INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Jul 22, 2020

2020001277 (P.T.A.B. Jul. 22, 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.
14/088,870 11/25/2013 Ralf BERTRAM DE920010035US2 3600
46583 7590 07/22/2020
Roberts Calderon Safran & Cole, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/22/2020 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@rcsc-ip.com
lgallaugher@rcsc-ip.com
secretaries@rcsc-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RALF BERTRAM, GERHARD SCHRIMPF, and HERMANN
STAMM-WILBRANT1
____________________

Appeal 2020-001277
Application 14/088,870
Technology Center 3600
____________________

Before ROBERT E. NAPPI, JAMES R. HUGHES, and
LARRY J. HUME, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, International Business Machines
Corporation is the real party in interest. Appeal Br. 2.
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INVENTION
The invention relates generally to a method for recommending items
to an advisee based on item recommendations of other users of the system.
Specification ¶1. Claim 2 is reproduced below.
2. A method for generating a recommendation of an item
to an advisee, the method comprising:
receiving, by a computing apparatus of an online
recommendation system, a recommendation request including a
selected item list of an advisee;
determining, by the computing apparatus, a plurality of
similarity factors based on a profile of the advisee which
comprises a plurality of records, each record including a user
identifier, an item identifier and a rating value so each record is
linked in a first and a second dimension, the profile of the
advisee provided as sparse vectors of n-tuples, each n-tuple
containing the user identifier, the item identifier and an
identifier representing the rating;
linking, by the computing apparatus, the first dimension
to the user identifier in a sequence according to the item
identifier to represent the profile of the advisee;
linking, by the computing apparatus, the second
dimension to the item identifier in a sequence according to the
user identifier to represent an item profile which records how
particular users have rated a particular item;
estimating, by the computing apparatus, storage
requirements and latency periods of the computing apparatus
based on a combination of the profile of the advisee and the
item profile in order to determine memory usage needed by the
computing apparatus and a recommendation time provided by
the computing apparatus;
selecting, by the computing apparatus, a first set of users
from a plurality of users of the recommendation system based
on the selected item list;
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selecting, by the computing apparatus, neighboring users
from the first set of users based on similarities out of a plurality
of similarity factors between the advisee and each member of
the first set of users;
filtering, by the computing apparatus, the neighboring
users from the first set of users;
acquiring, by the computing apparatus, a number of
ratings of the neighboring users by monitoring environments of
the neighboring users including websites each neighboring user
has created bookmarks for and how long a neighboring user
views a particular web page;
updating, by the computing apparatus, a profile of a
certain neighboring user of the neighboring users upon
identification of a new rating for the certain neighboring user,
by appending a new n-tuple of values to a set of already
existing n-tuples in the profile of the certain neighboring user
and overwriting an appropriate entry in the certain neighboring
user profile when the new rating is a change to an existing
rating;
determining, by the computing apparatus, an identity of
the neighboring users and all similarity factors between the
certain neighboring user and its neighboring users;
updating, by the computing apparatus, a neighboring user
set by introducing or removing a new neighboring user each
time the new rating is entered by, or inferred for, the new
neighboring user;
generating, by the computing apparatus, a
recommendation request of at least one item from the selected
item list based on ratings provided by each of the neighboring
users, the neighboring users are selected from similarity factors
dynamically calculated between the advisee and corresponding
neighboring users limited to the at least one item within the
selected item list such that the similarity factors of the advisee
are not calculated with respect to all of the neighboring users
for every individual recommendation request; and
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storing, by the computing apparatus, the similarity factors
and the neighboring users within a cache storage for a next
recommendation request without recomputation for the
similarity factors and the neighboring users.
EXAMINER’S REJECTIONS2
The Examiner rejected claims 2 through 20 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Final Act. 4–7.
The Examiner rejected claims 2 through 20 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Non-Final Act. 7–8.
The Examiner rejected claims 2 through 20 under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 8–9.
The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Sheena (U.S. 6,049,777) and Hirashita (US 6,721,906).
Final Act. 9–12.
The Examiner rejected claim 3 through 20 under 35 U.S.C. § 103(a)
as being unpatentable over Sheena, Hirashita and Bergh (US 6,112,186).
Final Act. 12–16.
PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.

2 Throughout this Decision we refer to the Specification filed November 25,
2013 (“Specification”); Appeal Brief filed July 30, 2019 (“Appeal Br.”);
Reply Brief filed December 2, 2019 (“Reply Br.”); Final Office Action
mailed April 17, 2019 (“Final Act.”); and the Examiner’s Answer mailed
October 2, 2019 (“Ans.”).
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However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
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Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception. 2019 Revised Guidance, 84 Fed.
Reg. at 52–56.
DISCUSSION
Rejection under 35 U.S.C. § 101
The Examiner determines the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
Final Act. 4–7. Specifically, the Examiner determines “the claims recite the
abstract idea of recommending an item based on what similar customers
have liked” which is a method of organizing human activity and includes
“steps that describe an algorithm for performing calculations and making
decisions, and can be performed by a person using pen and paper.” Final
Act. 4 (citing the 2019 Revised Guidance), Answer 3–4. Further, the
Examiner finds that the additional limitations are not integrated into a
practical application as the additional elements merely implement the
abstract idea on a computing apparatus. Final Act. 5–6.
Patent eligibility under § 101 is a question of law that may contain
underlying issues of fact. “We review the [Examiner’s] ultimate conclusion
on patent eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d
1360, 1365 (Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
to patent-eligible subject matter is an issue of law that we review de novo.”).
We have reviewed Appellant’s arguments in the Appeal Brief, the
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Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of claims 2 through 20 under 35 U.S.C. § 101.
Appellant argues that independent claim 2 is not directed to an
abstract idea as it is not directed to a method of organizing human activity.
Appeal Br. 6–9. Specifically, Appellant argues that the MPEP identifies
examples of organizing human activity “involves concepts regarding
managing relationships or transactions between people, social activities, and
human behavior; satisfying or avoiding a legal obligation; advertising,
marketing, and sales activities or behaviors; and managing human mental
activity.” Appeal Br. 6 (citing MPEP § 2106.04(a)(2)(II). Further,
Appellant asserts that the claimed invention cannot be performed using pen
and paper as:
Appellant's claimed invention recites the feature of
acquiring a number of ratings of the neighboring users by
monitoring environments of the neighboring users including
websites each neighboring user has created bookmarks for and
how long a neighboring user views a particular web page. As
can be seen from the claim language, this feature involves
websites, bookmarks of websites and length of time on user
views a particular webpage.
Appellant submits that these features are not able to be
accomplished using a pen and paper since they involve the
internet and computing technologies.
Appeal Br. 14–15. Additionally Appellant argues the rejection is in error
even if the claimed invention includes an abstract concept, as the claimed
invention recites an improvement to the operation of the computer itself.
Appeal Br. 10–14. Specifically, Appellant argues that Appellant’s
Specification identifies that processing burden on a computing device is a
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problem with recommendation systems and provides a solution which
improves the computing technology. Appeal Br. 11–12 (citing Appellant’s
Specification ¶¶ 9, 11, and 42–45). Specifically, Appellant asserts the claim
limitations of:
selecting a first set of users from a plurality of users of based on
the selected item list and filtering the neighboring users allows
for the processing burden to be reduced by focusing on a
defined number of users. In addition, the claimed invention
recites the benefit of having reduced burden by generating a
recommendation request based on ratings provided by each of
the neighboring users and storing the similarity factors and the
neighboring users within a cache storage for a next
recommendation request without recomputation for the
similarity factors and the neighboring users.
Appeal Br. 13.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claim 2 under 35 U.S.C. § 101, because the record
does not support the Examiner’s determination that the claims do not recite
an improvement in a computer related technology. We concur with the
Examiner that independent claim 2 recites an abstract concept a mental
process which can be performed by pen and paper. However, we concur
with Appellant that the claimed invention improves the operation of a
computer system.
Here, representative claim 2 recites steps of receiving a
recommendation request (data collection); determining a plural of similarity
factors (data collection); linking the first and second dimension
(manipulating data), selecting a first set of users and neighboring users (data
collection and data manipulation); filtering (data manipulation); acquiring a
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number of ratings (data collection); updating a profile (data collection and
manipulation); determine an identity (data manipulation/ comparison); and
generating a recommendation request (data manipulation/ comparison).
Thus, the claims recite steps of data collection and manipulation which are
steps that can be performed by a person with pen and paper, a mental
process.
Representative claim 2 also recites
the neighboring users are selected from similarity factors
dynamically calculated between the advisee and corresponding
neighboring users limited to the at least one item within the
selected item list such that the similarity factors of the advisee
are not calculated with respect to all of the neighboring users
for every individual recommendation request; and storing, by
the computing apparatus.
Appellant’s Specification, in paragraphs 11, 12, 41, and 42, identifies that
generating similarity factors and neighboring users per recommended
request (dynamically) reduces the processing burden and improves the
operation of the computer. Thus, as identified in Appellant’s Specification,
this operation is performed to reduce processing burden and as such this
feature of the claim is not directed to implementing the abstract concept on a
computer, but rather improving how the computer operates to perform a
process, similar to the claims at issue in Enfish and DDR Holdings.
In Enfish, the invention was directed to a data structure which
included a very specifically defined means for configuring a logical data
table that required a four-step algorithm to render the table self-referential.
Enfish, 822 F.3d at 1336. Further, the Enfish court found “the plain focus of
the claims is on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
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capacity.” Id. In DDR Holdings, the claimed invention created a hybrid
web page that combined advantageous elements from two web pages,
bypassing the expected manner of sending a visitor to another party’s web
page, in order to solve the internet-centric problem of retaining website
visitors. DDR Holdings, 773 F.3d at 1257–59. We consider Appellant’s
claims to recite a computer centric solution to a computer problem, which
improves the computer as it reduces the processing burden on the system
and improves latency. See Specification ¶¶ 11, 12, 41, 42, and 46.
Thus, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 101, as we conclude independent claim 2 and the claims which depend
thereupon recite an improvement to a computer technology.
Rejection under 35 U.S.C. § 112 first paragraph
The Examiner rejected claim 2, and the claims dependent thereupon,
as the Specification does not provide an adequate written description for the
claim 2 limitation directed to “estimating, by the computing apparatus,
storage requirements and latency periods of the computing apparatus.” Final
Act. 7–8. Specifically, the Examiner states that:
Although paragraph 81 of the Specification (see Pg Pub US
2014/0081996) says that an estimate of the storage
requirements and latency periods can be given, it does not
disclose that this calculation is performed by the computing
apparatus as part of the method or algorithm disclosed in the
specification. Rather, this provides an example to illustrate how
much memory the claimed process will use and what
recommendation time will result from the claimed process.
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Final Act. 8.5
Appellant argues that the Examiner has not met the burden of
rejecting the claim as “the Examiner merely asserts that the disclosure does
not provide how this calculation can occur.” Appeal Br. 25. Appellant
asserts that the Specification identifies how the claimed estimation may be
performed by providing specific examples. Appeal Br. 26 (citing
Specification ¶¶ 60, 61). Further, the Appellant argues that the Specification
identifies specific functions for how ratings are calculated. Appeal Br. 27–
27 ((citing Specification ¶¶ 35 and 36).
These arguments have not persuaded us of error in the Examiner’s
rejection as they do not address the point of the Examiner’s rejection. The
written-description requirement serves “to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific
subject matter later claimed by him; how the specification accomplishes this
is not material.” In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). We have
reviewed Appellant’s originally filed Specification and concur with the
Examiner that the Specification does not demonstrate that Appellant
possessed the disputed limitation of independent claim 2.
As identified in the above quote from page 8 of the Final Action, the
Examiner finds that the Specification does describe an estimation of storage
and latency but does not describe that the claimed estimation is performed
by the computing apparatus. We agree with the Examiner that paragraph 61
of the Specification provides an example of how to estimate how much

5 We note that paragraph 81 the post grant publication of this application
(US 2014/0081996) corresponds to paragraph h61 of the originally filed
Specification.
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memory is required and the latency of the system. However, the claim
recites a computing apparatus which performs all of the method steps. The
paragraphs of the Specification cited by Appellant’s do not discuss
estimating of memory and latency as steps being performed by the
computing apparatus, rather they appear to be demonstrating the invention
can be efficiently implemented on many types of machines. Appellant’s
Specification identifies that an important point in the system its
efficiency/performance which is measured in latency. Specification ¶46.
Paragraph 60 of Appellant’s Specification discuses an example of the use of
user profiles and item profiles in a two dimensional linkage. Paragraph 61
of the Specification, explains a rough estimate of the storage requirements
and latency periods when the example discussed in paragraph 60 is used on
different machines. These examples identify how many tuples of data can
be processed by a UNIX high-end machine and a Pentium III 300 machine;
however, these paragraphs do not discuss the estimation being performed by
the machine that is performing the claimed method of generating the
recommendation.
Appellant’s citation to paragraphs 35 and 36 of the Specification is
unavailing as these paragraphs do not address memory requirements or
latency. Thus, we concur with the Examiner that the originally filed
Specification does not demonstrate Appellant possessed the claimed feature
of “estimating, by the computing apparatus, storage requirements and
latency periods of the computing apparatus” and we sustain the Examiner’s
rejection of claims 2 through 20 under 35 U.S.C. § 112 first paragraph.
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Rejection under 35 U.S.C. § 112 second paragraph
The Examiner rejected claim 2, and the claims dependent thereupon,
as the claimed “linking . . . in the first dimension” and “linking . . . in the
second dimension” are unclear as the claim previously recites that the
records are linked in a first and second dimension. Final Act. 8–9.
Appellant argues that the Examiner’s rejection is in error as
“Examiner's assertion that the profile of the advisee must already exist is
inaccurate, since the claimed invention is merely reciting how linking the
first dimension in a sequence allows the representation of the profile of the
advisee.” Appeal Br. 29.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection. The Office “determines the scope of claims ... not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. A WH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). Applying the broadest
reasonable interpretation of a claim, then, the Office establishes a prima
facie case of indefiniteness with a rejection explaining how the metes and
bounds of a pending claim are not clear because the claim contains words or
phrases whose meaning is unclear. See In re Packard, 751 F.3d 1307, 1310
(Fed. Cir. 2014) (per curiam). Claim clarity keeps the rights afforded by
patents commensurate with the invention's contribution to the art. Packard,
751 F.3d at 1313. Interpreting the claims as broadly as reasonable during
prosecution allows the Office to fulfill this important role. See In re
Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (claims are given their
broadest reasonable interpretation during prosecution “to facilitate
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sharpening and clarifying the claims at the application stage”); In re Zietz,
893 F.2d 319, 321 (Fed. Cir. 1989) (“during patent prosecution when claims
can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed”). And, in situations where the
application of the broadest reasonable interpretation reveals ambiguity in the
claim language, “the applicant may ‘amend his claims to obtain protection
commensurate with his actual contribution to the art.’” In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984).
Here, claim 2 includes a determining step which recites the records
are linked in a first and second dimension, the claim further recites two steps
of linking, which leads to the ambiguity as to whether these are separate
steps of linking or as the Appellant asserts merely describing the linking of
the prior limitation (in essence asserting that the linking limitation should be
interpreted as “where in the linking in the first/second dimension…”). “[I]f
a claim is amenable to two or more plausible claims constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112 second paragraph.” Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); see also Ex parte
McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *2 (PTAB Aug.
25, 2017) (precedential). Accordingly, we sustain the Examiner’s rejection
of claim 2 as being indefinite.
Rejection under 35 U.S.C. § 103
Appellant argues the Examiner’s rejection of claim 2 is in error as the
Examiner has not addressed all of the limitations of claim 2. Appeal Br. 31,
Reply Br. 18–28. Specifically, Appellant argues
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claim 2 recites the feature of each record including a user
identifier, an item identifier and a rating value so each record is
linked in a first and a second dimension, the profile of the
advisee provided as sparse vectors of n-tuples, each n-tuple
containing the user identifier, the item identifier and an
identifier representing the rating
which the Examiner has not addressed but rather found by the Examiner to
recite non-functional descriptive material. Appeal Br. 31–33, Reply Br. 18–
20. Appellant argues that Sheena does not teach these features, asserting
that “Sheena only teaches a dimension for distance between vectors” and not
a teaching of a record being linked in a first and second dimension as
claimed. Appeal Br. 33 (citing Sheena col. 19, ll. 60–65). Further,
Appellant asserts that Hirashita, is directed to controlling a disk apparatus,
and does not teach a record being linked in a first and second dimension as
claimed. Appeal Br. 34. Additionally, Appellant argues that “Sheena does
not teach or suggest appending new n-tuple of values and overwriting the
appropriate entry. Instead, Sheena teaches one or the other, i.e., appending
new n-tuple of values or overwriting an entry, but not both as claimed.”
Appeal Br. 35 (citing Sheen col. 7, l. 65 – col. 8, l. 28) Reply Br. 23–24.
The Examiner responds to Appellant’s arguments by stating that the
contents of the records (vectors, user identifiers, item identifies, and rating
values) is non-functional descriptive material. Answer 7. Further, the
Examiner finds that Sheena teaches the claimed similarity factors include
vectors, user identifiers, an item identifier and an indication of ratings.
Answer 7 (citing Sheena Fig 2, col. 3, ll. 34–37, col 4, ll. 34–53, 60–65, col.
7, ll. 42–53, and col. 13, ll. 6–45). In response to Appellant’s arguments
concerning Sheena not teaching linking in a first and second dimension, the
Examiner finds that Sheena teaches a matrix of values (linking of data).
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Answer 8 (citing Sheena, Fig. 2, col. 3, 34–57, col. 4, ll. 34–56, 60–65, col.
5, ll. 8–17, col. 7, ll. 42–53). With respect to Appellant’s argument directed
to Sheena not teaching appending and overwriting an entry, the Examiner
finds Sheena teaches this feature in column 7, line 54 through column 8,
line 28. Answer 9.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 2. Regardless of whether the information in
the claimed profile, user identifier, and item identifier rating value is non-
functional descriptive material, as identified above, the Examiner finds that
Sheena teaches a profile with this data. See Answer 7. Appellant has not
addressed these findings by the Examiner except to state:
while Sheena may teach or suggest item profile data and user
profile data may be stored as a matrix of values, Sheena does
not teach or suggest the remaining claimed features of
Appellant's claimed invention. Specifically, independent claim
2 recites the feature of estimating, by the computing apparatus,
storage requirements and latency periods of the computing
apparatus based on a combination of the profile of the advisee
and the item profile in order to determine memory usage needed
by the computing apparatus and a recommendation time
provided by the computing apparatus.
As already established, the combination of Sheena and
Hirashita does not teach or suggest a first dimension or a
second dimension. Since the combination of Sheena and
Hirashita is silent concerning the first and second dimensions,
both Sheena and Hirashita are unable to teach or suggest
combining the profile of the advisee and the item profile,
because the profile of the advisee is represented by the first
dimension and the item profile is represented by the second
dimension.
Reply. Br. 22.
This argument is not persuasive, as the Examiner relied upon
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Hirashita to teach the limitation of estimating computing storage
requirements and latency, a finding which Appellant has not contested.
Further, we find that the Examiner has cited ample evidence to show that
Sheena teaches the claimed linking in two dimensions, on page 8 of the
Answer, which Appellant has not addressed. We note that Sheena discusses
a user profile that associates items with ratings given by a user, the
associations are expressed in an array including vectors of n-tuples, the array
can include pointers (links between data) and Figure 2 which depicts the
user profile matrix, in two dimensions (items and users). See Sheena, Fig. 2,
col. 3, ll. 34–55, col 4, ll. 59–67, col 15, ll. 12–18.
Appellant’s argument that the Examiner’s rejection is in error because
the combination of the references do not teach appending new n-tuple of
values and overwriting the appropriate entry has similarly not persuaded us
of error in the Examiner’s rejection. Independent claim 2 recites, updating a
profile of a neighboring user upon indicating a new rating, by appending a
new n-tuple of values to an existing n-tuples and overwriting the entry when
the change to the new rating is a change to an existing rating. Thus, the
scope of the limitation is that the overwriting is performed “when the new
rating is a change to existing rating,” i.e. the performance of updating is a
conditional limitation.
As such, in considering the broadest reasonable interpretation of
method claim 2, the steps dependent upon the condition would not
necessarily be invoked and as such it is not incumbent upon the Examiner to
show that the art performs those steps. See Ex parte Ex parte Schulhauser,
No. 2013-007847, 2016 WL 6277792, at *3–4 (PTAB Apr. 28, 2016)
(precedential) (holding that in a method claim, a step reciting a condition
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precedent does not need to be performed if the condition precedent is not
met). See also MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2111.04(II) (9th ed. Rev. 08.2017, Jan. 2018) (citing Schulhauser)
and In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006). (“[O]ptional
elements do not narrow the claim because they can always be omitted.”).
Gary M. Katz, Appeal No. 2010-006083, 2011 WL 1211248, at *2 (BPAI
Mar. 25, 2011) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004)). The Examiner finds and Appellant admits that
Sheena teaches the profile can be updated by appending new n-tuples. See
Sheena col. 7, ll. 60–62. Thus we consider the Examiner to have shown that
Sheena teaches the disputed limitation of claim 2, and are not persuaded of
error in the Examiner’s rejection of claim 2.
Concerning the limitation “for the next recommendation neighboring
users” the Examiner states that this limitation constitutes intended use as the
limitation does not result in a structural difference, but is rather just a plan
for the future that may not occur. Answer 9–10. Further, the Examiner
finds that Sheena teaches this limitation. Answer 10 (citing Sheena col. 4,
l. 40 – col. 5 l. 17, col. 6, ll. 8–35, col. 8, ll. 1–16).
Appellant responds to the Examiner by arguing the limitation does not
represent an intended use as the claim defines how recommendations are
generated. Reply Br. 25. Further, Appellant restates column 4, line 40
through column 5 line 17 of Sheena and concludes it does not:
teach or suggest storing, by the computing apparatus, the
similarity factors and the neighboring users within a cache
storage for a next recommendation request without
recomputation for the similarity factors and the neighboring
users. Instead, Sheena's col. 4 ln 40 – col. 5 ln 17 teaches how
ratings for items can be inferred from profiles. The remaining
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sections of Sheena, i.e., col. 6 ln 8-35, col. 8 ln 1-16, do not
cure the deficiencies of Sheena.
Reply Br. 26–27.
These arguments have not persuaded us of error in the Examiner’s
rejection. Claim 2 recites storing the similarity factors and the neighboring
users within a cache storage for the next recommendation request without
recomputation for the similarity factors and the neighboring users. We
concur with the Examiner that what the data is stored in cache for is an
intended use, i.e. the method does not recite a step of retrieving the data
from the cache for generating subsequent recommendations, and the step of
storing is not different if the cached data is used for a purpose other than
generating recommendation requests. Thus, we do not consider the
Examiner to have erred. Sheena teaches that the collected data, is stored in
memory or cache.6 (See Col 4, l. 56 – col 5, l. 17, and use of a cache is
discussed in col. 6, ll. 8–20).
For the all of the above reasons, Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of independent claim 2.
With respect to the Examiner’s rejection of claims 3 through 19
Appellant asserts the rejection is in error for the reasons discussed with
respect to claim 2 and because the additional teachings of Bergh do not
remedy the error noted in the rejection of claim 2. As Appellant has not
persuaded us of error in the rejection of claim 2, we similarly sustain the
Examiner’s rejection of claims 3 through 19.

6 As discussed above Appellant’s arguments have not persuaded us Sheena
fails to teach the data includes the claimed similarity factors, further,
Appellant’s have not contested the Examiner’s finding on page 11 of the
Final Action that Sheena teaches determining the neighboring users.
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With respect to claim 20, Appellant presents an additional argument,
that the combination of the references do not teach the first dimension is a
horizontal dimension and the second dimension is a vertical dimension as
claimed. Appeal Br. 36–37. Appellant argues that Sheena and Bergh are
only concerned with dimensions for distance between vectors and not
horizontal and vertical dimensions which are part of a first and second
repetition loop as claimed. Id.
The Examiner responds to Appellant’s arguments citing Sheena
teaching the first horizontal dimension and the second vertical dimension.
Answer 11 (citing Sheena col. 5, ll. 8–17). Further, with respect to the
limitation directed to the horizontal dimension formed as a first repetition
loop and the vertical as a second repetition loop, the Examiner considers
these limitations to constitute an intended use. Answer 11.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. Claim 20 recites that the horizontal dimension is formed as part of
a first repetition loop which inspects all items for which the advice provide a
rating value and vertical dimension is formed as part of a second repetition
loop which selects a further user who also provide a rating value. These
limitations are not an intended use, but rather define the dimensions. Thus,
we disagree with the Examiner’s claim interpretation and do not sustain the
Examiner’s rejection of claim 20.
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CONCLUSION
In summary:

Claim
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
2–20 101 Eligibility 2–20
2–20 112, first
paragraph
Written Description 2–20
2–20 112, second
paragraph
Indefiniteness 2–20
2 103(a) Sheena, Hirashita 2
3–20 103(a) Sheena, Hirashita,
Bergh
3–19 20
Overall
Outcome
2–20

Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED