Ex Parte Kosuru et al

Patent Trial and Appeal Board

Sep 30, 2016

12645115 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/645,115 12/22/2009
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
10/04/2016
FIRST NAMED INVENTOR
Y ekesa Kosuru
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.
P3499USOO 7641
EXAMINER
PHAM, MICHAEL
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEKESA KOSURU, JARI KARJALA, and
MATTI OIKARINEN
Appeal2015-006919
Application 12/645,115 1
Technology Center 2100
Before MICHAEL J. STRAUSS, LARRY J. HUME, and
NORMAN H. BEAMER, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Nokia Corp. App.
Br. 1.
Appeal2015-006919
Application 12/645,115
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate to "a method,
apparatus, and computer program for utilizing a scalable data structure to
search user profiles." Spec. i-f 19.
Exemplary Claims
Claims 1 and 5, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A method comprising:
receiving a query specifying an entity identifier and
requested content;
causing, at least in part, a search, based on the entity
identifier, of a profile index of data structures to yield a search
result from the data structures for the requested content
specified by the query, each data structure including a profile
identifier field containing a single entity identifier, an access
control field, and one or more fields associated with profile data
corresponding to an entity indicated by the single entity
identifier in the profile identifier field, the access control field
indicating one or more entities, different from the entity
indicated by the single entity identifier, having access to one or
more of the one or more fields associated with the profile data
corresponding to the entity indicated by the single entity
identifier in the profile identifier field; and
indicating access rights to the requested content for the
entity identifier, wherein
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 23, 2014); Reply Brief ("Reply Br.," filed July 16, 2015); Examiner's
Answer ("Ans.," mailed June 4, 2015); Final Office Action ("Final Act.,"
mailed July 15, 2014); and the original Specification ("Spec.," filed
Dec. 22, 2009).
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Appeal2015-006919
Application 12/645,115
each entity identifier identifies a certain entity,
the profile index includes a plurality of different data
structures corresponding to two or more different entities,
one or more of the two or more different entities have
two or more data structures corresponding thereto, and
the one or more entities in the access control field are
independent of having a data structure in the profile index from
which the requested content is provided.
5. The method of claim 4, wherein the one or more
fields associated with profile data includes a basic profile field
and an extended profile field, and wherein the access control
field is utilized to specifY the one or more entities having access
rights to the basic profile field and the extended profile field.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Cotner et al. ("Cotner") US 2007/0244898 Al Oct. 18, 2007
Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Cotner. Final Act. 3-9.
CLAIM GROUPING
Although Appellants set forth a proposed grouping of claims (App.
Br. 7), based on Appellants' actual, substantive arguments (App. Br. 9-15;
Reply Br. 2-10), we decide the appeal of the anticipation rejection of
claims 1-20 on the basis of representative claim 1.
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Application 12/645,115
ISSUE
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-20, and we
incorporate herein and adopt as our own: ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 as follows.
ANALYSIS
Appellants argue (App. Br. 10-11; Reply Br. 4--8) the Examiner's
rejection of claim 1under35 U.S.C. § 102(b) as being anticipated by Cotner
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a method
that includes, inter alia, a step of "causing ... a search ... of a profile index
of data structures ... each data structure including ... an access control field
... the access control field indicating one or more entities," wherein "the
one or more entities in the access control field are independent of having a
data structure in the profile index from which the requested content is
provided," as recited in claim 1?
Appellants' pattern of argument for all claims on appeal, particularly
independent claims 1, 8, and 15, and dependent claims 4 and 5, is to recite
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Application 12/645,115
contested claim language, and merely assert Cotner does not disclose the
claimed subject matter, without any analysis or explanation.
Such statements are not considered to be arguments. 37 C.F.R.
§ 41.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.");
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). We find no analysis by Appellants of the Examiner's claim or
reference interpretation, nor do Appellants point to any evidence of record
that would indicate the Examiner's interpretation is overly broad,
unreasonable, or inconsistent with Appellants' Specification. See App.
Br. 10-13. Thus, we do not find Appellants' arguments to be persuasive.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitation of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1 and grouped claims
2-20, which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-11) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
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Application 12/645,115
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the anticipation rejection of
claims 1-20 under 35 U.S.C. § 102(b) over the cited prior art of record, and
we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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