Ex Parte Gaussier et al

Board of Patent Appeals and Interferences

Jan 8, 2009

09982236 (B.P.A.I. Jan. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC GAUSSIER, FRANCINE CHEN,
and ASHOK CHHABEDIA POPAT
____________________

Appeal 2008-2065
Application 09/982,236
Technology Center 2100
____________________

Decided: January 8, 2009
____________________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b).

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A. INVENTION
According to Appellants, the invention relates to hierarchical
clustering of objects, and more particularly, to soft hierarchical clustering of
objects based on a co-occurrence of object pairs (Spec. 1, [001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method performed by a computer for clustering a plurality of
documents in a structure comprised of a plurality of clusters hierarchically
organized, wherein each document includes a plurality of words and is
represented as a set of (document, word) pairs, the method comprising:

accessing the document collection;

performing a clustering process that creates a hierarchy of clusters that
reflects a segregation of the documents in the collection based on the words
included in the documents, wherein any document in the collection may be
assigned to a first cluster in the hierarchy based on a first segment of the
respective document, and the respective document may be assigned to a
second cluster in the hierarchy based on a second segment of the respective
document, wherein the first and second clusters are associated with different
paths of the hierarchy;

storing a representation of the hierarchy of clusters in a memory; and

making the representation available to an entity in response to a
request associated with the document collection.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Heckerman US 6,742,003 B2 May 25, 2004
Fohn US 6,460,025 B1 Oct. 1, 2002
Claims 1-26 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Heckerman and Fohn.

We AFFIRM.

II. ISSUES
Have Appellants shown that the Examiner erred in concluding that
claims 1-26 are unpatentable under 35 U.S.C. § 103(a) over the teachings of
Heckerman and Fohn? In particular, the issues turn on whether:
1) the combined teachings of Heckerman and Fohn disclose or suggest
“performing a clustering process that creates a hierarchy of clusters that
reflects a segregation of the documents in the collection based on the words
included in the documents, wherein any document in the collection may be
assigned to a first cluster in the hierarchy based on a first segment of the
respective document, and the respective document may be assigned to a
second cluster in the hierarchy based on a second segment of the respective
document” (claim 1);
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2) one of ordinary skill in the art would have found it obvious to
combine Heckerman and Fohn.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Heckerman
1. Heckerman discloses a system for visualizing clusters (categories) and
segments (summarized clusters) of data, wherein the system
automatically categorizes incoming case data into clusters,
summarizes those clusters into segments, determines similarity
measures for the segments, and then forms and visually depicts
hierarchical organizations of those selected clusters (Abstract).
2. The system allows the data analyst to control combining and splitting
of categories, wherein the data analyst combines categories that are
most similar and splits categories that have been combined (col. 10, ll.
5-10).
3. The system creates a hierarchical map by starting with the base
categories, and successively and iteratively combining the most
similar categories in order to generate combined categories until a
single combined category contains all the records of the collection
(col. 10, ll. 48-52).

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Fohn
4. Fohn discloses calculating entity relevance for the entities in the
hierarchies of information to be used to guide the user in his
exploration, wherein the state relevance is dynamically computed, as
the user selects nodes or categories during exploration and each
selection serves to further constrain the solution space (Abstract).
5. Entities are common to hierarchies of separate root nodes, and
traversing from one root node to another root node would therefore
not yield an empty solution state (col. 14, ll. 51-56, Fig. 4).
6. Catalog exploration uses category (i.e. node) hierarchy, and has
associated products (i.e., entities), wherein each hierarchy offers a
different perspective on the product set: one hierarchy classifies the
product according to an application, or type of use, perspective; one
hierarchy classifies the product according to an operating conditions
perspective; and another hierarchy classifies the product according to
other operating conditions perspective (col. 20, ll. 51-63; Figs.
6A-6C).

IV. PRINCIPLES OF LAW
"Our analysis begins with construing the claim limitations at issue."
Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144, at *2 (BPAI 2007).
"[T]he PTO gives claims their 'broadest reasonable interpretation.'" In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d
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1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read into
the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

The Supreme Court reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 1740.
“Under the correct analysis, any need or problem known in the field
and addressed by the patent can provide a reason for combining the elements
in the manner claimed.” Id. at 1742. The Court noted that “[c]ommon sense
teaches . . . that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
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teachings of multiple patents together like pieces of a puzzle.” KSR, 127 S.
Ct. at 1742. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1739).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was "uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 127 S. Ct. at
1741).

