Ex Parte Reuning et al

Board of Patent Appeals and Interferences

Mar 6, 2009

09911024 (B.P.A.I. Mar. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN MICHAEL REUNING
and NICOLE L. BAKOS
____________

Appeal 2006-0580
Application 09/911,024
Technology Center 3600
____________

Decided:1 March 6, 2009
____________

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES T. MOORE, Vice Chief Administrative Patent Judge,
KENNETH W. HAIRSTON, ALLEN R. MACDONALD,
and, ROBERT E. NAPPI, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

1 Any applicable time period for the Appellant(s) to take further action in
this case, such as the time periods proscribed by 37 C.F.R. §§ 1.304 and
41.50(b), begins to run from the decided date shown on this page of the
decision. The time period does not run from the Mail Date (paper delivery)
or Notification Date (electronic delivery).
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BACKGROUND - PROCEDURAL
The Appellants appealed under 35 U.S.C. § 134 from a final rejection
of claims 1 to 66. In a decision dated November 30, 2006, the Board
reversed the decision of the Examiner rejecting claims 1 and 2 under 35
U.S.C. § 103(a), and affirmed the decision of the Examiner rejecting claims
3 to 66 under 35 U.S.C. § 103(a) because “the appellants have not presented
any patentability arguments for these claims.”
Our reviewing court in In re Reuning, 276 Fed. Appx. 983 (Fed. Cir.
April 25, 2008) (unpublished) vacated-in-part the Board’s decision with
respect to claims 3 to 66, and remanded for further proceedings.
Specifically, we are mandated to conduct “additional investigation and
explanation” Id. at 987.
After additional investigation and reconsideration of the record on
appeal, we hereby vacate the remainder of the original Board decision which
reversed the rejection of claims 1 and 2.
We shall sustain the Examiner’s obviousness rejections of claims 1
to 66.

BACKGROUND - FACTUAL
Summary of Appellants’ Invention
The Appellants have invented a method and a system for harvesting
professional profile contact information data via a search of the internet
(Spec. 1 to 3).
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Representative Claim
Claim 1 was selected by the Appellants as a representative claim for
the rejections, and it reads as follows:
1. A method for harvesting professional profiles, the method
comprising:
Searching the Internet,
Identifying web pages and Internet postings containing professional
profile data,
Collecting said professional profile data,
Identifying in said professional profile text strings constituting contact
information data, and
Storing said Professional Profile and said contact information data
into a data structure. (Br. at 21).

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Peach US 5,321,604 Jun. 14, 1994
Boguraev US 5,799,268 Aug. 25, 1998
Hartman US 2002/0111958 A1 Aug. 15, 2002
(effective filing date Feb. 8, 1996)
Watter S. Mossberg (Mossberg), Personal technology: Threats to
privacy on-line become more worrisome, Wall Street Journal, New
York, Oct. 24, 1996.

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Examiner’s Rejections
The Examiner rejected claims 1 to 25, 33 to 58, and 66 under 35
U.S.C. § 103(a) based upon the teachings of Hartman, Mossberg, and
Boguraev.
The Examiner rejected claims 26 to 32 and 59 to 65 under 35 U.S.C.
§ 103(a) based upon the teachings of Hartman, Mossberg, and Peach.

ISSUES
Have the Appellants shown error in the Examiner’s finding that the
applied references would have suggested to one of ordinary skill in the art
the claimed harvesting of professional profiles via the internet, and the
conclusion that the subject matter of claims 1 to 11, 13-25, 33 to 44, 46 to
58, and 66 would have been obvious?
Have the Appellants shown error in the Examiner’s finding that the
nonfunctional descriptive material of claims 12 and 45 does not distinguish
these claims from the prior art, and the conclusion that the subject matter of
claims 12 and 45 would have been obvious?
Have the Appellants shown error in the Examiner’s articulated
reasoning and conclusion that collecting computer stored data and
combining that data into a deliverable medium of claims 26 to 32 and 59 to
65 would have been obvious to the skilled artisan?

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FINDINGS OF FACT
1. The Appellants have acknowledged that claim 1 has five steps,
“each one of which is known in the art” (Br. 3).
2. Mossberg discloses a method called “mining” which involves
“scooping up” information from discussion sites on the internet. (Mossberg,
¶ 9).
3. Mossberg describes those discussion sites as public discussion
groups in which individuals have participated (Id.).
4. Mossberg describes that the information can include email
addresses. (Id.).
5. Mossberg describes publishing the information in a directory site
(Id.).
6. The Appellants specification notes that:
The invention is generally applied to advertise to end users of
business product and potential employee recruits. Thus, the
descriptions herein refer mostly to contact information based on
professional profile data. (Specification, page 11, ll. 29-32).

7. Professional profile data includes contact information. (FF6).
8. An email address is a form of contact information.
9. Mossberg therefore describes the steps of searching the internet,
identifying web pages and internet postings containing professional profile
data, and collecting said professional profile data.
10. Boguraev also describes a method of analyzing online technical
information using computer-mediated linguistic analysis to extract useful
knowledge. (Col. 4, ll. 52-57).
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11. Boguraev’s analysis includes “mining” online knowledge (col.
57, ll. 10-15) by syntactic recognition by a pattern recognition engine (col.
58, ll. 24-39).
12. Boguraev therefore describes identifying text strings constituting
useful data from online sources (FF 11).
13. Hartman (Fig. 1) describes an internet based resume storage and
retrieval system 10 that comprises a World Wide Web server 12 that
includes a memory 14 and a database 16 (¶ 0040). The communication
hardware 24 in Figure 2 of Hartman connects the server 12 to the internet
(¶ 0040) using TCP/IP Internet protocol (¶ 0043).
14. Hartman states that “[t]he form 30 is useful in that it provides
searchable information” (¶ 0054), and “[f]or World Wide Web applications,
the form 30 is an HTML form” (¶ 0047).
15. Hartman describes a client 138 in communication with the server
12 via the internet (¶¶ 0057 to 0059) conducting a keyword search (¶ 0060)
for specific profile contact information data (¶¶ 0061and 0064) in resumes.
16. Hartman stores the search requests and results at server 12
(¶¶ 0068 and 0132).
17. Hartman describes the storing of contact information in the
server (¶ 48).
18. Hartman therefore describes storing professional profile
information and contact information data into a data structure on a web
server. (FF 13-17).

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PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
ANALYSIS
I. The Rejection of Claims 1-11, 13-25, 33-44, 46-58 and 66 over the
combination of Hartman, Mossberg, and Boguraev.2
The Examiner has found that Hartman describes a method of
collecting professional profile data, identifying contact information data, and
storing professional profile information and contact information in a data
structure. (Ans. at 5, Final Rejection at 2).
The Examiner has additionally found that Mossberg discloses a
method for harvesting professional profiles by searching the internet, and
identifying web pages and internet postings containing profile data. (Ans. at
6, Final Rejection at 3).
Moreover, the Examiner has found that Boguraev describes
identifying data in document text strings. (Ans. at 6, Final Rejection at 3).
The Examiner then concluded that it would have been obvious to one
of ordinary skill in the art at the time the invention was made to search the
internet, identify web pages containing profile data, and identify text strings
in the data as described in the combination of Boguraev, Mossberg, and
Hartman to increase effectiveness and customer reach by obtaining profile
data directly from the internet. (Ans. at 7, Final Rejection at 3).

2 Office Action, December 30, 2003, p. 2. The examiner’s answer of July 21,
2004 combines this rejection with the rejection of claims 12 and 45 at p. 2.
We address them separately.
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With this background in place, we look at the arguments raised by the
Appellants.
a) Antedating of Mossberg
The Appellants urge that all rejections which include Mossberg
should be reversed because the Appellant “possessed at least two of the five
claim limitations recited in pending claim 1” (Br. at 7) and possession is
established by the Rule 131 (37 CFR §1.131 (2008) declaration of the
inventor of July 14, 2000.
Rule 131 reads as follows, in pertinent part (bracketed material
added):
§ 1.131 Affidavit or declaration of prior invention
(a) When any claim of an application . . . is rejected … the
inventor [Reuning in this case] of the subject matter of the rejected
claim … may submit an appropriate … declaration to overcome the
patent or publication. The oath or declaration must include facts
showing a completion of the invention in this country … before the
date of the printed publication …
(b) The showing of facts shall be such, in character and weight,
as to establish [1] reduction to practice prior to the effective date of
the reference, or [2] conception of the invention prior to the effective
date of the reference coupled with due diligence from prior to said
date to a subsequent [actual] reduction to practice or to the filing of
the application [i.e., a constructive reduction to practice]. Original
exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the … declaration or their absence must
be satisfactorily explained.

A declaration submitted pursuant to Rule 131 is evaluated on its
merits by considering the evidence relied upon in light of the arguments
made explaining why the evidence is sufficient. The Board has broad
discretion as to the weight to be given the evidence. In re American
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Academy of Science Tech Center, 367 F.3d 1359, 1368 (Fed. Cir. 2004); In
re Inland Steel, Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001). The Board also
assesses the credibility of any witness. In re Curtis, 354 F.3d 1347, 1354
(Fed. Cir. 2004).
Procedurally, the Appellants failed to file the declaration in the
present application file 09/911,024. The Examiner did not consider it
because it was not of record in the pending application. The Appellants
have now supplied it as an attachment to the Brief on Appeal. For that
reason alone, this argument is without merit.
Moreover, we note that the declaration is on its face legally
insufficient. It fails to address each claim element and explain why each
action referenced in the declaration was either a conception or a reduction to
practice. For example, paragraph 3 states, without elaboration, regarding
conception:
3. I conceived of a system for searching for potential employment
candidates. I conceived of a system including each of the elements of
my currently-pending claims. I did this not later than September 10,
1996.

First, that statement relates to a completely different set of claims in a
different application. Second, even were we to accept the declaration, it
does not state what was done and how it relates to the claim elements. The
declaration does not state with any specificity what was conceived or what
was reduced to practice and how. Consequently, the facts recited in the
declaration and accompanying argument are insufficient to establish
conception or reduction to practice of any of the individual elements of the
instant claims before the date of the reference.
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We note the Appellants appear to argue that possession of two of the
five elements of the claim is enough to establish conception or reduction to
practice, citing In re Spiller, 500 F.2d 1170 (C.C.P.A. 1974) and In re
Stryker, 435 F.2d 1340(C.C.P.A 1974). This argument, regardless of
whether it has any potential merit, is inapplicable to the instant appeal. The
Appellants have not shown an antedating conception or reduction to practice
involving any of the elements of the instant claims with sufficient credible
evidence.
This argument therefore is unpersuasive of error on the part of the
Examiner on its merits.
b) The Arguments Concerning Hartman, Mossberg, and Boguraev
The Appellants discuss each reference individually and raise
numerous grounds of appeal, including a lack of motivation to combine in
the references of record (Br. 14, 17, and 18), non-analogous prior art
references (Br. 16), and a teaching away in individual references (Br. 13).
The claimed steps were well-known in the art
It is not in dispute that the claimed method steps were well known in
the art. Arguments not made in the Brief are waived. See Hyatt v. Dudas,
551 F.3d 1307, 1313-14 (Fed. Cir. 2008).
Further, Appellants’ statement in the Brief that “claim 1 requires five
elements, each one of which is known in the art” (Br. 3) is binding on the
Appellants as an admission that the steps are prior art to them for purposes
of determining the obviousness of the claimed method, and is “an admission
that that matter is prior art for all purposes . . . .” See Constant v. Advanced
Micro-Devices, Inc., 848 F.2d at 1570; In re Nomiya, 509 F.2d at 571 n.5.
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Moreover, the art of record amply supports the proposition that each
step was individually known to be performed in related art.
Mossberg describes data mining of email addresses (a form of contact
information, which falls within the claimed professional profile) from the
internet and publishing that information in a database. Mossberg therefore
describes the steps of searching the internet, identifying web pages and
internet postings containing professional profile data, and collecting said
professional profile data.
Boguraev describes a method of analyzing online technical
information using computer-mediated linguistic analysis to extract useful
knowledge. Boguraev uses the term “mining” in reference to this online
knowledge by syntactic recognition by a pattern recognition engine.
Hartman describes an internet-based resume storage and retrieval
system that includes a web based server having a database structure.
One of ordinary skill in the art at the time the invention was made
would therefore recognize that these five steps set forth in claim 1 were well
known in the art at the time the invention was made.
The results of this combination were predictable
The record is completely silent as to any unpredictable results that
flowed from Appellants’ combination of the five well-known steps set forth
in claim 1 (Br. 3). Based upon the teachings of Hartman, as buttressed by
Appellants’ admission and the cumulative teachings of Mossberg and
Boguraev, we find that the claim 1 combination made by Appellants yielded
predictable results as opposed to unpredictable results. Attorney argument
aside, there is no persuasive evidence in the record to establish that known
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mining methods, known text identification, and known data structures
yielded anything other than predictable results. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 127 S. Ct. at 1739.
Additional Specific Arguments
Appellants make multiple repeated arguments (Br. 5 to 18) concerning
the individual shortcomings in the teachings of each of the applied
references to Hartman, Mossberg, and Boguraev. We have carefully
reviewed these arguments, however, and they are not convincing of the
nonobviousness of the claimed invention set forth in claim 1. For example,
the Appellants criticized Hartman for not teaching that the collected profile
data is from web pages and internet postings (Br. at 12, ll. 26-27). We note
that Mossberg, not Hartman, is relied upon for that description as part of the
combination of references. It is for this reason one can not show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Appellants’ arguments (Br. 14 to 18) concerning lack of a suggestion
to make the combination are without merit in view of the admission by
Appellants and the teachings of the applied references, especially Hartman
as discussed above (Br. 14 to 17). Moreover, an express suggestion is not a
rigid requirement, especially when, as here, the elements are all familiar and
yield expected results.
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Appellants’ arguments (Br. 10 and 11) concerning lack of an enabling
disclosure by Mossberg are entitled to little, if any, weight in the absence of
evidence in the record to buttress such an argument. The Appellants have
not shown with any persuasive evidence that one of ordinary skill in the art
would not be able to data mine as described by both Mossberg and
Boguraev.
Appellants’ argument (Br. 16) that Boguraev is from a non-analogous
art is without merit since Boguraev, like Appellants’ disclosed and claimed
invention, is concerned with online searching for data (col. 4, ll. 52 to 57;
col. 6, ll. 66 and 67; col. 65, l. 46 to col. 66, l. 5) (FF 11). Moreover,
Boguraev uses the same terminology - “mining” - in the same context. The
evidence of record simply does not support the Appellants’ position.
Accordingly, we are unpersuaded of error in this regard.
In summary, Appellants’ many arguments throughout the Brief do not
convince us of any error in the Examiner’s finding of obviousness of the
subject matter set forth in claim 1 on appeal. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
Furthermore, the Appellants have not presented any patentability
arguments specifically directed to claims 2-11, 13-25, 33-44, 46-58 and 66
in the obviousness rejection based upon the combined teachings of Hartman,
Mossberg, and Boguraev. As a consequence, we shall affirm the rejection of
these claims.

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II. The Rejection of Claims 12 and 45 over the combination of
Hartman, Mossberg, and Boguraev.3
The Appellants have provided no separate argument pointing to any
error in the rejection of claims 12 and 45. Accordingly, we affirm the
rejection of these claims. Again we note that arguments not made in the
Brief are waived. See Hyatt v. Dudas, 551 F.3d at 1313-14.

III. The Rejection of Claims 26 to 32 and 59 to 65 over the
combination of Hartman, Mossberg, and Peach
Claims 26-32 and 59-65 stand rejected under 35 U.S.C. §103 over the
combination of Hartman, Mossberg, and Peach.
The Examiner found that Peach describes selecting one or more items
from a collection of computer stored images, computer stored text objects,
computer stored audio objects, or other computer stored objects, and
combining those objects into a deliverable medium. (Ans. at 10, Final
Rejection at 7).
The Examiner then concluded that it would have been obvious to one
of ordinary skill in the art to include selecting one or more items from a
collection of computer stored images, computer stored text objects,
computer stored audio objects, or other computer stored objects, and
combining those objects into a deliverable medium and combining them into
the system of Mossberg, Hartman, and Peach. (Id.).

3 Office Action, December 30, 2003, p. 6. The examiner’s answer of July 21,
2004 combines this rejection with the rejection of claims 1-11, 13-25, 33-44,
46-58 and 66 at p. 2.
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The Appellants urge that Peach lacks any suggestion to make the
combination. (Br. at 18).
This argument has not persuaded us of error in the Examiner’s
rejection as it relies upon a strict application of the teaching, suggestion,
motivation (TSM) test. The Supreme Court has discouraged rigid use of the
TSM test, and has said that obviousness rejections must be based on an
articulated reasoning with rational underpinning. Appellants have not
persuaded us that the Examiner’s rejection is not based upon a rational
underpinning.
Thus, Appellants’ arguments have not persuaded us that the
Examiner’s rejection of claims 26 to 32 and 59 to 65 based on the combined
teachings of Hartman, Mossberg, and Peach is in error.
Accordingly, we affirm this rejection as well.

CONCLUSION OF LAW
Appellants have not shown error with the Examiner’s conclusion that
claims 1 to 11, 13-25, 33 to 44, 46-58, and 66 would have been obvious to
one of ordinary skill in the art.
Appellants have not shown error with the Examiner’s conclusion that
claims 12 and 45 would have been obvious to one of ordinary skill in the art.
Appellants have not shown error in the Examiner’s reasoning for
finding that claims 26 to 32 and 59 to 65 would have been obvious to the
skilled artisan based upon the teachings of the applied references.

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ORDER
The obviousness rejections of claims 1 to 66 are 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)(1)(iv).

AFFIRMED

KIS

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