Ex Parte QueckDownload PDFPatent Trial and Appeal BoardJun 28, 201613316304 (P.T.A.B. Jun. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/316,304 12/09/2011 50400 7590 06/30/2016 SCHWEGMAN LUNDBERG & WOESSNER/SAP P.O. BOX 2938 MINNEAPOLIS, MN 55402 Tobias Queck 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. 2058.643US 1 5965 EXAMINER HARMON, COURTNEY N ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 06/30/2016 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@slwip.com SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOBIAS QUECK Appeal2014-007537 Application 13/316,304 Technology Center 2100 Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and AMBER L. HAGY, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-007537 Application 13/316,304 STATE~vfENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1---6, 8-16, and 18-20. Claims 7 and 17 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We reverse. THE INVENTION The claims are directed to generating document recommendations. Spec., Title. Claim 1, reproduced below with a dispositive limitation emphasized in italics, is illustrative of the claimed subject matter: A computer-implemented method comprising: detecting commencement of a subject task in an enterprise management system; determining one or more further tasks in the enterprise management system that are same or similar to the subject task; identifYing one or more documents from a document management system that were previously accessed by one or more users while executing the one or more further tasks; examining reading metadata of each of the one or more identified documents, the reading metadata compnsmg information related to a access of each of the identified one or more documents by the one of more users; selecting at least one recommendation document from the one or more identified documents based on the examining of the reading metadata; and generating, using at least one processor, a recommendation comprising the at least one recommendation document selected based on the examining of the reading metadata. 2 Appeal2014-007537 Application 13/316,304 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Churchill et al. Foulger et al. Naidu et al. US 2009/0307205 Al US 2012/0023121 Al US 2012/0030228 Al REJECTIONS The Examiner made the following rejections: Dec. 10, 2009 Jan.26,2012 Feb.2,2012 Claims 1--4, 6, 8-14, 16, and 18-20 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over Naidu and Churchill. Final Act. 7-17. Claims 5 and 15 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Naidu, Churchill, and Foulger. Final Act. 17-18. ISSUE ON APPEAL Based on Appellant's arguments in the Appeal Brief (App. Br. 8-17) and Reply Brief (Reply Br. 2---6), a dispositive issue presented on appeal is whether the Examiner erred in finding the combination of Naidu and Churchill teaches or suggests the dispositive limitation of claim 1. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments that the Examiner has erred in rejecting independent claims 1, 11, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Naidu and Churchill. We agree with Appellant's conclusions as to this rejection of these claims. 3 Appeal2014-007537 Application 13/316,304 Appellant argues the search query suggestions of Churchill are not documents previously accessed by a user while executing a task similar to the detected task. App. Br. 12-13. "[T]he suggestions for search queries are simply previously received suggestions from other users (e.g., 'search friends'), and Churchill does not mention that these suggestions are based on flights previously selected by the 'search friends' in performing their own search queries." App. Br. 13. Appellant further argues "simply referencing the operation of 'searching' without further detail, does not suggest that documents are being access" or that the documents "'were accessed while executing the one or more further tasks."' App. Br. 14. The Examiner responds by newly finding, contrary the findings presented in the Final Action1, Naidu's description of need crystallization module 220 and share and shout-out module 230 teaches or suggests the disputed limitation. Ans. 5---6. Appellant replies by arguing Naidu's pin-in option only allows a user to save a particular recommendation for future use, not identify a document and, particularly, a document accessed by a user while executing a prior similar task. Reply Br. 5. On the record before us, we are unable to ascertain sufficient support for the Examiner's findings in either the Naidu or Churchill references to sustain the rejection of claim 1. In particular, in applying the Churchill reference, the Examiner fails to explain why recommendations from friends (e.g., recommended flights) teaches or suggests documents accessed by those friends while executing a matching task (e.g., searching for airline 1 Final Act. 8 ("Naidu does not explicitly teach identifying one or more documents from a document management system that were previously accessed by one or more users while executing the one or more further tasks.") 4 Appeal2014-007537 Application 13/316,304 flights). Likewise, the Examiner fails to explain adequately why Naidu's recommendations shared among various groups of people include documents accessed by those people while executing similar tasks. In particular, even if Naidu or Churchill discloses such a feature, the Examiner has failed to carry his initial burden in pointing out how the prior art meets the claimed feature. We decline to conduct examination in the first instance to fill in the gaps and to make up for deficiencies in the rejection. Thus, on this record, the Examiner has failed to demonstrate that the applied prior art teaches or suggests the disputed limitation of claim 1. Because we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant's other arguments. Therefore, for the reasons supra, we do not sustain the rejection of independent claim 1 under 3 5 U.S. C. § 103 (a) over Naidu and Churchill and, for the same reason, we do not sustain the rejection of independent claims 11 and 20, which include substantially the same limitation, or the rejection of dependent claims 2--4, 6, 8-10, 12-14, 16, 18, and 19. Furthermore, we do not sustain the rejection of claims 5 and 15 under 35 U.S.C. § 103(a) over Naidu, Churchill, and Foulger, as the Examiner's application of the Foulger reference fails to cure the deficiency in the base rejection addressed supra. DECISION The Examiner's decision to reject claims 1-6, 8-16, and 18-20 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation