Christopher Lee. Graham et al.

Patent Trials and Appeals Board

Jan 16, 2020

13555330 - (D) (P.T.A.B. Jan. 16, 2020)

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.
13/555,330 07/23/2012 Christopher Lee Graham 6934
7590 01/16/2020
Christopher Graham
11802 Turtle Gate Dr.
Houston, TX 77070
EXAMINER
MUHEBBULLAH, SAJEDA
ART UNIT PAPER NUMBER
2141
MAIL DATE DELIVERY MODE
01/16/2020 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 CHRISTOPHER LEE GRAHAM and JEFF WESTON JENKINS
________________

Appeal 2019-000628
Application 13/555,330
Technology Center 2100
____________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and CATHERINE
SHIANG, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 3–9 and 22. Claims 1, 2, and 10–21 have been
canceled (see Appeal Br. 10–11, Appendix of Claims). We have jurisdiction
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. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Christopher Graham (Appeal Br. 2).
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to a method and system for debating by
chatting in a virtual forum such as an on-line chatroom (Title; Abstract; see
Spec. ¶ 1). The disclosed invention is applicable to the fields of sports,
politics, and/or entertainment (Spec. ¶¶ 3, 4).
Claim 3 is illustrative of the appealed subject matter and reads, with
bracketed numbers/letters and emphases added, as follows:
3. A method of debating, comprising:
[A] selecting a competitor to support from a selection
provided by a virtual forum, wherein selecting a competitor to
support from a selection provided by a virtual forum comprises
a user selecting a primary competitor within an association of
competitors to support and a secondary competitor in a specific
competitive event to support, and
[B1] communicating in the virtual forum, wherein a visual
representation of the primary competitor and the secondary
competitor are displayed in the virtual forum adjacent to the
user’s name and proximate to the user’s communications to the
virtual forum [B2] so that others using the virtual forum can see
the visual representations of the user’s primary competitor and
secondary competitor.

The Examiner’s Rejections
(1) Claims 3–6, 8, 9, and 22 are rejected under pre-AIA U.S.C.
§ 103(a) as being unpatentable over Meredith (US 2011/0022450 A1; Jan.
27, 2011) and Dawson et al. (US 2010/0205545 A1; Aug. 12, 2010)
(hereinafter, “Dawson”)2 (Final Act. 2–4; Ans. 3–5).

2 Appellant primarily presents arguments as to independent claims 3 and 22,
which recite commensurate limitations. See Appeal Br. 4–9. Appellant does
not argue separately the patentability of dependent claims 4–6, 8, or 9. See
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(2) Claim 7 is rejected under pre-AIA U.S.C. § 103(a) as being
unpatentable over Meredith, Dawson, and Bou-Ghannam et al. (US
2007/0288560 A1; Dec. 13, 2007) (hereinafter, “Bou-Ghannam”) (Final Act.
4; Ans. 5).

ISSUE
Based on Appellant’s arguments presented in the Appeal Brief (see
Appeal Br. 4–9),3 the issue presented before us on Appeal is whether
Appellant has shown the Examiner erred in rejecting representative claim 3,
and thus claims 3–9 and 22 all rejected under § 103(a) over the same base
combination of Meredith and Dawson, as being unpatentable for
obviousness.

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 2–4; Ans. 3–
5) in light of Appellant’s contentions in the Appeal Brief (Appeal Br. 4–9)

Appeal Br. 6–9. Accordingly, we select claim 3 as representative of the
group of claims consisting of claims 3–6, 8, 9, and 22. See 37 C.F.R.
§ 41.37(c)(1)(iv). Because Appellant argues claim 7 on a similar basis as
claim 3 from which claim 7 depends, and the rejection of claim 7 relies on
the same base combination of Meredith and Dawson, we will decide the
outcome of claim 7 on the same basis as claim 3.
3 Notably, the Examiner makes additional explanation for the combination
(Ans. 7–8), including newly relying on paragraph 68 of Meredith as teaching
the “secondary competitor” recited in claim 3 (see Ans. 3, 6). Appellant has
not filed a Reply Brief or otherwise contested these findings and reasoning.
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that the Examiner has erred, as well as the Examiner’s response to
Appellant’s arguments in the Appeal Brief (Ans. 6–8). We disagree with
Appellant’s contentions. With regard to representative claim 3, we adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 2–4; see also Ans. 3–5) and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellant’s Appeal Brief (Ans. 6–8). We concur with the conclusions
reached by the Examiner, as well as the Examiner’s findings as to the
applied references. We provide the following for emphasis.
With respect to claim 3, Appellant argues (see Appeal Br. 7) the
Examiner has erred in relying on Meredith as disclosing or suggesting
limitation A, including “a user selecting . . . a secondary competitor.”
However, we agree with the Examiner’s findings (see Final Act. 2–3; Ans.
3, 6) that Meredith teaches or suggests selecting a secondary competitor with
the description of selecting a rivalry team 612 as shown and visually
represented in Figure 7 (Meredith ¶¶ 68, 72). Appellant has not presented
sufficient argument or evidence to rebut these findings regarding Meredith’s
teaching of a secondary competitor selection, or otherwise shown this aspect
of the rejection to be in error.
We also agree with the Examiner’s findings (Ans. 3, 6) that affiliation
section 610 shown in Figure 7 and described in paragraphs 60 and 71 (see
also Meredith ¶ 67) teaches or suggests the selection of a primary competitor
as recited in claim 3. In this light, we are not persuaded by Appellant (see
Appeal Br. 7) that the Examiner erred in relying on Meredith as teaching or
suggesting the disputed claim limitations recited in limitation A of claim 3.
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In general, Appellant’s arguments (Appeal Br. 6–8) are drawn to
Meredith and Dawson individually, and not to the combination articulated
by the Examiner. The Examiner (see Final Act. 2–3; Ans. 3–4) relies upon
Meredith for all of the subject matter of claim 3 except for the explicit
teaching of displaying visual representations as set forth in limitation B1.
And, as discussed above, the Examiner relies upon Dawson for teaching
these missing limitations (see generally Final Act. 3; Ans. 4). Thus,
Appellant’s contentions (Appeal Br. 7–9) that Meredith and Dawson
individually fail to disclose limitation B1 are not persuasive in light of the
Examiner’s application of a combination of the teachings and suggestions of
Meredith and Dawson. We note that each reference cited by the Examiner
must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (finding one cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
references). In this light, Appellant’s arguments (see Appeal Br. 7–8)
concerning the individual shortcomings in the teachings of Meredith and
Dawson are not persuasive, and are not convincing of the non-obviousness
of the claimed invention set forth in independent claim 3.
Appellant’s contentions that the Examiner (i) fails to support a
rational underpinning to support the conclusion of obviousness; (ii) has not
provided a compelling reason why someone would have combined the icons
of Dawson with the chat room of Meredith; and (iii) used hindsight
reconstruction to fill in the blanks, are not persuasive. The Examiner has
provided a factual basis and articulated reasoning with a rational
underpinning to support the conclusion of obviousness with regard to claim
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3 (see Final Act. 2–3; Ans. 3–4). See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). We agree with the Examiner that:
. . . Meredith does not teach the display of a visual representation
of a secondary competitor adjacent to the user’s name. Dawson
teaches a social networking environment wherein multiple visual
representations of the user’s associations are displayed adjacent
to the user’s name in the user’s communications (Dawson, Fig.2,
John Smith associated with icons 230c, 230d; para.42-47). It
would have been obvious to one of ordinary skill in the art to
include Dawson's teaching with Meredith's method in order to
quickly ascertain the various associations of the other
participants (Dawson, para.42, helpful to understand as much
about participant as quickly as possible).

Ans. 4. Notably, Appellant does not dispute the Examiner’s reasoning that
the combination would be obvious “in order to quickly ascertain the various
associations of the other participants” (Ans. 4). We also agree with the
Examiner’s further rationale for the combination provided at pages 7
through 8 of the Answer:
In particular, Dawson clearly teaches the visual representation of
a plurality of icons adjacent to a user’s name within a
virtual forum (Dawson, Fig.2, John Smith associated with icons
230c, 230d; para.42-47) and furthermore teaches that the icons
are not limited to the examples given but may be any suitable
types of icons (Dawson, para.47) wherein the icon definitions are
stored (Dawson, para.46). Therefore it would have been obvious
to modify Dawson’s icons to be related to teams, competitions,
or allegiances to teams or competitors and include with
Meredith's method in order to quickly ascertain the various
associations of the other participants (Dawson, para.42, helpful
to understand as much about participant as quickly as possible).

Ans. 7–8 (emphasis added). Again, Appellant has not presented sufficiently
persuasive argument or evidence to rebut these findings and reasoning
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regarding the motivation to combine, or otherwise shown this aspect of the
rejection to be in error. Accordingly, we disagree with Appellant’s
assertions (Appeal Br. 8–9) that there is no proper motivation to combine
Meredith and Dawson.
Appellant’s contention that the Examiner’s obviousness determination
is hinged upon impermissible hindsight is only supported by a conclusory
statement that the Examiner “used hindsight reconstruction to fill in the
blanks” (Appeal Br. 9). Appellant’s statement is unsupported by fact or
evidence, and arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Also, while not required to, Appellant has not submitted
evidence of secondary considerations. Evidence of secondary considerations
“may also serve a guard against slipping into use of hindsight.” Kahn, 441
F.3d at 986 (Fed. Cir. 2006) (quoting Graham v John Deere Co., 383 U.S. 1,
36 (1966)). Therefore, we accord very little probative value to Appellant’s
statements that combining the teachings of Meredith and Dawson required
more than ordinary skill in the art.
In view of the foregoing, Appellant’s contention (Appeal Br. 8–9) that
it would not have been obvious to combine Meredith and Dawson because
the Examiner’s reasoning involves hindsight is unconvincing.
Summary
Appellant has not shown the Examiner erred in rejecting
representative claim 3 as being unpatentable under 35 U.S.C. § 103(a). In
view of the foregoing, we sustain the obviousness rejection of representative
claim 3, as well as claims 4–6, 8, 9, and 22 grouped therewith as being
obvious over the base combination of Meredith and Dawson. For similar
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reasons, and because (i) Appellant relies on the arguments presented as to
claim 3 in arguing dependent claim 7; and (ii) claim 7 depends from claim 3,
we also sustain the remaining obviousness rejection of claim 7 over the base
combination taken with Bou-Ghannam.

CONCLUSION
For all of the reasons above, we hold as follows:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
3–6, 8, 9,
22
103(a) Meredith, Dawson 3–6, 8, 9,
22

7 103(a) Meredith, Dawson,
Bou-Ghannam
7
Overall
Outcome
3–9, 22

TIME PERIOD FOR 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). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).

AFFIRMED