Ex Parte Goldband et alDownload PDFPatent Trial and Appeal BoardJul 15, 201613153376 (P.T.A.B. Jul. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/153,376 06/03/2011 Adam GOLDBAND 30554 7590 07119/2016 MAHAMEDI IP LAW LLP 1901 S. Bascom Ave. Suite 600 Campbell, CA 95008 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. CBSC.Pl35 8880 EXAMINER SWEARINGEN, JEFFREY R ART UNIT PAPER NUMBER 2445 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): uspto@m-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADAM GOLDBAND, ANDREW SHIREY, and ADAM HIATT Appeal2015-003770 Application 13/153,376 Technology Center 2400 Before JASON V. MORGAN, ERIC B. CHEN, and JON M. JURGOV AN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-003770 Application 13/153,376 This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1, 2, 4--8, 10-14, and 16-18. Claims 3, 9, and 15 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants' invention relates to receiving connections between assets from external sources and using such connections for connecting assets from external sources in an internal graph. (i-f 12.) Claims 1, 2, and 4 are exemplary, with disputed limitations in italics: 1. A system for organizing asset data, the system compnsmg: a database storing asset data items in an ontological index defining relationships between individual asset data items, wherein the relationships are defined based on metadata associated with each asset data item, and wherein each asset data item represents an item comprising a product, a service, an article, video content, a website, user generated content, or an advertisement; and one or more processors to: analyze one or more social media plaiforms to identify a user review corresponding to an individual item not represented by an asset data item in the ontological index; determine, based on the user review of the individual item, one or more correlative relationships between the individual item and the asset data items in the ontological index; and generate a new asset data item representing the individual item to be integrated into the ontological index, wherein generating the new asset data item includes incorporating metadata for the new asset item based on the determined correlative relationships. 2 Appeal2015-003770 Application 13/153,376 2. The system of claim 1, wherein the one or more processors further analyze the one or more social media platforms to determine a strength of the user review. 4. The system of claim 2, wherein the strength of the user review is determined by a number of positive indicators attributed to the user review. Claims 2, 4---6, 8, 10-12, 14, and 16-18 stand rejected under 35 U.S.C. § 112 first paragraph, as failing to comply with the enablement requirement. Claims 1, 7, and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wable (US 8,239,364 B2; Aug. 7, 2012) and Lakshmanan (US 2011/0087968 Al; Apr. 14, 2011). Claims 2, 4---6, 8, 10-12, 14, and 16-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wable, Lakshmanan, and Jones (US 2009/0125934 Al; May 14, 2009). ANALYSIS § 112, First Paragraph Rejection With respect to dependent claims 2, 4---6, 8, 10-12, 14, and 16-18, we are persuaded by Appellants' arguments (App. Br. 7-10; see also Reply Br. 3-11) that these claims are enabled by the Specification. The Examiner found that "[ o ]ne of ordinary skill does not know what determines a 'positive indicator' to indicate the strength of a user review based on the specification, or how to use 'positive indicators' to identify the strength of a review" and "[ o ]ne of ordinary skill in the art, based upon Applicant's specification, is faced with the burden of undue experimentation to decide what a 'strength' of the claimed reviews is, and how to generate 3 Appeal2015-003770 Application 13/153,376 metadata which illustrates the 'strength' of the review." (Final Act. 4.) Thus, the Examiner concluded that "[t]he claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention." (Id.; see also Ans. 3-6.) We do not agree. Other than a general statement that "[ o ]ne of ordinary skill in the art ... is faced with the burden of undue experimentation" (Final Act. 4), the Examiner has provided insufficient evidence to demonstrate an amount of experimentation that would be undue, pursuant to supporting the legal conclusion of an enablement rejection. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (listing factors to be considered to show undue experimentation and lack of enablement). Furthermore, Appellants' Specification discloses: For example, the connection between an editor and a product review may indicate that the editor wrote the product review, thus differentiating the connection between the editor and the product review from a connection between a user who read and "liked" the product review and the product review (i.e., the connection between a user who read the product review and used a tool through the F ACEBOOK™ platform to indicate their like of the review, thus creating a connection in the F ACEBOOK™ graph between the user and the product review). (Spec. i-f 19 (emphasis added).) The Specification further discloses that "inferences may [be] drawn based on whether the product received a positive review or a negative review and why" such that "the metadata associated with a connection between a reviewer and a product may include an opinion, a degree or strength of the opinion, and like information." (Id. i-f 20.) According to Appellants' Specification, the strength (or degree) of a 4 Appeal2015-003770 Application 13/153,376 review can be stored in metadata and such strength is determined using the positive review for a product and the reason for such positive review (i.e., positive indicators), as opposed to a user who merely "liked" a product. Thus, Appellants' Specification adequately describes "strength of the user review" and "positive indicators," as recited in the claims, to enable one of ordinary skill to make and use the invention. Accordingly, we are persuaded by Appellants' argument that "[t]he actual subject matter recited in Claims 2, 4---6, 8, 10-12, 14, and 16-18 is fully supported by Applicant's Specification such 'as to enable one skilled in the pertinent art to make and use the claimed invention' without 'undue experimentation."' (App. Br. 10.) Therefore, the Examiner has not met the initial burden of demonstrating that dependent claims 2, 4---6, 8, 10-12, 14, and 16-18 fail to satisfy the enablement requirement set forth under 35 U.S.C. § 112, first paragraph. § 103 Rejection-Wable and Lakshmanan We are also persuaded by Appellants' arguments (App. Br. 12; see also Reply Br. 12) that the combination of Wable and Lakshmanan would not have rendered obvious independent claim 1, which includes the limitation "analyze one or more social media platforms to identify a user review corresponding to an individual item not represented by an asset data item in the ontological index." The Examiner found that the graph of Lakshmanan, which is generated by the community manager for virtual world and social network user information after analysis of community information, corresponds to 5 Appeal2015-003770 Application 13/153,376 the limitation "analyze one or more social media platforms to identify a user review corresponding to an individual item not represented by an asset data item in the ontological index." (Final Act. 2-3; Ans. 6.) In particular, the Examiner found that because "Lakshmanan disclosed using a social graph ... which analyzes community information (social network information) to regularly update the graph (identify an object corresponding to an item not represented by a data item in the ontological index)" and "Lakshmanan ... shows the graph is 'generate[d] from the community information such as the virtual world user information and the social network user information for a given user,"' Lakshmanan "therefore teaches the ability to create and update information in an asset graph (ontological index) when new information is discovered in the social network." (Ans. 6.) We do not agree. Lakshmanan relates to virtual worlds and social collaboration platforms, in particular, "linking associations within the virtual worlds and social collaboration platforms and managing the connections." (i-f l .) Lakshmanan explains that "[ t ]he community manager 148 creates the community management graphs 148 either automatically at given intervals or in response to a user's request for the creation of a community management graph" and "[ w ]hen the community manager 140 determines that a community management graph 148 is to be generated, the manager 140 analyzes the community information 13 4." (i-f 41.) Lakshmanan further explains that "community manager 140 generates [graph 400 as illustrated in Figure 4] from the community information 134 such as the virtual world user information 13 6 and the social network user information 13 8 for a given user." (i-f 42.) 6 Appeal2015-003770 Application 13/153,376 Although the Examiner cited graph 400 of Lakshmanan, which is generated by community manager 140 from community information 134 for a user (e.g., virtual world user information 136 and social network user information 138), the Examiner has provided insufficient evidence to support a finding that "Lakshmanan ... teaches the ability to create and update information in an asset graph (ontological index) when new information is discovered in the social network" (Ans. 6), particularly when Lakshmanan is silent with respect to "updating" to either virtual world user information 136 and social network user information 138. Furthermore, the Examiner has not identified a feature in Lakshmanan that corresponds to the limitation "a user review corresponding to an individual item not represented by an asset data item in the ontological index." On this record, we do not agree with the Examiner that Lakshmanan teaches the limitation "analyze one or more social media platforms to identify a user review corresponding to an individual item not represented by an asset data item in the ontological index." Thus, we are persuaded by Appellants' arguments that "while Lakshmanan does disclose analyzing this 'social network information,' Lakshmanan does not disclose such 'social network information' including a user review of a specified item-much less a user review of a specified item not listed or described in an ontological index" (App. Br. 12 (emphases omitted)) and "[ n Jo attempt is made by the Examiner to identify any features in Lakshmanan which disclose 'a user review,' much less 'a user review corresponding to an individual item not represented by an asset data item in the ontological index"' (Reply Br. 12 (emphases omitted)). 7 Appeal2015-003770 Application 13/153,376 Accordingly, we do not sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a). Independent claims 7 and 13 recite limitations similar to those discussed with respect to independent claim 1. We do not sustain the rejection of claims 7 and 13 for the same reasons discussed with respect to claim 1. § 103 Rejection-Wable, Lakshmanan, and Jones Claims 2, 4--6, 8, 10-12, 14, and 16-18 depend from independent claims 1, 7, and 13. Jones was cited by the Examiner for teaching the additional features of claims 2, 4--6, 8, 10-12, 14, and 16-18. (Final Act. 6- 7.) However, the Examiner's application of Jones does not cure the above noted deficiencies of Lakshmanan. Accordingly, we do not sustain the rejection of dependent claims 2, 4-- 6, 8, 10-12, 14, and 16-18 under 35 U.S.C. § 103(a). DECISION The Examiner's decision rejecting claims 2, 4--6, 8, 10-12, 14, and 16-18 under 35 U.S.C. § 112 first paragraph is reversed. The Examiner's decision rejecting claims 1, 2, 4--8, 10-14, and 16-18 under 35 U.S.C. § 103(a) is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation