Ex Parte Kaminsky et al

Patent Trial and Appeal Board

Sep 24, 2013

10404297 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/404,297 03/31/2003 David Louis Kaminsky RSW920030019US1 (087) 7735
46320 7590 09/25/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
LEWIS, ALICIA M
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
09/25/2013 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 DAVID LOUIS KAMINSKY and DAVID M. OGLE
________________

Appeal 2011-000034
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 APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6. Claims 7-18 are canceled. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed February 4, 2010; the Examiner’s
Answer (Ans.) mailed May 12, 2010; and the Reply Brief (Reply Br.) filed
July 12, 2010.
Appeal 2011-000034
Application 10/404,297

2
Claims 1-6 are rejected under 35 U.S.C. § 112, first paragraph. Ans.
4-5.
Claims 1 and 4 are rejected under 35 U.S.C. § 103(a) as obvious over
Wyse (US 6,792,421 B2; issued Sep. 14, 2004) and Bahl (US 2005/0085241
A1; published Apr. 21, 2005). Ans. 5-6.
Claims 2 and 6 are rejected under 35 U.S.C. § 103(a) as obvious over
Wyse, Bahl, and Shi (US 6,625,615 B2; issued Sep. 23, 2003). Ans. 7-8.
Claim 3 is rejected under 35 U.S.C. § 103(a) as obvious over Wyse,
Bahl, and Vora (US 6,539,379 B1; issued Mar. 25, 2003). Ans. 8-9.
Claim 5 is rejected under 35 U.S.C. § 103(a) as obvious over Wyse,
Bahl, Shi, and Vora. Ans. 9.
Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103(a) as obvious
over Hyatt (US 6,678,692 B1; issued Jan. 13, 2004) and Vora. Ans. 9-11.
Claims 2, 5, and 6 are rejected under 35 U.S.C. § 103(a) as obvious
over Hyatt, Vora, and Boreham (US 6,768,988 B2; issued July 27, 2004).
Ans. 11-12.
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to contact management. Spec. ¶ 1. 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 an anchor contact in the logical contact hierarchy;

Appeal 2011-000034
Application 10/404,297

3
computing a distance within the logical contact hierarchy, wherein the
distance is an interval between only said anchor contact and only a selected
contact, for each selected contact in the logical contact hierarchy; and,

selecting a contact, as a nearest matching contact, from among
contacts in said logical contact hierarchy having a shortest computed
distance to the anchor contact within the logical contact hierarchy.

ANALYSIS
THE WRITTEN DESCRIPTION REJECTION OF CLAIMS 1-6
The Examiner finds:
[t]here is no description in the specification of a distance being
defined as 1) an interval and 2) as an interval between only an
anchor contact and only a selected contact. In fact, the words
interval or only do not even appear in the specification. The
specification only describes computing a distance between an
anchor contact and a selected contact (Figure 2 and paragraphs
8, 10, 15, 19 and 20 of the PG-Pub).
Ans. 4-5 (emphasis added). See also Ans. 13-15.
Appellants argue “[p]aragraph [0017] of Appellants’ specification
states ‘in block 220, a distance can be computed from the selected contact to
the anchor contact.’” App. Br. 5. See also Reply Br. 4-6.
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). “And while the description requirement does not
demand any particular form of disclosure, or that the specification recite the
claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement.” Id. at 1352 (internal
citations omitted).
Appeal 2011-000034
Application 10/404,297

4
The Specification (¶ 17) describes “in block 220, a distance can be
computed from the selected contact to the anchor contact.”
The Specification (¶ 6) also describes:
a distance within the logical contact hierarchy can be computed
between the anchor contact and a selected contact for each
contact in the logical contact hierarchy. In this regard, a
relationship can be established between the anchor contact and
the selected contact for each contact in the hierarchy.
Subsequently, the magnitude of that relationship can be
measured to identify the distance between the contacts within
the logical hierarchy. Finally, a contact can be selected as a
closest matching contact from among the contacts in the logical
contact hierarchy having a shortest computed distance in the
logical contact hierarchy.
Although the Specification does not use the terms “interval” and
“only” to describe the distance, we find the Specification’s explanation that
the magnitude of the relationship between the anchor contact and the
selected contact can be measured to identify the distance between the
contacts within the logical hierarchy reasonably describes the computed
distance is an interval between only the anchor contact and only a selected
contact. Thus, we find the Specification’s description would have conveyed
to a skilled artisan that Appellants were in possession of the computed
distance being an interval between only the anchor contact and only a
selected contact.
Accordingly, we reverse the rejection under 35 U.S.C. § 112, first
paragraph, of claims 1-6.

THE OBVIOUSNESS REJECTION OF CLAIMS 1 AND 4 OVER WYSE AND BAHL
The Examiner finds Wyse and Bahl collectively teach or suggest all
limitations of claim 1. Ans. 5-6. The Examiner relies on Wyse for all
Appeal 2011-000034
Application 10/404,297

5
limitations except for the location space being a logical contact hierarchy,
for which the Examiner relies on Bahl. Ans. 5-6 (citing Wyse, col. 24, claim
1, steps (b), (d); col. 25, claim 1, steps (e)(2), (h), (i); Bahl, Abstract, ¶¶ 10,
13, 14).
The Examiner provides the following rationale:
[i]t would have been obvious to a person having ordinary skill
in the art at the time the invention was made to [modify] Wyse
by the teaching of Bahl because the location space being a
logical contact hierarchy in which the location selected
represents the location of a contact would enable a more
efficient search for a fixed resource location[].
Ans. 6 (citing Bahl, ¶ 14). See also Ans. 15-21.
Appellants present, inter alia, the following principal arguments:
(i) Wyse does not teach computing a distance for each selected
location in the location space. App. Br. 15.
(ii) Wyse does not teach selecting the site having the shortest
computed distance. App. Br. 19.
(iii) Bahl does not teach a logical contact hierarchy. App. Br. 23.
(iv) The Examiner has failed to establish that the proposed
combination would have been obvious to one skilled in the art at the time of
the invention. App. Br. 25. See also Reply Br. 7-17.
We initially note, Appellants do not define the term “selected” in the
context of a selected location. We conclude a broad, but reasonable
construction of the term “select” is its plain (dictionary) meaning, where
“select” is defined, in pertinent sense, as “1 : chosen from a number or group
Appeal 2011-000034
Application 10/404,297

6
by fitness or preference.”2 Thus, the argued “selected location” (Br. 15:19)
includes a location chosen from a group by preference.
Wyse (col. 25, claim 1, step (e)(2)) describes “for each site identified
in substep (1), determining storing the site identifier therefor and the
distance between the user’s location and the identified site and storing the
site identifier therefor and said determined distance in a result table.”
Wyse teaches the recited computing a distance within the location
space, wherein the distance is an interval between only said anchor location
and only a selected location (Wyse determines the distance between the
user’s location and the identified site), for each selected location in the
location space (Wyse determines the distance for each identified site).
Notably, each identified site in Wyse was selected, i.e., chosen from a group
by preference, when Wyse identifies sites associated with the linkcell. See
Wyse, col. 25, claim 1, step (e)(1).
Wyse (col. 25, claim 1, step (i)) describes “determining the specified
number of sites closest to said user’s location from the distances stored in
said result table.”
Wyse teaches selecting a location, as a nearest matching location,
from among locations in said location space having a shortest computed
distance to the anchor location within the logical location hierarchy (Wyse
determines a site closest to the user’s location, when determining the nearest
N sites in the case where N=1).
Bahl (Abstract, ¶¶ 10, 13, 14) teaches fixed resources in a system
stored in a database in a hierarchical directory structure according to the
location of each fixed resource.

2 MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 1058 (10th ed. 1997).
Appeal 2011-000034
Application 10/404,297

7
Bahl teaches the location space being a logical contact hierarchy
(Bahl’s hierarchical directory structure for fixed resources).
We additionally note, without reciting further functionality, “contact”
is a label that merely describes the content of data in the logical hierarchy,
and therefore constitutes non-functional descriptive material as it does not
change or alter the manner in which the recited “selecting a contact” step is
performed. (claim 1). Such non-functional descriptive material does not
patentably distinguish over the prior art that otherwise renders the claims
unpatentable.3
Regarding Appellants’ arguments (i), (ii), (iii), we find these
arguments unpersuasive for reasons explained above regarding the teachings
and suggestions of Wyse and Bahl.
Regarding Appellants’ argument (iv) that the Examiner has failed to
establish that the proposed combination would have been obvious to one
skilled in the art at the time of the invention, we also find this argument
unpersuasive. The Examiner reasonably explained that it would have been
obvious to a person having ordinary skill in the art at the time of the
invention was to modify Wyse because the location space being a logical
“contact” hierarchy in which the location selected represents the location of
a “contact” would enable a more efficient search for a fixed resource
location. Appellants have not provided any persuasive rebuttal or persuasive
explanation as to why the Examiner’s explanation is insufficient.

3 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material).
Appeal 2011-000034
Application 10/404,297

8
Weighing Appellants’ arguments against the Examiner’s findings, we
conclude Appellants has not shown error in the Examiner’s obviousness
rejection based on Wyse and Bahl regarding claim 1.
We, therefore, sustain the Examiner’s rejection based on Wyse and
Bahl of claim 1, and of claim 4, which is not argued separately.

THE OBVIOUSNESS REJECTION OF CLAIMS 2 AND 6 OVER WYSE, BAHL, AND
SHI
The Examiner finds Wyse and Bahl teach or suggest all limitations of
claim 2, except for the recited performing at least one boolean operation, for
which the Examiner relies on Shi. Ans. 7-8 (citing Wyse, col. 21, l. 67 - col.
22, l. 2 and claim 1; Bahl, ¶¶ 10, 13; Shi, col. 7, ll. 31-47; col. 8, ll. 42-46).
The Examiner provides the following rationale to combine the cited
references:
[i]t would have been obvious to a person having ordinary skill
in the art at the time the invention was made to have further
modified Wyse by the teaching of Shi, because performing at
least one Boolean operation on[] each closest matching contact
produced by said repeating step for each anchor contact to
compute a Boolean closest matching contact in the logical
contact hierarchy, would enable a search depth to be specified,
which may be less than the entire sub tree of the base node (Shi,
column 7 lines 34-35), thus a more specified search is allowed
(Shi, column 7 lines 37-38).
Ans. 7-8. See also Ans. 21-22.
Appellants argue (i)
column 21, line 67 through column 22, line 2 refers to repeating
“Steps (4), (5), and (6),” which are described as: (4) randomly
generating a user location; (5) respond to query as if query
originated from user location; and (6) calculate time required to
Appeal 2011-000034
Application 10/404,297

9
produce output data. These steps, however, do not correspond
to the claimed limitations.
App. Br. 29.
Appellants argue (ii) “the Examiner’s cited passages [are] silent as to
performing a boolean operation ‘on each closest matching contact produced
by said repeating step for each anchor contact to compute a boolean closest
matching contact in the logical contact hierarchy,’ as claimed.” App. Br. 30.
We are not persuaded of error.
Regarding Appellants’ argument (i), we find this argument
unpersuasive because Wyse (col. 21, l. 55 - col. 22, l. 4) describes
determining average resultset completion time (RCT) for responding to
queries using Wyse’s location-aware approach. To determine the average
value, an average of 100 RCTs is calculated.
Notably, the recited establishing, computing, and selecting steps are
recited in claim 1, and are taught by Wyse and Bahl as discussed above
regarding claim 1. Claim 2 further recites repeating these steps for at least
one additional anchor contact (Wyse’s user’s location), and Wyse further
teaches the recited repeating (Wyse’s calculation of 100 RCTs).
Regarding Appellants’ argument (ii), we also find this argument
unpersuasive because Shi teaches or suggests at least one Boolean operation
as recited, when combined with Wyse and Bahl. Further, we note:
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appeal 2011-000034
Application 10/404,297

10
Here, the Examiner relies on Shi for performing at least one boolean
operation. Ans. 7 (citing Shi, col. 7, ll. 31-47; col. 8, ll. 42-46). The
Examiner relies on Wyse and Bahl for the other recited limitations. Ans. 7
(citing Wyse, col. 21, l. 67 - col. 22, l. 2 and claim 1; Bahl, ¶¶ 10, 13). The
Examiner provided articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. (Ans. 7-8, 21-22). In particular,
the Examiner explained why the combined teachings of Wyse, Bahl, and Shi
would have suggested the addition of Shi’s boolean operation to Wyse’s and
Bahl’s combined method. Appellants have not provided any persuasive
rebuttal or persuasive explanation as to why the Examiner’s stated rejection
and explanation are insufficient.
Weighing Appellants’ arguments against the Examiner’s findings, we
conclude Appellants have not shown error in the Examiner’s obviousness
rejection based on Wyse, Bahl, and Shi regarding claim 2.
We, therefore, sustain the Examiner’s rejection based on Wyse, Bahl,
and Shi of claim 2, and of claim 6, which is not argued separately.

THE OBVIOUSNESS REJECTION OF CLAIM 3 OVER WYSE, BAHL, AND VORA
The Examiner finds Wyse, Bahl, and Vora teach all limitations of
claim 3. Ans. 8-9. See also Ans. 23.
Appellants argue Vora does not cure the deficiencies of Wyse and
Bahl. App. Br. 31. We find this argument unpersuasive for reasons discussed
above when addressing claim 1.
We, therefore, sustain the Examiner’s rejection based on Wyse, Bahl,
and Vora of claim 3.

Appeal 2011-000034
Application 10/404,297

11
THE OBVIOUSNESS REJECTION OF CLAIM 5 OVER WYSE, BAHL, SHI, AND
VORA
The Examiner finds Wyse, Bahl, Shi, and Vora teach all limitations of
claim 5. Ans. 9. See also Ans. 23.
Appellants argue Shi and Vora do not cure the deficiencies of Wyse
and Bahl. App. Br. 32. We find this argument unpersuasive for reasons
discussed above when addressing claim 1.
We, therefore, sustain the Examiner’s rejection based on Wyse, Bahl,
Shi, and Vora of claim 5.

THE OBVIOUSNESS REJECTION OF CLAIMS 1, 3, AND 4 OVER HYATT AND VORA
The Examiner finds Hyatt and Vora teach all limitations of claim 1.
Ans. 9-10. The Examiner maps Hyatt’s top node in a concept hierarchy to
the recited anchor contact. Ans. 9 (citing Hyatt, Figure 5, element 122; col.
10, ll. 30-32). The Examiner maps Hyatt’s distance computations when
determining a concept location for a document to the recited computing a
distance. Ans. 10 (citing Hyatt, Figure 5, elements 124, 126, 128; col. 10, ll.
32-33, 41-42).
Appellants argue the distance values taught by Hyatt do not
correspond to the claimed distance, which is an interval between only the
anchor contact and only a selected contact. See App. Br. 33-38.
In response, the Examiner explains:
the Examiner believes [the argued] limitation represents new
matter. Should the Board affirm the rejection under 35 U.S.C.
112, first paragraph, the above limitation, “wherein the distance
is an interval between only said anchor contact and only a
selected contact,” will hold no patentable weight and the
distance of claim 1 will be defined as “a distance within the
Appeal 2011-000034
Application 10/404,297

12
logical hierarchy between said anchor contact and a selected
[contact].”
Ans. 24.
We find Appellants’ argument persuasive.
Hyatt’s Figure 5 illustrates determining a concept location for a
document in a concept hierarchy. The distances computed in Hyatt (see
Hyatt, Figs. 5-7) are used to determine a concept location for a document;
thus, such a distance is the distance between the document and a concept in
the hierarchy. Note block 132 in Hyatt’s Figure 5, selecting the node with
the lowest distance value.
Hyatt’s distance is not an interval between only the anchor contact
(Hyatt’s top node) and only a selected contact (a different node in the
hierarchy), when the claim language is given patentable weight.
We, therefore, do not sustain the Examiner’s rejection based on Hyatt
and Vora of claim 1, or of claims 3 and 4, which depend from claim 1.

THE OBVIOUSNESS REJECTION OF CLAIMS 2, 5, AND 6 OVER HYATT, VORA,
AND BOREHAM
Claims 2, 5, and 6 depend from claim 1. Because we do not sustain
the rejection of claim 1 based on Hyatt and Vora, we do not sustain the
rejections based on Hyatt, Vora, and Boreham of claims 2, 5, and 6.

OTHER ISSUES
We observe the Examiner withdrew the rejection under §101 for
claims 1-6. (Ans. 3). In light of the evolving case law regarding § 101, and
in the event of further prosecution, we leave it to the Examiner to reconsider
rejecting claims 1-6 as being directed to non-statutory subject matter under
Appeal 2011-000034
Application 10/404,297

13
at least Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011) (“It is clear that unpatentable mental processes are the
subject matter of claim 3. All of claim 3’s method steps can be performed in
the human mind, or by a human using a pen and paper.”). The Federal
Circuit has held that “a method that can be performed by human thought
alone is merely an abstract idea and is not patent-eligible under § 101.”
CyberSource Corp. 654 F.3d at 1373.
The Examiner should assess whether any of the judicially recognized
exceptions to subject-matter eligibility apply, including whether the claims
are directed to patent-ineligible abstract ideas. See Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. at 1289 (2012); Ultramercial,
Inc. v. Hulu, LLC, No. 2010-1544, 2013 WL 3111303, at *8 (Fed. Cir. June
21, 2013) (“[T]he relevant inquiry is whether a claim, as a whole, includes
meaningful limitations restricting it to an application, rather than merely an
abstract idea.” (citing Prometheus, 132 S. Ct. at 1297)).

ORDER
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision rejecting claims
1-6 is affirmed. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

rwk