Mark Dane et al.

Patent Trials and Appeals Board

Dec 13, 2019

12941720 - (D) (P.T.A.B. Dec. 13, 2019)

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.
12/941,720 11/08/2010 Mark DANE CAM920125002US4_8150-0376 1319
52021 7590 12/13/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
HOANG, HAU HAI
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
12/13/2019 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 MARK DANE, MICHAEL HENNESSY, and
DAVID W. CROSSMAN
Appeal 2018-001434
Application 12/941,720
Technology Center 2100
Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
SHARON FENICK, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 81–100. Appeal Br. 2.2 Claims 1–80

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Kenexa Technology,
Inc. Appeal Brief filed June 19, 2017 (“Appeal Br.”) 1.
2 We refer herein to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
January 17, 2017 (“Final Act.”); the Examiner’s Answer mailed September
26, 2017 (“Ans.”); and the Reply Brief (“Reply Br.”) mailed November 27,
2017.
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have been cancelled. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b)(1).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s Specification describes providing access to record(s) from
a database, including using a hyperlink as part of a process of providing a
user with access to the record(s) and enabling that user to provide additional
information regarding the record(s). Spec. 2:20–23, 3:3–5, 9:14–14:21,
Abstract.
Claims 81 and 91 are independent claims. Claim 81, reproduced
below, is illustrative of the claimed subject matter:
81. A computer-implemented method performed by a database
server system, comprising:
receiving, from a first user, an access instruction message;
sending, to a second address associated with a second user
and responsive to receiving the access instruction message; a
message including a hyperlink; and
sending, to a first address associated with the first user and
responsive to sending the hyperlink, a confirmation message
indicating that the hyperlink has been sent to the second address,
wherein
the hyperlink points to document information stored
within a document database of the database server system, and
the access instruction message includes
the second address,
an identification of a form to be completed by a user
associated with the second address,
an expiration time of the hyperlink, and
a confirmation message request directing the
database server system to send the confirmation message
to the first address upon the database server system
sending the hyperlink to the second address.
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Appeal Br. 29 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner:
Name Reference Date
Milewski et al.
(“Milewski”)
US 5,930,471 July 27, 1999
Druckenmiller et al.
(“Druckenmiller”)
US 6,167,435 Dec. 26, 2000
Linden et al.
(“Linden”)
US 6,360,254 B1 Mar. 19, 2002
Emens et al.
(“Emens”)3
US 6,487,553 B1 Nov. 26, 2002
Delaney et al.
(“Delaney”)
US 6,999,565 B1 Feb. 14, 2006
Shirai et al.
(“Shirai”)
US 2001/0042093 A1 Nov. 15, 2001
REJECTIONS
Claims 85, 89, 95, and 99 are rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.4 Final Act. 2–5.
Claims 81–83, 88–93, and 98–100 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Shirai, Emens,
Druckenmiller, and Linden. Final Act. 5–18.

3 As noted by the Appellant, Appeal Br. 4 n.1, the Examiner’s reference in
the Final Action to “Emens (U.S. Patent 6487223 B1)” (e.g., at Final Act. 5–
6) relates to U.S. Patent No. 6,487,553 to Emens. See Answer, 2.
4 The rejection of claims 88 and 98 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, has been withdrawn. See Answer, 8.
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Claims 84 and 94 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Shirai, Emens, Druckenmiller, Linden, and
Delaney. Final Act. 18–20.
Claims 85–87 and 95–97 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Shirai, Emens, Druckenmiller, Linden,
and Milewski. Final Act. 20–23.
ANALYSIS
Written Description Rejection – Claims 85 and 95
Claim 82 depends from claim 81, adding that the method of claim 81
further comprises “detecting access of the database server system using the
hyperlink; verifying, using the hyperlink, whether access of the database
server system is permitted.” Appeal Br. 29 (Claims Appendix). Claim 85
depends from claim 82, adding that the method of claim 82 further
comprises “forwarding, to the second address and based upon access of the
database server being permitted, the form.” Id. at 30.
The Examiner rejects claim 85 as failing to comply with the written
description requirement, finding that “[t]here is no evidence in the
specification” to support forwarding the form “based upon access of the
database server system being permitted.” Final Act. 2–3. The Examiner,
however, does not question whether support exists regarding “forwarding, to
the second address, the form.” Id. The Examiner finds that the
Specification describes that a first user (Recruiter) defines access
permissions for access to candidate information by a second user (Hiring
Manager) but that access permissions described in the Specification relate
only to allowing access to various elements of candidate information, rather
than to a form. Id. at 3 (quoting Spec. 8:15–27).
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Appellant argues that “[u]ltimately, the forms are stored within the
database server system, and the second user is provided access to the
database server system (and hence the forms) based upon the access
instruction message from the first user that includes an identification of form
to be completed by the second user.” Appeal Br. 10. Appellant points out
that the Specification discusses that an e-mail message is sent to the second
user including a URL pointing to a resume “along with references to the
form or forms that are to be completed.” Id. at 9 (quoting Spec. 8:29–32).
Appellant further notes that the Specification shows that a first user may
have the second user “complete a new form” to be associated with a resume.
Id. at 9–10 (quoting Spec. 10:4–7). Appellant further argues that Figures 4
and 5 of the Specification and the related disclosure describes authorization
processing of a URL to permit access to a user, where, once access is
authorized, the user is able to view data and complete data fields of a form.
Reply Br. 2–3 (citing Spec. 13:22–25; Figs. 4, 5).
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Figure 4 of the Specification, reproduced below, is a flow chart
representing operation of elements of an exemplary resume system. Spec.
3:12, 3:15.

As shown in Figure 4, “the data fields of forms that have been
presented” to a hiring manager are completed in step 365, after the URL
from an e-mail has been received (step 350) and the URL has been clicked
on (step 360). Spec. 13:20–25. Figure 5 shows that access is provided only
when a determination has been made that the access is not fraudulent. Spec.
13:28–14:11; Fig. 5. As such, we agree with Appellant that the step of
“complet[ing] any data fields presented” (Fig. 4, step 365; see also Fig. 5,
steps 430, 435) is shown to be based on access of the database server being
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permitted. The Specification therefore provides support for the forwarding
of a form being “based upon access of the database server being permitted.”
Thus, we reverse the Examiner’s § 112 rejection of claim 85 as failing
to comply with the written description requirement, and of claim 95, rejected
for the same reason. See Final Act. 3.
Written Description Rejection – Claims 89 and 99
Claim 89 depends from claim 81, and reads as follows, with certain
language italicized for emphasis:
89. The method of claim 81, further comprising:
receiving, from the first user, a search request for
document information stored within the document database;
providing, to the first address and based upon the search
request, the document information; and
receiving, from the first user, an identification of
individual ones of the document information that were provided
to the first address, wherein
the document information pointed to by the hyperlink is
one of the identified individual ones of the document
information.
Appeal Br. 31 (Claims Appendix).
The Examiner rejects claim 89 as failing to comply with the written
description requirement, finding that “[t]here is no evidence in the
specification” to support providing document information to a first address.
Final Act. 4–5. The Examiner finds that search results are described in the
Specification only as being presented to a user in a web page, and finds that
the web page is not shown as being provided to “a first address.” Id. The
Examiner further finds that description regarding providing results to a user
using a database server system does not support providing results to a first
address, as “[t]he recruiter/first user is NOT a first address.” Ans. 8. The
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Examiner notes that the independent claim recites “a first address associated
with the first user” and that the claim therefore distinguishes between the
first user and the address associated with that user. Id.
Appellant argues that the Specification discloses a “database is
searched and the results are provided to the ‘Recruiter’ (i.e., the first
address.” Appeal Br. 11–12 (citing Spec. Fig. 2, elements 200, 210).
Appellant argues that “providing a user with information necessarily entails
providing that information to the address associated with the user” because
otherwise “how can a server . . . provide information to a user without
providing that information to an address associated with that user?” Reply
Br. 4–5. Appellant cites Figure 1 of the Specification, in which client
systems interact with a server system via a computer network. Id. (citing
Spec. Fig. 1, elements 105, 115, 125, 135). Appellant asks: “[h]ow is it
possible for the server system . . . to directly interact with the user . . .
without sending information to the addresses of the client systems . . . ?” Id.
at 5. Appellant contends that “by admitting that the document information is
provided to the [first user], the Examiner is implicitly admitting that the
document information is provided to the first address” and “[the] first
address and the Recruiter (i.e., the first user) are synonymous with one
another since sending something to the first user necessarily involves
sending something to the address associated with the first user.” Appeal Br.
12–13.
But Appellant does not point to support for the first address being the
address of the first user’s client system on the computer network or being
“synonymous” with the first user. Appellant, for support of claim 81’s first
mention of the “first address” (“sending, to a first address associated with
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the first user and responsive to sending the hyperlink, a confirmation
message indicating that the hyperlink has been sent to the second address”),
points to the disclosure that the resume database server 105 formats an e-
mail message for delivery to the first and second users, including a
confirmation message sent to the first user. Spec. 13:1–6; see Appeal Br. 2
(citing Spec. 13:2–4, Fig. 14). Figure 14 shows a confirmation message
including an email address for the first user. Spec., Fig. 14. Thus, the
Specification supports the first address as an email address. While the
Specification states that delivery of information described as being delivered
via email might be alternatively delivered via instant message or text or
audio information delivered by wireless phone (see Spec. 18:17–19:3), none
of these transmission methods erases the distinction the Examiner highlights
between an address and a user associated with the address, which in those
cases would be an IM address or phone number. The Specification describes
providing information (relevant URLs) from search results to a second user
in a message (Spec. 8:28–10:3), but describes the first user being provided
document information based on a search request via a web page, not via a
message. See, e.g., Spec. 7:23–8:3, Fig. 8. We agree with the Examiner that
there is no support shown in the Specification for the provision of
information to the first user’s address, as that term is interpreted in light of
the Specification.
Thus, we affirm the Examiner’s § 112 rejection of claim 89 as failing
to comply with the written description requirement, and of claim 99, rejected
for the same reason. See Final Act. 5.
35 U.S.C. § 103 rejections – Claims 81–100
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Appellant indicates that the rejections of claims 82–100 stand or fall
together with the rejection of claim 81. Appeal Br. 13, 26–27.
The Examiner rejects claim 81 over Shirai, Emens, Druckenmiller,
and Linden. Final Act. 5–10. Appellant presents several arguments relating
to this rejection which we address seriatim.
The teachings of Shirai
The Examiner finds that Shirai’s teachings regarding sending a
message from one user to a second user via a mail server, teach or suggest
“receiving, from a first user, an access instruction message,” and “sending,
to a second address associated with a second user and responsive to
receiving the access instruction message; a message including a hyperlink.”
Final Act. 6.
Shirai is directed to a mail tool and a file reception unit, which allows
a user to access a file in accordance with an access method. Shirai, code
(57). In Shirai, a sender selects a file as a transmission target and generates
an attached file to be transmitted in a mail message. Id. ¶ 69. The attached
file describes the location of each file and a file transfer method, for example
in accordance with a URL. Id. ¶ 70. Shirai discloses that the email message
is transmitted via mail transfer servers associated with the sender and the
receiver. Id. ¶ 72, Fig. 3 (elements 303, 304).
Appellant argues that Shirai does not show an access instruction
message being received by a database server system, but only “a message
being sent . . . to a second user.” Appeal Br. 13. Appellant additionally
contends that Shirai does not teach that database server system “sending . . .
a message including a hyperlink” because “the Examiner’s analysis
establishes that the sender of the attached file 406 [in Shirai] is the same
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entity that allegedly sent the access instruction message.” Id. at 15.
However, the Examiner finds that the mail servers of Shirai “sit in between
senders and recipients to receive and forward the electronic mail to
recipients.” Final Act. 32. Thus, a mail message that is sent from one user
to a second user would be received by a server, and sent by that server to the
second user. The message to be mailed in Shirai would thus be received
from the first user by the mail server, and then sent to the second user (via
the second user’s mail server). Id.; Answer 19–20. Therefore, we do not
agree with Appellant’s argument that the Examiner erred on this point;
Shirai teaches a message received by an intermediate server, and a message
sent by the intermediate server.
Appellant argues that the Examiner’s analysis improperly equates the
claimed “access instruction message” and “message including a hyperlink.”
Appeal Br. 15–16; Reply Br. 7–8. Appellant further argues that “the specific
combination” of the limitations “contemplates two messages being sent.”
Appeal Br. 17. In addition, Appellant contends that “basic claim
construction principles require that the message including the hyperlink is
not the same as the access instruction message.” Id. at 16 (citing Applied
Med. Resources Corp. v. U. S. Surgical Corp., 448 F.3d 1324, 1333 n.3
(Fed. Cir. 2006)). Applied Medical’s cited footnote says that “[i]n the
absence of any evidence to the contrary, we must presume that the use of . . .
different terms in the claims connotes different meanings.” Applied Med.,
448 F.3d at 1333 n.3 (quoting CAE Screenplates, Inc. v. Heinrich Fiedler
GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed.Cir.2000)). However, Applied
Medical’s note goes on to say that “the use of two terms in a claim requires
that they connote different meanings, not that they necessarily refer to two
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different structures. The prosecution history, specification, comparison with
other claims in the patent, and other evidence may require that two terms in
a claim refer to different structures, but preserving claim integrity does not.”
Id. (internal citations deleted).
Even if different “structures” were required, the Examiner identifies
two message transmissions in Shirai, one in which a message is sent to the
email server by a sender, and the other in which the message is sent from the
email server to a recipient, which teach the two disputed limitations. Final
Act. 6, 29–31. The claim requires that an access instruction message
includes: “the second address, an identification of a form to be completed
by a user associated with the second address, an expiration time of the
hyperlink, and a confirmation message request directing the database server
system to send the confirmation message to the first address upon the
database server system sending the hyperlink to the second address.”
Appeal Br. 29 (Claims Appendix). The other claim element, the “message”
sent to the second address, must include the hyperlink. Id. The language of
the claims does not on its face preclude the same email message content
being received and then sent, if it conforms to the requirements recited for
both “access instruction message” and “message including a hyperlink.” We
therefore do not determine reversible error in the Examiner’s rejection based
on this argument.
Appellant additionally argues that the mail server of Shirai cannot
teach the database server system of claim 81. Reply Br. 5–6; Appeal Br. 14.
The Examiner finds that the resume database server system is disclosed in
the Specification as, in some embodiments, embodied in a commercially
available computer running a commercially available general purpose
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operating system. Answer 16–17 (citing Spec. 4:17–24). We agree with the
Examiner. To the extent the claim requires that the database server system
be distinguishable from a general purpose server, we note the limitation
recites “the hyperlink points to document information stored within a
document database of the database server system,” for which the Examiner
relies upon Emens, not Shirai. See Final Act. 7–8. We therefore do not
determine reversible error in the Examiner’s rejection based on this
argument.
Emens and Druckenmiller as analogous art
We consider two criteria in determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor as the
invention, regardless of the problem addressed; and, if the reference is not
within the field of the inventor’s endeavor, (2) whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). The Supreme
Court directs us to construe the scope of analogous art broadly, stating that
“familiar items may have obvious uses beyond their primary purposes, and
in many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007).
Appellant argues that neither Emens nor Druckenmiller are analogous
art to the claimed invention, and thus, neither can be the subject of a
rejection. Appeal Br. 19–21, 24–25. Appellant contends that the field of the
invention is “access management to centrally stored documents.” Id. at 19,
24. Initially, we note that the claim more broadly recites “a document
database of the database server system” but does not limit that document
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database to centrally stored documents or otherwise recite access
management to centrally stored documents. See id. at 29 (Claims
Appendix).
Emens teaches allowing a user to streamline search results by
excluding previously presented search results, so that a user does not have to
view the same result in repeated searches. Emens, codes (54), (57), 4:3–26.
A session exclusion database includes search results which should excluded
or included in subsequent searches, and “[t]ypically” “will include . . . a set
of unique identifiers such as URL[]s of the stored search result items.” Id. at
5:38–54.
Appellant argues that Emens is concerned with providing Internet
search results, obtained using web crawling techniques, which are filtered by
excluding results from prior searches. Appeal Br. 19 & n.4. The Examiner
finds that Emens is concerned with searches of documents in a central
repository, and is therefore analogous. Answer 32 (referencing “repository
70” of Emens’s Fig. 3 and related disclosure). We agree with the Examiner
that Emens is not solely concerned with Internet searches, but describes
searches of “any computerized database and information system” including,
but not limited to, the Internet. Emens 4:5–11. Emens includes an example
of the search of a database (“IBM WEB BASED PATENT DATABASE”)
which appears, from its name, to be accessed via the Internet, but also is
described as a database. Id. at 4:27–33. While Appellant attempts to draw
the field of the invention narrowly to “access management,” claim 89
describes the receipt of a search request from the first user, the provision of
document information based on the search request, and that the hyperlink
sent in the message is from within the received document information,
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implying a broader field of invention. Appeal Br. 31 (Claim Appendix); see
also Spec. 6:5–8:14.
We agree with the Examiner that Emens is from the same field of
endeavor as the invention. We therefore do not agree with Appellant that
the Examiner erred in determining that Emens is analogous art.
Druckenmiller relates to email subscription address lists, and
verifying subscribers. Druckenmiller, code (57). The Examiner determines
that “Druckenmiller is analogous art with Shirai because both [are] about
sending and receiving messages that include[] hyperlinks/URLS between
users.” Answer 40–41 (citing 3:34–4:3). The Examiner’s findings include
findings relating to Druckenmiller’s message containing a URL being a
verification message. Final Act. 9. Appellant’s invention involves allowing
access verification without the need for a username/password combination.
Spec. 13:28–14:16. Thus, Druckenmiller is reasonably pertinent to the
particular problem with which the inventor was concerned. We therefore do
not agree with Appellant that the Examiner erred in determining that
Druckenmiller is analogous art.
The teachings of Emens
The Examiner finds that Emens teaches the claim limitation that “the
hyperlink points to document information stored within a document database
of the database server system,” citing Emens teaching of session exclusion
database 66 containing URLs resulting from a search query, each pointing to
a document in repository 70. Final Act. 7–8 (citing Emens 5:14-54).
Appellant argues that Emens’ stored hyperlinks would correspond to
the “document information” of the claim, as they are stored in a database
(session exclusion database 66), rather than to the claim term “hyperlink.”
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Appeal Br. 21–22; Reply Br. 10–12. However, we agree with the Examiner
that the Emens’s hyperlinks resulting from searches, while stored in one
database, are pointers to results in a repository 70, thus teaching a hyperlink
pointing to document information stored within a document database of the
database server system. See Ans. 36–39. For the foregoing reasons, we are
not convinced by these arguments by Appellant of error in the Examiner’s
rejection.
Conclusion regarding 35 U.S.C. § 103
We have considered Appellant’s arguments relating to the 35 U.S.C.
§ 103(a) rejection of claim 81, but no argument has convinced us of error in
the Examiner’s rejection. Accordingly, we sustain the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 81, and the rejection of claims 82–100 not
separately argued.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
CONCLUSION
The Examiner’s rejections are AFFIRMED.
More specifically,
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
85, 89, 95,
99
112(a) Written Description 89, 99 85, 95
81–83, 88–
93, 98–100
103 Shirai, Emens,
Druckenmiller, Linden
81–83, 88–
93, 98–100

84, 94 Shirai, Emens,
Druckenmiller, Linden,
Delaney
84, 94
85–87, 95–
97
Shirai, Emens,
Druckenmiller, Linden,
Milewski
85–87, 95–
97

Overall
Outcome
81–100
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED