Ex Parte Granito

Board of Patent Appeals and Interferences

May 5, 2010

11238129 (B.P.A.I. May. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JENNIFER GRANITO
____________

Appeal 2009-012592
Application 11/238,129
Technology Center 2100
____________

Before KIMBERLY R. JORDAN, Division 1 Support Administrator.

ERRATUM
An opinion in this appeal was mailed on May 6, 2010. Page 12 of the
opinion listed the outcome of the appeal as “AFFIRMED.” This outcome
was in opposition to the Conclusion and Decision portions of the opinion
(see page 11) wherein the rejections of the appeal were reversed. The
outcome on page 12 was listed in error. The outcome of the appeal is
REVERSED. A corrected page 12 is appended to the Erratum.
Appeal 2009-012592
Application 11/238,129

If there any questions pertaining to this Erratum, please contact the Board
of Patent Appeals and Interferences at 571-272-9797.

KRJ

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
2
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JENNIFER GRANITO
____________

Appeal 2009-012592
Application 11/238,129
Technology Center 2100
____________

Decided: May 6, 2010
____________

Before LEE E. BARRETT, LANCE LEONARD BARRY, and CAROLYN
D. THOMAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1 and 3-44. The Appellant
appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2009-012592
Application 11/238,129
INVENTION
The Appellant describes the invention at issue on appeal as follows:
Searching electronic content in an instant-messaging
application includes obtaining input that specifies a search
criterion and that further identifies a first set of users. Each
user in the first set has stored electronic content that provides
information about that user. The stored electronic content
associated with each user in the first set is searched, and a
second set of users that includes users in the first set with stored
electronic content that satisfies the specified search criterion is
identified. An indication of the identified users within the
second set is provided.
(Spec. 34.)

ILLUSTRATIVE CLAIM
1. A method of searching electronic content in an instant-
messaging application, the method comprising:
obtaining input that specifies a search criterion and that
further identifies a first set of users, wherein the search criterion
indicates an event that the users in the first set may attend and
each user in the first set has stored electronic content that
provides information about that user including indicating an
event that the user is attending;
searching the stored electronic content associated with
each user in the first set;
identifying a second set of users that includes users in the
first set with stored electronic content that satisfies the specified
search criterion including stored electronic content that
indicates the event indicated by the search criterion; and
providing an indication of the identified users within the
second set.
PRIOR ART
Daniell 2005/0080863 A1 Apr. 14, 2005
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Appeal 2009-012592
Application 11/238,129
Hanson 2005/0153681 A1 July 14, 2005
Fox 2006/0075044 A1 Apr. 06, 2006
Feng 2006/0212561 A1 Sep. 21, 2006

REJECTIONS
Claims 32-35 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1, 3-7, 9, 12-37, 39, 40, 42, and 44 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Fox.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as obvious over Fox
and Hanson.
Claims 10 and 11 stand rejected under § 103(a) as obvious over Fox and
Feng.
Claims 38, 41, and 43 stand rejected under § 103(a) as obvious over Fox
and Daniell.

REJECTION OF CLAIMS 32 AND 34 UNDER § 101
Based on the Appellant's arguments (Appeal Br. 7-8), we will decide
the appeal of claims 32 and 34 based on claim 32 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Finding that "claims 32 and 34, recite a tangible computer-readable
medium" (Ans. 73), the Examiner concludes that "[i]t is not clear from
Appellant's specification on page 27, lines 24-28 that a computer readable
medium is limited to exclude propagated signals. Signals embodied as
'tangible' may still be transitory in nature and would not be stored." (Id.)
The Appellant argues that "[w]hile the specification discloses a propagated
signal as one example of a computer-readable medium, the specification also
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Application 11/238,129
discloses other examples of tangible computer-readable media including a
memory unit and a storage device." (Appeal Br. 8.)

ISSUE
Therefore, the issue before us is whether the Examiner has erred in
concluding that claim 32 is directed to non-statutory subject matter.

LAW
"A product is a tangible physical article or object, some form of matter,
which a signal is not." 1300 Off. Gaz. Pat. Off. 142 (Nov. 22, 2005).

FINDINGS OF FACT
Claim 32 recites in pertinent part the following limitations: "[a]
tangible computer-readable media." The Specification (p. 27) includes the
following disclosure.
In one implementation, a computer program product is
tangibly embodied in an information carrier. The computer
program product contains instructions that, when executed,
perform one or more methods, such as those described above.
The information carrier is a computer- or machine-readable
medium, such as the memory 1110, the storage device 1125, or
a propagated signal.

ANALYSIS
Claim 32 recites "[a] tangible computer-readable media." The
Appellant's Specification does not state that a "tangible" computer readable
medium includes a propagated signal; it only discloses that a computer
readable medium includes a signal. We agree with Appellant's arguments
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Application 11/238,129
(Appeal Br. 7-8.) that a "tangible" computer-readable medium has been
interpreted by the USPTO as a tangible physical object and therefore, is a
patent eligible "manufacture" under 35 U.S.C. § 101

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Examiner has erred in concluding that claim 32 and claim 34, which falls
therewith, are directed to non-statutory subject matter.

REJECTION OF CLAIMS 33 AND 35 UNDER § 101
The Examiner makes the following findings and conclusions:
[P]age 6 line 26 to page 7 line 2 of the instant specification . . .
shows implementation [sic] that is purely software and states
"may" include a device is not sufficient for 101 since the device
is not recited as part of the claimed limitations. Moreover,
[A]ppellant asserts that 112 sixth paragraph is being invoked,
however no corresponding hardware/software components
being referenced [sic].
(Ans. 74.) The Appellant argues that "claims 33 and 35 are properly drafted
in accordance with 35 U.S.C. § 112, ¶ 6." (Reply Br. 3.)

ISSUE
Therefore, the issue before us is whether the Examiner has erred in
concluding that claims 33 and 35 are directed to non-statutory subject
matter.

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Appeal 2009-012592
Application 11/238,129
FINDINGS OF FACT
The Examiner admits that "claims 33 and 35, [sic] recite a system."
(Ans. 74.) For its part, the Specification explains that "the system 100
includes an instant message (IM) server 102, a network 106, and client
devices 108a and 108b." (p. 6 (emphasis added).) The part of the
Specification (pp. 6-7), moreover, cited by the Examiner discloses that
"client devices 108a and 108b may each include a computing device, such as
the computing device shown in FIG. 11. In certain implementations, the
client devices 108a and 108b may be mobile devices, such as portable
computers, cellular telephones, or personal digital assistants (PDAs)."

The Specification (p. 26) also includes the following description of
the computing device shown in FIG. 11:
FIG. 11 is a block diagram of a computing device 1100
that may be included within the IM server 102 and/or the client
devices 108a and 108b. The computing device 1100 may
represent a general-purpose computer, a special-purpose
computer, or a mobile computing device, such as a portable
computer, a mobile telephone, or a PDA. The computing
device 1100 includes a processor 1105, a memory 1110, an
input/output controller 1115, a network adapter 1120, and a
storage device 1125. The components 1105, 1110, 1115, 1120,
and 1125 are interconnected using a system bus 1130.

ANALYSIS
The Examiner admits that claims 33 and 35 recite a system. We
disagree with him, however, that the Specification shows an implementation
of the system that is purely software. To the contrary, the Specification
explains that its system includes an IM server, a network, and client devices.
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Application 11/238,129
It also explains that the IM server or the client devices may include a
computing device such as a general-purpose computer; a special-purpose
computer; or a mobile computing device, such as a portable computer, a
mobile telephone, or a PDA. The Specification adds that the computing
device includes a processor, a memory, an input/output controller, a network
adapter, and a storage device. Such an embodiment represents computing
hardware (for running software) rather than pure software as alleged by the
Examiner.

We also disagree with the Examiner that no corresponding hardware
or software components have been identified as corresponding to the means-
plus-function limitations of claims 33 and 35. The Appellant has mapped
the means-plus-function limitations in the Appeal Brief (pp. 4-5.)

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Examiner has erred in concluding that claims 33 and 35 are directed to non-
statutory subject matter.

REJECTION OF CLAIMS 1 AND 3-44 UNDER § 102(e) OR § 103(a)
The Examiner first finds that in Fox "for each conversation and an
associated set of messages, the conversation management system 102 first
generates a sender list at step 307" (Ans. 74) and interprets this as the
claimed "first set of users." (Id.) The Appellant argues that "it is . . .
insufficient for Fox to teach a first set of users. Rather, in order to be
anticipatory, Fox must teach obtaining an input that specifies a search
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Application 11/238,129
criterion that both (i) indicates an event that users may attend and
(ii) identifies a first set of users." (Reply Br. 4.)
The Examiner alternatively finds that the same reference's "FIG. 7B is
a schematic screenshot of a browser window listing three conversations 730
that match the query term 'Tahoe' 720 (¶ 0088 lines 1-3) interpreted as first
set of users specified by input term 'Tahoe.'" (Ans. 75.) The Appellant
argues that "the Examiner's argument that the query term 'Tahoe'
corresponds to the recited first set of users does nothing to advance the
Examiner's argument." (Reply Br. 5.)

ISSUE
Therefore, the issue before us is whether the Examiner has erred in
finding that Fox teaches obtaining an input that specifies both a search query
and a first set of users against whom the query is to be applied to generate a
resulting set of users constituting users in the first set who satisfy the query
as recited in independent claims 1 and 3 or that Fox teaches obtaining an
input that specifies a search query and identifying a first set of users against
whom the query is to be applied to generate a resulting set of users
constituting users in the first set who satisfy the query as recited in
independent claims 32, 33, and 40.

LAW
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). Furthermore, the
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Application 11/238,129
question of obviousness is "based on underlying factual determinations
including . . . what th[e] prior art teaches explicitly and inherently." In re
Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001). "In rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of presenting a prima
facie case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir.
1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).

FINDINGS OF FACT
Fox "relates generally to the field of a client-server computer network
system, and in particular, to a method, system, and graphical user interface
for electronic contact list-based search and display." (¶ [0008] (emphasis
added).) More specifically, "[t]he system includes a conversation
management system 102, a communication network 106 and a plurality of
clients 104. A conversation includes one or more relevant messages
covering a conversation topic." (¶ [0048].)
"Referring now to FIG. 3A, the conversation management system 102
generates a list of conversations (step 302), for instance in response to the
user or client requesting an inbox view of the user's mail account."
(¶ [0057].)
Fox includes the following explanation of the generation of the list:
[L]ists of conversations are generated by performing a search of
the user's mail account. To generate the list of conversations
for an inbox view, the user's mail account is searched for
conversations associated with an "InBox" attribute (sometimes
called a label). The conversation management system 102 then
prepares information about those conversations for display at
step 304 . . . .
(Id.) "For each conversation and an associated set of messages, the
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Application 11/238,129
conversation management system 102 first generates a sender list at
step 307." (¶ [0059].)
Fox's "FIG. 7B is a schematic screenshot of a browser window listing
three conversations 730 that match the query term 'Tahoe' 720." (¶ [0088].)

ANALYSIS
Regarding Figure 3A's generation of a sender list, on which the
Examiner first relies, we agree with the Appellant that this Figure shows
"a process by which Fox's system generates a list of e-mail conversations in
response to a user requesting an inbox view of the user's e-mail inbox."
(Reply Br. 4.) Such a request involves obtaining an input that specifies a
search query equal to conversations in the inbox of the user's mail account.
The Examiner unwittingly confirms our interpretation by referring to an
example wherein "the search criteria is [sic] 'Inbox' (i.e., conversations
having at least one message assigned the Inbox label)." (Ans. 76.) We are
unpersuaded that the process of Figure 3A includes also obtaining an input
that specifies a first set of users against whom the query is to be applied to
generate a resulting set of users constituting users in the first set who satisfy
the query or that the process identifies such a first set of users. The step of
generating a sender list on which the Examiner relies is merely part of
preparing the search results for display.
Regarding Figure 7B's browser window, on which the Examiner
alternatively relies, the Examiner admits that this window lists "three
conversations 730 that match the query term 'Tahoe.'" (Ans. 75.) We agree
with the Appellant that "the query term 'Tahoe' does not specify a set of
users." (Reply Br. 6.) We are unpersuaded that the process resulting in
Figure 7B includes also obtaining an input that specifies a first set of users
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against whom the query term is to be applied to generate a resulting set of
users constituting users in the first set who satisfy the query or that the
process identifies such a first set of users. The three conversations that
match the query term "Tahoe," on which the Examiner relies to teach a first
set of users specified by the term "Tahoe," are the results of the search, not
an input thereto. The Examiner does not allege, let alone show, that the
addition of Hanson, Feng, or Daniell cures the aforementioned deficiency
of Fox.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Examiner has erred finding that Fox teaches obtaining an input that
specifies both a search query and a first set of users against whom the query
is to be applied to generate a second set of users constituting users in the first
set who satisfy the query as recited in independent claims 1 and 3 and of
claims 4-31 and 36-30, which depend therefrom, or that Fox teaches
obtaining an input that specifies a search query and identifying a first set of
users against whom the query is to be applied to generate a second set of
users constituting users in the first set who satisfy the query as recited in
independent claims 32, 33, and 40 and claims 34, 35, and 41-44, which
depend therefrom.

DECISION
We reverse the rejection of claims 32-35 under § 101 and the
rejections of claims 1 and 3-44 under § 102(e) or § 103(a).

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Appeal 2009-012592
Application 11/238,129
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(v).

REVERSED

peb

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
12