CORPORATION, INTERNATIONAL BUSINESS MACHINES

Patent Trials and Appeals Board

Nov 24, 2020

2019003459 (P.T.A.B. Nov. 24, 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.
13/733,207 01/03/2013 IZIDOR JAGER DE920110067US1_8150-0328 6545
52021 7590 11/24/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
SAEED, USMAAN
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IZIDOR JAGER, MICHAEL JUNGINGER,
ANDREAS NAUERZ, and THOMAS STEINHEBER
Appeal 2019-003459
Application 13/733,207
Technology Center 2100

Before JEFFREY S. SMITH, DANIEL J. GALLIGAN, and
NABEEL U. KHAN, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 10–18, and 20–25.2 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(a). Appellant identifies the real party in interest as IBM Corporation.
Appeal Br. 1.
2 The Examiner withdrew the rejection of claims 1–25 as directed to
ineligible subject matter under 35 U.S.C. § 101. Ans. 3. Consequently,
there is no pending rejection for claims 9 and 19. See Final Act. 19.
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CLAIMED SUBJECT MATTER
Claims 1, 11, and 21 are independent claims. Claim 1 is reproduced
below.
1. A method of tagging a resource in a network with a tag
belonging to a tag type, the method comprising:
creating, using a processor, a tag and relating the tag to
the resource;
categorizing the tag into a tag type;
registering the tag type in a registry;
associating tag type attributes to the tag type;
associating a subset of the tag type attributes of the tag
type to the tag;
associating a tag type attribute value to each member of
the subset of the tag type attributes of the tag;
storing the tag, the tag type, the subset of tag type
attributes of the tag, and associated tag type attribute values;
and
triggering, using the processor, a dynamically linkable
executable program logic based on the subset of tag type
attributes and the tag type attribute values.
REJECTIONS
Claims 1, 2, 4–8, 10–12, 14–18, 20–22, 24, and 25 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over John (US
2012/0072845 A1, Mar. 22, 2012) and Fitzgerald (US 2008/0133486 A1,
June 5, 2008). Final Act. 8–17.3
Claims 3, 13, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over John, Fitzgerald, and Boies (US 7,076,463 B1, July 11,
2006). Final Act. 17–19.

3 Although the Examiner lists claims 1–8 and 10–25 as being rejected in this
ground, claims 3, 9, 13, 19, and 23 are not addressed in the ground.
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Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(1)(iv) and 41.39(a)(1).
OPINION
The first step of claim 1 recites “creating . . . a tag and relating the tag
to the resource.” The next step recites “categorizing the tag into a tag type,”
and, Appellant gives an example of this step: “tag T has a tag type of A.”
Reply Br. 7. Claim 1 further recites “associating tag type attributes to the
tag type,” which, according to Appellant’s example, means that “tag type A
has a number X of tag type attributes {A1, A2, A3, A4, A5, A6, A7}
associated therewith.” Reply Br. 7. Claim 1 further recites “associating a
subset of the tag type attributes of the tag type to the tag,” which according
to Appellant means that “a subset {e.g., A1, A3, A5, A7} having number Y
(Y < X) of the tag type attributes for tag type A is associated with tag T.”
Reply Br. 7.
We generally agree with Appellant’s characterization of the steps of
claim 1 discussed above, but Appellant goes on to say that “the claim
limitations reduce[] the number of tag type attributes by only assigning a
subset of these tag type attributes of the tag type to the tag.” Reply Br. 8.
We disagree with this assertion. Under Appellant’s characterization of the
claim, “tag T has a tag type of A,” which “has a number X of tag type
attributes {A1, A2, A3, A4, A5, A6, A7} associated therewith.” Reply
Br. 7. Thus, tag T, being of tag type A, has “associated therewith” all of
attributes A1–A7 in Appellant’s example. This is confirmed by the
Specification, which explains that “‘categorizing a tag’ may denote a process
of relating a tag to a specific tag type.” Spec. ¶ 29. Although claim 1
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further recites “associating a subset of the tag type attributes of the tag type
to the tag,” claim 1 does not undo the previous steps of the claim that
actually associate all of the attributes of the tag type to the tag. Thus, we
disagree with Appellant’s assertion that the claim “only assign[s] a subset of
these tag type attributes of the tag type to the tag.” See Reply Br. 8
(emphasis added). By claim 1’s operation, the full set of attributes and a
subset of the attributes are associated with the tag. For the reasons explained
below, we are not persuaded of error in the Examiner’s conclusion that this
subject matter would have been obvious.
The Examiner finds that John teaches tagging a media event and
selecting a tag type for the tag. Final Act. 8–9 (citing John ¶¶ 21, 23, 64, 68,
Fig. 8). John discloses that users can tag media events and “can generate a
tag type or select a tag type from a list of predefined or suggested types.”
John ¶ 21. For the claim limitation reciting “associating tag type attributes
to the tag type,” the Examiner relies on John’s disclosure that “a user can
assign one tag a type of ‘editorial’. A second user refines that tag type with
another tag type ‘positive’. A third user can refine one or both of those tag
types with the tag type ‘funny’.” John ¶ 69, cited in Final Act. 9. Based on
this disclosure, the Examiner makes the following findings:
In . . . paragraph [0069] of John . . ., the word “attribute” is not
used and the phrase “tag type” is used. The words “positive”
and “funny,” however, function as attributes of the tag type
“editorial” although they are called tag types. Thus, the
complex tag type of John, such as “editorial,” functions as a
type. Also, the primitive tag type of John, such as “positive” or
“funny,” functions as a tag type attribute.
Final Act. 9.
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For the limitation reciting “associating a subset of the tag type
attributes of the tag type to the tag,” the Examiner relies on Fitzgerald’s
disclosure of using “tag algebra” to generate a subset of database records,
and the Examiner finds that “a person of ordinary skill in the art would have
been motivated to have generated subsets of database records for tags and
implemented a tag-based filtering system because tags are frequently used
for classification and implementation purposes.” Final Act. 11 (citing
Fitzgerald ¶¶ 22, 32, 33), 14.
Appellant makes various arguments that are unpersuasive because
they fail to appreciate the combined teachings of John and Fitzgerald. For
example, Appellant argues that Fitzgerald alone does not teach “associating
a subset of the tag type attributes of the tag type to the tag,” specifically
arguing how various disclosures of Fitzgerald do not teach “tag type,” “tag
type attributes,” and a “subset of tag type attributes.” Appeal Br. 16–22.
The Examiner, however, relies on Fitzgerald’s teachings in combination
with John’s teachings of “tag type” and “tag type attributes.” See Final
Act. 8–9, 11, 14. Appellant asserts that, in a previous appeal of this
application (Appeal 2016-005058), “the Board did not agree with the
Examiner’s findings regarding John’s teachings” for the limitation reciting
“associating tag type attributes to the tag type.” Appeal Br. 16. We disagree
because, as the Examiner correctly points out (Ans. 3–4), the previous
decision of the Board reversed the rejection based on the Examiner’s
explanation for the “associating a subset” limitation. Appeal 2016-005058
Decision, 8–9.
As noted above, the Examiner finds that “the complex tag type of
John, such as ‘editorial,’ functions as a type. Also, the primitive tag type of
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John, such as ‘positive’ or ‘funny,’ functions as a tag type attribute.” Final
Act. 9. Appellant did not challenge this finding in the Appeal Brief; rather,
Appellant argues for the first time in reply that the Examiner erred in this
finding. Reply Br. 8–10. According to Appellant, “[t]he Examiner’s
response fails to address Appellants’ arguments in the First Reply Brief that
the Examiner improperly alleges that ‘primitive tag types correspond to tag
type attributes of claim 1.’” Reply Br. 8. The “First Reply Brief” appears to
refer to a reply brief filed by Appellant in the previous appeal of this case
(Appeal 2016-005058). That brief is not before us in this appeal. The
Examiner made the relevant finding in the Final Action from which this
appeal is taken, and Appellant did not address it in the Appeal Brief.
Therefore, this argument in the Reply Brief is untimely and is waived. See
37 C.F.R. § 41.41(b)(2). We need not rely on the Examiner’s findings as to
how Fitzgerald teaches “associating tag type attributes to the tag type” (see
Final Act. 12–13) because we are not persuaded of error in the Examiner’s
finding that John teaches this subject matter.
Appellant argues that “[t]he alleged fact that certain limitations are
shared is not prima facie evidence of a motivation to combine these
elements.” Reply Br. 3. Appellant also argues that “[i]dentifying shared
elements is not a rational underpinning for a particular combination.” Reply
Br. 4. Although the Examiner notes similarities between John and
Fitzgerald (see, e.g., Final Act. 14 (“John and Fitzgerald both are directed
towards use of tag types especially in the triggering or calling of program
code.”)), the Examiner separately finds that “a person of ordinary skill in the
art would have been motivated to have generated subsets of database records
for tags and implemented a tag-based filtering system because tags are
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frequently used for classification and implementation purposes.” Final
Act. 11 (citing Fitzgerald ¶¶ 22, 32, 33), 14. Appellant does not address this
finding, and, therefore, we are not persuaded of error in the Examiner’s
motivation to combine the prior art.
Furthermore, the claimed step of “associating a subset of the tag type
attributes of the tag type to the tag” does not specify any particular manner
of associating or even what “associating” entails. We are not persuaded of
error in the Examiner’s conclusion that it would have been obvious to a
person of ordinary skill in the art to associate with the tag a subset, i.e.,
fewer than all, of the attributes that are already associated with the tag by
virtue of the previous steps of the claim. See Final Act. 13–14. As
evidenced by Fitzgerald, generating subsets of data was known in the art.
Fitzgerald ¶ 33, cited in Final Act. 11. We are not persuaded that generating
a subset of the particular type of claimed data, tag type attributes, which are
already associated with the tag as discussed above, would have been
“uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007).
Appellant also argues that the Examiner erred in finding that John
teaches “associating a tag type attribute value to each member of the subset
of the tag type attributes of the tag.” Appeal Br. 22–29; Reply Br. 9–10. In
particular, Appellant disputes the Examiner’s finding that the content of the
editorial in John teaches an attribute value, and Appellant argues that, in
John, the editorial content is the resource to which the tag is attached, and,
therefore, the editorial content cannot be both the resource and the attribute
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value in the claim. Appeal Br. 27; Reply Br. 9–10. Referring to
paragraph 42 of the Specification, Appellant argues the following:
The Examiner appears to not appreciate how “values” are
ultimately implemented in a computer system. Specifically,
while “color,” “tag blinking,” and “font type” are all possible
tag type attributes, the values associated with these attributes
would necessarily be converted, at some point, by the computer
system into numerical values (e.g., 1 = red, 2 = blue, 3 = green
or 0 = blinking and 1 = not blinking) since the computer uses
these numbers to control the operation of the display. The
“content” of John, however, is more akin to nonfunctional
descriptive material that is useful and intelligible only to the
human mind and not to a computer.
Appeal Br. 25 (emphasis added). Appellant further argues that the Examiner
has impermissibly relied on the editorial to teach both the claimed
“resource” and the “tag type attribute value.” Appeal Br. 27.
In response to Appellant’s argument, the Examiner explains that the
content of the editorial would be a numerical value under Appellant’s
reasoning because “anything stored in computer memory, including media
content, must, at some point, be converted to binary values which are
numerical values.” Ans. 9. We agree with the Examiner on this point
because, according to Appellant, information “would necessarily be
converted, at some point, by the computer system into numerical values.”
See Appeal Br. 25. As to Appellant’s argument that the Examiner is relying
on the same disclosure in John to teach both the resource and the attribute
value in the claim, the Examiner relies on John’s media event to teach the
resource (Final Act. 8), and John also discloses “content of the associated
media event.” John ¶ 21. Thus, according to John, the media event and its
content are two different items. We are not persuaded of error in the
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Examiner’s finding that content of the media event teaches “a value that may
be related to an attribute,” as Appellant’s Specification broadly discusses the
term “tag type attribute value.” Spec. ¶ 34. We also are not persuaded by
Appellant’s argument that John’s “content” is a single value whereas the
claim requires storing plural “associated tag type attribute values” (Appeal
Br. 26) because the Examiner finds that the value is associated with each of
the tag type attributes of the subset (Ans. 9), and the claim does not require
storing multiple different tag type attribute values.
Furthermore, even if the claim required different numerical values to
be associated with each of the tag type attributes, we are not persuaded that
this would have been anything other than routine data manipulation and
storage to a person of ordinary skill in the art. Indeed, John discloses that
“[t]ags can include . . . a number rating.” John ¶ 9. We do not see how
associating a number rating to the tag type attributes would have been
“uniquely challenging or difficult for one of ordinary skill in the art” given
John’s disclosure. See Leapfrog, 485 F.3d at 1162.
Accordingly, we are not persuaded the Examiner erred in concluding
that the subject matter recited in claim 1 would have been obvious to a
person of ordinary skill in the art based on the teachings of John and
Fitzgerald. Appellant does not address the remaining claims separately, and,
therefore, we sustain the Examiner’s rejections of claims 1–8, 10–18,
and 20–25.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–8,
10–12, 14–
18, 20–22,
24, 25
103(a) John, Fitzgerald 1, 2, 4–8,
10–12, 14–
18, 20–22,
24, 25

3, 13, 23 103(a) John, Fitzgerald,
Boies
3, 13, 23
Overall
Outcome
1–8, 10–18,
20–25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED