Ex Parte Shaouy et al

Patent Trial and Appeal Board

Nov 22, 2016

12886200 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/886,200 09/20/2010
37945 7590 11/25/2016
DUKEW, YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
William Philip Shaouy
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.
END920100106US1 1132
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM PHILIP SHAOUY and MATTHEW ADAM TERRY
Appeal2014-009290
Application 12/886,200
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-19 and 21. We have jurisdiction under 35 U.S.C.
§ 6(b ).
STATEMENT OF THE DECISION
We AFFIRM-IN-PART.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed Feb.
6, 2014), Reply Brief ("Reply Br.," filed Aug. 28, 2014), the Examiner's
Answer ("Ans.," mailed July 2, 2014), and the Final Rejection ("Final Act.,"
mailed Sept. 11, 2013).
2 Appellants identify the real party in interest as "International Business
Machines Corporation" Appeal Br. 2.
Appeal2014-009290
Application 12/886,200
CLAIMED fNVENTION
The claimed invention relates to "a method and apparatus for finding
persons using information on a network data processing system using a
semantic web" (Spec. para. 1 ). Claims 1, 14, and 19 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the subject
matter on appeal (Appeal Br. 20-21, Claims App.).
1. A method for locating people, the method comprising:
identifying, by a mobile data processing system, a number
of degrees of separation from a requestor in searching for the
people;
searching, by the mobile data processing system, a
network data processing system for data structures that contain
information about associations between the people that are
within the number of degrees of separation from the requestor to
generate an initial group of people;
defining a geographic boundary for the searching by
receiving a drawing of a boundary with an irregular shape on a
map;
identifying, by the mobile data processing system, a group
of people from the initial group of people that are within a
geographic location based on a location of the mobile data
processing system and a portion of the group of people who are
online; and
displaying, by the mobile data processing system, the
portion of the group of people on a display device for the mobile
data processing system;
displaying a first control and a second control, the first
control to change the display to a relationship view and the
second control to change the display to a map view;
displaying, in the relationship view:
an identification of each person in the portion of the
group of people displayed on the display device;
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Appeal2014-009290
Application 12/886,200
a degree of separation from the requestor to the
identification of the each person in the portion of the group
of people displayed on the display device;
a distance between the each person in the portion of
the group of people displayed on the display device and
the mobile data processing system; and
a first communication control and a second
communication control for each person in the portion of
the group of people,
the first communication control to initiate a call
with a respective person in the portion of the group of
people, and
the second communication control to send a text
message to the respective person;
displaying, in the map view:
a map with a location of each person in the portion
of the group of people displayed on the display device for
the mobile data processing system;
a balloon related to a person in the portion of the
group of people when the person is selected;
a third communication control in the balloon to
initiate a call with the person;
a fourth communication control in the balloon to
send a text message to the respective person;
a distance in the balloon between the person and the
mobile data processing system; and
a boundary control to control display of the
geographic boundary used for the searching.
REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Birnie
Popp
US 2008/0104227 Al
US 2009/0153492 Al
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May 1, 2008
June 18, 2009
Appeal2014-009290
Application 12/886,200
Peh
Kreitzberg
US 2010/0087230 Al
US 2011/0064074 Al
Apr. 8, 2010
Mar. 17, 2011
Claims 1-19 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Birnie, Kreitzberg, Popp, and Peh.
ANALYSIS
Independent claim 1
Independent claim 1 requires, inter alia, "displaying, in the map view:
... a balloon related to a person ... a third communication control in the
balloon to initiate a call with the person; a fourth communication control in
the balloon to send a text message to the respective person" (Appeal Br. 21,
Claims App.).
The Examiner finds the "balloon" in Birnie in the detailed display
disclosed in paragraph 200, and also in Peh in icon 6204 shown in Figure 62
and described in paragraphs 143 and 145 (Ans. 5---6). The Examiner finds
the third and fourth communication controls in Birnie in chat button 1220.
Appellants contend that Birnie does not disclose the third and fourth
communication controls in the balloon as required by claim 1 because
"Birnie's chat button 1220 does not appear within the balloon" (Appeal Br.
14, 15).
In the Answer, the Examiner responds that "it is the Peh reference that
teaches the balloon display" and "[i]t is the combination of these references
which teach the limitation" (Ans. 17).
We are persuaded by Appellants' arguments.
A rejection based on § 103 must clearly rest on a factual basis. The
Examiner has the initial duty of supplying the factual basis for the rejection
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Appeal2014-009290
Application 12/886,200
and may not resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis. We have reviewed
the cited portions of Birnie and see no discussion of any communication
controls in a balloon as required by claim 1. Paragraph 200 of Birnie
describes a detailed display such as display 1000 shown in Figure 10. There
is no indication in paragraph 200 or Figure 10 that chat button 1220 is
included in the detailed display that the Examiner equates to the "balloon" of
claim 1. The Examiner has not made a determination on the record that it
would have been obvious to include chat button 1220 in a balloon (such as
display 1000). Although the Examiner indicates that the rejection is
generally based on "the combination of these references" (Ans. 17), the
Examiner has not specifically determined that it would have been obvious to
include Birnie's chat button 1220 in Peh's icon 6204, and has not articulated
any reason for such a hypothetical modification.
Accordingly, we do not sustain the rejection of independent claim 1 as
obvious over Birnie, Kreitzberg, Popp, and Peh. For the same reasons, we
do not sustain the rejection of claims 2-13 and 21 dependent thereon. Cf In
re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious").
Claims 14-19
Appellants do not allege any error in the Examiner's rejection of
claims 14--19 (Appeal Br. 7) ("[t]he Appellants address only claim 1 in this
brief'). Appellants argue, for the first time in the Reply Brief, that
"[i]ndependent claims 14 and 19 have similar claimed subject matter as
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Appeal2014-009290
Application 12/886,200
distinguished claim 1" (Reply Br. 17)3. Contrary to Appellants' assertion,
claims 14 and 19 do not contain the limitation in claim 1 discussed above.
For example, claims 14 and 19 do not recite "a balloon" (Appeal Br. 24--26).
Accordingly, we sustain the rejection of claims 14--19.
DECISION
The Examiner's decision to reject claims 14--19 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner's decision to reject claims 1-13 and 21under35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
3 Although we choose to address it here, we note that Appellants use the
Reply Brief to introduce new arguments with respect to claims 14 and 19
(see Reply Br. 17). "Any bases for asserting error, whether factual or legal,
that are not raised in the principal brief are waived." Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative); see also Optivus Tech.,
Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief ... is waived.") (citing
Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 800 (Fed. Cir.
1990)). The Examiner's findings as to claims 14 and 19 remain unchanged
from the Final Rejection, from which the instant appeal was taken (Ans. 7-
9; Final Act. 7-9). Appellants could have presented the newly introduced
arguments in the Appeal Brief. Appellants may not present arguments in a
piecemeal fashion, holding back evidence and arguments until an examiner
answers the original brief. This basis for asserting error is waived. See 3 7
C.F.R. §41.37(c)(l)(iv).
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