Ex Parte BRUNN et al

Patent Trial and Appeal BoardSep 12, 2018

14701058 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/701,058 04/30/2015 75949 7590 IBM CORPORATION C/0: Fabian Vancott 215 South State Street Suite 1200 Salt Lake City, UT 84111 09/14/2018 FIRST NAMED INVENTOR JONATHANF. BRUNN 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. RSW920150015US 1 9257 EXAMINER OHR!, ROMANI ART UNIT PAPER NUMBER 2479 NOTIFICATION DATE DELIVERY MODE 09/14/2018 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): patents@fabianvancott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN F. BRUNN and JENNIFER HEINS Appeal 2018-003155 Application 14/701,058 Technology Center 2400 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 9-28, which are all the claims pending in this application. Claims 1-8 are cancelled. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b). We reverse. 1 The real party in interest is International Business Machines Corp. App. Br. 2. Appeal 2018-003155 Application 14/701,058 STATEMENT OF THE CASE Introduction Appellants' invention relates generally to "forming a group of users, and more specifically, to forming the group of the users for a conversation." Spec. ,r 1. Exemplary Claim 9. A system for forming a group of users for a conversation, the system comprising: an information determining engine to determine when users are accessing information associated with each other; a detecting engine to detect when each of the users is in front of an audio-video device, the audio-video device being in communication with a user device; a user preference determining engine to determine user preferences for each of the users; a maintaining engine to maintain a group of the users, the group of the users representing a transitive closure over a viewing relationship of the information; a displaying engine to display, via a display of the user device, digital representations of the users in the group accessing the information; and an initiating engine to initiate, based on an action of at least one of the users in the group of the users, a conversation. (Emphasis added regarding the contested limitations). 2 Appeal 2018-003155 Application 14/701,058 Re} ections 2 A. Claims 9-28 are provisionally rejected for nonstatutory obviousness- type double patenting as being unpatentable over claims 1-20 of copending Application no. 15/146,659. Final Act. 7. B. Claims 9-13 are rejected under 35 U.S.C. Â§ 103 as being obvious over the combined teachings and suggestions of Dunn et al. (US 2013/0263021 Al, published Oct. 3, 2013), Jessup et al. (US 2013/0268377 Al, published Oct. 10, 2013) and Talukder (US 2012/0268553 Al, published Oct. 25, 2012), hereinafter referred to as Dunn, Jessup and Talukder, respectively. Final Act. 21. C. Claims 14, 15, 17-22, 24, and 25 are rejected under 35 U.S.C. Â§ 103 as being obvious over the combined teachings and suggestions of Dunn and Jessup. Final Act. 28. D. Claim 23 is rejected under 35 U.S.C. Â§ 103 as being obvious over the combined teachings and suggestions of Dunn, Jessup, and Hodgson (US 2016/0189407 Al, published June 30, 2016). Final Act. 42. E. Claim 26 is rejected under 35 U.S.C. Â§ 103 as being obvious over the combined teachings and suggestions of Dunn, Jessup, and Ma (US 2014/0313282 Al, published Oct. 23, 2014) (hereinafter "Ma '282"). Final Act. 43. F. Claims 16 and 27 are rejected under 35 U.S.C. Â§ 103 as being obvious over the combined teachings and suggestions of Dunn, Jessup, and Talukder. Final Act. 44. 2 The Examiner withdrew the rejection of claims 9-28 under 35 U.S.C. Â§ 101 as being directed to a judicial exception, without significantly more. Ans. 2; Final Act. 2. 3 Appeal 2018-003155 Application 14/701,058 G. Claim 28 is rejected under 35 U.S.C. Â§ 103 as being obvious over the combined teachings and suggestions of Dunn, Jessup, and Ma (US 2015/0256796 Al, published Sept. 10, 2015) (hereinafter "Ma '796"). Final Act. 45. Issues on Appeal A. Did the Examiner err in rejecting claims 9--28 for nonstatutory obviousness-type double patenting as being provisionally rejected over claims 1-20 of copending Application No. 15/146,659 (eff. filing date May 4, 2016)? B. Did the Examiner err in rejecting claims 9-28 under 35 U.S.C. Â§ 103 as being obvious over the cited combinations of references? ANALYSIS We have considered all of Appellants' arguments and any evidence presented and agree with the Appellants that the Examiner has erred in rejecting claims 9-28 under 35 U.S.C. Â§ 103 as being obvious over the cited combinations of references. We highlight and address specific findings and arguments for emphasis in our analysis below. Provisional Rejection A of Claims 9-28 We decline to reach a decision on the Examiner's provisional rejection of claims 9-28 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 through 20 of copending US Application No. 15/146,659 (eff. filing date May 4, 2016). When the only remaining rejection in the earlier filed application (14/701,058, eff. filing date April 30, 2015) is a provisional nonstatutory obviousness-type double patenting rejection, it would be premature for the Board to address such 4 Appeal 2018-003155 Application 14/701,058 provisional rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010) (precedential). According to the Manual of Patent Examining Procedure (MPEP) if 804(I)(B)(l )(b ): If a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earliest effective U.S. filing date (taking into account any benefit under 35 U.S.C.120, 121, 365(c), or 386(c)) with respect to the conflicting claims) compared to the reference application(s), the examiner should withdraw the rejection in the application having the earliest effective U.S. filing date and permit that application to issue as a patent, thereby converting the "provisional" nonstatutory double patenting rejection in the other application(s) into a nonstatutory double patenting rejection when the application with the earliest U.S. effective filing date issues as a patent. 3 Rejection B of Claims 9-13 underÂ§ 103 As an initial matter of claim construction, we focus on the contested temporal limitation: "an information determining engine to determine when users are accessing information associated with each other." Claim 9 ( emphasis added). 4 3 All Manual of Patent Examining Procedure references are to MPEP Ninth Edition, Revision 08.2017, last revised January 2018. 4 During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using "the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description 5 Appeal 2018-003155 Application 14/701,058 Appellants contest the recited limitation "an information determining engine to determine when users are accessing information associated with each other," in both the Appeal Brief (21 ), and the Reply Brief (5), urging that the cited sections of the Jessup reference do not teach or suggest when users are accessing information associated with each other. Independent system claim 21 (rejected under rejection C) recites a similar limitation having commensurate scope. (Claims App'x 35). Appellants contend, inter alia: Jessup at most describes groups of users, but makes no mention of any determination as to "when users are accessing information associated with each other." (Claim 9). More specifically, Jessup merely describes group information, not access records for the different users. App. Br. 21 ( emphasis added). In rejecting claim 9 underÂ§ 103, the Examiner finds: Jessup discloses in Fig. 5 and paragraphs 0103-0105 disclose the group member information 520 can display information about the members of the group. The group member information 520 can be configured to display the names of the members of the groups, a picture of the members of the group, and/ or other information that can be used to identify group members. The group member information 520 can display the users who were invited to join the group in the group invitees field 315 of the create group interface 300 and accepted the invitation to join the group. Those who accept the invitation can be added to the group and if they are currently not a user of the contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 6 Appeal 2018-003155 Application 14/701,058 gift collaboration system, a new user account can be created for them upon accepting the application to join the group. Ans. 3--4, Final Act. 22. Based upon our review of the evidence, we find the Examiner has not fully developed the record to show that Jessup's group member information 520 teaches or suggests the claimed temporal limitation of "an information determining engine to determine when users are accessing information associated with each other," as required by the contested language of claim 9. ( emphasis added). We do not find any specific mapping of this temporal limitation by the Examiner. 5 Therefore, we find the contested limitation is not taught or suggested by the Examiner's citations to Jessup, considered in combination with Dunn and Talukder, without more. Accordingly, we find a preponderance of the evidence supports Appellants' contentions that the cited references do not teach or suggest this disputed limitation of independent claim 9. (App. Br. 21). Because Appellants have persuaded us the Examiner erred, we reverse Rejection B under Â§ 103 of system claim 9. Because we have reversed Rejection B of independent claim 9 on appeal, we also reverse rejection B of dependent claims 10-13, which depend directly from claim 9. 