Ex Parte Epstein

Patent Trial and Appeal Board

Jul 11, 2018

14105034 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/105,034 12/12/2013
60172 7590 07/13/2018
SCHWABE, WILLIAMSON & WYATT, P.C.
1420 FIFTH AVENUE, SUITE 3400
SEATTLE, WA 98101-4010
FIRST NAMED INVENTOR
Samuel S. Epstein
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.
111946-1923 85 3398
EXAMINER
DA YE, CHELCIE L
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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):
IPDocketing@SCHWABE.com
patent@schwabe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUELS. EPSTEIN
Appeal2018-001281
Application 14/105,034 1
Technology Center 2100
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7, 21, and 22. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE. 3
1 Appellant is the Applicant, Zalag Corporation, which, according to the
Appeal Brief, is the real party in interest. App. Br. 1.
2 Appellant disputes the Examiner's objection to claims 8-20 and 23-25 as
being dependent upon a rejected base claim. App. Br. 9. This matter is not
before us because we lack jurisdiction over petitionable matters. See, e.g.,
MPEP § 706.01 ("[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.");
see also MPEP § 1201 ("The Board will not ordinarily hear a question that
should be decided by the Director on petition .... ").
3 Our Decision refers to Appellant's Appeal Brief filed April 17, 2017
("App. Br."); Appellant's Reply Brief filed November 21, 2017 ("Reply
Appeal2018-001281
Application 14/105,034
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 7, and 22 are independent claims. Claim 1 is reproduced
below:
1. A machine implemented method for content preparation
or selection, comprising:
receiving, as part of a content preparation or selection, by
a content preparation or selection module operated by a
computing system, a representation of a concept; and
determining, for the content preparation or selection, by
the content preparation or selection module, topical relevance of
a content item (N) of a content hierarchy (C) to the concept;
wherein the content hierarchy includes a plurality of content
items, including N; and
wherein determining topical relevance ofN to the concept
is based at least in part on interrelationships among at least some
of the other content items of the hierarchy other than N and its
descendant content items, including interrelationships between
N, an ancestor content item of N, and a sibling content item of
the ancestor item of N.
Liu
Epstein
References
US 2007/0112815 Al
US 2007 /0288438 Al
Examiner's Rejection
May 17, 2007
Dec. 13, 2007
Claims 1-7, 21, and 22 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Epstein and Liu. Final Act. 2-5.
Br."); Examiner's Answer mailed September 25, 2017 ("Ans."); and Final
Office Action mailed November 3, 2016 ("Final Act.").
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Appeal2018-001281
Application 14/105,034
ANALYSIS
Appellant contends the Examiner erred in finding the combination of
Epstein and Liu teaches "determining topical relevance of [ content item] N
to the concept is based at least in part on ... interrelationships between N,
an ancestor content item ofN, and a sibling content item of the ancestor item
ofN," as recited in claim 1 and similarly recited in claims 7 and 22. App.
Br. 4--8; Reply Br. 2--4. Specifically, Appellant argues Epstein does not
"mention anything about considering [a content item's] ancestor and sibling
of the ancestor at the same time" when determining the relevance of the
content item. App. Br. 7; Reply Br. 3. Appellant further argues, in Liu,
"only consideration of contributions of descendant documents are disclosed,
with no suggestion of consideration of contributions of ancestor documents."
App. Br. 7; Reply Br. 3.
We are persuaded by Appellant's arguments. The Examiner
determines Epstein discloses "the use of not only [a content item's]
descendants but [the content item's] ancestors and siblings when considering
the relevance" of the content item. Ans. 6 ( citing Epstein ,r,r 5-6, 84--85,
113-114, 124); Final Act. 3, 6-7. However, it is not apparent where Epstein
teaches determining relevance based on the content's ancestor or sibling of
the ancestor. Epstein describes that "when data structures for higher nodes
are calculated, the lower nodes may be re-traversed to retrieve relevant data
structures" (Epstein ,r,r 84--85), but the Examiner has not explained how
considering lower nodes, i.e., the content's descendants, teaches the
consideration of the content's ancestor or sibling of the ancestor when
determining the content's relevance. Furthermore, Epstein describes
relevance that "incorporates sibling[s]" (Epstein ,r,r 113-114), but the
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Appeal2018-001281
Application 14/105,034
Examiner has not explained how consideration of the content's siblings
teaches consideration of the content's ancestor or sibling of the ancestor
when determining the content's relevance (see Ans. 6; see also Final Act. 3,
6-7).
Additionally, the Examiner relies on Liu to teach "the
interrelationships of the [content] items" and, specifically, "a hierarchical
relationship of web pages ... provid[ing] examples of ancestor web pages as
well as sibling web pages (including siblings to the ancestor)." Ans. 6-7
( citing Liu ,r,r 15, 19, Fig. 1 ); Final Act. 3 ( citing Liu ,r,r 20, 24--25), 7. It is
not readily apparent, however, where Liu teaches determining the relevance
of content using those ancestors or siblings of the ancestors. Although
ancestors and siblings of the ancestors exist, their mere existence does not
teach considering those ancestors and siblings of the ancestors when
determining relevance. Instead, the cited portions of Liu describe
"propagat[ing] the contribution of a document to each of its ancestor
documents." Liu ,r 15; see Liu ,r,r 24--25. Thus, although Liu discusses that
the relevance of ancestor content is influenced by descendant content, the
Examiner has not explained how Liu teaches descendant content relevance is
influenced by its ancestor or by the sibling of its ancestor. See Ans. 6-7; see
also Final Act. 3, 7.
Furthermore, the Examiner's rationale to combine the references is
that "[a] skilled artisan would have been motivated to combine in order to
better determine the precision of query results by determining the
contribution," i.e., relevance, "of a document within a hierarchy of
documents based on the contribution of descendant documents." Final
Act. 3--4 ( emphasis added). This reasoning, however, does not explain why
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Appeal2018-001281
Application 14/105,034
an ordinarily skilled artisan would have found it obvious to consider the
content's ancestor or sibling of the ancestor to determine the content's
relevance, as recited in claims 1, 7, and 22.
As such, we are constrained by the record to reverse the Examiner's
obviousness rejection of independent claims 1, 7, and 22 over the
combination of Epstein and Liu. Because we agree with at least one of the
arguments advanced by Appellant, we need not reach the merits of
Appellant's other arguments. See App. Br. 7-8. We also reverse the
Examiner's rejection of dependent claims 2---6 and 21 over the combination
of Epstein and Liu. Our reversal should not be taken as an indication of
allowability or non-obviousness over other teachings in Epstein, Liu, or any
other references.
DECISION
We reverse the Examiner's decision rejecting claims 1-7, 21, and 22
under 35 U.S.C. § 103(a) as being unpatentable over Epstein and Liu.
REVERSED
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