Kiciman, Emre Mehmet. et al.

Patent Trials and Appeals Board

Apr 17, 2020

12614457 - (D) (P.T.A.B. Apr. 17, 2020)

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.
12/614,457 11/09/2009 Emre Mehmet Kiciman 328456.01 8623
69316 7590 04/17/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
BURKE, TIONNA M
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
04/17/2020 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMRE MEHMET KICIMAN, WISSAM KAZAN,
CHUN-KAI WANG, AARON C. HOFF, FELIPE LUIS NARANJO, and
FRANCISLAV P. PENOV
Appeal 2019-001144
Application 12/614,457
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Microsoft Technology Licensing, LLC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims relate to context-sensitive social networking. Spec. ¶ 4.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method comprising the following computer-executable
acts:
responsive to an application executing on a client
computing device requesting a page, extracting an entity from
the page, the entity being at least one keyword on the page and
a canonical meaning of the at least one keyword;
comparing the entity with entities extracted from
messages generated by way of a social networking application,
the messages being associated with an account of a user of the
client computing device, the account being with the social
networking application;
identifying a message in the messages based upon the
comparing of the entity extracted from the page with the
content of the plurality of messages; and
responsive to identifying the message in the messages,
causing the message to be displayed together with the page on a
display of the client computing device.
REFERENCES
The prior art relied upon by the Examiner is:
Manhas
Pennington
Reeder
Eustice
Byrd
Punera
US 2007/0073756 A1
US 2008/0134040 A1
US 2009/0282002 A1
US 2010/0030715 A1
US 5,832,480
US 2009/0287774 A1
Mar. 29, 2007
June 5, 2008
Nov. 12, 2009
Feb. 4, 2010
Nov. 3, 1998
Nov. 19, 2009
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REJECTIONS
Claims 1, 3, 4, 7, 9–12, 14, and 182 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Reeder, Eustice, and Byrd. Final
Act. 2.
Claims 2 and 20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Reeder, Eustice, Byrd, Manhas, and Punera.3 Id. at 9.
Claims 5, 6, 8, 13, 15–17, and 19 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Reeder, Eustice, and Byrd, and
Pennington. Id. at 12.
ANALYSIS
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant and in light
of the arguments and evidence produced thereon. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are
waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv).

Claim 1
Issue 1: Did the Examiner err in finding that the combination of
Reeder, Eustice, and Byrd teaches or suggests “comparing the entity with
entities extracted from messages generated by way of a social networking
application, the messages being associated with an account of a user of the

2 Although the Examiner’s statement of the rejection does not refer to
claim 18 (Final Act. 2), the body of the rejection does (Final Act. 8–9).
3 Although the Examiner’s statement of the rejection does not refer to
Punera (Final Act. 9), the body of the rejection does (Final Act. 10, 12).
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client computing device, the account being with the social networking
application,” as recited in claim 1? Appeal Br. 10–13; Reply Br. 3–6.
In the Final Action, the Examiner finds Reeder discloses this
limitation, apart from the “extracted” element, for which the Examiner relies
upon Eustice. Final Act. 3 (citing Reeder ¶¶ 41–45), 4 (citing Eustice
¶¶ 15, 16). Appellant contends that “there would be no need to perform
entity extraction in the system of Reeder.” Appeal Br. 12. And referring to
Eustice’s teachings of a “server . . . analyz[ing] documents . . . in order to
extract entities,” Appellant contends that “modifying Reeder with the
teachings of Eustice results in entities being extracted from the products
pages requested by the user.” Id. (citing Eustice ¶ 16). Appellant further
contends, “[t]he combination of Reeder and Eustice, however, would not
result in an entity extracted from the page being compared with entities
extracted from social media messages—it would only result in an entity in
the products page being extracted.” Id.
In the Answer, the Examiner clarifies,
[a]lthough Reeder does not extract entities from
messages within the social network, Eustice teaches extracting
entities from web pages served to the user device. Eustice
teaches the entities being people, organization, locations or
other real world items (see paragraphs [0016], [0021], [0022]).
The entities are extracted by analyzing data flowing to and from
the user device and identifies the relationships between the
entities. Thus, combining the teachings of Reeder with
Eustice’s teachings of extracting entities, disclose[s] this
limitation.
Ans. 4.
Appellant responds, “Eustice does not suggest extracting entities from
social networking messages that are not on a page that is retrieved by the
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user, and also does not suggest comparing entities extracted from separate
sources, much less comparing an entity extracted from a page with entities
extracted from social networking messages.” Reply Br. 6.
Appellant’s argument does not persuasively address the Examiner’s
clarified findings in the Answer. While Appellant contends that “Eustice
does not suggest extracting entities from social networking messages that are
not on a page that is retrieved by the user,” the Examiner merely applies
Eustice for its teaching of “extracting entities.” See Ans. 4.
Likewise, Appellant’s argument that Eustice “also does not suggest
comparing entities extracted from separate sources, much less comparing an
entity extracted from a page with entities extracted from social networking
messages” (Reply Br. 6), does not squarely address the Examiner’s finding
that Eustice is merely applied for “extracting entities.” Ans. 4. The
Examiner relies on Reeder for the remaining limitations. Appellant’s
arguments attacking the references in isolation do not address the underlying
factual findings made by the Examiner, which are based upon the combined
teachings and suggestions of the cited references. One cannot show non-
obviousness by attacking references individually, where the rejections are
based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Issue 2: Did the Examiner err in finding that the combination of
Reeder, Eustice, and Byrd teaches or suggests “identifying a message in the
messages based upon the comparing of the entity extracted from the page
with the content of the plurality of messages,” as recited in claim 1? Appeal
Br. 13; Reply Br. 6–7.
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Appellant contends,
Reeder does not suggest extracting entities, and it is therefore
not possible for Reeder to suggest the above-highlighted
features. Moreover, even if Reeder were modified with the
teachings of Eustice, the combination does not result in an
entity extracted from the products page being compared with
content of messages, much less the identification of a message
based upon such a comparison.
Appeal Br. 13. Appellant’s argument depends entirely on its argument for
the “comparing” limitation. Because we find that argument unpersuasive
(see supra), we also find this argument unpersuasive.
Issue 3: Did the Examiner err in finding that one of ordinary skill in
the art would have combined Reeder and Eustice? Appeal Br. 13–14; Reply
Br. 7–8.
The Examiner initially determines one of ordinary skill in the art
would have combined Eustice with Reeder “for the purpose of being user
friendly by automatically extracting entities from the website, as taught by
Eustice.” Final Act. 4. Appellant contends,
[d]espite several requests, the Examiner has not provided any
explanation as to how extracting an entity from a products page
or query, as would result if Reeder were modified with Eustice,
has an impact on “being user friendly.” It is unclear as to how
modifying Reeder to recognize named entities in a web page
loaded at a user device (or recognizing named entities in social
media messages) would in any way impact the user friendliness
of Reeder. Therefore, the reasoning proffered by the Office for
modifying the teachings of Reeder with those of Eustice lacks
rational underpinning, and this rejection should be reversed.
Appeal Br. 13.
Subsequently, the Examiner clarifies that “[i]t would be user friendly
to the user if the user only have to navigate to a page and from there,
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relevant content and messages are returned to the user in a side bar or pop up
window, without user intervention.” Ans. 5.
Appellant responds that “[t]he proffered modification to Reeder,
however, is not germane to user-friendliness of Reeder.” Reply Br. 7.
Appellant asserts that “[e]xtracting an entity from the page [in Reeder] in no
way impacts user-friendliness.” Id. And Appellant contends, “the
Examiner’s rationale is based upon improper hindsight, as the benefit of
providing ‘relevant content and messages . . . returned to the user in a side
bar or pop up window, without user intervention’ is based upon knowledge
gleaned only from applicant’s disclosure.” Id.
Appellant’s argument is unpersuasive. Appellant does not point to
any evidence of record that the combination would be “uniquely challenging
or difficult for one of ordinary skill in the art” or “represent[] an unobvious
step over the prior art.” Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418–19 (2007)). Nor has Appellant provided objective evidence of
secondary considerations, which our reviewing court states “operate[] as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and
Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” because the skilled artisan is “a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 420–21. The claimed subject matter
exemplifies the principle that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416. Indeed, extracting
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information from data, as in Eustice, is a common and well-understood
activity by one of ordinary skill in the art, and Appellant points to no
teaching in Reeder that disparages or otherwise teaches away from that
activity.
Moreover, where, as here, the Examiner has articulated a reason
having rational underpinnings for making a proposed combination of prior
art teachings, that articulated reasoning demonstrates the combination is not
based on hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”) (cited with approval in KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)). A reason to combine
teachings from the prior art “may be found in explicit or implicit teachings
within the references themselves, from the ordinary knowledge of those
skilled in the art, or from the nature of the problem to be solved.” WMS
Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)
(citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
Accordingly, we sustain the Examiner’s rejection of claim 1.

Claim 20
Issue 4: Did the Examiner err in finding that the combination of
Reeder, Eustice, Byrd, Manhas, and Punera teaches or suggests “responsive
to determining that the content of the message is related to the entity,
highlighting the entity on the arbitrary page,” as recited in claim 1? Appeal
Br. 15; Reply Br. 8–9.
Appellant contends that Punera’s teaching of a user who manually
highlights a user identifier in order to filter reviews “cannot fairly be
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characterized as “highlighting the entity on the arbitrary page . . . responsive
to determining that the content of the message is related to the entity.”
Appeal Br. 15 (emphasis omitted).
The Examiner finds,
Punera teaches determining the content of interest and
highlighting the content (see paragraphs [0019]-[0021]).
Punera teaches the user can search a particular topic on a social
network and choose to only highlight reviews from entities and
users of interest. Thus, Punera teaches the functionalities of
highlighting related content of interest in a social networking
environment.
Ans. 6; see also Final Act. 12 (“Punera teaches determining the content of
interest and highlighting the content.”).
Appellant responds that Punera’s manual highlighting teachings are
“not germane to a computing system highlighting an entity on a page
responsive to determining that content of a message (that is separate from
the page) is related to the entity.” Reply Br. 9.
We agree with Appellant. Claim 20 requires a “processor to perform
acts comprising . . . responsive to determining that the content of the
message is related to the entity, highlighting the entity on the arbitrary
page.” Punera merely discloses that a “user” can “highlight the user-ids of
the friends who have reviews in which the user is interested.” Punera ¶ 21.
The Examiner has not relied on any of the other cited references to
teach this element. Accordingly, we do not sustain the Examiner’s rejection
of claim 20 or its corresponding dependent claims. We do not reach
Appellant’s further allegations of error with respect to claim 20 because we
find the issue discussed above to be dispositive of the rejection of claim 20.

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Dependent Claims
Appellant separately argues claims 2, 13, and 19. Appeal Br. 14–16.
Regarding claim 2, Appellant contends, “the Examiner has not set
forth any rationale as to why one would modify the combination of Reeder,
Eustice, Byrd, and Manhas with teachings of Punera.” Appeal Br. 14.
Appellant is incorrect, as the Examiner explicitly determines, “it would have
been obvious to one having ordinary skill in the art at the time the invention
was made to modify the method disclosed by Reeder, Eustice and Byrd for
the purpose of being user friendly and efficiently delivering text relevant to
the user, as taught by Punera.” Final Act. 9–10. As Appellant does not
challenge the merits of this finding, Appellant does not persuade us of
Examiner error.
Regarding claim 13 (and similar claim 19), Appellant contends,
“[t]here is no mention, in any portion of Pennington, of directing a user to a
search engine, and causing the search engine to perform a search in response
to the user selecting a hyperlink in a message.” Appeal Br. 16. The
Examiner finds Pennington discloses “links in the messages to direct a user
to iTunes to search for specific music to listen.” Ans. 6 (citing Pennington
¶ 53); see also Final Act. 15–16 (citing Pennington ¶¶ 54, 55).
We agree with Appellant because Pennington merely discloses “links
to play music on specific sites of network 108, such as iTunes,” not a
“hyperlink . . . configured to direct the application to a search engine when
the hyperlink is selected, wherein the hyperlink is further configured to
cause the search engine to execute a search based upon content of the
message,” as claimed. The Examiner has not relied on any of the other cited
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references to teach this element. Accordingly, we do not sustain the
Examiner’s rejection of claim 13 or of similar claim 19.
As for the remaining dependent claims, Appellant does not argue
them separately. See Appeal Br. 14–16. We therefore also sustain the
Examiner’s rejection of the remaining dependent claims. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed
1, 3, 4, 7, 9–
12, 14, 18
103 Reeder, Eustice, Byrd 1, 3, 4, 7,
9–12, 14,
18

2, 20 103 Reeder, Eustice, Byrd,
Manhas, Punera
2 20
5, 6, 8, 13,
15–17, 19
103 Reeder, Eustice, Byrd,
Pennington
5, 6, 8,
15–17
13, 19
Overall
Outcome
1–12, 14–
18
13, 19, 20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART