Ex Parte Perry et alDownload PDFPatent Trial and Appeal BoardJun 23, 201714063874 (P.T.A.B. Jun. 23, 2017) Copy Citation 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. 14/063,874 10/25/2013 Ethan L. Perry RSW920130002US2 7715 58139 7590 IBM CORP. (WSM) c/o WINSTEAD P.C. P.O. BOX 131851 DALLAS, TX 75313 06/27/2017 EXAMINER DUONG, OANH ART UNIT PAPER NUMBER 2441 NOTIFICATION DATE DELIVERY MODE 06/27/2017 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): patdocket@winstead.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ETHAN L. PERRY, JOSEF SCHERPA, and ANDREW L. SCHIRMER (Applicant: International Business Machines Corporation) Appeal 2017-001726 Application 14/063,874 Technology Center 2400 Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, 5—7, and 9, all claims pending in the current application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2017-001726 Application 14/063,874 STATEMENT OF THE CASE Appellants’ invention is directed to adjusting the display of social media updates to varying degrees of richness based on environmental conditions and the importance of the update. Spec. 12. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method for adjusting a display of social media updates to varying degrees of richness, the method comprising: receiving a social media update; identifying one of n possible levels of importance of said social media update, wherein said n is a positive integer number, wherein the identified level of importance of the social media update is based on attributes of the social media update, wherein the attributes comprise the following: a person in a social network of a user, a tag the user is following and a file created by the user; determining a current condition of a user’s environment; and displaying, by a processor, said social media update in a social networking feed with a particular degree of richness at a particular location based on said identified level of importance of said social media update and said current condition of said user’s environment. REJECTIONS Claims 1, 2, 5—7, and 9 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of commonly-owned copending Application No. 13/740,565. 2 Appeal 2017-001726 Application 14/063,874 Claims 1, 2 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Gradin et al. (US 8,560,554 B2; issued Oct. 15, 2013) (“Gradin”) and Amidon et al. (US 7,693,906 Bl; issued Apr. 6, 2010) (“Amidon”). Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Gradin, Amidon, and Horvitz et al. (US 7,743,340 B2; issued June 22, 2010) (“Horvitz”). Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Gradin, Amidon, and Spivack et al. (US 2012/0272160 Al; published Oct. 25, 2012) (“Spivack”). Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Gradin, Amidon, and Kawakami et al. (US 2010/0100904 Al; published Apr. 22, 2010) (“Kawakami”).1 ANALYSIS Double Patenting Rejections Appellants present no arguments pertaining to the Examiner’s provisional nonstatutory double patenting rejections. Accordingly, we summarily sustain these rejections. See Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed., Rev. 11.2013 (Nov. 2015) (“If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it”); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue—or more broadly, on a particular rejection— 1 In the Answer, the Examiner withdrew this rejection. Ans. 7. 3 Appeal 2017-001726 Application 14/063,874 the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). Obviousness Rejections Claim 1 Issue 1: Did the Examiner err in finding the combination of Gradin and Amidon teaches or suggests “identifying one of n possible levels of importance of said social media update, wherein said n is a positive integer number, wherein the identified level of importance of the social media update is based on attributes of the social media update, wherein the attributes comprise the following: a person in a social network of a user, a tag the user is following and a file created by the user,” as recited in independent claim 1? Appellants argue “Amidon simply teaches assigning levels of importance to tags. There is no discussion in Amidon regarding assigning one of n possible levels of importance of a social media update.” App. Br. 5. Appellants additionally argue “there is no discussion in Gradin regarding n possible levels of importance of the feed tracked update.” Id. at 6. Appellants further argue [tjhere is no discussion in Amidon regarding identifying a level of importance of a social media update, let alone, identifying a level of importance of a social media update, where the identified level of importance is based on attributes of the social media update, where the attributes comprise a tag the user is following and a file created by the user. Id. We are not persuaded. Appellants’ arguments attack Gradin and Amidon individually, but do not substantively address the combined 4 Appeal 2017-001726 Application 14/063,874 teachings of the references, as relied upon by the Examiner. See Final Act. 5—6; Ans. 3—4, 8—9. That is, Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and, therefore, are ineffective to rebut the Examiner’s findings. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Gradin generally describes selecting updates to publish on an information feed using importance weights. Abstract. Specifically, Gradin teaches “the feed items with the highest importance level can be displayed first. The highest importance level being determined by one or more criteria, such as, who posted the feed item, how recently, how related to other feed items, etc.” Gradin col. 45,11. 37-41. Gradin further teaches generating an importance weight by identified actions on the record, such as creation of the record. Gradin col. 55,11. 45 46. Amidon generally describes associating tags with files, and assigning a level of importance to each tag. Amidon Abstract. Amidon states “[a]ny number of schemes, in fact, may be utilized to distinguish the importance or relevance of one tag to another. The media management application 14, for example, may use n- tiers of levels of importance, with n representing an integer number.” Amidon col. 4,11. 58—62. The Examiner thereby modifies the teachings of Gradin to utilize the n-levels of importance as taught by Amidon, where the identified level of importance is based on attributes of a tag and a file. Final Act. 5—6; Ans. 3—4, 8—9. The Examiner finds, and we agree, that Gradin “refers to multiple levels of importance” (Ans. 4), but “Gradin does not explicitly disclose n, a positive integer number, possible levels of importance'1'’ {id. at 8). We agree 5 Appeal 2017-001726 Application 14/063,874 with the Examiner that the 3-tier hierarchical scheme, such as high, medium, and low, importance described in Amidon teaches “one of n possible levels of importance.” See Ans. 4, 8. Moreover, Amidon explicitly teaches that n is an integer. Amidon col. 4,11. 61—62. Appellants do not persuasively address the Examiner’s conclusion that the disputed limitation would have been obvious in light of the combination of the teachings in Gradin and Amidon. Accordingly, we are not persuaded the Examiner erred. Appellants further argue Gradin does not teach or suggest “where the attributes comprise a person in a social network of a user,” [and] “a tag the user is following.” Reply Br. 3—5. Appellants argue “[t]he Examiner has not shown that the person who posted the feed item is necessarily a person in a social network of a user.” Id. at 3. In addition, Appellants argue Gradin does not teach “tag the user is following” because “[t]he name of an account, as discussed . . . [in] Gradin, is not a link that people can follow to learn more,” and accordingly is not a “tag.” Id. at 4. We are not persuaded. As described above, Gradin teaches the importance level may be determined by one or more criteria, such as, who posted the feed item. Gradin col. 45,11. 37-41. In Gradin, users may follow other users, groups, and records. Gradin col. 26,11. 20-25; col. 34,11. 42-43. We, therefore, agree with the Examiner (Final Act. 4, Ans. 8—9) that Gradin teaches or suggests “a person in a social network of a user.” Further, even if Appellants are correct that Gradin does not teach a “tag the user is following,” Amidon teaches tags associated with files. Amidon Abstract, col. 5,11. 24—31 ; see Final Act. 5. We, therefore, agree with the Examiner (Final Act. 5) that the combination of Gradin and Amidon teaches or suggests a “tag the user is following.” 6 Appeal 2017-001726 Application 14/063,874 Issue 2\ Did the Examiner err in combining Gradin and Amidon? Appellants argue the Examiner has not provided a rational connection between the cited passage in Amidon (column 4, lines 58—60) and the missing claim limitations. App. Br. 8. Appellants argue [t]he Examiner’s rationale (‘to distinguish the importance or relevance of one item to another’) does not provide any reasons as to why one skilled in the art would modify Gradin (which addresses the need to know the activity of other users of a database system in the cloud or other network). Id. at 9. We are not persuaded by Appellants’ arguments. A proper conclusion of obviousness relies, as Appellants acknowledge (App. Br. 7), on whether the Examiner can articulate “reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). In any determination of obviousness “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. The Examiner finds “[o]ne would be motivated to [modify the teachings of Gradin with the teachings of Amidon] to distinguish the importance or relevance of one item to another (i.e., Amidon, col. 4, lines 58—60).” Final Act. 5—6. Therefore, contrary to Appellants’ arguments, the Examiner has provided a reason for combining Gradin and Amidon. Moreover, the combination entails no more than “[t]he combination of familiar elements according to known methods [that] is likely to be obvious when it does no more than yield predictable results”—a combination that is a predictable variation that can be implemented by a 7 Appeal 2017-001726 Application 14/063,874 person of ordinary skill. KSR, 550 U.S. at 416-417. The Examiner has provided sufficient reasoning to combine the references, and Appellants have not provided persuasive evidence to the contrary. Appellants further argue “Gradin already teaches the aspect of distinguishing the importance of one item from another.” App. Br. 9. However, whether Gradin already teaches distinguishing the importance of one item from another is irrelevant to our obviousness analysis. Inventions may always be improved upon. Rather, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Keller, 642 F.2d at 425. Because we are not persuaded the Examiner erred, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1. Appellants present the same arguments with respect to dependent claims 2 and 9 (App. Br. 7), so we likewise sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims 2 and 9 for the same reasons. Claim 5 Issue 3: Did the Examiner err in finding the combination of Gradin, Amidon, and Horvitz teaches or suggests “wherein said current condition of said user’s environment comprises the following: a current workload of the user, a current time and a current date,” as recited in dependent claim 5? Appellants argue: There is no language in the cited passages [of Horvitz] that teaches displaying the social media update in a social networking feed with a particular degree of richness at a particular location based on the identified level of importance of the social media update and the current condition of the user’s environment. Instead, Horvitz teaches providing 8 Appeal 2017-001726 Application 14/063,874 computer users with efficient access to electronic notifications (e.g., e-mail, scheduling notifications, instant message notifications, electronic reminders, voice messages, automated help or troubleshooting advice notifications . . . while minimizing disruption in the context of ongoing tasks. App. Br. 12; see Reply Br. 7. Appellants further argue “the teachings of Horvitz only focus on shortening or lengthening the dwell time of the herald,” and Horvitz simply teaches that if a user has been working in an application window within an ‘active time horizon,’ and if the user is currently active in the window or has been active within that horizon, incoming visual heralds are positioned in a predefined or pre-set position within the window (e.g., the lower, right-hand comer). App. Br. 13; see Reply Br. 8. According to Appellants, “[determining whether a user is working in an application window within such a period of time is not related to a current date.” App. Br. 13; see Reply Br. 8. We are not persuaded by Appellants’ arguments. Initially, we note many of the claim limitations argued by Appellants are recited in claim 1, not in claim 5. The Examiner does not rely on Horvitz to teach the limitations in claim 1. As described above, the Examiner relies on Gradin and Amidon to teach or suggest the limitations in claim 1. Horvitz teaches considering the importance or urgency of content and a user’s current and/or recent activities in decisions about the rendering of the information herald on a display screen. Horvitz Abstract; col. 3,11. 3—22. We agree with the Examiner (Final Act. 7, Ans. 10) that Horvitz’s teaching of considering a user’s current and/or recent activities teaches or suggests “a current workload of the user, a current time and a current date.” 9 Appeal 2017-001726 Application 14/063,874 Issue 4\ Did the Examiner err in combining Gradin, Amidon, and Horvitz? Appellants argue the Examiner has not provided a rational connection between the cited passage in Horvitz and the missing claim limitations. App. Br. 15. Appellants argue [t]he Examiner’s rationale (‘provide the ease and efficacy at which a user will be able to see or have access to the information while at the same time minimizing information overload’) does not provide any reasons as to why one skilled in the art would modify Gradin (which addresses the need to know the activity of other users of a database system in the cloud or other network). Id. at 16. We are not persuaded by Appellants’ arguments for the same reasons as set forth supra with respect to Issue 2. The Examiner finds [o]ne would be motivated to [modify the teachings of Gradin and Amidon with the teachings of Horvitz] to provide the ease and efficacy at which a user will be able to see or have access to the information while at the same time minimizing information overload (i.e., Horvitz, col. 2 lines 29—34). Final Act. 7; see also Ans. 11—12. Therefore, contrary to Appellants’ arguments, the Examiner has provided a reason for combining Horvitz, Gradin and Amidon. Moreover, the combination is no more than “[t]he combination of familiar elements according to known methods [that] is likely to be obvious when it does no more than yield predictable results,”—a predictable variation that can be implemented by a person of ordinary skill. KSR, 550 U.S. at 416-417. We find the Examiner has provided sufficient motivation to combine the references and Appellants have not provided persuasive evidence to the contrary. 10 Appeal 2017-001726 Application 14/063,874 Appellants further argue “Gradin already considers the ease and efficacy at which a user will be able to see or have access to the information while at the same time minimizing information overload.” App. Br. 17; see Reply Br. 9. However, whether Gradin already teaches this is irrelevant to our obviousness analysis. Inventions may always be improved upon. Rather, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Keller, 642 F.2d at 425. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of dependent claim 5. Claim 6 Issue 5: Did the Examiner err in finding the combination of Gradin, Amidon, and Spivack teaches or suggests “updating a degree of richness of social media updates in real time based on interactions with said social networking feed by said user,” as recited in dependent claim 6? Appellants argue “Spivack only teaches that the visibility of those incoming messages [that] are more interesting to the user is increased,” and not “updating a degree of richness of social media,” as claimed. App. Br. 19. According to Appellants, “richness” refers to the “level of detail of the display.” Id. at 19, citing Spec. 140; see Reply Br. 10—11. Appellants argue “[t]he Examiner has not shown that increasing the visibility, as taught in Spivack, refers to increasing the level of detail of the display.” App. Br. 19. The Examiner finds Spivack’s visibility of incoming messages corresponds to the claimed richness of social media updates. Final Act. 7—8; 11 Appeal 2017-001726 Application 14/063,874 Ans. 12—13. Alternatively, the Examiner finds Gradin teaches updating a degree of richness of social media. Ans. 13, citing Gradin, col. 4,11. 16—22. Gradin states: For example, some of the disclosed implementations are configured to differentiate more important/higher value updates from others by applying one or more criteria in the form of rules. In this way, a richer view of relevant updates, with more detail, can be provided in the feed without a user having to distinguish among numerous updates and click through or otherwise drill down into the feed to view updates of interest. Gradin, col. 4,11. 16—22, emphasis added. We agree with the Examiner that Gradin teaches updating a degree of richness of social media updates. Accordingly, we are not persuaded the Examiner erred. Issue 6: Did the Examiner err in combining Gradin, Amidon, and Spivack? Appellants argue the Examiner has not provided a rational connection between the cited passage in Spivack and the missing claim limitations. App. Br. 23; see Reply Br. 12. Appellants argue [t]he Examiner’s rationale (“so to allow messages to be presented in a personalized manner based on the user interests or preferences”) does not provide any reasons as to why one skilled in the art would modify Gradin (which addresses the need to know the activity of other users of a database system in the cloud or other network). App. Br. 24; see Reply Br. 13. We are not persuaded by Appellants’ arguments for the same reasons as set forth supra with respect to Issue 2. The Examiner finds “[o]ne would be motivated to [modify the teachings of Gradin and Amidon with the 12 Appeal 2017-001726 Application 14/063,874 teachings of Spivack] to allow messages to be presented in a personalized manner based on the user interests or preferences (i.e., Spivack, page 8 paragraph [0123]).” Final Act. 8; see also Ans. 13—14. Therefore, contrary to Appellants’ arguments, the Examiner has provided a reason for combining Gradin, Amidon, and Spivack. Moreover, the combination is no more than “[t]he combination of familiar elements according to known methods [that] is likely to be obvious when it does no more than yield predictable results,”—a predictable variation that can be implemented by a person of ordinary skill. KSR, 550 U.S. at 416-417. We find the Examiner has provided sufficient motivation to combine the references and Appellants have not provided persuasive evidence to the contrary. Appellants further argue “Gradin appears to already teach the Examiner’s reason for modifying Gradin.” App. Br. 24; see Reply Br. 13. However, whether Gradin already teaches this is irrelevant to our obviousness analysis. Inventions may always be improved upon. Rather, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Keller, 642 F.2d at 425. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of dependent claim 6. DECISION The Examiner’s nonstatutory double patenting rejections of claims 1, 2, 5, 6, 7, and 9 are affirmed. The Examiner’s 35 U.S.C. § 103(a) rejections of claims 1, 2, 5, 6, and 9 are affirmed. 13 Appeal 2017-001726 Application 14/063,874 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 14 Copy with citationCopy as parenthetical citation