Ex Parte Singhal

Patent Trial and Appeal BoardOct 22, 2018

12932259 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/932,259 103550 7590 Tara Chand Singhal P.O. Box 5075 Torrance, CA 90510 FILING DATE FIRST NAMED INVENTOR 02/22/2011 Tara Chand Singhal 10/24/2018 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. l l 195.209F 4640 EXAMINER WU, TSUNG YIN ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 10/24/2018 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): singhal@att.net chand@internetpromise.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TARA CHAND SINGHAL Appeal2018-004320 Application 12/932,259 Technology Center 2400 Before JOHNNY A. KUMAR, JAMES W. DEJMEK, and SCOTT B. HOWARD, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Exemplary Claim Exemplary claim 1 under appeal reads as follows: 1. A system of creating and sustaining a cause-based social community on a global net, comprising: the system has a cause-server, a cause-server database, and a social community application, the system operative with the social community application, the application provides for creation of a cause-message, the cause-message identifies a cause that supports creation of either an ad hoc or permanent cause-based social community and is exclusively for causes that Appeal2018-004320 Application 12/932,259 include, charitable, social, political, economic, religions, sports, common interest and hobbies, cultural causes, and excludes commercial causes that support a product or service; the cause-message has an associated cause-image part and a cause- text part, the cause-image part is specifically selected for the size of display screens of handheld mobile wireless devices and the cause-text part identifies a cause and an originator of the cause and the cause-text is overlaid on a portion of the cause-image; the application restricts the cause message creation to a prior identified user in the cause server database and the cause-message is stored in the cause-server database of the cause-server and accessible to others by search and retrieval based on fields that include, categories of causes, a cause identification, a cause originator identification, and a date range; and the application spreads the cause message to others on the global net by the prior identified user sending a cause-message link in the cause-server to a list of the prior identified user's contacts, wherein the link embeds a program code that when clicked, displays the cause message. Rejections Claims 1, 2, 4--10, 12, and 13 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Hall et al., (US Pub. 2008/0256233 Al; published Oct. 16, 2008) in view of Mate et al., (US Pub. 2011/0219307 Al; published Sept. 8, 2011) further in view ofBrogger et al., (US Pub. 2008/0288494 Al; published Nov. 20, 2008) and further in view of Syiek et al., (US Pub. 2005/0005164 Al; published Jan. 6, 2005). Claim 3 is rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Hall, Mate, Brogger, and Syiek, and further in view of Ayala, (US Pub. 2011/0247638 Al; published Oct. 13, 2011). Claim 11 is rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Hall, in view of Mate, further in view of Brogger, further 2 Appeal2018-004320 Application 12/932,259 in view of Syiek, and further in view of Ryan et al., (US Pub. 2004/0215793 Al; published Oct. 28, 2004). Claims 14 and 15 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Hall, in view of Ryan, and further in view of Syiek. Claims 16 and 17 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Hall, in view of Ryan, further in view of Syiek, and further in view of Park, (WO 2008/069615 Al; published June 12, 2008). Claim 18 is rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Hall, in view of Ryan, Syiek, and Park, and further in view of Brogger. Claim 19 is rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Hall, in view of Ryan, further in view of Syiek, and further in view of Mate. Claim 20 is rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Hall, in view of Ryan, Syiek, and Mate, and further in view of Ayala. ANALYSIS We have considered all of Appellant's arguments and any evidence presented. We disagree with Appellant's arguments, and we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Answer in response to Appellant's arguments. However, we highlight and address specific findings and arguments for emphasis in our analysis below. 3 Appeal2018-004320 Application 12/932,259 First, Appellant contends that the Examiner erred in rejecting claims 1, 8, and 14 under 35 U.S.C. Â§ 103(a) because the "Examiner is misinterpreting the claim limitation and claim terms." App. Br. 16-23. As to Appellant's above contentions, it does not persuade us that the Examiner erred. Appellant merely recites the particular language of claims 1, 8, and 14 and asserts the cited prior art references do not teach or suggest the claim limitations. Without more, this fails to constitute an argument on the merits. See 37 C.F.R. Â§ 4I.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). With regard to Appellant's contentions about "cause-message" (App. Br. 25), Appellant did not explicitly define the term "cause-message" in the Specification. We, thus, agree with the Examiner (Final Act. 5) that Hall's "content item" equates to the claimed "cause-message." Also, Appellant does not point to anything in the claims or Specification or present persuasive evidence or argument that precludes this interpretation. As to Appellant's contentions on pages 25 through 29 of the Appeal Brief, the essence of Appellant's arguments is that the references do not qualify as prior art under Â§ 103 because they are not analogous to the claimed invention. We disagree. Contrary to Appellant's argument, we find that each of the references is analogous art. "Two separate tests define the scope of analogous art: ( 1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir. 2004). "A reference is reasonably pertinent if ... it is 4 Appeal2018-004320 Application 12/932,259 one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." [In re Clay, 966 F.2d 656, 659 (Fed. Cir.1992).] "If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection." Id. Whether a prior art reference is "analogous" is a question of fact. Id. at 658. Innovention Toys, LLCv. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Based on this discussion, we agree with the Examiner that Hall discloses the message to include content items such as text, image, video [Hall, para. 33 ], and Mate helped to incorporate these content items into a mobile screen. Hall discloses a search interface for searching the content items [Hall, Fig. 20 and 21, para. 90], and Brogger enables to search by originator. Hall discloses forwarding messages regarding a given subject [Hall, para. 80], and Syiek further provides the users to actively exclude themselves from unsolicited commercial messages. Hall discloses using geo-IP mapping [Hall, para. 5], and Ryan enables mapping via GPS. Examiner respectfully presents that one ordinary skill in the art would readily recognize that these features would result improvements in Hall ( see actual rejections for detail reasoning for incorporating these features). As a result, the cited references are in the same field of endeavor, wherein one ordinary skill in the art would find useful features from one reference and apply it to another, with predictable results. Ans. 5---6. As to Appellant's contention that "[e]ven if Hall et al, Mate et al, Brogger et al, Syiek and Ryan et al are combined, that combination does not teach elements of claims 1, 8 or 14 because, under the combination one would not end up with claimed subject matter" (App. Br. 34), we are not persuaded the Examiner erred. Appellant's argument essentially is premised 5 Appeal2018-004320 Application 12/932,259 on a "physical" or "bodily" incorporation of limitations of one reference into the other. This is not the standard of obviousness. See In re Sneed, 710 F .2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review") (citations omitted); In re Keller, 642 F.2d 413,425 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). Moreover, "[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect." EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). Furthermore, an ordinarily skilled artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). "[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). In particular, the Examiner finds, and we agree: In Hall's disclosure, the content item ( equated to cause- message) is any type of digital data files such as audio, video, text, data, and applications [Hall, para. 95]. It would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate the method of mixing different types of digital data files in a shared content item as 6 Appeal2018-004320 Application 12/932,259 disclosed by Mate into the system of Hall in order to enable Hall's system to include multimedia content items, thereby increasing the flexibility of Hall's tracking system. It would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate the method of searching by originator as disclosed by Brogger into the system of Hall and Mate in order to capture content originated by a particular user, thereby enhancing Hall and Mate's search feature. It would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate the method of excluding unsolicited commercial messages as disclosed by Syiek into the system of Hall, Mate, and Brogger in order to avoid sending "spam" in the system [Syiek, para. 36], thereby enhancing user's experience in Hall, Mate, and Brogger' s system. Final Act. 9-11, ( emphasis omitted). Thus, the Examiner has set forth why an ordinarily skilled artisan would have been motivated to combine the teachings of Hall, Mate, Brogger, and Syiek to arrive at the claimed invention. Final Act. 9-11. Appellant has not presented any persuasive evidence or argument why the ordinarily skilled artisan would not have possessed the knowledge and skills to know how to combine the prior-art references. As such, we find that one of ordinary skill in the art would have recognized how to adjust Hall to accommodate the teachings from Mate, Brogger, and Syiek. Accordingly, Appellant has not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art, or in the proper combinability of the prior-art references as suggested by the Examiner. Therefore, we 7 Appeal2018-004320 Application 12/932,259 sustain the Examiner's obviousness rejection of independent claims 1, 8, and 14. Regarding dependent claim 3, although Appellant raised additional arguments for patentability of the cited claim (App. Br. 41), we find that the Examiner has rebutted in the Answer those arguments by a preponderance of the evidence. Ans. 8. Therefore, we adopt the Examiner's findings and underlying reasoning, which are incorporated herein by reference. Appellant argues the Examiner erred in rejecting the remaining claims based on arguments similar to those provided for their respective base claims. For the reasons previously described above, these arguments do not persuade us that the Examiner erred in rejecting the remaining claims. We have considered Appellant's arguments in the Reply Brief but find them unpersuasive to rebut the Examiner's responses. Consequently, we conclude there is no reversible error in the Examiner's rejections of claims 1-20. DECISION The Examiner's rejections of claims 1-20 are 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). AFFIRMED 8