Ex Parte Perry et al

Patent Trial and Appeal Board

Jun 23, 2017

14063874 (P.T.A.B. Jun. 23, 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.
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