Ex Parte Carter et al

Patent Trial and Appeal Board

Nov 28, 2018

13739359 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/739,359 01/11/2013
75949 7590 11/30/2018
IBM CORPORATION
C/0: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Bernadette A. Carter
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.
RSW920120138US1 1030
EXAMINER
CADORNA, CHRISTOPHER PALACA
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNADETTE A. CARTER and ARTHUR R. FRANCIS
Appeal2018-004277
Application 13/739,359 1, 2
Technology Center 2400
Before JOHNNY A. KUMAR, JENNIFER L. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-10, 17-22, and 26-29. Appellants have canceled
claims 11-16 and 23-25. App. Br. 40, 43. We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b ). See Ex parte Lemoine, 46
USPQ2d 1420, 1423 (BPAI 1994) (precedential).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 3.
2 Appellants have identified the following co-pending application as being
related to the instant application: Application No. 14/074,391 (Appeal No.
2018-007756).
Appeal2018-004277
Application 13/739,359
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
personalizing a user's social networking profile page based on user
preferences and characteristics of the viewer viewing the profile page. Spec.
,r 2. The Specification describes a profile page may contain pieces of
personal data and a plurality of entries on the site-i.e., posts or "artifacts."
Spec. ,r 9. Rather than displaying all the artifacts in chronological order, in a
disclosed embodiment, certain artifacts may be emphasized or de-
emphasized (e.g., suppressed) in a presentation of the profile page, based on
user preference settings or based on the viewer. Spec. ,r,r 11-12.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A computer network comprising:
a number of user devices; and
a preferences control module;
in which the preferences control module:
receives user preferences from an owner of a social
network profile;
receives data describing a viewer of the owner's
social networking profile; and
distinguishes a number of artifacts on the owner's
social networking profile, via the emphasis and de-
emphasis thereof, from other artifacts on the profile based
on the user preferences and data describing a viewer of the
owner's social networking profile; and
provides a first of a number of versions of the
owner's social networking profile to the viewer of the
owner's social networking profile; the first version of the
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owner's profile comprising artifacts distinguished based
on the data describing the viewer;
wherein the first version comprises emphasized
artifacts based on the number of instances when the viewer
has viewed the owner's profile; and
wherein distinguishing a number of artifacts on the
owner's social networking profile from other artifacts on
the profile further comprises preventing a de-emphasis of
time-sensitive artifacts describing where the owner of the
social networking profile is located and when the owner
of the social networking profile will be available.
The Examiner's Rejections3
1. Claims 1-3, 5, 10, 17, and 19-22 stand provisionally rejected
under the doctrine of obviousness-type double patenting over the claims of
co-pending Application No. 14/074,391. Non-Final Act. 3.
2. Claims 1-10, 17-22, and 26-29 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. 4 Non-Final
Act. 3-6.
3 In various statements of rejection, we note the Examiner states the claims
are rejected pre-AIA 35 U.S.C. § 102(b) rather than pre-AIA 35 U.S.C.
§ 103(a). See, e.g., Non-Final Act. 14, 23, and 30. The Examiner corrects
the statements in the Answer. See Ans. 2--4. Appellants do not claim to
have been prejudiced by the typographical error. Thus, we treat the
Examiner's typographical error as harmless. For the statements of rejection,
we cite to the correct statute.
4 We note that in the statement of rejection, the Examiner identifies claims
1-10, 17-22, and 26-20, but that the body of the rejection addresses claims
1-10, 17-22, and 26-29. See Non-Final Act. 3---6. Appellants do not claim
to have been prejudiced by the typographical error and have presented
arguments directed to claims 1-10, 17-22, and 26-29. See App. Br. 29-35.
Thus, we treat the Examiner's typographical error as harmless.
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3. Claims 1-10 and 26-29 stand rejected under pre-AIA 35 U.S.C.
§ 112, second paragraph, as being indefinite. Non-Final Act. 6-9; 11-13.
4. Claims 1-6, 9, and 10 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Galbreath et al. (US 2005/0267766 Al;
Dec. 1, 2005) ("Galbreath"); Shuman et al. (US 2013/0185285 Al; July 18,
2013) ("Shuman"); and Malleshaiah (US 2013/0086078 Al; Apr. 4, 2013).
Non-Final Act. 14--20.
5. Claim 7 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Galbreath, Shuman, Malleshaiah, and Hyatt et al. (US
2012/0150888 Al; June 14, 2012) ("Hyatt"). Non-Final Act. 20-21.
6. Claim 8 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Galbreath, Shuman, Malleshaiah, and Brikman et al. (US
2014/0025596 Al; Jan. 23, 2014) ("Brikman"). Non-Final Act. 22-23.
7. Claims 17-20 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over Galbreath, Shuman, Malleshaiah, and Tseng (US
2012/0166433 Al; June 28, 2012). Non-Final Act. 23-30.
8. Claim 26 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Galbreath, Shuman, Malleshaiah, and Obasanjo et al. (US
2011/0225170 Al; Sept. 15, 2011) ("Obasanjo"). Non-Final Act. 30-32.
9. Claims 27 and 28 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Galbreath, Shuman, Malleshaiah, Obasanjo,
and Hyatt. Non-Final Act. 33-34.
10. Claims 21 and 22 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Galbreath, Shuman, Malleshaiah, Tseng, and
Kuehr-McLaren et al. (US 2009/0228486 Al; Sept. 10, 2009) ("Kuehr-
McLaren"). Non-Final Act. 35-37.
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11. Claim 29 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Galbreath, Shuman, Malleshaiah, Obasanjo, Hyatt, and
Morin et al. (US 2012/0124479 Al; May 17, 2012) ("Morin"). Non-Final
Act. 37-38.
ANALYSIS 5
Provisional Obviousness-type Double Patenting Rejection
Appellants do not respond to the Examiner's provisional rejection of
claims 1-3, 5, 10, 17, and 19-22 under the doctrine of obviousness-type
double patenting other than to request that the rejection "be held in
abeyance." App. Br. 14; Reply Br. 5.
Although the Examiner agreed to hold the rejection "in abeyance," the
Examiner notes that "[ a ]bsent the filing of a terminal disclaimer or
compelling argument to withdraw the rejection, the rejection is still
maintained." Ans. 4. Because the rejection is still maintained (i.e., the
Examiner has not withdrawn the rejection), it is still properly before the
Board.
To the extent Appellants have not advanced separate, substantive
arguments for particular claims or issues, such arguments are considered
waived. See 37 C.F.R. § 4I.37(c)(1)(iv)(2017); see also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
5 Throughout this Decision, we have considered the Appeal Brief, filed
September 21, 2017 ("App. Br."); the Reply Brief, filed March 14, 2018
("Reply Br."); the Examiner's Answer, mailed January 22, 2018 ("Ans.");
and the Non-Final Office Action, mailed June 26, 2017 ("Non-Final Act."),
from which this Appeal is taken.
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respect to that ground of rejection as waived."). Additionally, "[i]f a ground
of rejection stated by the examiner is not addressed in the appellant's brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner's answer." Manual of Patent Examining Procedure
("MPEP") § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018).
Accordingly, we summarily sustain the Examiner's provisional
rejection of claims 1-3, 5, 10, 17, and 19-22 under the doctrine of
obviousness-type double patenting.
Rejection under pre-AJA 35 US.C. § 112, second paragraph
In rejecting claims 1-10 and 26-29 under pre-AIA 35 U.S.C. § 112,
second paragraph, the Examiner sets forth two different bases for the
rejection. Non-Final Act. 6-9, 11-13. Regarding the first basis for the
rejection, the Examiner concludes that "preventing a de-emphasis" ( claim 1)
and "preventing the suppression" ( claim 26) are "unclear without further
information [ as to] what precise steps would be [necessary]" to prevent a de-
emphasis or prevent a suppression. Non-Final Act. 7-9. More specifically,
in distinguishing from the disclosure in the Specification regarding not de-
emphasizing information (see Spec. ,r 43), the Examiner explains that
"preventing something [ ( as recited in the claims)] is different than not doing
something, preventing is an action of keeping something from happening."
Ans. 5---6. The Examiner determines the Specification "does not recite that a
prevention of de-emphasis, but rather not performing a de-emphasis."
Ans. 6. However, the Examiner does not reject the claims for lack of written
description support under pre-AIA 35 U.S.C. § 112, first paragraph. Ans. 6.
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Instead, the Examiner because there may be different means of de-emphasis,
each may require different means to be prevented. Ans. 6. Thus, the
Examiner concludes "preventing a de-emphasis" is indefinite. Ans. 6.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Merely that a
claim is broad does not mean that it is indefinite. See In re Johnson, 558
F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA
1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970).
