I/P Engine, Inc. v. AOL, Inc. et al

Filing 942

Declaration re 938 Memorandum in Opposition, by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2 (Public Version), # 3 Exhibit 3 (Public Version), # 4 Exhibit 4 (Public Version), # 5 Exhibit 5 (Public Version), # 6 Exhibit 6 (Public Version), # 7 Exhibit 7 (Public Version), # 8 Exhibit 8 (Public Version), # 9 Exhibit 9 (Public Version), # 10 Exhibit 10 (Public Version), # 11 Exhibit 11 (Public Version), # 12 Exhibit 12 (Public Version), # 13 Exhibit 13 (Public Version), # 14 Exhibit 14 (Public Version), # 15 Exhibit 15 (Public Version), # 16 Exhibit 16 (Public Version), # 17 Exhibit 17 (Public Version), # 18 Exhibit 18 (Public Version), # 19 Exhibit 19 (Public Version), # 20 Exhibit 20 (Public Version), # 21 Exhibit 21 (Public Version), # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30)(Noona, Stephen)

EXHIBIT 25

TJNIT1ED STATES PATENT AND TRADEMARK ati 1110E
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
vonurvospro.gov

DO NOT USE IN PALM PRINTER
(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22 nd Floor
San Francisco, CA 94111

MAILED
MAY 0 3 2013
CENTRAL REEXAMINATION UNIT

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
REEXAMINATION CONTROL NO. 90/009 991
PATENT NO. 6314420.
ART UNIT 3992.

Enclosed is a copy of the latest communication from the United States Patent and Trademark
Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).

Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
reply has passed, no submission on behalf of the ex parte reexamination requester will be
acknowledged or considered (37 CFR 1.550(g)).

PTOL-465 (Rev.07-04)

Control No.
90/009,991
Examiner
JASON PROCTOR

Office Action in Ex Parte Reexamination

Patent Under Reexamination
6314420
Art Unit
3992

-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -bZ This action is made FINAL.
aZ Responsive to the communication(s) filed on 22 February 2013.
cZ A statement under 37 CFR 1.530 has not been received from the patent owner.
A shortened statutory period for response to this action is set to expire 2 month(s) from the mailing date of this letter.
Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
will be considered timely.
Part I THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
1.

0 Notice of References Cited by Examiner, PTO-892.

3.

2.

(Z1 Information Disclosure Statement, PTO/SB/08. 4.

Ei

Interview Summary, PTO-474.

0

Part II SUMMARY OF ACTION
1a. El Claims 10 14 15,25,27 and 28 are subject to reexamination.
lb.

Z Claims 1-9,11-13,16-24,26 and 29-36 are not subject to reexamination.

0
3. 0
2.

Claims

have been canceled in the present reexamination proceeding.

Claims

are patentable and/or confirmed.

4. Z Claims 10,14,15,25,27 and 28 are rejected.
5. El Claims

are objected to.

6. 0 The drawings, filed on

7. 0

are acceptable.

The proposed drawing correction, filed on

has been (7a)O approved (7b)0 disapproved.

8. El Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
a)0 All b)EI Some* c)EI None

of the certified copies have

1 0 been received.
20 not been received.
30 been filed in Application No.

.

40 been filed in reexamination Control No.
50 been received by the International Bureau in PCT application No.
" See the attached detailed Office action for a list of the certified copies not received.

9. 0

Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D.
11, 453 O.G. 213.

10. 0 Other:

cc: Requester (if third party requester)
U.S. Patent and Trademark Office

PTOL-466 (Rev. 08-06)

Office Action in Ex Parte Reexamination

Part of Paper No. 20121214

Application/Control Number: 90/009,991

Page 2

Art Unit: 3992
DETAILED ACTION

This Office Action addresses claims 10, 14, 15, 25, 27, and 28 of US Patent No.
6,314,420 issued to Lang et al. ("the '420 Patent").
A Request for Ex Parte Reexamination was filed on 16 March 2012. The Office issued a
Notice of Incomplete Ex Parte Reexamination on 26 April 2012, and vacated the filing date of
the original Request. A corrected Request for Ex Parte Reexamination was filed on 24 May
2012 ("the Request").
It was determined in the Order Granting Ex Parte Reexamination entered on 18 July 2012
("the Order") that the Request raised at least one Substantial New Question of Patentability
regarding at least one patent claim. Ex Parte Reexamination was ordered for claims 10, 14, 15,
25, 27, and 28 of the '420 Patent.
Claims 10, 14, 15, 25, 27, and 28 were rejected in the Non-Final Office Action entered on
25 September 2012 ("the Non-Final Office Action"). Patent Owner filed a response on 26
November 2012 ("Patent Owner's Remarks"). An interview was conducted on 22 January 2013,
and Patent Owner submitted an Interview Summary on 22 February 2013 ("Interview
Summary"). The Examiner has fully considered these responses.
For reasons set forth below, claims 10, 14, 15, 25, 27, and 28 are re'ected.
Claims 1-9, 11-13, 16, 24, 26, and 29-36 are not subject to the present reexamination
proceeding.

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Art Unit: 3992

I. INFORMATION DISCLOSURE STATEMENTS
Where patents, publications, and other such items of information are submitted by a party
(patent owner or requester) in compliance with the requirements of the rules, the requisite degree
of consideration to be given to such information will be normally limited by the degree to which
the party filing the information citation has explained the content and relevance of the
information. See MPEP 2256.
NPL References #11 and #12 have been lined through because the citations lack a date as
required by 37 CFR 1.98. These references have been given due consideration but the citations
will not be printed on any Certificate resulting from this reexamination proceeding.

II.

REFERENCES CITED

US Patent No. 6,202,058 to Rose et al. ("Rose")
US Patent No. 5,835,087 to Herz et al. ("Herz")
David Goldberg et al., "Using Collaborative Filtering to Weave an Information
Tapestry," Communications of the ACM (December 1992) ("Goldberg")
Yezdezard Lashkari, "Feature Guided Automated Collaborative Filtering," MIT Masters
Thesis (September 1995) ("Lashkari")
Paul Resnick et al., "GroupLens: An Open Architecture for Collaborative Filtering of
Netnews," Proceedings of ACM 1994 Conference (1994) ("Resnick")
Shoshana Loeb, "Architecting Perosonalized Delivery of Multimedia Information,"
Communications of the ACM (December 1992) ("Loeb")

III.

RELEVANT STATUTES

The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form
the basis for the rejections under this section made in this Office action:

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A person shall be entitled to a patent unless —
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
patent by another filed in the United States before the invention by the applicant for patent, except that an
international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
subsection of an application filed in the United States only if the international application designated the United
States and was published under Article 21(2) of such treaty in the English language.

The following is a quotation of 35 U.S.C. § 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

IV. ISSUES RAISED BY THE RESPONSE
Rejection 1. Claims 10 and 25 were rejected under 35 U.S.C. § 102(e) as being
anticipated by Rose.
Issue 1.A
Claims 10 and 25 were rejected under 35 U.S.C. § 102(e) as being anticipated by Rose.
In response, Patent Owner argues that:
Claims 10 and 25 are both directed to a search engine system that makes a
demand search for informons, and both claims call for filtering of the informons on the
basis of applicable content profile data for relevance to the query, and combining
pertaining feedback data with the content profile data in filtering each informon for
relevance to the query. Rose fails to disclose either of these features.
First, the system of Rose does not perform any filtering of the messages or
documents it receives for presentation to the user. In contrast, the system of Rose
performs a ranking process, wherein the system takes in a set of messages or documents
and assigns rankings to each informon based on a degree of relevance to the user.
Ranking is different than filtering For example, col. 4, lines 33-44 of Rose recites as
follows (emphasis added):

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[quoted portion omitted]
(See also Rose at col. 5, lines 57-60; col. 6, lines 5-11 and 51-58). Thus, the
system of Rose still presents all of the messages or documents it receives to the user,
albeit with ranking values that provide some indication of the degree of relevance. This
contrasts with the system and method of claims 10 and 25 of the '420 patent, which filter
out informons that are deemed not relevant.
(Patent Owner's Remarks, pages 4-5, all emphasis added by Patent Owner)
The Examiner has fully considered this argument but has found it unpersuasive.
As set forth in the Request, Rose discloses that "[t]he relevance predicting technique of
the present invention is applicable to all different types of information access systems. For
example, it can be employed to filter messages provided to a user in an electronic mail system
and search results obtained through an online text retrieval service" (CC-1, page 1; quoting Rose,
2:51-55, emphasis added). Patent Owner repeatedly points to the "ranking" feature of Rose, but
fails to traverse the Rose disclosure to employing the relevance predicting technique to filter
messages or search results.
Accordingly, Rejection 1 is maintained.

Issue 1.B
Claims 10 and 25 were rejected under 35 U.S.C. § 102(e) as being anticipated by Rose.
In response, Patent Owner argues that:
In addition, the ranking procedure employed by Rose does not occur on the basis of
content-profile data for relevance to the query. Instead, the message or document
examined by the Rose system is compared to the user's profile for a determination of the
document's particular relevance to the user. For example, col. 6, lines 51-58 reads as
follows (emphasis added):
One factor in the prediction of a user's likely interest in a particular piece of
information can be based on the similarity between the document's vector and the
user's profile vector. For example, as shown in FIG. 5B, a score of a document's

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relevance can be indicated by the cosine of the angle between the document's
vector and the user's profile vector. A document having a vector which is close to
that of the user's profile will be highly ranked, whereas those which are
significantly different will have a lower ranking.
In all, the final ranking assigned to a message or document is the result of a
combination of the ranking from the comparison of the document to the user's profile and
a ranking based on ratings provided by other users. (Rose at col. 6, line 51 through col. 7,
line 50). Neither ranking has any regard for the relevance of the document or message to
the query at all. In other words, the particular query entered by the user plays no role in
how the returned messages or documents are ranked.
(Patent Owner's Remarks, page 5, all emphasis added by Patent Owner)
The Examiner has fully considered this argument but has found it unpersuasive.
As shown in the Request, Rose discloses that "Whe relevance predicting technique of the
present invention is applicable to all different types of information access systems. For example,
it can be employed to filter messages provided to a user in an electronic mail system and search
results obtained through an online text retrieval service" (CC-1, page 1; quoting Rose, 2:51-55,
emphasis added). That is, Rose discloses using the relevance predicting technique "to filter ...
search results obtained through an online text retrieval service," therefore Patent Owner's
conclusion that "the particular query entered by the user plays no role in how the returned
message or documents are ranked" is clearly incorrect.
Accordingly, Rejection 1 is maintained.

In their Interview Summary, Patent Owner presents an additional argument that the
invention is distinguished over Rose. In summary, Patent Owner submits that:
This prior art "over-the-wall" approach is a local optimization method, which
possibly excludes a globally optimum search result. In other words, the prior art method
first optimizes locally on one criterion, finding the top K results (e.g., 10 or 20 or 100),
throwing them over a proverbial wall, and then optimizing according to a second or third

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Page 7

criterion. A hypothetical example of the disadvantages of this approach, which was
requested by the Examiners, is provided below.
(Interview Summary, page 2)
Initially, the "Background of the Invention" section of the '420 patent provides
some general support for this claimed concept. In this section, the two prior art types of
search engines and filter systems are described, followed by a description of how the
present invention integrates the two for making searches relevant to user queries that
involve filtering operations that significantly improves the search results. (See '420 patent
at col. 1, line 10 through col. 2, line 27).
In addition, Fig. 9 and col. 23, line 23 through col. 26, line 51 provide more
detailed support for the tight integration of content and feedback filtering for relevance to
a query. Specifically, col. 25, lines 53-61 reads as follows (emphasis added):
A search return processor 48C receives either demand search informons or
wire search informons passed by the content-based filter structure 40C according
to the operating mode of the latter, and includes an informon rating system which
is like that of FIG. 6. The informon rating system combines content-based
filtering data with collaborative feedback rating data, from users through a
feedback processor 50C at least in the wire search mode and, if desired, in the
demand search mode.
A further example is disclosed at col. 26, lines 25-44, which includes the
following (emphasis added):
A feedback processor 74C is structured like the mind pool system of FIG.
7 to provide collaborative feedback data for integration with the content-based
data in the measurement of informon relevancy by the filter 66C. An informon
rating structure like that of FIG. 6 is employed for this purpose. Adaptive
feedback data is applied from the users to the filter 66C as shown in order to
update content profiles as previously described.
Once filtering is performed on returned informons, those informons which
provide a satisfactory match to the query are returned as a list to the user through
a search return processor 80C.
Fig. 6 of the '420 patent, which is referenced by these examples, illustrates one
preferred method of combining content and collaborative feedback data for filtering on
relevance to the query. In this method, described in detail at col. 14, line 40 through col.
19, line 67, content and feedback factors form functions that are weighted and combined
to predict a final overall rating for the document being assessed.
(Interview Summary, pages 3-4)

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Page 8

The Examiner has fully considered this argument but has found it unpersuasive.
During examination, the USPTO must give claims their broadest reasonable
interpretation in light of the specification. Though understanding the claim language may be
aided by explanations contained in the written description, it is important not to import into a
claim limitations that are not part of the claim. For example, a particular embodiment appearing
in the written description may not be read into a claim when the claim language is broader than
the embodiment. See MPEP 2111.01.
Patent Owner's argument is not supported by the relevant claim language, which broadly
recites "combining pertaining feedback data from the feedback system with the content profile
data in filtering each informon for relevance to the query". There is no claim language to
exclude any alleged "over-the-wall" approach in the prior art, which simply "combines" the two
types of data in sequential steps. Therefore, a so-called "over-the-wall" approach in the prior art
would anticipate the claimed invention.
Accordingly, Rejection 1 is maintained.

Rejection 2. Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as
being obvious over Rose in view of Herz
Issue 2.A
Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being obvious over
Rose in view of Herz. In response, Patent Owner argues that this rejection is overcome for the
reasons discussed above in response to Rejection 1. These arguments are unpersuasive for the
reasons set forth above. Accordingly, Rejection 2 is maintained.

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Rejection 3. Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as
being obvious over Rose in view of Loeb
Issue 3.A
Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being obvious over
Rose in view of Loeb. In response, Patent Owner argues that this rejection is overcome for the
reasons discussed above in response to Rejection 1. These arguments are unpersuasive for the
reasons set forth above. Accordingly, Rejection 3 is maintained.

Rejection 4. Claims 10, 14, 15, 25, 27, and 28 were rejected under 35 U.S.C. §
102(e) as being anticipated by Herz.
Issue 4.A
Claims 10, 14, 15, 25, 27, and 28 were rejected under 35 U.S.C. § 102(e) as being
anticipated by Herz. In response, Patent Owner argues that:
As has been described above, claims 10 and 25 are both directed to a search
engine system that makes a demand search for informons based on a query from an
individual user, and both claims call for filtering of the informons on the basis of
applicable content profile data for relevance to the query, and combining pertaining
feedback data with the content profile data in filtering each informon for relevance to the
query. Herz fails to disclose at least these features of claims 10 and 25.
As was described in Section 2 above, Herz discloses a system that selects and
provides target objects to users by generating and comparing profiles of targets and user
interests. Specifically, col. 1, lines 19-35 of Herz read as follows (underlining added for
emphasis):
This invention relates to customized electronic identification of desirable objects,
such as news articles, in an electronic media environment, and in particular to a
system that automatically constructs both a "target profile" for each target object
in the electronic media based, for example, on the frequency with which each

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Page 10

word appears in an article relative to its overall frequency of use in all articles, as
well as a "target profile interest summary" for each user, which target profile
interest summary describes the user's interest level in various types of target
objects. The system then evaluates the target profiles against the users' target
profile interest summaries to generate a user-customized rank ordered listing of
target objects most likely to be of interest to each user so that the user can select
from among these potentially relevant target objects, which were automatically
selected by this system from the plethora of target objects that are profiled on the
electronic media.
Since the selection of target objects for a user is based on evaluation using a
system-generated user interest profile, Herz does not disclose filtering of informons for
relevance to a query from an individual user.
(Patent Owner's Remarks, pages 8-9, all emphasis added by Patent Owner)
The Examiner has fully considered this argument but has found it unpersuasive.
The relevant claim language recites "a demand search for informons relevant to a query
from an individual user". As set forth in the Request, Herz discloses "asking the user to specify
search profiles directly by giving keywords and/or numeric attributes" in order to define a search
profile (Request, page 20; quoting Herz, 56:23-35). Therefore, Herz discloses the claimed
feature.
The relevant claim language further recites "a content-based filter system for receiving
the informons from the scanning system and for filtering the informons on the basis of applicable
content profile data for relevance to the query". As demonstrated by Patent Owner, Herz
discloses a content based filter system for filtering target objects on the basis of a "search
profile". But since the "search profile" is a query, generated "directly by giving keywords and/or
numeric attributes" (Herz, 56:23-35), the alleged distinction disappears. Therefore, Herz
discloses the claimed feature.
Accordingly, Rejection 4 is maintained.

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Art Unit: 3992
Issue 4.B

Claims 10, 14, 15, 25, 27, and 28 were rejected under 35 U.S.C. § 102(e) as being
anticipated by Herz. In response, Patent Owner argues that:
Since Herz fails to disclose the feature of filtering of the informons on the basis of
applicable content profile data for relevance to the query, Herz necessarily does not
disclose that pertaining collaborative feedback data is combined with this process for
filtering informons for relevance to the query. The citation to Herz provided in the
adopted rejection is inapposite. The rejection points to col. 18, lines 39-43 of Herz as
disclosing the final clauses of claims 10 and 25. (See Exhibit CC-2 to Reexamination
Request at pp. 2-3). The cited passage describes a formula for estimating user interest
which includes the sum of a target object's intrinsic quality "q(U, X)" and topical interest
"f(U, X)" users like U have in target objects like X.
The rejection implies that the topical interest f(U, X) is the collaborative data and
the quality measure q(U, X) corresponds to the content profile data in claims 10 and 25.
However, this assumption ignores the definition of the quality measure set forth in Herz,
which demonstrates that the quality measure has nothing to do with relevance to a user
query...
(Patent Owner's Remarks, pages 9-10)
The Examiner has fully considered this argument but has found it unpersuasive.
As set forth above, Herz discloses the feature of filtering the informons on the basis of
applicable content profile data for relevance to a query. Further, Herz discloses a "formula for
estimating user interest" for to relevance to the query, where the formula "combines" pertaining
feedback data "q(U, X)" and content profile data "f(U, X)".. Therefore, Herz discloses combining
pertaining collaborative feedback data with the content profile data in filtering informons for
relevance to the query.
Accordingly, Rejection 4 is maintained.

In their Interview Summary, Patent Owner presents an additional argument that "Herz is
very similar to Rose in that the system of Herz automatically constructs user profiles and target

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profiles and compares the two, without consideration of a user query, to select target documents
for presentation to the user" (Interview Summary, page 5). These arguments are unpersuasive as
set forth above in relation to Rose.
Accordingly, Rejection 4 is maintained.

Rejection 5. Claims 10, 14, 15, 25, 27, and 28 were rejected under 35 U.S.C. § 102(b) as
being anticipated by Goldberg.
Issue 5.A
Claims 10, 14, 15, 25, 27, and 28 were rejected under 35 U.S.C. § 102(b) as being
anticipated by Goldberg. In response, Patent Owner argues that:
As has been described above, claims 10 and 25 are both directed to a search
engine system that makes a demand search for informons based on a query from an
individual user, and both claims call for filtering of the informons on the basis of
applicable content profile data for relevance to the query, and combining pertaining
feedback data with the content profile data in filtering each informon for relevance to the
query. Goldberg fails to disclose at least these features of claims 10 and 25.
[- -]
The rejection adopted by the Examiner cites to the Appraiser of Goldberg as the
claimed content-based filter system that receives the informons found as a result of the
demand search and filters the informons for relevance to the query. (See Exhibit CC-3 to
Reexamination Request at pp. 1-2). Notably, the Appraiser does not filter documents for
relevance to a query. Rather, the Appraiser performs prioritization and categorization of
documents according to separate user preferences, and has nothing to do with the query
submitted by the user and executed by the Filterer. (See e.g., Goldberg at p. 64). Actions
responsive to the query are completed by the time the documents are withdrawn from the
Little Box and evaluated by the Appraiser in the user's email system.
In fact, nothing in Goldberg serves as a content-based filter that receives
informons found as a result of the demand search and filters the informons for relevance
to the query. At best, the Filterer performs the function of the claimed system for
scanning the network to make a demand search for informons relevant to a query from a
user. However, the results of the search ("documents matching a query") are deposited
into the Little Box, and no filtering for relevance to the query subsequently occurs on the
returned documents.
(Patent Owner's Remarks, pages 10-11)

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The Examiner has fully considered this argument but has found it unpersuasive.
As set forth in the Request, Goldberg discloses that "Filterer: Repeatedly runs a batch of
user-provided queries over the set of documents. Those documents matching a query are placed
in the little box of the query's owner" and "Appraiser: Applies personalized classification to a
user's documents (i.e., to those documents in the user's little box). This function can
automatically prioritize and categorize documents." (CC-3, page 1, quoting Goldberg, page 63).
Therefore, Patent Owner's characterization of the "Appraiser" is clearly incorrect. The Appraiser
receives informons as a result of the demand search (i.e., the Appraiser receives documents from
the "little box," which are the results of a query search performed by the Filterer). The Appraiser
filters the informons for relevance to the query (i.e., the Appraiser applies personalized
classification to the documents in the "little box").
Goldberg discloses more specifically that the Appraiser is a content-based filter that
receives informons found as a result of the demand search and filters the informons for relevance
to the query:
To support classification of documents, Tapestry provides appraiser functions.
Fitting appraisers into the overall architecture is not completely straightforward. At first it
would seem simplest to run each user's appraiser on the server as documents arrive.
However, this has a potentially serious drawback. Filtering on incoming documents is a
very computationally intensive task. Imagine a Tapestry system with hundreds of users,
each with dozens of filter queries, running on a document stream of tens of documents
per minute. Running appraisers directly on the incoming document stream would put
them on the critical performance path. To avoid this, the Tapestry architecture performs
filtering in two steps. The first level of filtering is performed by filter queries, which are
binary: they either accept or reject a document. The accepted documents for a user are
then placed into that user's little box. The second level of filtering is done by appraiser
functions that run only over the contents of the little box. Unlike the "big box" (the global
Tapestry database), the little box will have few enough messages to allow them to be
copied to the workstation. This allows the user's mail-reading program or browser to
provide more complex appraiser functions than could be supported in the server.

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(Goldberg, page 64, emphasis added)
That is, Goldberg expressly discloses filtering in two steps. In the second step, Goldberg
expressly discloses that the Appraiser filters contents of the little box (i.e., filters the results of a
demand query) in order to provide "more complex appraiser functions than could be supported in
the server," and the two step filter avoids a "very computationally intensive task" of executing
complex filters on the entire document stream. Patent Owner's argument that "no filtering for
relevance to the query subsequently occurs on the returned documents [in the little box]" is
refuted by the express disclosure of Goldberg.
Accordingly, Rejection 5 is maintained.

Issue 5.B
Claims 10, 14, 15, 25, 27, and 28 were rejected under 35 U.S.C. § 102(b) as being
anticipated by Goldberg. In response, Patent Owner argues that:
Moreover, Goldberg does not disclose combining pertaining feedback data with
the content profile data in filtering each informon for relevance to the query. As
described above, Goldberg does not filter on the basis of content profile data for
relevance to the query. Thus, the feedback in Goldberg received as annotations to
documents is not combined with anything in Goldberg for filtering for relevance to the
query. In fact, the feedback is not even utilized in the Tapestry system unless it actually
forms part of the query itself For example, the user must explicitly include in the query
that he or she is searching for all documents having a certain number of endorsements or
that a certain user has "replied to." (See e.g., Goldberg at pp. 63, 65).
(Patent Owner's Remarks, page 11)
The Examiner has fully considered this argument but has found it unpersuasive.
Goldberg discloses:
In addition to content-based filtering, the Tapestry system was designed
and built to support collaborative filtering. Collaborative filtering simply means
that people collaborate to help one another perform filtering by recording their

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reactions to documents they read. Such reactions may be that a document was
particularly interesting (or particularly uninteresting). These reactions, more
generally called annotations, can be accessed by other's filters.
(Goldberg, page 61, emphasis in original)
Goldberg discloses:
A typical scenario of Tapestry system usage is as follows. A user decides
on "mail filtering" as an area of interest. To find documents on this topic, the user
issues an ad hoc query, perhaps by filtering for the keyword "filtering." This
returns too many documents. The user eventually discovers that searching, either
for documents containing both "information" and "filtering," or for documents
containing "filtering" that received at least three endorsements, works much
better. Having tested this, this search is installed as a new query filter, and from
now on, all new documents satisfying this filter will be delivered to the user's
mailbox.
(Goldberg, page 63, underlined emphasis added)
Therefore, Goldberg discloses the claimed feature of "the filter system combining
pertaining feedback data from the feedback system [e.g., "at least three endorsemente] with the
content profile data [e.g., contains the word "filterine] in filtering each informon for relevance
to the query [e.g., "this search is installed as a new query filterl.
Accordingly, Rejection 5 is maintained.

In their Interview Summary, Patent Owner presents an additional argument that
"Goldberg is also very similar [to Rose] in that the Filterer throws query results literally over the
client-server wall shown in Fig. 2 for further processing that does not take the original query into
consideration" (Interview Summary, page 5). These arguments are unpersuasive as set forth
above in relation to Rose.
Accordingly, Rejection 5 is maintained.

Application/Control Number: 90/009,991

Page 16

Art Unit: 3992
Rejection 6. Claims 10 and 25 were rejected under 35 U.S.C. § 102(b) as being anticipated
by Lashkari.
Issue 6.A

Claims 10 and 25 were rejected under 35 U.S.C. § 102(b) as being anticipated by
Lashkari. In response, Patent Owner argues that:
As has been described above, claims 10 and 25 are both directed to a search
engine system that makes a demand search for informons, and both claims call for
combining pertaining feedback data with the content profile data in filtering each
informon for relevance to the query. Lashkari fails to disclose at least this feature of the
claims.
[...]
The FGACF process is incorporated as part of a feature provided by an interface
entitled "WEBHOUND." The WEBHOUND interface provides a user with an option to
"Get Recommendations," which returns documents that may be of interest to the user
based on one of three processes, including FGACF. (Lashkari at pp. 58-60). Critically,
the "Get Recommendations" feature does not allow for the user to enter a query to search
for particular content. Rather, the results returned are based strictly on the FGACF
process. In contrast, WEBHOUND provides a separate tool for searching a small internal
document database of previously seen documents based on partial URLs or keywords.
(Lashkari at pp. 58-59). Again, there is no disclosure that the FGACF process plays any
role in the results returned by the search feature in WEBHOIJND. Moreover this small,
internal, previously-seen document database is akin to "bookmarks," rather than being a
true search over the web or over any substantial document store.
(Patent Owner's Remarks, pages 12-13)
The Examiner has fully considered this argument but has found it unpersuasive.
As set forth in the Request, CC-4, page 1, Lashkari discloses:
WEBHOUND is primarily an information filtering service. Popular WWW search
engines such as Lycos [24], WebCrawler [29], Yahoo [44], etc. are primarily information
retrieval engines (as opposed to information filtering systems). The two are
complementary - a WEBHOUND like front-end to a popular search engine such as
Lycos, could enable users with WEBHOUND accounts to filter the results of their
searches on the extensive databases compiled by these search engines in a personalized
fashion. As a concrete example, let's say a user is searching for documents on Indian
Cooking. He types the keywords Indian Cooking into the Lycos search form. The number
of documents matching both keywords numbers in the hundreds. Even though any good
search engine will order the matches in descending order of match, there are still too

Application/Control Number: 90/009,991
Art Unit: 3992

Page 17

many documents for the average user to go through. However, if the user had a
WEBHOUND account, the resulting matches could be filtered through WEBHOUND
and only the top ranked ones (in terms of predicted rating) need be returned.
(Lashkari, page 78, emphasis added)
Therefore, Patent Owner's characterization of the Lashkari reference is incorrect.
Lashkari discloses the claimed feature of "the filter system combining pertaining feedback data
from the feedback system [e.g., "the top ranked" matches] with the content profile data [e.g.,
matches containing the keywords "Indian Cookine] in filtering each informon for relevance to
the query [e.g., the filtered results produced by WEBHOUND].
Further, Patent Owner's argument mischaracterizes Lashkari's disclosure of the "FGACF"
process. Specifically, Lashkari discloses that "ACF" is collaborative filtering:
Automated Collaborative Filtering (ACF) [9] is an innovative technique for
locating items of potential interest to users in any domain using human evaluations of
items. It relies on a deceptively simple idea: if person A correlates strongly with person
B in rating a set of items, then it is possible to predict the rating of a new item for A,
given B's rating for that item... Furthermore, since ACF relies on human evaluations of
items, it can provide some notion of the quality of a retrieved item for a particular user.
(Lashkari, pages 14-15, emphasis added)
Lashkari describes "FGACF" as:
This thesis presents a novel technique for information filtering that attempts to
address the problems faced by both ACF and content-based approaches by combining the
two to make use of their complementary strengths. The technique we present, Feature
Guided Automated Collaborative Filtering (FGACF), uses easily extractable features of
items to dynamically partition the domain and so allow ACF to be applies relative to a set
of features.
(Lashkari, pages 15-16, emphasis added)
Therefore, Lashkari discloses the claimed feature of "the filter system combining
pertaining feedback data from the feedback system ["ACF"] with the content profile data
["content-based approachee] in filtering each informon for relevance to the query
"FGACF" performed by WEBHOUND].

[i.e.,

Application/Control Number: 90/009,991

Page 18

Art Unit: 3992
Accordingly, Rejection 6 is maintained.

Issue 6.B
Claims 10 and 25 were rejected under 35 U.S.C. § 102(b) as being anticipated by
Lashkari. In response, Patent Owner argues that:
Lashkari suggests that, in the future, WEBHOUND could be used to filter search
results returned by other popular search engines (e.g. Lycos). (Lashkari at p. 78).
However, this still fails to meet the elements of claims 10 or 25. The search results passed
to WEBHOUND from the search engine are not filtered on the basis of content for
relevance to the query. To the contrary, the analysis performed by WEBHOUND does
not even consider or access the user's query supplied to the search engine. WEBHOUND
merely applies the FGACF process outlined above on the search results. It is not
disclosed that any content analysis is performed by WEBHOUND in its filtering process.
(Patent Owner's Remarks, page 13)
The Examiner has fully considered this argument but has found it unpersuasive.
Patent Owner's characterization of the Lashkari reference is incorrect. As Patent Owner
admits, "WEBHOUND merely applies the FGACF process outlined above on the search results".
As shown above, Lashkari discloses the claimed feature of "the filter system combining
pertaining feedback data from the feedback system ["ACF"] with the content profile data
["content-based approaches"] in filtering each informon for relevance to the query

[i.e.,

"FGACF" performed by WEBHOUND].
Accordingly, Rejection 6 is maintained.

In their Interview Summary, Patent Owner presents an additional argument that
"Lashkari is again similar [to Rose], and describes the exact prior art "over-the-wall" scenario at
page 78 by utilizing a front-end search engine like Lycos that would provide search results to the

Application/Control Number: 90/009,991
Art Unit: 3992

Page 19

WEBHOUND filter, which does not operate with consideration to the original query" (Interview
Summary, page 5). These arguments are unpersuasive as set forth above in relation to Rose.
Accordingly, Rejection 6 is maintained.

Rejection 7. Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being
obvious over Lashkari in view of Herz
Issue 7.A
Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being obvious over
Lashkari in view of Herz. In response, Patent Owner argues that this rejection is overcome for
the reasons discussed above in response to Rejection 6. These arguments are unpersuasive for
the reasons set forth above. Accordingly, Rejection 7 is maintained.

Rejection 8. Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being
obvious over Lashkari in view of Loeb
Issue 8.A
Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being obvious over
Lashkari in view of Loeb. In response, Patent Owner argues that this rejection is overcome for
the reasons discussed above in response to Rejection 6. These arguments are unpersuasive for
the reasons set forth above. Accordingly, Rejection 8 is maintained.

Rejection 9. Claims 10 and 25 were rejected under 35 U.S.C. § 102(b) as being anticipated
by Resnick.

Application/Control Number: 90/009,991

Page 20

Art Unit: 3992

Issue 9.A
Claims 10 and 25 were rejected under 35 U.S.C. § 102(b) as being anticipated by
Resnick. In response, Patent Owner argues that:
As has been described above, claims 10 and 25 are both directed to a search
engine system that makes a demand search for informons, and both claims call for
combining pertaining feedback data with the content profile data in filtering each
informon for relevance to the query. Resnick fails to disclose at least this feature of the
claims.
[...1
Thus, Resnick views the GroupLens system as a better and more efficient way of
getting content to users than content-based filtering. Resnick is therefore not seeking to
combine content and collaborative filtering of informons, as called for by claims 10 and
25, but replace content-based filtering in news clients with collaborative-based filtering.
There is no disclosure in Resnick of combining content and collaborative filtering for
relevance to a user query.
(Patent Owner's Remarks, pages 15-16)
The Examiner has fully considered this argument but has found it unpersuasive.
Resnick and the '420 Patent describe substantially the same problem and provides
substantially the same solution. Further, Resnick discloses the claimed invention, and Resnick is
prior art under 35 U.S.C. § 102(b).
More specifically, Resnick discloses the problem with exclusive content-filtering:
For instance, interesting articles posted by Bills fans about an upcoming football game
against the Cowboys would also reach Cowboys fans with GroupLens, but would not if
the articles were posted in the more specialized newsgroup rec.sportfootball.bills"
(Resnick, pages 13-14).
Patent Owner has described the same problem in their Interview Summary:
An exemplary search seeks from a travel agency the best affordable safe vacation
package. If we first search for best vacations — e.g., the ones rated most highly by
previous tourists (a form of collaborative filtering), we may obtain a long list of highly
expensive luxury packages, such as the Royal Suite aboard the Queen Mary II cruise
liner. If those top results are then pipelined to filter for affordability using, for example,
search terms such as "sale" or "inexpensive" (an aspect of content), we see that none may
qualify. The results that may be haven the best fit for the content search may have

Application/Control Number: 90/009,991

Page 21

Art Unit: 3992
already been excluded from the prior step because they didn't have high collaborative
ratings. On the other hand, if we first filter for the best results based solely on content
search terms, we might get a weekend rate at a run-down motel or some other cheap but
undesirable vacation options, and even the best among them could be far from an
enjoyable vacation. Here, results that would have good collaborative ratings may be
excluded because they were not a good enough fit for the content-based search that
occurred at the first step.
(Interview Summary, pages 2-3).
Resnick has solved this problem by combining content-based filtering and collaborative
filtering:
The Tapestry system [6] makes more sophisticated use of subjective evaluations... For
example, a reader could request articles containing the word "CSCW" that Joe has
evaluated and where the evaluation contains the word "excellent".
(Resnick, page 3, emphasis added)
Patent Owner has described the same solution in their Interview Summary:
The claimed invention, for the first time, integrated the query search approach
with content and collaborative filtering.
(Interview Summary, pages 2-3)
Finally, since Resnick discloses and solves the same problem as the '420 Patent, and
Resnick is prior art under 35 U.S.C. § 102(b), it is unsurprising that Resnick anticipates the
broadly claimed invention as demonstrated in the Request.
Accordingly, Rejection 9 is maintained.

In their Interview Summary, Patent Owner presents an additional argument:
Resnick is a purely collaborative filter as part of a system named "GroupLens."
[...] In other words, Resnick describes the GroupLens system, the sole purpose of which
is to distribute user ratings of articles for use in collaborative filtering. Resnick does not
disclose the combination of its collaborative filtering system with a content filter for the
purpose of filtering items for relevance to a query.
(Interview Summary, pages 5-6)
The Examiner has fully considered this argument but has found it unpersuasive.

Application/Control Number: 90/009,991
Art Unit: 3992

Page 22

Resnick discloses the combination of a collaborative filtering system with a content filter
for the purposes of filtering items for relevance to a query:
The Tapestry system [6] makes more sophisticated use of subjective evaluations... For
example, a reader could request articles containing the word "CSCW" that Joe has
evaluated and where the evaluation contains the word "excellent".
(Resnick, page 3, emphasis added)
Accordingly, Rejection 9 is maintained.

Rejection 10. Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being
obvious over Resnick in view of Herz
Issue 10.A
Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being obvious over
Resnick in view of Herz. In response, Patent Owner argues that this rejection is overcome for
the reasons discussed above in response to Rejection 9. These arguments are unpersuasive for
the reasons set forth above. Accordingly, Rejection 10 is maintained.

Rejection 11. Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being
obvious over Resnick in view of Loeb
Issue 11.A
Claims 14, 15, 27, and 28 were rejected under 35 U.S.C. § 103(a) as being obvious over
Resnick in view of Loeb. In response, Patent Owner argues that this rejection is overcome for the
reasons discussed above in response to Rejection 9. These arguments are unpersuasive for the
reasons set forth above. Accordingly, Rejection 11 is maintained.

Application/Control Number: 90/009,991
Art Unit: 3992

Page 23

V. CLAIM REJECTIONS
1.

Claims 10 and 25 are rejected under 35 U.S.C. § 102(e) as being anticipated by Rose.
This rejection is proposed in the Request, pages 13-16; pages 39-41; and Exhibit CC-1;

all of which are incorporated herein by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

2.

Claims 14, 15, 27, and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable

over Rose in view of Herz.
This rejection is proposed in the Request, pages 16-18; pages 39-41; and Exhibit CC-1;
all of which are incorporated herein by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

3.

Claims 14, 15, 27, and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable

over Rose in view of Loeb.
This rejection is proposed in the Request, pages 18-20; pages 39-41; and Exhibit CC-1;
all of which are incorporated herein by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

4.

Claims 10, 14, 15, 25, 27, and 28 are rejected under 35 U.S.C. § 102(e) as being

anticipated by Herz.
This rejection is proposed in the Request, pages 20-23; page 41; and Exhibit CC-2; all of
which are incorporated by reference.

Application/Control Number: 90/009,991

Page 24

Art Unit: 3992
This rejection was adopted in the Non-Final Rejection and is maintained.

5.

Claims 10, 14, 15, 25, 27, and 28 are rejected under 35 U.S.C. § 102(b) as being

anticipated by Goldberg.
This rejection is proposed in the Request, pages 23-26; page 41; and Exhibit CC-3; all of
which are incorporated by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

6.

Claims 10 and 25 are rejected under 35 U.S.C. § 102(b) as being anticipated by Lashkari.
This rejection is proposed in the Request, pages 26-28; pages 41-42; and Exhibit CC-4;

all of which are incorporated herein by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

7.

Claims 14, 15, 27, and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable

over Lashkari in view of Herz.
This rejection is proposed in the Request, pages 28-30; pages 41-42; and Exhibit CC-4;
all of which are incorporated herein by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

8.

Claims 14, 15, 27, and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable

over Lashkari in view of Loeb.

Application/Control Number: 90/009,991

Page 25

Art Unit: 3992
This rejection is proposed in the Request, pages 30-32; pages 41-42; and Exhibit CC-4;
all of which are incorporated herein by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

9.

Claims 10 and 25 are rejected under 35 U.S.C. § 102(b) as being anticipated by Resnick.
This rejection is proposed in the Request, pages 32-35; pages 42-44; and Exhibit CC-5;

all of which are incorporated herein by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

10.

Claims 14, 15, 27, and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable

over Resnick in view of Herz.
This rejection is proposed in the Request, pages 35-37; pages 42-44; and Exhibit CC-5;
all of which are incorporated herein by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

11.

Claims 14, 15, 27, and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable

over Resnick in view of Loeb.
This rejection is proposed in the Request, pages 37-39; pages 42-44; and Exhibit CC-5;
all of which are incorporated herein by reference.
This rejection was adopted in the Non-Final Rejection and is maintained.

VI. CONCLUSION

Application/Control Number: 90/009,991

Page 26

Art Unit: 3992
For reasons set forth below, claims 10, 14, 15, 25, 27, and 28 are rejected.
Claims 1-9, 11-13, 16, 24, 26, and 29-36 are not subject to the present reexamination
proceeding.

THIS ACTION IS MADE FINAL.
A shortened statutory period for response to this action is set to expire 2 from the mailing
date of this action.
Extensions of time under 37 CFR 1.136(a) do not apply in reexamination
proceedings. The provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a), it is required that
reexamination proceedings "will be conducted with special dispatch within the Office."
Extensions of time in reexamination proceedings are provided for in 37 CFR
1.550(c). A request for extension of time must be filed on or before the day on which a response
to this action is due, and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g).
The mere filing of a request will not effect any extension of time. An extension of time will be
granted only for sufficient cause, and for a reasonable time specified.
The filing of a timely first response to this final rejection will be construed as including a
request to extend the shortened statutory period for an additional month, which will be granted
even if previous extensions have been granted. In no event however, will the statutory period for
response expire later than SIX MONTHS from the mailing date of the final action. See MPEP §
2265.

Application/Control Number: 90/009,991

Page 27

Art Unit: 3992
Amendment in Reexamination Proceedings
Patent owner is notified that any proposed amendment to the specification and/or claims
in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be formally
presented pursuant to 37 CFR § 1.52(a) and (b), and must contain any fees required by 37 CFR §
1.20(c). See MPEP § 2250(IV) for examples to assist in the preparation of proper proposed
amendments in reexamination proceedings.
In order to ensure full consideration of any amendments, affidavits or declarations, or
other documents as evidence of patentability, such documents must be submitted in response to
this Office action. Submissioris after the next Office action, which is intended to be a final
action, will be governed by the requirements of 37 CFR 1.116, after final rejection and 37 CFR
41.33 after appeal, which will be strictly enforced.

Service of Papers
Any paper filed with the USPTO, i.e., any submission made, by either the Patent Owner
or the Third Party Requester must be served on every other party in the reexamination
proceeding, including any other third party requester that is part of the proceeding due to merger
of the reexamination proceedings. As proof of service, the party submitting the paper to the
Office must attach a Certificate of Service to the paper, which sets forth the name and address of
the party served and the method of service. Papers filed without the required Certificate of
Service may be denied consideration. 37 CFR 1.550; MPEP 2266.03.

Notification of Concurrent Proceedings

Application/Control Number: 90/009,991

Page 28

Art Unit: 3992
The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) to
apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving
Patent No. 6,314,420 throughout the course of this reexamination proceeding. The third party
requester is also reminded of the ability to similarly apprise the Office of any such activity or
proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282
and 2286.

All correspondence relating to this ex parte reexamination proceeding should be directed
as follows:
By U.S. Postal Service Mail to:
Mail Stop Ex Parte Reexam
ATTN: Central Reexamination Unit
Commissioner for Patents P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to:

[phone]
Central Reexamination Unit

By hand to:

Customer Service Window
Randolph Building
401 Dulany St.
Alexandria, VA 22314

By EFS-Web:
Registered users of EFS-Web may alternatively submit such correspondence via the
electronic filing system EFS-Web, at
haps ://efs.uspto . gov/efile/myportal/efs-regi stered
EFS-Web offers the benefit of quick submission to the particular area of the Office that
needs to act on the correspondence. Also, EFS-Web submissions are "soft scanned" (i.e.,
electronically uploaded) directly into the official file for the reexamination proceeding, which

Application/Control Number: 90/009,991

Page 29

Art Unit: 3992
offers parties the opportunity to review the content of their submissions after the "soft scanning"
process is complete.

Any inquiry concerning this communication or as to the status of this proceeding should
be directed to the Central Reexamination Unit at telephone number [phone].
/Jason Proctor/
Primary Examiner, Art Unit 3992

Conferees:
/FOF/

/Woo H. Choi/
Supervisory Patent Reexamination Specialist, Art Unit 3992

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BALABANOVIC, MARKO et aL, "Fab: Content-Based, Collaborative Recommendation," Communications of the ACM,
March 1997, pp. 66-72, Vol. 40, No. 3.

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Defendants Preliminary Invalidity Contentions and Exhibits A-1 through A-6, January 24, 2012

/IR/

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Report of Defendants' Expert Lyle H. Ungar, Ph.D., Concerning Invalidity of Claims 10, 14, 15, 25, 27, and 28 of U.S.
Patent No. 6,314,420 and Claims 1, 5, 6, 21, 22, 26, 28, and 38 of U.S. Patent No. 6,775,664 and Exhibits A-1 through
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Supplemental Report of Defendants' Expert Lyle H. Ungar, Ph.D., Concerning Invalidity of Claims 10, 14, 15, 25, 27,
24, 2012

5

M.P./

Memorandum in Support of Defendants' Motion for Summary Judgment (Redacted) in Civ. Action No. 2:11-cv-512RAJ, September 12, 2012

,
UP Engine, Inc.'s Opposition to Defendants' Motion for Summary Judgment (Redacted) in Civ. Action No. 2:11-cv-512-

/J.P./

/J.P. /

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RAJ, September 26, 2012

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Order that Defendants' Summary Judgment is Denied in Civ. Action No. 2:11-cv-512-RAJ, October 3, 2012

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Memorandum Opinion and Order on claim construction in Civ. Action No. 2:11-cv-512-RAJ, June 15, 2012

Memorandum Order in Civ. Action No. 2:11-cv-512-RAJ, November 20, 2012

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Reply Memorandum in Support of Defendants' Motion for Summary Judgment (Redacted) in Civ. Action No. 2:11cv-512-RAJ, October 2, 2012

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J....,c.

HULL, DAVID A. et al., "Method Combination for Document Filtering," SIGIR '96 Proceedings of the 19th annual
international ACM SIGIR conference on Research and development in information retrieval
Pages 279-287, 1996.

15

r'i"

Aclic.” FQ 1:11 cv 512 RA

LEWIS, DAVID D., "The TREC-4 Filtering Track," The Fourth Text Retrieval Conference (TREC-4), National Institute of
Science & Technology, Gaithersburg, MD, 1996, pp. 165-180.

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EXAMINER SIGNATURE
Examiner Signature

/Jason Proctor/

Date Considered

04/26/2013

*EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through a
citation if not in conformance and not considered. Include copy of this form with next communication to applicant.

1 See Kind Codes of USPTO Patent Documents at www.USPTO.GOV or MPEP 901.04. 2 Enter office that issued the document, by the two-letter code (WIPO
Standard ST.3). 3 For Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document
4 Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible. 5 Applicant is to place a check mark here if
English language translation is attached.

EFS Web 2.1.17

Control No.

Ex Parte Reexamination Interview Summary

Patent Under Reexamination

90/009,991

6314420

Examiner

Art Unit

JASON PROCTOR

3992

All participants (USPTO personnel, patent owner, patent owner's representative):
(1) JASON PROCTOR

(3) John D. Simmons (52,225)

(2) Alex Koowski, Eric Kiss

(4) Stephen Murray, Dr. Jaime Carbonell

Date of Interview: 22 January 2013
Type: a)D Telephonic b)EJ Video Conference
c) I Personal (copy given to: 1)U patent owner
Exhibit shown or demonstration conducted:
If Yes, brief description:

d)fl Yes

2)D patent owner's representative)
e)I

No.

Agreement with respect to the claims f)E1 was reached. g)
was not reached. h)I
N/A.
Any other agreement(s) are set forth below under "Description of the general nature of what was agreed to..."
Claim(s) discussed: 10 and 25.
Identification of prior art discussed: Rose, Herz, Goldberg, Lashkari, Resnick.
Description of the general nature of what was agreed to if an agreement was reached, or any other comments:
Patent Owner newly presented an "over-the-wall" argument to traverse the pending rejections summarized in Patent
Owner's Interview Summary. Patent Owner further offered their interpretation of the Resnick reference. Patent Owner
agreed to present these arguments in writing for further consideration.
(A fuller description, if necessary, and a copy of the amendments which the examiner agreed would render the claims
patentable, if available, must be attached. Also, where no copy of the amendments that would render the claims
patentable is available, a summary thereof must be attached.)

A FORMAL WRITTEN RESPONSE TO THE LAST OFFICE ACTION MUST INCLUDE PATENT OWNER'S
STATEMENT OF THE SUBSTANCE OF THE INTERVIEW. (See MPEP § 2281). IF A RESPONSE TO THE
LAST OFFICE ACTION HAS ALREADY BEEN FILED, THEN PATENT OWNER IS GIVEN ONE MONTH FROM THIS
INTERVIEW DATE TO PROVIDE THE MANDATORY STATEMENT OF THE SUBSTANCE OF THE INTERVIEW
(37 CFR 1.560(b)). THE REQUIREMENT FOR PATENT OWNER'S STATEMENT CAN NOT BE WAIVED.
EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).

/Jason Proctor/
Primary Examiner, Art Unit 3992
cc:

Requester (if third party requester)

U.S. Patent and Trademark Office

PTOL-474 (Rev. 04-01)

Ex Parte Reexamination Interview Summary

Paper No. 20121214