Google Inc.

Patent Trials and Appeals Board

Sep 14, 2020

2020003221 (P.T.A.B. Sep. 14, 2020)

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.
15/584,970 05/02/2017 Shumeet Baluja 098981-4873
(GGL-019USCN)
2061
10575 7590 09/14/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
BAGGOT, BREFFNI
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/14/2020 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@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUMEET BALUJA
Appeal 2020-003221
Application 15/584,970
Technology Center 3600
Before MICHAEL J. STRAUSS, IRVIN E. BRANCH, and
STACEY G. WHITE, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 21–40, which are all of the pending
claims. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We refer to the Specification, filed May 2, 2017 (“Spec.”); Final Office
Action, mailed May 31, 2019 (“Final Act.”); Appeal Brief, filed December
24, 2019 (“Appeal Br.”); Examiner’s Answer, mailed January 27, 2020
(“Ans.”); and Reply Brief, filed March 27, 2020 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Google LLC. Appeal
Br. 2.
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Application 15/584,970

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CLAIMED SUBJECT MATTER
The claims are directed to “adapting an online electronic document
environment to make content items more useful for devices with call
functionality, and/or a limited ability to render Web pages in a manner
satisfying to a user ( e.g., due to small displays, slow communications
connection speeds, and/or slow rendering), such as mobile phones. Spec.
¶ 1. Claim 21, reproduced below with disputed limitation emphasized in
italics, is illustrative of the claimed subject matter:
21. A system for device configuration-based function
delivery, comprising:
a server comprising one or more processors and memory
to:
receive, from a computing device via a computer network,
a data structure including device configuration information that
indicates the computing device comprises an application
programming interface to allow a command to access a type of
function of the computing device;
identify, responsive to a request from the computing
device that accessed an online resource having content, a first
content item having the command corresponding to the type of
function and a second content item without the command
corresponding to the type of function;
determine, responsive to the request and based on the
content of the online resource accessed by the computing device,
a first document score indicating relevancy of the first content
item to the content of the online resource, and a second document
score indicating relevancy of the second content item to the
content of the online resource, the second document score greater
than the first document score;
determine, responsive to the request and based on the
device configuration information that indicates the computing
device comprises the application programming interface to allow
the command to access the type of function of the computing
device, a first function score indicating relevancy of the
command of the first content item to the device configuration
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Application 15/584,970

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information, and a second function score indicating relevancy of
the second content item to the device configuration information,
the second function score less than the first function score;
combine the first document score indicating relevancy to
the content of the online resource with the first function score
indicating relevancy to the device configuration information to
generate a first overall score for the first content item;
combine the second document score indicating relevancy
to the content of the online resource with the second function
score indicating relevancy to the device configuration
information to generate a second overall score for the second
content item, the second overall score less than the first overall
score based at least in part on the second function score less than
the first function score; and
select, responsive to the request from the computing
device and based on the first overall score being greater than the
second overall score, the first content item with the command;
and
transmit, via the computer network to the computing
device comprising the application programming interface, the
first content item with the command to cause the command to
access or execute the type of function of the computing device.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Levin
Kumar
Reller
US 2002/0128908 A1
US 2005/0027659 A1
US 2007/0088609 A1
Sept. 12, 2002
Feb. 3, 2005
Apr. 19, 2007
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REJECTION3, 4, 5
Claims 21–40 stand rejected over 35 U.S.C. § 103(a) as unpatentable
over Levin, Kumar, and Reller. Final Act. 9–19
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken (Final Act. 9–16) and (2) the Examiner’s Answer
in response to Appellant’s Appeal Brief (Ans. 4–6) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
35 U.S.C. § 103
Claim 21 recites in pertinent part, “combine the first document score
indicating relevancy to the content of the online resource with the first

3 Claims 21–40 stand provisionally rejected on the ground of non-statutory
double patenting as being unpatentable over claims 1–20 of co-pending
Applications No. 15/189826. Final Act. 5–6. Because this rejection is
provisional, we do not address it further.
4 The Examiner has withdrawn a rejection of claims 21 and 32 and their
dependent claims under 35 U.S.C. § 112, 1st paragraph. Final Act. 6–8;
Advisory Action (mailed August 12, 2019) 2.
5 The Examiner has withdrawn a rejection of claims 21–40 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more. Ans. 3.
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function score indicating relevancy to the device configuration information
to generate a first overall score for the first content item.”
The Examiner finds this limitation to be taught by a combination of
teachings from Levin, Kumar, and Reller, and provides a rationale for
combining the teachings. Final Act. 9–16.
Appellant contends “the Office Action splits [the limitation] into
discrete elements in order to assert three different references Levin,
Kumar and Reller for the single element,” such that the Examiner
improperly fails to consider the claim as a whole. Appeal Br. 22, (citing
MPEP § 2103(I)(C)). Appellant then argues each reference individually,
with reference to the entire limitation (see Appeal Br. 23–30), rather than
argue the Examiner’s proposed combination of teachings and reasoning (see
Final Act. 13–16).
With respect to Appellant’s impermissible splitting the limitation into
discrete elements argument, MPEP § 2103(I)(C) reads as follows, in
pertinent part:
Examiners may not dissect a claimed invention into discrete
elements and then evaluate the elements in isolation. Instead, the
claim as a whole must be considered. See, e.g., Diamond v.
Diehr, 450 U.S. 175, 188-89, 209 USPQ 1, 9 (1981) (“In
determining the eligibility of respondents’ claimed process for
patent protection under § 101, their claims must be considered as
a whole. It is inappropriate to dissect the claims into old and new
elements and then to ignore the presence of the old elements in
the analysis. This is particularly true in a process claim because
a new combination of steps in a process may be patentable even
though all the constituents of the combination were well known
and in common use before the combination was made.”).
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We disagree with Appellant’s characterization of the Examiner’s
analysis, i.e., splitting the limitation into discrete elements for the purpose of
asserting three different references.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner can satisfy this burden by showing “‘some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “‘The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.’” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(quoting KSR, 550 U.S. at 416).
Here, the Examiner showed each element of the claim limitation
existed in the prior art—that is, the Examiner showed them to be “familiar.”
Final Act. 13–16; Leapfrog, 485 F.3d at 1161. The Examiner also provided
“some articulated reasoning with some rational underpinning” why the
claimed combination would be obvious. Final Act. 15, 16. We are not
persuaded, as Appellant asserts, that the Examiner impermissibly
“evaluate[d] the elements in isolation.” MPEP § 2103(I)(C). Accordingly,
we are not persuaded of error based on this argument.
Nor are we persuaded by Appellant’s arguments against the references
individually. Appeal Br. 22–31. One cannot show non-obviousness by
attacking references individually when the rejection is based on a
combination of references. See In re Merck & Co., Inc., 800 F.2d 1091,
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1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA
1981). Here, Appellant addresses each reference for its individual teaching
but does not address the Examiner’s rejection, which is based on the
combined teachings of the references. Accordingly, because Appellant does
not persuasively address the substance of the Examiner’s rejection, we are
unpersuaded of error.
We, therefore, sustain the rejection of claim 21. Because Appellant
argued each claim based on the foregoing (Appeal Br. 8; Reply Br. 5), we
also sustain the rejection of the remaining claims.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–40 103 Levin, Kumar, Reller 21–40
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED