Ex Parte PetersenDownload PDFPatent Trial and Appeal BoardAug 25, 201612764148 (P.T.A.B. Aug. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121764,148 04/21/2010 Steven L. Petersen 71739 7590 08/29/2016 Concert Technology Corporation 20 Depot Street Suite 2A Peterborough, NH 03458 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. CT-SOC-008/US (P442) 6842 EXAMINER SENSENIG, SHAUN D ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 08/29/2016 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): uspto.correspondence@sceneralabs.com uspto _alert@concerttechnology.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN L. PETERSEN Appeal2014-004167 1 Application 12/764,1482 Technology Center 3600 Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellant's Appeal Brief ("App. Br.," filed Sept. 20, 2013) and Reply Brief ("Reply Br.," filed Feb. 18, 2014), and the Examiner's Answer ("Ans.," mailed Dec. 17, 2013) and Final Office Action ("Final Act.," mailed Apr. 12, 2013). 2 Appellant identifies Waldeck Technology, LLC as the real party in interest. App. Br. 3. Appeal2014-004167 Application 12/764,148 CLAIMED INVENTION Appellant's claimed invention "relates to creating new social connections between users in a social network." Spec. ,-r 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A computer-implemented method comprising: detecting when a current crowd of a first user matches an active interest of the first user, the current crowd comprising the first user and a plurality of other users; narrowcasting a beacon to mobile devices of at least a subset of the plurality of other users in response to detecting that the current crowd of the first user matches the active interest of the first user; receiving a response to the beacon from a mobile device of a second user from the plurality of other users in the current crowd of the first user; and creating a new social connection between the first user and the second user upon receiving the response to the beacon from the mobile device of the second user. REJECTIONS Claims 8-17 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Claim 8-20 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter that Appellant regards as the invention. Claims 1-5, 7, and 18-23 are rejected under 35 U.S.C. § 102(b) as anticipated by Nathan Eagle, MIT Media Lab: Reality Mining, retrieved 2 Appeal2014-004167 Application 12/764,148 from http://reality.media.mit.edu/serendipity.php (June 12, 2009) (hereinafter, "Reality Mining"). 3 Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Reality Mining and McNamara (US 2006/0036457 Al, pub. Feb. 16, 2006). Claims 8-16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Reality Mining and Jones (US 2009/0106040 Al, pub. Apr. 23, 2009). Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Reality Mining, Jones, and McNamara. ANALYSIS Enablement Claim 8 depends from claim 7, and claim 7 depends from claim 1. Claim 7 further recites that "the beacon is a one-way beacon," and "creating the new social connection comprises adding a new social connection between the first user and the second user." And claim 8 further recites the step of making a determination to recommend a two way social connection between the user and the second user based on an analysis of the new tentative social connection between the first user and the second user and one or more additional tentative social connections between [the] first user and the second user that were previously added. The test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficiently complete to enable a person of ordinary skill in the art to make and use the claimed invention without undue 3 We treat as inadvertent error the omission of claim 7 among the claims identified as subject to rejection under 35 U.S.C. § 102(b). Final Act. 4. Claim 7 is substantively addressed in the body of the rejection. Id. at 5. 3 Appeal2014-004167 Application 12/764,148 experimentation. Jn re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Thus, when rejecting a claim for lack of enablement, the Examiner bears the initial burden of setting forth a reasonable explanation of why the scope of the claim is not adequately enabled by the description provided in the specification. In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993). Factors that may be considered in determining whether a disclosure would require undue experimentation include ( 1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Wands, 858 F.2d at 737. In rejecting claims 8-17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement, the Examiner finds that the Specification does not explain "what occurs when there are no additional tentative social connections as required by the claim language of Claim 8." Final Act. 2. The difficulty with the Examiner's analysis is that "what occurs when there are no additional tentative social connections" is not part of the scope of dependent claim 8. The Examiner also finds that the Specification does not explain how "tentative social connections ... that were previously added" are "relevant to new social connections" or "used to determine new social connections." Id. The Specification describes two types of social connections - (1) a two-way connection (created using a two-way beacon), and (2) a tentative (or one-way) social connection (created using a one-way beacon). See, e.g., Spec. i-fi-15, 6, 102, 120. The Specification describes that 4 Appeal2014-004167 Application 12/764,148 [t]he one-way, or tentative, social connection is such that the user 20-N knows who the user 20-1 is, but the user 20-1 does not know who the user 20-N is until a two way social connection is recommend, if ever. This mirrors asymmetric relationships in the real world where, for example, a person may know of Steve Jobs ... , but Steve Jobs does not know of that person. Id. i-f 123. With reference to Figure 19, the Specification describes operation of the system to create social connections using a one-way beacon. Id. i-f 27. The operation includes narrowcasting a one-way beacon to mobile device 18-N of user 20-N, user 20-N choosing to respond to the one-way beacon, and, in response, a social connection manager adding a tentative social connection between users 20-1and20-N. Id. i-fi-1123-124 (citing Fig. 18, steps 1706, 1708, 1710). The social connection manager analyzes the new tentative social connection between users 20-1 and 20-N and one or more previously created tentative social connections between users 20-1 and 20-N "to determine whether to recommend a two-way social connection between the users 20-1 and 20-N." Id. i-f 125 (citing Fig. 19, step 1712). In one embodiment a two-way social connection is recommended if more than a predefined threshold number of tentative social connections between the users 20-1 and 20-N have been created. Here, the Examiner neither addresses the Wands factors nor otherwise explains why a person of ordinary skill in the art would have to engage in undue experimentation to practice the claimed invention. We are not persuaded, on this record, that the Examiner has established a prima facie case of non-enablement, i.e., that the Examiner has established that a person of ordinary skill in the art, given the collective teachings of the Specification 5 Appeal2014-004167 Application 12/764,148 and information known in the art, would be unable to make and use the claimed invention without undue experimentation. See United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). Therefore, we do not sustain the Examiner's rejection of claims 8-17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Indefiniteness In rejecting claims 8-20 under 35 U.S.C. § 112, second paragraph, the Examiner finds the following unclear: (1) how the phrases "two-way social connection" and "tentative social connection" differ from a "social connection," (2) "what occurs when there are no additional tentative social connections as required by the claim language of Claim 8," (3) how "tentative social connections ... that were previously added" is relevant to new social connections and/or as to who this information is used to determine new social connections; and ( 4) how an aggregate profile is determined, what it represents, is it used to match a number of individual profiles and, if so, how does the system determine which profiles to match. Final Act. 3--4. With respect to the first finding, we agree with Appellant that one of ordinary skill in the art would understand what is claimed when the claims are read in light of the Specification, i.e., that the two-way social connection and tentative social connection are two types of social connections set forth in the Specification. App. Br. 8-9. With respect to the second finding, the claims do not recite (nor are they required to recite) a situation in which there is no additional tentative social connection. See id. at 8. 6 Appeal2014-004167 Application 12/764,148 With respect to the third finding, we agree with Appellant that one of ordinary skill in the art would understand what is claimed when the claims are read in light of the Specification, particularly paragraphs 109 and 123- 125. Id. at 8-9. With respect to the fourth finding, we agree with Appellant that one of ordinary skill in the art would understand what is claimed when the claims are read in light of the Specification, particularly paragraphs 31 and 104. Id. at 9-10. For example, the Specification describes, with reference to Figure 23, a process for generating an aggregate profile for a current crowd of an initiator of a beacon request. Spec. ,-r 31. A social connection manager periodically obtains an aggregate profile of a current crowd in which user 20-1 is located. Id. ,-r 104. The active interest of user 20-1 is compared to user profiles of other users in the current crowd of user 20-1. Id. The social connection manager then determines whether the current crowd matches the active interest of user 20-1 based on the aggregate profile of the crowd. Id. The social connection manager determines there is a match when a number of user matches exceeds a predefined threshold. Id. Therefore, we do not sustain the Examiner's rejection of claims 1, 2, 4-15, and 28 under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second paragraph is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification."). 7 Appeal2014-004167 Application 12/764,148 Anticipation Independent Claims 1, 22, and 23, and Dependent Claims 2-5, 7, and 18-21 We are persuaded by Appellant's argument that the Examiner erred in rejecting independent claims 1, 22, and 23 under 35 U.S.C. § 102(b) because Reality Mining does not disclose "detecting when a current crowd of the first user matches an active interest of the first user, the current crowd comprising the first user and a plurality of other users," as recited in claim 1 and similarly recited in independent claims 22 and 23. App. Br. 11-12. The Examiner relies on the second paragraph of the Opportunity section at page 2 of Reality Mining as disclosing the argued limitation. Final Act. 4. In particular, the Examiner finds that the cited portion of Reality Mining "shows others in a certain vicinity being matched to the user based on common interest." Id. (emphasis omitted). The cited portion of Reality Mining describes a social software application called Serendipity. Reality Mining 2. Serendipity users provide weights that determine each piece of information's importance. Id. A similarity score is calculated by extracting the commonalities between two users' profiles and summing the same using the user defined weights. Id. If the score is above a threshold set by both users, the server alerts the users that there is someone in their proximity whom might be of interest. Although Reality Mining describes detecting when a second user located near a first user matches an interest of the first user, we agree with Appellant that it fails to describe "detecting when a current crowd of a first user matches an active interest of the first user, the current crowd comprising the first user and a plurality of other users," as recited in claim 1 and similarly recited in claims 22 and 23. 8 Appeal2014-004167 Application 12/764,148 In view of the foregoing, we do not sustain the Examiner's rejection of independent claims claim 1, 22, and 23 under 35 U.S.C. § 102(b). For the same reasons, we also do not sustain the Examiner's rejection of dependent claims 2-5, 7, and 18-21. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Obviousness Dependent Claims 6 and 8-17 Each of claims 6 and 8-17 depends, directly or indirectly, from claim 1. None of the Examiner's rejections of claims 6 and 8-17 cures the deficiency in the Examiner's rejection of claim 1. Therefore, we do not sustain the Examiner's rejections of claims 6 and 8-17 under 35 U.S.C. § 103 (a) for the same reasons set forth above with respect to claim 1. DECISION The Examiner's rejection of claims 8-17 under 35 U.S.C. § 112, first paragraph, is reversed. The Examiner's rejection of claims 8-20 under 35 U.S.C. § 112, second paragraph, is reversed. The Examiner's rejection of claims 1-5, 7, and 18-23 under 35 U.S.C. § 102(b) is reversed. The Examiner's rejections of claims 6 and 8-17 under 35 U.S.C. § 103(a) are reversed. REVERSED 9 Copy with citationCopy as parenthetical citation