eBay Inc.

Patent Trials and Appeals Board

Jan 22, 2021

2019005657 (P.T.A.B. Jan. 22, 2021)

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.
14/680,013 04/06/2015 Xin Li 2043.480US3 6676
49845 7590 01/22/2021
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
ULRICH, NICHOLAS S
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
01/22/2021 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte XIN LI
____________________

Appeal 2019-005657
Application 14/680,013
Technology Center 2100
____________________

Before JOHN A. JEFFERY, JAMES W. DEJMEK, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed April 6, 2015, which claims the benefit of earlier-filed
applications (see Spec. ¶ 1); “Final Act.” for the Final Office Action, mailed
September 12, 2017; “Appeal Br.” for Appellant’s Appeal Brief, filed
April 20, 2018; “Ans.” for Examiner’s Answer, mailed June 6, 2018; and
“Reply Br.” for Appellant’s Reply Brief, originally filed August 6, 2018
(refiled December 12, 2018).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). According to Appellant, the real party in interest is
eBay, Inc. Appeal Br. 3.
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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to
creation of a chat room based on a search query. Abstract; Spec., Fig. 4.
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A system comprising:
one or more processors; and
a chat room generator module, executed by the one or
more processors, configured to receive a comparison result
between a first key word from a first party and a second key
word used in a search query from a second party via a network,
and to generate a chat room embedded into a search result web
page associated with the search query, when the comparison
result indicates no substantial similarity between the first key
word and the second key word.
Appeal Br. 20 (Claims App.).
REJECTIONS3
R1. Claims 1, 2, 4, 5, 9, 10, 15, and 16 stand rejected under the
judicially created doctrine of non-statutory double patenting as being
unpatentable over claims 1, 8, 12, and 15 of Li ’112 (US 8,132,112, issued
March 6, 2012). Final Act. 4–5.
R2. Claims 1, 2, 4, 5, 9, 10, 15, and 16 stand rejected under the
judicially created doctrine of non-statutory double patenting as being

3 Appellant addresses the Examiner’s objections to the claims (Appeal Br. 7
(citing Final Act. 3)), but objections are petitionable matters that are not
before us. See MPEP § 706.01 (“[T]he Board will not hear or decide issues
pertaining to objections and formal matters which are not properly before the
Board.”); see also id. § 1201 (“The Board will not ordinarily hear a question
that should be decided by the Director on petition . . . .”).
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unpatentable over claims 1, 3, 4, 5, 13–16, and 18 of Li ’307 (US 9,003,307,
issued April 7, 2015). Final Act. 4–6.
R3. Claims 6–8, 12–14, and 18–20 stand rejected under pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 6–10.4
R4. Claims 1–7, 9–13, and 15–19 stand rejected under pre-AIA
35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 10–11.
R5. Claims 1, 2, 4, 5, 9, 10, 15, and 16 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as obvious over Barrett (US 6,400,381 B1, issued
June 4, 2002) and Vassilakis (US 8,965,874 B1, issued February 24, 2015).
Final Act. 11–16.
R6. Claims 6, 7, 12, 13, 18, and 19 stand rejected under pre-AIA
35 U.S.C. § 103(a) as obvious over Barrett, Vassilakis, and Zhang
(US 2008/0077588 A1, published March 27, 2008). Final Act. 16–18.
R7. Claims 8, 14, and 20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Barrett, Vassilakis, and Wheeler
(US 2002/0055932 A1, published May 9, 2002). Final Act. 18–19.

4 In the Final Office Action, the Examiner also included a passage stating
that Appellant “has not complied with one or more conditions for receiving
the benefit of an earlier filing date under 35 U.S.C. 120,” but this passage is
effectively a restatement of the Examiner’s written description rejection.
Final Act. 2–3; Ans. 3. There is no dispute that the cited references qualify
as prior art, whether or not Appellant’s priority claim is valid. Moreover,
the unsupported claims (i.e., claims 6–8, 12–14, and 18–20) were added
after this application was filed, so removal of the priority claim would not
moot the written description rejection. Consequently, we need not (and do
not) evaluate whether Appellant properly claimed priority.
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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Double Patenting Rejections R1–R2 of Claims 1, 2, 4, 5, 9, 10, 15, and 16
The Examiner rejected claims 1, 2, 4, 5, 9, 10, 15, and 16 on the
ground of non-statutory double patenting as being unpatentable over claims
1, 8, 12, and 15 of Li ’112. Final Act. 4–5. The Examiner also rejected the
same claims on the ground of non-statutory double patenting as being
unpatentable over claims 1, 3, 4, 5, 13–16, and 18 of Li ’307. Id. at 6.
Appellant does not substantively respond to either rejection. See
Appeal Br. 8. Rather, “Appellant respectfully requests to defer resolution of
the double patenting rejection until all other rejections have been overcome.”
Id. Appellant provides no support for its request.5
The Federal Circuit has stated:
When the appellant fails to contest a ground of rejection to the
Board, . . . the Board may treat any argument with respect to

5 We note that Examiner’s double-patenting rejections are based on claims
in issued patents and, thus, are not provisional double-patenting rejections.
Cf. In re Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential).
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that ground of rejection as waived. In the event of such a
waiver, the PTO may affirm the rejection of the group of claims
that the examiner rejected on that ground without considering
the merits of those rejections.
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (addressing
predecessor rule to 37 C.F.R. § 41.37(c)(1)(iv)); see also 37 C.F.R.
§ 41.37(c)(1)(iv) (“Except as provided for in §§41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”); MPEP
§ 1205.02 (“If a ground of rejection stated by the examiner is not addressed
in the appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”).
Accordingly, in light of Appellant’s failure to present arguments as to
the double-patenting rejections, we summarily affirm rejections R1 and R2.
Written Description Rejection R3 of Claims 6–8, 12–14, and 18–20
The Examiner rejected dependent claims 6–8, 12–14, and 18–20 as
failing to comply with the written description requirement. Final Act. 7–10,
20–21; see Ans. 4–5. We note that each of these claims was added via a
preliminary amendment (filed May 15, 2015), after the Specification was
filed. Appellant argues that the Examiner’s rejection is in error. Appeal
Br. 8–9; Reply Br. 1–2.
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
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required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id. An applicant’s specification “need not
describe the claimed subject matter in exactly the same terms as used in the
claims.” Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995). “If . . .
the specification contains a description of the claimed invention, albeit not in
ipsis verbis (in the identical words), then the examiner . . . must provide
reasons why one of ordinary skill in the art would not consider the
description sufficient.” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
Based on Appellant’s arguments (see Appeal Br. 8–9; Reply Br. 1–2)
and our discretion, we decide the appeal of the written description rejection
on the basis of claims 6–8. These claims recite:
6. The system of claim l, wherein the comparison
result indicates no substantial similarity based on characters
that the first key word and second key word have in common.
7. The system of claim 2,[6] wherein the comparison
result indicates substantial similarity based on characters that
are not common to both the first key word and second key
word.
8. The system of claim 2, wherein the comparison
result indicates substantial similarity based on the first key

6 Claim 2 depends from claim 1 and recites “admit[ting] a third party into
the chat room based on a comparison result that indicates substantial
similarity between the second key word and a third key word used in a
search query by the third party via the network.” Appeal Br. 20 (Claims
App.). We note that claim 2 includes an antecedent basis error—it recites “a
comparison result,” but this term is already recited in claim 1. We determine
that the “comparison result indicat[ing] no substantial similarity between the
first key word and the second key word” (claim 1) is different than the
“comparison result that indicates substantial similarity between the second
key word and a third key word” (claim 2). Id. (emphasis added).
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word and second key word being alternate spellings or the first
key word and second key word being synonyms.
Appeal Br. 21 (Claims App.).
The Specification defines “substantial similarity” to mean “the same,
or even though not the same, but close,” and provides two examples:
For example, a query using key words “Toyota”, “Camry”, and
“2007” is considered to have substantial similarity with another
query using key words “Toyota”, “Camry”, and “2006”. In
another example, a query using key words “eBay”, “back to
school”, and “shopping” is considered to have substantial
similarity with another query using key words “EBAY”, “back-
to-school”, and “sales”.
Spec. ¶ 24. Neither Appellant nor the Examiner identifies any other portion
of the Specification that provides written description support for these
claims.
The Examiner found that the limitations recited in claims 6–8 are not
described in the Specification in such a way as to reasonably convey to one
of ordinary skill in the art that Appellant had possession of the claimed
invention when the application was filed. Final Act. 7. In particular, the
Examiner found that, although the Specification “provides two examples of
substantially similar queries,” it fails to explain “why they are determined to
be substantially similar.” Id. at 7–8 (emphasis added). The Examiner also
found that the Specification fails to “describe[] substantially similar
keywords” (as opposed to queries) and “there is nothing that teaches or
suggests a comparison result that indicates no substantial similarity.” Id. at
8 (emphasis added). Furthermore, the Examiner noted that although the
examples “may have some characters that are not common, there is nothing
that suggests that the characters that are not common lead to a determination
of substantial similarity, as indicated in [claim 7],” for example. Id. at 9
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(emphasis added); see id. at 9–10 (providing similar analysis for claims 6
and 8); see also Ans. 5 (“The mere fact that two of the keywords in the
examples are synonyms does not prove that they are determined to be
substantial[ly] similar because they are synonyms.”).
Appellant presents several arguments, none of which are persuasive.
Appeal Br. 8–9; Reply Br. 1–2. First, Appellant contends that the Examiner
“does not specify which particular terms” are unsupported and provides a
“conclusory statement . . . without reasoning.” Appeal Br. 8. We disagree.
As shown by our summary, the Examiner presented a prima facie case,
shifting the burden of coming forward with argument or evidence to
Appellant. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Second, Appellant argues that “a person of ordinary skill in the art
would recognize why the cited examples [in paragraph 24] are similar based
on, for example, being alternate spellings” (as recited in claim 8) and “would
recognize how similarity can be based on characters . . . in common (as
recited in claim 6) or based on characters that are not common . . . (as recited
in claim 7).” Id. at 9. However, even if the Specification includes examples
that satisfy the comparisons recited in the claims7—i.e., characters in
common or not in common (claims 6 and 7) or words being “alternate
spellings” or “synonyms” (claim 8)—we are not persuaded the Specification

7 Moreover, we do not agree with Appellant’s argument that the examples
satisfy the claimed comparisons. Claim 6 correlates words having characters
in common with a determination of no substantially similarity; however, the
Specification appears to be to the contrary. Further, in claims 7 and 8,
substantial similarity between a second and third word is based on
differences or similarities between a first word and a second word; however,
the cited examples compare only a first and second query.
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discloses that similarity is determined based on these comparisons. See
Spec. ¶ 24. Appellant correctly notes that the Specification’s disclosure is
judged by the understanding of a person of ordinary skill in the art (see
Reply Br. 1–2), but, crucially, Appellant identifies no evidence indicating
that a person of ordinary skill would understand the Specification to include
the requisite disclosure. See Ans. 5 (stating that Appellant provides “no
evidence” and “no fact or basis” to support its arguments); In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments that
are unsupported by factual evidence are entitled to little probative value).
Further, Appellant’s arguments appear to be premised on the erroneous
assumption that the Specification can provide written description support if
it simply suggests the claim limitations. See Reply Br. 1–2 (disagreeing
with the Examiner’s statement that the Specification must “expressly,
implicitly, or inherently” support the limitation); Ariad, 598 F.3d at 1352
(“[I]t is the specification itself that must demonstrate possession. And while
the description requirement does not demand any particular form of
disclosure, . . . a description that merely renders the invention obvious does
not satisfy the requirement.”).
Finally, Appellant’s remaining arguments contend that a person of
ordinary skill would know “how” to implement the claim limitations and
would not find the claim “ambiguous.” See Appeal Br. 9. These arguments
are inapposite as the former is directed to the enablement requirement and
the latter to the definiteness of claim language. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) (explaining that the written
description requirement “is separate and distinct from the enablement
requirement”); cf. Knowles Elecs. LLC v. Cirrus Logic, Inc., 883 F.3d 1358,
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1367 (Fed. Cir. 2018) (noting that statements in a case analyzing
indefiniteness do not apply to discussion of written description requirement).
Accordingly, we are not persuaded of error in the Examiner’s written
description rejection. Accordingly, we sustain the written description
rejection of claims 6–8, as well as claims 12–14 and 18–20, which are not
argued separately and which recite commensurate limitations.
Indefiniteness Rejection R4 of Claims 1–7, 9–13, and 15–19
The Examiner found that a person of ordinary skill in the art would
not have been reasonably apprised of the scope of the phrase “no substantial
similarity,” recited in claim 1. Final Act. 10–11, 21–22. The Examiner
explains that, although the Specification defines “substantial similarity” as
“the same, or even though not the same, but close,” the Specification fails to
apprise an ordinary artisan “as to what is considered not close (no substantial
similarity).” Id. at 10 (citing Spec. ¶ 24). The Examiner further explains:
[W]hat is metes and bounds of “close”? . . . Are the keywords
“car” and “truck” close (to the same topic) because they are
both automobiles? Or are the keywords “car” and “truck” not
close because they are different types of automobiles? The
specification and the claims do not provide an answer to these
questions because “close” is not defined in such a way to
provide a standard for ascertaining the requisite degree (of what
is considered “close”).
Id. at 22.
Appellant argues that this rejection is in error. Appeal Br. 10–11. In
support, Appellant contends that “substantial similarity is indicative of, for
example, a same topic.” Id. at 11 (citing Spec. ¶ 19). According to
Appellant, “[a] person of ordinary skill in the art would readily understand
how close a first key word would have to be to a second key word so as to
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be, for example, of a same topic.” Id. Finally, Appellant submits that “[t]he
degree to which the keywords must be similar . . . is a design choice.” Id.
During the Office’s evaluation, a proposed “claim is indefinite when it
contains words or phrases whose meaning is unclear,” i.e., “ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing and defining
the claimed invention.” In re Packard, 751 F.3d 1307, 1310–11 (Fed. Cir.
2014) (per curiam); see In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989)
(“[D]uring patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed.”); see also In re McAward, Appeal No. 2015-006416,
2017 WL 3669566, at *3 (PTAB Aug. 25, 2017) (precedential); Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim
is amenable to two or more plausible claim 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, as indefinite.”). Although “absolute or
mathematical precision is not required,” “[t]he claims, when read in light of
the specification and the prosecution history, must provide objective
boundaries for those of skill in the art.” Interval Licensing LLC v. AOL,
Inc., 766 F.3d 1364, 1370–71 (Fed. Cir. 2014); Sonix Tech. Co. v.
Publications Int’l, Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017) (“Our prior
cases establish that the written description is key to determining whether a
term of degree is indefinite.”).
Appellant’s arguments are not persuasive because Appellant fails to
show error in the Examiner’s determination that the scope of the claim
phrase “no substantial similarity” is unclear. See Final Act. 10–11. The
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Specification states that “substantial similarity” is “the same, or even though
not the same, but close” (Spec. ¶ 24), so we determine that “no substantial
similarity” means “not close.” However, the Examiner found that this
definition (along with the claim phrase itself) would not reasonably inform a
person of ordinary skill in the art of the scope of “no substantial similarity.”
Final Act. 10–11; see id. at 21–22 (providing additional explanation).
Appellant does not persuade us of error in this finding. Indeed, Appellant
points to no evidence in the record that contradicts the Examiner’s finding,
and Appellant identifies no deficiencies in the Examiner’s rationale. See
Appeal Br. 10–11; MPEP § 2173.05(b)(I) (noting that during prosecution, an
applicant may “overcome an indefiniteness rejection by providing evidence
that the meaning of the term of degree can be ascertained by one of ordinary
skill in the art when reading the disclosure”).
Instead, Appellant argues that the claim phrase is sufficiently clear
because words that relate to the “same topic” are “substantially similar” and
because a person of ordinary skill in the art would understand “how close”
two words “would have to be . . . to be, for example, of a same topic.”
Appeal Br. 11. This argument is misplaced. The issue is not whether a
person of ordinary skill in the art would be able to identify any situation
where two words have “substantial similarity”—rather, the salient question
is whether a person of ordinary skill in the art would have been apprised of
the meaning (e.g., the scope) of the phrase “no substantial similarity,” in
light of the claim and Specification. Although “[b]readth is not
indefiniteness,” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331,
1341 (Fed. Cir. 2005) (alterations in original), the record shows that a person
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of ordinary skill would not have understood the scope and breadth of this
claim.
The phrase “no substantial similarity” is a subjective term of degree.
The standard for determining whether words are not “similar,” or “close,”
will vary considerably based on the context and from one person to another.
See, e.g., Final Act. 22 (querying whether the terms “car” and “truck” are
substantially similar). The Specification provides two examples of three-
word queries that are substantially similar, but does not clarify which, if any,
individual words are “substantially similar.” See Spec. ¶ 24. The
Specification provides no examples of words that have “no substantial
similarity.” See generally id. Given the Specification’s lack of adequate
guidance and objective standards, baselines, or boundaries to reasonably
ascertain the scope of this claim phrase under its broadest reasonable
interpretation, the claim is indefinite.
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claim 1 as indefinite. Accordingly, we sustain the indefiniteness
rejection of claim 1, as well as claims 2–7, 9–13, and 15–19, which are not
argued separately and which also recite the unclear phrase.
Obviousness Rejection R5 of Claims 1, 2, 4, 5, 9, 10, 15, and 16
Claims 1, 2, 4, 5, 9, 10, 15, and 16 stand rejected as obvious over
Barrett and Vassilakis. Final Act. 11–16. Appellant argues these claims as a
group (Appeal Br. 16–18), so we limit our discussion to claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites: “a comparison result between a first key word from a
first party and a second key word used in a search query.” Appeal Br. 20
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(Claims App.) (referred to herein as the “comparison result limitation”). The
claim further recites “generat[ing] a chat room . . . when the comparison
result indicates no substantial similarity between the first key word and the
second key word.” Id. (referred to herein as the “similarity limitation”).
The Examiner found that Barrett discloses the comparison result
limitation. Final Act. 11–12 (citing Barrett, 5:59–60, 6:15–20). In
particular, the Examiner found that “Barrett provides for a comparison result
between a first key word from a first party and a second key word used in a
search query from a second party.” Final Act. at 24; see also id. at 11–12.
The Examiner also found that Barrett “is concerned with what happens when
a match is found” and “lacks any teaching of what happens when no match
is found.” Id. at 24. So, for the similarity limitation, the Examiner relied on
Vassilakis, finding that it teaches “generating a new chat room when there is
a poor match.” Id. at 12 (citing Vassilakis, 6:27–30); see Final Act. at 24.
The Examiner explained why a person of ordinary skill in the art would have
modified Barrett based on Vassilakis yield the limitations of claim 1. Id. at
12–13, 24–25.
In the Appeal Brief, Appellant contends that Vassilakis fails to teach
or suggest the comparison result limitation:
Vassilakis discusses “a poor match between a query and
existing forums.” Appellant notes that such a match may be
detected by comparing the query to every word (not necessarily
keywords) in the forum. A comparison between a query and a
forum is therefore not equivalent to a comparison result
between a first key word from a first party and a second key
word used in a search query from a second party. Vassilakis
does not at least disclose or suggest “a comparison result
between a first key word from a first party and a second key
word used in a search query from a second party.”
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Appeal Br. 17 (footnote omitted; some emphasis omitted). Also, Appellant
submits that inherency “requires that the missing descriptive material is
necessarily present, not merely probably or possibly present, in the prior
art.” Id. (emphases and quotations omitted). From this, Appellant contends
that the references fail to teach or suggest the limitations of claim 1. Id. at
16–17
We are not persuaded of error because Appellant does not address the
rejection as articulated. The Examiner relied on Barrett—not Vassilakis—to
teach the comparison result limitation. See Final Act. 11–12 (citing Barrett,
5:59–60, 6:15–20). Appellant does not allege error in this finding (see
Appeal Br. 16–17), and Appellant’s arguments regarding Vassilakis miss the
mark. In addition, the rejection did not rely on inherency (see Final Act. 11–
13; see also Ans. 9), and so Appellant’s arguments directed to this doctrine
are inapposite.
Because Appellant does not address the rejection as articulated,
Appellant’s arguments do not persuade us of error on the part of the
Examiner. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”)); see
also Oetiker, 977 F.2d at 1445 (If an examiner presents a prima facie case,
“the burden of coming forward with evidence or argument shifts to the
applicant.”).
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Moreover, in the Reply Brief, Appellant argues that the combination
of Barrett and Vassilakis “would render the invention of Barret[t]
unsatisfactory for its intended purpose” and that “Barrett teaches away from
forming new chat rooms when there is no match.” Reply Br. 4. These
arguments were not raised in the Appeal Brief and are, therefore, waived as
untimely. See 37 C.F.R. § 41.41(b)(2). Good cause has not been shown to
raise these new arguments in the first instance in the Reply Brief.8
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 2, 4, 5, 9, 10, 15, and 16, which
fall therewith.
Obviousness Rejection R6–R7 of Claims 6–8, 12–14, and 18–20
The Examiner rejects dependent claims 6–8, 12–14, and 18–20 over a
combination of Barrett, Vassilakis, and either Zhang or Wheeler. Final
Act. 16–19. Appellant argues that these dependent claims are allowable for
the reasons presented above for their respective independent claims (i.e.,
claims 1, 9, and 15). Appeal Br. 18.
As explained above, we are not persuaded of error in the Examiner’s
obviousness rejection of the independent claims. Consequently, Appellant

8 Although Appellant’s argument includes a quote from the Examiner’s
Answer (Reply Br. 4 (citing Ans. 8)), the quote also appears verbatim in the
Final Office Action. Compare Ans. 7–9, with Final Act. 24–25.
Appeal 2019-005657
Application 14/680,013

17
has not shown error in the Examiner’s obviousness rejections of dependent
claims 6–8, 12–14, and 18–20. Accordingly, we sustain these rejections.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 9,
10, 15, 16
Non-Statutory Double
Patenting (Li ’112)
1, 2, 4, 5, 9,
10, 15, 16

1, 2, 4, 5, 9,
10, 15, 16
Non-Statutory Double
Patenting (Li ’307)
1, 2, 4, 5, 9,
10, 15, 16

6–8, 12–14,
18–20
112 ¶ 1 Written Description 6–8, 12–14,
18–20

1–7, 9–13,
15–19
112 ¶ 2 Indefiniteness 1–7, 9–13,
15–19

1, 2, 4, 5, 9,
10, 15, 16
103(a) Barrett, Vassilakis 1, 2, 4, 5, 9,
10, 15, 16

6, 7, 12, 13,
18, 19
103(a) Barrett, Vassilakis,
Zhang
6, 7, 12, 13,
18, 19

8, 14, 20 103(a) Barrett, Vassilakis,
Wheeler
8, 14, 20
Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED