Dale W. Malik

Patent Trials and Appeals Board

Apr 17, 2020

10184670 - (D) (P.T.A.B. Apr. 17, 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.
10/184,670 06/28/2002 Dale W. Malik 19487.370.4 4285
107193 7590 04/17/2020
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
04/17/2020 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE W. MALIK
Appeal 2018-007277
Application 10/184,670
Technology Center 3600
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and JOHN D. HAMANN,
Administrative Patent Judges.
DIXON, 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 22–41. Final Act. 1. 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 (2017). Appellant identifies the real party in interest as Facebook,
Inc. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to the presentation of contextual information
to users. Claim 22, reproduced below with emphasis, is illustrative of the
claimed subject matter:
22. A method comprising:
storing, at one or more servers, a first user profile
indicating information corresponding to one or more services
associated with a first user and a second user profile indicating
information corresponding to one or more services associated
with a second user;
detecting, using at least one processor of the one or more
servers, a communication between a first user device associated
with the first user and a second user device associated with the
second user;
accessing, using the at least one processor, the first user
profile and the second user profile based on the detected
communication;
comparing, using the at least one processor, the
information corresponding to the one or more services
associated with the first user profile to the information
corresponding to the one or more services associated with the
second user profile, the comparison yielding a difference
between the information corresponding to the one or more
services associated with the first user and the information
corresponding to the one or more services associated with the
second user;
providing, using the at least one processor, a notification
to the first user device associated with the difference, the
notification corresponding to contextual information associated
with the difference;
receiving a response input from the first user device in
response to the provided notification, the response indicating a
positive response for the notification; and
providing, using the at least one processor, the contextual
information to the first user based on the received response.
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REFERENCES
The prior art relied upon by the Examiner is:
Ram et al. US 6,625,258 B1 Sept. 23, 2003
Sollee et al. US 6,757,732 B1 June 29, 2004
Brisebois et al. US 6,853,711 B2 Feb. 8, 2005
REJECTIONS
Claims 22–41 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
Claims 22–35 and 37–41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ram in view of Brisebois.
Claim 36 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ram in view of Brisebois in further view of Sollee.
OPINION
I. 35 U.S.C. § 101
Appellant argues Claims 22–41 as a group. We select Claim 22 to
represent the group. See 37 C.F.R. § 41.37(c)(1)(iv).
a. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
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and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. USPTO’s January 7, 2019
Memorandum, 84 Fed. Reg. 50, 2019 Revised Patent Subject Matter
Eligibility Guidance (“Memorandum”). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h)).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
a. Examiner’s Findings and Conclusions
For Step 2A of the two-part framework, the Examiner maintains that
Claim 22 is at least directed towards the abstract idea of “providing
contextual information about communication devices and/or services based
on comparing users profiles.” Final Act. 8 (emphasis omitted). The
Examiner finds the “comparing” limitation of Claim 22 is directed to “a
series of calculations and organizing data based on calculated values,” which
is similar to the abstract ideas found in Flook, Diehr, Mackay Radio, and
Digitech.2 Final Act. 8, 9. The Examiner further maintains that Claim 22 is
additionally directed towards “comparing new and stored information and
using rules to identify options” and “collecting information, analyzing it, and
displaying certain results,” which are ideas found to be abstract in Smart

2 Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86
(1939); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
1344 (Fed. Cir. 2014).
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Gene and Electric Power Group, respectively.3 Final Act. 9; Ans. 4
(emphasis omitted). The Examiner further maintains that Claim 22 is not
directed towards “a concrete improvement for computer network systems
and electronic communication systems.” Ans. 3 (emphasis omitted). The
Examiner additionally maintains that Claim 22 “at best improve[]s [] the
performance of the abstract idea.” Ans. 6. Moreover, distinguishing the
facts in McRO from the limitations of Claim 22, the Examiner maintains that
the computer components of Claim 22 are simply used to automate the steps
of the abstract idea and not improve the functioning the computer itself.4
Ans. 8.
For Step 2B of the two-part framework, the Examiner finds that the
terms “server” and “processor” of Claim 22 individually “represent data
description steps as inputs to the abstract idea and/or insignificant post-
solution activity” and are “[g]eneric computer components . . . that are well-
understood, routine and conventional.” Final Act. 9; Ans. 3. The Examiner
finds that “the computing elements recited in [A]ppellant’s claims are
merely generic in nature and are insufficient to shift the focus or thrust of
Appellant’s invention.” Ans. 8. The Examiner further finds that the
limitations of Claim 22 do not include significantly more than the abstract
idea because they “simply . . . attempt to limit the abstract idea to a
particular technological environment.” Final Act. 9. The Examiner also
finds that the limitations of Claim 22, when viewed as a combination,

3 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950
(Fed. Cir. 2014); Elec. Power Grp, LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016).
4 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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“implement the abstract idea with high-level, generic technology executing
routine functions” and show “a high level of preemption.” Final Act. 9.
Based on the Examiner’s findings that Claim 22 is directed towards an
abstract idea and does not include significantly more than the abstract idea,
the Examiner concludes that Claim 22 is directed to an abstract idea and thus
patent-ineligible subject matter. Final Act. 9; Ans. 10. Based on this
conclusion, the Examiner further concludes that the Claims 23–41 are also
ineligible for patenting. Final Act. 9; Ans. 10.
b. Appellant’s Arguments
For Step 2A of the two-part framework, Appellant argues that the
claims are not directed towards an abstract idea because the Examiner has
failed to articulate an abstract idea to which the claims are directed, the
claims are directed to a specific improvement in computer technology, and
the Examiner has oversimplified the claims. Appeal Br. 13, 15, 17.
In this light, Appellant initially argues that the Examiner has
improperly relied upon SmartGene because SmartGene is not precedential
and the Examiner has not shown how the claims uniquely match
SmartGene’s facts.5 Appeal Br. 13, 14. Appellant subsequently argues that
the abstract idea identified by the Examiner (e.g., “providing contextual
information about communication devices and/or services based on
comparing users profiles”; see Final Act. 8) “is not a judicially recognized
abstract idea.” Appeal Br. 14.

5 Under the prior guidelines, the USPTO instructed, “examiners should
avoid relying upon or citing non-precedential decisions (e.g., SmartGene,
Cyberfone) unless the facts of the application under examination uniquely
match the facts at issue in the non-precedential decision.” See, e.g.,
November 02, 2016 USPTO Memorandum at 4.
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Appellant additionally argues that the claims can be analogized to
those of Enfish and, thus, because Appellant’s claims “focus on an
improvement to computer functionality,” they cannot include abstract ideas.6
Appeal Br. 16. Appellant argues the claims improve technology by
“reduc[ing] the computer resource cost of generating and sending
notifications . . . by only providing notifications . . . at a time when a user’s
interest in a particular communication service is heightened.” Id. Appellant
further contends, the “claimed invention is more discerning in determining
when to send notifications” and, accordingly, “reduces overall computer
resource requirements in transmitting and storing notifications over
conventional notification systems.” Reply Br. 3.
Appellant additionally argues that the Examiner “overgeneralizes the
claims and minimizes the significance of some claim features.” Appeal Br.
18. In this light, Appellant concedes that the claims include “calculations,”
but argues that such “calculations” are “not the thrust of the claims.” Appeal
Br. 18; Reply Br 4. Appellant argues that the Examiner’s analysis “could
arguably be applied to all software claims.” Reply Br. 7.
For Step 2B of the two-part framework, relying on DDR, Appellant
argues that the claims cover “a concrete invention because they solve a
problem unique to computer networks and present a solution ‘necessarily
rooted in computer technology’” and, thus, recite “significantly more than
the abstract idea itself.”7 Appeal Br. 20, 21. Appellant reasons the
“independent claims address a problem that could not exist outside of a
computer network application, namely providing an electronic notification

6 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014).
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of communication service information to a user engaged in digital
communications with another user.” Appeal Br. 20. Relying on BASCOM,
Appellant further argues, the “claims likewise recite an ordered combination
of limitations whose arrangement yields an inventive concept.”8 Appeal Br.
21. Specifically, Appellant argues, the “claims require storing user profile
information, detecting communications that take place between computing
devices, providing a notification to a computing device, and receiving user
input from a computing device in response to the notification.” Appeal Br.
23. Appellant additionally argues, the claims “combine features of separate
known tools and avoid the drawbacks of using the known tools
independently.” Reply Br. 3. Appellant further argues that the steps of the
claims demonstrate that Appellant’s claims “inextricably tied to a computing
environment” and, thus, “recite significantly more than any abstract idea.”
Reply Br. 10, 11. Thus, Appellant contends that even assuming, arguendo,
that the claims are directed to an abstract idea, the claims recite significantly
more and the claims are patent eligible. Appeal Br. 23.
c. Discussion
i. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). We, therefore, conclude the emphasized portions of claim
22, reproduced above (see supra at 2), recite concepts performed in the
human mind including observation, evaluation, judgment, and opinion
because Claim 22 requires observation (e.g., detecting a communication

8 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016).
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between a first user and a second user), evaluation (e.g., accessing the first
user profile and the second user profile), and judgment/opinion (e.g.,
comparing information from first user profile and the second user profile to
determine a difference between services associated with each user).
According to the Memorandum, concepts performed in the human mind fall
into the category of mental processes. Mental processes have been held to
be abstract ideas. See id. Moreover, those certain methods of organizing
human activity are a type of an abstract idea. See id.; see also Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (“[A]bstract idea of . . . collecting data . . .
recognizing certain data within the collected data set . . . storing that
recognized data in a memory”).
We agree with the Examiner’s conclusion that Claim 22 recites an
abstract idea. Final Act. 9; Ans. 9. We, therefore, disagree with Appellant’s
argument that the Examiner fails to clearly identify an abstract idea. Appeal
Br. 13; Reply Br. 5. Because Claim 22 recites concepts performed in the
human mind that fall into the abstract idea category of mental processes, we
proceed to Step 2A, Prong 2.
ii. Step 2A, Prong 2
We agree with the Examiner’s conclusions that Claim 22 includes
limitations that merely implement the abstract idea and correspond to
insignificant extra-solution activity. Final Act. 9; Ans. 3. We find that the
“storing . . . ,” “providing . . . ,” and “receiving . . .” limitations correspond
to insignificant extra-solution activity (pre-solution and post-solution)
activity akin to those identified in Electric Power Group. See Elec. Power
Grp, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). For example, we
find that the “storing . . .” limitation is “devoted to enumerating types of
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information and information sources available within” a communications
environment, which corresponds to pre-solution activity. Id. at 1355.
Similarly, we find that the “providing . . . ” and “receiving . . . ” limitations
are for selecting information and outputting information, do “nothing
significant to differentiate a process from ordinary mental processes,” and,
essentially, correspond to post-solution activity. Id. Moreover, even though
Claim 22 recites “one or more servers” and “using at least one processor,”
we find that these are generic computer components that are simply used to
implement the abstract idea. It is well established that “‘generic computer
implementation’ is insufficient to transform a patent-ineligible abstract idea
into a patent-eligible invention.” Affinity Labs of Tex., LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1262–63 (Fed. Cir. 2016) (citing Alice, 573 U.S. at
212, 221).
Thus, we conclude the “storing . . .,” “providing . . .,” and “receiving
. . .” limitations do not impose “a meaningful limit on the judicial exception,
such that the claim is more than a drafting effort designed to monopolize the
exception” (see Memorandum, 53) and, accordingly, do not integrate the
abstract idea into a practical application.
Therefore, because Claim 22 recites concepts performed in the human
mind that fall into the abstract idea category of mental processes and does
not integrate those concepts into a practical application, we proceed to Step
2B.
iii. Step 2B
We are not persuaded by Appellant’s argument that the claims recite
significantly more than the abstract idea itself. Further, as in Step 2A, Prong
2, discussed above, we agree with the Examiner’s conclusions that Claim 22
includes limitations that merely implement the abstract idea and correspond
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to insignificant extra-solution activity. Final Act. 9; Ans. 3.
As also discussed in the section above, we find that the “storing . . .,”
“providing . . .,” and “receiving . . .” limitations correspond to pre-solution
and post-solution activity. Moreover, we do not find any elements within
Claim 22 beyond the abstract idea that reveal an inventive concept. Instead,
we agree with the Examiner that Claim 22 includes computer components
that are generic and are “well-understood, routine and conventional.” Final
Act. 9; Ans. 3. Furthermore, as in TLI Communications LLC, we recognize
that the server and processor of Claim 22 “behave exactly as expected
according to their ordinary use.” See In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607, 615 (Fed. Cir. 2016). Additionally, Appellant’s Specification
even suggests that the personal computer of the invention was previously
known and could have been easily exchanged with other computer systems.
See Spec. 12. Thus, we conclude the additional “storing . . . ,” “providing . .
. ,” and “receiving . . .” limitations do not provide significantly more than the
abstract idea itself, and the claims do not recite an ordered combination of
limitations whose arrangement yields an inventive concept.
Therefore, because Claim 22 recites concepts performed in the human
mind that fall into the abstract idea category of mental processes, do not
integrate those concepts into a practical application or into an inventive
concept, we conclude Claims 22–41 are ineligible for patenting. Because
Appellant has not argued the claims separately, we group Claims 23–41 as
falling with representative Claim 22.

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II. 35 U.S.C. § 103
Appellant argues Claims 22–29 and 31–41 as a group and argues
Claim 30 separately. We select Claim 22 to represent the group. See 37
C.F.R. § 41.37(c)(1)(iv).
a. Claims 22–29 and 31–41
The Examiner finds that Ram teaches all of the limitations of Claim
22 except for the “notification corresponding to contextual information
associated with the detected difference,” “receiving a response” and
“providing . . . the contextual information” limitations. Final Act. 11, 12.
For example, the Examiner finds Ram discloses:
an embodiment where caller X using telephone 120 places a call
to subscriber A, using subscriber A’s VAS telephone number.
The telephone network 114 routes the call from telephone 120 to
the VAS 102. The VAS 102 receives the call and accesses an
active reach list for subscriber A. Based upon the content of the
reach list, the VAS 102 determines that subscriber A may be
contacted at telephone 110. Thus, the VAS 102 initiates a call to
subscriber A at telephone 110. If subscriber A answers, the VAS
102 announces the caller with a recording of the caller’s name
(which is collected when the caller calls the subscriber) and asks
subscriber A whether he or she desires to receive the call. If
subscriber A elects to receive the call, the VAS 102 establishes a
voice path between the caller at telephone 120 and subscriber A
at telephone 110. In one operation, the call is routed through the
VAS 102 and this routing is retained until the call is completed.
However, in another operation, the VAS 102 completes the call
via the telephone network 114 and then releases the call to the
telephone network 114, which then optimally routes the call. If
subscriber A is unavailable, or elects not to receive the call, the
VAS 102 routes the call to a voice mail service of the message
services 106 so that the caller may leave a message. If a message
is left, the VAS 102 may then send a notification to subscriber A
in the form of a page, email message, or other notification
communication.

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Ans. 10 (citing Ram column 5, lines 16–67), 11; see also Final Act. 11, 12
(citing Ram column 4, lines 50–67; column 5, lines 1–21 and 44–67; column
6, lines 1–10; column 8, lines 22–24; column 11, lines 25–31; and column
13, lines 1–15) (finding additional examples).
The Examiner further finds that Brisebois teaches the missing the
limitations. The Examiner points to column 3, lines 1–28, and column 4,
lines 28–42 of Brisebois to support the Examiner’s findings.
Based on these findings, the Examiner maintains that combining Ram
and Brisebois would have “yielded predictable results and resulted in an
improved system.” Final Act. 12. The Examiner further contends that one
skilled in the art would have been motivated to combine the references
because doing so would result “in increasing marketability and brand
recognition and garner additional revenue.” Id. The Examiner further
maintains that the combination essentially combines known “elements” that
function the same combined as uncombined, but that combination benefits in
“effectively targeting consumers while increasing marketability.” Id.
In response, Appellant argues, “[n]o portion of Ram teaches or
suggests a comparison of user profiles . . . all Ram teaches is the concept of
an active reach list.” Appeal Br. 27. Appellant also argues, “Ram makes no
mention of comparing reach lists or user profile information, much less
comparing communication services of one user versus those of another
user.” Appeal Br. 28; Reply Br. 12, 13. Further, Appellant recognizes the
scenario cited by the Examiner in the Answer (see supra at 13), but argues
that this scenario does not teach “a comparison of profile information
pertaining to communication services of two users communicating with each
other.” Appeal Br. 28. Appellant further argues, “the claimed invention
determines a difference between communication services of one user and
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communication services of another user,” but Ram does not teach
identifying “a discrepancy between communication services of one user
versus communication services of another user.” Id. Appellant additionally
argues, “Ram fails to teach or suggest a notification associated with the
difference between the communication services of one user versus those of
another user.” Appeal Br. 29, 30 (boldface omitted).
We are persuaded by Appellant’s arguments. We agree that Ram does
not teach or fairly suggest the claimed:
comparing, using the at least one processor, the
information corresponding to the one or more services associated
with the first user profile to the information corresponding to the
one or more services associated with the second user profile, the
comparison yielding a difference between the information
corresponding to the one or more services associated with the
first user and the information corresponding to the one or more
services associated with the second user.

Ram discloses a system that allows users to communicate through a
virtual assistant system (VAS). See Ram, Abstract, Figure 1. According to
Ram, each user is provided with a profile that contains, inter alia, the
respective user’s contact information and “a plurality of reach lists for the
subscriber, each reach list including a set of contact numbers/addresses for
the subscriber.” See Ram, column 4, line 60–column 5, line 5. Based on
these reach lists and users’ schedules, “the VAS routes communications and
messages to the subscriber and also notifies the subscriber of incoming
communications.” See Ram, column 5, lines 7–10. According to Ram, “the
VAS provides single-number access for the subscriber, independent of the
subscriber’s physical location or communication contact path.” See Ram,
column 5, lines 13–15. Ram’s system is advantageous in that each user does
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not need to carry multiple devices and subscribe to multiple systems. See
Ram, column 2, lines 52–63. However, the Examiner has not persuasively
shown that Ram teaches or suggests that user’s profile are compared to
determine a difference between the information corresponding to the one or
more services associated with the first user and the information
corresponding to the one or more services associated with the second user.
Furthermore, the Examiner has not relied upon the teaching of Brisebois and
Sollee and the Examiner has not identified that Brisebois and Sollee teach or
suggest these limitations. Therefore, we reverse the Examiner’s rejection of
Claims 22–29, 31–35, and 37–41, as well as the Examiner’s rejection of
Claim 36.
b. Claim 30
Claim 30 directly depends from dependent Claim 29, which directly
depends from independent Claim 22. Therefore, because we have reversed
the Examiner’s rejections of Claims 22 and 29, we also reverse the
Examiner’s rejection of Claim 30 for the same reasons.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22–41 101 Eligibility 22–41
22–35, 37–41 103(a) Ram, Brisebois 22–35, 37–
41
36 103(a) Ram, Brisebois, Sollee 36
Overall
Outcome
22–41

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED