Mark Dane et al.Download PDFPatent Trials and Appeals BoardDec 13, 201912941720 - (D) (P.T.A.B. Dec. 13, 2019) 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. 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. Appeal 2018-001434 Application 12/941,720 2 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. Appeal 2018-001434 Application 12/941,720 3 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. Appeal 2018-001434 Application 12/941,720 4 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). Appeal 2018-001434 Application 12/941,720 5 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). Appeal 2018-001434 Application 12/941,720 6 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 Appeal 2018-001434 Application 12/941,720 7 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 Appeal 2018-001434 Application 12/941,720 8 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 Appeal 2018-001434 Application 12/941,720 9 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 Appeal 2018-001434 Application 12/941,720 10 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 Appeal 2018-001434 Application 12/941,720 11 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 Appeal 2018-001434 Application 12/941,720 12 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 Appeal 2018-001434 Application 12/941,720 13 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 Appeal 2018-001434 Application 12/941,720 14 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, Appeal 2018-001434 Application 12/941,720 15 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.” Appeal 2018-001434 Application 12/941,720 16 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, Appeal 2018-001434 Application 12/941,720 17 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 Copy with citationCopy as parenthetical citation