Ex Parte Cohen et al

Patent Trial and Appeal Board

Nov 8, 2016

11537491 (P.T.A.B. Nov. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111537,491 0912912006 Peter D. Cohen
500 7590 11/08/2016
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
120137.536 1495
EXAMINER
GOLDBERG, IV AN R
ART UNIT PAPER NUMBER
3624
MAILDATE DELIVERY MODE
11/08/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER D. COHEN and CHRISTOPHER E. SMOAK
Appeal 2014-004141 1
Application 11/537,491 2
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 10-47. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
December 2, 2013) and Reply Brief ("Reply Br.," filed February 18, 2014),
and the Examiner's Answer ("Ans.," mailed December 19, 2013), Final
Office Action ("Final Act.," mailed July 2, 2013), and Advisory Action
("Adv. Act.," mailed December 13, 2013).
2 Appellants identify Amazon Technologies, Inc. as the real party in
interest. App. Br. 2.
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Application 11/537,491
CLAIMED fNVENTION
Appellants' invention "relates generally to facilitating performance of
tasks by task performer users, such as by distributing information regarding
tasks via users' interactions with third-party Web sites" (Spec. i-f 1 ).
Claims 10, 31, and 41 are the independent claims on appeal, and are
reproduced below (bracketed notations are added in claim 10):
10. A computer-implemented method for a task
exchange server to facilitate performance of tasks by task
performers, the method comprising:
[(a)] receiving information at a task exchange server
about tasks submitted by task requesters as being available for
performance by human task performer users; and
[ (b)] distributing, by one or more programmed
computing systems of the task exchange server, information
about at least some of the submitted tasks via one or more
information services that are not provided by the task exchange
server, the distributing including, for each of the one or more
information services,
[ (b )(1)] receiving one or more requests that are
each for task information that is to be presented along with
other information to a task performer user interacting with
the information service, at least some of the other
information to be presented being provided by the
information service; and
[ (b )(2)] for each of at least one of the requests,
determining one or more available tasks based at least in
part on the at least some other information being provided
by the information service, and providing information
about the determined tasks for presentation to a human
task performer user via the information service, to enable
the human task performer user to perform at least one of
the determined tasks.
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31. A non-transitory computer-readable medium
having stored contents that configure a computing system to
provide an electronically accessible information service that
facilitates performance of tasks by tasks performers, by
performing a method comprising:
receiving a request from a task performer user for
information available from an electronically accessible
information service, the available information not including
information about tasks available to be performed;
interacting, by the configured computing system, with a
remote task exchange server to obtain information about one or
more available tasks, the task exchange server acting as an
intermediary to facilitate performance by task performer users of
tasks available from task requesters;
selecting at least one available task of the one or more
available tasks based at least in part on the information available
from the electronically accessible information service that is
requested by the task performer user; and
responding to the request by providing information to the
task performer user, the provided information including
information about the selected at least one available task and the
information available from the electronically accessible
information service that is requested by the task performer user,
to enable the task performer user to use the provided information
to perform one or more of the selected at least one available tasks.
41 A computing device configured to facilitate
performance of tasks by a user of the computing device,
compnsmg:
a processor;
a memory; and
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an executing task performance facilitator application
having instructions stored on the memory that, when executed by
the processor, configure the computing device to automatically
determine whether to provide information about available tasks
to a user of the computing device based at least in part on other
information being provided to the user from one or more other
third-party information services, and to provide information to
the user about one or more available tasks if it is determined to
provide that information.
REJECTIONS
Claims 31--40 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter that Appellants regard as the invention. 3
Claims 10, 13-17, 21-24, 26, 27, 29-32, 34, 36, 37, and 39--47 are
rejected under 35 U.S.C. §§ 102(a) and (e) as anticipated by Cohen
(US 2006/0106675 Al, pub. May 18, 2006).
Claims 10, 13, 15-17, 21-23, 27, 28, 31, 32, 34, 37--41, and44--47 are
rejected under 35 U.S.C. §§ 102(a) and (e) as anticipated by Jilk
(US 6,93 8,048 B 1, iss. Aug. 30, 2005).
Claims 11, 12 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cohen.
Claims 18-20, 25, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cohen and Goswami (US 2004/0205554 Al, pub. Oct. 14,
2004).
3 The rejection of claims 12 and 41--47 under 35 U.S.C. § 112, second
paragraph, has been withdrawn (Adv. Act. 2).
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Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Cohen and Marugabandhu (US 2007/0073610 Al, pub. Mar. 29, 2007).
Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Cohen and Jilk.
Claims 11, 12, 14, 24, and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jilk.
Claims 18-20 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jilk and Goswami.
Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Jilk and Upton (US 2003/0105884 Al, pub. June 5, 2003).
Claims 29 and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jilk and Yu (US 7,640,548 Bl, iss. Dec. 29, 2009).
Claims 30, 33, 42, and 43 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jilk and Marugabandhu.
ANALYSIS
Appellants contend at the outset that the Examiner acted improperly in
reopening prosecution after this Board's prior decision in Appeal No. 2011-
004922 (App. Br. 11-13). The decision to reopen prosecution is a
procedural matter that is resolved by petition under 37 C.F.R. § 1.181 and,
therefore, not properly before us. See MPEP § 1201 ("The Board will not
ordinarily hear a question that should be decided by the Director on
petition.").
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Indefiniteness
In rejecting claims 31--40 under 35 U.S.C. § 112, second paragraph,
the Examiner notes that independent claim 31 recites "receiving a request
from a task performer user for information available from an electronically
accessible information service, the available information not including
information about tasks available to be performed" in lines 4---6, and then, in
lines 10-14, recites "responding to the request by providing information to
the task performer user ... including information about the selected at least
one available task and the information available from the electronically
accessible information service that is requested by the task performer user"
(Final Act. 12). Based on these recitations, the Examiner concludes that it is
unclear how the claim can receive a request for information that does not
include information about tasks available to be performed and then respond
to the request by providing information about the selected at least one
available task (id.). We disagree.
The Specification discloses that information about tasks may be
provided to users as they interact with third party Web sites or other
electronically accessible information services, and further discloses that in
some embodiments, the third-party sites may be unaffiliated with the task
exchange server and not provide information about tasks to users, but a
separate program executing on behalf of certain users may obtain and
present information about tasks to the users, "such as in conjunction with
information provided by the unaffiliated third-party sites" (Spec. i-f 15).
The Examiner observes that claim 31 recites "receiving a request from
a task performer user for information available from an electronically
accessible information service, the available information not including
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information about tasks available to be performed." However, claim 31 also
recites "interacting, by the configured computing system, with a remote task
exchange server to obtain information about one or more available tasks"
and "selecting at least one available task of the one or more available tasks
based at least in part on the information available from the electronically
accessible information service that is requested by the task performer user."
In our view, a person of ordinary skill in the art would understand what is
claimed when claim 31 is considered in light of the Specification, including
the claim language, namely that the response includes the requested
information available from the electronically accessible information service
and also includes additional information, i.e., information about a selected at
least one available task, obtained from the remote task exchange server.
In view of the foregoing, we do not sustain the Examiner's rejection
under 35 U.S.C. § 112, second paragraph, of claim 31, and claims 32--40 that
depend therefrom. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under
35 U.S.C. § 112, second paragraph, is whether "those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.").
Anticipation and Obviousness
Independent Claim 10 and Dependent Claims 13-17, 21-24, and 26-30
Appellants argue that the Examiner erred in rejecting independent
claim 10 under 35 U.S.C. §§102 (a), (e) as anticipated by Cohen, and also
erred in rejecting claim 10 under 35 U.S.C. §§102 (a), (e) as anticipated by
Jilk because neither Cohen nor Jilk discloses "any functionality related to a
task exchange server that receives a request[,] for a distinct information
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service[,] for task information to be presented by the information service to a
task performer user along with other information from the information
service" (App. Br. 22). That is, Appellants argue that neither Cohen nor Jilk
discloses
one or more programmed computing systems of the task
exchange server, . . . for each of the one or more information
services [that are not provided by the task exchange server],
receiving one or more requests that are each for task information
that is to be presented along with other information to a task
performer user interacting with the information service, at least
some of the other information to be presented being provided by
the information service[,]
as recited in claim 10 (id.).
Focusing first on Cohen, the Examiner cites paragraphs 27, 34, 35, 38,
40, 41, 42, 43, 46, 48, 50, 64, 86, 135, and Figures lB and 3 of Cohen as
disclosing the argued feature (Final Act. 15-17; see also Ans. 12-14). We
have reviewed the cited portions of Cohen, on which the Examiner relies,
and we agree with Appellants that none of the cited portions discloses a task
exchange server that receives a request, via a third party information server,
for task information to be presented to a task performer user, interacting with
the third party information server, along with other information provided by
the third-party information service, i.e., "one or more programmed
computing systems of the task exchange server, ... for ... one or more
information services [that are not provided by the task exchange server],
receiving one or more requests ... for task information that is to be
presented along with other information to a task performer user interacting
with the information service, at least some of the other information ... being
provided by the information service," as recited in claim 10.
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As Appellants observe, paragraph 34 is the only cited portion of
Cohen that appears to disclose a remotely related third-party service (see
App. Br. 23), i.e., "one or more ... consoles or other mechanisms to interact
with the TFF system ... provided externally to the TFF system, such as by
third parties" (see App. Br. 23). And that paragraph only describes the use
of external consoles by task requester users who submit tasks to be
performed; it does not disclose an information service, e.g., an external
console or other mechanism, which presents task information, along with
other information from the information service, to a task performer.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent 10 and dependent claims 13-17, 21-24, 26, 27, 29, and 30
under 35 U.S.C. §§102 (a), (e) as anticipated by Cohen.
