Ex Parte Lance et al

Patent Trial and Appeal Board

Oct 19, 2016

12625044 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/625,044 11124/2009
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
10/21/2016
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.
RSW920090096US 1 9470
EXAMINER
HOLLAND, SHERYLL
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
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 W ANDERSKI
Appeal2014-007071
Application 12/625,044
Technology Center 2100
Before IRVINE. BRANCH, JOHNF. HORVATH, and
NABEEL U. KHAN, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review, under 35 U.S.C. § 134(a), of the Examiner's
rejection of claims 11-30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-007071
Application 12/625,044
SUMMARY OF THE INVENTION
The invention is directed to creating an aggregate report of a presence
of a user on a network. Spec. ,-r 5.
Claim 11, reproduced below, is illustrative of the claimed subject
matter:
11. A physical network presence management system
compnsmg:
a processor;
a memory communicatively coupled to said processor,
said memory comprising executable code stored thereon such
that said executable code, when executed by said processor,
causes said processor to implement a network browser;
Willis
Gemmell
Sifry
Shioda
Sappington
Fish
in which said processor is configured to:
periodically search said network for content
published on said network that is related to a user but
authored by a source other than said user; said searching
being based on a unique set of identifiers associated with
said user;
dynamically update said set of unique identifiers
based on contextual trends within content returned as a
result of said searching; and
aggregate content published by said user with said
content published on said network by a source other than
said user that is returned as a result of said searching to
create an aggregate report of a reputation or presence of
said user within said content published on said network.
REFERENCES
US 2004/0111467 Al
US 2005/00807 69 A 1
US 2006/0004691 A 1
US 2006/0089887 Al
US 2008/0077 517 A 1
US 2008/0133747 Al
2
June 10, 2004
Apr. 14, 2005
Jan. 5,2006
Apr. 27, 2006
Mar. 27, 2008
June 5, 2008
Appeal2014-007071
Application 12/625,044
Brock US 2008/0178302 Al July 24, 2008
REJECTIONS
Claims 11-20 stand provisionally rejected on non-statutory
obviousness-type double patenting grounds as unpatentable over claims 1-
10 of U.S. Application No. 13/418,046. Final Act. 4--5.
Claim 20 stands rejected under 35 U.S.C. § 101 as encompassing non-
statutory subject matter. Final Act. 2.
Claims 11-15, 19, and 20-23 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Fish. Final Act. 11.
Claims 16, 17, 24, and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fish and Sifry. Final Act. 19.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Fish and Willis. Final Act. 24.
Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fish and Brock. Final Act. 25.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Fish and Sappington. Final Act. 28.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Fish and Gemmell. Final Act. 29.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Fish and Shioda. Final Act. 30.
ISSUES AND ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. Except as otherwise provided below,
3
Appeal2014-007071
Application 12/625,044
we disagree with Appellants' contentions, and adopt as our own the findings
and reasons set forth by the Examiner in the Examiner's Answer in response
to Appellants' Appeal Brief. We highlight the following for emphasis.
Double Patenting Rejections
The Examiner provisionally rejected claims 11-20 as unpatentable
over claims 1-10 of U.S. Application No. 13/418,406 ("the '406
application") on the non-statutory grounds of obviousness-type double
patenting. Because the rejection is provisional, and the '406 application is
pending, we decline to consider the merits of the double patenting rejection.
Rejection under 35 U.S.C. §101
Claim 20 recites a computer program product comprising "a computer
readable storage memory having a network browser embodied as computer
readable code, said computer readable code comprising" code to perform
various recited functions. App. Br. 33 (Claims App'x) (emphasis added).
The Examiner finds the term '"computer readable storage memory' to
be merely another term designating a 'computer readable medium,"' and
therefore rejects claim 20 for encompassing non-statutory subject matter in
the form of transitory signals. Ans. 31-32. Appellants argue the Examiner
erred in rejecting claim 20 because "[a] person of skill in the art would know
that a 'computer readable storage memory' is a physical device and not a
transient signal." Reply Br. 5. We are persuaded by Appellants' argument.
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The Specification discloses:
a physical computing device employs a form of memory (102).
The memory (102) may include memory storage devices such as
4
Appeal2014-007071
Application 12/625,044
hard disk drives, solid state drives, and optical disc drives.
Additionally, the memory (102) may include faster forms of
memory typically used for temporary storage such as various
forms of Random Access Memory (RAM).
Spec. if 30. Accordingly, we agree with Appellants that the broadest
reasonable interpretation of a computer readable storage memory is a
computer readable storage device, and that claim 20 is therefore an article of
manufacture directed to statutory subject matter. Consequently, we reverse
the Examiner's rejection of claim 20 under 35 U.S.C. § 101.
Rejections under 35 U.S.C. §102
Claims 11-14, 19, and 20--23
The Examiner finds claim 11 is anticipated by Fish. Final Act. 12-13
(citing Fish iii! 43, 46, 47, 65, 67-70, 77-98, 111). Appellants argue the
Examiner erred because Fish fails to teach (a) searching for content about a
user from a source other than the user based on a set of unique identifiers
associated with the user, (b) aggregating the content about a user from
sources other than the user, and (c) dynamically updating the set of unique
identifiers based on contextual trends within content returned as a result of
the searching. App. Br. 13-15. We are not persuaded by Appellants'
arguments for the reasons stated by the Examiner. See Ans. 33-36.
Fish discloses a "radical transparency network" in which "all of a
cyberidentity's content postings are indexed such that [a] history of the
cyberidentity's postings may be viewed or retrieved by any other user." Fish
if 68. The cyberidentity's history "may then be used to establish the
cyberidentity's reputation within the networked community." Id. if 65. The
history can be obtained by searching for all content published by the
cyberidentity, all comments made by other users on the content published by
5
Appeal2014-007071
Application 12/625,044
the cyberidentity, all of the indexed words and phrases of the content
published by the cyberidentity (sorted by frequency of use), and all of the
words and phrases used by the cyberidentity to search for the content of
other users (sorted by frequency of use). Id. iii! 78-81. The history can also
include the search results returned in response to the cyberidentity's
searches. Id. if 77.
Regarding Appellants' argument that Fish does not aggregate content
about a user from sources other than the user, we agree with the Examiner
that Fish discloses doing so by searching for and logging not only the
content that is published by a user (e.g., blog posts), but the comments about
that content that are made by other users. Ans. 35; Fish iii! 77-79.
Regarding Appellants' argument that Fish does not disclose searching
for content published by another based on a set of unique identifiers
associated with the user, or dynamically updating the set of unique
identifiers based on contextual trends in the returned content, we agree with
the Examiner that Fish teaches or suggests these limitations by disclosing
logging a user's searches and search results. Ans. 33-34; Fish if 77. For
example, to create the user's history, Fish discloses searching for "the words
and phrases used to search other user's [sic] published content, sorted by
frequency of use." Fish. if 81. Because the user's search terms change over
time, logging the user's search terms as well as the content that is retrieved
with those search terms will change over time. Therefore, under a broad, but
reasonable construction of the term "set of unique identifiers,"1 we agree
1 We construe the term "set of unique identifiers" to have its "broadest
reasonable interpretation consistent with the specification," In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000), and find it includes a set of user search
6
Appeal2014-007071
Application 12/625,044
with the Examiner that by periodically logging user's search terms and
search results, Fish teaches or suggests "dynamically updat[ing] said set of
unique identifiers based on contextual trends within content," as recited in
claim 11.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claim 11. Appellants do not separately argue for the
patentability of claims 12-14, 19, and 20-23. App. Br. 15. Accordingly, we
sustain the Examiner's rejection of these claims for the same reasons.
Claim 15
Claim 15 depends from claim 11, and further requires notifying the
user that the aggregate report provides at least one of: a positive, a negative,
or a neutral portrayal of the user. App. Br. 32 (Claims App'x).
The Examiner finds Fish discloses a user receiving a notification of a
pending cyber complaint against the user, and that this disclosure teaches or
suggests the aggregate report includes a negative portrayal of the user. Final
Act. 14--15 (citing Fish i-fi-165, 150). Appellants argue Fish's behavioral
history and "a complaint filed by a user [are] not equivalent to an aggregate
report that is based on the content of the user and source other than the
user." App. Br. 16-17.
terms. The Specification discloses the term "unique identifier" is to be
broadly construed to mean "a term, title, or object associated with a piece of
content ... related to a particular individual." Spec. i128. Moreover,
contrary to its name, a "unique identifier" need not uniquely identify any
individual because it can include such generic terms such as the individual's
profession, hobbies, or visited websites. Id. i1 40.
7
Appeal2014-007071
Application 12/625,044
We are not persuaded by Appellants' arguments. In particular, we are
not persuaded that by compiling all of a user's content and content about the
user, including a complaint filed against the user, Fish fails to teach or
suggest creating an aggregate report. Nor are we persuaded that by notifying
the user about the status of the complaint, which again is part of the
aggregate report, Fish fails to teaches or suggest notifying the user that the
aggregate report provides at least one negative portrayal of the user as
required by claim 15.
Accordingly, we sustain the Examiner's rejection of claim 15.
Rejections under 35 U.S.C. § 103
Claims 25, 26, 28, and 29
Appellants argue these claims, which depend from claim 21, are
patentable for the same reasons as claim 21. App. Br. 28-29. Accordingly,
because we sustain the Examiner's rejection of claim 21 for the reasons
explained supra regarding claim 1, we sustain the Examiner's rejections of
claims 25, 26, 28, and 29 for the same reasons.
Claim 16
Claim 16 depends from claim 15, and further requires notifying the
user of the degree of positivity or negativity of the portrayal of the user in
the aggregate report. App. Br. 32 (Claims App'x).
The Examiner finds claim 16 to be obvious over the combination of
Fish and Sifry. Final Act. 19-20. The Examiner finds Sifry teaches
identifying a user as an authority on a particular subject based on the user's
posted content, and possibly identifying the user as a top 10 most influential
author on the subject. Id. at 20 (citing Sifry i-fi-156, 59, 61---63). The
8
Appeal2014-007071
Application 12/625,044
Examiner considers this identification to be a notification of a degree of
positivity of portrayal. Ans. 38.
Appellants argue the Examiner erred in rejecting claim 16 because
Sifry teaches identifying a user as an authority or influential author based on
the number of links to the user's content, and that this "is not equivalent to
indicating a degree to which a user's reputation is negatively or positively
portrayed." App. Br. 22. Appellants further argue the teachings of Sifry and
Fish cannot be combined because they would change Fish's principle of
operation. Id. In particular, Appellants argue that Sifry determines user
influence based on links to the user's content, whereas Fish determines user
trust based on the user's behavior. Id. We are not persuaded by Appellants'
arguments.
Sifry teaches tracking the "subject matter specific individuals are
either linking to or writing about over time." Sifry i-f 56 (emphasis added).
A user's writings are used to create a profile that is "a representation of that
[user's] preferences and interests." Id. Users are identified as authorities or
influential authors with respect to specific subject matter by "indexing
individuals according to these [subject matter] categories." Id. That is, in
addition to teaching determining a user's authority based on the number of
links to the user's content, Sifry teaches determining the user's authority
based on the content itself, i.e., based on what subjects the user is writing
about over time. Similarly, Fish teaches determining a user's reputation
based on the user's published content. Fish i-f 65. Accordingly, we are not
persuaded that the Fish/Sifry combination would change Fish's principle of
operation. Moreover, we agree with the Examiner that by identifying a user
as a top 10 influential authority based on the user's content, Sifry teaches or
9
Appeal2014-007071
Application 12/625,044
suggests indicating to the user the degree to which the user's aggregated
content positively portrays the user.
Accordingly, we sustain the Examiner's rejection of claim 16.
Claim 17
Claim 1 7 depends from claim 11, and further requires allowing the
user to edit the aggregate report. App. Br. 32 (Claims App'x).
The Examiner finds claim 17 to be obvious over the combination of
Fish and Sifry. Final Act. 19, 21-22. The Examiner finds that Sifry
discloses that a user can remove his or her resume from a resume posting
service, and that this disclosure teaches or suggests allowing the user to edit
an aggregate report, such as Fish's aggregate report. Id. at 21 (citing Sifry i-f
68). In particular, the Examiner finds:
[r]esume data from a group of subscribers published to the
internet by a third party must be considered an aggregate report
similar to the reports published by [Fish's] community. It is
obvious that if a user may edit his/her resume which is merely a
portion of [Sifry's] aggregate report, a user could use the same
methodology to edit [Fish's] community aggregate report.
Ans. 40.
Appellants argue the Examiner erred in rejecting claim 17 because "a
resume is not equivalent to an aggregated report," and "posting or deleting
content on a website is not equivalent to editing a report based on the user's
content and content from sources other than the user." App. Br. 23-24; see
also Reply Br. 15. We are not persuaded by Appellants' argument.
The 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
10
Appeal2014-007071
Application 12/625,044
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). "A person of ordinary skill
[in the art] is also a person of ordinary creativity, not an automaton." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Here, we agree with the Examiner that Sifry's teaching of removing a
resume from a collection of resumes would teach or suggest to one of
ordinary skill in the art removing content from Fish's collection of content,
and therefore teaches or suggests allowing a user to edit an aggregate report
as recited in claim 1 7.
Accordingly, we sustain the Examiner's rejection of claim 17.
Claim 18
Claim 18 depends from claim 11, and further requires prohibiting the
user from modifying the aggregate report. App. Rr. 32 (Claims App'x).
The Examiner finds claim 18 to be obvious over the combination of
Fish and Willis. Final Act. 24--25. The Examiner finds Willis teaches
preventing a forum member whose reputation has fallen below a threshold
from posting content to the forum. Final Act. 25 (citing Willis i-f 321 ). The
Examiner finds that "[p ]osting content is the same as publishing content,"
and therefore "prohibiting a cyberidentity from posting is preventing the
user from making modifications to the aggregate report." Ans. 43--44.
Appellants contend the Examiner erred in rejecting claim 18 because
"prohibiting a user from ... posting to a discussion forum, is not equivalent
to ... preventing a user from making modifications to an aggregate report
11
Appeal2014-007071
Application 12/625,044
about the user based on content." App. Br. 28. We are not persuaded by
Appellants' argument.
Appellants admit that "posting [content] to a discussion forum would
qualify as content that can be used to contribute to an aggregate report."
App. Br. 28; Reply Br. 18. Accordingly, prohibiting a user from posting
such content, as taught by Willis, would prohibit the user from modifying
(e.g., by adding to it) an aggregate report of the user's posted content as
taught by Fish. We, therefore, sustain the rejection of claim 18.
Claim 24
Claim 24 depends from claim 21, and further requires the identifiers
associated with the user include any of the user's name, profession, hobbies,
and websites visited by the user. App. Br. 35 (Claims App'x).
The Examiner finds claim 24 to be obvious over the combination of
Fish and Sifry. Final Act. 19, 22-23. The Examiner finds Sifry teaches that
a user's profile, generated from the users' published content, includes the
user's interests and hobbies. Final Act. 22 (citing Sifry i-f 56).
Appellants argue the Examiner erred in rejecting claim 24 because
"the hobbies and interests included in a user profile are not equivalent to
identifiers that are used to search for content about an entity from sources
other than the entity." App. Br. 25. We are not persuaded by Appellants'
argument.
Sifry teaches generating a user profile based on the subjects
individuals write about, which subjects represent the user's interests and
hobbies. Sifry i-f 56. Sifry further teaches indexing individuals according to
these subjects, and using the indexed subjects to query a database to identify
the most influential authors writing about the subjects. Id. i-fi-1 56, 59.
12
Appeal2014-007071
Application 12/625,044
Appellants Specification instructs us to broadly construe the term "unique
identifier" to mean "a term, title, or object associated with a piece of content
... related to a particular individual." Spec. i-f 28. Accordingly, we are not
persuaded that the subject matter categories obtained from a user's writings,
which represent the user's interests and hobbies and are used to search for
the writings of other authors writing about the same subject matter, as taught
by Sifry, fails to teach or suggest the limitations recited in claim 24. We,
therefore, sustain the rejection of claim 24.
Claim 27
Claim 27 depends from claim 22, which depends from claim 21, and
further requires dynamically updating the set of identifiers associated with
the user based on contextual trends by adding an identifier to the set that
appears in search results above a given frequency. App. Br. 35 (Claims
App'x).
The Examiner finds claim 27 to be obvious over the combination of
Fish and Sifry. Final Act. 19, 23-24. The Examiner finds Sifry's teaching
of monitoring what a user says about a news service's content, and creating
a user profile indicating what the user writes about over time, teaches or
suggests this limitation. Id. at 23.
Appellants argue that "determining what a community is talking about
through links and associated comments is not equivalent to adding terms to a
set of identifiers for performing searches based on the results of searches
about a user as recited in claim 27." App. Br. 26. We are not persuaded by
Appellants' argument.
Sifry teaches generating a profile based on the subjects a user writes
about, including comments the user makes on a news provider's website.
13
Appeal2014-007071
Application 12/625,044
Sifry i-fi-156, 62. Sifry further teaches creating an index that associates the
user with the subjects the user writes about over time. Id. i1 56. Because
news content is dynamic, the subjects the user comments upon over time is
dynamic, as is the user profile based upon those subjects. Accordingly, we
are not persuaded that Sifry's index of user subject matter categories, which
is obtained in part from the user's comments on dynamically published news
content, and used to search for the content of other authors writing about the
same subject matter, fails to teach or suggest the limitations recited in claim
27. We, therefore, sustain the rejection of claim 27.
Claim 30
Claim 30 depends from claim 21, and further requires making the
aggregate report available to other users and prohibiting the user from
altering the aggregate report. App. Br. 36 (Claims App'x).
The Examiner finds claim 30 to be obvious over the combination of
Fish and Shioda. Final Act. 30-31. The Examiner finds Fish teaches
making the aggregate report (collection of user content and content about the
user) available to other users, and Shioda teaches prohibiting the other users
from altering the aggregate report. Final Act. 30-31 (citing Fish i-fi-1 68, 77-
98, Fig. 5; Shioda ,-r 57).
Appellants argue that Shioda teaches how to respond (i.e., by
preventing access) when an unauthorized user attempts to access a system,
and that "responding to the unauthorized use of an ID is not equivalent to
prohibiting a user from modifying an aggregate report." App. Br. 30. The
Examiner finds Shioda teaches prohibiting another user from altering a
user's aggregate report because "[t]he claim language does not specify under
what conditions the [other] user is prohibited from altering the report," and
14
Appeal2014-007071
Application 12/625,044
because another user that is "not allowed access to data certainly cannot
modify the data." Ans. 45.
We agree with the Examiner and are unpersuaded by Appellants'
arguments, which are directed to the individual teachings of Fish and
Shioda, rather than to their combined teaching. Accordingly, we sustain the
Examiner's rejection of claim 30.
DECISION
The rejection of claim 20 under 35 U.S.C. § 101 is reversed.
The rejection of claims 11-15, 19, and 20-23 stand rejected under 35
U.S.C. § 102(b) as anticipated by Fish is affirmed.
The rejection of claims 16, 17, 24, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Fish and Sifry is affirmed.
The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable
over Fish and Willis is affirmed.
The rejection of claims 25 and 26 under 35 U.S.C. § 103(a) as
unpatentable over Fish and Brock is affirmed.
The rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable
over Fish and Sappington is affirmed.
The rejection of claim 29 under 35 U.S.C. § 103(a) as unpatentable
over Fish and Gemmell is affirmed.
The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable
over Fish and Shioda is affirmed.
15
Appeal2014-007071
Application 12/625,044
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
16