's arguments to be persuasive in this regard for the
same reasons discussed above with respect to Issue 3, Rejection R3 of
independent claims 1 and 7. We find Potenza does not cure the deficiencies
of Simons, Falk, Gross, and Farkas, as discussed above.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art combination to teach or suggest the disputed limitation of claim 6, such
that we find error in the Examiner's resulting legal conclusion of
obviousness. Therefore, we do not sustain the Examiner's obviousness
rejection of independent claim 6, and grouped claims 10 and 18-20 which
stand therewith. See Claim Grouping, supra.
5. Rejection R5 of Claims 3, 9, and 18
While Appellant does not provide any substantive or separate
arguments directed to obviousness Rejection R5 of claims 3, 9, and 18 under
§ 103, in light of our reversal of the rejections of independent claims 1, 6,
and 7, supra, we also reverse obviousness Rejection R5 under § 103 of
claims 3, 9, and 18, which variously and ultimately depend from claims 1, 6,
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and 7. On this record, the Examiner has not shown how the additionally
cited Abbot reference overcomes the aforementioned deficiencies with
Simons, Falk, Gross, Farkas, and Potenza, as discussed above regarding
claims 1, 6, and 7.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subjectmatterRejectionRl of claims 1, 3, 5-10, 12, 13, 15, 16, and 18-22
under 35 U.S.C. § 101, and we sustain the rejection.
(2) The Examiner erred with respect to indefiniteness Rejection R2
of claims 1, 3, 5-10, 12, 15, 16, and 18-22 under 35 U.S.C. § 112, second
paragraph, and we do not sustain the rejection. However, the Examiner did
not err in rejecting claim 13 for indefiniteness, and we sustain the rejection.
(3) The Examiner erred with respect to obviousness Rejections R3
through R5 of claims 1, 3-12, 15, 16, and 18-22 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we do not sustain the
rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 41.50(a)(l).
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DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 5-10, 12, 13,
15, 16, and 18-22.
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(±).
AFFIRMED
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