Ex Parte Chen et al

Patent Trial and Appeal Board

Jun 29, 2016

13405286 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/405,286
58139 7590
IBM CORP, (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
02/25/2012
07/01/2016
FIRST NAMED INVENTOR
Feng-Wei Chen
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.
RSW920110066US2 1615
EXAMINER
ALRIYASHI, ABDULKADER MOHAMED
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FENG-WEI CHEN, JOHN R. HIND,
JOSEPH D. JOHNSON, YONGCHENG LI, and
JOSEF SCHERP A
Appeal2014-005258 1
Application 13/405,2862
Technology Center 2400
Before THU A. DANG, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 A Decision affirming the Examiner's rejections in related Application
Serial No. 13/173,093 (App. No. 2014-003039) was mailed Feb. 25, 2016.
2 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 1.
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Application 13/405,286
STATEMENT OF THE CASE3
The Invention
Appellants' disclosed and claimed "invention relates to
communicating using computer-based technology, and more particularly to
improving information exchange in the social network environment." Spec.
iT 2.
Exemplary Claims
Claims 1 through 5 and 7, reproduced below, are representative of the
subject matter on appeal (emphasis and labeling added to contested
limitations):
1. A method for improving information exchange in a
social network environment, the method comprising:
detecting actions performed on an electronic object;
[LI] detecting entry of said electronic object in a social
networking website;
[L2] identifying an association between said social
networking website and said electronic object;
[L3] identifYing one or more rule patterns based on said
detected actions, said detected entry of said electronic object in
said social networking website and said identified association
between said networking website and said electronic object;
storing an indication of said association between said
social networking website and said electronic object in terms of
3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 12, 2013); Reply Brief ("Reply Br.," filed Dec. 20, 2013); Examiner's
Answer ("Ans.," mailed Nov. 18, 2013); Final Office Action ("Final Act.,"
mailed Apr. 26, 2013); and the original Specification ("Spec.," filed
Feb. 25, 2012).
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concept nodes in a hierarchical tree using said identified one or
more rule patterns; and
[L4] searching, by a processor, for any social networking
feeds of interest using said hierarchical tree as well as a
current electronic object of a user.
2. The method as recited m claim 1 further
compnsmg:
providing said user a link to a social networking feed of
interest that matches node selection criteria for said concept
nodes.
3. The method as recited in claim 1 further
compnsmg:
providing said user a link to a social networking feed of
interest that matches one or more keywords in said current
electronic object of said user.
4. The method as recited in claim 1 further
compnsmg:
identifYing a social networking feed of interest that
matches node selection criteria for said concept nodes or
matches one or more keywords in said current electronic object
of said user; and
providing said user an opportunity to respond to said
social networking feed of interest.
5. The method as recited m claim 4 further
compnsmg:
posting a response to said social networking feed of
interest.
7. The method as recited in claim 5, wherein said
response comprises a reposting of an information nugget from
an electronic message.
3
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Drayer et al. ("Drayer") US 2008/0104128 Al May 1, 2008
Ahrens et al. ("Ahrens") US 2012/0005224 Al Jan. 5, 2012
Narayanan et al. ("Narayanan") US 8,244,848 Bl Aug. 14, 2012
Rejections on Appeal
RI. Claims 1-3 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Narayanan. Ans. 2.
R2. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Narayanan and Ahrens. Ans. 4.
R3. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Narayanan; Ahrens; and Drayer. Ans. 5.
CLAIM GROUPING
Appellants separately argue six out of seven of the claims on Appeal.
Based on Appellants' arguments (App. Br. 2-33), which separately argue
each of claims 1 through 5 and 7, we individually decide the appeal of
anticipation Rejection RI of claims 1-3; we individually decide the appeal
of obviousness Rejection R2 of claims 4 and 5; and we individually decide
the appeal of obviousness Rejection R3 of claim 7.
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Remaining claim 6 in Rejections R3, not argued separately, stands or
falls with independent claim 1 from which it depends. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-7,
and we incorporate herein and adopt as our own: ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1
through 5 and 7 for emphasis as follows.
1. § 102 Rejection R 1 of Claim 1
Issue 1
Appellants argue (App. Br. 2-14; Reply Br. 2-9) the Examiner's
rejection of claim 1under35 U.S.C. § 102(e) as being anticipated by
Narayanan is in error. These contentions present us with the following
issue:
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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Did the Examiner err in finding the cited prior art discloses a method
that includes, inter alia, limitations L 1 through L4, as recited in claim 1?
Analysis
Limitation LI - "Detecting Entry" step
Appellants contend, "Narayanan discloses that as the user enters
characters into a form box at 602, the frontend typeahead process 204 reads
the string of entered textual characters," but " [ t ]here is no language in the
cited passage [of Narayanan] that discloses detecting entry of the form box
(Examiner asserts that the form box, such as form box 409, corresponds to
the claimed electronic object) in a social networking website." App. Br. 3.
Appellants further contend the Examiner has failed to provide a finding "that
Narayanan discloses detecting an entry of the form box, which the Examiner
asserts corresponds to the claimed electronic object, in a social networking
website." App. Br. 4. Further in this regard, Appellants also argue:
Id.
If the Examiner is asserting that the user profile page
corresponds to the claimed electronic object, then the Examiner
must show that the user profile page, such as shown in Figures
4A--4D of Narayanan, is entered in a social networking website
and that the entry is detected. However, the user profile page is
not entered in a social networking website since it is already
hosted or accessible in the social network environment. There is
no entry being performed. Neither is there a detection of an
entry of the user profile page in a social networking website.
As an initial matter of claim construction, we give the claim its
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). "In the patentability
context, claims are to be given their broadest reasonable interpretations ...
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limitations are not to be read into the claims from the specification." Jn re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
We note Appellants have not cited to explicit definitions of
"electronic object" or "social networking website" in the Specification that
would preclude the Examiner's broader reading. 5 Ans. 7-8.
In particular, the Examiner's reads the recited "electronic object" onto
Narayanan's disclosure of a user page in a social network (Figs. 4A-D), and
reads the recited "social networking website" onto Narayanan's disclosure of
a "concept profile page/hub." Ans. 8 (citing Narayanan col. 12, 11. 18-19).
In the Reply Brief, Appellants reiterate their arguments, and contend:
[T]he Examiner interprets the data entered by the user (e.g., the
user entering the term "Family Guy") as corresponding to the
claimed electronic object. However, the term "Family Guy" is
not being entered in the web page devoted to the Family Guy
TV show. Instead, the term "Family Guy" is simply being used
to identify and match any hyperlinks, \vhich direct the user to a
concept profile page devoted to the term. Hence, the Examiner
has not shown that Narayanan discloses detecting the entry of
the electronic object in a social networking website. Neither has
the Examiner shown the aspect of detecting the entry of the
electronic object in the social networking website. Hence,
Narayanan does not disclose "detecting entry of said electronic
object in a social networking website" as recited in claim 1.
5 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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Reply Br. 3.
We do not find Appellants' arguments to be persuasive, and we
particularly agree with the Examiner's findings that Narayanan's disclosure
of "a declaration" shows entry of an electronic object in a social networking
website. Ans. 2.
Therefore we find no error in the Examiner's finding that Narayanan
discloses limitation L 1 of claim 1.
Limitation L2 - ''IdentifYing an Association" step
Appellants contend:
There is no language in the cited passage [of Narayanan]
that discloses identifying an association between the social
networking website and the electronic object. Instead,
Narayanan discloses identifying nodes having respective names
or other hub identifiers matching the entered text, i.e., matching
the text entered into the form box on the user profile page, such
as form box 409. The association identified is between the text
entered by the user into the form box on the profile page and
existing nodes (e.g., hub node 304 stored in data store 24).
App. Br. 7 (emphasis added). Appellants make additional arguments
characterizing Narayanan, and summarize their position by alleging "there is
no language in the cited passage that discloses identifying an association
between the social networking website and the electronic object." Id.
In response, the Examiner finds (Ans. 8), and we agree, Narayanan
discloses a keyboard is used to enter "one or more terms in declarations"
which are detected in a social networking website, and which are matched to
known concepts or existing concept nodes, which is relied upon by the
Examiner as creating the recited association. See Narayanan, col. 12,
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11. 10-16 ("[O]ne or more terms entered as declarations, and particularly
terms matched to known concepts or existing concept nodes 304, may be
associated with a hyperlink that, when clicked or otherwise selected, directs
the user to a concept profile page devoted to the term and, in particular
embodiments, having a name identical or similar to the declared term.").
Therefore, we find no error in the Examiner's finding that Narayanan
discloses limitation L2 of claim 1.
Limitation L3 - ''IdentifYing One or More Rule Patterns" step
Appellants contend:
Narayanan discloses the situation that when there is not a
match between the character string entered by the user into a
form box and the existing nodes, a new node is created
becoming the concept node for, and named, based on the
particular declaration (e.g., "I love climbing in northern
California").
There is no language in the cited passage that discloses
identifying one or more rule patterns. Neither is there any
language in the cited passage that discloses identifying one or
more rule patterns based on the detected actions. Neither is
there any language in the cited passage that discloses
identifying one or more rule patterns based on the detected
actions and the detected entry of the electronic object in the
social networking website. Neither is there any language in the
cited passage that discloses identifying one or more rule
patterns based on the detected actions, the detected entry of the
electronic object in the social networking website, and the
identified association between the networking website and the
electronic object.
App. Br. 10.
In response, and lacking any evidence of record pointing to an explicit
definition of a "rule pattern," the Examiner turns to non-limiting examples in
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the Specification of what might be intended by the recited "rule patterns."
See Ans. 9-10 (citing Spec. i-fi-121, 35, and 46). In light of Appellants'
disclosure, the Examiner construes the recited "rule pattern" "as a link (edge)
between nodes in a graph," and reads the limitation onto the teaching of
Narayanan in identifying an edge from the user node to a concept node.
Ans. 10 (citing Narayanan, col. 3, 11. 25----67). 6
Therefore, we find no error in the Examiner's finding that Narayanan
discloses limitation L3 of claim 1.
Limitation L4 - "Searching ... for any Social Networking Feeds" step
Appellants contend, " [ t ]here is no language in the description of
step 608 [of Figure 6 of Narayanan, cited by the Examiner (Final Act. 3)]
that discloses searching for any social networking feeds of interest. Instead,
Narayanan discloses searching for existing nodes having respective names or
other hub identifiers matching the entered text." App. Br. 13.
6 "Particular embodiments further relate to a method for automatically
generating nodes and edges based on information currently being entered by
a user of a social network environment." Narayanan col. 3, 11. 25-28. "In
particular embodiments, when a match is found, these or other processes
may then automatically generate an edge from a node corresponding to the
user (the user's node) to the existing node corresponding to the concept
match." Narayanan col. 3, 11. 35-39. "In particular embodiments, as a user
continues to enter text and the typeahead feature determines that all or a
portion of the declaration does not match any existing node, at least
according to a statically or dynamically determined level of certainty, the
typeahead feature may cause the social network environment to
automatically create a new node based on the declaration entered by the
user, as well as an edge from the user's node to the new node." Narayanan
col. 3, 1. 64 - col. 4, 1. 5. In agreement with the Examiner, we find at least
these portions of Narayanan discloses the contested "identifying one or more
rule patterns based on said detected actions."
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In response, the Examiner finds, and we agree, Narayanan teaches
(col. 4, 11. 48---67) searching for recommendations by using a social
networking graph and the currently viewed page, wherein
'"recommendations' [is] interpreted as 'social networking feeds of interest',
[and] 'the currently viewed page' [is] interpreted as 'f! current electronic
object off! user')." Ans. 12. We note Appellants do not point to any
evidence of record or explicit definition that would preclude the Examiner's
broad but reasonable reading.
Therefore, we find no error in the Examiner's finding that Narayanan
discloses limitation L4 of claim 1.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the teachings of the
cited prior art to disclose the contested limitations of claim 1, nor do we find
error in the Examiner's resulting finding of anticipation. Therefore, we
sustain the Examiner's anticipation rejection of independent claim 1.
2. § 102 Rejection RI of Claim 2
Issue 2
Appellants argue (App. Br. 14--17; Reply Br. 9-11) the Examiner's
rejection of claim 2 under 35 U.S.C. § 102(e) as being anticipated by
Narayanan is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art discloses the
method of claim 1 that further includes the step of "providing said user a link
to a social networking feed of interest that matches node selection criteria
for said concept nodes," as recited in claim 2?
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Analysis
Appellants contend the cited prior art does not disclose the contested
limitation of claim 2, but instead "discloses that terms matched to known
concepts or existing concept nodes may be associated with a hyperlink that,
when clicked or otherwise selected, directs the user to a concept profile page
devoted to the term ... [which] refers to a web page ... [but which] does
not correspond to a social networking feed of interest." App. Br. 16-17.
The Examiner finds (Ans. 12) that Narayanan describes providing the
user with a hyperlink to the recommendations, while "consider[ ing] node
selection criteria when searching for recommendation[ s]." (Citing
Narayanan, col. 35, 11. 38--41 ). Under the broadest reasonable interpretation,
and lacking any evidence of record that would show the Examiner's
interpretation to be overly broad or unreasonable, we agree with the
Examiner's claim construction, reading of the contested limitation onto the
cited prior art, and finding of anticipation of claim 2.
3. § 102 Rejection R 1 of Claim 3
Issue 3
Appellants argue (App. Br. 17-19; Reply Br. 11-13) the Examiner's
rejection of claim 3 under 35 U.S.C. § 102(e) as being anticipated by
Narayanan is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art discloses the
method of claim 1 that further includes the step of "providing said user a link
to a social networking feed of interest that matches one or more keywords in
said current electronic object of said user," as recited in claim 3?
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Analysis
Appellants generally contend Narayanan does not disclose the
contested limitation of claim 3 (App. Br. 17), and specifically argue:
There is no language in the cited passage that discloses
providing the user a link. Neither is there any language in the
cited passage [col. 36, 11. 44---67] that discloses providing the
user a link to a social networking feed of interest. Neither is
there any language in the cited passage that discloses providing
the user a link to a social networking feed of interest that
matches one or more keywords in the current electronic object
of the user.
Id. Appellants similarly contend:
[t]here is no language in the description of steps 602, 604 [of
Narayanan Figure 6] that discloses providing the user a link to a
social networking feed of interest ... [n]either is there any
language in the description of Figure 6 . . . that discloses
providing the user a link to a social networking feed of interest
that matches one or more keywords in the current electronic
obiect of the user.
App. Br. 18. "Instead, Narayanan discloses performing a search for existing
nodes, and particularly hub nodes, that match the entered text." App. Br. 19.
In response, similar to Issue 2, supra, the Examiner finds, and we
agree, Narayanan discloses providing the user with a link to the
recommendations (Narayanan, col. 35, 11. 38--41), but in the case of claim 3,
the recommendations are based upon using one or more keywords to search
for recommendations. Ans. 13 (citing Narayanan, col. 36, 11. 55-67).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the teachings of the cited
prior art to disclose the contested limitations of claim 3, nor do we find error
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in the Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of dependent claim 3.
4. § 103 Rejection R2 ofClaim 4
Issue 4
Appellants argue (App. Br. 19-25) the Examiner's rejection of claim 4
under 35 U.S.C. § 103(a) as being obvious over the combination of
Narayanan and Ahrens is in error. These contentions present us with the
following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests the method of claim 1 that further includes, inter alia,
the step of "identifying a social networking feed of interest that matches
node selection criteria for said concept nodes or matches one or more
keywords in said current electronic object of said user," as recited in
claim 4?
(b) Did the Examiner err in combining Narayanan with Ahrens in
the manner suggested under§ 103 to render claim 4 obvious by not
providing an articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness?
Analysis
Issue 4(a)- "IdentifYing a Social Networking Feed" step
Appellants contend the cited prior art does not teach or suggest either
of the contested alternative matches of the "identifying" step, i.e., matching
either "node selection criteria," or "one or more keywords," and thereby "the
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Examiner has not presented a prima facie case of obviousness in rejecting
claim 4." App. Br. 20.
In response, the Examiner relies upon his related factual findings set
forth in connection with Rejection RI of claims 2 and 3 in Issues 2 and 3,
supra. We agree with and adopt the Examiner's findings as our own. See
Ans. 13-14.
Issue 4(b) - Motivation to Combine
Appellants contend:
The Examiner's reasoning for modifying Narayanan with
Ahrens to include the above cited claim limitation is "to
facilitate the most engaging conversations amongst posting
users by the intelligent selection of related posts as motivated
by Ahrens (paragraphs [0016], [0056])." Id. The Examiner's
reasoning is insufficient to establish a prima facie case of
obviousness in rejecting claims 4--5.
App. Br. 22.
Appellants further contend:
[t]here is no language in Ahrens (and in particular paragraphs
[0016 and 0056]) that makes any suggestion to provide the user
an opportunity to respond to the social networking feed of
interest (missing claim limitation) in order to facilitate the most
engaging conversations amongst posting users by the intelligent
selection of related posts (Examiner's reasoning).
App. Br. 22-23. In addition, Appellants argue the Examiner failed to
provide "some rational connection between the passages in Ahrens that are
the source of the Examiner's reasoning and the missing claim limitation," as
required by KSR.7 App. Br. 23.
7 KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
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Appellants pose a series of rhetorical questions (App. Br. 23-25)
which generally question the "rational connection between the Examiner's
reasoning for modifying Narayanan with Ahrens and the missing claim
limitation," (App. Br. 23), and summarize their arguments against the
Examiner's stated basis for the motivation to combine by asserting,
the Examiner's rationale does not provide reasons that the
skilled artisan, confronted with the same problems as the
inventor and with no knowledge of the claimed invention,
would modify Narayanan to include the missing claim
limitation of claim 4[.] Accordingly, the Examiner has not
presented a prima facie case of obviousness ....
App. Br. 25.
We first note, the presence or absence of a reason "to combine
references in an obviousness determination is a pure question of fact." In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Further, the relevant
inquiry is whether the Examiner has set forth "some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with
approval inKSR, 550 U.S. at 418).
We disagree with Appellants' arguments because, contrary to
Appellants' contention, we find the Examiner did set forth sufficient
"articulated reasoning" with a "rationale underpinning to support the legal
conclusion of obviousness." See Ans. 5, 14--15.
Regarding the lack of logical reason to modify argument, we note the
Supreme Court has held that "[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
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than yield predictable results." KSR, 550 U.S. at 416. The Court further
instructs:
Often it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
Id.at418.
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 the references would have suggested
to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Finally, Appellants have not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art. ii See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the teachings of the cited
prior art combination to teach or suggest the contested limitation of claim 4,
nor do we find error in the Examiner's legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of dependent
claim 4.
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5. § 103 Rejection R2 of Claim 5
Issue 5
Appellants argue (App. Br. 25-28) the Examiner's rejection of claim 5
under 35 U.S.C. § 103(a) as being obvious over the combination of
Narayanan and Ahrens is in error. These contentions present us with the
following issue:
Did the Examiner err in combining Narayanan with Ahrens under
§ 103 in the manner suggested to render claim 5 obvious by not providing
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness?
Analysis
Appellants make various arguments concerning the purported lack of
proper motivation to combine Narayanan with Ahrens in the manner
suggested by the Examiner. Id. We do not find Appellants' arguments to be
persuasive.
We find the Examiner did provide articulated reasoning with a
rational underpinning to support the legal conclusion of obviousness under
§ 103. See Final Act. 21; Ans. 5---6 and 15. We adopt the Examiner's
findings and legal conclusions concerning claim 5 herein as our own.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the teachings of the cited
prior art combination to teach or suggest the contested limitation of claim 5,
nor do we find error in the Examiner's legal conclusion of obviousness.
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Therefore, we sustain the Examiner's obviousness rejection of dependent
claim 5.
§ 103 Rejection R3 of Claim 6
In view of the lack of any substantive or separate arguments directed
to Rejection R3 of claim 6 under§ 103, depending on claim 5 (see App.
Br. 28-33), we sustain the Examiner's rejection of this claim. Arguments
not made are waived.
6. § 103 Rejection R3 of Claim 7
Issue 6
Appellants argue (App. Br. 29-33; Reply Br. 13-15) the Examiner's
rejection of claim 7 under 35 U.S.C. § 103(a) as being obvious over the
combination of Narayanan and Ahrens is in error. These contentions present
us with the following issues:
(a) Did the Examiner err in finding the cited prior art discloses the
method of claim 5, "wherein said response comprises a reposting of an
information nugget from an electronic message," as recited in claim 7?
(b) Did the Examiner err in combining Narayanan with Ahrens
under § 103 in the manner suggested to render claim 7 obvious by not
providing articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness?
Analysis
Issue 6(a)- "Reposting" step
Appellants contend the cited prior art combination does not teach or
suggest the contested "reposting" step of claim 7. App. Br. 29-30.
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We disagree with Appellants' arguments, and we adopt the Examiner's
responsive findings concerning claim 7 herein as our own. See Ans. 6-7;
and 16.
Issue 6(b) - Motivation to Combine
Appellants make various arguments concerning the purported lack of
proper motivation to combine Narayanan with Ahrens in the manner
suggested by the Examiner. App. Br. 31-33. We do not find Appellants'
arguments to be persuasive.
We find the Examiner did provide articulated reasoning with a
rational underpinning to support the legal conclusion of obviousness under
§ 103. See Final Act. 23; Ans. 6-7, 17. We adopt the Examiner's findings
and legal conclusions concerning claim 7 herein as our own.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the teachings of the cited
prior art combination to teach or suggest the contested limitation of claim 7,
nor do we find error in the Examiner's legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of dependent
claim 7.
REPLY BRIEF
While we have reviewed Appellants' arguments in the Reply
Brief (2-15), we are not persuaded the Examiner erred. Further, to the
extent Appellants may advance new arguments in the Reply not in response
to a shift in the Examiner's position in the Answer, we note arguments raised
in a Reply Brief that were not raised in the Appeal Brief or are not
responsive to arguments raised in the Examiner's Answer will not be
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considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which
Appellants have not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
RI of claims 1through3 under 35 U.S.C. § 102(e) over the cited prior art of
record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 4--7 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-7.
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
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