Ex Parte Brezina et al

Patent Trial and Appeal Board

Sep 6, 2016

12180471 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/180,471 07/25/2008
76058 7590 09/08/2016
YAHOO! INC. C/O GREENBERG TRAURIG, LLP
MET LIFE BUILDING
200 PARK A VENUE
NEW YORK, NY 10166
Matthew Brezina
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.
085804-620760/US 1109
EXAMINER
LO,WEILUN
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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):
mendozae@GTLA W.COM
cordesp@gtlaw.com
njdocket@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW BREZINA, ADAM SMITH, and
GREGORY DUFFY
Appeal2015-002974
Application 12/180,471
Technology Center 2100
Before JOHN P. PINKERTON, NATHAN A. ENGELS and
MATTHEW J. McNEILL, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
Per Curiam
DECISION ON APPEAL
Appellants 1 file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20, which constitute all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Yahoo, Inc. as the real party in interest. App. Br. 2.
Appeal2015-002974
Application 12/180,471
STATEMENT OF THE CASE
Introduction
Appellants' described and claimed invention is generally directed to
collecting and presenting historical communication data and personal data.
Spec. ,-r 4. 2
Claim 1 is representative and reads as follows:
1. A computer-implemented method, comprising:
receiving, by an application, a trigger identifying a first
person referenced in a communication, the first person being
different than a sender or recipient of the communication, the
communication having been transmitted by a communication
client separate from the application;
generating a plurality of person profiles based on
communications sent or received by the communication client,
each profile including a list of contacts associated with the
profile;
retrieving, by the application, information relating to the
first person, the information being a first person profile of the
plurality of person profiles, and the first person profile
including a list of contacts associated with the first person,
wherein the retrieving comprises obtaining the list of contacts
from one or more social networks; and
providing, by the application, the information to the
communication client in accordance with an application
programming interface, the information to be displayed to a
user of the communication client.
2 Our Decision refers to the Final Office Action mailed Oct. 2, 2013 ("Final
Act."), Appellants' Appeal Brief filed Mar. 31, 2014 ("App. Br.") and Reply
Brief filed Nov. 3, 2014 ("Reply Br."), the Examiner's Answer mailed Sept.
4, 2014 ("Ans."), and the original Specification filed July 25, 2008
("Spec.").
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Appeal2015-002974
Application 12/180,471
Hale
Le Vasseur et al.
Daigle
Dolin et al.
References
US 2006/0282303 Al Dec. 14, 2006
US 2007/005715 Al Jan. 4, 2007
US 2007/0143414 Al June 21, 2007
US 2008/0316925 Al Dec. 25, 2008
Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dolin, Hale, Daigle, and Le Vasseur.
Appellants ' Contentions
1. Appellants contend the Examiner did not provide the required
analysis to support the rejections under§ 103(a) because the
rejections are conclusory without specific findings regarding
the scope of the prior art, the level of ordinary skill in the art, or
the rationale to support the legal conclusions of obviousness.
App. Br. 5-7.
2. Appellants contend the Examiner fails to consider the claims as
a whole by impermissibly parsing the features of the claims into
fragments to selectively combine the references by hindsight
and that the references do not teach the "receiving" limitation of
claim 1, as well as the corresponding limitation of claims 10
and 15. App. Br. 7-13; Reply Br. 2--4.
3. Appellants contend the cited art teaches away from the
modifications and combinations proposed by the Examiner
because Dolin, Daigle, Hale, and Le Vasseur are four disparate
and incompatible systems, and combining Daigle, Hale, and
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Application 12/180,471
Le Vasseur with Dolin would significantly change Dolin's
principle of operation. App. Br. 13-17; Reply Br. 5-9.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Briefs that the Examiner has erred. See App. Br. 5-17;
Reply Br. 2-10. We have also reviewed the Examiner's response to
Appellants' arguments and the evidence of record.
We disagree with Appellants' contention that the Examiner has erred.
The Examiner has provided a detailed and comprehensive response,
supported by evidence based on the combined teachings and suggestions of
the cited references, to each of Appellants' contentions and arguments. We
adopt as our own the findings and reasons set forth by the Examiner in the
Office Action from which this appeal is taken (Final Act. 2-14) and in the
