John Irving et al.Download PDFPatent Trials and Appeals BoardMar 2, 20212020004617 (P.T.A.B. Mar. 2, 2021) Copy Citation 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 Appeal 2020-004617 Application 10/619,101 2 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. Appeal 2020-004617 Application 10/619,101 3 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 Appeal 2020-004617 Application 10/619,101 4 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). Appeal 2020-004617 Application 10/619,101 5 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 Appeal 2020-004617 Application 10/619,101 6 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. Appeal 2020-004617 Application 10/619,101 7 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 Appeal 2020-004617 Application 10/619,101 8 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. Appeal 2020-004617 Application 10/619,101 9 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 Copy with citationCopy as parenthetical citation