Ex Parte Langos et al

Patent Trial and Appeal Board

Feb 27, 2017

13241792 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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.
13/241,792 09/23/2011 Geoffrey LANGOS JCE-5524-45 5346
96355 7590 03/01/2017
NIXON & VANDERHYE, P.C. / Vonage
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
ANDREWS, HO YET H
ART UNIT PAPER NUMBER
2411
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY LANGOS, TZAHI EFRATI, and
BARUCH STERMAN
Appeal 2015-007415
Application 13/241,792
Technology Center 2400
Before JAMES R. HUGHES, JOHN D. HAMANN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Decision rejecting claims 1—17, which constitute all the
claims pending in this application. See Final Act. 1—2; App. Br. 6.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 We refer to Appellants’ Specification (“Spec.”) (filed Sept. 23, 2011)
(claiming benefit of US 61/406,729 (filed Oct. 26, 2010)); Appeal Brief
(“App. Br,”) (filed Dec. 17, 2014); and Reply Brief (“Reply Br.”) (filed
Aug. 5, 2015). We also refer to the Examiner’s Answer (“Ans.”) (mailed
June 5, 2015) and Final Office Action (Final Rejection) (“Final Act.”)
(mailed Apr. 17, 2014).
Appeal 2015-007415
Application 13/241,792
Appellants ’ Invention
The invention at issue on appeal concerns systems and methods for
recommending a first social networking system member establish a link with
a second social networking system member based on matching
communications activity identifiers (associated with the first and second
members). Spec. Tflf 1—3, 78—80; Abstract.
Illustrative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A computer implemented method of recommending that a
first member of a social networking system establish a link with
another member of the social networking system, comprising:
reviewing, using at least one processor, a first member’s
communications activity on a telephony system, to create a list of
identifiers associated with the first member’s communications
activity, wherein the reviewing step comprises at least one of
reviewing transcriptions of recordings of the first member’s
telephone conversations, reviewing transcriptions of voicemail
messages that have been created for the first member, reviewing
text messages sent to the first member or received by the first
member, and reviewing email messages sent to the first member
or received by the first member,
determining, with at least one processor, if any individuals
or businesses associated with the identifiers on the list created in
the reviewing step are members of the social networking system;
and
recommending that the first member establish a link on the
social networking system with an individual or business
associated with an identifier on the list created during the
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Appeal 2015-007415
Application 13/241,792
reviewing step if the individual or business is also a member of
the social networking system.
Rejection on Appeal
The Examiner rejects claims 1—17 under 35 U.S.C. § 103(a) as being
unpatentable over Mendiola (US 2009/0235335 Al; published Sept. 17,
2009) (“Mendiola”), O’Donoghue et al. (WO 2009/045899 Al; published
April 9, 2009) (“O’Donoghue”), and Takagi et al. (US 2004/0137945 Al;
published July 15, 2004) (“Takagi”).
RELATED APPEALS
Appellants indicate that a Notice of Appeal was filed for a related
patent application, U.S. Patent Application No. 13/242,196, on July 28,
2014. App. Br. 3. The Examiner reopened prosecution (see Notice of Panel
Decision from Pre-Appeal Brief Review mailed February 18, 2015) and the
application subsequently was abandoned (see Notice of Abandonment
mailed November 18, 2016). Appellants also indicate that an Appeal Brief
was filed with the Board for a related patent application, U.S. Patent
Application No. 13/241,654, on Sept. 5, 2014. App. Br. 3. The appeal was
assigned Appeal No. 2015-004620. The Board issued a decision on Appeal
No. 2015-004620, mailed on Jan. 27, 2017. In that decision, the Board
affirmed the Examiner’s rejection of claims 1—25 on the grounds of non-
statutory obviousness-type double patenting over various claims in several
related patent applications.2 The Board reversed the Examiner’s prior art
2 In Appeal No. 2015-004620, the Examiner provisionally rejected:
(1) claims 1—7, 9, 11—20, 22, 24, and 25 over claims 1—6, 8—17, and 19-21
of co-pending application US 13/242,039; (2) claims 1—25 over claims 1—13
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Appeal 2015-007415
Application 13/241,792
rejections of claims 1—25. We further note that related patent application,
U.S. Patent Application No. 13/242,474 is also the subject of an Appeal to
the Board. The appeal has not yet been assigned an Appeal Number and the
Board has not issued a decision with respect to this appeal.
ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding that the combination of Mendiola,
O’Donoghue, and Takagi collectively would have taught or suggested
reviewing ... a first member’s communications activity
on a telephony system, to create a list of identifiers associated
with the first member’s communications activity, [including]. . .
at least one of reviewing transcriptions of recordings of the first
member’s telephone conversations, reviewing transcriptions of
voicemail messages that have been created for the first member,
reviewing text messages sent to the first member or received by
the first member, and reviewing email messages sent to the first
member or received by the first member
within the meaning of Appellants’ claim 1 and the commensurate limitations
of claims 9 and 10?
of co-pending application US 13/242,196; (3) claims 1—25 over claims 1—17
of co-pending application US 13/242,474; (4) claims 1—25 over claims 1—17
of this co-pending application US 13/241,792; and (5) claims 1—25 over
claims 1—19 of co-pending application US 13/242,141. Final Act. 2—5.
Application US 13/242,039 has issued as US Patent No. 8,923,498 B2.
Application US 13/242,141 has issued as US Patent No. 9,203,969 B2.
Application US 13/242,196 has been abandoned.
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Application 13/241,792
ANALYSIS
Appellants contend that Mendiola, O’Donoghue, and Takagi do not
teach the disputed features of claim 1. App. Br. 6—11; Reply Br. \-A.
Specifically, Appellants contend that “Takagi fails to disclose or suggest
generating transcriptions of telephone conversations, or reviewing such
transcriptions to identity telephone numbers or other telephony device
identifiers which appear in the transcriptions.” App. Br. 10.
Appellants persuade us of error in the obviousness rejection of claim
1. The Examiner, in the Final Office Action, explicitly states that Mendiola
and O’Donoghue, alone or in combination, do not teach the disputed
reviewing step — “[t]he combination [of] Mendiola and O’Donoghue is
silent about. . . reviewing transcriptions . . . reviewing text messages . . .
and reviewing email messages.” Final Act. 9. The Examiner relies on
Takagi to teach reviewing transcriptions, text messages, and/or email
messages. App. Br. 10—12; Ans. 25—26 (citing Takagi Tflf 15, 27—30, 59).
We have reviewed the sections of Takagi cited by the Examiner. While
Takagi generally describes recording telephone call voice data and storing
the recorded data (Abstract; || 15; 59; Figs. 6—9) and reading out identifiers
associated with a caller (| 15), nothing in the cited portions of Takagi
describe transcription. Takagi not only fails to describe transcription, it also
fails to describe reading any identifiers out of the recorded telephone voice
data. Indeed, Takagi explicitly describes information identifying a caller
(opposite party) (Fig. 6, element 602) is read out of an identifier field (Fig.
9, element 901). See Takagi Fig. 6, element 602 and Fig. 9, element 901.
We agree with Appellants (App. Br. 9—10; Reply Br. 2—3) that the Examiner
does not establish the cited sections of Takagi (App. Br. 10-12; Ans. 25—26
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Application 13/241,792
(citing Takagi 15, 27—30, 59)) describe transcribing telephone voice data
or reviewing transcripts, text messages, and/or reviewing email messages.
Nor, does the Examiner sufficiently explain how the combination of Takagi,
Mendiola, and O’Donoghue would teach or suggest such review.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Mendiola, O’Donoghue, and Takagi teach the
disputed limitations of Appellants’ claim 1. Independent claims 9 and 10
include limitations of commensurate scope. Claims 2—8 and 11—17 depend
on claims 1 and 10, respectively. Accordingly, we reverse the Examiner’s
obviousness rejection of claims 1—17.
CONCLUSION
Appellants have shown that the Examiner erred in rejecting claims 1—
17 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejection of claims 1—17.
REVERSED
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