Turning to Jilk, the Examiner cites column 4, lines 26-41 and 61---67,
column 5, lines 1-54, column 7, lines 33-59, column 11, lines 41-56,
column 15, lines 48---67, column 22, lines 18-39, column 25, lines 13-17
and Figures 1 and 2 of Jilk as disclosing the argued limitation (Final
Act. 53-55; see also Ans. 15-16). However, we find nothing the cited
portions of Jilk that discloses or suggests a task exchange server that
receives a request, via an information service that is not provided by the task
exchange server, for task information to be presented by the information
service to a task performer user along with other information from the
information service, i.e., limitations (b) and (b )(1 ), as recited in claim 10.
Referring specifically to Figure 2 and column 5, lines 12-54 of Jilk,
the Examiner asserts that
the task exchange server can read on [server computer
system] 205 and the "information services" can read on [task
management system] 100 (See FIG. 1, 2). Alternatively, the
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'"server computer system 200" can read on the "information
service," and the "task management system 100" can read on the
"task exchange server" because they can be operated by
"separate entities." This reads on the claim limitation being
argued.
Ans. 15. But even accepting that analysis, we find nothing in the cited
portions of Jilk that discloses that either server computer system 200 or task
management system 100 provides its own information to task performer
users, along with task related information from the other one of server
computer system 200 and task management system 100, which is required to
meet the language of limitations (b) and (b )(1 ), as recited in claim 10.
Therefore, we do not sustain the Examiner's rejection of
independent 10 and dependent claims 13, 15-17, 21-23, 27, and 28 under
35 U.S.C. §§102 (a), (e) as anticipated by Jilk.
Independent Claim 31 and Dependent Claims 32, 34, and 36-40
Independent claim 31 includes language substantially similar to the
language of claim 10. Therefore, we do not sustain the Examiner's rejection
of independent claim 31 and dependent claims 32, 34, 36, 37, 39, and 40
under 35 U.S.C. §§102 (a), (e) as anticipated by Cohen for the same reasons
set forth above with respect to claim 10. We also do not sustain the
Examiner's rejection of independent claim 31 and dependent claims 32, 34,
and 37--40 under 35 U.S.C. §§102 (a), (e) as anticipated by Jilk for the same
reasons set forth above with respect to claim 10.
Independent Claim 41 and Dependent Claims 44 and 46
Appellants argue that the Examiner erred in rejecting claim 41 under
35 U.S.C. §§102 (a), (e) as anticipated by Cohen, and also erred in rejecting
claim 41 as anticipated by Jilk with reference to Appellants' arguments with
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respect to claim 10 (App. Br. 45). Yet claim 41 is of different scope than
claim 10 (see Ans. 7-8), and was rejected by the Examiner based on a
different rationale (see Final Act. 33-35; see also Ans. 22).
Absent further explanation, we are not persuaded that the Examiner
erred in rejecting independent claim 41under35 U.S.C. §§102 (a), (e) as
anticipated by Cohan and also anticipated by Jilk. Therefore, we sustain the
Examiner's rejections of independent claim 41under35 U.S.C.
§§ 102 (a), (e). We also sustain the Examiner's rejections under 35 U.S.C.
§ § 102 (a), ( e) of dependent claims 44 and 46, which are not argued
separately.
Dependent Claim 45
Claim 45 depends from claim 41 and recites that "the executing task
performance facilitator application is further configured to retrieve the
information about the one or more available tasks in response to the
information being provided by at least one of the third party information
services."
Appellants argue that the Examiner erred in rejecting claim 45 under
35 U.S.C. §§ 102 (a), (e) as anticipated by Cohan and also anticipated by
Jilk for the reasons set forth with respect to claim 41, and further because
the Office has . . . failed to show that the Cohen and Jilk
references disclose any functionality related to automated
operations of the task performance facilitator application that
include performing the retrieving of information about one or
more available tasks in response to the information that is
provided to the user's computing device by the third-party
information service.
App. Br. 46.
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In rejecting claim 45 under 35 U.S.C. §§ 102 (a), (e), the Examiner
cites paragraph 86 of Cohen (Final Act. 37-38) and column 4, lines 61---67
and column 5, lines 1-11 of Jilk (id. at 69-70) as disclosing the claimed
subject matter. We have reviewed the cited portions of Cohen and Jilk, on
which the Examiner relies, and we find nothing in those portions of Cohen
and Jilk that discloses that "the executing task performance facilitator
application is ... configured to retrieve the information about the one or
more available tasks in response to the information being provided by at
least one of the third party information services," as recited in claim 45.
Therefore, we do not sustain the Examiner's rejections of claim 45
under 35 U.S.C. §§ 102 (a), (e).
Dependent Claim 47
Claim 4 7 depends from claim 46, which depends from independent
claim 41. Claim 46 recites that "the computing device further comprises an
executing Web browser, and ... the executing task performance facilitator
application interacts with the executing Web browser to facilitate the
providing of the information to the user about the one or more available
tasks." Claim 47 recites that "the information about the one or more
available tasks is from a remote task exchange server, and ... the task
performance facilitator application is ... configured to retrieve information
from the task exchange server about prior performance by the user of tasks
via the task exchange server and to present the retrieved information to the
user as part of the Web browser."
In rejecting claim 4 7 under 3 5 U.S. C. § § 102 (a), ( e), the Examiner
cites paragraphs 26, 29, 38, 39, claim 10, and Figure lB of Cohen (Final
Act. 38-39) and column 5, lines 12-54, column 7, lines 41-56, column 9,
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lines 8-16, column 10, lines 39-46, column 12, lines 36-65, column 22,
lines 5-19, and Figures 2 and 4B of Jilk (id. at 70-71) as disclosing the
claimed subject matter.
Appellants argue that the Examiner has failed to show that the cited
portions of Cohen and Jilk disclose each and every element of dependent
claim 4 7 but Appellants do not substantively address the Examiner's
citations. Instead, Appellants merely assert,
While the Office points to portions of Cohen and Jilk that are
alleged to generally show that a client device may receive and
present various types of information (Final Office Action, pages
3 8-39 and 70-71 ), even if these allegations are assumed for the
sake of argument to be correct, they still fail to satisfy even a
prima facie case of anticipation of claim 4 7. In particular, even
if these allegations are assumed for the sake of argument to be
correct, such disclosure is unrelated to the additional task-related
information, which is based on information from the third-party
information service, being obtained from the remote task
exchange server, and such disclosure is also unrelated to the task
performance facilitator application executing on the user's
computing device, which is interacting with a Web browser that
is also executing on the user's computing device, retrieving
information from the task exchange server about prior
performance by the user of tasks via the task exchange server,
and presenting that retrieved information to the user as part of
the separate executing Web browser.
App. Br. 47--48.
We are not persuaded of error on the part of the Examiner at least
because Appellants' assertion does not rise to the level of a substantive
argument in support of the patentability of claim 4 7. Cf In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
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the corresponding elements were not found in the prior art."); see also In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.").
In view of the foregoing, we sustain the Examiner's rejections of
claim 47 under 35 U.S.C. §§ 102 (a), (e).
Dependent Claims 42 and 43
Claims 42 and 43 depend from claim 41, and are rejected under
35 U.S.C. §§ 102 (a), (e) as anticipated by Cohen and under 35 U.S.C.
§ 103(a) as unpatentable over Jilk and Marugabandhu. Appellants do not
present any arguments in support of the patentability of claims 42 and 43
except to assert that Marugabandhu does not cure the alleged deficiencies
related to Jilk, and that claims 42 and 43 are allowable based on their
dependence on claim 41 (App. Br. 50-51).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting independent claim 41 under 35 U.S.C.
§§ 102 (a), (e). Therefore, we sustain the Examiner's rejections of
dependent claims 42 and 43 under 35 U.S.C. §§ 102 (a), (e) and 103(a).
Dependent Claims 11, 12, 14, 18-20, 25, 26, 29, 30, 33, 35, 36, and 38
Each of claims 11, 12, 14, 18-20, 25, 26, 29, 30, 33, 35, 36, and 38
depends, directly or indirectly, from one of claims 10 and 31. The rejections
of these dependent claims under 35 U.S.C. § 103(a) based on one or more of
Cohen, Jilk, Goswami, Upton, Yu and Marugabandhu do not cure the
deficiency in the Examiner's rejections of claims 10 and 31 under 35 U.S.C.
§§ 102 (a), (e). Therefore, we do not sustain the Examiner's rejections of
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claims 11, 12, 14, 18-20, 25, 26, 29, 30, 33, 35, 36, and 38 under 35 U.S.C.
§ 103(a).
DECISION
The Examiner's rejection of claims 31--40 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's rejections of claims 10, 13-17, 21-24, and 26-32, 34,
37--40, and 45 under 35 U.S.C. §§ 102(a), (e) are reversed.
The Examiner's rejections of claims 41--44, 46, and 47 under
35 U.S.C. §§ 102(a), (e) are affirmed.
The Examiner's rejection of claims 42 and 43 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner's rejections of claims 11, 12, 14, 18-20, 25, 26, 29, 30,
33, 35, 36, and 38 under 35 U.S.C. § 103(a) are reversed.
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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