Ex Parte Nurminen et al

Patent Trial and Appeal Board

Jul 25, 2013

10870205 (P.T.A.B. Jul. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUKKA K. NURMINEN, BALAZS BAKOS, and
LORANT FARKAS
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Appeal 2011-003210
Application 10/870,205
Technology Center 2100
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Before JASON V. MORGAN, ERIC B. CHEN, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003210
Application 10/870,205

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–5, 9–31, 34–55, and 59–102. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Illustrative Claim
The claimed subject matter relates to searching that employs a user’s
social network (Abs.).
Claim 1 is illustrative and is reproduced below with the disputed
limitation emphasized:
1. A method comprising:
causing, at least in part, actions that result in reception of,
at a user node from a originating node, a search query, wherein
the search query specifies search criteria that include one or
more evaluations by other entities of one corresponding
entity;
searching, at the user node, for one or more profiles
matching the search criteria among one or more held profiles
corresponding to entities;
consulting, at the user node, a depth indicator associated
with the search query;
causing, at least in part, actions that result in forwarding,
from the user node, the search query to one or more user nodes
corresponding to one or more of the matching profiles and
within a depth of a social network of a user of the user node
according to the depth indicator; and
causing, at least in part, actions that result in dispatching
at least part of a profile matching the search criteria to the
originating node of the search query,
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wherein the one or more user nodes have at least one
matching profile based upon one or more averaged evaluations
by the other entities of the corresponding entities,
likelihood of the originating node of the search query
receiving at least part of a profile corresponding to an entity is
dependent upon one or more evaluations by other entities of the
entity, and
the originating node of the search query is provided with
an evaluation of an entity corresponding to the profile of which
at least part is dispatched.

Rejections
Claims 1–5, 9–31, 34–55, and 59–102 stand rejected under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written-description
requirement (Ans. 3–4).1

Issue
Whether the Examiner erred in finding the limitation that “the search
query specifies search criteria that include one or more evaluations by other
entities of one corresponding entity,” recited in independent claims 1, 27, 51,
77, 101, and 102, is not adequately described in the Specification to satisfy
the written-description requirement of 35 U.S.C. § 112, first paragraph.

ANALYSIS
We have reviewed Appellants’ arguments in the Appeal Brief and
Reply Brief, and have reviewed the Examiner’s response to Appellants’
arguments.

1 The Appeal Brief also addresses rejections under 35 U.S.C. § 103(a), but
those rejections have been withdrawn by the Examiner (Ans. 3) and are
therefore not before us.
Appeal 2011-003210
Application 10/870,205

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In response to the Examiner’s finding that the disputed limitation is
not supported by the Specification (Ans. 4), Appellants identify specific
passages of the written description at p. 15, l. 22 – p. 16, l. 18 and p. 17, l. 19
– p. 18, l. 18, as well as original claim 7 (App. Br. 12–15). The identified
passages form part of a discussion in the Specification of “Evaluation
Functionality” that describes implementations of various embodiments in
which “evaluations, rankings, and/or the like might be provided for one or
more indicated individuals, businesses, and/or the like identified as
satisfying a search request” (Spec., p. 13, ll. 15–17).
The inquiry of whether the disclosure complies with the written
description requirement is a question of fact:
[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject
matter as of the filing date.
. . . [T]he test requires an objective inquiry into the four
corners of the specification from the perspective of a person of
ordinary skill in the art. Based on that inquiry, the specification
must describe an invention understandable to that skilled artisan
and show that the inventor actually invented the claimed
invention.

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (citations omitted).

In each instance, we find that the portion of the Specification
identified by Appellants fails sufficiently to link the described evaluations to
search criteria specified by the search query. Instead, the Specification
describes the use of evaluations separate from the search query itself.
The first passage identified by Appellants describes using evaluations
so that “search requests would have a higher probability of yielding highly-
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regarded individuals, businesses, and/or the like than less highly-regarded
individuals, businesses, and/or the like” (Spec., p. 16, ll. 5–7). But the
passage does not describe incorporating such evaluations in the search
criteria specified by the search query. Rather, an example is provided in
which “each … profile being considered as responsive to the search request
might be assigned a value determined by the extent to which it was highly
regarded according to evaluations, rankings, and/or the like” (Spec., p. 16, ll.
14–16, emphasis added). Such use of evaluations on results of the search
request does not reasonably convey including evaluations in the search
criteria specified by the search query to one of skill in the art.
The second passage identified by Appellants describes “forwarding a
received search request to one or more nodes,” particularly to those nodes
“viewed with a certain regard … with respect to the characteristics and/or
the like specified, sought, and/or the like by the search request” in
accordance with evaluations (Spec., p. 18, ll. 12–17). While this description
discloses using evaluations to determine to which node(s) to forward the
search request, such a determination is made based on other characteristics
specified by the search criteria. It does not reasonably convey including the
evaluations in the search criteria specified by the search query itself to one
of skill in the art.
Similarly, original claim 7’s recitation of “wherein likelihood of an
originator of the search query receiving at least part of a profile
corresponding to a particular entity is dependent upon one or more
evaluations of the particular entity” discloses use of the evaluations separate
from their inclusion in the search criteria specified by the search query.
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On the record before us, we are therefore not persuaded the Examiner
has erred and accordingly sustain the rejections of independent claims 1, 27,
51, 77, 101, and 102, as well as the claims that depend therefrom.

DECISION
The Examiner’s decision rejecting claims 1–5, 9–31, 34–55, and 59–
102 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)(1)(iv).

AFFIRMED

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