Ex Parte O et al

Patent Trial and Appeal Board

Sep 27, 2018

12916144 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/916,144 10/29/2010
138886 7590 10/01/2018
Patterson + Sheridan, LLP - Intuit Inc.
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Joseph J. O'Sullivan
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.
INTU-105292 9029
EXAMINER
GOORAY,MARKA
ART UNIT PAPER NUMBER
2199
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
Pair_Eofficeaction@pattersonsheridan.com
psdocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH J. O'SULLIVAN, RICARDO MARQUEZ, and
MICHAEL J. GRAVES
Appeal2018-001684
Application 12/916, 144
Technology Center 2100
Before JOHN A. JEFFERY, JUSTIN BUSCH, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6, 9--14, 17-23, 25, 26, and 28-33. App. Br. 1.2
Claims 7, 8, 15, 16, 24, and 27 are canceled. We have jurisdiction under 35
U.S.C. § 6(b ). We affirm.
1 Appellants identify the real party in interest as Intuit, Inc. App. Br. 3.
2 Throughout this opinion, we refer to the Final Rejection ("Final Act.")
mailed May 19, 2016; the Appeal Brief ("App. Br.") filed November 21,
2016; the Examiner's Answer ("Ans.") mailed October 5, 2017; and the
Reply Brief ("Reply Br.") filed December 4, 2017.
Appeal2018-001684
Application 12/916, 144
THE INVENTION
Appellants' invention facilitates application use and data
exchange among applications. Spec. ,r 5. One embodiment identifies
data types associated with an application installed on a user's device
and finds new applications from a repository that can process those
data types. Id. The method may obtain a "user context" for a user
and match the context with a set of applications. Id. ,r 24. The user
context may include a user's location, a user's profile data, device
data, or data types used by installed applications. Id.
For example, Appellants' method updates a user context after
the user installs and runs a new application that generates music-
preference data. Id. ,r 25. The method then provides another new
music-recommendation application that matches the updated user
context. Id. By providing the second new application, the method
purportedly increases the value of both applications to the user. Id.
Claim 1 is reproduced below:
1. A computer-implemented method for facilitating application
usage on a computing device of a first user, comprising:
obtaining a user context associated with the first
user, wherein the user context includes data types
associated with existing applications on the computing
device of the first user;
obtaining a first set of new applications to be
installed at the computing device of the first user from an
application repository, wherein the obtaining involves:
comparing the data types associated with the
existing applications on the computing device to data
types associated with new applications in an application
repository; and
identifying, based on the comparison, the first set of
new applications in the application repository that can
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Application 12/916, 144
process one or more of the data types associated with the
existing applications on the computing device of the first
user; and
providing the first set of new applications to the first
user for installation and use by the first user on the
computing device of the first user.
THE EVIDENCE
The Examiner relies on the following as evidence:
Maciocci et al.
("the '451 provisional")
Lindberg et al.
Erman et al.
Maciocci et al.
us 61/387,451
US 2010/0306762 Al
US 2011/0307354 Al
US 8,615,772 B2
THE REJECTIONS
Sept. 28, 2010
Dec. 2, 2010
Dec. 15, 2011
Dec. 24, 2013
Claims 31-33 stand rejected under pre-AIA3 35 U.S.C. § 112, first
paragraph, as failing to comply with the written-description requirement.
Final Act. 2-3.
Claims 1---6, 9-14, 17-23, 25, 26, 28, and 30-33 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Erman and Maciocci. Final Act. 4--
12.
Claim 29 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Erman, Maciocci, and Lindberg. Final Act. 12-13.
THE WRITTEN-DESCRIPTION REJECTION
Appellants appeal "the last decision of the examiner." Notice of
Appeal, filed Sept. 19, 2016. That decision includes the rejection of claims
3 This application is being examined under the version of 35 U.S.C. § 112
before the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29,
§ 3, 125 Stat. 284, 285-93 (2011) went into effect. Final Act. 2.
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Application 12/916, 144
31-33 under 35 U.S.C. § 112, first paragraph. Final Act. 2-3. Appellants
proposed an amendment after the Final Rejection, but the Examiner did not
enter it. See Response after Final Action, filed July 19, 2016; Advisory
Action ("Adv. Act."), mailed Aug. 24, 2016. Appellants' briefs do not
contain arguments addressing the written-description rejection. See
App. Br. 13 (concluding that "[t]he Examiner errs in finding that claims 1-6,
9-14, 17-23, 25-26, 28, and 30-33 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Erman in view of Maciocci."); see also Reply Br. 7
( containing a similar statement). The Examiner states that every ground of
rejection in the May 19, 2016--the decision from which this appeal is
taken-is maintained. Ans. 2.
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the produced arguments and
evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Because Appellants do not provide a substantive argument
against the rejection under 35 U.S.C. § 112, first paragraph, we sustain the
Examiner's rejection of claim 31-33. See Frye, 94 USPQ2d at 1075-76
( explaining that if Appellants fail "to present arguments on a particular
issue----or, more broadly, on a particular rejection-the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection."); see also MPEP § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018) ("If
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.").
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Application 12/916, 144
THE OBVIOUSNESS REJECTION OVER ERMAN AND MACIOCCI
The Contentions
The Examiner finds that Erman teaches every limitation recited in
claim 1 except for the user context. Final Act. 4. In concluding that claim 1
would have been obvious, the Examiner finds that Maciocci teaches this
feature. Id. at 4---6. The Examiner relies on the filing date of Maciocci's
provisional application and finds that the provisional application provides
support for at least claim 1. Adv. Act. (citing '451 provisional ,r,r 31, 33-34,
40-42, Figs. 3, 4).
Appellants argue that Maciocci is not entitled to the filing date of its
provisional because the provisional does not sufficiently support Maciocci' s
claims. App. Br. 8; Reply Br. 2-6. Appellants argue that Maciocci is not
prior art because it was filed on August 23, 2011, and Appellants'
application was filed on October 29, 2010. App. Br. 8.
In particular, Appellants contend that Maciocci's claim 1 recites
"match," "compatibility," and "data type," which are terms that do not
appear in the provisional. Id. at 10 (citing '451 provisional ,r,r 8-12, 31, 37,
Fig. 2, 204). According to Appellants, Maciocci's claim 1 recites "matching
a compatibility of a selected one of the first service or the first data type,"
but the '451 provisional' s discussion of contextual similarity is insufficient
support. Id. (citing '451 provisional ,r 35); see also Reply Br. 3-5. In
Appellants' view, Maciocci's claim 1 contains narrower terms than those
found in the provisional. Reply Br. 5.
Issue
Has the Examiner shown that the Maciocci patent is entitled to claim
the benefit of the filing date of the '451 provisional application?
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Application 12/916, 144
Analysis
"A reference patent is only entitled to claim the benefit of the filing
date of its provisional application if the disclosure of the provisional
application provides support for the claims in the reference patent in
compliance with§ 112, ,r 1." Dynamic Drinkware, LLC v. Nat'! Graphics,
Inc., 800 F.3d 1375, 1382 (Fed. Cir. 2015). The Examiner need only
determine whether at least one of the claims of the '772 patent is supported.
AccordMPEP § 2136.03 III (9th ed., Rev. 08.2017, Jan. 2018) ("[T]he
reference date under pre-AIA 35 U.S.C. 102(e) of a U.S. patent may be the
filing date of a relied upon provisional application only if at least one of the
claims in the patent is supported .... ") (emphasis added) (citing Dynamic
Drinkware, 800 F.3d at 1375).
Regarding that disclosure, "the specification of the provisional must
'contain a written description of the invention and the manner and process of
making and using it, in such full, clear, concise, and exact terms,' 35 U.S.C.
§ 112 ,r 1, to enable an ordinarily skilled artisan to practice the invention
claimed in the non-provisional application." New Railhead Mfg., L.L.C. v.
Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002), quoted in Dynamic
Drinkware, 800 F.3d at 1378.
Appellants argue that the '451 provisional does not provide the
required support for the limitations of Maciocci's claim 1 that are
italicized below. See App. Br. 10 ( emphasizing the limitations in
bold).
1. A method for extending services of a user device, comprising:
identifying a first application resident on the user device
having a first service that utilizes a first data type;
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Application 12/916, 144
identifying a second application of a plurality of
applications having a second service that utilizes a second data
type;
matching a compatibility of a selected one of the first
service or the first data type of the first application with a
respective one of the second service or the second data type of
the second application; and
presenting, on a user interface, the first application with a
representation of a discovery agent for activating the identifying
of the second application.
For the reasons discussed below, we disagree that Maciocci's claim 1 lacks
the required support.
Generally, Maciocci relates to a method of distributing integrated
mobile applications to user devices. Maciocci 1: 15-18. One embodiment
identifies a first application on a device having a service that uses a
particular data type. Id. at 5:42--45. Maciocci defines the term "service" as
"any application-related functionality." Id. at 4:5---6. Maciocci's user
interface presents a second application that the system has identified and
matched to the first. Id. at 6: 10-1 7.
Appellants argue that Maciocci' s data type is not found in the
provisional. App. Br. 10; Reply Br. 5. We disagree. Even if the terms
"match," "compatibility," and "data type" do not appear in the provisional,
the provisional need not contain precisely the same words as claim 1 to
satisfy the written-description requirement. See Eiselstein v. Frank, 52 F.3d
1035, 1038 (Fed. Cir. 1995) ("In order to determine whether a prior
application meets the 'written description' requirement with respect to later-
filed claims, the prior application need not describe the claimed subject
matter in exactly the same terms as used in the claims; it must simply
indicate to persons skilled in the art that as of the earlier date the applicant
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Application 12/916, 144
had invented what is now claimed."). Here, Maciocci discloses that a data
type relates to a data format or type used by the application. Maciocci 4:9--
10. According to Maciocci, a data type may include an "online gamer
contact." Id. at 4:42--46.
Likewise, the '451 provisional discloses online gamer contacts. '451
provisional ,r 43, cited in Ans. 8. In particular, the Examiner finds that the
'451 provisional discloses Gamer Net, which uses a data type. Ans. 8. The
'451 provisional discloses that Gamer Net enhances "information for the
'People' application." '451 provisional ,r 43 (emphasis added). When the
user adds Gamer Net to the collection of services, online gamer contacts-
i.e., contacts with Gamer Net accounts-will have their gamer profiles
displayed in the contact details screen. Id. That is, although the '451
provisional does not use the term "data type," the information about the
online gamer contacts described in paragraph 43 is a data format or type
used by the Gamer Net service. Compare id., with Maciocci 4:6-10
( describing a data type); 4:42--46 ( discussing online gamer contacts as data
type). In other words, the services use online gamer data to convey
information formatted as a profile to the user. '451 provisional ,r 43. In this
way, the provisional describes the data type in full, clear, concise, and exact
terms to enable an ordinarily skilled artisan to practice the claimed
invention.
Appellants argue that Maciocci' s matching, as recited in claim 1, is
not found in the provisional. App. Br. 10; Reply Br. 5. We disagree. For
the recited matching, the Examiner points to Figures 4 and 5 of the '451
provisional. Ans. 8; see also Adv. Act. ( citing '451 provisional ,r 42, Fig. 4).
In particular, Figures 4 and 5 of the '451 provisional, reproduced below,
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Application 12/916, 144
show how the Gamer Net service enhances information for the People
application using the recited matching. '451 provisional ,r 43, cited in
Ans. 8.
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Figure 4 of the '451 provisional showing UI Application Integrator and
the Contextual Application Store.
In Figure 4, the user selects a contextually related application from the
application store. Id. ,r 42. The user interface in Figure 4 shows
applications determined to be contextually similar to the People
application-i.e., Gamer Net, Dream X-Team, and Bowling Buddies. Id.;
see also id. ,r 37. That is, the system matches the People application (the
first application) with Gamer Net (the second application) and the other
applications. Id. ,r,r 37, 42. The '451 provisional discloses that applications,
like Gamer Net, can extend their UI into multiple core applications, which
shows Gamer Net is compatible with the core applications. Id. ,r 42. In the
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Appeal2018-001684
Application 12/916, 144
example, Gamer Net extends to both People and Events. Id. In this way, the
'451 provisional describes "matching a compatibility" as recited in
Maciocci' s claim 1.
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