Ex Parte Appelman et al

Patent Trial and Appeal Board

Sep 29, 2016

13023256 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/023,256 02/08/2011 Barry Appelman
107193 7590 10/03/2016
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
19487.28.1 8323
EXAMINER
WALSH, JOHN B
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@kjpip.com
gjolley@kjpip.com
tkusitor@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY APPELMAN, TERRY CHRISTIAN BUONVIRI,
ANDREW IV AR ERICKSON, THOMAS JARMOLOWSKI,
and ROBERT EUGENE WELTMAN
Appeal2015-001437
Application 13/023,256
Technology Center 2400
Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
JOYCE CRAIG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 58-89. Claims 1-57 have been
canceled. Final Act. l; App. Br. 2. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 We refer to Appellants' Specification ("Spec."), filed Feb. 8, 2011
(claiming benefit of several applications including US 10/715,211, filed
Nov. 18, 2003 and US 60/426,806, filed Nov. 18, 2002); Appeal Brief
("App. Br.") filed June 30, 2014; and Reply Brief ("Reply Br.") filed Nov.
10, 2014. We also refer to the Examiner's Answer ("Ans.") mailed Sept. 10,
Appeal2015-001437
Application 13/023,256
We affirm-in-part.
Appellants' Invention
The invention concerns user identification systems and methods. In
one embodiment, the method determines the online context of users based
upon their presence, identifies a group of users that share the online context
one or more traits, and enables automatic presentation of a user interface to
inform users that members of the identified group share the same online
context and trait(s ). (Spec. 1:2; 3 :3--4:31; Abstract.)
Representative Claim
Independent claim 58, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
58. A method comprising:
executing computer instructions upon one or more
computer processors to perform the following:
determining a.first online context of a user, the.first online
context of the user being based upon a first online presence of
the user;
storing, in a database, trait information for the user, the
trait information for the user being different from the first online
context of the user;
determining an online context of other users, the online
context of the other users being based upon an online presence
of the other users;
comparing the first online context of the user to the online
context of the other users;
storing, in the database, trait information for the other
users that have entered the first online context of the user, the
2014, and Final Office Action (Final Rejection) ("Final Act.") mailed Nov.
7, 2013.
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trait information for the other users being different from the
online context of the other users;
comparing the stored trait information for the user to the
stored trait information for the other users to identify a first group
of the other users that share the first online context of the user
and at least one trait with the user;
enabling automatic presentation of a user interface to
inform the user of at least one member of the identified first
group of the other users that share the first online context of the
user and at least one trait with the user; and
dynamically updating the user interface, in response to the
user switching to a second online context, to inform the user of
at least one member of a second group of the other users that
share the second online context of the user and at least one trait
with the user.
Rejections on Appeal
1. The Examiner rejects claims 85, 87, and 89 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter \~1hich the applicant regards as his
invention.
2. The Examiner rejects claims 58, 59, 61---64, 67---69, 71, 72, 74--
76, 79, 81, and 83-89 under 35 U.S.C. § 102(e) as anticipated by Trovato
(US 6,425,012 Bl, issued July 23, 2002).
3. The Examiner rejects claims 60 and 73 under 35 U.S.C.
§ 103(a) as being unpatentable over Trovato and Brown (US 7,062,533 B2,
issued June 13, 2006 (filed Sept. 20, 2001)).
4. The Examiner rejects claims 65, 70, and 77 under 35 U.S.C.
§ 103(a) as being unpatentable over Trovato and Caiafa (US 2003/0228908
Al, published Dec. 11, 2003 (filed June 10, 2002)).
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5. The Examiner rejects claim 66 under 35 U.S.C. § 103(a) as
being unpatentable over Trovato, Caiafa, and Goddard (US 6,684,240 Bl,
issued Jan. 27, 2004 (filed Dec. 15, 1999)).
6. The Examiner rejects claims 78, 80, and 82 under 35 U.S.C.
§ 103(a) as being unpatentable over Trovato and Cohen (US 7,035,926 Bl,
issued Apr. 25, 2006 (filed Nov. 30, 1999)).
ISSUES
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issues before us follow:
1. Did the Examiner err in rejecting claims 85, 87, and 89 as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as his invention?
2. Did the Examiner err in finding that Trovato discloses
"enabling automatic presentation of a user interface to inform the user of at
least one member of the identified first group of the other users that share
the first online context of the user and at least one trait with the user" (claim
58) within the meaning of Appellants' claim 58 and the commensurate
limitations of claims 67 and 71?
ANALYSIS
The Indefiniteness Rejection of Claims 85, 87, and 89
The Examiner rejects claims 85, 87, and 89 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as his
invention. Final Act. 2. Appellants contend that the claims "are not
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unclear" (App. Br. 21) and "it is clear that when claim 85 refers to 'a user
interface associated with the first online context of the user,' it is referring to
a user interface separate from the 'user interface to inform the user' recited
in independent claim 58" (App. Br. 22). See App. Br. 21-22; Reply Br. 6-8.
We agree with the Examiner's claim interpretation and reasoning and
disagree with Appellant's contentions. In particular, Appellants provide
only attorney argument (that two distinct user interfaces are referenced) and
misconstrues the applicable precedent. The essence of the requirement
under 35 U.S.C. § 112, second paragraph is that the language of the claims
must make clear what subject matter the claims encompass - i.e., "'whether
those skilled in the art would understand what is claimed when the claim is
read in light of the specification."' Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In
the instant appeal, claim 58 (which is representative) recites "enabling
automatic presentation of a user interface to inform the user" and
"dynamically updating the user interface" (claim 58 (emphasis added)).
Claim 85 (which is representative) recites "wherein the user interface
comprises a window separate from a user interface associated with the first
online context of the user" (claim 85 (emphasis added)). As pointed out by
the Examiner, "it is unclear how the user interface would be separate from
itself' (Final Act. 2) or "that there are multiple user interfaces" (Ans. 17).
See Final Act. 2; Ans. 17-18. Thus, because Appellants utilize the same
language - "a user interface" - in claims 58 and 85 to reference two
separate user interfaces, we find that this limitation/terminology is subject to
multiple plausible interpretations, and is indefinite. Ex parte Miyazaki, 89
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USPQ2d 1207, 1211 (BP Al 2008) (precedential) ("[l]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.")
Thus, Appellants do not persuade us the Examiner erred in
determining that claims 85, 87, and 89 are indefinite. Accordingly, we
affirm the Examiner's§ 112, second paragraph rejection of claims 85, 87,
and 89.
The 35 U.S.C. § 102 Rejection of Claims 58, 59, 61-64,
67-69, 71, 72, 74-76, 79, 81, and 83--89
Appellants contend that Trovato do not disclose the disputed features
of representative claim 1, namely, "enabling automatic presentation of a user
interface to inform the user of at least one member of the identified first
group of the other users that share the first online context of the user and at
least one trait with the user" (claim 58). See App. Br. 12-18; Reply Br. 2--4.
Specifically, Appellants contend Trovato "requires that a user initiate a chat
session via a chat request, after which the user is placed in a chat network
based on the time the request was made" (App. Br. 17) and Trovato merely
describes manually initiating "the chat request before being assigned to a
chat room or viewing other users in a chat room" (Reply Br. 3), and that the
Examiner reads out the requirement for "automatic presentation" in the
Examiner's claim interpretation (see App. Br. 16-18; Reply Br. 2--4).
The Examiner maintains that Trovato discloses "a user interface is
provided to a user that displays and identifies other users in a chat group"
(Ans. 13) and that Appellants' claim does not require anything beyond
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presenting such an interface because (within the Examiner's broadest
reasonable interpretation) "'automatic presentation' is not 'immediate' nor is
it independent of other factors" (Ans. 14). See Final Act. 3--4; Ans. 13-15
(citing Trovato, col. 1, 11. 16-18; col. 6, 11. 10-19; Fig. 2, element 240; Fig.
4, elements 440, 450). We disagree with the Examiner's overly broad claim
construction and interpretation of Trovato. We find Appellants' contentions
persuasive of Examiner error.
Appellants do not simply recite a user interface displaying
information. Appellants' claim 58 requires the capability of automatically
presenting a user interface that informs the user of other members of the
identified group (sharing a first online context and other traits with the user).
The Examiner's citations to Trovato, on the other hand, merely describe a
user initiating a chat (manually entering a chat room), not a particular feature
of the chat room (user interface) that presents information regarding other
users. Even if we were to construe entering a chat room as automatically
presenting information on other users, Trovato is silent as to how the
information might be presented or what the information might entail. The
Examiner's rejection lacks any discussion, beyond conclusory statements
(see Final Act. 3--4; Ans. 13-15), that Trovato provides such a capability.
The Examiner has not provided sufficient support for the findings of
anticipation made in the rejection.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Trovato discloses the disputed limitations of
Appellants' claim 58. Independent claims 67 and 71 include limitations of
commensurate scope. Claims 59, 61---64, 68, 69, 72, 74--76, 79, 81, and 83-
89 depend on claims 58, 67, and 71, respectively. Accordingly, we reverse
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the Examiner's obviousness rejection of claims 58, 59, 61---64, 67---69, 71,
72, 74--76, 79, 81, and 83-89.
The 35 U.S.C. § 103 Rejection of Claims 60, 65, 66, 70,
73, 77, 78, 80, and 82
With respect to the obviousness rejection of dependent claims 60 and
73 (rejected as obvious over Trovato and Brown), dependent claims 65, 70,
and 77 (rejected as obvious over Trovato and Caiafa), dependent claim 66
(rejected as obvious over Trovato, Caiafa, and Goddard), and dependent
claims 78, 80, and 82 (rejected as obvious over Trovato and Cohen) we
reverse the Examiner's obviousness rejections for the same reasons set forth
with respect to claim 58 (supra). The Examiner does not cite sufficient
support in Trovato for the teaching of automatically presenting a user
interface that informs the user of other members of the identified group.
Accordingly, we reverse the Examiner's obviousness rejections of claims 60,
65, 66, 70, 73, 77, 78, 80, and 82.
CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
85, 87, and 89 under 35 U.S.C. § 112, second paragraph.
Appellants have shown that the Examiner erred in rejecting claims 58,
59, 61---64, 67---69, 71, 72, 74--76, 79, 81, and 83-89 under 35 U.S.C.
§ 102(e).
Appellants have shown that the Examiner erred in rejecting claims 60,
65, 66, 70, 73, 77, 78, 80, and 82 under 35 U.S.C. § 103(a).
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DECISION
We affirm the Examiner's rejection of claims 85, 87, and 89, and
reverse the Examiner's rejections of claims 58-84, 86, and 88.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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