Ex Parte Rapaport et al

Patent Trial and Appeal Board

Oct 27, 2017

12854082 (P.T.A.B. Oct. 27, 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.
12/854,082 08/10/2010 Seymour RAPAPORT RAPA-01733US0 7080
28554 7590 10/31/2017
Vierra Magen Marcus LLP
575 Market Street, Suite 3750
San Francisco, CA 94105
EXAMINER
HO, RUAY L
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
10/31/2017 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):
patents @ vierramagen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEYMOUR RAPAPORT, JEFFREY A. RAPAPORT, KENNETH
ALLEN SMITH, JAMES BEATTIE, and GIDEON GIMLAN
Appeal 2015-003074
Application 12/854,082
Technology Center 2100
Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
rejection of claims 1, 2, 5, 7, 10, and 14. Claims 12, 13, 15, 16, and 17, have
been allowed, and claims 3, 4, 6, 8, and 9 have been objected; claim 11 has
been withdrawn from consideration.
We affirm-in-part.
Appeal 2015-003074
Application 12/854,082
INVENTION
Appellants’ invention relates to a Social-Topical Adaptive
Networking (STAN) system. A cross-pollination subsystem cooperatively
interacts with external platforms to bring fresh cross-pollination data to topic
nodes or on-topic Notes Exchange rings of the STAN system. See Abstract.
Claim 2 is illustrative of the invention and reproduced below:
2. A machine-implemented, user interface structured to
cooperatively interact with a Social-Topical Adaptive
Networking (STAN) system that maintains in a memory
thereof, a topic space populated by unique topic nodes each
having topic defining data logically associated therewith,
wherein the maintained topic space is dynamically updated by
the STAN system in terms of at least one of organization of the
topic nodes within the topic space and the topic defining data
that is logically associated with respective ones of the topic
nodes, the user interface being also structured to provide a
corresponding user with automatically repeatedly updated
content source recommendations corresponding to parts of the
maintained topic space that are matched to probable topics of
focus that are automatically repeatedly determined by the
STAN system to be probably currently of focus in the user’s
mind, said interface comprising:
a content source recommendation presenting mechanism
that is configured to present one or more
recommendation-representing objects to the user
based on the matched parts of the maintained topic
space, where the presented recommendation-
representing objects are user-activateable and,
when activated by the user, connect the user to
corresponding on-topic content, where one or more
of the recommendation-representing objects
respectively each has a corresponding one or more
respective indicators or gadgets which respectively
indicate or provide at least one of:
an identification of the topic (as defined by the
matching part of the topic space) of the
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content source that is being recommended
by the object,
an identification of the platform from which the
on-topic content of the object is being
obtained;
an identification of a topic center represented
within said topic space and to which the on-
topic content of the object is logically
linked;
an identification of one or more persons to which
the on-topic content of the object is logically
linked;
an identification of one or more membership
groups to which the on-topic content of the
object is logically linked;
a current temperature attribute of the
recommendation-representing object, where
the indicated current temperature attribute is
a function of a weighted sum of heating and
cooling attributes that are logically linked to
the recommended content source of the
recommendation-representing object;
an identification of a Notes Exchange type that the
on-topic content of the object has; and
a launchable search agent which is a machine-executable
software agent that can be launched in logical
connection with a topic node to which the on-topic
content of the object is logically linked,
wherein said maintained topic space is that of the
preamble of this claim, namely, it being
maintained in a memory of a Social-Topical
Adaptive Networking (STAN) system and it being
populated by unique topic nodes each having topic
defining data logically associated therewith and it
being dynamically updated by the STAN system in
terms of at least one of organization of the topic
nodes within the topic space and the topic defining
data that is logically associated with respective
ones of the topic nodes,
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wherein said user is that of the preamble of this claim,
namely, the corresponding user who is provided by
said user interface with automatically repeatedly
updated content source recommendations
corresponding to parts of the maintained topic
space that are matched to probable topics of focus
that are automatically repeatedly determined by the
STAN system to be probably currently of focus in
the user’s mind, and
wherein said user interface is that of the preamble of this
claim, namely, that which is structured to provide
the corresponding user with the automatically
repeatedly updated content source
recommendations corresponding to parts of the
maintained topic space.
REJECTIONS AT ISSUE
The Examiner has rejected claims 2, 5, and 14 under 35U.S.C. § 112
second paragraph. Answer 2—3.1
The Examiner has rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Turski (US 2010/0070875 Al; Mar. 18, 2010), Smith (US
8,274,377 B2; Sept. 25, 2012), and Schoenberg (US 8,249,898 B2; Aug. 21,
2012). Answer 3—6.
The Examiner has rejected claims 2, 5, 7, 10, and 14, under
35 U.S.C. § 102(a) as unpatentable over Schoenberg. Answer 6—11.
ANALYSIS
1 Throughout this opinion we refer to the Appeal Brief (filed October 15,
2014, “Appeal Br.”), Reply Brief (filed January 21, 2015, “Reply Br.”),
Final Rejection (mailed March 18, 2014, “Final Act.”), and the Examiner’s
Answer (mailed on November 21, 2014, “Answer”).
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Application 12/854,082
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We agree with Appellants’
contention that the Examiner erred in rejecting independent clams 2 and 5
under 35 U.S.C. § 102 and claim 1 under 35 U.S.C. § 103. However, we
disagree with the Appellants’ contention that the Examiner erred in rejecting
claims 2, 5, and 14 under 35 U.S.C. § 112.
Rejections Under 35 U.S.C. $ 112
With respect to claim 2, Appellants argue that “Applicants] know[]
what Applicants] regard[] as the invention” and the claim term “probably
currently of focus in the user’s mind” is clear. Appeal Br. 30—31.
Appellants state:
Applicants are] reciting what Applicants] regard[] as the
inventive concept, which is no better than what is “probably”
currently of focus in the user’s mind. The term “probably” is
not intended to provide statistical probability but rather to
convey that the system does not know for sure what is in the
user’s mind.
Appeal Br. 31.
We are not persuaded that the Examiner erred in determining claim 2
is ambiguous as the term “probably currently of focus in the user’s mind” is
a relative term that is indefinite. When a “word of degree” is used, the court
must determine whether the patent provides “some standard for measuring
that degree.” Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d
818, 826 (Fed. Cir. 1984). We have reviewed paragraphs 18, 43, and 50 of
the Specification, which Appellants cite as support for the limitation, and do
not find that the Specification provides an objective standard by which the
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skilled artisan can determine the scope of the claim (i.e. what measure is
used to determine when something goes from not being currently of focus in
the user’s mind to probably currently of focus in the user’s mind).
Accordingly, we sustain the Examiner’s rejection of independent claim 2
under 35 U.S.C. § 112, and the claims which depend thereupon which
inherit the ambiguity on claim 2.
With respect to claim 5, Appellants argue that the Examiner’s finding
that the terms “unique topic nodes,” “topic nodes,” and “topic centers”
render the claim unclear. Appeal Br. 32. Appellants argue that the terms
“topic nodes” and “topic centers” are synonymous. Appeal Br 33.
We are not persuaded of error by these arguments. Initially, we note
Appellants’ statement “[n]o amendment was made to the application (to the
[Specification, claims or drawings) subsequent to the Final Office Action
(FOA) of 3/18/2014” is inaccurate and misleading. Appeal Br. 5. An After
Final Amendment, which included an amendment to claim 5, was submitted
on May 12, 2014. This amendment was not entered. See Advisory Action
dated May 30, 2014. Further, Appellants did not provide an appropriate
copy of claim 5 in the Claims Appendix to the Appeal Brief or Reply Brief,
rather they contain a copy of claim 5 that was submitted in the unentered
After Final Amendment dated May 12, 2014. Thus, our decision is based
upon claim 5 to which the Final Rejection is directed to, i.e., claim 5 as
presented in the February 24, 2014 Amendment.
The February 24th claim 5 recites: “a topic space populated by unique
topic nodes.” The claim further recites: “organization of the topic nodes.”
Thus, it is unclear if the organization topic nodes are the same as the
previously recited “unique topic nodes” or other topic nodes. Further, claim
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5 recites “interacting with . . . one or more topic centers,” and this phrase is
unclear whether it refers to something different that the earlier recited topic
nodes or unique topic nodes. . Accordingly, we sustain the Examiner’s
rejection of independent claim 5 under 35 U.S.C. § 112.
With respect to claim 14, Appellants argue the limitation “popular
and/or influential and/or an expert” does not render the claim indefinite.
Appeal Br. 35. Appellants argue, “Applicants] respectfully submit[] that
the Examiner errs by presuming that she rather than Applicants] know[]
what Applicants] regard[] as the invention. Applicants have] argued this
point as well but to no avail.” Appeal Br. 35. Additionally, Appellants cite
to Specification paragraphs 193 and 194, providing examples of how
popular and/or influential and/or an expert is determined. We concur with
the Examiner that the disputed limitation recites a term of degree, and the
Specification does not provide an objective standard to determine the degree.
Rejections Under 35 U.S.C. $ 102
Appellants present several arguments directed to the anticipation
rejection of claims 2, 5, 7, 10, and 14. We do not reach these arguments. As
discussed above, we concur with the Examiner’s finding that independent
claims 2 and 5 are indefinite. Thus, we do not sustain the Examiner’s
anticipation rejections of claims 2, 5, 7, 10, and 14, as the claims are
ambiguous and to determine the scope of the claims would require
speculation. Our reviewing court has said that it is wrong to rely upon
speculative assumptions as to the meaning of claims when considering a
prior art rejection. In re Steele, 305 F.2d 859, 862 (CCPA 1962).
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Rejections Under 35 U.S.C. $ 103
Appellants argue that the rejection of claim 1 is in error for the same
reasons as discussed with respect to claim 2. Appeal Br. 29. Further,
Appellants argue the Examiner’s application of Smith is improper as the
nodes in Smith are communication system nodes and have nothing to do
with topic nodes as recited in claim 1. Appeal Br. 29.
The Examiner responds to Appellants’ arguments construing the term
topic node, in light of the Specification, as encompassing a data structure
node as well as a communication node. Answer 13 (citing paragraphs 46
and 17 of the pre-grant publication of Appellants’ Specification (US
2012/0042263)).
We have reviewed the cited portions of Appellants’ Specification and
disagree with the Examiner’s interpretation of the topic node encompassing
a communications node. Further, the Examiner has not shown that the
teachings of Smith, which the Examiner relies upon in the rejection of claim
1 (see Final Act. 5—7), apply to data structure nodes. Accordingly,
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claim 1, and we do not sustain the Examiner’s rejection of claim
1.
DECISION
We affirm the Examiner’s rejection of independent claims 2, 5, and
dependent claim 14 under 35 U.S.C. § 112.
We reverse the Examiner’s rejection of claims 2, 5, 7, 10, and 14,
under 35 U.S.C. § 102.
We reverse the Examiner’s rejection of claim 1 under 35 U.S.C.
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§103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRM-IN-PART
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