Ex Parte Campbell et al

Patent Trial and Appeal Board

Jul 15, 2016

13827214 (P.T.A.B. Jul. 15, 2016)

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.
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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.
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(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).
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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).)
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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,
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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
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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.
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(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).
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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").
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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
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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
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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
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