Ex Parte Dom et al

Board of Patent Appeals and Interferences

May 29, 2009

10323568 (B.P.A.I. May. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte BYRON E. DOM, JOANN RUVOLO, and
GEETIKA TEWARI
_____________

Appeal 2008-002470
Application 10/323,568
Technology Center 2100
______________

Decided: May 29, 2009
_______________

Before JOHN C. MARTIN, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-22, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a
new ground of rejection.

A. Appellants’ invention
Appellants’ invention generally relates to the use of databases to
detect and qualify relationships between people and find the best path
through the resulting social network. Specification at [0001].1

B. The claims
The independent claims are claims 1, 7, 13, and 17, of which claim 1
reads:
1. A method of identifying relationships between users
of a computerized network, said method comprising:
reading data sources that are one of associated with and
found in personal information management systems of said
users;
extracting information from said data sources, said
information comprising at least one of address book
information, calendar information, event information, to-do list
information, journal information, and e-mail information;

1 References to paragraph numbers are to the Application as filed rather
than to the Application Publication.
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examining said information to detect relationships
between said users, to identify interactions between said users
that are in said relationships and to accumulate, for each of said
relationships, a summary of said interactions; and
evaluating each said summary to produce relationship
ratings that represent overall strength of said relationships.
Claims App., Br. 72.

C. The rejection
The Examiner relies on the following reference:
Robertson US 6,269,369 B1 Jul. 31, 2001
Claims 1-22 stand rejected under 35 U.S.C. § 102(b) for anticipation
by Robertson.

THE ISSUE
Appellants have the burden to show reversible error by the Examiner
in maintaining the rejection. See In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
by showing insufficient evidence of prima facie obviousness or by rebutting
the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
The issue raised by Appellants’ contentions (discussed infra)
regarding claim 1 is whether Appellants have shown that the Examiner erred
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in finding that Robertson discloses the recited “examining” and “evaluating”
steps.

PRINCIPLE OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

ROBERTSON
Robertson’s invention is a computer-network-based contact
management system that allows members to create and maintain contact
with other members and determine on a person-by-person basis what
information to share or withhold. Robertson, col. 2, ll. 47-51.
When a user becomes a member of the system, the member associates
himself with any number of affinity groups and creates a data record for
himself by entering information in specific data fields. Id. at col. 2, ll. 58-
61. Based on the affinity groups with which the user has associated himself,
the system then informs the user of other members in the same groups and
allows the user to establish a link to any of those members on an individual
basis. Id. at col. 2, ll. 61-65.
As shown in Robertson’s Figure 5, the contact management system
includes a server 330 that is connected via the World Wide Web 360 to
client computers 370, of which only one is shown. Id. at col. 4, ll. 27-31.
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The server includes a database 340 that, as shown in Figure 6, includes
Customer Table 440, Friend Table 460, Group Table 400, Affinity Table
420, Address Table 480, Phone Table 500, and Travel Event Table 520 (id.
at col. 4, l. 61 to col. 5, l. 4).
Customer Table 440 contains one record for each unique user,
including first name 440-10, last name 440-12, and e-mail address 440-20,
and information required to provide Birthday Notification (Birthday 440-16)
and information required to provide Crossing Paths notification (CityID
440-14). Id. at col. 5, ll. 5-15.
The Group Table 400 contains one record for each unique group with
which users may affiliate. Id. at col. 5, ll. 33-34. Each record of the Affinity
Table 420 relates a user, identified by CustomerID 420-4, to a group,
identified by GroupID 420-6. Id. at col. 5, ll. 41-43.
Permission Type Table 542 contains one record for each of the
varieties of permission levels the system allows members to assign to their
contacts in the Friend Table 460. Id. at col. 6, ll. 15-18.
Figure 7 shows a graphical user interface (GUI) 560 displaying a
Registration Form that allows new users to become members of the contact
management system by entering information about themselves in order to
create a personal data record. Id. at col. 6, ll. 58-60. Users can enter
information in this GUI in various data fields, including: Name, Home
Address, Home Phone, Work Address, Work Phone, Birthday, High School,
Year of High School Enrollment, High School Graduation Year, College,
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Year of College Enrollment, and College Graduation Year. Id. at col. 6, ll.
60-67. Of these data fields, the High School and College data fields
represent categories of groups the user can specify with which he wishes to
affiliate himself, along with the beginning and ending dates of the affiliation.
Id. at col. 7, ll. 1-5.
Figure 8 is reproduced below.

Figure 8 depicts a GUI 580 showing a Group List Form that is
generated by the system based on the data the user (hereinafter “first user”)
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entered into the College, Year of College Enrollment, and College Year of
Graduation data fields in the Figure 7 Registration Form 560. Id. at col. 7,
ll. 28-34. The Group List Form identifies three “contacts,” i.e., other users
having the same college affiliation as the first user during overlapping time
periods. Id. at col. 7, ll. 46-55. If the first user wishes to add one of these
users (i.e., a “second user”) to his personal address book, the first user clicks
the checkbox to the left of the Name of the second user (e.g., “John Doe”)
and then clicks the Submit button. Id. at col. 7, ll. 59-64.
Figure 9 is reproduced below.
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Figure 9 depicts a GUI 600 showing a Permission Form that is
displayed in response to the first user’s selection of (i.e., linking to) the
second user (John Doe) using the Figure 8 Group List Form. Id. at col. 8,
ll. 11-19. The Figure 9 form permits the first user to specify the types of
data fields in the first user’s personal data record that John Doe will be
permitted to view. Id. at col. 8, ll. 11-14. Figure 9 shows five types of
permissions: Crossing Paths Notification Permission, Personal Information,
Work Information, Birthday Notification, and Friends of Friends
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Information. Id. at col. 8, ll. 48-52. If the second user chooses to return the
link to the first user, the system will display the Figure 9 form with the name
of the first user, allowing the second user to set data field permissions for the
first user. Id. at col. 8, ll. 19-23.
Each permission type allows the second user to view information from
the first user’s personal data record in specific data fields according to a
specific set of rules. Id. at col. 8, ll. 57-59. For example, if member B
grants Personal Information permission to member A, member B’s home
address and phone number (if available) will appear in member A’s Virtual
Address Book and member A will be informed when member B changes the
relevant information in his/her own listing. Id. at col. 9, ll. 15-20.
The links and permissions established using above procedures are
then stored in Friend table 460 (Fig. 6). See id. at col. 5, ll. 21-24 (“Each
record in the [Friend] table represents a relationship between one user,
identified by CustomerID 460-4, and another, identified by FriendID 460-6,
with a certain level of permissions 460-10.”).
If member B grants Crossing Paths Notification Permission to
member A, member A will be able to be informed when member B will be in
the same city as member A. Id. at col. 9, ll. 27-30. If member A and
member B are both based in the same city, member A will only be informed
when member A and member B are traveling to the same destination. Id. at
col. 9, ll. 30-33. The Crossing Paths Permission operates as follows.
Referring to Figure 12, in response to submission of travel data on Add
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Travel Form 660 by a first user, the system generates a Crossing Path List
670 that identifies the second users to whom he is linked who have granted
him Crossing Paths Permission and will be in the vicinity of the city to
which the first user is traveling during the specified travel time period. Id. at
col. 13, ll. 50-62. The first user can then use the Crossing Paths List 670 to
select which of the displayed second users to inform of the first user’s travel
plans. Id. at col. 13, ll. 62-65.
Robertson’s user interface provides a multitude of ways for users to
view information about other users, and every one of these ways relies on a
database query of the Friend Table 460 to determine the list of other users
whose information a particular user may see. Id. at col. 5, ll. 24-29.

THE MERITS OF THE REJECTION OF CLAIM 1
Appellants do not deny that Robertson satisfies the preamble, the first
(i.e., “reading data sources”) step, and the second (i.e., “extracting
information”) step of claim 1. We note that the Examiner (Answer 4) reads
these limitations on extracting the information contained in various tables in
Figure 6. For example, the Examiner (id.) reads the recited “address book
information” on column 5, lines 52-64, which describe Address Table 480.
Appellants deny that Robertson satisfies the third (i.e., “examining”)
step and the fourth (i.e., “evaluating”) step. Br. 47.
The “examining” step calls for examining the information extracted
from the data sources to perform three functions: (1) detecting relationships
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between users; (2) identifying interactions between users that are in said
relationships; and (3) accumulating a summary of said interactions for each
relationship. The Examiner reads these functions on Robertson in two
alternative ways.
At page 13 of the Answer, the Examiner reads function (1) (i.e.,
detecting relationships between users) on column 5, lines 5-65, which
describe Customer Table 440, Friend Table 460, Group Table 400, and
Affinity Table 420, and more particularly reads that function on Robertson’s
disclosure of “a multitude of ways for users to view information about other
users,” which appears in the following sentence:
The user interface of the present invention provides a multitude
of ways for users to view information about other users, and
every one of these ways relies on a database query of the Friend
Table 460 to determine the list of other users whose information
a particular user may see.
Robertson, col. 5, ll. 24-29. The Examiner then reads function (2) (i.e.,
identifying interactions between said users in said relationships) on
Robertson’s disclosure of “user[’]s affiliation with a particular group,” citing
column 5, lines 33-51, which describe Group Table 400 and Affinity
Table 420. Answer 13.
We agree with Appellants that Robertson’s disclosure of providing “a
multitude of ways for users to view information about other users” does not
correspond to the recited step of examining information “to detect
relationships between said users.” Reply Br. 6. As noted by Appellants,
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“[t]he personal data records of one user of the Robertson system can be
viewed by another user if permission is granted and only after a link (i.e.,
some prior relationship) is already established.” Id. Thus, the viewing step
on which the Examiner reads function (1) occurs after the group
identification step, on which the Examiner reads function (2), rather than
before it, as required to satisfy the claim. This time sequence problem also
occurs if function (2) is instead read on Robertson’s Crossing Paths List
(Fig. 12) along with function (3), as proposed at pages 13-14 of the Answer.
Alternatively, the Examiner reads the “examining step” on Figures 8
and 9 of Robertson as follows:
Robertson accomplishes the exact same three steps (1) to detect
relationships–See Robertson Figure 8 wherein John Doe,
Robert Johnson and Jane Smith graduated from State
University, thus by the three of them going to State University,
a relationship is definitely established. (2) to identify
interactions between users that are in the detected
relationships–See Robertson Figure 8 wherein John Doe
graduated in 1985 in which an interaction between the user and
John Doe is displayed because John Doe graduated around the
same time as the user. (3) for each of the detected relationships,
to accumulate a summary of the identified interactions–See
Robertson Figure 9 wherein John Doe is granted or denied
access to a certain permission level, which is equivalent to
appellant’s claim limitation of accumulate a summary of the
identified interactions.
Answer 14-15. We understand the Examiner to be reading the
“relationships” of function (1) on the listing of John Doe, Robert Johnson,
and Jane Smith as having attended State College at about the same time as
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the user. Regarding function (2) (i.e., identifying interactions between users
in said relationships), the Examiner’s further statement that “Robertson[’s]
teaching of ‘user choose to establish a link to the first user’ is the same as
‘interactions’” (id. at 16) suggests that the Examiner is reading that function
on the user’s act of linking to John Doe by checking the box next to that
name (followed by clicking on the “Submit” button). As for function (3), we
understand the Examiner to be reading the recited “summary of the
identified interactions” on the fact that the Figure 9 form identifies the other
user (e.g., John Doe) or users to whom the first user has linked using the
Figure 8 form and also on the granted permissions that have been identified
(by checking) in the Figure 9 form (which selections are thereafter effected
by clicking on the “Submit” button).
Regarding function (1), Appellants’ argument that “attending school
during the same general time period does not amount to a relationship”
(Reply Br. 8) is unconvincing because the term “relationship” is undefined
in the Specification and therefore must be given its broadest reasonable
interpretation consistent therewith. In re Thrift, 298 F.3d 1357, 1364 (Fed.
Cir. 2002). Appellants have not established that the claim phrase
“relationship between said users” would have been understood to exclude a
relationship based on attending the same school.
Regarding function (2), Appellants, after quoting various dictionary
definitions of “interact” (e.g., “To act on each other”), deny that a user’s act
of establishing a link to another user is the same as an interaction (Reply
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Br. 9) and argue that “establishing a link simply amounts to allowing the
second user to view specified information about the first user[, which] does
not amount to an interaction (i.e., an act on or upon another, to act together,
to act on each other, etc.).” Id. at 10. We do not agree. The term
“interactions,” when construed in accordance with Appellants’ cited
dictionary definitions, is broad enough to read on the first user’s creation of
a link or links to one or more second users. Furthermore, we agree with the
Examiner that the recited “summary of interactions” reads on the listing of
linked-to second users in the Figure 9 form and also reads on the
identification of the permissions granted to those second users.
Appellants further argue that even assuming the first user’s actions of
creating links can be accurately characterized as “identify[ing]
transactions,” those transactions are not identified by “examining” the
recited “information,” as required by claim 1:
[A]s claimed in the present invention information is examined
in order to detect a relationship and identify interactions
between persons in the relationships. Whereas in Robertson
(See col. 2, line 57-col. 3, line 30), a user can be informed of
other users affiliated with the same group and choose to
establish a link to that user. No information is examined to
identify “interactions” between users in the same group.
Id. at 9-10. We do not agree. While it is true that the first user uses the
Figure 8 and Figure 9 forms to create links to second users and to grant
permissions thereto, the first user’s actions are based on an examination of
the relationship information displayed in the Figure 8 form.
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For the foregoing reasons, Appellants have not shown error in the
Examiner’s finding that Robertson discloses all of the functions recited in
the “examining” step.
We turn now to the final step of “evaluating each said summary to
produce relationship ratings that represent overall strength of said
relationships.” The Examiner, in addition to reading the “summary of said
interactions” recited in function (3) of the “examining” step (claim 1) on the
permission levels (Answer 15), reads the recited “relationship ratings” of the
“evaluating” step (claim 1) on those permission levels. Id. at 5, 14.
Although Appellants’ arguments addressing the “evaluation” step appear in
their discussion (Reply Br. 10-13) of the rejection of dependent claim 2,
which further defines that step, it is clear that the following one of those
arguments applies to claim 1 rather than claim 2. Specifically, Appellants
argue (id. at 12) that “the permission levels of Robertson do not amount to
either ‘a summary of interactions’ or ‘relationship ratings’ and, even if they
did amount to one or the other they should not be cited as disclosing both.”
Reply Br. 12. For the reasons given above, Appellants have not persuaded
us that the Examiner erred in reading the recited “summary of interactions”
on the listing of linked-to second users in the Figure 9 form and also on the
associated granted permissions. However, we agree that the identification of
the granted permissions cannot additionally be relied on to satisfy the step of
“evaluating each said summary to produce relationship ratings that represent
overall strength of said relationships.”
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Because Appellants therefore have shown error in the Examiner’s
rejection of claim 1 based on anticipation by Roberson, we are reversing the
rejection of that claim and its dependent claims 2-6.

THE OTHER REJECTED CLAIMS 7, 13, AND 17
For the above reasons, we are also reversing the rejection of the other
independent claims (viz., claims 7, 13, and 17), each of which repeats the
“examining” and “evaluating” steps of claim 1, and also the rejection of their
dependent claims (viz., claims 8-12, 14-16, and 18-22).

DECISION
The rejection of claims 1-22 under 35 U.S.C. § 102(b) for anticipation
by Robertson is reversed.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we are entering
the following new ground of rejection:
Method claims 1-16 are rejected under 35 U.S.C. § 101 for failing to
recite a patent-eligible process.
“[T]he machine-or-transformation test, properly applied, is the
governing test for determining patent eligibility of a process under § 101.”
In re Bilski, 545 F.3d 943, 956 (Fed. Cir. 2008). “The machine-or-
transformation test is a two-branched inquiry; an applicant may show that a
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process claim satisfies § 101 either by showing that his claim is tied to a
particular machine, or by showing that his claim transforms an article.” Id.
at 961.
Appellants’ process claims fail to satisfy either inquiry. Insofar as the
first inquiry is concerned, the recitation in the preambles of independent
claims 1, 7, and 13 of “[a] method of identifying relationships between users
of a computerized network, said method comprising” is simply a field of use
limitation and insufficient to make Appellants’ claims patent-eligible. See
id. at 957 (“[M]ere field-of-use limitations are generally insufficient to
render an otherwise ineligible process claim patent-eligible . . . . [A] claim
that is tied to a particular machine or brings about a particular transformation
of a particular article does not pre-empt all uses of a fundamental principle
in any field but rather is limited to a particular use, a specific application.”).
The dependent claims likewise fail to recite any particular machine.
The claims fail the second inquiry because they do not call for
transforming an article to a different state or thing. The “information” (i.e.,
date) that is extracted from the data sources does not represent an article, let
alone an article that is transformed into a different state or thing by the
recited step of “examining” that information to detect relationships, identify
interactions, and accumulate summaries of interactions or the step of
“evaluating” those summaries to produce relationship ratings. See Bilski,
545 F.3d at 963 (“Purported transformations or manipulations simply of
public or private legal obligations or relationships, business risks, or other
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such abstractions cannot meet the [transformation] test because they are not
physical objects or substances, and they are not representative of physical
objects or substances.”).

APPELLANTS’ OPTIONS FOR RESPONDING TO
THE NEW GROUND OF REJECTION
Regarding the new ground of rejection of claims 1-16 entered
pursuant to 37 C.F.R. § 41.50(b), that paragraph explains that “[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” Appellants, within two months from the date of this
decision, must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
37 C.F.R. § 41.50(b) (2008).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§§ 41.50(f), 41.52(b).

REVERSED; 37 C.F.R. § 41.50(b).
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FREDERICK W. GIBB, III
Gibb Intellectual Property Law Firm, LLC
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