Seymour RAPAPORT et al.

Patent Trials and Appeals Board

Jun 1, 2020

2020000346 (P.T.A.B. Jun. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
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.
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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
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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.”).
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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.
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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.
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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.
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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
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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
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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
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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).
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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.
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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.
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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
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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
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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
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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.
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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
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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
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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.
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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
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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
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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
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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.
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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.

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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