V. ANALYSIS
Rejection under U.S.C. § 103(a)
Whether each argued claim limitation is found in the prior art teachings:
Appellants do not provide separate arguments with respect to the
rejection of claims 1-26. Therefore, we select independent claim 1 as being
representative of the cited claims. 37 C.F.R. § 41.37(c)(1)(vii).

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Appellants contend that the “the claimed invention requires that the
documents used to create the hierarchy of clusters are the same documents
that can be assigned to both first and second clusters of the hierarchy of
clusters” (App. Br. 19) and thus “Heckerman fails to disclose, teach, or
suggest the ability to assign documents to both first and second clusters
based on segments within the same documents used to create the hierarchy
of clusters” (Id.). Appellants further contend that “Fohn fails to teach,
suggest, or disclose the ability to assign documents to both first and second
clusters based on segments within the same documents used to create the
hierarchy of clusters” (App. Br. 20). Contrary to the Appellants’ assertions,
the Examiner finds that the combination of Heckerman in view of Fohn
discloses the claimed limitations (Ans. 2-4).
We note that Appellants’ argument is not commensurate with the
claimed invention, since the claims do not recite “the same documents that
can be assigned to both first and second clusters” or “the ability to assign” as
the Appellants contend. Therefore, an issue we address on appeal is whether
the combined teaching of Heckerman and Fohn discloses “performing a
clustering process that creates a hierarchy of clusters that reflects a
segregation of the documents in the collection based on the words included
in the documents, wherein any document in the collection may be assigned
to a first cluster in the hierarchy based on a first segment of the respective
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document, and the respective document may be assigned to a second cluster
in the hierarchy based on a second segment of the respective document”
(claim 1).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio at 1324. Furthermore, our analysis will not
read limitations into the claims from the Specification. See In re Van Geuns
at 1184. Appellants’ claims simply do not place any limitation on what the
term “may be assigned” is to be, to represent, or to mean, other than that any
document in the collection “may be assigned to a first cluster in the
hierarchy” and “may be assigned to a second cluster in the hierarchy.”
Appellants appear to be arguing that, because Heckerman classifies
the data records “into a plurality of ‘mutually exclusive first clusters’”
(App. Br. 17), Heckerman does not disclose that the same document also
may be assigned to a second cluster. That is, Appellants appear to be
arguing that Heckerman does not disclose that the document must be
capable of being assigned to a second cluster at the same time that it is
assigned mutually exclusively to the first cluster. However, our analysis will
not read such “must be capable” or “at the same time” or the lack of
“mutually exclusive” language into the claims. In fact, we find that the
“may be” language does not even require that such “assigned to the first
cluster” or “assigned to the second cluster” must be read into the claims
since the claims recite that such assignment is merely a possibility, i.e.,
“may be” (as well as “may not be”).
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We generally agree with the Examiner’s finding that the combined
teaching of Heckerman and Fohn discloses and/or suggests the claimed
elements on appeal beginning at page 2 of the Answer, and the Examiner’s
corresponding responsive arguments beginning at page 6 of the Answer.
Heckerman teaches categorizing incoming case data into clusters,
summarizing those clusters into segments, determining similarity measures
for the segments, and then forming and visually depicting hierarchical
organizations of those selected clusters, wherein the hierarchical map is
created by starting with the base categories (FF 1-3). Fohn discloses
calculating entity relevance for the entities in the hierarchies of information
to be used to guide the user in his exploration, wherein the entities are
common to hierarchies of separate root nodes (FF 4-6). We find the process
of Heckerman to be a clustering process that creates a hierarchy of clusters.
Further, we find the hierarchy of clusters of Fohn to be a hierarchy in which
an entity may be assigned to different clusters based on the
attributes/segments of the entity.
Though Appellants appear to be arguing that Heckerman or Fohn
alone fails to disclose the claim limitation, the Examiner has rejected the
claims based on the combination of Heckerman and Fohn, and
nonobviousness cannot be shown by attacking the references individually.
We thus agree with the Examiner’s finding that the combined teachings of
Heckerman and Fohn would disclose or at the least strongly suggest
“performing a clustering process that creates a hierarchy of clusters that
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reflects a segregation of the documents in the collection based on the words
included in the documents, wherein any document in the collection may be
assigned to a first cluster in the hierarchy based on a first segment of the
respective document, and the respective document may be assigned to a
second cluster in the hierarchy based on a second segment of the respective
document,” as recited in claim 1. An artisan would have been able to fit the
teachings of Heckerman and Fohn together like pieces of a puzzle because
person of ordinary skill is also a person of ordinary creativity, not an
automaton. See KSR, 127 S. Ct. at 1742.
Though Appellants argue in the Reply Brief that “Fohn fails to
disclose ‘assigning documents to both first and second clusters based on
segments within the same documents used to create the hierarchy of
clusters’” (Reply Br. 4), as discussed above, such argument is not
commensurate with the claim invention. Further, the Examiner has rejected
the claim based on the combined teachings of Heckerman and Fohn, not just
over Fohn alone. We agree with the Examiner that Heckerman discloses
using the documents to create a hierarchy of clusters, while Fohn discloses
that the documents may be assigned to first and second clusters. An artisan
would have found it obvious that, in order to create a hierarchy of clusters
wherein the documents are assigned to a plurality of clusters as taught by the
combined teaching of Heckerman and Fohn, the documents assigned to the
plurality of clusters are used in the creation of the hierarchy.
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As to claim 8, Appellants further argue that “Fohn does not assign
entities to nodes because these nodes and entities already have a pre-existing
relationship,” and that “Heckerman only assigns a record to one of several
clusters” (App. Br. 21). However, as discussed above, the Examiner has not
rejected the claims just over Heckerman or Fohn alone. We find that
Heckerman discloses using the documents to create a hierarchy of clusters
that is not an already pre-existing relationship, while Fohn discloses that the
records may be assigned to several clusters. An artisan would have
understood that, in creating a hierarchy of clusters with entities assigned to a
plurality of clusters as taught by the combined teaching of Heckerman and
Fohn, the relationship does not yet pre-exist.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in finding all elements of the claimed invention are disclosed
or suggested by the combined teaching of Heckerman and Fohn.

