Ex Parte Smilowitz et al

Patent Trial and Appeal Board

Mar 28, 2013

11483441 (P.T.A.B. Mar. 28, 2013)

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.
11/483,441 07/10/2006 Abe Smilowitz 1314-017U 9666
29973 7590 03/28/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE LLP
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
HOPE, DARRIN
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
03/28/2013 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 ABE SMILOWITZ, ERNESTO MORALES,
ROBERT GARNER, and MICHAEL HANKEY
____________

Appeal 2010-012513
Application 11/483,441
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-012513
Application 11/483,441

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants describe the present invention as follows:
A dedicated computer client application interfaces with,
searches, and displays results from an online dating database.
The application opens a window on the computer desktop.
Search criteria entered into the application and matching
profiles from the database are displayed in the window.
Profiles can be selected to form matches with other members.
Tools to facilitate communication between users are included.
The application consumes a portion of the computer desktop
and includes autoscrolling to allow a user to passively browse
the window while working in other windows on the computer
desktop.
Spec., abstract.
Independent claim 1 is illustrative:
1. A dedicated computer client application for interfacing
with an online dating database of profiles, comprising:
a window displayed on a client computer desktop of an
operating system executing in a computer, the window being
displayed in connection with an online dating computer
application executing by the operating system, the window
covering only a portion of the computer desktop and no more
than one-quarter of the computer desktop;
a summary profile from an online dating database
communicatively coupled to the computer over a computer
network, the profile being displayed in said window, said
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summary profile being derived from a profile of a member in
the online dating database matching a criterion; and
a button disposed in said window and associated with
said summary profile, said button inviting said member to add
the user to a match list of the member and the user.
The Examiner relies on the following references as evidence of
unpatentability:
Terrill US 2007/0073802 A1 Mar. 29, 2007
Haitsuka US 6,983,311 B1 Jan. 3, 2006
Dhillion US 2006/0085373 A1 Apr. 20, 2006
Mayer US 2005/0086211 A1 Apr. 21, 2005
Smola US 2006/0059160 A1 Mar. 16, 2006
Roche US 2001/0054100 A1 Dec. 20, 2001
Cadiz US 7,185,290 B2 Feb. 27, 2007
Bodin US 2007/0061711 A1 Mar. 15, 2007

REJECTIONS
The Examiner rejected claims 1-26 under 35 U.S.C. § 101 as directed
to nonstatutory subject matter. Ans., pp. 4-5.1
The Examiner rejected claims 1-5, 8-10, 12-15, and 20-22 under 35
U.S.C. § 103 as unpatentable over Terrill and Haitsuka. Id. at 5-10.
The Examiner rejected claims 7 and 16 under § 103 as unpatentable
over Terrill, Haitsuka, and Dhillion. Id. at 10-12.

1 Throughout this opinion, we refer to the Final Rejection mailed May 27,
2009 (“Final Rej.”), Appeal Brief filed April 19, 2010 (“App. Br.”),
Examiner’s Answer mailed July 8, 2010 (“Ans.”), and Reply Brief filed
September 8, 2010 (“Reply Br.”).
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Application 11/483,441

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The Examiner rejected claim 11 under § 103 as unpatentable over
Terrill, Haitsuka, and Mayer. Id. at 12-13.
The Examiner rejected claims 17-19 under § 103 as unpatentable over
Terrill, Haitsuka, and Smola. Id. at 13-14.
The Examiner rejected claim 23 under § 103 as unpatentable over
Terrill, Haitsuka, and Roche. Id. at 14-15.
The Examiner rejected claim 6 under § 103 as unpatentable over
Terrill, Haitsuka, and Cadiz. Id. at 15-16.
The Examiner rejected claims 24-26 under § 103 as unpatentable over
Terrill, Haitsuka, and Bodin. Id. at 16-17.

REJECTION UNDER § 101
Claim 1 is directed to a “dedicated computer client application for
interfacing with an online dating database of profiles.” In rejecting claim 1
under § 101, the Examiner determined that the claimed “application”
encompasses software per se and is therefore not restricted to a statutory
class of patentable subject matter (i.e., to a process, machine, manufacture,
or composition of matter). Ans., p. 4. Appellants argue: “To the extent that
claim 1 is tied to a computer supporting the execution of an operating
system, Appellants’ claim 1 clearly satisfy the machine-or-transformation
test of Bilski.” App. Br., p. 7.
Appellants’ argument is not responsive to the rejection. The machine-
or-transformation test evidences whether a claimed process falls within a
judicially-recognized exception of § 101, that is, whether the process is
restricted to a “new use” under § 101 (eligible) or rather pre-empts any
“laws of nature, physical phenomena, and abstract ideas” (ineligible judicial
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exception). Bilski v. Kappos, 130 S. Ct. 3218, 3225-27 (2010); cf., Manual
of Patent Examining Procedure (MPEP) § 2106.I-II. The Examiner
determined that the claimed application encompasses mere programming
code, as opposed to a process implemented by execution of the code, a
machine programmed by the code, or a non-transitory medium storing the
code. Ans., pp. 4-5; see also id. at 18 (“Software must be in statutory
medium to be patentable. The Examiner submits that Appellants’ claim 1
does not satisfy the Bilski test because the claims do not appear to recite a
process or method.”). Thus, the issue raised by the rejection is whether the
claimed application falls within a statutory class of § 101, not whether the
application is restricted a “new use” under § 101.
Appellants argue in the Reply Brief that the claimed application is a
machine, stating:
With respect to Appellants’ system claim 1, it is
important to note that a dedicated computer client application
for interfacing with an online dating database of profiles, when
interpreted in light of Appellants’ specification is a machine –
one of the statutory categories of subject matter under § 101. In
fact, claim 1 expressly recites a window displayed on a client
computer desktop of an operating system executing in a
computer. Appellants’ specification indicates that a computer
hosting the execution of an operating system is present in
accordance with Appellants’ invention. The [Board] has
consistently found that based on this functionality, a claim that
recites a “computer” comports with the definition of a
“machine[.]”
Reply Br., pp. 3-4 (footnote omitted). This argument is untimely.
Appellants argued in the Appeal Brief that the claimed application
constitutes a process. App. Br., pp. 6-7. Quite differently, Appellants argue
in the Reply Brief that the claimed application constitutes a machine. Reply
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Br., p. 4 (see above block quote). We do not consider such newly-raised
issues within reply briefs. See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative) (“Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.”); 37 C.F.R. §
41.67(c)(1)(vii) (“Any arguments or authorities not included in the [appeal]
brief … will be refused consideration by the Board . . . .”).
However, we will address Appellants’ contention that the Board has
consistently held a claim “recit[ing] a ‘computer’ comports with the
definition of a ‘machine.’” Reply Br., pp. 3-4 (citing Ex Parte Verhaegh,
Appeal No. 2009-000128, 2009 WL 1719535 (BPAI 2009)). In support,
Appellants cite a single, non-binding Board decision that found a claimed
“scheduler” was a machine under § 101. Verhaegh, at *13-14. Contrary to
finding that a software claim reciting a computer falls under the “machine”
class of § 101, the decision found that the claimed scheduler was itself a
machine in light of comprising means-plus-function structures of a
transmission system disclosed by the specification. Id.
For the foregoing reasons, we sustain the § 101 rejection of claim 1.
Appellants do not, with respect to the § 101 rejection, present additional
arguments for dependent claims 2-26. Accordingly, we also sustain the §
101 rejection of claims 2-26.

REJECTIONS UNDER § 103
Claims 1-9 and 11-26
Claim 1 recites a window displaying “a summary profile from an
online dating database.” Appellants argue that the Examiner rejected claim
1 due to an “improper claim construction of ‘summary profile’ as merely an
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advertisement.” App. Br., p. 13. The argument is not persuasive, for two
reasons.
First, the Examiner merely found that Terrill’s dating profiles and
Haitsuka’s advertisement banner have similar informational requirements,
such that a skilled artisan would reasonably expect that Terrill’s dating
profile can be resized to the proportions of Haitsuka’s banner, as proposed.
Ans., p. 19. Thus, contrary to Appellants’ argument, the Examiner is not
reading the recited “summary profile from an online dating database” (claim
1) on Haitsuka’s advertisement banner. In fact, the Examiner unequivocally
found that Terrill teaches all but the recited sizing of the claimed window
(“no more than one-quarter of the computer desktop”). Ans., p. 6-7.
Second and foremost, the recited summary profile’s “dating”
information (i.e., the information concerning the profiled member) does not
affect the operation or organization of the claimed window, profile, and
button. As such, the summary profile’s informational content does not
functionally restrict the claimed application and is therefore immaterial to
the issue of patentability under § 103. See e.g., In re Lowry, 32 F.3d 1579,
1583 (Fed. Cir. 1994) (mere informational content of non-functional
descriptive material is not entitled to patentable weight); see also Ex parte
Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative).
For the foregoing reasons, we sustain the obviousness rejection of
claim 1 over Terrill and Haitsuka. As Appellants present separate arguments
only for claim 10 (addressed below), we also sustain the obvious rejections
of the remaining claims 2-9 and 11-26.

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Claim 10
Dependent claim 10 recites: “The application according to claim 1,
wherein said button is a flirt button configured when selected in the window
to activate a separate window from which a brief message from amongst a
group of pre-selected messages is selected and sent as a brief message to the
user.” Appellants argue that the final rejection does not respond to the
following prior argument:
Terrill fails to disclose [the claimed] flirt button. … Examiner
refers to the “Interested In You” box of Figure 6A of Terrill as
an equivalent teaching. The “Interested In You” box, however,
is not a flirt button. Indeed the “Interested In You” box is not
button at all.
App. Br., p. 14 (quoting Amend. After Non-Final Rej., March 4, 2009, p.
12). The Examiner responds that selecting the “Interested In You” (“IIY”)
tab of Terrill’s Figures 6A-B “leads to a separate page of predefined
messages or profiles.” Ans., p. 19.
Appellants’ argument is not responsive to the rejection. The
Examiner did not read the claimed “flirt button” on the window of Terrill’s
Figure 6A, as contended by Appellants. Rather, the Examiner simply found
that Terrill’s Figures 6A-B teach the subject matter of claim 10, stating
“Terrill discloses said button is a flirt button (FIGS. 6A-B).” Final Rej., p.
6.
We agree with the Examiner’s finding. As clarified by the Answer,
the act of selecting the “IIY” tab (claimed “flirt button”) opens the “IIY”
window of Terrill’s Figure 6B (claimed “separate window”). Further, the
window presents the viewer various hyperlink statements (claimed
“preselected messages”), which include an “IIY” hyperlink statement
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(claimed “brief message”) that is sent to the profiled database member upon
selection. Terrill, ¶ 78; Fig. 6B. Nothing more is required.
Accordingly, we sustain the obviousness rejection of claim 10 over
Terrill and Haitsuka.

ORDER
For the above reasons, the Examiner’s decision rejecting claims 1-26
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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