Michael Leeder et al.

Patent Trials and Appeals Board

Aug 21, 2019

13204078 - (D) (P.T.A.B. Aug. 21, 2019)

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.
13/204,078 08/05/2011 Michael Leeder GEN-182 9041
105956 7590 08/21/2019
Fogarty, L.L.C
P.O. Box 703695
Dallas, TX 75370-3695
EXAMINER
DAILEY, THOMAS J
ART UNIT PAPER NUMBER
2452
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
docketing@fogartyip.com
pair@fogartyip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL LEEDER, CARROLL LOUISE GRAY-PRESTON,
JAMES ANGUS McEACHERN, and RICHARD C. TAYLOR
____________

Appeal 2018-007044
Application 13/204,078
Technology Center 2400
____________

Before ERIC B. CHEN, HUNG H. BUI and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 3–23, which constitute all the pending claims.2 See Final Act.
1 (Office Action Summary); App. Br. 6 (Argument Overview); id. at 18–23
(Claims App’x). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Appellants identify Ribbon Communications Inc. as the real party in
interest. App. Br. 2.
2 Claim 2 has been canceled. App. Br. 18 (Claims App’x).
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Introduction
Appellants’ disclosure and claims relate to managing social
interaction histories, and in particular in relation to “over-the-top” (OTT)
service platforms, which enable “a variety of independently developed
products and services that run ‘on top’ of the infrastructure maintained by
the telecommunications industry.” Spec. 1:5–2:28 (quoting 1:13–15)
(explaining at 1:17–19 that OTT services “are not developed with a specific
telecommunications provider’s network in mind, but rather are designed to
interconnect users via a provider-independent platform”).
Claim 1 is illustrative of the pending claims:
1. A method for managing social interaction history
information, the method comprising:
automatically logging into a first over the top (OTT)
service platform, by a social interaction information
consolidation module, using stored user information and
retrieving first social interaction history information associated
with a user of a first OTT service platform;
receiving further first social interaction history
information associated with the user of the first OTT service
platform, via a monitoring module;
receiving second social interaction history information
associated with the user, the second social interaction history
information from a communications service platform distinct
from the first OTT service platform;
generating, using the first social interaction history
information and the second social interaction history
information, a consolidated social interaction history correlating
related interactions that include at least one of similar phrases
and related topics; and
providing a the consolidated social interaction history to
the user.
App. Br. 18 (Claims App’x).
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Rejections and References
(1) The Examiner rejected claims 1, 3, and 5–11 under 35 U.S.C.
§ 103(a) as unpatentable over Frank (US 2005/0125541 A1; publ. June 9,
2005), Dahan (US 2006/0009243 A1; publ. Jan. 12, 2006), and Bosworth
(US 2008/0040370 A1; publ. Feb. 14, 2008). Final Act. 5–9.
(2) The Examiner rejected claims 4 and 16 under § 103(a) as
unpatentable over Frank, Dahan, Bosworth, and Herzog (US 2008/0183800
A1; publ. July 31, 2008). Final Act. 14–15.
(3) The Examiner rejected claims 12–15 and 17–21 under § 103(a)
as unpatentable over Frank, Dahan, and Herzog. Final Act. 9–13.
(4) The Examiner rejected claim 22 under § 103(a) as unpatentable
over Frank and Dahan. Final Act. 3–5.
(5) The Examiner rejected claim 23 under § 103(a) as unpatentable
over Frank, Dahan, and “what was well known in the art prior to the
invention.” Final Act. 13–14.
ISSUES
Based on Appellants’ arguments, the issues before us are whether the
Examiner errs in the obviousness rejections of claims 1, 4, 12, 14, 16, 22,
and 23. App. Br. 6–17.3 Appellants waive unmade arguments. 37 C.F.R.
§ 41.37(c)(1)(iv); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011)).

3 Based on Appellants’ arguments, dependent claims 3 and 5–11 stand or fall
with independent claim 1, and dependent claims 13, 15, and 17–21 stand or
fall with independent claim 12. See 37 C.F.R. § 31.37(c)(1)(iv).
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ANALYSIS
Independent Claim 1
Appellants contend the Examiner errs in finding Bosworth teaches or
suggests “generating . . . a consolidated social interaction history correlating
related interactions that include at least one of similar phrases and related
topics,” as recited in claim 1. App. Br. 4–8 (citing Bosworth ¶¶ 28, 37–39
(which the Examiner cited at Final Act. 7)). In particular, Appellants argue
“the data in Bosworth is not consolidated to correlate related interactions
that include at least one of similar phrases and related topics. Rather, data in
Bosworth, which is already otherwise consolidated based on relationship
data, is then aggregated (i.e. merely clustered) based on similar phrases.”
Reply Br. 2. This argument is unpersuasive.
Bosworth discloses “produc[ing] aggregated consolidated data” (¶ 28)
and provides an example of aggregating data based on members of a “web-
based social network” (¶ 13) joining a group named “Green Day” (¶ 28). As
Bosworth’s Figure 5 illustrates, member “access relationship data” and the
members’ “actions with relationship data” create the consolidated data, and
then the “aggregated consolidated data” is created by identifying common
elements (i.e., such as the commonality of joining the “Green Day” group).
See Bosworth ¶¶ 37–39.
In view of this disclosure, we agree with the Examiner’s finding that
Bosworth’s aggregation of data for its members having joined the “Green
Day” group constitutes the combining of members’ social interaction history
to correlate related interactions. Ans. 3–4. Using the plain meaning of
“consolidate,” selecting multiple items of data from a data source to
combine them into a group constitutes consolidating that selected data,
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regardless that it may be selected from a previously consolidated set of data.
We discern nothing in Appellants’ Specification to contravene this broad but
reasonable interpretation. Thus, Appellants do not persuade us the Examiner
errs in finding Bosworth teaches (or suggests) “generating . . . a consolidated
social interaction history” to correlate related interactions, as recited.
Accordingly, we sustain the rejection of claim 1. In doing so, as
consistent with the foregoing, we adopt as our own the Examiner’s findings
and reasons in its rejection. We also, therefore, sustain the rejection of
claims 3 and 5–11.
Dependent Claim 4
Claim 4 depends from claim 1 (through claim 3, for which the
rejection’s findings are not in dispute) and recites “wherein the monitoring
module is a part of, and monitoring communications between the user and
the first OTT service platform is performed by, at least one of a server, a
proxy, and a telecommunications node disposed in a carrier network.” App.
Br. 19 (Claims App’x).
Appellants contend the Examiner errs in finding Herzog (in view of
the combined teachings of Frank, Dahan, and Bosworth) teaches or suggests
the limitations of claim 4, because the “proxy server 202 of Herzog is not
part of a carrier network, but rather is an enterprise device.” App. Br. 9
(citing Herzog Fig. 2, ¶ 45, claim 5 (which the Examiner cited at Final Act.
14); see also Reply Br. 3–5.
The Examiner responds that “Herzog’s proxy server is clearly
disposed in a carrier network (i.e. the mobile client network in Fig. 2 (label
206)) as it communicates directly with mobile clients.” Ans. 4.
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Appellants’ argument is persuasive. As Appellants’ Specification
discusses, it is routine to provide OTT functionality outside of carrier
networks. See Spec 1:9–2:14 (identifying at 2:12–14 the opportunity for
telecommunications providers to “distinguish themselves by developing and
implementing functionality” related to OTT service platforms).
On the record before us, we find the Examiner’s response is
conclusory, and Appellants persuade us that artisans of ordinary skill would
understand Herzog’s disclosure of a proxy server for business enterprises
that use carrier networks is insufficient to teach or suggest disposing
Herzog’s proxy server (with its monitoring module) within a carrier network.
Reply Br. 4–5. We also agree with Appellants that Frank does not cure
Herzog’s deficiency. Id. ¶ 5.
Accordingly, we do not sustain the rejection of claim 4.
Independent Claim 12
Appellants contend the Examiner errs in finding Herzog teaches or
suggests “a social interaction information consolidation module processor
disposed in a carrier network,” as recited in claim 12. App. Br. 9–11; see
also Reply Br. 6–8. Similar to claim 4, the Examiner finds Herzog teaches
this requirement because “Herzog’s proxy server is clearly disposed in a
carrier network.” Ans. 6 (citing Herzog Fig. 2). For the same reasons
discussed above for claim 4, Appellants persuade us the Examiner errs.
Accordingly, we do not sustain the rejection of claims 12, or of its dependent
claims 13–21.
Independent Claim 22
Independent claim 22 recites, inter alia, “generating . . . a
consolidated social interaction metadata history including consolidations of
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conversations spanning at least the first OTT service platform and the
communications service platform.” App. Br. 22 (Claims App’x).
Appellants contend the Examiner errs in finding Frank teaches this disputed
requirement, because “[t]he consolidations in Frank are based on contact
information, and the like.” App. Br. 13.
The only consolidation that is discussed in (the cited portion of)
Frank is consolidation of a conversation requests to span multiple
platforms. For example, cited paragraph [0040] mentions that,
“integration software 32 can deliver a message from user 22 to a
mailbox.” However, this message is just that, a message not a
conversation spanning multiple platforms, as claimed in
independent claim 22.
Id. at 14 (emphasis omitted).
As the Examiner responds, however, and we agree, the disputed
requirements recite
“a consolidated social interaction metadata history including
consolidations of conversations spanning at least the first on
service platform and the communications service platform[,]”
which does not require that any one single conversation span two
different platforms, but rather “conversations” span[ning] the
plurality of platforms[,] which Frank discloses, e.g. e-mail, voice
messages, and IM. [Appellants’] statement that “a message is
not a conversation spanning multiple platforms, as claimed in
independent claim 22,” is disconnected from the claim language
as there is no such requirement imposed by language which more
broadly refers to conversations (plural) spanning platforms, e.g.
one conversation over one platform and a second conversation
over a different platform. Frank’s messages (including email,
voice mail, and “a request to converse” over IM) are also
conversations because conversations involve communications
between two parties[,] and this is what they are.
Ans. 7.
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According to Appellants, regardless of whether emails are
conversations that span platforms, “Frank fails to teach or suggest
combining this one conversation over one platform and a second
conversation over a different platform into a single more effective or
coherent whole as (a) conversation(s).” Reply Br. 12.
This argument is unpersuasive. Appellants construe both claim 22
and the disclosure of Frank too narrowly. The disputed limitation
encompasses Frank’s storage of messages and related information in
database 20. See Frank ¶¶ 38–42. In other words, artisans of ordinary skill,
in view of the claim language and Appellants’ Specification, would have
understood Frank’s storing of messages and related data in its database
constitutes “generating . . . a consolidated social interaction metadata history
including consolidations of conversations,” as recited.
Contrary to Appellants’ characterization that Frank “merely teaches
storing these emails, voice mails, and requests to converse over IM in a
mailbox,” the system in Frank teaches consolidating such data into the
database 20 so that, for example, “as much information about [an] incoming
call and user 22 or 26 as computer 14 is able to retrieve from database 20”
can be displayed, including, for example, “recent e-mail correspondence to
or from user 22 or 26.” Id. ¶ 42.
Accordingly, we sustain the rejection of claim 22. In doing so, as
consistent with the foregoing, we adopt as our own the Examiner’s findings
and reasons in its rejection.
Dependent Claim 23
Claim 23 depends from claim 1 and recites “registering, by the social
interaction information consolidation module, for event notifications to
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receive further first social interaction history information associated with the
user of the first OTT service platform and/or from the communications
service platform.” App. Br. 23 (Claims App’x).
In rejecting claim 23, the Examiner takes Official Notice “that
registering for event notifications to receive further first social interaction
history information from one or more service platforms was a well-known
and expected practice in the art at the time of the invention.” Final Act. 14
(citing MPEP §2144.03) (concluding that what was well known, in
combination with the teachings of Frank and Dahan, renders obvious claim
23).
Appellants challenge the Official Notice, contending that because it is
not clear that, as of their August 5, 2011 filing date, the “registering for
event notifications to receive further first social interaction history
information” requirement was “a well-known and expected practice in the
art,” the Examiner should cite a reference in support of the assertion. Id.
Appellants also contend the Examiner apparently relies on personal
knowledge for the Officially Noticed fact and, thus, an affidavit or
declaration setting forth facts and explanation to support the finding is in
order. Id. (citing 37C.F.R. § 1.104(d)(2); MPEP § 2144.03(c)).
In response, the Examiner takes the position that Appellants’
“attempted traversal of Official Notice is inadequate as they have not
specifically pointed out the supposed errors in the examiner’s action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art.” Ans. 9. The Examiner also cites a
USPTO Memorandum, Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Decision (Berkheimer v.
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HP, Inc.) (Apr. 19, 2018) (the “Berkheimer Memo”) as support for the
proposition that Appellants’ Specification evidences that the particular
technology for the Official Notice was well understood, routine, and
conventional and, thus, an affidavit or declaration by the Examiner is
unnecessary. Id.
In reply, Appellants essentially stand on their arguments that the cited
art (including Official Notice) do not teach the combined limitations of
claim 23, that they properly traversed the Examiner’s Official Notice, and
reversal is in order because the Examiner has failed to either cite a
supporting prior art reference or else provide a supporting affidavit or
declaration. Reply Br. 13–17 (citing 37 C.F.R. § 1.104(d)(2); MPEP
§ 2144.03). Appellants’ arguments are persuasive.
As an initial matter, we note the Berkheimer memo relates to § 101
issues and is not particularly relevant to our inquiry under § 103. See
Berkheimer Memo, p.3 (“The question of whether additional elements
represent well-understood, routine, conventional activity [in the context of §
101] is distinct from patentability over the prior art under 35 U.S.C. §§ 102
and 103.”). We decline to use the Berkheimer memo as a basis for resolving
an issue regarding Official Notice under § 103.
As for the Official Notice, “[t]he examiner may take official notice of
facts outside of the record which are capable of instant and unquestionable
demonstration as being ‘well-known’ in the art.” In re Beasley, (quoting
MPEP § 2144.03 and citing In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970)
(stating the PTO may take judicial notice of facts “capable of such instant
and unquestionable demonstration as to defy dispute”)). Ahlert clarifies that
“[t]his rule is not, however, as broad as it first might appear, and this court
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will always construe it narrowly and will regard facts found in such manner
with an eye toward narrowing the scope of any conclusions to be drawn
therefrom.” 424 F.2d at 1091. Appellants fairly and reasonably disputed
that the state of the prior art is insufficiently clear in regards to the subject
matter of the Official Notice, both in the Response After Final Action (see
p. 16) (filed Sept. 7, 2017) and in the Appeal Brief (see p. 16). The recited
functionality that is the subject of the Official Notice does not meet the bar
of being “capable of such instant and unquestionable demonstration as to
defy dispute.” Ahlert, 424 F.2d at 1091; see also In re Eynde, 480 F. 2d
1364, 1370, (“[W]e reject the notion that judicial or administrative notice
may be taken of the state of the art. The facts constituting the state of the art
are normally subject to the possibility of rational disagreement among
reasonable men and are not amenable to the taking of such notice.”).
Accordingly, we do not sustain the rejection of claim 23.
DECISION
We affirm the Examiner’s decision to reject claims 1, 3–11, and 22
under 35 U.S.C. § 103(a).
We reverse the Examiner’s decision to reject to reject of claim 4, 12–
21, and 23 under 35 U.S.C. § 103(a).
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-IN-PART