Examiner's Answer in response to Appellants' Appeal Brief (Ans. 14--43).
We concur with the conclusions reached by the Examiner. For emphasis, we
consider and highlight specific arguments as presented in the Briefs.
Regarding Appellants' contention 1, we disagree with Appellants'
arguments that the Examiner's rejections are conclusory and without specific
findings regarding the scope and content of the prior art or the rationale to
support the legal conclusion of obviousness. As set forth in the Final Action
and the Examiner's Answer, the Examiner made specific findings regarding
the teachings of each of the cited references and how the reference teaches
or suggests, or differs from, the claim limitations at issue. See Final Act. 2-
14; Ans. 17-23, 26-28, 32. As required by KSR Int'! Co. v. Teleflex Co.,
550 U.S. 398, 418 (2007), the Examiner also provided "some articulated
reasoning with some rational underpinning to support the legal conclusion of
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Appeal2015-002974
Application 12/180,471
obviousness." See Ans. 23-26, 28-31, 32-34. We are not persuaded by
Appellants' argument the Examiner errs by failing to identify the level of
ordinary skill in the art because the cited references reflect the level of skill
in the art, and Appellants do not explain how the level of skill was necessary
to resolve any of Appellants' arguments. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) ("the absence of specific findings on the
level of skill in the art does not give rise to reversible error where the prior
art itself reflects an appropriate level and a need for testimony is not
shown").
Regarding Appellants' contention 2, we disagree with Appellants'
arguments that the Examiner fails to consider the claims as a whole by
parsing or fragmenting the claim limitations to selectively combine the
references using impermissible hindsight. As reflected in the Final Action
and the Examiner's Answer, the Examiner finds all of the elements of claim
1, including the "receiving" element, are known in the art as they are taught
by the primary reference Dolan or the combination of Dolan with one or
more of Daigle, Hale or La Vasseur. Final Act. 3-8; Ans. 35-39. These
findings show that the combination proposed by the Examiner involves
familiar elements and known methods that yield predictable results. As the
Supreme Court stated, "[ t ]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." See KSR, 550 U.S. at 416. Appellants have not
provided persuasive evidence or argument to rebut the Examiner's findings
or establish that the combination of these known elements would yield more
than predictable results. Furthermore, it must be recognized that any
judgment on obviousness is in a sense necessarily a reconstruction based
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upon hindsight reasoning. However, so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from the Appellants' disclosure, such a reconstruction is proper. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, we conclude the
Examiner did not use impermissible hindsight because the rejection is based
on the references and what they would have taught or suggested to a person
of ordinary skill in the art.
Regarding Appellants' contention 3, based on the Examiner's findings
concerning the cited references, we do not agree with Appellants that the
cited art are disparate and incompatible systems that teach away from
combining Dolin, Daigle, Hale, and Le Vasseur or that combining Daigle,
Hale, and Le Vasseur with Dolin would significantly change Dolin's
principle of operation. See Ans. 18-34, 40-42. We note "the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCP A 1981 ). Appellants have not provided persuasive evidence or
argument to show that modifying Dolin as proposed by the Examiner was
"uniquely challenging or difficult for one of ordinary skill in the art." See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)).
Absent such evidence or argument, we "take account of the inferences and
creative steps that a person of ordinary skill in the art would employ" and
agree that the Examiner's proposed modifications and combinations were
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Application 12/180,471
within the level of ordinary skill in the art. See KSR, 550 U.S. at 418; see
also id. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton.").
CONCLUSION
Appellants' arguments have not persuaded us that the Examiner erred.
Accordingly, we sustain the Examiner's rejection of claims 1, 10, and 15, as
well as claims 2-9, 11-14, and 16-20, which depend from claims 1, 10, and
15, respectively, and are not argued separately.
DECISION
We affirm the Examiner's decision rejecting claims 1-20 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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