Ex Parte Pluschkell et al

Patent Trial and Appeal BoardJul 28, 2016

12364291 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/364,291 0210212009 32054 7590 Tina M. Lessani Lessani Law Group, PC 163 Cypress Point Road Half Moon Bay, CA 94019 08/01/2016 FIRST NAMED INVENTOR Paul Pluschkell JR. 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. 15017-0l 160US 3729 EXAMINER MINCARELLI, JAN P ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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): tina@lessanilaw.com kathy@lessanilaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL PLUSCHKELL, JR. and P ADMANABH DINKAR DABKE Appeal2014-003566 Application 12/364,291 1 Technology Center 3600 Before HUBERT C. LORIN, BIBHU R. MOHANTY, and TARA L. HUTCHINGS, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Paul Pluschkell, Jr., et al. (Appellants) seek our review under 35 U.S.C. Â§ 134 (2002) of the Final Rejection of claims 1 and 22. We have jurisdiction under 35 U.S.C. Â§ 6(b) (2002). SUMMARY OF DECISION We AFFIRM. 1 The Appellants identify Mindjet LLC as the real party in interest. Br. 3. Appeal2014-003566 Application 12/364,291 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An idea collaboration system, comprising: a processor in communication with a display device; and a computer-readable storage medium in communication with the processor, wherein the computer-readable storage medium includes one or more programming instructions for: accepting and displaying a plurality of user-submitted ideas in an innovation market; accepting, via a discussion section of the innovation market, for a first one of the user-submitted ideas, comments and rankings about the first idea from registered users of the innovation market; determining, using the processor, and displaying, via the display device, an indication of merit for the first idea, where the indication of merit is determined based on at least: (a) a total number of different registered users who have submitted comments to the discussion section for the first idea, wherein at least one of the comments submitted for the first idea is a non-ranking comment taken from the group consisting of: a review, a question, and a suggestion for improving the first idea, (b) a determination of user interest for the first idea, wherein the user interest for the first idea is based on at least a total number of comments that have been received into the discussion section for the first idea, wherein at least one of the comments of the total number in (b) is a non-ranking comment taken from the group consisting of: a review, a question, and a suggestion for improving the first idea, and ( c) a reputation rank for each registered user from whom the discussion section received a positive ranking for the first idea, wherein the reputation rank is based on at least a number of friends that have connected to each registered user as connected friends; 2 Appeal2014-003566 Application 12/364,291 determining, based on the indication of merit, whether the first idea should graduate to a next merit level for further consideration; and based on the determination of whether the first idea should graduate, graduating the first idea to the next merit level for further consideration. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Buchmiller Tsyganskiy Tran Yao US 2003/0187706 Al US 2004/0162751 Al US 2008/0140786 Al US 2009/0327054 Al The following rejections are before us for review: Oct. 2, 2003 Aug. 19, 2004 June 12, 2008 Dec. 31, 2009 1. Claims 1 and 22 are rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1 and 22 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Tsyganskiy, Buchmiller, Tran, and Yao. ISSUES Did the Examiner err in rejecting claims 1 and 22 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement? Did the Examiner err in rejecting claims 1 and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Tsyganskiy, Buchmiller, Tran, and Yao? 3 Appeal2014-003566 Application 12/364,291 FINDINGS OF FACT We rely on the Examiner's factual findings stated in the Examiner's Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claims 1and22 under 35 USCÂ§ 112,first paragraph, as failing to comply with the written description requirement. The Examiner argues that "[ r ]egarding the concept of an 'indication of merit' claimed in the 'determining' step of both Claims 1 and 22, this concept is not adequately described in Applicant's specification." Final Act. 2 (emphasis omitted). According to the Examiner, "Applicants have explained what factors are relevant to the indication of merit determination, but they have failed to actually disclose how they are calculating it." Final Act. 3. To satisfy this requirement, the specification must describe the invention in sufficient detail so "that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed.Cir.2005); Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed.Cir.1995). In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008). The difficulty with the Examiner's reasoning is that claims 1 and 22 do not include a calculating step. Accordingly, there is no need for the Specification to provide adequate written descriptive support for "calculating" an indication of merit. The Specification needs to provide adequate written descriptive support for "determining" an indication of 4 Appeal2014-003566 Application 12/364,291 merit, which paragraph 26 and the original claims appear to provide. In that regard, the Examiner further argues that [g]iven that the concept of an "indication of merit" is at the core of the invention, the fact that nothing specific about the determination of the indication of merit has been provided in Appellants' specification demonstrates that the Appellants have failed to reasonably convey possession of the invention at the time of filing. Final Act. 5. However, there is no basis in fact that there is anything more to the invention than what is claimed; that is, "determining" an indication of merit based on the factors as claimed. Compliance with the written description requirement is a question of fact. Ralston Purina Co. v. Far- Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985). There is no evidence that a calculation in fact exists for the "determining" of an indication of merit. The Examiner takes the same position as to the claim limitation "reputation rank." Final Act. 4--7. Here, too, claims 1 and 22 do not include a calculating step for determining a "reputation rank." And there is no basis in fact that more is required to show the Specification reasonably conveys the Appellants had possession of what is claimed as of the filing date. The rejection is not sustained. The rejection of claims 1and22 under 35 USCÂ§ 103(a) as being unpatentable over Tsyganskiy, Buchmiller, Tran, and Yao. The rejection is affirmed because the Appellants' arguments are not commensurate in scope with what is claimed. "Many of appellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims .... " In re Self, 671 F.2d 1344, 1348 (CCPA 1982). 5 Appeal2014-003566 Application 12/364,291 The Appellants make two arguments. First they argue that "Tsyganskiy does not disclose a total number of different registered users who have submitted comments for an idea." Br. 11. According to the Appellants: While the indication of merit of both the claimed invention and Tsyganskiy include an element of a group, the manner in which the claimed invention uses this group is distinguishable from Tsyganskiy. In the claimed invention, indication of merit is determined at least in part based on the total number of different registered users who have submitted comments for an idea. In other words, the value of an idea increases relative to an increase in activity or digital traffic related to that idea. Br. 11 (emphasis added). There is no requirement in the claims that "the value of an idea increases relative to an increase in activity or digital traffic related to that idea." All that is required is that a determination be made. There is no limitation in the claims that connects the determination to a value of the idea. As the claims no\v read, a determination of an indication of merit is performed based on at least the total number of different registered users who have submitted comments for an idea. Whether or not that determination affects the value of the idea is unstated and thus the claim is not limited to it. The Appellants' second argument is that "Yao does not disclose that the reputation rank is based on the number of a user's connected friends." Br. 12. According to the Appellants: While the reputation rank of both the claimed invention and Yao include the user's connected friends, the manner in which the claimed invention uses the friends list is distinguishable from Yao. In the claimed invention, the reputation rank is based on at least the number of connected friends. In other words, the reputation rank increases relative to 6 Appeal2014-003566 Application 12/364,291 an increase in the number of connected friends, because the more connected friends a user has the more potential activity or digital traffic will result. Therefore, the reputation of the connected friends is not as important. Br. 13 (emphasis added). But there is no requirement in the claims that "the reputation rank increases relative to an increase in the number of connected friends." All that is required is that there be reputation rank based on at least a number of friends that have connected to each registered user as connected friends. There is no limitation in the claims that connects the increase in reputation rank to an increase in the number of connected friends. Whether or not the reputation rank increases with an increase in the number of connected friends is unstated and thus the claim is not limited to it. The arguments are unpersuasive as to error in the rejection. The rejection is sustained. CONCLUSIONS The rejection of claims 1 and 22 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement is reversed. The rejection of claims 1 and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Tsyganskiy, Buchmiller, Tran, and Yao is affirmed. DECISION The decision of the Examiner to reject claims 1 and 22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). 7 Appeal2014-003566 Application 12/364,291 AFFIRMED 8