John Irving et al.

Patent Trials and Appeals Board

Mar 2, 2021

2020004617 (P.T.A.B. Mar. 2, 2021)

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.
10/619,101 07/14/2003 John Irving 28849/09175 5798
27530 7590 03/02/2021
Nelson Mullins Riley & Scarborough LLP
IP Department
One Wells Fargo Center
301 South College Street, 23rd Floor
Charlotte, NC 28202
EXAMINER
KIM, PAUL
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
ip@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN IRVING, MARCELLO BURSZTEIN,
STEVE MULLIGAN, and PATRICK LAJEUNESSE

Appeal 2020-004617
Application 10/619,101
Technology Center 2100

Before JAMES R. HUGHES, JOHN A. EVANS, and
LARRY J. HUME, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 2–4 and 6–21 are pending, stand rejected, are appealed by
Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1
See Final Act. 1–2; Appeal Br. 4.2 We have jurisdiction under
35 U.S.C. § 6(b). An Oral Hearing was held on February 11, 2021.
We AFFIRM.

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 Cricket Media,
Inc. See Appeal Br. 4.
2 We refer to Appellant’s Specification filed July 14, 2003 (claiming benefit
of U.S. 60/395,406, filed July 13, 2002); Appeal Brief (“Appeal Br.”), filed
Dec. 10, 2018; Supplemental Appeal Brief (“Supp. Appeal Br.”), filed
Jan. 30, 2019; and Reply Brief (“Reply Br.”), filed June 1, 2020. We also
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Prior Appeal
The instant application was the subject of an earlier Appeal, Ex parte
John Irving et al., Appeal No. 2013-006978. The previous Decision on
Appeal was mailed on September 3, 2015 (the “Prior Decision”). In that
Prior Decision we affirmed the Examiner’s decision rejecting claims 2–21
under 35 U.S.C. § 103(a) over Matthews, Sutcliffe, and Ralston.
CLAIMED SUBJECT MATTER
The claimed subject matter at issue on appeal, according to Appellant,
concerns an electronic collaboration apparatus and method of facilitating
electronic collaboration for creating a shared collaborative environment or
virtual meeting place. The apparatus and method dynamically filter user
communications based on analysis of communications. Spec. ¶¶ 6–9;
Abstract. Claims 2 (directed to an apparatus) and 12 (directed to a method)
are independent. Claim 2, reproduced below, is illustrative of the claimed
subject matter:
2. An apparatus for electronic collaboration in an
environment including a plurality of communities, the
environment comprising at least one monitor, each of the
plurality of communities having a plurality of live users, the live
users being engaged in communications from a sender to an
intended recipient, the apparatus comprising:
a community creation database that receives and stores
preliminary profile data associated with a candidate user, a
submission of the preliminary profile data indicating an interest

refer to the Examiner’s Final Office Action (“Final Act.”), mailed Nov. 9,
2017; and Answer (“Ans.”) mailed Mar. 31, 2020. A Transcript of the Oral
Hearing will be made of record in due course.
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of the candidate user in joining one of the plurality of
communities;
a first filter that ascertains and controls the preliminary
profile data, whereupon the candidate user associated with the
preliminary profile data is deemed acceptable for participation in
said one of the plurality of communities, wherein the candidate
user associated with the validated preliminary profile data
thereby becomes a live user of the plurality of live users in said
one of the plurality of communities;
wherein at least one profile is created for the live user,
wherein the profile includes descriptive information relating to
the live user, said descriptive information includes a first data
corresponding to a first set of attributes of the candidate user,
wherein the first set of attributes is predefined by at least one of
the plurality of communities and a second data corresponding to
a second set of attributes entered by said candidate user;
a search engine that searches for data related to another of
the plurality of live users in said one of the plurality of
communities with which to communicate based on at least a
portion of said second data; and
a second filter comprising a dynamic filter configured to
filter based on a parameter that may change and that 1) monitors
communications between the sender and the intended recipient;
2) makes an initial appropriateness determination as to whether
to allow the intended recipient to receive a communication
because nothing in the textual portion of the communication is
inappropriate for the intended recipient, whether to block the
communication from the intended recipient because something
in the textual portion of the communication is inappropriate for
the intended recipient, or whether to route the communication to
the monitor for a review of further appropriateness for the
intended recipient because something in the textual portion of the
communication may be inappropriate for the intended recipient;
and 3) then, if the communication is routed to the monitor for
further review, either allows forwarding of the communication to
the intended recipient or blocks the communication from being
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forwarded to the intended recipient based on the further
appropriateness review.
Appeal Br. 18–19 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sutcliffe et al.
(“Sutcliffe”)
US 6,249,282 B1 June 19, 2001
Ralston et al.
(“Ralston”)
US 6,842,773 B1 Jan. 11, 2005
(filed Jan. 31, 2001)
Matthews et al.
(“Matthews”)
US 2003/0050986 A1 Mar. 13, 20033
REJECTIONS4
1. The Examiner rejects claims 2–4 and 6–21 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. See Final Act. 2–3.
2. The Examiner rejects claims 2–4 and 6–21 under 35 U.S.C.
§ 103(a) as being unpatentable over Matthews, Sutcliffe, and Ralston. See
Final Act. 3–8.

3 Matthews (US 2003/0050986 A1), published March 13, 2003, was filed on
September 13, 2002, and claims benefit of U.S. 60/323,170 (filed September
13, 2001).
4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date prior to the AIA’s effective date, this decision
refers to 35 U.S.C. § 103(a).
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ANALYSIS
Written Description Rejection of Claims 2–4 and 6–21
The Examiner rejects dependent claims 2–4 and 6–21 as failing to
comply with the written description requirement. See Final Act. 2–3; Ans.
3–6. Specifically, the Examiner rejects independent claims 2 and 12 (and
the claims dependent thereon) because the claims recite “the feature of a
dynamic filter ‘configured to filter based on a parameter that may change.’”
(Final Act. 2), for which the Examiner finds no written description support
in the Specification. See Final Act. 2–3; Ans. 3–6.
Appellant contends that support for the disputed feature can be found
in the use of “the terms ‘dynamic filter’ (in original claim 1) and ‘dynamic
filtering’ (at Paragraph 008, line 1 and the Abstract) in the original
specification.” Appeal Br. 12. Appellant further contends that “one of
ordinary skill in the art would understand that a disclosure of ‘dynamic
filtering’ in the context of the present specification aptly describes a filter
than can filter based on changing parameters or conditions.” Appeal Br. 10.
See Appeal Br. 10–15; Reply Br. 2–4.
The test for sufficiency under the written description requirement “is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010).
The above description shows Appellant had possession of a “dynamic
filter” and “dynamic filtering.” See Spec. 5; Abstract. It follows that a
dynamic filter may be configured to perform its function (to filter) based on
a parameter that may change. We find the above-described subject matter
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from Appellant’s Specification in conjunction with the knowledge of one
skilled in the art (see, e.g., Appeal Br. 14–15; Reply Br. 4) provides
sufficient written description support for the claimed features the Examiner
found lacking in such support.
We, therefore, find the Examiner erred in rejecting claims 2–4 and 6–
21 as lacking sufficient written description support.
Obviousness Rejections of Claims 2–4 and 6–21
The Examiner rejects independent claim 2 (as well as independent
claim 12, and dependent claims 3, 4, 6–11, and 13–21) as obvious over
Matthews, Sutcliffe, and Ralston. See Final Act. 3–8; Ans. 6. Appellant
contends that Matthews, Sutcliffe, and Ralston do not teach the disputed
limitations of claim 2. See Appeal Br. 15–16; Reply Br. 4–6. Specifically,
Appellant contends, inter alia, that the “Examiner has not cited to a
reference that discloses the claimed dynamic filter” (Appeal Br. 15) and
Ralston, cited by the Examiner as teaching the disputed feature, does not
teach a dynamic filter—“[p]roviding ‘an automated means of adding
domains (i.e., a parameter) to an approved list’ . . . is not an indication or a
disclosure of a dynamic filter,” and “[a]dding domains automatically to
some ‘approved list’ does not indicate that a domain may change or even
that items on the list may be changed” (Appeal Br. 16). See Appeal Br. 15–
16. In the Reply Brief, Appellant reiterates these same arguments. See
Reply Br. 4–5. Appellant also contends that the Examiner never explains
how Ralston’s “automatic name adding device” “functions as a ‘filter’” and
never explains how Ralston’s “automatic name adding device” performs the
functionality recited in claim 2. Reply Br. 5.
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We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 3–6) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 6)
in response to Appellant’s Appeal Brief. We concur with the findings and
conclusions reached by the Examiner, and we provide the following analysis
for emphasis.
We agree with the Examiner that Ralston describes a sorting
algorithm for sorting email into folders and, in particular, sorting email
(unsolicited email) into a bulk mail folder. Ralston further describes adding
domains to an approved list so that email from the domains is not “filtered
and stored in their bulk mail folder by mistake” (Ralston col. 5, l. 1). See
Final Act. 5–6; Ans. 6 (citing Ralston col. 4, l. 35–col. 5, l. 22; col. 9, ll. 55–
64). Ralston at least suggests filtering based on email domains and that such
domains can be added or updated—i.e., changed. Filtering and sorting based
on a modifiable list of approved domains comports with the express
definition of a “dynamic filter” in Appellant’s claim 2, in that the filtering is
“based on a parameter that may change.” Thus, Ralston at least suggests the
disputed feature of claim 2—“a dynamic filter configured to filter based on a
parameter that may change.” Appeal Br. 19 (Claims App.).
Additionally, Appellant’s arguments in the Reply Brief directed to the
additional functionality of the “second filter”—i.e., that the Examiner has
not explained how Ralston’s system “monitors communications,” “makes an
initial appropriateness determination,” and then “allows forwarding of the
communication . . . or blocks the communication” (claim 2)—are made for
the first time in the Reply Brief. No such arguments were made in the
Appeal Brief. Absent a showing of good cause why the arguments could not
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have been presented in the Appeal Brief, which Appellant did not provide,
Appellant’s arguments are untimely and deemed forfeited. We need not
consider these arguments raised for the first time in the Reply Brief. See Ex
parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (Informative); Ex
parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (Informative); 37
C.F.R. § 41.37(c)(1)(iv) (2017). The “failure to raise . . . arguments,
inadvertent or not, compels a finding of forfeiture.” In re Google Tech.
Holdings, 980 F.3d 858, 863 (Fed. Cir. 2020).
Accordingly, we find a preponderance of the evidence supports the
Examiner’s findings and conclusions that Ralston (in combination with
Matthews and Sutcliffe) teaches or at least suggests the disputed features of
claim 2. Thus, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of representative claim 2. Independent claim 12
includes limitations of commensurate scope. Dependent claims 3, 4, 6–11,
and 13–21 depend from and stand with claims 2 and 12, respectively.
Therefore, we affirm the Examiner’s obviousness rejections of
representative claim 2 and claims 3, 4, and 6–21 not separately argued with
particularity (supra). See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 2–4
and 6–21 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement. Appellant has not shown that the
Examiner erred in rejecting claims 2–4 and 6–21 under 35 U.S.C. § 103(a).
We, therefore, sustain the Examiner’s rejection of claims 2–4 and 6–
21 because we affirm at least one ground of the Examiner’s rejection.
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Application 10/619,101

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–4, 6–21 112 first
paragraph
Written Description 2–4, 6–21
2–4, 6–21 103(a) Matthews, Sutcliffe,
Ralston
2–4, 6–21
Overall
Outcome
2–4, 6–21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED