Ex Parte Yonezawa

Patent Trial and Appeal Board

Jul 18, 2017

11215432 (P.T.A.B. Jul. 18, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/215,432 08/30/2005 Takashi Yonezawa JP920040088US1
8152-0284
3177
73109 7590 07/20/2017
rWnnt Fnrsvfiie& Kim T T C EXAMINER
20283 State Road 7
Ste. 300
NGUYEN, THU N
Boca Raton, EL 33498 ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
07/20/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKASHI YONEZAWA
Appeal 2016-007762
Application 11/215,4321
Technology Center 2100
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1, 3—6, 8, 10-12, and 14—19. Claims 2, 7, 9, and 13
have been canceled. Br. 33—35. We have jurisdiction over the remaining
pending claims under 35 U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d
1420, 1423 (BPAI 1994) (precedential).
We reverse.
1 Appellant identifies International Business Machines Corporation as the
real party in interest. Br. 3.
Appeal 2016-007762
Application 11/215,432
STATEMENT OF THE CASE
Introduction
Appellant’s claimed invention is directed to “providing recommended
information on a product or service” among users. Spec., Abstract. In a
disclosed embodiment, a similarity among users may be pre-computed using
information including product purchase histories, user interests, preferences
or attributes. Spec. 3. Based on the computed similarity, association
information for the users is stored in a table as transmission network
information for specifying a transmission channel between the users.
Spec. 3. According to the Specification, by storing the transmission network
information in the table, “if an event occurs at a site user, other site users can
be provided with recommended information efficiently and promptly.”
Spec. 4. Thus, recommended information (e.g., products or services) may be
provided to a first user based on the activity of an associated second user
(i.e., a virtual user of the first user). Spec. 3.
Claims 1 and 14 are exemplary of the subject matter on appeal and are
reproduced below with the disputed limitations emphasized in italics'.
1. A system for providing a plurality of users with
recommended information via a plurality of user terminals
connected to a network, the system comprising:
a processing unit;
a memory coupled to the processing unit and on which is
maintained a table for storing association information of the
plurality of users:
a connection mechanism for connecting to the network
and plurality of user terminals;
processing means operating via the processing unit for
generating and storing the association information in the table, in
which a first user is associated with at least one second user based
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on a pre-computed similarity among the users, and the second
user is set as a virtual user of the first user;
wherein the similarity is computed for each of the plurality
of users and the association information is stored in the table as
transmission network information for specifying a transmission
channel for transmitting information between the plurality of
user terminals via the network,
processing means for specifying the first user associated
with the second user based on the association information stored
in the table;
sending means for sending recommended information on
event information to a user terminal of the specified first user, in
response to receiving the event information on an activity on the
network conducted by the second user; and
history management means for managing histories of the
recommended information sent to the first user, wherein the
sending means references the histories managed by the history
management means upon acquiring the event information of the
second user, and does not send the recommended information if
the recommended information corresponding to the event
information has already been sent to the first user.
14. A system comprising:
a processing unit;
a memory coupled to the processing unit and on which is
maintained a table for storing association information of a
plurality of users;
a connection mechanism for connecting to a network and
plurality of user terminals;
computer program instructions stored in the memory, said
processing unit executing the computer program to generate and
store the association information in the table, in which a first
user is associated with at least one second user based on a pre­
computed similarity among the users, and the second user is a
virtual user of the first user,
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program instructions stored in the memory, said
processing unit executing the computer program instructions to
compute the similarity of each of the plurality of users and the
association information;
program instructions stored in the memory, said
processing unit executing the computer program instructions to
detect network activity conducted by the second user;
program instructions stored in the memory, said
processing unit executing the computer program instructions to
responsive to detecting the network activity, determine the
second user is a virtual user of the first user, determine one of
the user terminals associated with the first user, and to determine
recommended information on an event related to the network
activity;
program instructions stored in the memory, said
processing unit executing the computer program instructions to
send the recommended information on the event to the user
terminal of the first user, which occurs in response to the network
activity conducted by the second user.
The Examiner’s Rejections2
1. Claims 1, 3—6, 8, 10-12, and 14—18 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gutta (US 2007/0106656 Al;
May 10, 2007); Hosken (US 6,438,579 Bl; Aug. 20, 2002); and
Yasuhiro et al. (JP 2002-251567; Sept. 6, 2002) (English language Abstract)
(“Yasuhiro”). Non-Final Act. 4—14.
2 In the Non-Final Rejection, the Examiner incorrectly identifies the claims
in the header statements for each of the rejections (i.e., the header does not
list correctly claims addressed in the body of the rejection). Appellant does
not assert any prejudice as a result of this error. Accordingly, we treat the
error as harmless. For purposes of this Appeal, we have corrected the
identification of claims.
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2. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gutta, Hosken, Yasuhiro, and Wachtfogel et al.
(US 2002/0138831 Al; Sept. 26, 2002) (“Wachtfogel”). Non-Final Act. 15.
Issues on Appeal
1. Did the Examiner err in finding Hosken teaches or suggests
storing association information for a plurality of users “as transmission
network information for specifying a transmission channel for transmitting
information between the plurality of user terminals via the network,” as
recited in claim 1? 3
2. In rejecting claims 14—19, did the Examiner fail to articulate
reasoning with rational underpinnings to support the proposed combinations
of, inter alia, Gutta, Hosken, and Yasuhiro?4
ANALYSIS5
As an initial matter, Appellant asserts there has been “a troubling
prosecution history” with the pending application. Br. 13—15. In particular,
Appellant explains prosecution had been reopened on four previous
3 We only address this issue, which is dispositive of the rejection of claims
1, 3—6, 8, and 10-12. We do not address additional issues raised by
Appellant’s arguments with respect to these claims.
4 We only address this issue, which is dispositive of the rejection of claims
14—19. We do not address additional issues raised by Appellant’s arguments
with respect to these claims.
5 Throughout this Decision, we have considered the Appeal Brief, filed
January 27, 2015 (“Br.”); the Examiner’s Answer, mailed June 15, 2016
(“Ans.”); and the Non-Final Office Action, mailed June 25, 2014 (“Non-
Final Act.”), from which this Appeal is taken.
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occasions after an appeal to the Board was requested. Br. 13. Appellant
further asserts multiple interviews with the Examiner and Supervisory Patent
Examiner were not productive. Br. 13—15.
Under 37 C.F.R. § 1.181, the concerns raised by Appellant are
petitionable matters—not appealable matters—and, accordingly, are not
properly before us. 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___ ”).6
Claims 1, 3—6, 8, and 10—12
Appellant disputes the Examiner’s finding that the combined
disclosures of Gutta and Hosken teach or suggest, inter alia, storing
association information of a plurality of users in a table as “transmission
information for specifying a transmission channel for transmitting
information between the plurality of user terminals,” as recited in claim 1.
Br. 22—24. In particular, Appellant argues the Examiner erred in finding
Hosken teaches the disputed limitation. Br. 24. Appellant challenges the
Examiner’s explanation that “using network information is needed to
communicate to the users” teaches storing transmission network information
or a transmission channel. Br. 24—25 (quoting Non-Final Act. 6).
6 We note that, as set forth in the Office Actions reopening prosecution,
Appellant could have elected to reinstate the requested appeal, but did not do
so.
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Hosken is generally directed to providing a set of media item
recommendations consistent with a user’s personal media content interests.
Hosken, col. 2,11. 24—28. Hosken discloses a system that uses content-based
filtering and progressively refined collaborative-based filtering in generating
the recommended media recommendations. Hosken, col. 2,11. 24—28. In a
disclosed embodiment, Hosken describes a system that searches available
user profiles “with the purpose of identifying those profiles reflecting similar
ratings of media content items rated by the user.” Hosken, col. 7,11. 4—7.
Hosken further discloses the identified profiles are correlated against the
profile of the current user and the correlations (represented as vector
relationships) are stored in work tables. Hosken, col. 7,11. 7—11.
In response to Appellant’s arguments, the Examiner merely asserts
Hosken uses a communication network to allow information presented by a
server computer system to communicate with users and to store user
profiles. Ans. 7—8.
We agree with Appellant that the Examiner has not provided
sufficient evidence or persuasive explanation that Hosken’s computed
correlations stored in the work table are stored “as transmission network
information for specifying a transmission channel,” as recited in claim 1.
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner’s rejection of independent claim 1. For
similar reasons, we do not sustain the Examiner’s rejection of independent
claim 8, which recites similar limitations. Further, for similar reasons, we
do not sustain the Examiner’s rejections of claims 3—6 and 10—12, which
depend therefrom.
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Claims 14—19
Regarding the Examiner’s rejections of claims 14—19 in view of, inter
alia, Gutta, Hosken, and Yasuhiro, Appellant argues the Examiner failed to
provide a basis for why an ordinarily-skilled artisan would have been
motivated to combine the teachings of Gutta (and Hosken) with Yasuhiro.
Br. 15—19. Appellant further contends the Examiner’s purported reasoning
is conclusory and likely relies on improper hindsight. Br. 15—19.
a. Examiner’s Rationale to Combine Gutta, Hosken, and Yasuhiro in
Rejecting Independent Claims 1 and 8
Gutta is directed to recommending items (e.g., television programs) to
a user based on the preferences of other users. Gutta, Abstract. In a
disclosed embodiment, Gutta describes filtering a general population of
users to identify a sub-population of users that share a common demographic
with a first user (i.e., advisee). Gutta 113. Examples of such demographics
used to identify associated users include age, interests, income, gender,
occupation, and education, or any combination thereof. Gutta 136. Further,
Gutta discloses the profile data from one or more of the users identified in
the sub-population (i.e., the group that shares a common demographic with
the first user) that is determined to be closest to the first user’s provided
preference is used for making program recommendations. Gutta 1 50.
Hosken is generally directed to providing a set of media item
recommendations consistent with a user’s personal media content interests.
Hosken, col. 2,11. 24—28. Hosken discloses a system that uses content-based
filtering and progressively refined collaborative-based filtering in generating
the recommended media recommendations. Hosken, col. 2,11. 24—28. In a
disclosed embodiment, Hosken describes a system that searches available
user profiles “with the purpose of identifying those profiles reflecting similar
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ratings of media content items rated by the user.” Hosken, col. 7,11. 4—7.
Hosken further discloses the identified profiles are correlated against the
profile of the current user and the correlations (represented as vector
relationships) are stored in work tables. Hosken, col. 7,11. 7—11.
Yasuhiro is directed to an improved system of providing
advertisements to a plurality of users (Yasuhiro uses the terms “active user”
and “passive user”). Yasuhiro, Abstract. Yasuhiro describes the passive
user as being an acquaintance of the active user. Yasuhiro, Abstract. When
the active user browses advertisement information on the advertisement
system, corresponding advertisement information is provided to the passive
user(s). Yasuhiro, Abstract. Further, Yasuhiro discloses for each
advertisement, information is recorded “for preventing overlapping
delivery” of the advertisement information to the passive user(s). Yasuhiro,
Abstract.
In support of the proposed combination of Gutta and Hosken, the
Examiner finds:
[I]t would have been obvious to one of ordinary skill in the art at
the time invention was made to incorporate the feature as
disclosed in Hosken [(i.e., storing association information
between users in a table as transmission network information for
specifying a transmission channel)] into the teaching of Gutta in
order to provide[ a] combination of content and collaborative
recommendation that [is] particularly tailored to the personalized
interests of a user through a computer server system connected
to a network communication.
Ans. 3 (citing Hosken, col. 2,11. 63—67); see also Non-Final Act. 5—6, 9—10.
The Examiner further finds “[i]t would have been obvious ... to incorporate
the feature as disclosed in Yahuhiro (sic) [(i.e., preventing overlapping
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delivery of duplicate recommendations)] ... in order to improve the
recommendation system.” Non-Final Act. 6—7, 10.
b. Examiner’s Rationale to Combine Gutta, Hosken, and Yasuhiro in
Rejecting Independent Claims 14
Independent claim 14 differs from independent claims 1 and 8 in that
claim 14 does not recite storing association information among users in a
table as transmission network information for specifying information
transmitting channels. Additionally, claim 14 does not recite not sending
recommended information if equivalent recommended information has
already been sent. Thus, the features of Hosken and Yasuhiro on which the
Examiner relied are not present in claim 14. Accordingly, the Examiner’s
stated reason for modifying the system of Gutta (and Hosken) with
Yasuhiro, for example, is “in order to improve the recommendation system.”
Non-Final Act. 13.
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) noted the analysis supporting a rejection under 35 U.S.C. § 103
should be made explicit. Additionally, the Federal Circuit has stated
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418.
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Additionally, “[ojbviousness requires more than a mere showing that
the prior art includes separate references covering each separate limitation in
a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d
1352, 1360 (Fed. Cir. 2011). Moreover, while it is well-established that any
obviousness analysis must, on some level, rely on hindsight, it is
impermissible to engage in a hindsight reconstruction of the claimed
invention, using the applicant’s invention as a template and selecting
elements from references to fill the gaps. Interconnect Planning Corp. v.
Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).
Here, the Examiner’s statement of motivation to combine Yasuhiro
with Gutta (and Hosken)—“to improve the recommendation system”—lacks
the requisite articulated reasoning and explanation to support the Examiner’s
legal conclusion of obviousness. See Non-Final Act. 13; Ans. 3^4. Further,
the Examiner has not explained sufficiently or identified support from the
prior art references addressing why an ordinarily-skilled artisan would have
modified use of the recommendation system of Gutta, as modified by
Hosken, to the active/passive user relationship taught by Yasuhiro.
Additionally, the Examiner’s reliance on Wachtfogel “to improve the
recommendation system” similarly lacks articulated reasoning to support the
proposed combination. Ans. 4 (citing Wachtfogel Tflf 9, 12).
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner’s rejection of independent claim 14. For
similar reasons, we do not sustain the Examiner’s rejections of claims 15—
19, which depend therefrom and also rely on the proposed combination of
Gutta, Hosken, and Yasuhiro.
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DECISION
We reverse the Examiner’s decision rejecting claims 1, 3—6, 8, 10-12,
and 14—19.
REVERSED
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