Whether one of ordinary skill in the art would have found it obvious to
combine the prior art teachings:
Appellants argue that “one of ordinary skill in the art would not have
a reason to combine Fohn into Heckerman to form the claimed invention”
(App. Br. 22). Therefore, another issue we address is whether the
Appellants have shown error in the Examiner’s findings that one of ordinary
skill in the art would have found it obvious to combine the teachings of
Heckerman and Fohn.
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The Examiner’s finding that it would have been obvious to combine
Heckerman and Fohn beginning at page 4 of the Answer, and the
corresponding argument beginning at page 7 of the Answer, comply with the
requirements of the above-noted case law. Heckerman discloses clustering
documents (FF 1-3). Fohn discloses entities belonging to multiple clusters
based on their attributes (FF 4-6). We thus agree with the Examiner’s
finding that one of ordinary skill in the art would have incorporated the
multiple clusters having common entities of Heckerman to the clustering
process of Fohn, because “the combination would ‘provide a powerful
flexible technique for locating entities in a large information space using
hierarchical navigation and browsing of these one or more hierarchies’”
(Ans. 7-9).
Appellants have provided no evidence that incorporating Heckerman
to Fohn was “uniquely challenging or difficult for one of ordinary skill in the
art,” Leapfrog, 485 F.3d 1157, 1162 (Fed. Cir. 2007) nor have Appellants
presented evidence that this incorporation yielded more than expected
results. Rather, we find that Appellants claimed invention is simply an
arrangement of the known teaching of clustering to the known teaching of
clusters having common entities. “[W]hen a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 127 S. Ct. at 1740 (citing
Sakraida v. AG Pro, Inc., 425 U. S. 273, 282 (1976)).
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Accordingly, we conclude that the Appellants have not shown that the
Examiner erred in rejecting claim 1, and claims 2-26 falling with claim 1,
under 35 U.S.C. § 103(a).

CONCLUSION OF LAW
(1) Appellants have not shown that the Examiner erred in finding that
claims 1-26 are unpatentable under 35 U.S.C. § 103(a) over the teachings of
Heckerman and Fohn.
(2) Claims 1-26 are not patentable.

DECISION
The Examiner’s rejection of claims 1-26 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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