Ex Parte Kaminsky et al

Patent Trial and Appeal Board

Sep 19, 2016

10404297 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/404,297 03/31/2003
46320 7590 09/21/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
David Louis Kaminsky
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.
RSW920030019US1 (087) 7735
EXAMINER
WILLOUGHBY, ALICIA M
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID LOUIS KAMINSKY and DAVID M. OGLE
Appeal2015-005657
Application 10/404,297
Technology Center 2100
Before ALLEN R. MACDONALD, ST. JOHN COURTENAY III, and
JEREMY J. CURCURI, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1 and 2. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to groupware and contact management.
Spec. ,-r 1.
Appeal2015-005657
Application 10/404,297
REJECTIONS
Claim 1 is rejected under 35 U.S.C. § 102(e) as anticipated by Hyatt
(US 6,678,692 Bl; Jan. 13, 2004). Final Act. 2--4.
Claim 2 is rejected under 35 U.S.C. § 103(a) as obvious over Hyatt
and Boreham et al. (US 6,768,988 B2; July 27, 2004). Final Act. 4--5.
Claim 2 is rejected under 35 U.S.C. § 103(a) as obvious over Hyatt
and Shi et al. (US 6,625,615 B2; Sep. 23, 2003). Final Act. 5---6.
Claim 1 is illustrative and reproduced below:
1. A computer-implemented method for matching nearest contacts
in a logical contact hierarchy, the method comprising the steps of:
establishing, by a processor on a computer, an anchor contact in the
logical contact hierarchy among different contacts, the anchor contact
forming a basis for matching nearest contacts in the logical contact
hierarchy, the logical contact hierarchy representing a logical hierarchical
structure of seniority in an organization;
computing, by the processor, a distance between the anchor contact
and each different contact within the logical contact hierarchy, wherein the
distance indicates a non-geographical relationship between said anchor
contact and each of the different contacts, the non-geographical relationship
referring to a closest level of seniority between each different contacts and
the anchor contact; and,
selecting a contact, as a nearest matching contact, from among the
different contacts in said logical contact hierarchy having a shortest
computed distance to the anchor contact within the logical contact hierarchy.
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Application 10/404,297
(Contested limitation emphasized).
THE ANTICIPATION REJECTION OF CLAIM 1 BY HYATT
Contentions
The Examiner finds Hyatt describes all limitations of claim 1. Final
Act. 2--4.
Appellants present the following principal arguments:
1.
Appellants' claim requires the computation be based upon a non-
geographical relationship---the closest level of seniority between
each different contact and the anchor contact. Instead, Hyatt
describes the characterization of data samples in a hierarchical
structure and the computation of distance values for nodes of
interest in a hierarchy. In other words, Hyatt teaches the
calculation of a distance value based on the sum of coverage
values of all branches in a hierarchy, which describes a
geographical relationship, rather than a closest level of
seniority, a non-geographical relationship, as required by
Appellants' claim language.
App. Br. 5---6.
11.
Appellants' claim requires that the computation of a distance
indicating a non-geographical relationship between the anchor
contact and different contacts. Therefore, the claim language
directed to what the non-geographical relationship refers to is
more than non-functional descriptive language. In other words,
the distance between the anchor contact and each different
contact within the logical contact hierarchy is based upon
determining a non-geographical relationship between the
anchor contact and each of the different contacts by
determining a closest level of seniority between each different
contact and the anchor contact.
App. Br. 6.
In response, the Examiner explains:
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Application 10/404,297
Hyatt explicitly recites that although the hierarchy of Fig. 6 may
be a geographical location hierarchy, the hierarchy of Fig. 6 may
also be any other type of hierarchy, such as personnel
organization, and that regardless of the type of hierarchy
involved, the procedure followed is the same (col. 8 11. 31-37).
Ans. 3.
The recitation that the distance represents a closest level of
seniority between each different contacts and the anchor contact
does not change the functions as specified by the claim.
Therefore, this limitation represents non-functional descriptive
material and does not hold any patentable weight. Lastly, the
examiner also reiterates that even though it is argued that the
above argued limitation represents non-functional descriptive
material, Hyatt explains that his distance calculating procedure
can be used for any type of hierarchy, including personnel
organization.
Ans. 4--5.
In the Reply Brief, Appellants further argue "Hyatt explains that the
type of hierarchy can vary, but not that how the distance is calculated can
vary. Yet, Appellants' claim language specifically requires that the
computation of the distance be based upon a non-geographical
relationship---the closest level of seniority between each different contact
and the anchor contact." Reply Br. 6.
ANALYSIS
We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). For the reasons discussed below, and on this
record, Appellant has persuaded us the Examiner erred in rejecting claim 1
as anticipated by Hyatt.
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Application 10/404,297
Under a broad but reasonable interpretation, we conclude, the recited
"non-geographical relationship referring to a closest level of seniority
between each different contacts and the anchor contact" is more than a label
that merely describes the content of data. Rather, this claim language
specifies the manner in which the distance is computed by the processor
(i.e., according to a closest level of seniority), and therefore changes or
affects the manner in which the recited "computing" step is performed.
Therefore, we conclude the contested language of claim 1 must be given
patentable weight.
Given this construction (id.), Appellant has persuaded us the
Examiner erred in finding that Hyatt discloses the recited step of computing
a distance: "wherein the distance indicates a non-geographical relationship
between said anchor contact and each of the different contacts, the non-
geographical relationship referring to a closest level of seniority between
each different contacts and the anchor contact." (Claim 1 ).
Turning to the reference, Hyatt (col. 8 11. 31-3 7) (emphasis added)
describes, in pertinent part:
The hierarchy of FIG. 6 may be a geographical location
hierarchy, or any other type of hierarchy, in which the concept
nodes pertain to areas such as science and technology, politics,
personnel organization, industry, government, military
organization, and so forth. Regardless of the type of hierarchy
involved, the procedure followed is the same. The hierarchy is
scanned to record the numbers of key word hits at each node of
the structure.
Although Hyatt describes different types of concept nodes, we note
Hyatt explicitly discloses the procedure for calculating distance is always the
same. Thus, the type of hierarchy in Hyatt does not appear to affect the
distance computation in Hyatt.
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Appeal2015-005657
Application 10/404,297
We find the Examiner has not fully developed the record to show how
Hyatt's distance computation (based on key word hits) discloses the
contested step of computing a distance: "wherein the distance indicates a
non-geographical relationship between said anchor contact and each of the
different contacts, the non-geographical relationship referring to a closest
level of seniority between each different contacts and the anchor contact," as
recited in claim 1.
We, therefore, do not sustain the Examiner's anticipation rejection of
claim 1.
THE OBVIOUSNESS REJECTION OF CLAIM 2 OVER HYATT AND BOREHAM
The Examiner finds the combination of Hyatt and Bore ham teaches or
suggests all the limitations of claim 2. Final Act. 4--5. We note claim 2
includes all the limitations of claim 1, from which it depends. See Pre-AIA
35 U.S.C. § 112, fourth paragraph. However, on this record, the Examiner
has not shown how Boreham overcomes the aforementioned deficiencies of
Hyatt regarding claim 1. (See Final Act. 5).
Therefore, for reasons discussed above with respect to claim 1, we do
not sustain the Examiner's rejection of claim 2 over Hyatt and Boreham.
THE OBVIOUSNESS REJECTION OF CLAIM 2 OVER HYATT AND SHI
The Examiner finds the combination of Hyatt and Shi teaches or
suggests all the limitations of claim 2. Final Act. 5---6. However, on this
record, the Examiner has not shown how Shi overcomes the aforementioned
deficiencies of Hyatt regarding claim 1. (See Final Act. 6).
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Application 10/404,297
Therefore, for reasons discussed above with respect to claim 1, we do
not sustain the Examiner's rejection of claim 2 over Hyatt and Shi.
ORDER
We reverse the Examiner's decision rejecting claims 1 and 2.
REVERSED
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