11166926 (B.P.A.I. Jul. 13, 2012)

Ex Parte Ramsaier et al

Board of Patent Appeals and InterferencesJul 13, 2012

11166926 (B.P.A.I. Jul. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte MARK RAMSAIER, ROBERT D. FISH, PATRICK DENT, and DENNIS McLEOD ________________ Appeal 2010-002370 Application 11/166,926 Technology Center 2100 ________________ Before DENISE M. POTHIER, JEFFREY S. SMITH, and STANLEY M. WEINBERG, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002370 Application 11/166,926 2 SUMMARY Appellants appeal under 35 U.S.C. §§ 6(b) and 134 from the Examiner’s rejection of claims 1-5 and 7-21.1 Claims 1-5 and 7-21 stand rejected under 35 U.S.C. § 102(b) as anticipated by Rapaport (US 5,890,152). We affirm. STATEMENT OF CASE The field of the invention is information searching. Spec. 1, l. 6. The invention provides dynamic systems and methods in which user-created and user-selectable personas are used to enhance a search string for submission to a search engine. The persona information can also be used to filter or rank search results. A persona includes one or more characteristics such as user goals, interests, gender, age, race, hobbies, and business or religious interests. Title, Spec. 6, ll. 21-28; Fig. 2A, 2B. Claims 1-13 Independent claim 1 is representative, with key disputed limitations emphasized2: 1 We note that claims 7 and 14 depend from canceled claim 6. 2 Appellants argue claims 1-5 and 7-14 as a group. App. Br. 4-7. Accordingly, we select independent claim 1 as representative of that group. Arguments at Reply Br. 3 regarding claims 7-14 have been waived by Appellants’ failure to raise them in their initial brief. See App. Br. 7. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). See also, Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 Appeal 2010-002370 Application 11/166,926 3 1. A computer system that runs software that performs the following steps: provides at least one interface through which an ordinary human user can: (a) define a plurality of personas by selecting subsets of characteristics from a set of previously entered characteristics; and (b) add a new characteristic to the set for possible future use by other users; and that provides information related to the personas to assist the user in locating useful information. CONTENTIONS The Examiner finds that the “new characteristic” limitation is disclosed by Rapaport’s attitude/aptitude evaluation. Ans. 3, citing col. 17, l. 12 – col. 18, l. 65. More specifically, the Examiner finds that Rapaport’s attitude/aptitude evaluation is performed in order to determine distance scores of extracted Profile Objects (i.e., characteristics) and to represent the Profile Objects. Ans. 7, citing col. 17, ll. 23-26. Therefore, the Examiner concludes Rapaport’s distance scores can be considered to be a characteristic. Ans. 7. Appellants contend that when Rapaport adjusts a distance value, it does not add a new characteristic. App. Br. 6. They base their contention, in part, on the fact that Rapaport does not use the phrase “new characteristic” (Reply Br. 1) and also upon the assertion that the Examiner is “taking the term new characteristic way out of context” (Reply Br. 2, l. 14) (internal quotation marks omitted). According to Appellants, Rapaport’s distance scores are limited to values of a characteristic and are not themselves characteristics. Reply Br. 2. F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (citations and quotation marks omitted). Appeal 2010-002370 Application 11/166,926 4 ISSUE Did the Examiner err in rejecting claim 1 by finding that Rapaport discloses an interface through which a user can add a new characteristic to the set of previously entered characteristics for possible future use by others? ANALYSIS For purposes of our discussion, we separate disputed subparagraph (b) into two parts: (1) add a new characteristic to the set [of previously entered characteristics]; and (2) for possible use by other users. (1) add a new characteristic to the set [of previously entered characteristics] The Examiner finds that Appellants have not defined the term “characteristic” and that therefore the term “characteristic” can be any quality directly or indirectly describing a person. Ans. 7. We agree because “characteristic” may be defined as “a distinguishing trait, quality, or property.” WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 140 (1963). It may also be defined as “something that distinguishes or identifies a person or thing or class.” Id. Instead of defining “characteristic,” Appellants’ specification provides multiple, non-limiting examples of characteristics, some of which are very broadly described. For example, characteristics include: (a) user interests, setting/context and descriptors, and business or religious interests (Spec. 6, ll. 24-28); (b) 1000 different choices for characteristics in 20 different areas including not only the many characteristics and sub-characteristics expressly listed, but also characteristics that are very broadly identified as “and so Appeal 2010-002370 Application 11/166,926 5 forth” (Spec. 12, ll. 5-12); and (c) Fig. 2A discloses a list of characteristics 134 that include “interests” and “philosophy” (Spec. 14, ll. 3-11). As such, the term, “characteristic” can be construed broadly to include all the above examples and additional “so forth” examples. As we observed above, Appellants’ examples of characteristics include interests and philosophy. We find that Rapaport’s Attitude/Aptitude Evaluation and the resulting distance score representing a Profile Object (see col. 17, ll. 23-26) can be considered at least an interest, value, attitude of a user, “and so forth,” thereby broadly falling within Appellants’ examples and within the above-cited dictionary definition. Therefore, contrary to Appellants’ contention, the Examiner has not taken the recited term “new characteristic” way out of context. Instead, the Examiner has properly given the claim term “characteristic” its broadest reasonable interpretation. In addition, Appellants incorrectly contend that Rapaport has no teaching whatsoever of allowing users to add new Profile Objects. App. Br. 5. To the contrary, Rapaport states that “a user can create his or her own Profile Objects.” Col. 8, ll. 53-54. Appellants’ arguments further seek to rely on unclaimed phrases. For example, Appellants argue that“[o]ne could theoretically alter the Rapaport system to allow users to create their own queries for a newly added Profile Object.” App. Br. 5. Claim 1 does not recite “create their own queries.” Also, Appellants contend that Rapaport does not “‘add a new characteristic to the set of possible characteristics’ . . . .” App. Br. 6. Claim 1 does not recite a set of “possible” characteristics. Appellants further assert Rapaport “fails to teach the claimed element of a user adding a persona characteristic.” Reply Br. 1. Claim 1 does not recite “adding a persona characteristic.” Appeal 2010-002370 Application 11/166,926 6 Appellants additionally argue that Rapaport cannot add color or temperature scores and has no description of code for adding characteristics, and no description of a process for doing that. Reply Br. 2. Claim 1 does not recite color or temperature scores and also does not recite description of code, or a process. Lastly, Appellants argue that “the pending claims and specification contemplate users defining characteristic/value pairs where the ‘characteristic’ is a parameter to which values can be assigned.” Reply Br. 2. Regardless of what the specification contemplates, terms from the specification are not incorporated into the claims. See In re Prater, 415 F.2d 1393, 1405 (CCPA 1969) (“an applicant should [not] have limitations of the specifications read into a claim where no express statement of the limitation is included in the claim.”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (although claims are interpreted in light of the specification, limitations from the specification are not read into the claims.). Also, claim 1 does not recite that a characteristic is a parameter to which values can be assigned. (2) for possible use by other users Appellants recite this limitation (App. Br. 4, l. 19; App. Br. 6, l. 15) but fail to present any argument to show that Rapaport does not disclose it. Merely pointing out what the claim recites and asserting at best that Rapaport fails to teach this limitation is not considered a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). For the first time in the Reply Brief, Appellants attempt to argue that Rapaport does not teach adding a characteristic for possible future use by Appeal 2010-002370 Application 11/166,926 7 others. See Reply Brief at 2-3. However, although the claim recites “possible” use by others, Appellants argue as if the term “possible” is not in the claim, such as disputing that Rapaport does not make the characteristics (1) “available for others to use” (Reply Br. at 2, l. 28) or Rapaport is not(2) “making characteristics added by one user available to other users.” (Reply Br. 3, l. 9). Even if the arguments had correctly recited the claim language, such arguments are waived. See Ex parte Borden, 93 USPQ2d at 1471 (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”) See also Optivus Tech., Inc., 469 F.3d at 989 (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (citations and quotation marks omitted). Nonetheless, we agree with the Examiner’s finding that Rapaport discloses this limitation and adopt the Examiner’s findings. See Ans. 7-8. In addition, Appellants effectively concede that the Examiner’s position is correct. Specifically, Appellants state: “[o]n page 8 the Examiner argues that the claim language merely requires the new characteristic to be available for others to use, and that there is no requirement that others actually use the new characteristic. In that narrow argument the examiner is correct.” Reply Br. 3 (emphasis added).3 We therefore affirm the Examiner’s rejection of claims 1-5 and 7-14. 3 We also note that the claim does not recite the following limitation that Appellants argue: there is no provision for users to see each other’s distance scores or any other personal information (Reply Br. 2, l. 28-3, l. 3). Appeal 2010-002370 Application 11/166,926 8 Claims 15-21 Claim 15 is also representative, with key disputed limitations emphasized:4 15. A searching system, comprising: an interface through which a human user can manage a persona that includes a set of characteristics, at least one of which can be added by the user; and computer software that enhances a query to produce an enhanced search string, and provides results to the user that differs as a function of both the persona and the enhanced search string from that which would have bee5 returned from submission of the query. ARGUMENTS AND ANALYSIS “Enhance” may be defined as “to increase the worth or value of.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY 753 (1961). The Examiner finds that (1) any action that allows returning more accurate results in response to a submitted query enhances a search string (Ans. 9); and (2) when a user of the Rapaport system provides input data or a specific subject keyword, the input data or specific subject keyword can be considered as a query to enhance a search string. Ans. 5, 9. Giving the claim its broadest reasonable interpretation, the Examiner finds that the claim does not require directly adding additional terms to the original query and instead enhances the original query and the original search string by presenting additional filtering parameters. Ans. 9. 4 Appellants argue claims 15-21 as a group. App. Br. 4-7. Accordingly, we select independent claim 15 as representative of that group. 5 We assume that “bee” is a typographical error that should read “been.” Appeal 2010-002370 Application 11/166,926 9 Appellants seek to counter the Examiner’s finding by suggesting that claim 15 recites various terms which are in fact not recited. For example, claim 15 does not recite “deriving additional search terms from the persona characteristics” and “semantic enhanced searching.” App. Br. 6. Appellants also contend that the portions of Rapaport relied upon by the Examiner do not enhance a search string “according [to] the concepts of the present invention.” App. Br. 6. However, unless specially defined, terms and concepts discussed in the Specification are not incorporated or read into the claims. See Prater, supra.; In re Van Geuns, supra. Appellants also argue that Rapaport performs a “standard” search and determines how closely the retrieved records match key words in the Personal Profile but does not enhance the search string. App. Br. 6-7. Appellants further contend that claim 15 does not recite “enhancing search results” but does recite enhancing the search string. Reply Br. 4. The Examiner finds that Rapaport sorts certain search results based on a user’s profile in order to provide the most accurate and relevant results and this action enhances both the search string and the original query by presenting an additional filtering parameter even if it does not directly add additional search terms into the original query. Ans. 9, citing col. 9, ll. 15- 40. Rapaport explains that its system retrieves media files from the internet based upon a subject key word, evaluates the obtained media files (results), and adjusts the user’s Personal Profile database in response the selection of the media file. Col. 3, ll. 30-36. Additionally, Rapaport teaches that the user’s selection may be used in further searching by changing the distance value and thus suggests producing an enhanced search string and Appeal 2010-002370 Application 11/166,926 10 provides results based on this enhancement. See col. 10, ll. 57-61. We therefore agree with the Examiner that giving the claim its broadest reasonable interpretation, the referenced adjustment produces an enhanced search string and an enhanced query (i.e., a search string and a query whose value or worth has been increased) that provides results to the user that differ from what would have been returned from the submission of the query. See Ans. 5. We thus conclude that Rapaport’s searching differs from a “standard” search and can reasonably be mapped to claim 15’s broad recital of an “enhance[d]” query and an “enhanced” search string in claim 15. We therefore affirm the rejection of claims 15-21.6 DECISION The Examiner’s decision rejecting claims 1-5 and 7-21 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED 6 Appellants’ arguments at Reply Br. 5 regarding claims 16-21 have been waived because they are presented for the first time in the Reply Brief. (Reply Br. 4-5). See n.2 supra.