Ex Parte Libin et al

Patent Trial and Appeal Board

Oct 28, 2016

13227787 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/227,787 09/08/2011
54004 7590 10/31/2016
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY
SUITE 1001
WESTBOROUGH, MA 01581
FIRST NAMED INVENTOR
PhilLibin
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.
EVM-lOOUSl 6195
EXAMINER
PHAN, TUANKHANH D
ART UNIT PAPER NUMBER
2154
MAILDATE DELIVERY MODE
10/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHIL LIBIN, PHIL CONSTANTINOU,
DMITRY STA VISKY, ALEX PACHIKOV,
PAVEL SKALDIN, and ANDREW SINKOV
Appeal2015-005772
Application 13/227,787
Technology Center 2100
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Evemote Corporation.
App. Br. 2.
Appeal2015-005772
Application 13/227,787
Invention
The claims are directed to modifying a website to include relevant
information by searching a database containing private, user-collected
information. Spec. 11 :22-12:6, Abstract.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. A method for presenting information on a website to a user
that accesses the website, comprising:
extracting information, as extracted information, from the
website;
searching a database containing private information for
relevant information that is relevant to the extracted information
from the website, wherein the private information is collected by
the user and wherein the relevant information is stored in the
database prior to the extracting of the extracted information from
the website; and
presenting the relevant information to the user in a manner
that associates the relevant information with content displayed
on the website.
Applied Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ramer
Baluja
Gade
US 2010/0082431 Al
US 2010/0153422 Al
US 2011/0191321 Al
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Apr. 1, 2010
June 17, 2010
Aug. 4, 2011
Appeal2015-005772
Application 13/227,787
REJECTION
The Examiner made the following rejection:
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gade, Ramer, and Baluja. Final Act. 4--7.
ANALYSIS
We have reviewed the Examiner's rejections and the evidence of
record in light of Appellants' argument that the Examiner has erred. We
disagree with Appellants' arguments and conclusions. We adopt as our own
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken (Final Act. 2-7) and the findings and the reasons set
forth in the Examiner's Answer (Ans. 2-3). We concur with the conclusions
reached by the Examiner and further highlight specific findings and
argument for emphasis as follows.
Independent Claims 1 and 11
Appellants contend the combination of Gade, Ramer, and Baluja does
not teach or suggest "searching a database containing private information for
relevant information that is relevant to extracted information extracted from
a web page where the private information is collected by the user," as recited
in independent claim 1 and similarly recited in independent claim 11. App.
Br. 8-11; Reply Br. 3---6. Specifically, Appellants argue that Ramer's
database information "is about the user and collected by someone other than
the user" instead of "information [that] is collected by a user." App. Br. 10
(emphasis in original); Reply Br. 4. Additionally, Appellants argue Ramer
teaches "personal information that identifies a person" rather than "private
information." Reply Br. 4. Appellants also argue Baluja's personal
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information "is not searched." App. Br. 10. Appellants further argue Ramer
and Baluja "search[] a public database (the Web) using results from a
private database" rather than "searching a private database using results
from a public database (the Web)." Reply Br. 5-6 (emphasis in original);
App. Br. 10.
We are not persuaded. The Examiner finds, and we agree, Gade
searches a database to find advertisements relevant to content extracted from
a webpage. Final Act. 4 (citing Gade i-f 25); Ans. 2. The Examiner further
finds, and we agree, Ramer teaches that databases can contain a user's
private information. Final Act. 4 (citing Ramer i-f 1129); Ans. 3. The
Examiner combines Gade and Ramer, resulting in a system which searches a
database that contains a user's private information. Ans. 2-3; Final Act. 4.
The Examiner further finds, and we agree, Baluja teaches that a user's
private information can be "provided by the user." Final Act. 5 (citing
Baluja i-f 40); Ans. 3. The Examiner combines Gade and Ramer with Baluja,
resulting in a system where the private information in the database has been
provided by the user. Ans. 3; see Final Act. 5.
Appellants' argument that Ramer does not teach personal information
collected by the user (App. Br. 10; Reply Br. 4) is unpersuasive. The
Examiner does not rely on Ramer to teach personal information collected by
the user, but instead relies on Baluja, which teaches "personal information
[is] provided by the user." (Final Act. 5 (citing Baluja i-f 40); Ans. 3).
Appellants' argument that Ramer teaches personal information, rather
than the claimed private information (Reply Br. 4) is also unpersuasive.
Appellants' Specification discloses a "system described herein provides
methods for presenting users with relevant personal (private) information,"
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Application 13/227,787
i.e., that personal information is equivalent to private information. Spec.
7: 18-19. When read in light of the Specification, one of ordinary skill in the
art would reasonably interpret the scope of the claimed "private
information" to include personal information. Accordingly, Ramer's
teaching of using personal information falls within the meaning of the
claimed private information. Ramer i-f 1129.
Additionally, Appellants' arguments that Ramer and Baluja search
public databases rather than private databases (Reply Br. 5-6; App. Br. 10)
and that Baluja does not search for personal information (App. Br. 10) does
not address the Examiner's combination of Gade, Ramer, and Baluja. The
test for obviousness is not whether the features of one reference may be
bodily incorporated into the structure of another reference. Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted).
Here, the Examiner's combination relies on Gade-not Ramer or
Baluja-to teach searching a database for relevant information. Final Act. 4
(citing Gade i-f 25). The Examiner relies on Ramer and Baluja to teach the
type of information contained in Gade' s searched database (private
information collected by a user). Final Act. 4--5 (citing Ramer i-f 1129;
Baluja i-f 40); Ans. 3. The Examiner combines Ramer and Baluja, which, in
combination, teach that a database can contain private information provided
by a user, with Gade' s searched database to result in a system which
searches a database containing private information provided by a user. Final
Act. 4--5; Ans. 3.
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Application 13/227,787
Furthermore, Appellants' arguments are directed to types of
databases, i.e., public and private databases (Reply Br. 5---6; App. Br. 10),
but those arguments do not address the claim language which only restricts
the type of information the database contains, i.e., "a database containing
private information." Appellants' arguments do not persuasively address the
Examiner's combination which modifies the type of information Gade' s
database contains (Final Act. 4--5; Ans. 3).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Gade, Ramer, and Baluja teaches or suggests "searching a
database containing private information for relevant information that is
relevant to extracted information extracted from a web page where the
private information is collected by the user," within the meaning of claims 1
and 11. Therefore, we sustain the Examiner's rejection of independent
claims 1 and 11.
Teaching Away
Appellants contend the Examiner improperly combined Gade, Ramer,
and Baluja because Baluja teaches away from the claimed invention. App.
Br. 10; Reply Br. 5. Specifically, Appellants argue Baluja "teach[es] the
opposite of the present claimed invention" by "searching a public database
(the Web) using results from a private database." App. Br. 10 (emphasis
omitted); Reply Br. 5.
We are not persuaded. As discussed supra, the Examiner's
combination relies on Gade to teach database searches and relies on Ramer
and Baluja to teach the type of information a database can contain (private
information provided by a user). Final Act. 4--5 (citing Gade i-f 25, Ramer
i-f 1129; Baluja i-f 40); Ans. 3. To teach away, a reference must "criticize,
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discredit, or otherwise discourage" investigation into the claimed solution.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants' arguments
discuss features in Baluja the Examiner does not rely on, i.e., searching a
public database (App. Br. 1 O; Reply Br. 5). Moreover, Appellants'
discussion of one particular embodiment in Baluja does not persuade us that
Baluja actually criticizes, discredits, or otherwise discourages the
combination found by the Examiner, i.e., searching a database containing
private information. See In re Fulton, 391 F.3d 1201. That is, Baluja's
embodiment where a public database is searched is not persuasive evidence
that Baluja teaches that a database with private information should not be
searched. Furthermore, Appellants' argument bodily incorporates Baluja's
search features (see Reply Br. 5---6; App. Br. 10) and does not address the
Examiner's combination discussed supra. Accordingly, we are not
persuaded the Examiner improperly combined Gade, Ramer, and Baluja.
Remaining Claims 2-10 and 12-20
Appellants do not argue separate patentability for dependent claims 2-
10 and 12-20 which depend directly or indirectly from claims 1 or 11. App.
Br. 5-11. For the reasons set forth above, therefore, we are not persuaded
the Examiner erred in rejecting these claims. See In re Lovin, 652 F .3d
1349, 1356 (Fed. Cir. 2011) ("We conclude that the Board has reasonably
interpreted Rule 41.3 7 to require applicants to articulate more substantive
arguments if they wish for individual claims to be treated separately.").
Accordingly, we sustain the Examiner's rejections of claims 2-10 and 12-
20. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/227,787
DECISION
We AFFIRM the Examiner's 35 U.S.C. § 103 rejection of claims 1-
20.
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).
AFFIRMED
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