LAU, MING TUNG. et al.

Patent Trials and Appeals Board

Feb 4, 2020

13659472 - (D) (P.T.A.B. Feb. 4, 2020)

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.
13/659,472 10/24/2012 MING TUNG LAU CN920110096US1_8150-0310 1027
52021 7590 02/04/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
CHANG, JULIAN
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MING TUNG LAU and WAI MAN LEE
____________

Appeal 2019-000965
Application 13/659,472
Technology Center 2400
____________

Before JAMES B. ARPIN, MIRIAM L. QUINN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a), the rejections of
claims 26–49. Final Act. 2.2 Claims 1–25 are cancelled. Appeal Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
Because the claims lack adequate written description, we enter a new

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as IBM Corporation. Appeal
Br. 1.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
May 31, 2018) and Reply Brief (“Reply Br.,” filed November 19, 2018); the
Final Office Action (“Final Act.,” mailed January 2, 2018) and the
Examiner’s Answer (“Ans.,” mailed September 17, 2018); and the
originally-filed Specification (“Spec.,” filed October 24, 2012). Rather than
repeat the Examiner’s findings and determinations and Appellant’s
contentions in their entirety, we refer to these documents.
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ground of rejection under 35 U.S.C. § 112, ¶ 1, and procedurally reverse the
rejections under 35 U.S.C. § 103(a).
STATEMENT OF THE CASE
Appellant’s claimed subject matter relates to Instant Messaging
(“IM”) system processing, including obtaining contents of an IM session,
identifying participants of the IM session, extracting keywords of the IM
session from the contents, and associating the keywords and the participants
with the corresponding IM session. Spec., Abstract.
As noted above, claims 26–49 stand rejected. Claims 26, 34, and 42
are independent. Appeal Br. 25 (claim 1), 26–27 (claim 34), 28–29
(claim 42) (Claims App.). Claims 27–33 depend directly or indirectly from
claim 26; claims 35–41 depend directly or indirectly from claim 34; and
claims 43–49 depend directly or indirectly from claim 42. Id. at 25–30.
Claim 34 recites “[a] computer hardware system, comprising: a
hardware processor configured to initiate the following executable
operations,” which performs functions, substantially as recited in claim 26.
Id. at 26–27. Claim 42 recites “[a] computer program product, comprising: a
computer readable hardware storage device3 having stored therein program
code, the program code, which when executed by a computer hardware
system, causes the computer hardware system to perform” functions,

3 Claim 42 does not recite expressly that the storage device is non-transitory
(Appeal Br. 28 (Claims App.); see Spec. ¶¶ 35–37), nor does the Examiner
determine the scope of claim 42’s recitation of the “computer readable
hardware storage device.” When prosecution resumes, the Examiner should
determine whether claim 42 encompasses non-statutory subject matter. See
In re Nuijten, 500 F.3d 1346, 1356–57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter).
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substantially as recited in claim 26. Id. at 28–29. The Examiner relies on
the same references and substantially similar arguments in rejecting claims
26, 34, and 42 (Final Act. 6–12), and Appellant does not contest the
rejections of claims 27–49 separately from claim 26 (Appeal Br. 8, 21, 22).
Therefore, we focus our analysis on independent claim 26.
Claim 26, reproduced below with disputed limitations emphasized, is
representative.
26. A computer-implemented method, comprising:
identifying participants of a plurality of different sessions
between different sets of users in a single-platform
communication system;
extracting, automatically and from the plurality of
different sessions; keywords;
generating, automatically and based upon the extracted
keywords, a plurality of different clusters of the plurality of
different sessions; and
causing, on a client computer system, the plurality of
different clusters to be concurrently visual depicted, wherein
at least a first cluster and a second cluster of the plurality
of different clusters include both keywords and participants that
are both mutually exclusive to each other, and
the single-platform communication system is an instant
messaging system.
Id. at 25 (emphasis added).
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REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
claims:
Name4 Number Pub’d/Issued Filed
Newman US 2004/0113953 A1 June 17, 2004 Dec. 16, 2002
Dholakia US 2009/0307319 A1 Dec. 10, 2009 June 9, 2008
Chatani US 2010/0125633 A1 May 20, 2010 Sept. 18, 2009
Bansal US 2010/0318620 A1 Dec. 16, 2010 June 16, 2009
Amidon US 9,122,645 B1 Sept. 1, 2015 Dec. 20, 2006
Specifically, the Examiner rejects claims 26–30, 32, 34–38, 40, 42–46, and
48 under 35 U.S.C. § 103(a) as obvious over the combined teachings of
Dholakia, Chatani, and Newman (Final Act. 6–14); claims 31, 39, and 47
under 35 U.S.C. § 103(a) as obvious over the combined teachings of
Dholakia, Chatani, Newman, and Bansal (id. at 14); and claims 33, 41, and
49 under 35 U.S.C. § 103(a) as obvious over the combined teachings of
Dholakia, Chatani, Newman, and Amidon (id. at 15).
Because we determine that reversal of the rejection of independent
claim 26 is dispositive with respect to the Examiner’s rejections, except for
our ultimate decision, we do not discuss the merits of the rejections of
claims 27–49 further herein. We review the appealed rejection of
independent claim 26 for error based upon the issues identified by
Appellant, and in light of the arguments and evidence produced thereon. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We
address the rejection of claim 26 below.

4 All reference citations are to the first named inventor only.
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ANALYSIS
1. Non-Obviousness of Claim 26 Over Dholakia, Chatani, and Newman
As noted above, the Examiner rejects independent claim 26 as
obvious over the combined teachings of Dholakia, Chatani, and Newman.
Final Act. 6–12. Specifically, the Examiner finds that Dholakia teaches:
a computer-implemented method, comprising:
identifying participants of a plurality of different sessions
between different sets of users in a single-platform
communication system;
extracting, automatically and from the plurality of
different sessions keywords; [and]
generating, automatically and based upon the extracted
keywords, a cluster of the plurality of different sessions; . . .
wherein the single-platform communication system is an
instant messaging system,
as recited in claim 26. Id. at 6–7 (citing Dholakia ¶¶ 14, 27, 38, Fig. 2 (steps
206, 218)).
The Examiner acknowledges, “Dholakia fails to teach causing, on a
client computer system, the plurality of different clusters to be concurrently
visually depicted, wherein at least a first cluster and a second cluster of the
plurality of different clusters include both keywords and participants that are
both mutually exclusive to each other.” Id. at 7. However, the Examiner
finds Chatani teaches or suggests “causing, on a client computer system, the
plurality of different clusters to be concurrently visually depicted, wherein at
least a first cluster and a second cluster of the plurality of different clusters
include . . . participants that are both mutually exclusive to each other.” Id.
(citing Chatani ¶ 30, Fig. 2).
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Chatani’s Figure 2 is reproduced below.

Figure 2 “is a perspective view showing an example of a virtual space.”
Chatani ¶ 12. In particular, Chatani explains:
FIG. 2 is a perspective view showing one example of the
virtual space. As shown in the diagram, a game stage 21 is placed
in the virtual space 20 and avatars U001 to U008 are placed on
the game stage 21. Each avatar is correlated to any game
terminal 14, and moves on the game stage 21 according to an
operation carried out by a user using an operating device
equipped to the correlated game terminal 14.
Id. ¶ 20. Thus, Chatani teaches mutually exclusive clusters G01, G02, and
G03 of participants U001–U008 on a client computer system, i.e., game
terminal 14. The Examiner further finds that a person of ordinary skill in the
relevant art would have had reason to combine the teachings of Dholakia
and Chatani “to incorporate a virtual space, as taught by Chatani, into
Dholakia, in order to allow a user to easily discern the topics of respective
conversations.” Final Act. 7–8; see Ans. 4–7 (citing Chatani ¶ 23).
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The Examiner also acknowledges that the combined teachings of
Dholakia and Chatani “fail[] to teach that at least a first cluster and a second
cluster of the plurality of different clusters include keywords mutually
exclusive to each other.” Final Act. 8. However, the Examiner finds that
“Newman teaches at least a first cluster and a second cluster of the plurality
of different clusters include keywords mutually exclusive to each other.” Id.
(citing Newman, Fig. 2). Moreover, the Examiner concludes “[i]t would
have been obvious for one of ordinary skill in the art at the time of the
invention to incorporate a list of frequent keywords, as taught by Newman,
into Dholakia-Chatani, in order to allow a user to easily discern the topic of
a cluster.” Id.; see Newman ¶ 102 (describing keyword list 112), Fig. 1.
Appellant raises numerous challenges to the proposed combination of
the teachings of Dholakia, Chatani, and Newman. We are persuaded that
one of these challenges shows dispositive Examiner error.
Newman’s Figure 2 is reproduced below.

