Ex Parte Rekhi

Patent Trial and Appeal Board

Nov 14, 2016

13903263 (P.T.A.B. Nov. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/903,263 05/28/2013 Sachin Rekhi
45839 7590 11/16/2016
SCHWEGMAN LUNDBERG & WOESSNER/ LINKEDIN
POBOX2938
MINNEAPOLIS, MN 55402
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.
3080.149US1 4299
EXAMINER
PHAM,HUNGQ
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
11/16/2016 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 SA CHIN REKHI 1
Appeal2016-000239
Application 13/903,263
Technology Center 2100
Before STEPHEN C. SIU, LARRY J. HUME, and
LINZY T. McCARTNEY, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Linkedin, Corp. App.
Br. 2.
Appeal2016-000239
Application 13/903,263
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions relate to:
System[ s] and method[ s] for recommending to a member
of a social network an interaction with ones of a plurality of
entities. Events related to individual ones of the plurality of
entities are obtained. A relevance of ones of the events to the
member is determined based on at least one characteristic of
ones of the events and a trait of the member. Recommended
interactions with ones of the plurality of entities individually
related to the ones of the events based on the relevance for each
of the events are presented to the user.
Abstract.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to dispositive limitation):
1. A method for recommending to a member of a
social network an interaction with ones of a plurality of entities,
compnsmg:
obtaining, with a processor, events related to individual
ones of the plurality of entities;
determining, with the processor, a plurality of relevance
scores of the events, each relevance score of the plurality of
relevance scores being indicative of a relevance of at least one
of the events to the member, each relevance score of the
plurality of relevance scores individually corresponding to one
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Apr. 9, 2015); Reply Brief ("Reply Br.," filed Sept. 28, 2015); Examiner's
Answer ("Ans.," mailed July 27, 2015); Final Office Action ("Final Act.,"
mailed Sept. 9, 2014); and the original Specification ("Spec.," filed
May 28, 2013).
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Application 13/903,263
of the events, each of the plurality of relevance scores being
determined based on at least one characteristic of ones of the
events in comparison with a trait of the member;
presenting, via a network interface device, to the member
recommended interactions with ones of the plurality of entities
individually related to the ones of the events based on the
relevance score as determined for each of the events.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Luo et al. ("Luo") US 2011/0022602 Al Jan. 27, 2011
Juan et al. ("Juan") US 2012/0166532 Al June 28, 2012
Johnson et al. ("Johnson") US 2013/0041735 Al Feb. 14,2013
Baldwin et al. ("Baldwin") US 2014/0089320 Al Mar. 27, 2014
Rejections on Appeal
RI. Claims 1-7, 9, 11-18, 20, and 22 stand rejected under 35
U.S.C. § 102(a)(2) as being anticipated by Baldwin and Juan. 3 Final Act. 6;
Ans. 2.
R2. Claims 8 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Baldwin, Juan, and Luo. Final
Act. 12.
R3. Claims 10 and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Baldwin, Juan, and Johnson.
Final Act. 13.
3 We note Juan is incorporated by reference in Baldwin. See Baldwin i-f 35.
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ISSUE
Appellant argues (App. Br. 8-16; Reply Br. 2) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(a)(2) as being anticipated by
Baldwin and Juan is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "method for recommending to a member of a social network an
interaction with ones of a plurality of entities" that includes, inter alia, the
step of "presenting, via a network interface device, to the member[,]
recommended interactions with ones of the plurality of entities individually
related to the ones of the events based on the relevance score as determined
for each of the events," as recited in claim 1, and as commensurately recited
in independent claim 12? (Emphases added).
ANALYSIS
We agree with particular arguments advanced by Appellant with
respect to claims 1-22 for the specific reasons discussed below. We
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
Our reviewing court guides, under § 102, the prior art reference "must
not only disclose all elements of the claim within the four comers of the
document, but must also disclose those elements arranged as in the claim."
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(citation and internal quotation marks omitted). "Thus, it is not enough that
the prior art reference discloses part of the claimed invention, which an
ordinary artisan might supplement to make the whole, or that it includes
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multiple, distinct teachings that the artisan might somehow combine to
achieve the claimed invention." Id. at 13 71.
Appellant contends:
[A ]ssuming arguendo that the meaning of the term "event"
were taken to be the same in Baldwin as in claim 1, the
contradictions from the fundamentally different uses of the
terms produces inconsistencies in the attempts by the examiner
to read the claim element "presenting, via a network interface
device, to the member recommended interactions with ones of
the plurality of entities individually related to the ones of the
events based on the relevance score as determined for each of
the events" into Baldwin.
App. Br. 14--15.
With respect to the Examiner's finding that Baldwin paragraph 49
discloses the disputed limitation, Appellant further argues:
At no point does paragraph [0049] disclose "presenting, via a
network interface device, to the member recommended
interactions with ones of the plurality of entities individually
related to the ones of the events". Instead, what is presented is:
the event, an event description, and/or an invitation to the event.
None of those things are a presentation of a recommended
interaction with an entity related to the event. The use of both
terms "event" and "interaction" in claim 1 is noted and
emphasized. Baldwin presents recommended "events". Claim
1 presents recommended "interactions" with entities that are
related to "events". Even if the terms "interactions" and
"events" of claim 1 were not interpreted in view of the
specification, the Examiner trips on the final element.
App. Br. 15.
We agree with Appellant that the Examiner has not adequately
explained how Baldwin (and/or Juan) discloses each limitation of claims 1
and 12 as is required to support an anticipation rejection. The Examiner's
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rejections identify concepts and principles in Baldwin (Final Act. 6-10;
Ans. 2-10) that relate to claims 1 and 12, but '"[c]oncepts' do not anticipate."
Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1101 (Fed. Cir. 1985);
see also Net Moneyin, Inc., 545 F.3d at 1371 ("[i]t is not enough that the
prior art reference discloses part of the claimed invention, which an ordinary
artisan might supplement to make the whole, or that it includes multiple,
distinct teachings that the artisan might somehow combine to achieve the
claimed invention.") An anticipation rejection requires an element-by-
element analysis of each claim. See Bristol-Myers Squibb Co. v. Ben Venue
Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001).
We disagree with the Examiner's finding that Baldwin discloses
Appellant's claimed "presenting" step. We disagree with the Examiner
because we find the claimed "recommended interactions with ones of the
plurality of entities" does not read on the disclosed "invitation messages" in
paragraph 49 of Baldwin under the broadest reasonable interpretation of this
phrase, particularly in light of the Specification. 4, 5
We are persuaded by Appellant's arguments, which assert "invitations
[and their acceptance] are not 'recommended interactions with one of the
plurality of entities' as they do not inherently involve an interaction with any
4 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
5 Turning to Appellant's Specification for context, we note paragraphs 26
through 28 provide concrete examples of "recommended interactions with
ones of the plurality of entities individually related to the ones of the events
based on the relevance score as determined for each of the events," as recited
in claim 1 .
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entity related to the event." Id. In consideration of Appellant's argument
and the Specification, we find the Examiner erred in finding "[t]he
description of suggested events allowing a user to interact with the
description to accept or reject the suggested events [in Baldwin] is
considered as being equivalent to recited limitation recommended
interactions at least in light of the specification of the instant application."
Ans. 3.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the disclosure of
Baldwin (and Juan) to disclose the dispositive limitation of claim 1, such
that we find error in the Examiner's resulting finding of anticipation.
Therefore, we cannot sustain the Examiner's anticipation rejection of
independent claim 1. For the same reasons, we reverse the Examiner's
rejection of independent claim 12, which recites the disputed limitation in
commensurate form. Similarly, we also reverse the rejections of dependent
claims 2-7, 9, 11-18, 20, and 22 that variously depend from claims 1
and 12, and which are also subject to Rejection RI.
§ 103 (a) Rejection R2 and R3 of Claims 8, 10, 19, and 21
In light of our reversal of the rejections of independent claims 1
and 12, supra, we also reverse obviousness Rejections R2 and R3 under
§ 103 of claims 8, 10, 19, and 21, which variously and ultimately depend
from claims 1 and 12. On this record, the Examiner has not shown how the
additionally cited Luo and/or Johnson references overcome the
aforementioned deficiencies with Baldwin and Juan, as discussed above
regarding claims 1 and 12.
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CONCLUSIONS
(1) The Examiner erred with respect to anticipation Rejection RI of
claims 1-7, 9, 11-18, 20, and 22 under 35 U.S.C. § 102(a)(2) over the cited
prior art of record, and we do not sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejections R2
and R3 of claims 8, 10, 19, and 21under35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we do not sustain the rejections.
DECISION
We reverse the Examiner's decision rejecting claims 1-22.
REVERSED
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