Ex Parte Nikolayev et al

Patent Trial and Appeal Board

Feb 22, 2016

12145068 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/145,068 06/24/2008 Ilya Nikolayev
33649 7590 02/22/2016
Mr. Christopher John Rourk
Jackson Walker LLP
2323 ROSS A VENUE
SUITE 600
DALLAS, TX 75201
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.
133036.00001 2686
EXAMINER
GOLDBERG, ANDREW C
ART UNIT PAPER NUMBER
2498
MAILDATE DELIVERY MODE
02/22/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IL YA NIKOLAYEV and ANDREW MERKATZ
Appeal2014-006465
Application 12/145,068
Technology Center 2400
Before CARL W. WHITEHEAD JR., JOHN P. PINKERTON, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
Appellants requested an oral hearing on May 12, 2014. After a careful
review of the record in this case, we have determined that a hearing is not
necessary. See 37 C.F.R. § 41.47(f).
We reverse.
1 According to Appellants, the real party in interest is LiveFamily,
Incorporated. App. Br. 2.
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Application 12/145,068
THE INVENTION
Appellants' invention relates to "a genealogy system and method for
interfacing with one or more social networks." Spec. ,-r 3. Because systems
for managing genealogy data are dedicated systems, they do not provide
much functionality for interfacing with other systems. See Abstract. Any
data that is provided to the genealogy systems must be input from other
sources manually, and those sources must be manually identified and
searched. Id. Accordingly, a user whose task is to compile a family tree
must do so manually. Id. Appellants' invention allows the genealogy
application to interface with social networks and use them as sources of data.
Spec. ,-r 18. The system can also invite relatives to the genealogy
application. See Abstract.
Independent claim 1, which is illustrative, is reproduced below.
1. A system for managing genealogy data comprising:
a genealogy application operating on a processor and
operable to store genealogy account identification data for a first
genealogy account;
a social network interface operating on a processor and
operable to receive data from the first genealogy account and to
provide data from the social network to the genealogy
application; and
a relative invitation system operating on a processor and
operable to identify a genealogical relative from the social
network data without input from a user, to present the
genealogical relative to the user for approval to be invited to form
an association with a genealogical data structure, and to generate
an invitation to the genealogical relative to allow the
genealogical relative to be automatically added to the
genealogical data structure.
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Application 12/145,068
REFERENCES and REJECTIONS
1. Claims 1-9, 15-19, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wong (US 2007/0266003 Al, pub. Nov. 15,
2007) and Appelman (US 2005/0216300 Al, pub. Sept. 29, 2005).
2. Claims 10-13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wong and Dunn (US 7,912,971 Bl, iss. Mar. 22, 2011).
3. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wong, Dunn, and Appelman.
ANALYSIS
I. Claim 1
Appellants argue Wong teaches that "it is the individual nodes in the
family tree of Wong that are linked as an online social network." App. Br.
6. "Wong is therefore clear that there is no social network interface that
receives data from a genealogy account and that provides data from the
social network to the genealogy application .... " App. Br. 6.
The Examiner finds:
that a genealogy "application" without further explanation can
be as simple as a web browser that runs the social networking
site on the computer. The social network aspect is merely the
backend information that the users access via the browser.
Furthermore, Appelman discloses a non-browser application
interacting with the backend (par. 0029, 0039) which is cited
below with respect to claim 4.
Ans. 3. The Examiner also finds that Wong teaches the disputed limitation
by disclosing that living members of the family tree are permitted to access
and modify the family tree via the online social network. Final Act. 4 (citing
Wong i17).
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We are persuaded by Appellants' argument. Claim 1 recites "a social
network interface ... operable ... to provide data from the social network to
the genealogy application." App. Br. 15 (Claims App.). As such, the social
network is the source of data with which the family tree is populated. Wong
discloses "a method of constructing a family tree whereby individual nodes
in the family tree are linked as an online social network." Wong i-f 7; see
also Wong i-f 18 ("the nodes in the family tree thereby forming a social
network"). Wong further discloses "permitting the living members of the
family tree to access and modify the family tree via the online social
network." Wong i-f 7. Thus, we agree with Appellants that Wong does not
teach a social network interface that provides data from the social network to
the genealogy application. Instead, the information is input by members of
the family tree, which forms the social network itself.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and of claims 2-9, which depend from claim 1.
II. Claim 15
Independent claim 15 recites "electronically receiving relative data
from a first social network." App. Br. 17 (Claim App.). Appellants argue
Wong discloses that the individual nodes in the family tree of Wong are
linked as an online social network, and there is no genealogy application.
App. Br. 9. The Examiner finds Wong teaches this limitation by disclosing
that "each node in the family tree representing a relative in the family tree,
edit the family tree, communicate with other nodes in the same family tree
as well as other nodes outside the family tree." Final Act. 11 (quoting Wong
i-f 16). The Examiner further responds to Appellants' arguments by referring
to the response to Appellants' arguments with respect to claim 1. Ans. 10.
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We are persuaded by Appellants' arguments. As explained above,
Wong discloses that the nodes in the family tree form a social network
(Wong i-f 18), and that "living members of the family tree [are permitted] to
access and modify the family tree via the online social network" (Wong i-f 7).
Moreover, Wong discloses that "individuals can build their family tree by
adding nodes, each node in the family tree representing a relative in the
family tree, ... send invitations, accept invitations .... " Wong. i-f 16.
Therefore, the relative data is not received from the social network, but
rather by the users of the family tree itself.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 15 and of claims 16-19, 21, and 22, which depend from
claim 15.
III. Claim 10
Claim 10 recites "means for receiving the genealogy account data and
providing user account data from a first social network to the genealogy
application." App. Br. 16 (Claim App.). Appellants argue this limitation "is
presented in means plus function format to invoke the provisions of 35
U.S.C. [§] 112, sixth paragraph." App. Br. 12. As such, Appellants argue
"Federal Circuit precedent requires in 'a means-plus-function claim in which
the disclosed structure is a computer, or microprocessor, programmed to
carry out an algorithm, the disclosed structure is not the general purpose
computer, but rather the special purpose computer programmed to
perform the disclosed algorithm."' App. Br. 12 (citing WMS Gaming, Inc.
v. Int'! Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)). According to
Appellants:
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the spec1ncation clearly llnKs the functions of receiving the
genealogy account data and providing user account data from a
first social network to the genealogy application at 502 through
518 of Figure 5 and the associated description at page 16, line 20
to page 18, line 27, which describe an algorithm for selecting a
genealogy application, receiving the genealogy account data and
providing user account data from a first social network to the
genealogy application.
App. Br. 12-13. Appellants argue "the Office has failed to identify any
corresponding structure in Wong or Dunn, and instead argues that a
computer is the corresponding structure, which is legal error" (App. Br. 12),
and that "neither Wong nor Dunn disclose any such algorithms, and the
Office has not identified any such algorithms" (App. Br. 13).
The Examiner finds Wong teaches "means for receiving the
genealogy account data" by disclosing that a "user may first construct via
external file." Final Act. 16. The Examiner finds "the structure is merely
interpreted as a general purpose processor ... which is inherent in
physical computing systems." Id. In the Answer, the Examiner states "the
examiner notes that algorithms are not structures. Elements 502 and 518 are
functional blocks and do not disclose the actual structure performing the
steps. Therefore the office maintains its interpretation." Ans. 14.
We are persuaded by Appellants' argument. First, we agree that the
disputed limitation is written in means-plus-function format and invokes 35
U.S.C. § 112(f). Second, we agree that Federal Circuit case law requires
that when the specification discloses a processor as corresponding structure,
the disclosed structure is not just the processor, but also the algorithm
performed by the processor in implementing the function. See WMS
Gaming, 184 F.3d at 1348--49; see also EON Corp. IP Holdings LLC v.
AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015) ("It is well-
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Application 12/145,068
established that the corresponding structure for a function performed by a
software algorithm is the algorithm itself."). As such, when making the
patentability determination, the Examiner is required to identify structure
that is the same as or equivalent to the structure which has been identified as
corresponding to the claimed means-plus-function. See In re Donaldson
Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) ("[T]he PTO may not
disregard the structure disclosed in the specification corresponding to such
language when rendering a patentability determination"); see also Manual of
Patent Examining Procedure (MPEP) § 2182 (9th Ed., Mar. 2014):
[I]f a prior art reference only teaches identity of function to that
specified in a claim, then an examiner carries the initial burden
of proof for showing that the prior art structure or step is the same
as or equivalent to the structure, material, or acts described in the
specification ....
(Emphasis added). This is true even in the case where the corresponding
structure is a processor programmed to carry out an algorithm. See In re
Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011).
Though the Examiner identifies a general purpose processor of Wong
as corresponding structure, the Examiner does not identify an associated
algorithm in Wong or sufficiently explain how the disclosure of Wong
would provide a teaching of an equivalent structure. Therefore, constrained
by the record at hand, we are persuaded the Examiner erred. We, therefore,
do not sustain the rejection of claim 10 and of claims 11-14, which depend
from claim 10.
DECISION
The Examiner's rejection of claims 1-19, 21, and 22 is reversed.
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REVERSED
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