Ex Parte O et alDownload PDFPatent Trial and Appeal BoardSep 27, 201812916144 (P.T.A.B. Sep. 27, 2018) Copy Citation 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 2 Appeal2018-001684 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. 3 Appeal2018-001684 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."). 4 Appeal2018-001684 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? 5 Appeal2018-001684 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; 6 Appeal2018-001684 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 7 Appeal2018-001684 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, 8 Appeal2018-001684 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. :?~11 ""-"' \ M,lif Slo;l tl34 %6 Os1t<- Stffi.3! C.,~,il;1, Git\', ST m9"1% 1:~9';! U,r:.A ~ .r i ' r \ ! 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 9 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. , Sutim;ifb, UPQ!~ "'""'"/ "'"""" F'Bici s-ubwiption 1.m,octS~· / .. F e@.:re , .. r:·~Copy with citationCopy as parenthetical citation