Figure 2 depicts two groups forming “the second part of an overview of a
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93-message discussion.” Newman ¶ 65.
Referring to Newman’s Figure 2, Appellant notes that each group’s
keyword lists includes the term “bsa.” Appeal Br. 19. Thus, Appellant
contends Newman does not teach keyword lists that are “mutually
exclusive,” and a person of ordinary skill in the art would not understand the
combined teachings of Dholakia, Chatani, and Newman to teach “at least a
first cluster and a second cluster of the plurality of different clusters include
both keywords and participants that are both mutually exclusive to each
other.” Id. at 19–20, 25 (Claims App.) (emphasis added).
The Examiner responds that Newman’s Figure 3 depicts Groups 3 and
4, which do not have shared keywords. Ans. 7. The Examiner finds
the fact that the groups (i.e., clusters) of messages of Newman
are derived from a common group of messages does not change
the teaching or rationale for which Newman is relied upon. In
particular, Newman discloses that “archived discussions pay
varying amounts of attention to the ostensible subject and initial
contribution, and often branch into several subtopics, so the
reader cannot assume, based only on the ostensible subject,
whether any portion of the discussion is actually of interest, and,
if so, what parts of the discussion.”
Id. at 7–8 (quoting Newman ¶ 20 (describing background art)). Newman’s
Figures 1–3 depict Groups 0–4, each of which contains part of a 93-message
discussion. Newman ¶¶ 64–66. Thus, read in context, Newman’s
Figures 1–3 teach or suggest only that clusters could include mutually
exclusive or non-exclusive (i.e., shared) keywords.
Referring to newly cited Figure 3 of Newman, the Examiner explains,
“[w]hile Newman generates clusters of messages differently from the
claimed invention and Dholakia does not negate the benefits of displaying a
plurality of clusters based on keywords.” Ans. 8. Appellant notes, “[t]he
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Examiner has presented an explanation as to why it would have been
obvious to include keywords with the different clusters. However, the
Examiner has not presented an explanation as to why it would have been
obvious to include keywords that are mutually exclusive to each other, as
claimed.” Reply Br. 8–9 (emphases added). We agree.
At best, the Examiner shows that a person of ordinary skill in the
relevant art could have combined the teachings of Dholakia, Chatani, and
Newman to achieve claimed method, including the disputed limitation.
However, it is not sufficient proof of obviousness to show that a
combination could have been made. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (“[R]ejections on obviousness cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). At
worst, the Examiner relies on the claim limitations to impermissibly guide
the combination of the references’ teachings to achieve the recited methods.
See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369
(Fed. Cir. 2012) (“On the basis of this evidence, hindsight provides the only
discernable reason to combine the prior art references. Unless one knew that
negative pressure could be used to treat wounds, there would be no reason to
combine the prior art to arrive at the claimed device and methods.”
(emphases added)).
To show the methods recited in claim 26 are obvious, the Examiner
must demonstrate that the combined teachings of Dholakia, Chatani, and
Newman teach or suggest all of the recited limitations and that a person of
ordinary skill in the relevant art would have had reason to combine those
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teachings in the manner proposed to achieve the claimed methods. The
Examiner fails to do so here, and Appellant persuades us that the Examiner
erred in rejecting claim 26, as obvious over the combined teachings of
Dholakia, Chatani, and Newman. Consequently, we do not sustain the
obviousness rejection of claim 26.
2. Claims 27–49
Each of claims 34 and 42 includes substantially similar limitations to
the disputed limitations of claim 26 discussed above. Appeal Br. 26–27, 28–
29 (Claims App.). Each of claims 27–33, 35–41, and 43–49 depends
directly or indirectly from independent claim 26, 34, or 42. Id. at 25–30. As
noted above, Appellant challenges the rejection of independent claims 34
and 42 for substantially the same reasons as claim 26 and of the dependent
claims for the same reasons as their base claims. See Appeal Br. 8, 21, 22.
Because we are persuaded the Examiner erred with respect to the
obviousness rejection of claim 26, we also are persuaded the Examiner erred
with respect to the obviousness rejections of claims 27–49. For this reason,
we do not sustain the Examiner’s rejections of those claims.
NEW GROUNDS OF REJECTION OF CLAIMS 26–49 UNDER
37 C.F.R. § 41.50(B)
We make the following new grounds of rejection:
• Claims 26–49 are rejected under 35 U.S.C. § 112, ¶ 1, as lacking
adequate written description.
35 U.S.C. § 112, ¶ 1, provides:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
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most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of carrying out
his invention.
As our reviewing court has explained,
The ‘written description’ requirement implements the
principle that a patent must describe the technology that is sought
to be patented; the requirement serves both to satisfy the
inventor’s obligation to disclose the technologic knowledge upon
which the patent is based, and to demonstrate that the patentee
was in possession of the invention that is claimed.
Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005).
Claim 26 recites a computer-implemented method comprising steps
including:
causing, on a client computer system, the plurality of different
clusters to be concurrently visual depicted, wherein
at least a first cluster and a second cluster of the plurality of
different clusters include both keywords and participants that
are both mutually exclusive to each other . . . .
Appeal Br. 25 (emphasis added). Appellant added claims 26–49 by an
Amendment filed on May 1, 2017. In that Amendment, Appellant does not
state where support for this limitation is found in the Specification.
The Specification’s drawings depict clusters with non-exclusive
keywords and participants (Spec., Fig. 4a) and clusters of both mutually
exclusive and non-exclusive keywords and participants (id., Fig. 4b).
However, apart from claims 26, 34, and 42, we do not find where the
Specification describes clusters including both keywords and participants
“that are both mutually exclusive to each other.” In fact, the Specification
does not include the phrase “mutually exclusive” in describing the visually
depicted clusters. Nor do we see how the Specification addresses generating
clusters that result in the specifically claimed clusters with keywords and
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participants that are “both mutually exclusive to each other.” Therefore, we
reject independent claims 26, 34, and 42, and the claims dependent
therefrom, under 35 U.S.C. § 112, ¶ 1, for lack of adequate written
description.
DECISIONS
1. The Examiner erred in rejecting claims 26–49 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Dholakia,
Chatani, and Newman, alone or in combination with the teachings of
Bansal or Amidon.
2. We determine that claims 26–49 are unpatentable under 35 U.S.C.
§ 112, ¶ 1, as lacking of adequate written description.
3. Thus, on this record, claims 26–49 are unpatentable.
CONCLUSION
For the above reasons, we reverse the Examiner’s decision rejecting
claims 26–49 as obvious over the combined teachings of Dholakia, Chatani,
and Newman, alone or in combination with the teachings of Bansal or
Amidon, but we determine claims 26–49 are unpatentable as lacking
adequate written description.
In summary:
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed New
Ground
26–30,
32, 34–
38, 40,
42–46,
48
103(a) Dholakia,
Chatani,
Newman

26–30,
32, 34–
38, 40,
42–46, 48

31, 39,
47
103(a) Dholakia,
Chatani,
31, 39, 47
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Newman, Bansal
33, 41,
49
103(a) Dholakia,
Chatani,
Newman,
Amidon
33, 41, 49
26–49 112, ¶ 1 Written
Description
26–49
Overall
Outcome
26–49 26–49
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01. No time for
taking any action connected with this appeal may be extended under 37
C.F.R. § 1.136(a)(1).

REVERSED; 37 C.F.R. § 41.50(b)