Ex Parte Dane et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612941720 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/941,720 11/08/2010 Mark DANE 52021 7590 06/02/2016 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 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. CAM920125002US4_8150-0376 1319 EXAMINER HOANG, HAU HAI ART UNIT PAPER NUMBER 2167 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK DANE, MICHAEL HENNESSY, and DAVID W. CROSSMAN Appeal2014-004358 Application 12/941,7201 Technology Center 2100 Before JEAN R. HOMERE, DEBRA K. STEPHENS, and SHARON PENICK, Administrative Patent Judges. PENICK, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 3-11, 13, 15-19, and 25. Claims 2, 12, 14, 20- 24, and 26-80 are cancelled. (Appeal Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b)(l). We affirm. Invention Appellants' invention relates to allowing resume records on a resume database system to be viewed via a Uniform Resource Locator (URL). A 1 According to Appellants, the real party in interest is Kenexa Brassring, Inc. (Appeal Br. 1.) Appeal2014-004358 Application 12/941, 720 verified user may be allowed to review resume information or add information to the resume database. (Abstract.) Illustrative Claims2 Claims L 3, 7, 8, 13, and 16, reproduced below-, are illustrative: 1. A computer-implemented method of providing resume information stored in a resume database to a recipient, the method comprising: (a) identifying, by a device, resume information of a resume in a resume database; (b) sending, by the device, to a recipient, a Uniform Resource Locator, URL, pointing to the identified resume information, the URL comprising a location portion identifying a location on the World Wide Web corresponding to the resume database and an encoded portion that encodes a first identifier that uniquely identifies the resume and a second identifier that is associated with creation of the URL and unique to the URL; ( c) responsive to decoding the encoded portion of the URL to determine the first identifier and the second identifier, determining, by the device that the first identifier and the second identifier match a corresponding first identifier and corresponding second identifier stored in a single entry in the resume database; and ( d) storing, by the device, information regarding the recipient's accessing of the identified resume information. 3. The computer-implemented method of claim 1, further compnsmg: sending a notification after the recipient has accessed the identified resume information. 2 We note that certain claims as set forth in the Claims Appendix to the Appeal Brief differ in indentation and, in the case of claim 1, in the omission of reference letters from the versions as set forth in the Amendment filed Nov. 20, 2012 (the most recent amendment of the claims, entered by the Examiner in the Non-Final Rejection of Jan. 28, 2013.) We reproduce the illustrative claims as set forth in the Amendment filed Nov. 20, 2012. 2 Appeal2014-004358 Application 12/941, 720 7. The computer-implemented method of claim 1, wherein the first identifier and the second identifier are used to create a security key specifically identifying the URL. 8. The computer-implemented method of claim 1, wherein the URL comprises: an indicator for the system management function to accept input from the recipient, wherein the database management function stores the accepted input in association with the identified resume information in the resume database. 13. The method of claim 11, wherein the access instruction message comprises at least one of: (a) an indication of a form to be completed by a user associated with the destination address; (b) a time duration representing a time period during which the URL is valid; and ( c) a request for a confirmation message to be sent to the first client system when the URL is transmitted to the destination address. 16. The method of claim 15, further comprising: under control of the first client system: determining the destination address to which the determined resume record will be directed; and identifying the determined destination address in the access instruction message. Rejections The Examiner rejects claims 11 and 13 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claim 6 of Dane et al. (US 7,877,354 B2; iss. Jan. 25, 2011) (hereinafter "Dane '354") and Keene (US 2011/0251959 Al; publ. Oct. 13, 2011). (Final Action 3-8.) The Examiner rejects claim 19 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claim 2 of Dane et 3 Appeal2014-004358 Application 12/941, 720 al. (US 6,785,679 Bl; Aug. 31, 2004) in view of Dane '354. (Final Action 9-12.) The Examiner rejects claims 1, 5-7, 10-11, 15, 17-19, and 25 under 35 U.S.C. § 103(a) as unpatentable over Williams et al. (US 6,873,964 Bl; iss. Mar. 29, 2005) (hereinafter "Williams"), Smith et al. (US 6,192,407 Bl; iss. Feb. 20, 2001) (hereinafter "Smith"), and Linden et al. (US 6,360,254 Bl; iss. Mar. 19, 2002) (hereinafter "Linden"). (Final Action 12-28.) The Examiner rejects claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Williams, Smith, Linden, and Ross, Jr. (US 7 ,421,4 72 B 1; iss. Sept. 8, 2008) (hereinafter "Ross"). (Final Action 28-29.) The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Williams, Smith, Linden, and Fuerst (US 6, 189 ,029 B 1; iss. Feb. 13, 2001). (Final Action 29-31.) The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as unpatentable over Williams, Smith, Linden, and Keene. (Final Action 31- 32.) The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as unpatentable over Williams, Smith, Linden, and Haynes (US 6,57 4,671 B 1; iss. June 3, 2003). (Final Action 32-33.) Issues A: Did the Examiner err in finding Smith and Linden to be analogous prior art in applying these references in combination with Williams to find claim 1 obvious? B: Did the Examiner err in using hindsight in combining Williams, Smith, and Linden in the rejection of claim 1? 4 Appeal2014-004358 Application 12/941, 720 C: Did the Examiner err in finding that Smith, in combination with Williams and Linden, teaches or suggests "the first identifier and the second identifier are used to create a security key specifically identifying the URL" as in claim 7? D: Did the Examiner err in relying on certain material disclosed in Ross, in combination with Williams, Smith, and Linden, in the rejection of claim 3? E: Did the Examiner err in finding Fuerst to be analogous prior art in applying this reference in combination with Williams, Smith, and Linden to find claim 8 obvious? F: Did the Examiner err in finding that Fuerst, in combination with Williams, Smith, and Linden, teaches or suggests "the URL comprises ... an indicator for the system management function to accept input from the recipient" as in claim 8? G: Did the Examiner err in finding Keene to be analogous prior art in applying this reference in combination with Williams, Smith, and Linden to find claim 13 obvious? H: Did the Examiner err in finding that Keene, in combination with Williams, Smith, and Linden, teaches or suggests "a time duration representing a time period during which the URL is valid" as in claim 13? I: Did the Examiner err in finding Haynes to be analogous prior art in applying this reference in combination with Williams, Smith, and Linden to find claim 16 obvious? J: Did the Examiner err in finding that Haynes, in combination with Williams, Smith, and Linden, teaches or suggests "determining the destination address to which the determined resume record will be directed" 5 Appeal2014-004358 Application 12/941, 720 and "identifying the determined destination address in the access instruction message" as in claim 16? K: Did the Examiner err in rejecting claims 11, 13, and 19 on the ground of nonstatutory obviousness-type double patenting? ANALYSIS A: Smith and Linden as Analogous Art Appellants argue that Smith and Linden are not analogous art. (Appeal Br. 11-12; Reply Br. 2.) We consider two criteria in determining whether prior art is analogous: (1) whether the art is from the same field of endeavor as the invention, regardless of the problem addressed; and, if the reference is not within the field of the inventor's endeavor, (2) whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). The Supreme Court directs us to construe the scope of analogous art broadly, stating that "familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Appellants argue that the field of the invention is, "providing resume information to recipients." (Appeal Br. 12.) However, we note that both the title of the invention, "METHOD AND APPARATUS FOR SENDING AND TRACKING RESUME DATA SENT VIA URL" (Spec. 1), the background given in the Specification (id. at 1-2), and the summary of the invention (id. at 2-3) indicate that the invention involves the access, via a 6 Appeal2014-004358 Application 12/941, 720 computer network, of information from a resume database on a resume database server system (see, e.g., Spec. Fig. 1.) As the Examiner finds, Smith discloses a private and trackable URL (p URL) to provide access to a document via a computer network using a URL. (Answer 10; Smith Abstract.) We agree with the Examiner that this art is analogous to the Appellants' invention, as it teaches the provision, via URL, of a document from a server. While Smith does not specifically mention that the document might be a resume, we find no reason to draw the field of endeavor of the invention so narrowly as to specifically require that the document being accessed is a resume. Even were we to do so, we find that a document access system such as that described in Smith is reasonably pertinent to the particular problem with which the inventors were involved. For similar reasons, we find that Linden is analogous art. Linden discloses the provision of secure URL-based access to resources over the Web. (Linden Title, Abstract, col. 1: 41-53.) Linden is thus within the field of endeavor of the Appellants or would have been considered reasonably pertinent to the particular problem with which the inventors were involved. We are not persuaded of error in the use of Smith and Linden as analogous art. B: Use of Impermissible Hindsight in Combining Williams, Smith, and Linden in the Rejection of Claim 1 Appellants argue that the Examiner impermissibly used hindsight reconstruction by using a rationale from the Appellants' invention as the motivation to combine Williams and Smith. (Appeal Br. 15.) The Examiner notes in the response that while the Final Office Action describes the document as a "resume" and the recipient as a "hiring manager" (Final Action 15) these terms were used to substitute for the intended recipient and 7 Appeal2014-004358 Application 12/941, 720 document (in Smith) to explain how the prior art combination would relate to Appellants' invention: In contrast, it would have been obvious to one of ordinary skill in the art at the time invention was made to utilize the pURL which is created uniquely for the intended recipient (Hiring manager) and the document (resume) itself so that each recipient (Hiring manager) is only allowed to access to the permitted document (resume) in secure manners. (Answer 11.) The underlying rationale for the combination, providing document security, was not addressed by the Appellants, and we find no error or hindsight reconstruction in the Examiner's rationale as stated in the Answer. Indeed, after considering Appellants' arguments, we determine Appellants' arguments do not take into account what the collective teachings of the prior art would have suggested to an ordinarily skilled artisan. Thus, we are not persuaded on this basis of error in the Examiner's obviousness rejection of claim 1. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 1, and the rejection of claims 5---6, 10-11, 15, 17-19, and 25 not separately argued with specificity. (Appeal Br. 11.) C: Claim 7- "the first identifier and the second identifier are used to create a security key specifically identifying the URL" The Examiner finds the claim limitation from claim 7 that "the first identifier and the second identifier are used to create a security key specifically identifying the URL" to be taught or suggested by a combination including Smith. (Final Action 17.) Appellants argue that the document key of Smith is only associated with the recipient and store identifiers, but that these identifiers are not used to generate the key. (Appeal Br. 16.) Appellants argue since the key in 8 Appeal2014-004358 Application 12/941, 720 Smith is randomly generated, it cannot teach or suggest the claimed security key. (Reply Br. 3.) However, as the Examiner finds, Smith's invention includes a document key which can be a randomly generated number associated with a recipient and item to be accessed, and which is used to validate a URL. (Answer 13; Smith 16:60-62). Smith teaches that in some embodiments this document key "encode[s] the validation information" (recipient and item identifiers) in teaching that, in other embodiments, the key encodes an index to a table containing validation information, "as opposed to encoding the validation information itself." (Smith 16:60-17:3.) Smith further teaches that the document key is used to authenticate the URL. (Id. at 17: 18.) The teaching in Smith that the document key directly encodes the validation information teaches or suggests the use of the two identifiers in creating the document key, and that the document key can be used to authenticate the URL teaches or suggests a document key created using the underlying information it will verify or authenticate. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 7. D: Use of Ross as Prior Art Appellants argue that the disclosure of Ross, used in combination with Williams, Smith, and Linden to reject claim 3, is improper, as the disclosure used by the Examiner is not present in the provisional application on which Ross is based, and thus, the relied-upon disclosure is not entitled to the priority date of the provisional application. (Appeal Br. 17-18.) The Examiner shows (Answer 14--16) the disclosure in Ross regarding a receipt report automatically created to reflect access of an email by a recipient is 9 Appeal2014-004358 Application 12/941, 720 supported by the disclosure in the provisional application upon which Ross is based: "an autoreceipt feature can be enabled by a sender of an e-mail to verify that a receiver has received and opened an e-mail." (Ross et al., US Provisional Appl. 60/166,509; filed Nov. 19, 1999, 17: 13-14.) Appellants have not proffered sufficient evidence or argument to persuade us the portions of Ross relied upon in the rejection, do not teach or suggest the disputed limitation. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 3, and of claim 4 not separately argued with specificity (Appeal Br. 17). E: Use of Fuerst as Prior Art Appellants argue that Fuerst, used in the rejection of claim 8, is not analogous art. (Appeal Br. 18-19; Reply Br. 4---6.) As discussed supra, we find that the Appellants' field of endeavor is the access via a computer network of information from a resume database on a resume database server system. While Fuerst deals with access to an on- line survey (rather than a resume) remotely via a URL (Fuerst, Abstract) we find that the reference would have been considered reasonably pertinent to the particular problem with which the inventors were involved and that accessing resume information remotely is an obvious use of Fuerst beyond its primary purpose. Thus, we are not persuaded of error in the use of Fuerst as analogous art. 10 Appeal2014-004358 Application 12/941, 720 F: "the URL comprises . .. an indicator for the system management function to accept input from the recipient" Appellants argue that Fuerst, used in the rejection of claim 8 in combination with Williams, Smith, and Linden, does not teach or suggest an indicator for the system management function to accept input from the recipient. (Appeal Br. 19.) The Examiner responds by addressing the Fuerst argument and by additionally finding Smith also teaches or suggests the disputed limitation. (Answer 20.) Appellants argue that by relying upon Smith, the Examiner untimely introduces a new grounds of rejection. (Reply 5.) However, any request to seek review of the Examiner's failure to designate a rejection as a new ground must be made by petition to the Technology Center Director overseeing the Examiner's Art Unit. 37 C.F.R. § 41.40(a). We agree with the Examiner that Fuerst teaches the provision of a URL, and that, when the URL is used, a web page is received in which input from a user is accepted. (Answer 20.) Appellants argue that Fuerst does not teach an indicator within a URL that input is to be accepted from a recipient (Appeal Br. 20.) We agree with the Examiner, however, the indication that input is to be accepted, is taught in Fuerst, where a URL is provided to a user for access to a web page to input answers to survey questions. (Final Action 29-30.) Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 8, and of claim 9 not separately argued with specificity (Appeal Br. 18). 11 Appeal2014-004358 Application 12/941, 720 G: Use of Keene as Prior Art Appellants argue that Keene, used in the rejection of claim 13, is not analogous art. (Appeal Br. 20; Reply Br. 6-7.) As discussed supra, we find that the Appellants' field of endeavor is the access via a computer network of information from a resume database on a resume database server system. Keene deals with the use of a URL sent via email in order to provide a client access to specific information. (Keene, i-f 3, Abstract.) While Keene deals with access to a check exception information for a specific client (rather than a resume), we find that the reference would have been considered reasonably pertinent to the particular problem with which the inventors were involved and that the use to securely access resume information remotely is an obvious use of Keene beyond its pnmary purpose. art. Thus, we are not persuaded of error in the use of Keene as analogous H: "a time duration representing a time period during which the URL is valid" Appellants argue that Keene, used in combination with Williams, Smith, and Linden in the rejection of claim 13, does not teach "a time duration representing a time period during which the URL is valid." (Appeal Br. 20-21; Reply Br. 6-7.) The Examiner relies on Keene's disclosure of an electronic message with a URL and an expiration date and time for the validity of the URL to access the related information. (Answer 22-23.) We agree with the Examiner the cited disclosure in Keene teaches 12 Appeal2014-004358 Application 12/941, 720 or suggest the claimed time period during which the URL is valid - the message indicates the URL is available until the expiration date. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 13. I: Use of Haynes as Prior Art Appellants argue that Haynes, used in combination with Williams, Smith, and Linden in the rejection of claim 16, is not analogous art. (Appeal Br. 21-22; Reply Br. 8.) As discussed supra, we find that the Appellants' field of endeavor is the access via a computer network of information from a resume database on a resume database server system. Haynes deals with email communications with multiple recipients, where different characteristics distinguish the communications specific to different recipients (Haynes Abstract, 1: 8-15, 2:19-32.) As the Examiner finds (Final Action 33; Answer 26) the Haynes reference in the field of electronic mail user interfaces would have been considered reasonably pertinent to the particular problem with which the inventors were involved. art. Thus, we are not persuaded of error in the use of Haynes as analogous J: "determining the destination address to which the determined resume record will be directed" and "identifYing the determined destination address in the access instruction message" Appellants argue that Haynes, used in combination with Williams, Smith, and Linden in the rejection of claim 16, does not teach "determining the destination address to which the determined resume record will be 13 Appeal2014-004358 Application 12/941, 720 directed" and "identifying the determined destination address in the access instruction message" (Appeal Br. 22; Reply Br. 8-9.) Appellants argue (Appeal Br. 22; Reply Br. 9) that the cited portions of Haynes do not mention the claimed "determined resume record." Appellants argue that Haynes does not mention a "determined resume record." (Id.) We find this argument unpersuasive because it addresses Haynes individually. As the Examiner finds, Williams discloses searching a resume database to determine a resume record, which is identified in an access instruction message. (Final Action 21-22, 32.) In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show non-obviousness by attacking references individually where ... the rejections are based on combinations of references") (internal citation omitted). Appellants additionally argue that Haynes does not teach or suggest an "access instruction message." (Appeal Br. 22; Reply Br. 9.) We agree with the Examiner that Williams discloses an access instruction message in the form of an electronic mail message sent to hiring managers (Final Action 17) and that Hayes discloses the manual entry of email recipient addresses in creating an email message (Final Action 33; Answer 26-27.) While Appellants argue that the teachings of Williams are a new rejection, we are not persuaded. The recited limitation "the access instruction message" of claim 16, refers to "an access instruction message" recited in claim 11 from which claim 16 (indirectly) depends. Williams' teachings were relied upon in the Final Office Action rejection of claim 11, as teaching the recited "access instruction message." (Final Action 17-18.) Moreover, the failure of Appellants to timely file a petition on this issue constitutes a waiver of 14 Appeal2014-004358 Application 12/941, 720 any arguments that a rejection must be designated as a new ground of rejection. 37 C.F.R. § 41.40(a). Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 16. K: Nonstatutory Double-Patenting Rejections of Claims 11, 13 and 19 Appellants present no arguments pertaining to the Examiner's limitations of the claimed subject matter rejection of claim 6 (Reply Br. 4 ). Instead, Appellants state this rejection will be addressed after the appeal has concluded (id.). Accordingly, we summarily sustain these rejections. See Manual of Patent Examining Procedure (MPEP) § 1205.02, 8th ed., Rev. 9 (August 2012) ("If a ground of rejection stated by the examiner is not addressed in the [A]ppellant's brief, [A]ppellant has waived any challenge to that ground of rejection and the Board may summarily sustain it"). DECISION We summarily affirm the Examiner's decision rejecting claims 11, 13, and 19 on the grounds of obviousness-type double patenting. We affirm the Examiner's decision rejecting claims 1, 3-11, 13, 15- 19, and 25. Pursuant to 37 C.F.R. § 1.136(a)(l )(iv), no time period for taking any subsequent action in connection with this appeal may be extended. AFFIRMED 15 Copy with citationCopy as parenthetical citation