Ex Parte BARHATE et al

Patent Trial and Appeal Board

Oct 12, 2018

13425608 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/425,608 03/21/2012
68585 7590 10/16/2018
PA TENTS ON DEMAND, P.A. - IBM CAM
4581 WESTON ROAD
SUITE 345
WESTON, FL 33331
FIRST NAMED INVENTOR
CHIRAG K. BARHATE
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.
IN9201 l 0246US 1 1806
EXAMINER
HATCHER, DEIRDRE D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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):
docketing 1@patentsondemand.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIRAG K. BARHATE and MARESH S. P ARADKAR
Appeal2017-004263
Application 13/425,608
Technology Center 3600
Before ERIC S. FRAHM, JOHN P. PINKERTON, and BETH Z. SHAW,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 10-29. Claims 1-9 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is International Business
Machines, Inc. Appeal Br. 3. This case is related to the appeal in US Patent
Application No. 13/483,132 (Appeal No. 2017-004249), which has an
identical inventive entity and real party in interest as the instant case.
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Application 13/425,608
We affirm the rejections of claims 10-29 under 35 U.S.C. §§ 112,
second paragraph, 101, I02(e), and I03(a).
Appellants' application relates to "the field of data handling and, more
particularly, to using the inheritance of professional-social network
information to facilitate organizational position changes." Spec. ,r 1; see
also Title ("Using The Inheritance of Professional-Social Network
Information to Facilitate Organizational Position Changes"). Appellants
claim a computer implemented system for maintaining professional-social
networks including a professional-social network tool for automatically
creating and maintaining a professional-social network for members using
automatically captured "tacit information" (see claims IO, 15, 26), and for
transferring "tacit knowledge" in an organization (see claim 26).
Appellants describe "tacit information" and "tacit knowledge" in the
following manner:
( 1) "Tacit information are those subtle data nuggets that members
learn over time like who is the best supplier to order from or what
font your supervisor prefers for document." Spec. ,r 2.
(2) Tacit information is "information about a performance of the
plurality of job functions of the member's organizational position."
Appeal Br. 8 citing Spec. ,r,r 28, 73-78.
(3) Tacit information can include electronic communications, and "can
represent items, including, but not limited to, email messages,
instant messages, social network postings, text messages, shared
application messages and/or data, electronic documents, Web
forms, and the like." Spec. ,r 27.
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Claim 10 recites that "tacit information" is information "about a
performance of the plurality of job functions of the member's organizational
position;" claim 15 recites that "tacit knowledge comprises information
regarding job functions regarding job functions associated with the first
organizational position" and "tacit information" is information about
"performing job functions of the second organizational position" that a
member is being moved into; and, claim 26 recites "the tacit knowledge
comprises information regarding job functions associated with the first
organizational position."
Claim 10 is representative of the subject matter on appeal, and is
reproduced below, with emphases added to disputed portions of the claim:
10. A computer implemented system for maintaining
professional-social networks comprising:
one or more processors;
one or more memories storing program instructions
executable on at least one of the one or more processors;
a plurality of organizational data defining a plurality of
data items for a plurality of members of an organization;
an organizational model defining a plurality of uniquely-
identified organizational positions held by the plurality of
members of the organization, wherein each uniquely-
identified organizational position has a plurality of job
functions;
a plurality of contacts representing at least one of a
person, a group of people, and another organization with whom
a member interacts with to perform at least one job
function defined for their organizational position, wherein a
contact is at least one of a member of the organization and a
non-member of the organization;
an electronic communications system, comprising at least
one of the one or more processors and comprising at least one
of the one or more memories, configured to convey a plurality
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of electronic communications between the plurality of members
and the plurality of contacts; and
[A] a professional-social network tool, comprising at
least one of the one or more processors and comprising at least
one of the one or more memories, configured to automatically
create and maintain a professional-social network for each
member based upon an automatic analysis of the plurality of
electronic communications in which the member is included,
wherein a professional-social network is comprised of nodes
representing the member's contacts that are connected to the
member by relationships that express an interaction context, [BJ
wherein tacit information about a performance of the plurality
of job functions of the member's organizational position
is automatically captured within the professional-social
network.
REJECTIONS
The Examiner made the following rejections:
(1) The Examiner rejected claims 14 and 15 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention. 2
Final Act. 2-3; Ans. 2.
(2) The Examiner rejected claims 10-29 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter, because claims 10, 15, and
26 are drawn to (a) a fundamental economic activity (e.g. maintaining social
2 Because the Examiner's Answer (Ans. 2) continues to reject claims 14 and
15 under 35 U.S.C. § 112, second paragraph, as being indefinite as per the
rejection made in the Final Rejection, the indefiniteness rejection of claims
14 and 15 is before us on appeal. Appellants do not contest this rejection.
See Appeal Br. 12. Because Appellants do not contest the merits of the
indefiniteness rejection of claims 14 and 15, no issue is presented by
Appellants as to this rejection. Therefore, we sustain the indefiniteness
rejection of claims 14 and 15 proforma. See 37 C.F.R. § 4I.37(c)(l)(iv).
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networks), which is an abstract idea, and can be performed by a human using
pen and paper; and (b) managing interpersonal activities, which can be
considered methods of organizing human activity (Ans. 35--49).
( 3) The Examiner rejected claims 1 0-13 under 3 5 U.S. C. § 102 ( e)
as being anticipated by Skarin (US 2011/0072052 Al; published March 24,
2011). Final Act. 6-10; Ans. 3-7.
( 4) The Examiner rejected claim 14 under 3 5 U.S. C. § 1 0 3 (a) as
being unpatentable over Skarin, Henderson (US 2011/0282944 Al;
published Nov. 17, 2011), and Homsi (US 7,065,493 Bl; issued June 20,
2006). Final Act. 10-12; Ans. 7-9.
(5) The Examiner rejected claims 15-29 under 35 U.S.C. § I03(a)
as being unpatentable over either (a) the base combination of Skarin, Dunn
(US 2012/0102114 Al; published April 26, 2012), and Burritt (US
2012/0110083 Al; published May 3, 2012), or (b) the base combination in
view of various other references. Final Act. 12-35; Ans. 9-32.
Principal Issues on Appeal
Based on Appellants' arguments in the Appeal Brief (Appeal Br. 12-
27) and the Reply Brief (Reply Br. 2--4), the following principal issues are
presented on appeal:
(1) Did the Examiner err in rejecting claims 10-29 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter, because
representative claim 10, taken as a whole in light of the Specification, is
directed to an abstract idea or combination of abstract ideas implemented on
generic computer equipment without reciting an element or combination of
elements that is (are) significantly more than the abstract idea( s)
itself( themselves)?
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(2) Did the Examiner err in rejecting claims 10-13 under 35 U.S.C.
§ 102(e) as being anticipated by Skarin; and/or claim 14 under 35 U.S.C. §
103(a) as being unpatentable over Skarin, Henderson, and Homsi, because
Skarin fails to disclose (a) "automatically creat[ing] and maintain[ing] a
professional-social network for each member based upon an automatic
analysis of the plurality of electronic communications in which the member
is included" (limitation [A]); and (b) "tacit information about a performance
of the plurality of job functions of the member's organizational position"
(limitation [BJ), as recited in representative claim 1 O?
(3) Did the Examiner err in rejecting claim 14 under
35 U.S.C. § 103(a) over Skarin, Henderson, and Homsi because the
references are non-analogous to Appellants' invention recited in claim 14?
(4) Did the Examiner err in rejecting claims 15-29 under
35 U.S.C. § 103(a) over the base combination of Skarin, Burritt, and Dunn
because (a) Skarin fails to disclose automatically creating a professional-
social network and tacit knowledge as recited in claims 15 and 26; and/or (b)
the references are from different fields of endeavor and are therefore non-
analogous to Appellants' invention recited in claims 15 and 26?
ANALYSIS
Issue (1): Patent-Ineligibile Subject Matter
In Alice, the Supreme Court reiterated the two-step framework set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S. Ct. 1289 (2012), for determining whether claimed subject matter is
judicially-excepted from patent eligibility under § 101. Alice Corp. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2355 (2014). Assuming that a claim nominally
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falls within one of the statutory categories of machine, manufacture, process,
or composition of matter, the first step in the analysis is to determine if the
claim is directed to a law of nature, a natural phenomenon, or an abstract
idea (judicial exceptions). Alice, 134 S. Ct. at 2355. For example, abstract
ideas include, but are not limited to, fundamental economic practices,
methods of organizing human activities, an idea of itself, and mathematical
formulas or relationships. Id. at 2355-57. If the claim is directed to a
judicial exception, such as an abstract idea, the second step is to determine
whether additional elements in the claim "'transform the nature of the claim'
into a patent-eligible application." Id. at 2355 (quoting Mayo, 132 S. Ct. at
1297). This second step is described as "a search for an "'inventive
concept" '-i.e., an element or combination of elements that is ' ...
significantly more than ... the [ineligible concept] itself."' Id. at 2355
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
"The first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1854)). "We therefore look
to whether the claims ... focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect that itself
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is the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
Further, as our reviewing court noted in McRO, it is important to
determine "whether the claims ... focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery." 837 F.3d at 1314. In other words, a claim that defines the way
by which a computer-related result is achieved is distinguishable from a
patent-ineligible claim that simply describes a result.
The second step in the Alice analysis requires a search for an
"inventive concept" that "must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (2016). There must be more than "computer
functions [that] are 'well-understood, routine, conventional activit[ies]'
previously known to the industry." Alice, 134 S. Ct. at 2359 (second
alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
Step One of Alice
Regarding step one of Alice, Enfzsh held that the "directed to" inquiry
asks not whether "the claims involve a patent-ineligible concept," but instead
whether, "considered in light of the specification, ... 'their character as a
whole is directed to excluded subject matter."' Enfzsh, 822 F.3d at 1335.
Regarding improvements to computer-related technology, the Court in
Enfish held as follows:
We do not read Alice to broadly hold that all improvements in
computer-related technology are inherently abstract and,
therefore, must be considered at step two. Indeed, some
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improvements in computer-related technology when
appropriately claimed are undoubtedly not abstract, such as a
chip architecture, an LED display, and the like. Nor do we think
that claims directed to software, as opposed to hardware, are
inherently abstract and therefore only properly analyzed at the
second step of the Alice analysis. Software can make non-
abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be
accomplished through either route. We thus see no reason to
conclude that all claims directed to improvements in computer-
related technology, including those directed to software, are
abstract and necessarily analyzed at the second step of Alice, nor
do we believe that Alice so directs. Therefore, we find it relevant
to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea,
even at the first step of the Alice analysis.
Enfzsh, 822 F.3d at 1335. Thus, we determine whether the claims "focus on
a specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, 837 F.3d at 1314.
We agree with the Examiner (Ans. 35-50) that claim 10 is drawn to a
fundamental economic activity (e.g., maintaining professional-social
networks) and a method of organizing human activity (e.g., managing
interpersonal activities, capturing and recording a person or persons' tacit
knowledge, and disassociating members from the professional-social
network), which is an abstract idea.
Claims 10, 15, and 26 recite a "computer implemented system"
( claims 10 and 26) and "computer program product" ( claim 15) having a
"professional-social network tool" ( claims 10 and 26) or "computer usable
program code" ( claim 15) "configured to" perform the functional results of
"automatically creat[ing] and maintain[ing] a professional-social network for
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each member based upon an automatic analysis of the plurality of electronic
communications," and "automatically captur[ing]" "tacit information", but
do not sufficiently describe how to achieve these results in a non-abstract
way (see e.g., claim 10). Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1258 (Fed. Cir. 2016) (holding that claims were directed to an
abstract idea where they claimed "the function of wirelessly
communicating regional broadcast content to an out-of-region recipient,
not a particular way of performing that function").
For example, independent claim 10 merely recites a "computer
implemented system for maintaining professional-social networks"
( claim 10) that is performed by generic computer elements ("one or more
processors" and "one or more memories," "an electronic
communications system," and "a professional-social network tool"
comprising one or more of the memories and processors) for their basic
functions and thus do not transform the claimed abstract idea into eligible
subject matter under Alice. See Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014)
(finding that there is no inventive concept in using a generic computer "to
perform well-understood, routine, and conventional activities commonly
used in industry").
Thus, we conclude claim 10 is simply automating the abstract idea of
maintaining a professional-social network by performing the operations set
forth in claim 10, which we conclude is a fundamental economic practice
and method of organizing human activities and, therefore, constitutes patent-
ineligible subject matter. See Alice, 134 S. Ct. at 2357; Bilski v. Kappas, 561
U.S. 593, 611 (2010); Enfish, 822 F.3d at 1335 ("fundamental economic and
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conventional business practices are often found to be abstract ideas, even if
performed on a computer").
Appellants do not rebut (see generally Reply Br. 2--4) the Examiner's
conclusion that the claims are directed to a fundamental activity that is an
abstract idea for commercial purposes-and that such an abstract idea or
ideas is/are similar to other concepts found to be abstract. See Ans. 41
citing Cybeifone Systems, LLC v. CNN Interactive Group, Inc. (Fed. Cir.
2014) (concluding collecting information, then separating and transmitting
that information according to its classification is an abstract idea);
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed.
Cir. 2014) (invalidating a claim to computerized application of a mental
process for treating medical patients that "doctors do routinely").
Appellants' Reply Brief neither discusses nor disputes the Examiner's
comparison of the instant claims on appeal to those found ineligible in
Cyberfone and/or SmartGene.
Further, we note that examining earlier cases can have a role in
deciding whether a concept that claims are found to be directed to is an
abstract idea. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) ("Instead of a definition [for what an 'abstract
idea' encompasses], then, the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen-what prior cases were about, and which way they were decided.").
We note the similarity of claim 10 to the concept found ineligible in
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1351-53
( collecting information, analyzing it, and displaying results is an abstract
idea). In this regard, the claims of the instant application are similar to the
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claims in Electric Power, which did "not go beyond requiring the collection,
analysis, and display of available information in a particular field, stating
those functions in general terms, without limiting them to technical means
for performing the functions that are arguably an advance over conventional
computer and network technology." 830 F.3d at 1351. Specifically, our
reviewing Court held that "collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas" and that "analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category." Id.
at 1353-54 ( citations omitted).
Our conclusion that claims 10, 15, and 26 are directed to an abstract
idea is supported by analogy to the Federal Circuit's decision in Electric
Power Group, where the court concluded claims that focused on "gathering
and analyzing information of a specified content, then displaying the
results," to be directed to an abstract idea. 830 F.3d at1354.
Here too, Appellants' claims 10, 15, and 26 recite no more than a
generic processor and storage to implement the claimed functions.
Having concluded the claims are directed to an abstract idea that is
patent-ineligible, we tum to step two of the Alice test.
Step Two of Alice
Regarding step two of Alice, Appellants' contentions that (i) the
Examiner has not considered claim 10 as a whole, and "read out limitations
that weigh against a finding in ineligibility;" and (ii) "[ o ]ne claim limitation
missing from the rejection's consideration is 'creating a professional-social
network tool based upon an automatic analysis of the plurality of electronic
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communications in which the member is included"' (see Reply Br. 2), are
unpersuasive. Notably, the term "creating a professional-social network
tool" does not appear in any of claims 10, 15, and/or 26. Claims 10, 15, and
26 merely recite generic computer components, such as "one or more
processors" and "one or more memories" ( claims 10 and 26), "a data store"
and "a computer-implemented system" ( claim 10 and 26), and a "computer
program product" having a "storage medium" with "computer usable
program code" (claim 15). And, although paragraph 28 of Appellants'
Specification describes using a professional-social network tool such as a
software tool, the software tool is merely generic and performs generic
functions (collecting, categorizing, acting on data). The same can be said of
Appellants' Figure 2 (see Spec. ,r,r 11, 38---65 (describing Figure 2)), showing
client devices 210 and 220 and data store 280 in "a system 200 that utilizes a
professional-social network tool 245" (Spec. ,r 38). See Appeal Br. 8,
Summary of Claimed Subject Matter (supporting the "one or more processors
and one or more memories" of claim 10 as elements 210 and 220 shown in
Figure 2); see also Spec. ,r 49 ( describing client devices 210 and 220 as "a
variety of computing devices capable of supporting operation of the
communication user interface 215 and communicating with the
corresponding communications application 240 over the network 295").
Paragraphs 16 through 22 of the Specification also support our understanding
that the computer implemented system and data store recited in claims 10,
15, and 26 on appeal are nothing more than standard, generic computer
components.
Appellants' argument that "[ n Jo evidence is given that these elements
are conventional and well known" (Reply Br. 3), referring to the analysis
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and separation of non-professional communications from professional
communications, is also unpersuasive. Appellants' drawings, in particular
Figure 2, support ignoring electronic communications when they are not
work-related (Fig. 2, step 415; Spec. ,r 73). The Specification does not
provide detailed explanation as to how the communications are separated,
and simply states that "[i]t can be determined if an electronic communication
is work-related in step 410," wherein it can ensured that "social
communications are not included in a member's professional-social
network" (Spec. ,r 72).
Considering the claimed elements individually and as an ordered
combination, the claims do no more than simply instruct the practitioner to
implement the abstract idea on a generic computer or processer. Alice, 134
S. Ct. at 2359; Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir.
2012) ("Simply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible."). And, merely making the practice of an abstract idea more
effective by implementing the idea on a computer does not suffice to meet
the inventive concept requirement of Alice. See OIP Technologies, 788 F.3d
at 1363 ("[R]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.").
In sum, Appellants have not demonstrated their claims provide a
"solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com,
LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014), or provide an "unconventional
technological solution ... to a technological problem" that "improve[ s] the
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performance of the system itself," as explained in Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1300, 1302 (Fed. Cir. 2016).
With regard to claims 12, 20, and 27, Appellants' contention that
these claims "recite in further detail regarding analysis of the electronic
communication and how the network is modified" (Reply Br. 3) is
unpersuasive. Although claims 12, 20, and 27 recite automatically analyzing
communications ( claim 12); "determin[ing] a nature of an electronic
communication," "identify[ing] members and non-members of the
organization, and "compar[ing] the identified nodes 3" (claim 20); and
"analysis of communications exchanged between the members and the
contacts" ( claim 27), these claims do not specify, or provide further detail as
to, how the network is modified. Thus, these steps are nothing more than the
organization of human activity to accomplish a fundamental economic
activity ( e.g., maintaining a social network), which is an abstract idea.
We are, therefore, not persuaded the Examiner erred by rejecting as
patent-ineligible independent claims 10, 15, and 26, as well as claims 11-14,
16-25, and 27-29 depending respectively therefrom.
Issue (2): Anticipation of Claims 10-13
We have reviewed the Examiner's anticipation rejection (Final Act.
6-10; Ans. 3-7) in light of Appellants' arguments in the Appeal Brief
(Appeal Br. 13-23) that the Examiner has erred. Appellants' contentions in
the Appeal Brief are unpersuasive of Examiner error. Because Appellants
3 According to claim 20, "each identified member and non-member is
considered as a node for potential inclusion within the members'
professional-social networks."
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primarily present arguments as to claim 10, and rely on those arguments for
the patentability of claims 11-13, which depend therefrom, we select claim
10 as representative of claims 10-13 rejected for anticipation. For the
reasons discussed below, with regard to claim 10, we adopt as our own
( 1) the findings and reasons set forth by the Examiner in the Final Office
Action from which this appeal is taken (Final Act. 6-9; see also Ans. 3-6),
and (2) the reasons set forth by the Examiner in the Examiner's Answer
(Ans. 51---69) in response to Appellants' Appeal Brief. We concur with the
conclusions reached by the Examiner, and add the following for emphasis.
In formulating the anticipation rejection, the Examiner relies upon
Skarin (Final Act. 9; Ans. 6, 51---69 citing SkarinAbstract; ,r,r 13, 19, 20, 41,
53-55, 60) as disclosing limitations [AJ (a tool for "automatically creat[ingJ
and maintain[ingJ a professional-social network tacit knowledge") and [BJ
("tacit knowledge"), as recited in claim 10.
Limitation [ A J of claim 10 recites, "a professional-social network tool
... , configured to automatically create and maintain a professional-social
network for each member based upon an automatic analysis of the plurality
of electronic communications in which the member is included" ( emphasis
added). The Examiner finds, and we agree, that Skarin (i1i119, 20, 41)
discloses automatically creating and maintaining a professional-social
network as recited in limitation [ A J of claim 10 (Final Act. 8; Ans. 5, 67-
69), and as similarly recited in claims 11-13 depending from claim 10.
Limitation [BJ of claim 10 recites "tacit information about a
performance of the plurality of job functions of the member's organizational
position." The Examiner finds, and we agree, that Skarin discloses tacit
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knowledge as recited in limitation [BJ of claim 10 (Final Act. 9; Ans. 6, 51-
67), and as similarly recited in claims 11-13 depending from claim 10.
Furthermore, Appellants neither address in the Appeal Brief, nor
respond in the Reply Brief, to the Examiner's findings relying on multiple
portions of Skarin (see generally Ans. 51---69 citing Skarin ,r,r 123, 125, 128,
129, 131-134).
As to Appellants' argument that paragraph 99 of Skarin "actually
teaches away from the claimed invention" (Appeal Br. 14), we do not find
this line of reasoning persuasive or pertinent to our conclusion that the
Examiner's did not err in rejecting claim 10 for anticipation. Although a
teaching away argument would be relevant to an obviousness analysis,
"whether a reference 'teaches away' from [an] invention is inapplicable to
an anticipation analysis." Celeritas Techs., Ltd. v. Rockwell Int'! Corp., 150
F.3d 1354, 1361 (Fed. Cir. 1998) (citation omitted); see also Leggett &
Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008) (citation
omitted) ("' [T]eaching away' is irrelevant to anticipation.").
In view of the foregoing, we sustain the Examiner's anticipation
rejection of representative claim 10, as well as claims 11-13 grouped
therewith.
Issue (3): Obviousness of Claim 14 over Skarin, Henderson, and Homsi
We have reviewed the Examiner's obviousness rejection of claim 14
(Final Act. 10-12; Ans. 7-9) in light of Appellants' arguments in the Appeal
Brief (Appeal Br. 23-24) that the Examiner has erred. Appellants'
contentions in the Appeal Brief are unpersuasive of Examiner error, and
notably, Appellants do not respond in the Reply Brief to the Examiner's
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response to Appellants' Appeal Brief arguments regarding the obviousness
of claim 14. For the reasons discussed below, with regard to claim 14, we
adopt as our own ( 1) the findings and reasons set forth by the Examiner in
the Final Office Action from which this appeal is taken (Final Act. 10-12;
see also Ans. 7-9), and (2) the reasons set forth by the Examiner in the
Examiner's Answer (Ans. 71) in response to Appellants' Appeal Brief. We
concur with the conclusions reached by the Examiner, and add the following
for emphasis.