5 See 37 C.F.R. Â§ 1.104(c)(2) ("When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified." ( emphasis added). 7 Appeal 2018-003155 Application 14/701,058 Rejection C of Independent Claim 21 underÂ§ 103 For the same reasons discussed above regarding the deficiencies of Jessup under rejection B, we also reverse rejection C of independent system claim 21, which similarly recites the contested temporal imitation recited in independent claim 9. 6 Under rejection C, we find the Examiner has not established that the primary Dunn reference (in combination with Jessup) overcomes or cures the aforementioned deficiencies of Jessup. Because we have reversed Rejection C of independent claim 21 on appeal, we also reverse rejection C of dependent claims 22, 24, and 25, which depend directly from independent claim 21. Rejection C of Independent Claim 14 underÂ§ 103 Regarding remaining independent claim 14, also rejected under rejection C, Appellants contend the limitation "maintain[ing] a group of the users, the group of the users representing a transitive closure over a viewing relationship of information" is not taught or suggested by the cited references - this limitation being identical to a limitation recited in claim 9. App. Br. 23. Appellants additionally contend the citations the Examiner references make "no discussion of such a group 'representing a transitive closure over a viewing relationship of the information."' Id. See also Reply Br. 7. We look to Appellants' Specification for context. Informing our claim construction, we particularly note the Specification provides a definition for the contested viewing relationship: 6 See independent claim 21 ("determine when users on the network are accessing information associated with each other") ( emphasis added). 8 Appeal 2018-003155 Application 14/701,058 In the present specification and in the appended claims, the term "viewing relationship" means an association between at least two users when at least one of the two users is accessing information associated with the other user. The viewing relationship may be depicted in a graph data structure as an edge connecting the two nodes together, each of the nodes representing one of the users. Spec. ,r 33 ( emphasis added). Appellants' Specification also provides a definition for the contested claim term transitive closure: In the present specification and in the appended claims, the term "transitive closure" means a number of users in a connected component of a graph data structure. If user A is viewing information associated with user B, user Bis viewing information associated with user C, then user A, user B, and user C are users in a connected component in a graph data structure. Spec. ,r 32 ( emphasis added). On this record, we find these special definitions for the contested claim terms are set forth in Appellants' Specification (id.) with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Given the aforementioned express definitions (Spec. ,r,r 32-33), we conclude the Examiner's interpretation of the scope of the contested claim language "transitive closure over a viewing relationship" to cover Dunn's social graph, without more, is overly broad, unreasonable, and inconsistent with the definitions found in the Specification (i1i132-33). Although the Examiner finds Dunn's social graph 108 teaches a group of users presenting a transitive closure over a viewing relationship of the information (Ans. 8-9), we find the Examiner has not fully developed the 9 Appeal 2018-003155 Application 14/701,058 record regarding Dunn's purported teaching or suggestion of a "transitive closure over a viewing relationship," as recited in claim 14. (emphasis added). Therefore, on this record, we find a preponderance of the evidence supports Appellants' contentions that the cited references do not teach or suggest at least the contested "transitive closure over a viewing relationship" limitation recited in claim 14 ( and also recited in independent claim 9, rejected under rejection B). Because Appellants have persuaded us the Examiner erred, we reverse Rejection C under Â§ 103 of independent claim 14. Because we have reversed Rejection C of independent claim 14, we also reverse rejection C of dependent claims 15 and 17-20, which depend directly from claim 14. Remaining Dependent Claims rejected under Rejections ~G Regarding the remaining rejected dependent claims on appeal, we also reverse rejection D of claim 23, rejection E of claim 26, rejection F of claims 16 and 27, and rejection G of claim 28. On this record, the Examiner has not established that additionally cited secondary references overcome or cure the aforementioned deficiencies of Jessup (or Dunn, regarding independent claim 14). Conclusion The Examiner erred in rejecting claims 9-28 as being obvious over the cited combinations of references under 35 U.S.C. Â§ 103. 10 Appeal 2018-003155 Application 14/701,058 Additional Issues In the event of further prosecution, we leave it to the Examiner to determine whether Appellants' Specification describes sufficient structure corresponding to the contested "nonce" words, which each recite a (labeled) "engine" to perform a recited function, and thus which could be considered as means-plus-function claim terms underÂ§ 112(f), such that at least independent claim 9 may be indefinite under 35 U.S.C. Â§ 112(b). We particularly note that Figure 2 of Appellants' drawings merely provides boxes with labels for the claim 9 terms: information determining engine, detecting engine, user preference determining engine, maintaining engine, displaying engine, and initiating engine. Appellants' Specification summarizes the claimed "engines" as follows: The computer program code includes a number of engines (214 ). The engines (214) refer to program instructions for peiforming a designated function. The computer program code causes the processor to execute the designated function of the engines (214). In other examples, the engines (214) refer to a combination of hardware and program instructions to perform a designated/unction. Each of the engines (214) may include a processor and memory. The program instructions are stored in the memory and cause the processor to execute the designated function of the engine. As illustrated, the forming system (210) includes an information determining engine (214-1 ), a detecting engine (214-2), a user preference determining engine (214-3), a maintaining engine (214-4), a displaying engine (214-5), and an initiating engine (214-6). Spec. ,r 62 ( emphasis added). For a computer-implemented claim limitation interpreted under 35 U.S.C. Â§ 112(f), the corresponding structure must include the algorithm 11 Appeal 2018-003155 Application 14/701,058 needed to transform the general purpose computer or processor disclosed in the specification into the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int 'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see also Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013). To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333. See MPEP Â§ 2181(I)(B). "The fact that one of skill in the art could program a computer to perform the recited functions cannot create structure where none otherwise is disclosed." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (citing Function Media, L.L.C., 708 F.3d at 1319). If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim is invalid as indefinite. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1378-79 (Fed. Cir. 1999) (citing In re Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en bane)). "Structure disclosed in the specification qualifies as 'corresponding structure' if the intrinsic evidence clearly links or associates that structure to the function recited in the claim." Williamson, 792 F.3d at 1352 (citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). Although the Board is authorized to reject claims under 37 C.F.R. Â§ 4I.50(b), no inference should be drawn when the Board elects not to do so. See MPEP Â§ 1213.02. In the alternative, if the recited "engines" are not considered by the Examiner as "nonce" means-plus-function claim terms under the guidance of 12 Appeal 2018-003155 Application 14/701,058 Williamson, we leave it to the Examiner to conclude whether at least independent claim 9 ( and claims 10-13 which depend therefrom) should be rejected under 35 U.S.C. Â§ 112(a) for lack of enablement. We note the claimed "engines" are recited purely in terms of the corresponding functions they are intended to perform. Such pure functional claiming broadly covers all structures, program products, or other means for performing the recited "engine" functions. The Specification, however, discloses only those structures, program products, or means known to Appellants. Therefore, we leave it to the Examiner to alternatively consider a rejection under 35 U.S.C. Â§ 112(a), for lack of an enabling disclosure commensurate with the scope of the claim ("pure functional claiming"). See MPEP Â§ 706.03(c), rejections under 35 U.S.C. Â§ 112(a), using form paragraph 7 .31.03 (scope of enablement). Although the Board is authorized to reject claims under 37 C.F.R. Â§ 4I.50(b), no inference should be drawn when the Board elects not to do so. See MPEP Â§ 1213.02. DECISION We reverse the Examiner's decision rejecting claims 9-28. REVERSED 13