Geoffrey PetersDownload PDFPatent Trials and Appeals BoardFeb 1, 20212019006261 (P.T.A.B. Feb. 1, 2021) Copy Citation 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. 13/926,889 06/25/2013 Geoffrey Neil Peters 34874-981F01US 3498 64280 7590 02/01/2021 Mintz Levin/SAP Mintz Levin Cohn Ferris Glovsky and Popeo, P.C. One Financial Center Boston, MA 02111 EXAMINER MINCEY, JERMAINE A ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 02/01/2021 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): IPDocketingBOS@mintz.com IPFileroombos@mintz.com mintzdocketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GEOFFREY NEIL PETERS _____________ Appeal 2019-006261 Application 13/926,889 Technology Center 2100 ____________ Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and MICHAEL T. CYGAN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final rejection of claims 1, 3, 4, 6–14, 16–19, and 22. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest is SAP SE. See Appeal Br. 2. Appeal 2019-006261 Application 13/926,889 2 STATEMENT OF THE CASE 2 Introduction Appellant’s claimed invention relates generally to “a content management system with chained document discovery techniques.” (Spec., ¶ 1). Representative Independent Claim 1 1. A computer-implemented method comprising: displaying, by a content management system including a display presenting via a graphical user interface, a listing of a first plurality of documents managed by the content management system and representing favorites of a first user, the first plurality of documents comprising documents authored by a plurality of users including a second user; receiving, by the content management system and via the graphical user interface, a first selection of a first document from the first plurality of documents; determining, by the content management system and based on the first selection, that the second user authored or edited the selected document; determining, by the content management system and based on the first selection, a second plurality of documents representing favorites of the second user; receiving, by the content management system and via the graphical user interface, a second selection of a second document from the second plurality of documents; 2 We herein refer to the Non-Final Office Action, mailed (Mar. 8, 2018) (“Non-Final Act.”); Appeal Brief, filed (May 13, 2019) (“Appeal Br.”); the Examiner’s Answer, mailed (June 24, 2019) (“Ans.”); and the Reply Brief, filed (Aug. 23, 2019) (“Reply Br.”). Appeal 2019-006261 Application 13/926,889 3 determining, by the content management system and based on the second selection, that a third user authored or edited the second document; determining, by the content management system and based on the third selection, a third plurality of documents representing favorites of the third user; and wherein the displaying further comprises displaying, by the content management system and via the graphical user interface, a document chain of favorites comprising the first plurality of documents, the second plurality of documents, and the third plurality of documents, the first plurality of documents presented in a first view of the graphical user interface and including only favorites of the first user, the second plurality of documents presented in a second view of the graphical user interface and including only favorites of the second user, the third plurality of documents presented in a third view of the graphical user interface and including only favorites of the third user, wherein traversal of the document chain is enabled by the first selection in the first view and the second selection in the second view, the first selection triggering the second view, and the second selection triggering the third view. Appeal Br. 28, 29, Claims App., disputed limitation emphasized. Rejections3 Claims 1, 12, 13, 14, 15, and 22 are rejected under 35 U.S.C. § 103 as being unpatentable over Heix et al. (US 2009/0024648 A1; published Jan. 22, 2009) (herein as ‘Heix’) and further in view of Gorzela (US 2007/0239674 A1; published Oct. 11, 2007) (herein as ‘Gorzela’). Claims 3, 13, and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Heix, Gorzela, and further in view of Bera (US 2004/0107224 A1; published June 3, 2004) (herein as ‘Bera’). 3 The Examiner has withdrawn the § 101 rejections of claims 1, 3, 4, 6–14, 16–19 and 22. Ans. 3. Appeal 2019-006261 Application 13/926,889 4 Claims 4, 6, 7, 9, 10, 17, 18, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Heix, Gorzela, and further in view of Pedersen et al. (US 2007/0130145 A1; published June 7, 2007) (herein as ‘Pedersen’). Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Heix, Gorzela, and further in view of Chandra (US 2014/0149378 A1; published May 29, 2014) (herein as ‘Chandra’). Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Heix, Gorzela, and further in view of Bae et al. (US 2010/0100524 A1; published Apr. 22, 2010) (herein as ‘Bae’). Issue on Appeal Did the Examiner err in rejecting claims 1, 3, 4, 6–14, 16–19, and 22 as being obvious? ANALYSIS Based on Appellant’s arguments in the Briefs, the principal and dispositive issue of whether the Examiner erred in rejecting exemplary claim 1 turns on whether the combination of Heix and Gorzela teaches the claim limitations displaying . . . a document chain of favorites comprising the first plurality of documents, the second plurality of documents, and the third plurality of documents, the first plurality of documents presented in a first view of the graphical user interface and including only favorites of the first user, the second plurality of documents presented in a second view of the graphical user interface and including only favorites of the second user, the third plurality of documents presented in a third view of the graphical user interface and including only favorites of the third user, wherein traversal of the document chain is Appeal 2019-006261 Application 13/926,889 5 enabled by the first selection in the first view and the second selection in the second view, the first selection triggering the second view, and the second selection triggering the third view. (hereinafter “the disputed trigger limitation”). Appeal Br. 21–23; Reply Br. 4–7. Independent claims 14 and 22 recite similar subject matter.4 We adopt the findings of facts made by the Examiner in the Non-Final Office Action and Examiner’s Answer as our own. We concur with the decision reached by the Examiner in the Examiner’s Answer for the specific reasons discussed below. We have considered Appellant’s Reply Brief, but find it unpersuasive to rebut the Examiner’s responses. We highlight the following for emphasis. Appellant contends Gorzela does not disclose the disputed trigger limitation. Appeal Br. 21–23. In particular, Appellant contends: Gorzela’s display of blogrolls belonging to different users is not analogous to displaying the chain of digital documents through a series of views in which selecting one of a first plurality of digital documents favorited by a first user and displayed in a first view of a graphical user interface triggers a second view displaying a second plurality of digital documents favorited by a second user who authored or edited the selected digital document. Appeal Br. 22 (underlining omitted). The Examiner has identified the relevant portions of Gorzela and has provided sufficient explanation with corresponding citations to various parts of the reference for disclosing the disputed trigger limitation (Ans. 4–7). In 4 Appellant did not provide separate arguments with respect to the patentability of claims 3, 4, 6–13, and 16–19. Appeal 2019-006261 Application 13/926,889 6 particular, the Examiner determines that Gorzela’s blogroll meets the disputed trigger limitation (Ans. 7). In particular, the Examiner finds a user can select for example Mel's blog on Tom's blogroll list and thus be presented with Mel's Weblog. Mel’s web log will be similar to Fig. 2 except it will contain the title “Mel's Blog” also include a link to other blogs (107), that will list Mel’s blogroll author blogs. A user can select an third author from Mel’s blogroll and thus be presented with the third author’s weblog which will be similar to Fig. 2, except it will contain the title “Third Author’s Blog” and also include a link to other blogs (107), that will list the third author’s blogroll author blogs. So a user can display different plurality of digital documents by continually selecting a different author from each selected’s author’ blogroll. The authors on the blogroll are seen as favorites of an author (ex. Tom) because the author (ex. Tom) of the weblog decided to place the different author within the blog roll, hence the name “Tom’s blogroll”. Selecting an author from a blog will cause the selected author’s weblog to be displayed with the selected author’s blogroll list. Therefore once a first author from the blogroll list is selected the displayed content will be the selected first author’s blogroll which is seen as favorites of the selected author. The user is then able to select from that first displayed author’s blogroll to display a second content that is associated with the second author. The user is then able to select a third author from the second author’s blog roll to display third author content that contain a list of third author’s blogroll authors. Ans. 6, 7 (emphases added). In other words, Gorzela teaches or suggests the disputed trigger limitation with its blogroll selection features. Ans. 4–7 (Citing Gorzela ¶¶ 38, 39, and 53; Figures 2, 5). As an initial matter of claim construction, we turn to the Specification for context, and find no explicit definition for the claim term “triggering.” Appeal 2019-006261 Application 13/926,889 7 Claim 1 (emphasis added). Given the absence of a limiting definition in the claim or Specification regarding the disputed trigger limitation, on this record, we are not persuaded the Examiner’s reading is overly broad, unreasonable, or inconsistent with the Specification.5 Based on our review of Gorzela and consistent with the Examiner’s stated position (Ans. 4–7), we interpret the disputed trigger limitation using the broadest reasonable interpretation consistent with Appellant’s disclosure – to include the selection of blogrolls in Gorzela. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appellant also contends: combination of Heix and Gorzela is further untenable because even assuming arguendo that Heix and Gorzela can be combined, the resulting combination still does not include the claimed chain of digital documents having one or more predefined attributes or displaying the chain of digital documents in the claimed manner. . . . Thus, a person having ordinary skill in the art cannot combine Heix and Gorzela without substantial modification, which inevitably defeats the requisite motivation to combine these references. Appeal Br. 24, 25 (underlining omitted). The Examiner finds: Par. 0002 Heix discloses as content management systems increase in size, so does the difficulty in locating documents. Par. 0006 Gorzela discloses the difficulty in effectively and conveniently accessing content/documents through Weblogs. Therefore a person of ordinary skill in the art at the time of the invention would have been motivated to make this combination in order to locate document conveniently 5 We emphasize that, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Appeal 2019-006261 Application 13/926,889 8 and effectively such as clicking on a link to access other Weblog content. The document located on the blogroll are seen as the documents a user wants to access quickly, therefore are considered favorites (Par. 0006 and Par. 0039 Gorzela). Ans. 8. We agree with the Examiner because Appellant’s arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” (citations omitted)). Accordingly, the Examiner appropriately combined the teachings of Heix and Gorzela. See Ans. 8. We further note that the Examiner has found actual teachings in the prior art and has provided a rationale for the combination (see Non-Final Act. 29; Ans. 8). We find that the above-noted teachings suggest that the combination involves the predictable use of prior art elements according to their established functions, i.e., to quickly locate documents by clicking on a link to access other Weblog content. There is no requirement that the problem solved by the secondary reference be discussed by the primary reference to apply the teachings of the secondary reference in a rejection under 35 U.S.C. § 103. The Supreme Court has held that in analyzing the obviousness of combining elements, a court need not find specific teachings, Appeal 2019-006261 Application 13/926,889 9 but rather may consider “the background knowledge possessed by a person having ordinary skill in the art” and “the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions,” id. at 417, and the basis for an obviousness rejection must include an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (citation omitted). Here, the Examiner has provided a rationale for the combination. Accordingly, we find that the Examiner has provided sufficient motivation for modifying Heix with the teachings of Gorzela. In the Reply Brief, Appellant contends that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because the Examiner has “failed to provide a reference disclosing successive views of a graphical user interface each presenting only those documents which was favorited by a user who authored or edited a document selected from a previous view of the graphic user interface.” Reply Br. 5. As to Appellant’s above assertions, we disagree. Appellant’s “successive views” and “document selected from a previous view” arguments are not commensurate with the scope of the claim language. Claim 1 is not explicitly so limited, and Appellant does not explain how claim 1 would be inherently so limited. This claim language does not recite “successive views” or “document selected from a previous view.” Nor do we find alternative language in claim 1 that would similarly mandate this argued limitation. Appeal 2019-006261 Application 13/926,889 10 On this record, and based upon a preponderance of the evidence, we are not persuaded of error regarding the Examiner's finding of obviousness regarding the rejection of independent representative claim 1. Therefore, we sustain the Examiner’s obviousness rejection of representative independent claim 1 and the rejection of grouped independent claims 14 and 22, which recite similar limitations of commensurate scope. The remaining grouped dependent claims also rejected (and not argued separately) fall with their respective independent claims 1 and 14. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION Appellant has not shown the Examiner erred with respect to the obviousness rejections of claims 1, 3, 4, 6–14, 16–19, and 22 over the cited prior art of record, and we sustain the rejections. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 12, 13, 14, 15, 22 103 Heix, Gorzela 1, 12, 13, 14, 15, 22 3, 13, 16 103 Heix, Gorzela, Bera 3, 13, 16 4, 6, 7, 9, 10, 17, 18, 19 103 Heix, Gorzela, Pedersen 4, 6, 7, 9, 10, 17, 18, 19 8 103 Heix, Gorzela, Chandra 8 Appeal 2019-006261 Application 13/926,889 11 11 103 Heix, Gorzela, Bae 11 Overall Outcome 1, 3, 4, 6– 14, 16–19, 22 FINALITY AND RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation