Ex Parte Lindberg et al

Patent Trial and Appeal Board

Sep 8, 2016

11770958 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111770,958 0612912007
10949 7590 09/12/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Phillip John Lindberg
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.
042933/406923 7196
EXAMINER
OHBA, MELLISSA M
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
09/12/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILLIP JOHN LINDBERG and
SAMI JOHANNES NIEMELA
Appeal2015-001788
Application 11/770,958
Technology Center 2100
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-001788
Application 11/770,958
STATE~v1ENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-9, 11-20, 22, and 23, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
THE INVENTION
The claims are directed to identifying commonalities between
contacts. Spec., Title.
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method comprising:
receiving selection of a plurality of items;
merging the selected items;
determining one or more common attributes of the merged
items by searching the merged items;
causing an indication of a type of each of the determined
one or more common attributes to be presented as one or more
selectable objects;
receiving selection of one or more of the selectable
objects; and
initiating an application operating on the merged items, the
application determined by the type represented by the one or
more selected selectable objects.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Farnham et al. ("Farnham") US 7,167,910 B2
Tam US 2007/0129112 Al
2
Jan.23,2007
June 7, 2007
Appeal2015-001788
Application 11/770,958
REJECTION
The Examiner rejected claims 1-9, 11-20, 22, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Farnham and Tam. Final Act. 2-17.
APPELLANTS' CONTENTIONS 1
1. Tam's grouping of contacts by work, family, etc .... are not
types of common attributes of contacts [but] are merely the
names of user-defined contact groups [designating]
relationship[s] between a user of the device and the contact
[that] do not represent types of attributes of contacts themselves
that the contacts have in common with one another [as
required by the independent claims].
Reply Br. 3.
2. Farnham merely describes searching a context map for a
specified research topic [by searching] individual references or
nodes appearing on the map of Farnham based on the search
criteria [but fails to] disclose "determ[ing] the one or more
common attributes based at least in part on the search criteria,"
as specified [by claim 9].
App. Br. 10.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
1 Additional arguments made by Appellants for the first time in the Reply
Brief are untimely and waived absent a showing of sufficient cause why
such argument was not earlier raised in the Appeal Brief. See 37 C.F.R.
§§ 41.37(c)(l)(iv) and 41.41(b)(2) (2013), Ex parte Borden, 93 USPQ2d
14 73, 14 7 4 (BP AI 2010) (informative) ("[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not.").
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Application 11/770,958
conclusions. \Ve 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 set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief and concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.
In connection with contention 1 Appellants contend the Examiner
relies on Tam rather than Farnham for disclosing types of common attributes
and Tam only groups contact rather than types of common attributes of
contacts. App. Br. 8-10. Therefore, according to Appellants, the
combination of Farnham and Tam fails to teach or suggest the disputed
limitation of "causing an indication of a type of each of the determined one
or more common attributes to be presented as one or more selectable
objects," as required by claim 1. Id.
The Examiner responds by finding no limiting definition of the
disputed term "common attribute" and, under a broad but reasonable
interpretation, the term "can be the relationship the contacts [of Farnham]
have to one another." Ans. 6. Likewise, the Examiner finds no limiting
description of the claimed "indication of a type of each of the determined
one or more common attributes." Id. Therefore, under a broad but
reasonable interpretation, the Examiner finds Farnham' s contacts teach
merging selected items based on similarity, i.e., common attributes, into
groups, i.e., the claimed types. Ans. 7. The Examiner further finds
Farnham deficient only in that it "does not ... explicitly teach that the
common attribute' [i.e., the similarity of contacts disclosed by Farnham] is
presented as a selected object type. Id. Thus, the Examiner applies Tam's
sorting and listing of contacts based on a "relationship type" for teaching
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Appeal2015-001788
Application 11/770,958
selectable objects types based on a common attribute and further finds
"Farnham also discloses that the displayed nodes on the social map are
selectable by graphically activating (i.e. 'clicking on['])." Ans. 7.
Appellants reply, arguing the Examiner's reliance on column 9, lines
1-27 of Farnham for disclosing causing an indication of a type of each of the
common attributes to be present as one or more selectable objects is
misplaced because the illustrated nodes "would . . . represent the types of
communications, such as email, instant message, char room, etc." Reply Br.
2. Appellants argue "the types in Tam are not types of common attributes of
contacts ... [but] are merely the names of user-defined contact groups."
Reply Br. 3. According to Appellants, "a relationship of work, family, or
friends is a relationship between a user of the device and the contact [but]
do not represent types of attributes of the contacts themselves that the
contacts have in common with one another." Reply Br. 3.
We find Appellants' arguments unpersuasive of Examiner error.
Contrary to Appellants' argument, contacts designated as, for example,
friends, are related to each other by having a common friend, i.e., the user of
the device, even if not necessarily friends themselves. That is, by being
designated as a friend or family, the contacts so grouped are related at least
by no more than two degrees of separation. In particular, as found by the
Examiner, Appellants' specification does not provide a definition for the
terms 'common attributes" or "an indication of a type" as recited by the
independent claims. Ans. 5. Therefore, under a broad but reasonable
interpretation, we agree Famham's grouping of contacts based on
similarities and display of selectable nodes associated with the groupings
teaches or suggests the disputed limitation of "causing an indication of a
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Appeal2015-001788
Application 11/770,958
type of each of the determined one or more common attributes to be
presented as one or more selectable objects." Ans. 7. We further agree
Tam's contact type groups teaches or suggests selectable objects having a
common attribute. Id. Therefore, we still further agree with the Examiner in
finding "the combination of F amham and [Tam] does disclose 'selectable'
indications." Id.
For the reasons discussed supra, Appellants' arguments in connection
with the rejection of the independent claims are unpersuasive of Examiner
error. Accordingly, we sustain the rejection of independent claims 1, 12, 16,
and 18 under 35U.S.C.§103(a) over Farnham and Tam together with the
rejection of dependent claims 2-8, 11, 13, 15, 17, 20, 22, and 23, which are
not separately argued.
In connection with contention 2 Appellants argue,
Farnham merely describes searching a context map for a
specified research topic (or other search term). The search
method therefore searches individual references or nodes
appearing on the map of Farnham based on the search criteria.
Farnham does not disclose, "determine the one or more common
attributes based at least in part on the search criteria, " as
specified in the claims.
App. Br. 10. The Examiner responds by finding,
Farnham does disclose clustering/merging contacts based on
similarity. Farnham then discloses that the contacts clusters
based on similarities are displayed on a social visualization map
referred to as a "connection map" wherein the user can search for
information in the connections map. The search produces a
result and "once an item is selected it will appear in the center of
the map, item similar to it will appear around it" (See column 8,
lines 65-67; column 9, lines 1-42). Therefore the search and
selection determines [an] item similar to the selection.
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Application 11/770,958
Ans. 12. Appellants do not reply to the Examiner's findings in response to
contention 2.
Appellants' contention 2 fails to address the Examiner's findings and,
therefore, is unpersuasive of error. In particular, Appellants nominally
traverse the Examiner's rejection of claim 9 by merely reciting the disputed
claim language, summarizing the Farnham disclosure, and asserting, without
further explanation or addressing the Examiner's specific findings, that the
Farnham disclosure fails to teach or suggest the limitations of claim 9. App.
Br. 10. In contrast, the Examiner has presented a reasonable explanation of
how Farnham's user can search for information so as to produce a result
such that the search and selection determines an item similar to the selection.
Ans. 12. The Examiner finds, under a broad but reasonable interpretation,
Farnham thereby teaches or suggests the disputed limitation of determining
common attributes based at least in part on the search criteria. Final Act. 7-
8. Therefore, based on the record before us and a preponderance of the
evidence, we find no reversible error and we sustain the Examiner's
rejection of dependent claims 9, 14, and 19.
DECISION
The Examiner's decision to reject claims 1-9, 11-20, 22, and 23 is
affirmed.
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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