Ex Parte Gang

Patent Trial and Appeal Board

Aug 19, 2015

10703662 (P.T.A.B. Aug. 19, 2015)

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.
10/703,662 11/10/2003 David Gang 10587.0350-01000 4037
100692 7590 08/19/2015
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
MACILWINEN, JOHN MOORE JAIN
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
08/19/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID GANG
____________

Appeal 2013-006658
Application 10/703,662
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–14, 30–43, 69, 70, 75 and 77. Claims 15–29, 44–68,
71–74, and 76 were canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
The invention on appeal relates to matching online members with
shared interests (Spec. 1, Title, Technical Field).

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Representative Claim
Claim 1, reproduced below, is representative of the claimed subject matter:

1. A method of identifying one or more matching members for
a match recipient, the method comprising:
[a] maintaining a member profile for the match recipient, the
member profile including at least one personal attribute
corresponding to a hobby, gender, marital status, occupation, or
location;
[b] accessing a contacts list maintained for the match recipient,
the contacts list maintained for the match recipient including
contact information;
[c] analyzing the accessed contacts list to identify one or more
entities whose contact information is included in the match
recipient's contacts list;
[d] forming a group that is limited to the one or more entities
identified from the match recipient's contacts list who are
currently online;
[e] comparing the at least one personal attribute of the match
recipient's member profile to member profiles of entities in the
limited group to identify at least one matching member from
among the entities in the limited group, wherein the matching
member is an entity whose member profile has a personal
attribute matching a personal attribute of the match recipient's
member profile;
[f] causing an identifier for the matching member to be
displayed to the match recipient in a user interface for an online
communication service; and
[g] causing an icon to be displayed adjacent to the identifier of
the matching member to the match recipient, the icon indicating
a matching personal attribute shared by the matching member
and the match recipient.
App. Br. 16–17 (Steps lettered and contested limitations emphasized).

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Rejections
R1. Claims 1–7, 10–14, 30–36, 39–43, 69, 70, 75, and 77 are rejected
under 35 U.S.C. §103(a) as being obvious over the combination of Weiner
(US Patent Application Publication No. 2003/0084103 A1; published May
1, 2003), Work (US Patent Application Publication No. 2002/0059201 A1;
published May 16, 2002), Werndorfer (US Patent Application Publication
No. 2004/0017396 A1; published Jan. 29, 2004), and Oliver (US Patent No.
6,480,885 B1; published Nov. 12, 2002).
R2. Claims 8, 9, 37 and 38 are rejected under 35 U.S.C. §103(a) as
being obvious over the combination of Weiner, Work, Werndorfer, Oliver,
and Rouse (US Patent Application Publication No. 2002/0087620 A1;
published Jul. 4, 2002).

Grouping of Claims
Based on Appellant’s arguments (App. Br. 8–12, Reply Br. 2–9), we
decide the appeal of claims 1–7, 10–13, 30–36, 39–42, 69, 70, 75, and 77,
which are rejected under rejection R1, on the basis of representative
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
We address Rejection R1 of dependent claims 14 and 43, argued
separately (App. Br. 12–13), infra.
We address Rejection R2 of dependent claims 8, 9, 37, and 38, not
argued separately (App. Br. 14), infra.

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ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We disagree with Appellant’s arguments, 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, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant’s arguments. (Ans. 2–7). However,
we highlight and address specific findings and arguments for emphasis in
our analysis below.
Rejection R1 of representative Claim 1 1
Issue: Under 103, did the Examiner err by finding the cited
references would have taught or suggested contested limitations [d], [e], and
[g], within the meaning of claim 1?
Limitation [d]
Appellant contends Werndorfer’s “Meta Contact”, as depicted in
Figures 6 and 7, does not teach or suggest limitation [d]: “forming a group
that is limited to the one or more entities identified from the match

1 In the event of further prosecution, we leave it to the Examiner to consider
whether at least claim 1, and associated dependent claims, should be rejected
under 35 U.S.C. § 101. To the extent claim 1 may require some unspecified
conventional computer hardware to implement the method (i.e., reciting an
“online communication service”), the Supreme Court guides: “if a patent’s
recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an
abstract idea ‘on . . . a computer,’ . . . that addition cannot impart patent
eligibility.” Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2358,
(2014), (quoting Mayo, 132 S. Ct. at 1301). Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) §1213.02.
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recipient's contacts list who are currently online.” (App. Br. 9–10; Reply
Br. 2–3; claim 1).
The Examiner further explains the basis for the rejection in the
“Response to Argument:”
Figs. 6 and 7 of Werndorfer happen to show "meta contacts",
but the relied upon elements of Figs. 6 and 7 are the groups
"Online Contacts" and "Offline Contacts" shown in bolded text
in each of Figs. 6 and 7. The "Online Contacts" and "Offline
Contacts" of Figs. 6 and 7 correspond to the claimed "limited
groups".
(Ans. 2; claim 1, emphasis added).
In the Reply Brief (3–4), Appellant responds:
The mere display of the Online Contacts, for the purpose of
showing how to form a Meta Contact, cannot be reasonably
construed to teach "forming a group that is limited to the one or
more entities identified from the match recipient's contacts list
who are currently online," for the purpose of "comparing the
at least one personal attribute of the match recipient's member
profile to member profiles of entities in the limited group to
identify at least one matching member from among the entities
in the limited group," as recited in independent claim 1
(emphases added), and similarly recited in independent claims
30 and 77. Therefore, the assertion that Werndorfer's disclosure
of displaying the Online Contacts for the purpose of showing
how to form a Meta Contact, provides a teaching of the claimed
"forming" for the purpose of the claimed "comparing," is
incorrect and untenable.

However, the Supreme Court guides: “In determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419
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(2007). Our reviewing court further guides it is irrelevant that the prior art
and the present invention may have different purposes. See Nat'l Steel Car,
Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) (“A
finding that two inventions were designed to resolve different problems . . .
is insufficient to demonstrate that one invention teaches away from
another.”). It is sufficient that references suggest doing what an appellant
did, although the appellant's particular purpose was different from that of the
references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re
Gershon, 372 F.2d 535, 539 (CCPA 1967)). “Obviousness is not to be
determined on the basis of purpose alone.” In re Graf, 343 F.2d 774 (CCPA
1965).
This reasoning is applicable here. Because Appellant’s supporting
argument (Reply Br. 3–4) is grounded on the erroneous premise that the
purpose of the claimed invention and the prior art must be the same, on this
record, we are not persuaded the Examiner erred. Regarding Appellant’s
additional assertion the Examiner has relied on impermissible hindsight
reconstruction (Reply Br. 4), see our further discussion, infra.

Limitation [e] – Combinability of the cited References
Referring to limitation [e], Appellant contends: “the Examiner has
relied on impermissible hindsight to construct the asserted combination of
Werndorfer’s teaching of Meta Contacts for simplified account management
with Work’s teaching of ‘search[ing]. . . to look for matches. . .” (App.
Br. 10; See also, Reply Br. 3–4).
As cited by the Examiner (Final Act. 4–5), we observe Work
describes a “Contacts/ContactProfiles” database that “stores profiles of the
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user’s contacts” (¶72), and a “Searches” database for storing “prior search
parameters, results, and user responses to results so that searches may be
reused, modified, and improved” (¶72). Work additionally discloses that
users are able to “[c]onnect with more of the right people to foster new
relationships.” (¶50). Work further describes: “The profile builder may also
permit users to generally describe their ‘relationship networks’ in addition to
adding specific contacts who are members of their relationship networks.”
(¶80). Paragraph 81 of Work particularly describes:
As part of a relationship management section, users may
undertake activities to manage this section, including importing
or manually entering contact records, adding hyperlinks to
connect to, import from and browse accessible parts of profiles
created by their contacts, describing relationships to their
contacts, viewing graphical displays of information concerning
their contacts (including, perhaps, the relationships of contacts
to one another), keeping notes on interactions with said
contacts, and other relationship management activities.

(See Final Act. 4–5, i.e., the paragraphs of Work cited by the Examiner).

The Examiner proffers a rationale to combine the cited references:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify [the] profile comparison and
matching disclosure of Weiner in view of Work with the
subgrouping teachings of Werndorfer in order to provide
additional information to users regarding their matches and
contacts and to better inform users [of] the status of their
matches and contacts.
(Final Act. 5; see also Final Act. 6).
We are cognizant our reviewing courts have not established a bright
line test for hindsight. However, the U.S. Supreme Court guides: “[a]
factfinder should be aware, of course, of the distortion caused by hindsight
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bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421 (2007) (citing Graham v. John Deere Co., 383 U.S. 1,
36 (1966)). The Supreme Court also qualified the issue of hindsight by
stating: “[r]igid preventative rules that deny factfinders recourse to common
sense, however, are neither necessary under our case law nor consistent with
it.” (Id.)
Hindsight Balancing Test
We see the hindsight question before us essentially as a balancing test.
We consider whether the Examiner's proffered combination of references is
merely: (1) “the predictable use of prior art elements according to their
established functions,” (KSR, 550 U.S. at 417), consistent with common
sense; or, (2) would an artisan reasonably have combined the cited
references in the manner proffered by the Examiner, but for having the
benefit of Appellant’s claims and/or Specification to use as a guide?
After reviewing the respective teachings and suggestions of the cited
references, we find the preponderance of evidence supports the first prong of
the balancing test, because we find the Examiner’s proffered modification of
Weiner (¶¶ 47–48, 61, 83, 85), with the teachings of Work (¶¶48, 50, 72,
80–81, 157, 159, 160, 168–170), and Werndorfer (Figs 6–7), and further
with the teachings of Oliver (Col. 23, ll. 35-52; Col 5, ll. 45–67), would have
merely produced a predictable, expected result. 2

2 “If the patentee wanted to deviate from the standard practice … some
teaching of how to depart from the common practice would not only be
expected, but is required.” Edios Display, LLC v. AU Optronics Corp., ---
F.3d ----, 2015 WL 1035284 (Fed. Cir. 2015).
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The Supreme Court guides: “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416. “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
This reasoning is applicable here. Moreover, Appellant has not
provided objective evidence of secondary considerations which “operates as
a beneficial check on hindsight” to support his contentions. Cheese Sys.,
Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Therefore, contrary to Appellant’s contentions (App. Br. 10, Reply
Br. 3–4), we find the Examiner provided sufficient articulated reasoning
with some rational underpinning to support the proffered combination of
references, and the ultimate legal conclusion of obviousness. See Final Act.
6. For at least these reasons, we are not persuaded the Examiner erred in
combining the Weiner, Work, Werndorfer and Oliver references under
§ 103.
Limitation [g]
Claim 1 recites, in pertinent part, limitation [g], which Appellant
contends is not taught or suggested by the Examiner’s proffered reference to
Oliver (App. Br. 10–11, Reply Br. 4–6):
[g] causing an icon to be displayed adjacent to the identifier of
the matching member to the match recipient, the icon indicating
a matching personal attribute shared by the matching member
and the match recipient.

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As an initial matter of claim construction, we conclude the recited
“icon to be displayed” is directed to non-functional descriptive material
(NFDM), i.e., informational content intended for human perception. 3
(Claim 1, emphasis added). Moreover, we conclude the claim as a whole is
directed to analyzing and performing various data operations which lead to
the last recited step [g]: “causing an icon to be displayed . . . the icon
indicating a matching personal attribute shared by the matching member
and the match recipient.” (Claim 1; limitation [g], emphasis added).
The PTAB has provided guidance in decisions regarding claims that
differ from the prior art based only on NFDM. See Ex parte Nehls, 88
USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the
information being manipulated does not lend patentability to an otherwise
unpatentable computer-implemented product or process.”); Ex parte
Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
(“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) (“Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious.”), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36).
Our concerns regarding NFDM are focused principally on the claims
on appeal in which the arguments presented urging patentability merely

3 See MPEP 2111.05, 9th ed., Mar. 2014 (“[W]here the claim as a whole is
directed conveying a message or meaning to a human reader independent of
the intended computer system, and/or the computer-readable medium merely
serves as a support for information or data, no functional relationship
exists.”).
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contest purported differences between the type or informational content of
the claimed data, and do not substantively contest: (1) purported differences
between the claimed structure(s) and the prior art structure(s), for apparatus
claims, and/or (2) purported differences between the acts or steps of the
claimed method, and the corresponding acts or steps found by the Examiner
in the prior art.
If the claimed contested data elements are positively recited: (1) as
actually being used to change or affect a machine function (for apparatus
claims), or (2) as actually being used to change or affect the manner in
which a step or act is performed (for method or process claims), then such
data elements are generally considered by the USPTO and PTAB to be
functional descriptive material and are given full patentable weight. 4
Assuming arguendo that our reviewing court may give full
patentable weight to the (NFDM) informational content of the contested
displayed icon (limitation [g]), we find the preponderance of evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness. In particular, we find denoting matching users
using a displayed icon (as taught by Oliver, col 23, ll. 51–52), would have
taught or suggested: “an icon to be displayed adjacent to the identifier of the
matching member to the match recipient . . . ,” as recited in claim 1. (See
Final Act. 6, Ans. 4).

4 See MPEP § 2111.05 (9th Ed., Mar. 2014). In our analysis herein, we
consider the extrinsic MPEP descriptions regarding NFDM as underlying
subsidiary facts which inform our claim construction for all claims before us
on appeal.
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For the aforementioned reasons, on this record, we are not persuaded
the Examiner erred regarding any of the contested limitations. Nor are we
persuaded the Examiner erred by improperly combining the cited references.
Accordingly, we sustain the Examiner’s rejection R1 of representative claim
1, and rejection R1 of the associated grouped claims, which fall with claim
1. (See Grouping of Claims, supra).

Rejection R1 of Dependent Claims 14 and 43
Claim 14 recites: 5
14. The method of claim 13 wherein identifying an
intermediary member comprises:
[a] identifying an entity whose contact information is in the
contacts list of the match recipient;
[b] determining whether contact information of the matching
member is in a contacts list of the entity; and
[c] designating the entity as the intermediary member when the
matching member's contact information is in the contacts list of
the entity.
(Steps lettered and contested limitation [c] emphasized).

Appellant does not advance substantive arguments traversing the
Examiner’s specific findings regarding the combination of Work and
Werndorfer, as relied upon for teaching or suggesting designating the entity
as the intermediary member, as claimed. (See claims 14 and 43; see also
App. Br. 12–13). Instead, Appellant points to descriptions in Work (¶26)
and Werndorfer (¶¶43–44), and merely asserts the recited contested claim

5 Claim 43 recites commensurate limitations.
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limitations are not taught by the cited references. (Id.). However, “[a]
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” See 37
C.F.R. § 41.37(c)(1)(iv)(2012). Therefore, on this record, we are not
persuaded the Examiner erred. (See Final Act. 9, 16). Accordingly, we
sustain rejection R1 of dependent claims 14 and 43.

Rejection R2 of Claims 8, 9, 37, and 38
Appellant advances no substantive arguments regarding dependent
claims 8, 9, 37, and 38. Instead, Appellant merely contends: “Rouse does
not cure the deficiencies of Weiner, Work, Werndorfer, and Olivier.” (App.
Br. 14). However, we find no deficiencies regarding the base combination
of Weiner, Work, Werndorfer, and Olivier, for the same reasons discussed
above regarding claim 1.
Therefore, on this record, we are not persuaded the Examiner erred.
Accordingly, we sustain rejection R2 of claims 8, 9, 37 and 38.

DECISION
We affirm the Examiner’s decision rejecting claims 1–14, 30–43, 69,
70, 75 and 77 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f).

AFFIRMED
lv