Ex Parte Campbell et alDownload PDFPatent Trial and Appeal BoardJul 15, 201613827214 (P.T.A.B. Jul. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/827,214 03/14/2013 91230 7590 07119/2016 Baker Botts L.L.P. 2001 Ross Avenue. 6th Floor Dallas, TX 75201 FIRST NAMED INVENTOR Craig S. Campbell 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 079894.1640 1052 EXAMINER YOUNG, KEVIN L. ART UNIT PAPER NUMBER 2165 NOTIFICATION DATE DELIVERY MODE 07/19/2016 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): ptomaill@bakerbotts.com ptomail2@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRAIG S. CAMPBELL, LARS EILSTRUP RASMUSSEN, and KEITH PEIRIS 1 Appeal2015-000095 Application 13/827,214 Technology Center 2100 Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and AMBER L. HAGY, Administrative Patent Judges. HAGY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-22, which are all of the pending claims. We have jurisdiction over these claims under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify Facebook, Inc., as the real party in interest. (Br. 3.) Appeal2015-000095 Application 13/827,214 Introduction According to Appellants, their disclosure "generally relates to social graphs and performing searches for objects within a social-networking environment." (Spec. i-f 2.) Exemplary Claim Claim 1, reproduced below with disputed limitations italicized, is exemplary of the claimed subject matter: 1. A method comprising, by a computing device: accessing a graph data structure of an online social network, the graph data structure comprising a plurality of nodes and a plurality of edges connecting the nodes, each of the edges between two of the nodes representing a single degree of separation between them, the nodes comprising: a first node corresponding to a first user associated with the online social network; and a plurality of second nodes that each correspond to a concept or a second user associated with the online social network; receiving from the first user a structured query comprising references to one or more selected nodes from the plurality of second nodes and one or more selected edges from the plurality of edges; and generating one or more search results corresponding to the structured query, wherein each search result corresponds to a second node of the plurality of second nodes, each search result comprising one or more snippets, each snippet comprising contextual information about the second node corresponding to the search result, wherein at least one of the snippets of each search result comprises one or more references to the selected nodes and the selected edges of the structured query. 2 Appeal2015-000095 Application 13/827,214 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Raman Craswell Wable Elliott Groeneveld US 2010/0049802 Al US 2010/0228744 Al US 2011/0137902 Al US 2011/0191371 Al US 2011/0313992 Al REJECTIONS Feb.25,2010 Sept. 9, 2010 June 9, 2011 Aug. 4, 2011 Dec. 22, 2011 Claims 1-5, 8-11, and 13-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Elliott, Wable, and Groeneveld. (Final Act. 2-9.) Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Elliott, Wable, Groeneveld, and Raman. (Final Act. 9- 10.) Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Elliott, \Vable, Groeneveld, and Crasv,rell. (Final 1A .. ct. l 0- 11.) ISSUES (1) Whether the Examiner erred in finding the combination of Elliott and Wable teaches or suggests "receiving from the first user a structured query comprising references to one or more selected nodes from the plurality of second nodes and one or more selected edges from the plurality of edges," as recited in independent claim 1. 3 Appeal2015-000095 Application 13/827,214 (2) Whether the Examiner erred in finding the combination of Elliott, Wable, and Groeneveld teaches or suggests: generating one or more search results corresponding to the structured query, wherein each search result corresponds to a second node of the plurality of second nodes, each search result comprising one or more snippets, each snippet comprising contextual information about the second node corresponding to the search result, wherein at least one of the snippets of each search result comprises one or more references to the selected nodes and the selected edges of the structured query[,] as recited in independent claim 1. (3) Whether the Examiner erred in combining the teachings of the Elliott, Wable, and Groeneveld references. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments the Examiner has erred. We disagree with Appellants' conclusions and we adopt as our own: (1) the findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 2- 12) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief. (Ans. 2-7.) We concur with the conclusions reached by the Examiner, and we highlight the following for emphasis. 2 2 Only those arguments made by Appellants have been considered in this decision. Arguments Appellants did not make in the Appeal Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). 4 Appeal2015-000095 Application 13/827,214 A. "receiving from the first user a structured query ... " Appellants argue the Examiner's findings regarding the first disputed limitation are in error because "the proposed Elliott-Wable-Groeneveld combination fails to disclose, teach, or suggest receiving from the first user a structured query comprising references to one or more selected nodes from the plurality of second nodes and one or more selected edges from the plurality of edges, as independent Claim 1 recites." (Br. 8.) Although Appellants concede Elliott discloses searching within a social network, including searching "user data" for specific "search criteria" (id.), Appellants argue "[b ]ecause Elliott does not actually disclose actually [sic] anything related to graph data structures, nodes, or edges, as conceded by the Examiner, it clearly cannot disclose a structured query comprising references to these elements of a graph data structure." (Id.) We disagree. Although the Examiner "agrees that Elliott does not specifically state that it uses a graph data structure," the Examiner finds, and we agree: Elliot does still teach the general idea of searching a graph with nodes and edges. A graph data structure is merely a group of nodes which are interconnected. The connections are called edges. By its very nature a social network is conceptually a graph data structure. A social network is made up of a series of nodes such as users, work places, schools, and interests. These nodes are connected by various edges such as: is friends with, works at, attended, and interested in. Elliot teaches the ability to search on these connections. . . . Thus, although Elliott does not explicitly use the terms nodes and edges it certainly teaches the idea of searching for a user with a query that includes a node and an edge from a plurality of nodes and plurality of edges. (Ans. 2-3 (emphases added).) 5 Appeal2015-000095 Application 13/827,214 In comparing a prior art reference to the claimed invention, the important comparison is the substance of the claim, under its broadest reasonable interpretation in light of the Specification, and the substance of corresponding relied-upon disclosure in the prior art reference. See In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). To show error in the Examiner's position, Appellants must explain why the relied-upon disclosure does not teach or suggest the claimed feature under its broadest reasonable interpretation in light of the Specification, rather than merely alleging that the feature is different because it is described in different terms. Cf In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (explaining that the comparison of references to the claimed invention "is not an 'ipsissimis verb is' test"). Appellants have not done so. Furthermore, the Examiner's findings as to the "structured query" limitation are not premised on Elliott alone, but on the combination of Elliott and Wable. As the Examiner finds, and we agree, "although Elliott [does] not explicitly disclose the use of a graph data structure, Wable does clearly show that a graph data structure can be used to implement the functionality disclosed in Elliott." (Ans. 3; see also Final Act. 3--4.) Appellants' focus on alleged deficiencies in the individual teachings of Elliott does not address the Examiner's combination of Elliott and Wable, and hence is unpersuasive of error for that reason as well. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references. "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCP A 1981) (citations omitted) (emphasis added). Thus, where, 6 Appeal2015-000095 Application 13/827,214 as here, the rejections are based upon the teachings of a combination of references, "[ n ]on-obviousness cannot be established by attacking references individually .... " In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F .2d at 425). In addition, a reference "must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." Id. Appellants provide no arguments regarding Wable's teachings or the combined teachings of Elliott and Wable. Rather, Appellants contend only "[ n ]either Wable nor Groeneveld make up for the deficiencies of Elliott and the Examiner does not assert otherwise." (Br. 8.) Appellants' conclusory arguments are unpersuasive, and also do not rebut the Examiner's findings regarding the reasons one of ordinary skill in the art would be motivated to combine Elliott and Wable. (See Final Act. 4.) B. "generating one or more search results corresponding to the structured query ... " Appellants argue the Examiner's findings regarding the second disputed limitation are in error because "[a]s discussed above, Elliott does not, in fact, disclose receiving a structured query, and consequently could not possibly disclose generating search results corresponding to such a query." (Br. 9.) This argument, which simply incorporates by reference Appellants' arguments regarding the first disputed limitation, is not persuasive of error for the reasons discussed in the previous section. Appellants additionally argue against the Groeneveld reference individually: Groeneveld does not disclose, teach, or suggest anything related to graph data structures, nodes, or edges, and certainly does not 7 Appeal2015-000095 Application 13/827,214 disclose a structured query comprising references to selected nodes and selected edges. Consequently, Groeneveld clearly cannot disclose generating search results corresponding to such a structured query, let alone snippets comprising references to nodes and edges referenced in a structured query. (Br. 9.) Appellants' piecemeal challenge against the teachings of Groeneveld is not persuasive of error because it fails to address the Examiner's findings, which are based on the combination of Groeneveld with Elliott. See Keller, 642 F.2d at 425. As the Examiner finds, and we agree, "[w]hen applying the query based snippet generation of Groeneveld to the search results of Elliott[,] one of ordinary skill in the art would continue to use the query provided by the user, which in the case of Elliott is a node and an edge." (Ans. 5.) Appellants additionally argue the Examiner "appears to be mischaracterizing" the Groeneveld reference. (Br. 9.) In particular, Appellants argue paragraphs 63 and 64 of Groeneveld, cited by the Examiner, "do not in fact disclose" snippets comprising contextual information about the second node. (Id.) We disagree. As the Examiner finds, and we agree: Groeneveld discloses a general web search engine that generates search results from user queries and produces snippets to display with each search result. The snippet generator of Groeneveld "operates to generate one or more snippets based in part on one or more of the chunks and/or query data." ([S]ee Groeneveld paragraph 63)[.] For example[,] the generator can generate a number of snippets using the search query term. ([S]ee id.). Groeneveld clearly shows using the query in the generation of the result snippets. 8 Appeal2015-000095 Application 13/827,214 (Ans. 4--5.) Additional portions of Groeneveld, related to the portions cited by the Examiner, further support the Examiner's findings. (E.g., Groeneveld i-f 11: "The system also includes a snippet generator that can be used to provide snippets associated with a search term or terms. The system can provide summaries that include a query term or terms with sufficient context such that a user can identify a preferred search result." (emphases added).)3 C. Reasonable Expectation of Success Appellants additionally argue "the Examiner has failed to establish a prima facie case of obviousness, because the Examiner has failed to provide a clear articulation of the reasons why the proposed Elliott-Wable- Groeneveld combination would have been obvious to one of skill in the art." (Br. 11.) We find Appellants' argument unpersuasive. We recognize that the Examiner must articulate "reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). However, the Examiner's reasoning need not appear in, or be suggested by, one or more of the references on which the Examiner relies. 3 Although, as noted, we are not persuaded of error in the Examiner's finding the disputed claim limitation "generating one or more search results ... " is taught or suggested by the prior art, we further note the content of the snippets generated may constitute non-functional descriptive material, which cannot provide a patentable distinction. Non-functional descriptive material refers to the content of data that does not exhibit a functional interrelationship with a substrate and does not affect the way a computing process is performed. See Manual of Patent Examining Procedure (MPEP) § 2106.01 (9th Ed., Rev. 07.2015, Nov. 2015). An expanded panel of the Board has held that descriptive material that does not "functionally affect the [claimed] process" is non-functional material. Ex parte Nehls, 88 USPQ2d 1883, 1888 (BP AI 2008) (precedential). 9 Appeal2015-000095 Application 13/827,214 Instead, a reason to combine teachings from the prior art "may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved." WMS Gaming Inc. v. Int'! Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). "Under the correct [obviousness] analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). In the instant appeal, the Examiner has provided a rationale supporting motivation by a person of ordinary skill in the art to achieve the claimed subject matter, that is: At the time of the invention it would have been obvious to one of ordinary skill in the art having the teachings of Elliott as modified and Groeneveld before him or her to modify the social network search based on connections between users and concepts which provides a list of results of Elliot as modified to include providing snippets of information related to the query and the resulting objects as Groeneveld teaches because Elliott discloses returning a list of results but provides no details on how those results are to be presented and the snippets of Groeneveld allow users [to] decide whether and how a search result relates to an associated query (see Groeneveld paragraph 2). (Final Act. 5.) Appellants have not demonstrated why such a rationale is erroneous or why a person of ordinary skill in the art would not have reached the conclusions reached by the Examiner. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) ("[T]he proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references"). 10 Appeal2015-000095 Application 13/827,214 Consequently, we are not persuaded that the Examiner failed to articulate a sufficient rationale for combining Elliott, Wable, and Groeneveld. We are also not persuaded by Appellants' contention the Examiner failed to make an explicit finding of a "reasonable expectation of success." In particular, Appellants provide no support for their assertion that the Examiner's proffered combination of Elliott and Groeneveld would not have a reasonable expectation of success, but instead merely argue: It is unlikely that anyone of ordinary skill in the art circa the priority data of this Application would attempt to build an entire social network system simply in order improve the search engine summary generator disclosed in Groeneveld to generate search results with snippets referencing to nodes and edges referenced in a structured query, nor has the Examiner articulated any such findings. (Br. 12.) Such unsupported attorney argument is entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants' argument is also misdirected as premised on the alleged unlikelihood of improving Groeneveld's search system to add a social network. (Br. 12.) As the Examiner points out, however, "[t]he snippet generator of Groeneveld is not being modified to incorporate social network search. Instead, the social network search system of Elliott is being modified to incorporate the snippet generation of Groeneveld." (Ans. 6.) As the Examiner further finds, and we agree, Groeneveld teaches: [T]he search engine can be used to locate relevant information in any information repository and can be used with applications or other systems (see Groeneveld paragraph 18). Thus, one of ordinary skill in the art would have certainly understood that the snippet generation of Groeneveld could have been applied to the 11 Appeal2015-000095 Application 13/827,214 social network information repository in the social network search application of Elliott and would not have been "uniquely challenging or difficult for one of ordinary in the art." (Ans. 5---6 (citations omitted).) We find the predictable use of familiar prior art elements according to their established functions, as the Examiner finds in the teachings of Elliott and Groeneveld (Ans. 5---6), would have conveyed a reasonable expectation of success to a person of ordinary skill at the time of the invention. We, therefore, are not persuaded the Examiner failed, in formulating the rejection, to establish a reasonable expectation of success. For the foregoing reasons, we are not persuaded the Examiner erred in finding the cited combination of references teaches or suggests the limitations of claim 1, and we, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 1 as unpatentable. For the same reasons, we also sustain the Examiner's rejection of independent claims 19 and 20, and dependent claims 2-5, 8-11, 13-18, 21, and 22, which Appellants do not argue separately. See 37 C.F.R. § 41.37(c)(l)(iv). Although Appellants purport to address separately dependent claims 6 and 7, which stand rejected over Elliott, Wable, Groeneveld, and Raman, Appellants assert only the Examiner's additional citation to Raman "does not make up for the deficiencies of Elliott, Wable, or Groeneveld, and the Examiner does not assert otherwise." (Br. 13.) Similarly, with regard to dependent claim 12, which stands rejected over Elliott, Wable, Groeneveld, and Craswell, Appellants assert only "Craswell does not make up for the deficiencies of Elliott, Wable, or Groeneveld . ... " (Id.) Because, as stated above, we are not persuaded the combination of Elliott, Wable, and 12 Appeal2015-000095 Application 13/827,214 Groeneveld is deficient with regard to claim 1, we also sustain the Examiner's§ 103(a) rejections of dependent claims 6, 7, and 12. DECISION For the above reasons, the Examiner's 35 U.S.C. § 103(a) rejections of claims 1-22 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation