GOOGLE INC.

Patent Trials and Appeals Board

Aug 3, 2020

2019002913 (P.T.A.B. Aug. 3, 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.
15/059,826 03/03/2016 Stephen R. LAWRENCE 0059-041005 1067
79318 7590 08/03/2020
BRAKE HUGHES BELLERMANN LLP
P.O. Box 1077
Middletown, MD 21769
EXAMINER
LU, CHARLES EDWARD
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
docketing@brakehughes.com
uspto@brakehughes.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN R. LAWRENCE
____________________

Appeal 2019-002913
Application 15/059,826
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection of claims 2–18. Appeal Br. 8. Claim 1 has been cancelled.
Appeal Br. 22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies Google LLC as the real party in interest. Appeal Br. 1.
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Application 15/059,826

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CLAIMED SUBJECT MATTER
Claim 14 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
14. A non-transitory computer readable storage medium storing
one or more programs for execution by one or more processors,
the one or more programs comprising:
[A.] instructions for accessing a user profile for a user;
[B.] instructions for receiving a search query from the user;
[C.] instructions for obtaining, from a search engine to which the
search query is provided, search results identifying a set of
search result documents responsive to the search query, each
document being associated with a generic score that is
independent of the user profile;
[D.] instructions for determining a personalized score for each
document of at least a subset of the set of search result
documents, in accordance with the user profile;
[E.] instructions for determining a final score for each document
in at least said subset of the set of search result documents
as a function of [:]
[i.] the personalized score for the document,
[ii.] the generic score associated with the document, and
[iii.] a confidence score corresponding to a confidence
level in the user profile,
the confidence score accounting for one or more of:
[a.] a quantity of information acquired about the
user,
[b.] how closely the search query matches the user
profile, and
[c.] an age of the user profile;
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[F.] instructions for providing, in accordance with the final
scores, results identifying at least a subset of the set of search
result documents to a client system associated with the user,
[G.] wherein providing results identifying at least a subset of the
set of search result documents includes providing at least
one result of the obtained search results in accordance with
the personalized score for the corresponding document and
providing other results of the obtained search results in
accordance with the generic scores for the documents
corresponding to the other results but independent of the
user profile.
REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Masumitsu US 2002/0157095 A1 Oct. 24, 2002
Dumais US 2004/0267700 A1 Dec. 30, 2004
Konig US 6,981,040 B1 Dec. 27, 2005

REJECTIONS
The Examiner rejects claims 2–18 under 35 U.S.C. § 103 as being
unpatentable over the combination of Konig, Masumitsu, and Dumais. Final
Act. 6–10. We select claim 14 as the representative claim for this rejection.
Appellant’s Appeal Brief contentions discussed herein as to claim 14 are
determinative as to this rejection. 3

2 All citations herein to the references are by reference to the first named
inventor/author only.
3 Other than the “Summary” filed Sept. 24, 2018, the Appeal Brief (“Appeal
Br.”) we cite herein is the Appeal Brief filed August 8, 2018.
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Therefore, except for our ultimate decision, we do not address claims
2–13 and 15–18 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the rejections on appeal. Therefore, Appellant’s
other contentions are not discussed in detail herein.
A.
Appellant contends that the Examiner erred in rejecting claim 14
under 35 U.S.C. § 103 because:
The Final Office action admits that, “Konig and
Masumitsu as applied above do not expressly teach providing at
least one result of the obtained search results in accordance with
the personalized score for the corresponding document and
providing other results of the obtained results solely in
accordance with the generic scores for the documents
corresponding to the other results.” [Final Act. 8.]
Yet directly after this admission, the Office action alleges
that “Konig and Masumitsu as applied above teach or suggest
providing results at least in accordance with personal and/or
generic scores,” [Id.] but the Examiner’s allegation is
unsupported by any evidence, as the Examiner does not cite to
any portion of Konig or Masumitsu and provides no reasoning
or explanation for his bald allegation. Therefore, this
unsupported allegation is insufficient to establish a prima-facie
case of obviousness under KSR. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417–18 (2007).
Appeal Br. 9–10 (emphasis added).
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We are unpersuaded by Appellant’s argument. Contrary to
Appellant’s assertion that the Examiner provides no reasoning, the Examiner
finds:
Konig at least suggests the subject matter of each document
being associated with a generic score that is independent of the
user profile (e.g., col. 25, ll. 50–60); assigning a personalized
score to each of at least a subset of identified documents (e.g.,
col. 24, l. 51 – col. 25, l. 49; fig. 19), the personalized score being
based on the user profile (e.g., col. 27, ll. 40–50).
Final Act. 7.
B.
Also, Appellant contends that the Examiner erred in rejecting claim
14 under 35 U.S.C. § 103 because:
Dumais does not disclose, “providing at least one result of THE
obtained search results in accordance with the personalized
score for the corresponding document and providing other results
of THE obtained search results in accordance with the generic
scores for the documents corresponding to the other results but
independent of the user profile,” as recited in claim 14 (emphasis
added), where the obtained search results are obtained “from a
search engine to which the search query is provided . . . [and
identify] search result documents responsive to the search query,
each document being associated with a generic score that is
independent of the user profile,” as recited in claim 14.
. . .
Moreover, there is no indication in Dumais that each personal
result obtained from Dumais’s unified index of information that
a person has observed are also associated with a generic score,
as in claim 14. Indeed, it is unlikely that email, office documents,
and calendar appointments mentioned in Dumais would be
associated with a generic score.
Appeal Br. 10–11.
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We are unpersuaded by Appellant’s argument. Appellant does not
address the actual reasoning of the Examiner’s rejection. Instead, Appellant
attacks the Dumais reference singly for lacking a teaching that the Examiner
relied on a combination of Konig and Dumais (and Masumitsu) to show. In
particular, the rejection does not rely on Dumais for teaching the “providing
at least one result of THE obtained search results in accordance with the
personalized score for the corresponding document” (Appeal Br. 10
(additional emphasis added)) aspect disputed by Appellant. Rather, the
Examiner relied on Konig to show “the subject matter of each document
being associated with a generic score that is independent of the user profile
. . .; assigning a personalized score to each of at least a subset of identified
documents . . .; fig. 19), [and] the personalized score being based on the user
profile . . .” (Final Act. 7 (emphasis added)), and relied on Dumais to show it
was known to “provid[e] at least a personal result and providing other results
from other search engines (e.g., [0029])” (Final Act. 8). The Examiner then
reasoned:
Results from the other search engines teach or suggest generic
results obtained solely in accordance with a generic score. As
combined, at least one result can be provided according to a
personalized score, and other results can be provided solely in
accordance with generic scores independent of the user profile.
Final Act. 8. The Examiner further reasoned that it would have been
obvious to modify Konig and Masumitsu scoring to include functionality
from Dumais’s independent results. Final Act. 9. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Merck & Co. Inc., 800 F.2d
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1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA
1981) (explaining the relevant inquiry is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references)(emphasis added).
C.
Further, Appellant contends that the Examiner erred in rejecting claim
14 under 35 U.S.C. § 103 because:
The distinction of claim 14 over the cited art is not that all
the results come from the same source, but rather that all the
search results are obtained from the same search engine to
which the query is submitted and that each search result
document obtained from the search engine, which may also
receive a personalized score, is associated with a generic score.
Appeal Br. 11–12 (emphasis added).
We are unpersuaded by Appellant’s argument. First, we agree with
the Examiner the argued “same search engine” limitation is not claimed.
Ans. 5. Appellant does not cite any particular language in claim 14 as
providing this requirement.
Second, Appellant’s disclosure contradicts Appellant’s argument.
“Search engine system 107 comprises one or more search engines 104.”
Spec. ¶ 30 (emphasis added). Further, we are unable to find any explicit
disclosure of the argued “same search engine” requirement in the
Specification.
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D.1.
As reproduced supra, step E of claim 14 requires:
[E.] instructions for determining a final score for each document
in at least said subset of the set of search result documents
as a function of [:]
[i.] the personalized score for the document,
[ii.] the generic score associated with the document, and
[iii.] a confidence score corresponding to a confidence
level in the user profile,
the confidence score accounting for one or more of:
[a.] a quantity of information acquired about the user,
[b.] how closely the search query matches the user
profile, and
[c.] an age of the user profile.

D.2.
In rejecting claim 14, the Examiner finds:
Konig at least suggests the subject matter of each document
being associated with a generic score that is independent of the
user profile (e.g., col. 25, ll. 50–60); assigning a personalized
score to each of at least a subset of identified documents (e.g.,
col. 24, l. 51 – col. 25, l. 49; fig. 19), the personalized score being
based on the user profile (e.g., col. 27, ll. 40–50); determining a
final score for each document in the subset of the identified set
of documents (e.g., col. 27, l. 42 – col. 28, l. 20) as a function of
the personalized score for the document, the generic score
associated with the document, and a confidence score (e.g., col.
24, l. 50 – col. 25 l. 49, col. 28), accounting for one or more of:
quantity of information acquired about the user, how closely a
search query matches the user profile, and age of the user profile
(e.g., fig. 4, 17; col. 28). Furthermore, Masumitsu teaches or
suggests a confidence score corresponding to a confidence level
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in the user profile, the confidence score accounting for one or
more of: quantity of information acquired about the user, how
closely a search query matches the user profile, and age of the
user profile (e.g., [0062–0064]).
Final Act. 7 (emphasis added).
D.3.
Appellant contends that the Examiner erred in rejecting claim 14
under 35 U.S.C. § 103 because, as to Konig:
[T]he Examiner does not offer any explanation of how these
portions of Konig can be interpreted as suggesting or rendering
obvious the claim element that the Examiner admits is not
disclosed by Konig.
[Konig’s] FIGs. 4A – 4E disclose, respectively, a “word grade,”
a “site probability,” a “topic probability,” a “topic probability,”
and a “value probability,” but none of these values are equivalent
to the claimed “confidence score accounting for one or more of:
quantity of information acquired about the user, how closely a
search query matches the user profile, and age of the user
profile,” as recited in claim 14. FIG 17 discloses a “cluster
score,” a “location score,” a “word score,” a “product score,” a
“product feature score,” a “topic score,” and a “topic expert
score,” but none of these scores are equivalent to the claimed
“confidence score accounting for one or more of: quantity of
information acquired about the user, how closely a search query
matches the user profile, and age of the user profile,” as recited
in claim 14.
It is unclear what portions of column 28 of Konig the
Office finds relevant to the claimed feature.
Appeal Br. 14. Also, as to Masumitsu:
While Masumitsu discloses a weight that is related to a
reliability of a user profile or that represents a quality of the user
profile, Masumitsu does not disclose the specific confidence
score recited in claim 14, namely “a confidence score
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corresponding to a confidence level in the user profile, the
confidence score accounting for one or more of: quantity of
information acquired about the user, how closely a search query
matches the user profile, and age of the user profile.” The weight
in Masumitsu accounts for neither a quantity of information
acquired about a user, nor how closely a search query matches
the user profile, nor an age of the user profile.
Appeal Br. 16. Further, as to Masumitsu:
Although Masumitsu discloses something that is related to
the reliability of a user profile, neither Masumitsu, nor any of the
other cited references, discloses . . . using such a confidence
score, in combination with a personalized score and generic score
to determine a final score for a document.
Appeal Br. 18.
D.4.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
We agree with Appellant that “none of these scores [in Konig] are
equivalent to the claimed ‘confidence score’” (Appeal Br. 14). Although we
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determine that the Examiner’s reliance on Konig is misplaced, we disagree
with Appellant’s contention that Masumitsu’s weight that represents a
quality of the user profile, does not disclose the specific confidence score
recited in claim 14. We agree with the Examiner that Masumitsu’s weight is
sufficient to suggest the claimed “confidence level in the user’s profile.”
Appellant’s final point is essentially that even given this, it still leaves
short Examiner’s articulation reasoning for the combination of references
rendering obvious “using such a confidence score, in combination with a
personalized score and generic score to determine a final score for a
document.” Appeal Br. 18.4 We agree. We have determined supra that the
Examiner has found the parts of claim 14, and sufficiently explained why the
combined references teach, suggest, or render obvious those parts.
However, this alone is not sufficient in this case to also articulate why those
parts would be combined in the order required by claim 14. We conclude,
consistent with Appellant’s argument that there is insufficient articulated
reasoning to support the Examiner’s finding that the references render
obvious the ordered combination of parts required by claim 14.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 14 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.

4 See for example the equation “Final Score = ProfileScore*
ProfileConfidence + GenericScore*(l - ProfileConfidence).” Spec. ¶ 77.
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CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 2–18 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 2–18 as being unpatentable under
35 U.S.C. § 103 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–18 103 Konig, Masumitsu,
Dumais
2–18
Overall
Outcome

2–18

REVERSED