Ex Parte Pianko

Patent Trial and Appeal Board

May 18, 2017

13780888 (P.T.A.B. May. 18, 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.
13/780,888 02/28/2013 Harry M. Pianko OOM-10002/29 5391
7590
BELZER PC
ATTN: John G. Posa
2905 Bull Street
Savannah, GA 31405
05/18/2017 EXAMINER
AGHARAHIMI, FARHAD
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
05/18/2017 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 HARRY M. PIANKO
Appeal 2017-003314
Application 13/7 80,88 s1
Technology Center 2100
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 2, and 4—7. We have jurisdiction under 35 U.S.C. § 6(b). Claim 3
has been cancelled.
We AFFIRM.
1 According to Appellant, the real party in interest is Harry M. Pianko.
(App. Br. 1).
Appeal 2017-003314
Application 13/780,888
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method enabling users to share and update contact
information, comprising the steps of:
storing profile information for a plurality of users in a
database;
assigning the profile information to personal, business, or
other sub-profiles;
searching, by one user, for other users in the database, and
adding one or more of the other users as contacts, enabling the
contacts to share at least some of the one user’s profile
information; and
whereby, when the one user chooses to edit, add to, or
delete their stored profile information, the users designated as
contacts by the one user are automatically notified regarding the
changes made to the stored profile information, thereby enabling
the users designated as contacts to access the changed profile
information.
REJECTIONS
Claims 1, 2, 4, 5, and 7 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Galbreath (US 2010/0257459 Al; published Oct. 7,
2010), Sivavakeesar (US 2012/0197967 Al; published Aug. 2, 2012), and
Ramnani (US 2011/0113084 Al; published May 12, 2011). (Final Act. 3—
6).
Claim 6 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Galbreath, Sivavakeesar, Ramnani, and Rinearson (US 2012/0005209
Al; published Jan. 5, 2012). (Final Act. 6—7).
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ISSUES
Issue 1: Did the Examiner improperly combine the teachings and
suggestions of Galbreath, Sivavakeesar, and Ramnani in rejecting claims 1,
2, 4, 5, and 7?
Issue 2: Did the Examiner err in finding the combination of
Galbreath, Sivavakeesar, and Ramnani teaches “updating a user’s profile
information through a syncing process,” as recited in claim 7?
Issue 3: Did the Examiner err in finding the combination of
Galbreath, Sivavakeesar, Ramnani, and Rinearson teaches “maintaining
prior or old profile information that may be searched but which is not
automatically shared with other users,” as recited in claim 6?
ANALYSIS
We disagree with Appellant’s contentions and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 2—10); and (2) the reasons set forth by
the Examiner in the Answer in response to the Appeal Brief (Ans. 2—7).
With respect to the claims argued by Appellant, we highlight and address
specific findings and arguments for emphasis as follows.
Issue 1
Appellant contends the Examiner improperly combined the teachings
and suggestions of Galbreath, Sivavakeesar, and Ramnani in rejecting
claim 1. (App. Br. 2—5; Reply Br. 1—3). Specifically, Appellant argues both
Galbreath and Sivavakeesar “teach[] away from [the recited] limitation of
automatically notifying contacts regarding changes made to stored profile
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information.” (App. Br. 2, 5; Reply Br. 1, 3). Further, Appellant argues
“the teachings of Galbreath and Sivavakeesar are mutually exclusive” (App.
Br. 4; Reply Br. 2) and Sivavakeesar and Ramnani are “limited to business
card information” (App. Br. 5). Additionally, Appellant argues the
Examiner’s stated rationale for the combination is improper because
“Galbreath does not ‘need’ Sivavakeesar” (App. Br. 3^4; Reply Br. 2) and
because “neither [Galbreath nor Sivavakeesar] contemplates automatic
updates” (App. Br. 5; Reply Br. 2—3).
We are not persuaded. The Examiner finds (Final Act. 3), and we
agree, Galbreath teaches a social networking system with user “profile
information for each of the members in the online social network”
(Galbreath 126) in which “one member (e.g., Ml) [may] view the profile of
another member (e.g., M2)” {id. 139). The Examiner further finds, and we
agree, Sivavakeesar teaches a user’s profile includes selectively shared sub-
profile information. (Final Act. 4 (citing Sivavakeesar | 57, Fig. 2); Ans. 3).
The Examiner incorporates Sivavakeesar’s selectively shared sub-profiles
into Galbreath’s social network user profiles. (Ans. 3; Final Act. 4).
Furthermore, the Examiner finds (Final Act. 4), and we agree, Ramnani
teaches a first user’s “updated profile information would trigger an
automatic push of the new information to the mobile device [of another
user], with . . . notification” of the update (Ramnani 137). The Examiner
incorporates Ramnani’s automatic profile update and notification into
Galbreath’s social network. (Final Act. 4).
We are not persuaded by Appellant’s arguments that Galbreath and
Sivavakeesar teach away from automatic notifications (App. Br. 2, 5; Reply
Br. 1, 3). To teach away, a reference must “criticize, discredit, or otherwise
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discourage” investigation into the claimed solution. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Here, Appellant’s hypothetically “demoted”
user (App. Br. 2; Reply Br. 1), Appellant’s assertion that Galbreath’s users
actively access profile information (App. Br. 5; Reply Br. 2—3), and
Appellant’s assertion of anonymity features in Sivavakeesar that the
Examiner does not incorporate into the combination (App. Br. 5; Reply Br.
2—3) are not persuasive because Appellant has not sufficiently shown the
references actually criticize, discredit, or otherwise discourage incorporating
automatic profile updates and corresponding update notifications into
Galbreath’s social network.
In addition, we are not persuaded by Appellant’s argument that “the
teachings of Galbreath and Sivavakeesar are mutually exclusive” (App. Br.
4; Reply Br. 2) or that Sivavakeesar and Ramnani are “limited to business
card information” (App. Br. 5). We agree with the Examiner’s finding that
all cited references “are from the analogous art of digital contact information
sharing” and “facilitate electronic communications via a profile-based
system,” i.e., sharing and viewing online profile information. (Ans. 5).
Indeed, Galbreath is directed to “profile information for each of the
members in the online social network” (Galbreath 126), Sivavakeesar is
directed to “online profile creation/maintenance (e.g., editing/deleting)
functionality” which “enable[s] vibrant social networking” (Sivavakeesar
1142, 57), and Ramnani teaches automatic profile updates for “sharing]
business card information (including social media information and context)”
(Ramnani 17, Title). Thus, we determine these arguments are not
persuasive of Examiner error.
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Appellant’s remaining arguments are not persuasive because the
Examiner’s articulated reasons for the combination are supported by rational
underpinning. The Examiner finds one of ordinary skill in the art would
have combined the references to allow a user to restrict certain contact
information to certain users and to automatically update changed
information (Final Act. 4). Appellant’s argument that Galbreath teaches one
manner of excluding certain users from access to profile information (App.
Br. 2—\\ Reply Br. 2) does not persuade us that one of ordinary skill in the
art would not incorporate an additional manner of excluding certain users
from access to profile information, i.e., Sivavakeesar’s sub-profile
restrictions. Additionally, we have considered Appellant’s other arguments
that the Examiner improperly combined the references, and we are not
persuaded of error for similar reasons.
Accordingly, we are not persuaded the Examiner improperly
combined Galbreath, Sivavakeesar, and Ramnani. Therefore, we sustain the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over
Galbreath, Sivavakeesar, and Ramnani.
Issue 2
Appellant contends the Examiner erred in finding the combination of
Galbreath, Sivavakeesar, and Ramnani teaches “updating a user’s profile
information through a syncing process,” as recited in claim 7. (App. Br. 5—
6; Reply Br. 3). Specifically, Appellant argues that “Appellant’s syncing
process requires a unique algorithm.” (App. Br. 5—6). Appellant further
argues the claimed “synching process alone distinguishes over [the cited]
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references” and “[t]he process of ‘synching’ is by now well known to those
of skill in the art.” (Reply Br. 3).
We are not persuaded. The Examiner finds (Final Act. 6), and we
agree, Sivavakeesar teaches, or at least suggests, syncing to update user
profiles when its “client application 108 and server application 160 interact[]
with each other namely for the purpose of online profile creation[,]
activation[,] [or] maintenance (i.e., edit[,] delete[,] [or] deactivate)”
(Sivavakeesar 145).
Appellant’s argument that Sivavakeesar’s profile update is not a
syncing process because “Appellant’s syncing process requires a unique
algorithm” (App. Br. 5—6) is not commensurate with the scope of the claim.
The claim does not recite language limiting the manner user profiles are
synced, and the Specification does not include an express definition that
requires syncing to be performed in any particular manner. As such,
Sivavakeesar’s profile update — in which a client “pass[es] the profile
specific information” to the server, i.e., syncs (Sivavakeesar | 58; see
Sivavakeesar 145) — is not precluded from the broadly claimed syncing
process. Furthermore, Appellant’s argument that syncing is not disclosed by
the combination (Reply Br. 3) is without elaboration and does not
persuasively address the Examiner’s finding that Sivavakeesar’s teaches, or
at least suggests, syncing to create, activate, or maintain an online profile.
Moreover, Appellant’s Specification teaches that it was previously known to
provide “automatic syncing to update contact information,” e.g., “Facebook
will sync to one’s smartphone.” (Spec. 1 8). Accordingly, we are not
persuaded the Examiner erred in finding the combination of Galbreath,
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Sivavakeesar, and Ramnani teaches “updating a user’s profile information
through a syncing process,” within the meaning of claim 7.
Issue 3
Appellant contends the Examiner erred in finding the combination of
Galbreath, Sivavakeesar, Ramnani, and Rinearson teaches “maintaining
prior or old profile information that may be searched but which is not
automatically shared with other users,” as recited in claim 6. (App. Br. 6;
Reply Br. 3). Specifically, Appellant argues, in Rinearson, “no distinction is
made regarding archived profile information that may be searched but which
is not automatically shared with other users.” (App. Br. 6; Reply Br. 3).
Furthermore, Appellant argues “Rinearson is not applicable to Appellant’s
field of endeavor in the sense that it does not relate to a method enabling
users to share and update contact information” (App. Br. 6) and “Rinearson
does not relate to a method enabling users to share and update contact
information” (Reply Br. 3), i.e., Rinearson is non-analogous art.
We are not persuaded. The Examiner finds (Ans. 6), and we agree,
Rinearson teaches “a user profile . . . may include chronologically tagged
profile information (profile information [that] may be associated with a
particular timeframe)” and further teaches that the user’s profile includes “a
‘tab’ (or other interface element) configured to display a chronological
profile 562” (Rinearson 1160).
We are not persuaded by Appellant’s argument that Rinearson does
not distinguish between “archived profile information that may be searched
but which is not automatically shared with other users” (App. Br. 6; Reply
Br. 3), arguing that Rinearson automatically shares old profile information.
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Rinearson teaches accessing a chronological profile via “a ‘tab’ (or other
interface element).” (Rinearson 1160). That is, Rinearson’s chronological
profile is viewed by accessing a profile interface element. Appellant has not
persuasively shown that Rinearson automatically shares its chronological
profile.
Additionally, we are not persuaded by Appellant’s argument that
Rinearson is non-analogous art. (App. Br. 6; Reply Br. 3). As discussed
supra, we agree with the Examiner’s finding that Galbreath, Sivavakeesar,
and Ramnani are directed to sharing and viewing online profile information.
We determine Rinearson is in the field of sharing and viewing online
profiles; specifically, Rinearson teaches “a user profile chronology” which is
shared and viewed (Rinearson 1160). Furthermore, a skilled artisan seeking
to address the problem of viewing past profile information would have
reasonably looked to Rinearson and would have understood the applicability
of Rinearson’s chronological profile features for viewing past profile
information.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Galbreath, Sivavakeesar, Ramnani, and Rinearson teaches
“maintaining prior or old profile information that may be searched but which
is not automatically shared with other users,” as recited in claim 6.
Remaining Claims 2, 4, and 5
Appellant does not argue separate patentability for dependent claims
2, 4, and 5, which depend from claim 1. (See App. Br. 2—6). For the reasons
set forth above, we sustain the Examiner’s decision to reject claims 2, 4, and
5.
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DECISION
The Examiner’s rejection of claims 1, 2, 4, 5, and 7 under 35 U.S.C.
§ 103(a) as being unpatentable over Galbreath, Sivavakeesar, and Ramnani
is affirmed.
The Examiner’s rejection of claim 6 under 35 U.S.C § 103(a) as being
unpatentable over Galbreath, Sivavakeesar, Ramnani, and Rinearson 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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