Seymour RAPAPORT et al.Download PDFPatent Trials and Appeals BoardJun 1, 20202020000346 (P.T.A.B. Jun. 1, 2020) 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. 12/854,082 08/10/2010 Seymour RAPAPORT RAPA-01733US0 7080 28554 7590 06/01/2020 Vierra Magen Marcus LLP 2001 Junipero Serra Blvd., Suite 515 Daly City, CA 94014 EXAMINER HO, RUAY L ART UNIT PAPER NUMBER 2175 NOTIFICATION DATE DELIVERY MODE 06/01/2020 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): patents@vierramagen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SEYMOUR RAPAPORT, JEFFREY A. RAPAPORT, KENNETH ALLEN SMITH, JAMES BEATTIE, and GIDEON GIMLAN1 ____________________ Appeal 2020-000346 Application 12/854,082 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and STEVEN M. AMUNDSON, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 through 10 and 12 through 40. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, Jeffrey A. Rapaport, is the real party in interest. Appeal Br. 3. Appeal 2020-000346 Application 12/854,082 2 INVENTION Appellant’s invention relates to a Social-Topical Adaptive Networking (STAN) system. A cross-pollination subsystem cooperatively interacts with external platforms to bring fresh cross-pollination data to topic nodes or on-topic Notes Exchange rings of the STAN system. See Abstract. Claim 1 is reproduced below. 1. An information enhancing method for use with a first social-topical networking system and with external platform systems that are external of the first social-topical networking system and provide social interaction services, where the first social-topical networking system maintains in a memory thereof, a communally-controlled topic space populated by spatially and/or hierarchically organized topic nodes each having respective topic defining data logically associated therewith, wherein the maintained topic space is communally- controlled due to automatically repeated updating thereof based on automatic uploads of current focus-indicating records for, and based on explicit and/or implicit votes of plural users of the first social-topical networking system, the updating being in terms of at least one of spatial and/or hierarchical organization of the topic nodes within the topic space and in terms of the topic defining data that is logically associated with respective ones of the topic nodes, the method comprising: causing instantiation, within a machine system, of a software agent that is structured to be able to search for, find and convey potentially new or different, and thus potentially informationally enhancing data signals to the first social-topical networking system for potential addition at least into a specified portion of the communally- controlled and automatically repeatedly updated topic space of the first social-topical networking system of corresponding data items represented by the potentially informationally enhancing data signals, where information represented by the potentially informationally enhancing data signals Appeal 2020-000346 Application 12/854,082 3 is potentially new or different relative to information represented by a current version of the topic defining data of at least one of the topic nodes of the automatically and repeatedly updated topic space; causing the instantiated software agent to begin searching for and collecting from the one or more external platform systems that provide social networking services, potentially new or different, and thus potentially informationally enhancing data items found by the agent in the one or more external platform systems, causing the instantiated software agent to begin conveying the collected potentially new or different, and thus potentially informationally enhancing data items by way of said potentially informationally enhancing data signals to the first social-topical networking system; and causing initiation of a determination as to whether one or more of the conveyed and potentially informationally enhancing data items is new or different relative to information currently represented by the topic defining data of the at least one of the topic nodes of the communally- controlled and automatically repeatedly updated topic space. EXAMINER’S REJECTIONS2 The Examiner rejected claims 1, 5, 12, 15, 18 through 33, and 36 2 Throughout this Decision we refer to the Appeal Brief filed July 8, 2019 (“Appeal Br.”); Reply Brief filed November 16, 2019 (“Reply Br.”); Final Office Action mailed September 4, 2018 (“Final Act.”); and the Examiner’s Answer mailed September 9, 2019 (“Ans.”). Appeal 2020-000346 Application 12/854,082 4 through 40 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written-description requirement.3 Final Act. 6–7; Ans. 3–4. The Examiner rejected claims 1 through 10 and 12 through 40 under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 28; Ans. 5–7. The Examiner rejected claims 21 through 24 under 35 U.S.C. § 102(e) as anticipated by Eder (US 2012/0158633 A1, published June 21, 2012). Final Act. 7–10; Ans. 24–25. The Examiner rejected claims 1 and 36 through 40 under 35 U.S.C. § 103 as unpatentable by Turski (US 2010/0070875 A1, published Mar. 18, 2010), Schoenberg (US 8,249,898 B2, issued Aug. 21, 2012), and Sacco (US 2009/0089678 A1, published Apr. 2, 2009). Final Act. 11–14; Ans. 8–11. The Examiner rejected claims 2 through 4, 6 through 10, and 18 through 20 under 35 U.S.C. § 103 as unpatentable by Schoenberg, Macadaan (US 2008/0209343 A1, published Aug. 28, 2008), and Neely (US 2008/0114737 A1, published May 15, 2008). Final Act. 14–21; Ans. 11–18. The Examiner rejected claims 5, 12 through 17, and 32 through 35 under 35 U.S.C. § 103 as unpatentable by Sacco and Schoenberg. Final Act. 21–27; Ans. 18–24. The Examiner rejected claims 25 through 31 under 35 U.S.C. § 103 as unpatentable by Schoenberg and Eder. Final Act. 29–31; Ans. 25–28. 3 Appellant filed the application on appeal before September 16, 2012, and thus, the pre-Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 11229, 125 Stat. 284 (2011), version of §112 applies. Appeal 2020-000346 Application 12/854,082 5 General Arguments Appellant presents arguments, on pages 17 through 28 of the Appeal Brief, which are not specifically identified as being applicable to a specific rejection but rather to Examination of the case. Such arguments are not in accordance with 37 C.F.R. § 41.37(iv): “Each ground of rejection contested by appellant must be argued under a separate heading and each heading shall reasonably identify the ground of rejection being contested.” Insofar as we can ascertain which rejection the arguments presented in pages 17 through 28 apply to, we address them as they apply to the individual rejections. Throughout the Briefs Appellant’s arguments also reference arguments not made in the Briefs but presented in prior communications with the Examiner.4 See, e.g., Appeal Br. 17 (“[a]ll this by the way is argued and backed up with supporting evidence to a greater level of detail in the earlier filed response RE7/2018 which the Examiner has elected to summarily dismiss as ‘lengthy arguments.’ See pg. 27 of RE7/2018 (‘Be that as it may, ...’). RE7/2018 is part of the record.”). These arguments, presented in papers other than the Briefs, have not been considered as they are not before us. See 37 C.F.R. § 41.37(iv) (“any arguments or authorities 4 Appellant includes accusations of “fraudulent examination,” “the Examiner treating the law as a joke” and “flagrant violations of law” and makes other inflammatory comments. See, e.g., Reply Br. 8; Appeal Br. 20, 27. We disagree with Appellant’s characterizations. Also, such comments do not serve to persuade us of the merits of Appellant’s substantive arguments. Further, we remind Appellant that “Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy.” 37 C.F.R. § 1.3. Appeal 2020-000346 Application 12/854,082 6 not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”). 35 U.S.C. § 112, First Paragraph, Rejection The Examiner rejected independent claims 1, 5, 12, 15, 18 through 33 and 36 through 40 as failing to comply with the written-description requirement. Specifically the Examiner finds, on pages 6 and 7 of Final Office Action that the following claim recitations are not described in the Specification: 1.a) The recitation of “spatial and/or hierarchical organization” in claims 1, 5, 12, 36, and 38 through 40. 1.b) The recitation of “headline column” in claims 18 and 19. 1.c) The recitation of “user activation of at least one of the presented recommendation-representing objects” in claim 20. 1.d) The recitation of “buffering control of a respective one of the one or more tracked and ongoing online information exchanges” in claim 21. 1.e) The recitation of “user-serving Bot” in claim 26. 1.f) The recitation of “node-serving Bot"” in claim 27. 1.g) The recitation of “notes-exchange serving Bot” in claim 28. 1.h) The recitation of “calling” function of the “calling for a user’s vote on one or more portions of the Bot obtained information” in claim 31. 1.i) The recitation of “positioning respective portions or all of the Bot obtained information relative to a respective central core or radially displaced attributes of the Notes Exchange session and/or corresponding topic node; and identifying specially differentiated content within the Bot obtained information” in claim 31. Appeal 2020-000346 Application 12/854,082 7 Appellant present arguments directed to the rejection under 35 U.S.C. § 112 first paragraph, on pages 30 and 31 of the Appeal Brief. Appellant argues the Examiner’s statement that the disputed limitations are “hard to construe” does not meet the Examiner’s initial burden under 35 U.S.C. § 132. Appeal Br. 23, 30. Appellant asserts that it is clear that the Examiner did not perform a through reading of the current application and application 12/369,274, which is incorporated by reference. Id. Appellant argues that the hierarchical organization of topic centers are shown in the three- dimensional structure shown in Figure 2, and the discussion in paragraphs 96 through 98, 104, 127, 128, and 179. Appeal Br. 30; Reply Br. 5. Further, Appellant points to the Figures 5A and 6 of application 12/369,274. Appeal Br. 31. This argument only identifies teachings in the Specification as they apply to rationale 1.a) above of “spatial and/or hierarchical organization” in claims 1, 5, 12, 36, and 38–40. The Examiner has not responded to the substance of this argument, except to say “[w]ithout cancelling or amending the recited claim features, Appellant simply cannot overcome the description requirement by providing explanations or criticism.” Ans. 29. The written- description requirement serves “to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him; how the specification accomplishes this is not material.” In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). We have reviewed the portions of the Specification cited by the Appellant in the Briefs (in both their arguments, and the “Summary of the Claimed Subject Matter” section of the Appeal Brief) and concur that the Specification demonstrates the Appellant possessed the subject matter claimed. Spatial Appeal 2020-000346 Application 12/854,082 8 organization typically refers to organizing by position, which differs from hierarchal organization, which typically refers to organized by rank. Figure 2 depicts two topic spaces (items 215 and 225) each with a hierarchical tree of nodes (items 216 and 226). See Fig. 2, Specification paragraph 95. Further, Figure 2 depicts Topic Center Owned Note Exchanges (TCONEs) which extend in the z direction (i.e., perpendicular to the topic space) and as such represent a spatial organization of the data. As such, we concur with Appellant that the original filed Specification demonstrates possession of the limitation directed to “spatial and/or hierarchical organization.” Accordingly, we are persuaded of error in the Examiner’s rejection of claims 1, 5, 12, 36, and 38–40 under 35 U.S.C. § 112, first paragraph based upon rationale 1.a). However we reach a different conclusion with respect to the Examiner’s rejection of claims 18 through 20, 26 through 28 and 31, where rationale 1.b), 1.c) and 1.e) through 1.i) is applied. Initially, we are not persuaded of error by Appellant’s argument that the Examiner’s rejection did not meet the requirements of 35 U.S.C. § 132. Our reviewing court in Pfizer held that § 132 “merely requires that an applicant ‘at least be informed of the broad statutory basis for [the rejection of] his claims, so that he may determine what the issues are on which he can or should produce evidence.’” Pfizer, Inc. v. Lee, 811 F.3d 466, 472 (Fed. Cir. 2016) (alteration in original) (quoting Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)). The court also found § 132 requires that the Examiner’s rejection be “sufficiently informative to allow [the applicant] to counter the grounds for rejection.” Id. at 473–74. The court further found Appeal 2020-000346 Application 12/854,082 9 that § 132 “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Id. at 471–72 (quoting Chester, 906 F.2d at 1578). See also In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (“[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.”) Here, as discussed above Appellant was able to recognize the limitations which were considered to lack written-description support and provide a response to counter the rejection as it applied to rationale 1.a). As the Examiner applied a similar manner of identifying limitations which were considered to lack written-description support with respect to rationale 1.b) through 1.i), we consider the rejection sufficiently informative to allow Appellant to have recognized and countered the ground of rejection. Further, we are not persuaded by Appellant’s assertion that the Examiner’s rejection is in error as the Examiner did not consider the disclosure of the incorporated-by-reference application, i.e., 12/369,274. The Examiner did not identify in the Final Action or the Answer, that the incorporated-by-reference application was not considered. Further, we do not agree with Appellant’s logic in the statement that: the outstanding rejections in the FOA assert: “ ... Particularly, bringing in another application (i.e., the alleged incorporated- by-reference STAN-I application) does not overcome the outstanding [[ 35 USC §112(a) ]] rejections.” --FOA pg. 3 lines 1-4 [bracketed text, emphasis added]. All the outstanding Appeal 2020-000346 Application 12/854,082 10 further rejections in the FOA restrictively refer to “the present application” or to the “specification of the present application” (or at times to the “specification of the present invention”) as opposed to the mentioned “another” application. It is not acquiesced to in the FOA that said “another application” is truly incorporated-by-reference into the subject ’082 application but rather the former ’274 application is deprecated as being “alleged[ly ]” so incorporated. Appeal Br. 21–22. As discussed above, Appellant has not provided separate arguments directed to the rationale applied in rejecting these claims. Additionally, Appellant’s “Summary of the Claimed Subject Matter” section of the Appeal Brief, on pages 5 through 16, does not discuss claims 18 through 20, 26 through 28, and 31. Thus, with respect to these claims Appellant’s Briefs provide neither argument nor guidance as to where the originally filed application (including the incorporated-by-reference application) provides support demonstrating the Appellant possessed the disputed limitation. “Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Ex parte Frye, Appeal No. 2009-006013, 2010 WL 889747, at *4 (BPAI Feb. 26, 2010) (precedential), available at https://www.uspto.gov/sites/default/files/ip/ boards/bpai/decisions/prec/fd09006013.pdf. See also Jung, 637 F.3d at 1365. Accordingly, Appellant’s arguments have not shown error in the Examiner’s rejection, and we sustain the Examiner’s rejection of claims 18 through 20, and 26 through 28 and 31 under 35 U.S.C. § 112, first paragraph based upon rationale 1.b), 1.2), 1.e) through 1.i). Appeal 2020-000346 Application 12/854,082 11 With respect to claim 21, Appellant’s “Summary of the Claimed Subject Matter” section of the Appeal Brief, on page 12, cites to Appellant’s Specification Figure 2 item 216b as supporting this limitation. We construe this as a response to the Examiner’s finding the claims are not supported by written description. We have reviewed Figure 2 and paragraph 110 of Appellant’s originally filed Specification which discusses item 216b and discusses additional material being buffered by a Bot. Thus, Appellant has provided an explanation of where the originally filed Specification provides written-description support for claim 21, which the Examiner has not addressed. Accordingly, we do not sustain the Examiner’s rejection of claim 21 under 35 U.S.C. § 112, first paragraph. We similarly reverse the rejection of claims 15, 22 through 30, 32, and 37 as they depend upon claim 12 or 21 or 36 and are not additionally rejected under 35 U.S.C. § 112, first paragraph. 35 U.S.C. § 112, Second Paragraph, Rejection The Examiner rejected claims 1 through 10 and 12 through 40 under 35 U.S.C. § 112, second paragraph as being indefinite. Final Act. 7–10; Ans. 5–7. Specifically the Examiner finds, on pages 7 and 10 of Final Office Action that the following claim recitations are not clear: 2.a) The recitation of “communally-controlled topic space” in claim 1 is unclear. Appeal 2020-000346 Application 12/854,082 12 2.b) The recitation of “spatial and/or hierarchical organization” in claims 1, 36 and 38 through 40 is indefinite as it is not clear what kind of organization can be spatial and hierarchical. 2.c) The recitation of “automatically perform[s] an online search” in claim 2 is unclear as it is not apparent if this is referring to the “automatically seek cross-pollination data” feature as discussed in paragraph 72 of the Specification. Further, it is unclear how the automatic search is initiated and what type of search engine is employed. 2.d) The recitation of “automatically repeatedly guessed by the first social-topical networking system to be currently of focus in the user’s mind” in claim 2 is unclear as the “guess” is not recited with any algorithm. 2.e) The recitation of “currently represented” in claims 2 and 5 is unclear as it is not apparent what the difference is between “currently represented” and “not currently represented.” 2.f) The recitation of “topic node” and “topic center” in claims 4, 14, and 25 is unclear whether the phrases refer to the same thing. 2.g) The recitation of “unique persona specifying profiles” in claims 12, 13, 16, 17, and 32 is unclear how to determine the “unique” nature of “persona profiles.” 2.h) The recitation of “popular and influential and an expert” in claims 13 and 14 is unclear as there is no standard for ascertaining the degree of popularity or influence. Appeal 2020-000346 Application 12/854,082 13 2.i) The recitation of “user activation of at least one of the presented recommendation-representing objects” in claim 20 is unclear how to activate the recommended objects. 2.j) The recitation of “buffering control of a respective one of the one or more tracked and ongoing online information exchanges” in claim 21 is unclear as it is not described in the Specification. 2.k) The recitation of “user-serving Bot,” “node-serving Bot,” and “notes-exchange serving Bot” in claims 26 through 28 are unclear as it is not apparent how to set up the Bot and what the functions and operations are. 2.l) The recitation of “core topic” in claim 31 is unclear as there is no description of how to decide a topic is a core topic. 