Ex Parte Goldband et al

Patent Trial and Appeal Board

Jul 15, 2016

13153376 (P.T.A.B. Jul. 15, 2016)

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.
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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
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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 ACEBOOKâ„¢ platform to indicate their like
of the review, thus creating a connection in the F ACEBOOKâ„¢
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
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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
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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.)
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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)).
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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
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