Ex Parte Lance et al

Patent Trial and Appeal Board

Jun 28, 2016

13418046 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/418,046 03/12/2012
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
06/30/2016
FIRST NAMED INVENTOR
John Morgan Lance
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.
RSW920090096US2 4406
EXAMINER
HOLLAND, SHERYLL
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MORGAN LANCE, ELENI ANNA RUNDLE,
and ANUPHINH PHIMMASORN WANDERSKI
Appeal2014-003707
Application 13/418,046
Technology Center 2100
Before IRVINE. BRANCH, JOHN F. HORVATH, and
NABEEL U. KHAN, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2014-003707
Application 13/418,046
Appellants' claimed subject matter relates to creating an aggregate
report of a presence of a user on a network. Spec. i-f 5.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method performed by a physical computing device
communicatively coupled to a computer network for creating an
aggregate report of a presence of a user of said physical computing
device within content published on said network, the method
compnsmg:
periodically searching said network with said physical
computing device for content published on said network that is related
specifically to said user of said physical computing device but is
authored by a source other than said user, said searching being based
on a unique set of identifiers associated with said user;
dynamically updating said unique set of identifiers based on
contextual trends within content on said network returned as a result of
said searching; and
aggregating content published by said user to said network with
said content published on said network by a source other than said user
that is returned as a result of said searching to form said aggregate
report of said presence of said user within said content published on
said network.
REJECTIONS
Claims 1-5, 9, 10, and 14--17 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Fish (U.S. Pub. No. 2008/0133747 Al; June 5, 2008).
Ans. 2-8.
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Application 13/418,046
Claims 6, 7, 11, 18, and 19 1 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Fish and Sifry (U.S. Pub. No. 2006/0004691 Al; Jan.
5, 2006). Ans. 8-13.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Fish and Willis (U.S. Pub. No. 2004/0111467 Al; June 10, 2004). Ans. 13-
14.
Claims 12, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fish and Brock (U.S. Pub. No. 2008/0178302 Al; July 24,
2008). Ans. 14--17.
OPINION
The Anticipation Rejection over Fish
The Examiner finds that Fish describes all elements of claim 1. Ans.
2--4. Fish describes a networked community in which users create one or
more cyberidentities for participating in the cyber community. The
community practices "radical transparency," wherein members of the
community are given access to the behaviors of other members of the
community, including access to the searches the other members perform.
See, e.g., Fish i-fi-1 46, 4 7, 67, 77-87.
1 Claim 19 recites "allowing said user to edit said aggregate report of said
presence of said user on said network," subject matter that is analogous to
claim 7, rejected over Fish and Sifry. Although the Examiner states (Final
Act. 2 (mailed June 14, 2013)) that claim 19 is rejected, the Examiner does
not state the grounds for the rejection (see, id., 9-14). Appellants
acknowledge that claim 19 stands rejected (App. Br. 4) but do not argue
claim 19 specifically (see id., 9-18). Hence, we treat the Examiner's not
having listed claim 19 as rejected over Fish and Sifry as harmless error and
consider Appellants as having waived the opportunity to specifically argue
claim 19.
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Application 13/418,046
i\ .. ppellants argue that Fish does not disclose "periodically searching
said network with said physical computing device for content published on
said network that is related specifically to said user of said physical
computing device but is authored by a source other than said user," because
"Fish only teaches looking at the publications or behavior of a specific user
and compiling a report on that user based on his or her own behavior." App.
Br. 10. Appellants also argue that Fish does not disclose "aggregating
content published by said user to said network with said content published
on said network by a source other than said user that is returned as a result of
said searching to form said aggregate report," because, in Fish, "[t]he
community is not publishing an aggregated cyberidentity report, the
community is merely making available to members the content produced or
published by a specific cyberidentity so that members of the community can
evaluate that cyberidentity." Id. 11. Appellants further argue that Fish does
not disclose "dynamically updating said unique set of identifiers based on
contextual trends within content on said network returned as a result of said
searching," because "Fish does not ever teach or suggest identifying a
'contextual trend.'" Id. 12. Appellants rely on similar arguments for claims
2--4, 9, 10, and 14--17. Id. 9--14
We are not persuaded of error in the Examiner's rejection of claim 1
for the reasons stated by the Examiner. Ans. 18-20. Regarding Appellants'
argument that "Fish only teaches looking at the publications or behavior of a
specific user and compiling a report on that user based on his or her own
behavior" (App. Br. 10), we agree with the Examiner that Fish's
maintenance of community communication logs and logs of searches and
search results that are made available to users (Ans. 18-19 (citing Fish
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i-fi-1 77-96)) demonstrates that Fish discloses more than "only" "looking at the
publications or behavior of a specific user and compiling a report on that
user based on his or her own behavior." App. Br. 10. Thus, for example,
when user A searches for indexed words and phrases appearing in user B's
content, user A's search and search results are logged. See Fish i177.
Subsequently, when the system searches for the indexed words and phrases
of user B's content, see Fish i180, it will retrieve user A's search and search
results, which is published content related to user B that is authored by a
source other than user B. Consequently, we are unpersuaded of error in the
Examiner's finding that Fish describes "periodically searching said network
with said physical computing device for content published on said network
that is related specifically to said user of said physical computing device but
is authored by a source other than said user" and "aggregating content
published by said user to said network with said content published on said
network by a source other than said user that is returned as a result of said
searching to form said aggregate report." Ans. 2--4, 18-19.
Regarding Appellants' argument that Fish does not anticipate
"dynamically updating said unique set of identifiers based on contextual
trends within content on said network returned as a result of said searching"
because Fish does not identify "contextual trends" (App. Br. 12), we are
unpersuaded of error because the claim does not recite identifYing a
"contextual trend." Nor does the claim require "comparing content on the
network" to identify a trend, as Appellants argue. Reply Br. 7. Appellants'
arguments in this regard are not commensurate with the scope of the claim.
Moreover, although we do not rely on the following to affirm the
Examiner's rejection, we note that Fish discloses searching for the indexed
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\vords and phrases of a user's published content, sorted by frequency of use.
See Fish i-f 80. Changes in the frequency of use of indexed words and
phrases constitute a contextual trend, and searching indexed words and
phrases based on frequency of use constitutes dynamically updating the
unique set of identifiers used to conduct searches.
We note Appellants' newly presented arguments that the Examiner
erred because Fish's users hide behind cyberidentities and Fish's users'
computers do not search periodically (Reply Br. 4--6), but we do not reach
the merits of these arguments. "[I]t is inappropriate for appellants to discuss
in their reply brief matters not raised in ... the principal brief[ ] . " Kaufman
Company, Inc. v. Lantech, Inc., 807 F.2d 970, 973 (Fed. Cir. 1986).
In view of the foregoing, we are unpersuaded of error in the
Examiner's decision to reject claim 1 and also claims 2--4, 9, 10, and 14--17,
argued on the same grounds.
We also are unpersuaded of error in the Examiner's rejection of claim
5, which Appellants argue on the basis that Fish does not disclose a
"notification" of a negative portrayal in an aggregate report. App. Br. 14--
15; Reply Br. 10-11. The Examiner finds that, in Fish's "cyberjustice
system," "a user with a complaint pending against them may be contacted
regarding complaint status," including, specifically (Fish i-f 150), a
notification that the complaint has been dismissed. Ans. 5, 20 (citing Fish i-fi-1
65, 150). We are not persuaded that Fish's storage of all behaviors-
including the filing of a complaint-making the stored information available
to a user (an aggregate report), and notifying the user about the status of the
complaint (part of the aggregate report) falls short of claim 5 's notifying the
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user that the aggregate report includes at least a negative portrayal of the
user.
The Remaining Rejections
Appellants present separate arguments for the Examiner's rejection of
claim 7 over Fish and Sifry (App. Br. 14--15; Reply Br. 11-12) and the
Examiner's rejection of claim 13 over Fish and Brock (App. Br. 18; Reply
Br. 12-13), but otherwise rely on arguments presented with respect to the
independent claims (see, App. Br. 15, 17; Reply Br. 11, 13). Regarding
Appellants separate arguments, we are unpersuaded of error in these
rejections for the reasons stated by the Examiner. Ans. 10-11, 15, 21-22.
Appellants' arguments do not persuade us of error at least because they are
directed at individual teachings of the references when the Examiner's
rejections are based on what the combined teachings of the references would
have taught or suggested to one of ordinary skill in the art. Id. 10-11, 15.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, we are unpersuaded of error in the Examiner's rejection
of claims 6, 7, 11, 18, and 19 over Fish and Sifry, the Examiner's rejection
of claim 8 over Fish and Willis, and the Examiner's rejection of claims 12,
13, and 20 over Fish and Brock.
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DECISION
We sustain the Examiner's decision to reject 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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