2.m) The recitation of “calling” for a user’s vote in claim 31 is unclear as there is no mechanism to call for a vote. 2.n) The recitation of “artificial intelligence agent” and “recommended resources” in claims 36 and 38 through 40 is unclear as there is no description of these features in the Specification. 2.o) The recitation of “object” in claims 2 through 4, 6 through 10, and 18 through 20 is not supported by antecedent basis. Appellant presents arguments directed to the rejection under 35 U.S.C. § 112 second paragraph, on pages 30 and 31 of the Appeal Brief and pages 5 and 6 of the Reply Brief. Appellant argues the Examiner’s Final Action does not explain why the rejections are not overcome by Appellant’s Appeal 2020-000346 Application 12/854,082 14 response to the Examiner submitted 7/2018. Appeal Br. 31. Further, Appellant argues: To say that online searching is well known is to deny proper weight to all the terms of the claim taken in whole. (Claim 2 recites, “ ... an online search for material that has relevance to a topic node of the automatically repeatedly updated topic space ... ”.) These are clear and blatant reversible errors. Claim terms do not have to find ipsis verbis support in the specification. Claim terms cannot be rendered meaningless and superfluous. Rebuttal evidence and argument cannot be summarily dismissed as unpersuasive. Id. (underlining omitted, italics added). Further, Appellant argues: It is respectfully submitted that the definitions of terms questioned by the Examiner may be found at least by implication. The “communally-controlled topic space” is so because users can vote on the spatial and/or hierarchical placement of nodes in topic space, forum members (of TCONES) can vote on the spatial and/or hierarchical placement of their respective forum discussions (NE’s or Note Exchanges) in topic space, votes can be explicit or implicit (see ¶¶ [0012], [0093], [0098]. With respect to guessing what is most likely of current focus in each user’s mind, various scoring techniques are disclosed in the incorporated ’274 application. The ’082 application provides technical improvements including the automated cross-pollination from external platforms. In short the Examiner has not met the initial burdens of thoroughly reading the subject ’082 application including the incorporated ’274 application. A prima facie case has not been presented. Appeal Br. 32. In the Reply Brief, Appellant additionally argues: Fig. 2 clearly shows a hierarchical organization of topic nodes (which nodes are also interchangeably referred to as ‘Topic Centers’ or TC’s in the current specification and stated to be so interchangeable in the current specification). The hierarchically Appeal 2020-000346 Application 12/854,082 15 organized topic nodes (e.g., 216n, 216c) are illustrated in Fig. 2 as being disposed within a spatial XYZ framework (210xyz) where, as one nonlimiting example, the Z axis can represent different degrees of topic proficiency by the various chat room discussion rings (or more broadly, Note Exchanges or TCONE’s) that orbit within the 3D space and about each respective Z pole (e.g., Za, Zb). Reply Br. 5. This response only address limitations identified by the Examiner in in rationale 2.a) through 2.d) and 2.k). Appellant has not addressed the limitations in identified by the Examiner in rationale 2.e) through 2.j) and 2.l) through 2.o) other than that the earlier response to the Examiner that addressed the limitations and that the Examiner did not respond to that argument. As identified above, under 37 C.F.R. § 41.37(iv) “any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal,” and thus we have not considered the arguments presented by Appellant in earlier correspondence with the Examiner. Further, “[i]f an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Frye, 2010 WL 889747, at *4. Therefore in the absence of argument directed to the Examiner’s rationale 2.f) through 2.j) and 2.l) through 2.o) for rejecting claims 2 through 4, 6 through 10, 12, 13, 14, 16 through 21, 31, 32, 36, and 38 through 40 under 35 U.S.C. § 112, second Appeal 2020-000346 Application 12/854,082 16 paragraph, we sustain the Examiner’s rejection of these claims.5 Claims 15, 22 through 24, 26 through 30, 33 through 35, and 37 depend upon one of these claims, and accordingly, the 35 U.S.C. § 112, second paragraph rejection of these claims is also sustained. With respect to the Examiner rationale 2.a) through 2.d) and 2.k), appellant’s arguments have persuaded us of error with respect to rationale 2.a) through 2.d) and 2.l). The Examiner did not provide a response to Appellant’s arguments directed to rationale 2.a) concerning the term “communally-controlled topic space.” Ans. 29. The “Summary of Claimed Subject Matter” section of the Appeal Brief identifies that the communally-controlled topic space is shown in Figure 2, item 215. Appeal Br. 5 (emphasis and capitalization omitted). Paragraph 86 of the Specification discusses the space 215 as containing topics from various users. Thus, in light of the Specification, “communally- controlled topic space” is merely referring to a topic space based upon the plural users (communally-controlled). As such, we do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 112, second paragraph based upon rationale 2.a). With respect to Appellant’s arguments directed to rationale 2.b) concerning the term “spatial and/or hierarchical organization” the Examiner responded to Appellant’s arguments stating “[i]t is not clear what the 5 Although Appellant did not present arguments directed to rationale 2.e), we do not sustain the rejection based upon this rationale as the limitation addressed by the Examiner, “currently represented,” is not in either of claims 2 and 5 identified in the rationale. Appeal 2020-000346 Application 12/854,082 17 differences between ‘a spatial organization’ and ‘a hierarchical and spatial organization’ are? It is further not clear what the differences between ‘a hierarchical organization’ and ‘a hierarchical and spatial organization.’” Ans. 29. We are persuaded of error in the Examiner’s rejection. Appellant’s arguments cite to paragraphs 12, 93, and 98 of the Specification as disclosing this feature. As discussed above with respect to the Examiner’s rejection under 35 U.S.C. § 112 first paragraph, above, we concur with Appellant that this feature is depicted in Figure 2 and described in the Specification. As such ,we consider the limitation clear when construed in light of Appellant’s Specification. Accordingly, we do not sustain the Examiner’s rejection of claims 1, 36, and 38 through 40 under 35 U.S.C. § 112, second paragraph based upon rationale 2.b). As this is the only rejection of claim 1 under 35 U.S.C. § 112, second paragraph, we reverse the Examiner’s rejection of the claim. The Examiner did not provide a response to Appellant’s arguments directed to rationale 2.c) concerning the term “automatically performs an online search.” Ans. 29. The Examiner’s rejection states: It is unclear if the “automatically perform an online search” feature is actually the “automatically seek cross-pollination data” feature as described in paragraph [0073] of the Specification of the present application? It is also unclear how this automatic search initiated and what type of search engine or standard employed. Final Act. 8. As argued by Appellant, the claim terms do not need to be an ipsis verbis in the Specification. Appeal Br. 5. Further, we do not consider the claim recitation of performing an online search to be indefinite because the search engine is not disclosed, rather that is just a question of scope of Appeal 2020-000346 Application 12/854,082 18 the claim term. As such, we do not sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 112, second paragraph based upon rationale 2.c). With respect to Appellant’s arguments directed to rationale 2.d) concerning the term “automatically repeatedly guessed by the first social networking system to be currently of focus in the user’s mind” the Examiner states “the ‘vote’ is not recited in claim 2. It is therefore not clear if the ‘vote’ recited in claim 1 is actually a ‘guess’ recited in claim 2?” Ans. 30 (emphasis omitted). We do no not see an incongruity between the “vote” in claim 1 and “guess” in claim 2 as these are two independent claims, and therefore there is no confusion that the guess is referring to the vote. As such, we do not sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 112, second paragraph based upon rationale 2.d). The Examiner did not provide a response to Appellant’s arguments directed to rationale 2.k) concerning the Bots recited in claims 26 through 28. See Ans. 29–30. The Examiner’s rejection states it is unclear how to set up the Bot and what the functions and operations are. Final Act. 9. We disagree with the Examiner that the recitation of a “user-serving Bot” is unclear. Claim 26 recites that this Bot is launched by a user in a social- topical network system. Claim 21, from which claim 26 depends, identifies that the Bot presents additional buffer control, and thus the claim does recite the function of the Bot. Claims 27 and 28 similarly depend upon claim 21 and merely describe Bots with different titles launched in different manners. Thus, we disagree with the Examiner and do not sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 112, second paragraph based upon rationale 2.k). Appeal 2020-000346 Application 12/854,082 19 35 U.S.C. § 102 Rejection based upon Eder Appellant has not presented any arguments directed specifically to the anticipation rejection of claims 21 through 24.6 Insofar as Appellant argues that the Examiner’s rejection does not comply with the requirements of 35 U.S.C. § 132, on pages 28 and 29 of the Final Action the Examiner sets forth the basis for the anticipation rejection of claims 21 through 24 based upon Eder and identifies citations in Eder to support the finding that the claims are anticipated. We consider this sufficient to allow Appellant to counter the Examiner’s rejection. As discussed above, “all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.” Jung, 637 F.3d at 1363. The Examiner has met that burden, and thus Appellant’s argument that the rejection does not meet the requirements 35 U.S.C. § 132 is not persuasive. In the absence of further arguments by Appellant addressing the Examiner’s findings concerning Eder, we are not persuaded of error in the Examiner’s anticipation rejection of claims 21 through 24. 35 U.S.C. § 103 Rejections Appellant has presented several arguments directed to the Examiner’s obviousness rejections. Appeal Br. 32–36. As with the general arguments 6 We note Appellant, on pages 36 and 37 of the Appeal Brief, discusses a 35 U.S.C. § 103 rejection of claims 21 through 24. However, these claims are not rejected under 35 U.S.C. § 103. Appeal 2020-000346 Application 12/854,082 20 discussed above they do not address the individual arguments in accordance with 37 C.F.R. § 41.37(iv). Insofar as we can ascertain which rejection the arguments apply to, we address them as they apply to the individual rejections. Rejection of claims 1 and 36 through 40 based upon Turski, Schoenberg, and Sacco In addition the argument, discussed above, asserting the rejection does not comply with 35 U.S.C. § 132, Appellant argues that the Examiner did not consider Appellant’s claimed field of endeavor. Appeal Br. 35. Appellant argues that claim 1 recites a social-topical networking system maintaining in memory a communally-controlled topic space populated by spatially and/or hierarchically organized topic nodes each having a respective topic. Appeal Br. 35. Appellant argues that Schoenberg is not in the same field of endeavor and that the Office action does not articulate a motivation to combine the references. Appeal Br. 35. The Examiner in response to Appellant’s arguments does not address the field-of-endeavor argument. Appeal Br. 30–31. Further, the Examiner states, “Although there are some distinctions between Turski, Schoenberg, or Sacco and the present invention, they do not lead to the conclusion that the prior art teaches away from the invention. None of the references would lead an inventor down an errant path or discourage using the combination of Turski, Schoenberg, and Sacco.” Ans. 31 (emphasis omitted). We do not sustain the Examiner’s rejection. Each of independent claims 1, 38, 39, and dependent claim 37 recite a limitation directed to a topic space populated by spatially and/or hierarchically organized topic nodes. In the rejection of these claims, under 35 U.S.C. § 103, the Examiner Appeal 2020-000346 Application 12/854,082 21 repeats the claim language and cites to a teaching of Schoenberg but does not provide an explanation of how the teachings of Schoenberg yield the claimed spatial and/or hierarchical organization. Final Act. 11–12 (citing Schoenberg col. 4, ll. 12–18 and col. 16, ll. 18–22). Further, in the rejection of claims 1 and 36 through 40 under 35 U.S.C. 112, second paragraph, the Examiner states the limitation of “spatial and/or hierarchical organization” will “not [be] cited until further clarification [is] provided.” Final Act. 8. Thus, it is unclear to us whether the Examiner considered this limitation when applying 35 U.S.C. 103. Nonetheless, we have reviewed the teachings of Schoenberg cited by the Examiner and do not find a discussion of either hierarchical or spatial organization of topic nodes. Accordingly, we do not sustain the Examiner’s obviousness rejection of claims 1 and 37 through 40. With respect to claim 36, Appellant’s arguments concerning the field of endeavor being communally-controlled topic space populated by spatially and/or hierarchically organized topic nodes each having a respective topic is not commensurate with the scope of the claim. Nonetheless, we are persuaded by Appellant’s argument that the Examiner’s rationale to combine references is insufficient. In KSR, the Supreme Court stated that “there must be some articulated reasoning with [a] rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner states, “it would have been obvious to one ordinary skilled in the art at the time the present invention was made to incorporate said features of Schoenberg and Sacco into Turski to enhance its data intake functions.” Ans. 10 (emphasis omitted). We consider this to statement to be conclusory and lacking a reasoned rationale as required by Appeal 2020-000346 Application 12/854,082 22 KSR. Accordingly, we do not sustain the Examiner’s rejection of claim 36. Rejection of claims 2 through 4, 6 through 10, and 18 through 20 based upon Schoenberg, Macadaan, and Neely Appellant argues that the Examiner did not consider Appellant’s claimed field of endeavor being communally-controlled topic space populated by spatially and/or hierarchically organized topic nodes each having a respective topic in applying the teachings of Schoenberg, Macadaan, and Neely. Appeal Br. 36. Similar to our analysis above with respect to claim 1, independent claim 2 is directed to topic space populated by spatially and/or hierarchically organized topic nodes. The Examiner’s rejection of claim 2 does not directly address the spatially and/or hierarchically organized feature of the claims but does similarly cite to Schoenberg column 4, lines 12–18 and column 16, lines 18–22, as disclosing the topic space. Final Act. 15–16. Further, in the Answer the Examiner identifies that Macadaan teaches a topic space. Ans. 33, citing Macadaan ¶¶ 8, 43, 53. As discussed above with respect to the rejection of claim 1, it is unclear whether the Examiner considered the limitation of a topic space populated by spatially and/or hierarchically organized topic nodes. Nonetheless, we have reviewed the cited teachings of Schoenberg and Macadaan, and while we concur with the Examiner that Macadaan teaches a topic space, the Examiner has not shown that Macadaan teaches the topic space populated by spatially and/or hierarchically organized topic nodes. Additionally, with regard to the Appeal 2020-000346 Application 12/854,082 23 rationale to combine the references, the Examiner states, “it would have been obvious to one ordinary skilled in the art at the time the present invention was made to incorporate said features of Macadaan and Neely into Schoenberg to enhance its content recommendation functions.” Ans. 14 (emphasis omitted). We consider this to statement to be conclusory and lacking a reasoned rationale as required by KSR. Accordingly, we do not sustain the Examiner’s obviousness rejection of claims 2 through 4, 6 through 10, and 18 through 20. Rejection of claims 5, 12 through 17, and 32 through 35, based upon Sacco and Schoenberg Appellant argues that, similar to the rejections of claims 1 and 2, the Examiner did not consider Appellant’s claimed field of endeavor being communally-controlled topic space populated by spatially and/or hierarchically organized topic nodes each having a respective topic in applying the teachings of Sacco and Schoenberg. Appeal Br. 36. Similar to our analysis above with respect to claim 1, each of independent claims 5, 12, 13, 16, and 17 is directed to topic space populated by spatially and/or hierarchically organized topic nodes. The Examiner’s rejection of claim 5 similarly cites to Schoenberg column 4, lines 12–18, as disclosing the topic space. Final Act. 22, 24. As discussed above with respect to claim 1, we have reviewed the teachings of Schoenberg cited by the Examiner and do not find a discussion of either hierarchical or spatial organization of topic nodes. Accordingly, we do not sustain the Examiner’s obviousness rejection of claims 5, 12 through 17, and 32 through and 35. Appeal 2020-000346 Application 12/854,082 24 Rejection of claims 25 through 31 based upon Schoenberg and Eder As with the Examiner’s anticipation rejection of independent claim 21 based upon Eder, Appellant does not address the Examiner’s obviousness rejection of claims 25 through 31. Insofar as Appellant argues that the Examiner’s rejection does not comply with the requirements of 35 U.S.C. § 132, on pages 29 through 31 of the Final Action the Examiner sets forth the basis for the obviousness rejection of claims 25 through 31 based upon Schoenberg and Eder and identifies citations in the references to support the legal conclusion of obviousness. We consider this sufficient to allow the applicant to counter the rejection. As discussed above, “all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.” Jung, 637 F.3d at 1363. The Examiner has met that burden, and thus Appellant’s argument that the rejection does not meet the requirements 35 U.S.C. § 132 is not persuasive. In the absence of further arguments by Appellant addressing the Examiner’s findings concerning Schoenberg and Eder, we are not persuaded of error in the Examiner’s obviousness rejection of claims 25 through 31. Appeal 2020-000346 Application 12/854,082 25 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 12, 15, 18–33, 36– 40 112, first paragraph Written Description 18–20, 26– 28, 31 1, 5, 12, 15, 21–30, 32, 33, 36– 40 1–10, 12– 40 112, second paragraph Indefinite 2–4, 6–10, 12–40 1, 5 21–24 102 Eder 21–24 1, 36–40 103 Turski, Schoenberg, Sacco 1, 36–40 2–4, 6–10, 18–20 103 Schoenberg, Macadaan, Neely 2–4, 6–10, 18–20 5, 12–17, 32–35 103 Sacco, Schoenberg 5, 12 –17, 32–35 25–31 103 Schoenberg, Eder 25–31 Overall Outcome 2–4, 6–10,, 12–40 1, 5 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) (2017). AFFIRMED IN PART Copy with citationCopy as parenthetical citation