We agree with the Examiner's findings as to the individual references,
and do not think it unpredictable that one of ordinary skill in the art would
desire to pass along tacit information about job functions associated with a
position through a professional-social network, and dissociate members from
a professional-social network, in determining what professional
communication/information should be passed on as tacit knowledge, as
claimed.
We agree with the Examiner's findings (Ans. 71) that (i) "Skarin and
Henderson are drawn to enterprise social networks and are thus in the same
field of endeavor [as claim 14];" (ii) "Skarin and Homsi are drawn to
operating an enterprise, and are thus in the same field of endeavor [ as claim
14];" and (iii) "Homsi is particularly relevant to the problem faced by the
inventor of the instant Application which is to assign a particular member of
the organization to a role other tha[ n] [sic] what is defined in the organization
hierarchy." In light of the claimed invention's and applied art's noted
similarities (see Ans. 9, 71 ), the presented evidence in the instant case on
appeal establishes that the claimed invention and applied art are directed to
analogous arts.
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Although "the diverse Patent Office classification of the references
[are] some evidence of 'non-analogy' ... we consider the similarities and
differences in structure and function of the inventions disclosed in the
references to carry far greater weight." In re Ellis, 476 F.2d 1370, 1372
(CCPA 1973); In re Naren Chaganti (Fed. Cir. 2014) (a reference need not
disclose every limitation of the claimed invention to fall within the same
field of endeavor as the claimed invention). And, even assuming arguendo
the claimed invention and the applied reference in question are correctly
directed to different U.S.P.T.O. search classifications, that is not persuasive
evidence of non-analogous art. See In re Mlot-Fijalkowski, 676 F.2d 666,
670, fn. 5 (CCPA 1982) ("Such evidence is inherently weak also, because
considerations in forming a classification system differ from those relating
to a person of ordinary skill seeking solution for a particular problem.").
Furthermore, although search classifications are evidence of non/analogous
arts, similarities of function and structure carry greater weight; In re
Deminski, 796 F.2d at 442, fn. 3 (Fed. Cir. 1986) ("[C]ross reference in
official search notes is some evidence of analogy, although the similarities
and differences in structure and function of the inventions disclosed in the
references ... carry far greater weight[.]" ( citation and quotation marks
omitted)).
In view of the foregoing, Appellants' contentions (Appeal Br. 23-24)
that (i) Skarin, Henderson, and Homsi are from different fields of endeavor
from each other because each have different U.S.P.T.O. search
classifications; 4 and (ii) Henderson and Homsi fail to solve the same
4 We note that Appellants' argument as to claim 14 misapplies the standard
for analogous art, as Appellants compare the classifications of the references
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problem as the subject matter of claim 14, are unpersuasive. As a result, we
sustain the Examiner's obviousness rejection of claim 14.
Issue (4): Obviousness of Claims 15-29 Over the Base Combination of
Skarin, Dunn, and Burritt
We have reviewed the Examiner's obviousness rejections of claims
15-29 (Final Act. 12-22; Ans. 9-20) in light of Appellants' arguments in the
Appeal Brief (Appeal Br. 24--27) that the Examiner has erred. Appellants'
contentions are unpersuasive of Examiner error, and notably, Appellants do
not respond in the Reply Brief to the Examiner's response to Appellants'
Appeal Brief arguments regarding the obviousness of claims 15 and 26. For
the reasons discussed below, with regard to claims 15 and 26, we adopt as
our own (1) the findings and reasons set forth by the Examiner in the Final
Office Action from which this appeal is taken (Final Act. 12-22; see also
Ans. 9-19), and (2) the reasons set forth by the Examiner in the Examiner's
Answer (Ans. 72-76) in response to Appellants' Appeal Brief. We concur
with the conclusions reached by the Examiner, and add the following for
emphasis.
We agree with the Examiner's findings as to the individual references,
and do not think it unpredictable that one of ordinary skill in the art would
desire to pass along tacit information about job functions associated with a
position through a professional-social network, and dissociate members from
with each other. The proper comparison would be of the classification of the
subject matter of claim 14 with the classifications of each of the applied
references. However, even if we consider Appellants to argue under the
proper standard, the argument is not persuasive as it pertains to
classifications which are inherently weak evidence of non-analogy.
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a professional-social network, in determining what professional
communication/information should be passed on as tacit knowledge, as
claimed.
We agree with the Examiner's findings (Ans. 72) that (i) "both Skarin
and Dunn are drawn to professional social networks and are thus in the same
field of endeavor [as claims 15 and 26];" (ii) "both Skarin and Burritt are
drawn to enterprise social networks and are thus in the same field of
endeavor [as claims 15 and 26]." In light of the claimed invention's and
applied art's noted similarities (see Ans. 13, 14, 72), the presented evidence
in the instant case on appeal establishes that the claimed invention and
applied art are directed to analogous arts.
In view of the foregoing, Appellants' contentions (Appeal Br. 24--25)
(i.e., that Dunn and Burritt have different U.S.P.T.O. search classifications
from Skarin and are thus from different fields of endeavor5) are
unpersuasive. See In re Mlot-Fijalkowski, 676 F.2d at 670; In re Deminski,
796 F.2d at 442, fn. 3.
Appellants contend (Appeal Br. 25-27) claims 15 and 26, from which
claims 16-25 and 27-29 respectively depend, are not obvious over the base
combination of Skarin, Dunn, and Burritt for the same reasons presented as
to claim 10 rejected as anticipated by Skarin, namely that Skarin fails to
5 We note that Appellants' argument as to claims 15 and 26 misapplies the
standard for analogous art, as Appellants compare the classifications of the
references with each other. The proper comparison would be of the
classification of the subject matter of claims 15 and 26 with the
classifications of each of the applied references. However, even if we
consider Appellants to argue under the proper standard, the argument is not
persuasive as it pertains to classifications, which are inherently weak
evidence of non-analogy.
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disclose the recited "tacit information" and/or "tacit knowledge." We find
these contentions as to the obviousness rejections of claims 15-29
unpersuasive for the same reasons already discussed with respect to the
anticipation rejection of claim 10 over Skarin.
As a result, we sustain the Examiner's obviousness rejections of claim
15-29, which all rely on the base combination of Skarin, Dunn, and Burritt.
CONCLUSIONS
(1) Appellants have not shown the Examiner erred in rejecting claims
14 and 15 under 35 U.S.C. § 112, second paragraph, as being indefinite.
(2) The Examiner did not err in rejecting claims 10-29 under
35 U.S.C. § 101 as being directed toward patent-ineligible subject matter.
(3) The Examiner did not err in rejecting claims 10-13 under
35 U.S.C. § 102(e) as being anticipated by Skarin.
(4) The Examiner did not err in rejecting claims 14--29 under
35 U.S.C. § 103(a) over the base combination of Skarin in view of various
other references.
DECISION
We affirm the Examiner's decision to reject:
(1) claims 14 and 15 under 35 U.S.C. § 112, second paragraph, as
being indefinite;
(2) claims 10-29 under 35 U.S.C. § 101 as being drawn to patent
ineligible subject matter;
(3) claims 10-13 under 35 U.S.C. § 102(e) as being anticipated by
Skarin; and
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(4) claims 14--29 under 35 U.S.C. § 103(a) as being obvious over the
base combination of Skarin in view of various other references.
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.
§ 41.50(±).
AFFIRMED
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