Here, the Examiner does not conclude that an ordinarily skilled artisan
would not understand what is claimed, but rather, that it is not "clear to one
of ordinary skill in the art how to prevent de-emphasis." See Ans. 6. Thus,
it appears that the Examiner concludes the claims are not enabled under pre-
AIA 35 U.S.C. § 112, first paragraph. See Genentech, Inc. v. Novo Nordisk,
AIS, 108 F.3d 1361, 1365 (Fed. Cir. 1997) ("[T]o be enabling, the
specification of a patent [application] must teach those skilled in the art how
to make and use the full scope of the claimed invention without undue
experimentation.") (internal quotations omitted). However, a rejection for
lack of enablement is not before us. Although the Board is authorized to
reject claims under 37 C.F.R. § 4I.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02 (9th ed. Rev. 08.2017, Jan. 2018).
For the reasons discussed supra, we do not sustain the first basis of
the Examiner's rejection of claims 1-10 and 26-29 under pre-AIA 35 U.S.C.
§ 112, second paragraph.
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The Examiner also sets forth a second basis for rejecting claims 1-10
and 26-29 under pre-AIA 35 U.S.C. § 112, second paragraph. See Non-
Final Act. 11-13. In particular, the Examiner concludes the claimed
"preference control module" invokes the provisions of pre-AIA 35 U.S.C.
§ 112, sixth paragraph, as a means-plus-function limitation. Non-Final
Act. 12-13. Additionally, the Examiner finds the Specification "fails to
clearly link or associate the disclosed structure, material, or acts to the
claimed function such that one of ordinary skill in the art would recognize
what structure, material, or acts perform the claimed function." Non-Final
Act. 12.
If the applicant fails to disclose adequate corresponding structure for a
mean-plus-function limitation, the applicant has failed to particularly point
out and distinctly claim the invention as required by pre-AIA 35 U.S.C.
§ 112, second paragraph. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1351-52 (Fed. Cir. 2015); see also Noah Sys. Inc. v. Intuit Inc., 675 F.3d
1302, 1311-12 (Fed. Cir. 2012); AllVoice Computing PLC v. Nuance
Commc'ns., Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007) ("[A] means-plus-
function clause is indefinite if a person of ordinary skill in the art would be
unable to recognize the structure in the specification and associate it with the
corresponding function in the claim.").
Appellants do not present arguments to rebut the Examiner's findings
and conclusion. See Appeal Br. passim. Thus, Appellants have waived any
arguments with respect to this basis of rejection. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Accordingly, we summarily sustain the Examiner's rejection under
pre-AIA 35 U.S.C. § 112, second paragraph, of claims 1-10 and 26-29.
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Rejection under 35 USC§ 101
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter. App. Br. 29--35; Reply
Br. 22-26. In particular, Appellants argue the claims recite patent-eligible
subject matter because they are "directed to an improvement to the computer
functionality rather than being directed to an abstract idea."6 App. Br. 29,
32; Reply Br. 22. Appellants allege determining which artifacts in a social
networking profile are to be de-emphasized based on the viewer of the
profile, as well as preventing certain other artifacts from being de-
emphasized "improves the capabilities of the computer network, ... [ and
also] improves the capabilities of a physical device operating on the network
generally." App. Br. 32; Reply Br. 24--25. Appellants assert the
improvement to the computer's functionality results from "providing a social
networking site that allows an owner of a social network profile to
specifically control what viewers do and do not see with regards to posts
from or to the owner." App. Br. 33 (emphasis omitted). Additionally,
Appellants assert the Examiner did not support the conclusion that the
claims are directed to an abstract idea. App. Br. 30-31. Moreover,
6 Appellants note that in an earlier Office Action (mailed November 2,
2016), the Examiner agreed with Appellants' argument that the claims were
directed to an improvement to computer functionality. App. Br. 29. At that
time, the Examiner withdrew the rejection under 35 U.S.C. § 101. See Final
Office Action 4. However, in the currently pending Office Action, the
Examiner newly rejected the claims under 35 U.S.C. § 101. Non-Final
Act. 3---6. It is this rejection that is before the Board. Accordingly, we
confine our analysis to the Examiner's findings and conclusions as set forth
in the Office Action mailed on June 26, 2017.
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Appellants contend the claims recite significantly more than the alleged
abstract idea. App. Br. 33-34.
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Banklnt'l,
134 S. Ct. 2347, 2355 (2014). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 134 S. Ct. at 2355. If so, the
second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Non-Final Act. 3-
4. In particular, the Examiner concludes the claims are directed to the
abstract ideas of "collecting information, analyzing the information, and
displaying certain results of the analysis," similar to the claims at issue in
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). Non-Final Act. 3--4; Ans. 7-8. Further, the Examiner concludes the
claims do not recite significantly more to transform the abstract idea into a
patent eligible application. Non-Final Act. 4---6. Instead, the claims recite
generic computer functions/elements performing generic computer functions
that are well-understood, routine, and conventional. Non-Final Act. 5.
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
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or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Our reviewing court has concluded that abstract ideas include the
concepts such as the collection and analysis of information. Elec. Power,
830 F.3d at 1353; see also Elec. Power, 830 F.3d at 1354 ("analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category"). Additionally, the collecting of data, recognizing
certain data within the collected data set, and storing the data in memory are
also abstract ideas. Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see
also SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018)
("merely presenting the results of abstract processes of collecting and
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analyzing information ... is abstract as an ancillary part of such collection
and analysis") ( quotations omitted). Further, in Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) the court
concluded customizing information and presenting it to users based on
particular characteristics is an abstract idea.
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co. Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016) ( determining the pending claims were directed to a combination
of abstract ideas).
Here, Appellants' claims are generally directed to personalizing a
social networking profile page based on various pieces of information. The
information used to personalize a profile page includes user preferences
settings and data about the viewer of the social networking profile page.
Spec. ,r 2. Based on the user preferences and visitor-related data, content
(i.e., artifacts) of a user's social networking profile page may be emphasized
or de-emphasized to create different versions of the profile page. Spec.
,r,r 31-33.
The receiving of user preferences and visitor data is similar to the
abstract idea of collecting and gathering information to be analyzed. See
Elec. Power, 830 F.3d at 1354; Content Extraction, 776 F.3d at 1347.
Further, the emphasis/de-emphasis of certain content (i.e., artifacts) based on
the analysis of the received data is similar to the abstract idea of customizing
information and presenting it to users based on particular characteristics.
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Capital One Bank, 792 F.3d at 1370. The additional limitations recited in
the independent claims (e.g., preventing a de-emphasis of time-sensitive
artifacts) or in the dependent claims (which refine how the artifacts are
emphasized/ de-emphasized, how the data is characterized or partitioned
within the system, or how the data is received) do not alter the character of
the claims, which is directed to an abstract idea, discussed supra.
Additionally, the Examiner determines the current claims are not
directed to a specific improvement in the way computers operate, but instead
describe a desired outcome from computer operation. Ans. 8. Contrary to
Appellants' arguments (see, e.g., App. Br. 31-33), the claims are
distinguishable from the self-referential table claimed in Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Ans. 9-11. As opposed to
the specific technological improvement claimed in Enfzsh (i.e., a self-
referential table over a traditional database), Appellants do not provide
persuasive arguments that de-emphasizing certain artifacts of a social
network profile are an improvement to computer technology. See Ans. 10-
11. We agree with the Examiner that Appellants' claims are not directed to
an improvement in the ways computers operate or the capabilities of a
physical device operating on a network.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to "significantly more" than
the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73, 77-79 (2012)). The
implementation of the abstract idea involved must be "more than [the]
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performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original).
Here, we agree with the Examiner that the claims do not require any
nonconventional computer, network, or display or a non-conventional and
non-generic arrangement of known conventional pieces. Non-Final Act. 4--
6. See also Elec. Power, 830 F.3d at 1355; Bascom Global Internet Servs. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); cf Spec.
,r 52 ( describing that the claimed invention may be embodied in a computer
program product); see also Mortgage Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (finding generic
computer components such as an "interface," "network," and "database,"
fail to satisfy the inventive concept requirement); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and
sends the information over a network-with no further specification-is not
even arguably inventive.").
For the reasons discussed supra, we are unpersuaded that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Accordingly, we sustain the Examiner's
rejection of claim 1. Additionally, we sustain the Examiner's rejection of
independent claims 17 and 26, which recite similar limitations and were not
argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv). Further, we sustain the
Examiner's rejection of claims 2-10, 18-22, and 27-29, which depend
directly or indirectly therefrom and were not argued separately. See
37 C.F.R. § 4I.37(c)(l)(iv).
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Rejections under 35 US.C. § 103
In rejecting independent claim 1, inter alia, the Examiner relies on
Malleshaiah to teach generating a version of a social networking profile page
that emphasizes certain artifacts "based on the number of instances when the
viewer has viewed the owner's profile." See Non-Final Act. 15-16 (citing
Malleshaiah ,r,r 5, 68). Independent claims 17 and 26 recite commensurate
limitations and the Examiner relies on the same teachings of Malleshaiah in
rejecting these claims. See Non-Final Act. 26, 31.
Appellants argue that Malleshaiah fails to teach using the number of
instances (i.e., a tally) when a viewer has viewed the owner's profile to
emphasize artifacts on a version of the owner's social networking profile
page. App. Br. 18-19; Reply Br. 10. Instead, Appellants assert Malleshaiah
describes maintaining and updating a user interest profile according to
information most recently or frequently requested and accessed by the user.
App. Br. 19 ( citing Malleshaiah ,r 68).
In response, the Examiner disagrees with Appellants that the claimed
number of views should be interpreted as a "tally." Ans. 15. Instead, the
Examiner explains the claims merely require emphasizing an artifact based
on a number of views, which may include a frequency of views (but not
necessarily an absolute number, or tally). Ans. 15. Further, the Examiner
finds that Malleshaiah is not limited only to viewing certain profiles (e.g., a
preferred artist), but that "it is commonly known for profiles to contain
interest information in the form of personal data indicating a user interest."
Ans. 16. Additionally, the Examiner finds Malleshaiah describes a user may
become a visitor when he/she visits the social page of another user in the
social network. Ans. 16 (citing Malleshaiah ,r 64). Thus, the Examiner
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finds Malleshaiah "teaches that the interest score would be calculated based
on the viewer visiting the social page of another user." Ans. 17.
Malleshaiah is generally directed to dynamically generating a social
page of a user based on the visiting user's interests. Malleshaiah, Abstract.
In the disclosed system, a customized version of a user's social networking
profile is generated based on the visiting user's interests. Malleshaiah ,r 7.
In other words, certain information (i.e., artifacts) of a user's social
networking profile that correspond to a visiting user's interests will be
presented (i.e., emphasized) to the visiting user. Malleshaiah ,r,r 7-9. In a
disclosed example, Malleshaiah describes a visitor having a preference for
the paintings of Michelangelo as opposed to Di Vinci. Malleshaiah ,r 68.
Thus, based on the social networking pages or blogs viewed, an interest
profile for that visitor/user would reflect a greater interest in Michelangelo
over Di Vinci and, accordingly, when visiting a social networking profile of
another user, information related to Michelangelo would be presented (i.e.,
emphasized) over that of Di Vinci, to the extent such information is
available on the visited user's profile. Malleshaiah ,r,r 64, 67-68.
However, the Examiner has not provided sufficient persuasive
evidence or reasoning that Malleshaiah teaches the social networking profile
of a user is updated for a visitor based on the number of times that visitor
has viewed the user's profile. As the Examiner explains, Malleshaiah
teaches the interest score of a user is calculated based on the viewer visiting
the social page of another user. Ans. 17.
For the reasons discussed supra, we do not sustain the Examiner's
rejection of independent claim 1 under pre-AIA 35 U.S.C. § 103(a). For
similar reasons, we do not sustain the Examiner's rejections of independent
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Appeal2018-004277
Application 13/739,359
claims 17 and 26, which recite similar limitations. Additionally, we do not
sustain the Examiner's rejections under pre-AIA 35 U.S.C. § 103(a) of
claims 2-10, 18-22, and 27-29, which depend directly or indirectly
therefrom. Because we do not sustain the Examiner's rejection under pre-
AIA 35 U.S.C. § 103(a) for the reasons discussed herein, we need not
address Appellants' further arguments. See Beloit Corp. v. Valmet Oy, 742
F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at
liberty to reach a decision based on "a single dispositive issue").
DECISION
We summarily affirm the Examiner's decision provisionally rejecting
claims 1-3, 5, 10, 17, and 19-22 under the doctrine of obviousness-type
double patenting.
We summarily affirm the Examiner's decision rejecting claims 1-10
and 26-29 under pre-AIA 35 U.S.C. § 112, second paragraph.
We affirm the Examiner's decision rejecting claims 1-10, 17-22, and
26-29 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-10, 17-22, and
26-29 under pre-AIA 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1-10, 17-22,
and 26-29 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
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Appeal2018-004277
Application 13/739,359
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.
§ 41.50(±).
AFFIRMED
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