Dev Melepura

Patent Trials and Appeals Board

Dec 30, 2021

2020003047 (P.T.A.B. Dec. 30, 2021)

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.
15/375,605 12/12/2016 Dev Melepura 4887
144440 7590 12/30/2021
Dev Melepura
85-39 257th Street
Floral Park, NY 11001
EXAMINER
SISON, JUNE Y
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
12/30/2021 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 DEV MELEPURA
Appeal 2020-003047
Application 15/375,605
Technology Center 2400
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, 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, 9, 10, 12, and 14–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Dev Melepura. Appeal
Br. 2.
Appeal 2020-003047
Application 15/375,605

2
CLAIMED SUBJECT MATTER
The claims relate to “online matchmaking systems.” Spec. ¶ 1.2 The
Specification describes that online “matchmaking services have become
increasingly prevalent” in recent years, and that known “matchmaking
services allow users to input their own personal profile information and then
browse the service for suitable matches.” Spec. ¶ 2–3. The Specification
indicates that these known matchmaking services “have failed to provide

2 Unless otherwise noted, our citations to the Specification (“Spec.”) are in
reference to the originally filed Specification, filed December 12, 2016. The
originally filed Specification was filed without drawings or an abstract. The
Office issued a Notice to File Corrected Application papers on
December 21, 2016. Appellant did not receive the Notice, and the
application fell abandoned. Appellant successfully petitioned to withdraw
the holding of abandonment, and Appellant filed a response to the Notice on
January 23, 2018. The response included an abstract, new drawings, and
new paragraphs 33–44 in the description. In an Office Action issued on
October 24, 2018, the Examiner objected to the added drawings and
paragraphs 33–44 in the description as improperly adding new matter under
35 U.S.C. § 132(a), and required cancellation of that subject matter. In a
response filed December 5, 2018, Appellant amended the Specification to
remove paragraphs 33–44, but the drawings remained. The objection to the
drawings was maintained, and the requirement to delete the drawings was
made final in an Office Action issued March 11, 2019. On March 26, 2019,
Appellant filed an amendment cancelling the drawings. Although the
amendment was not initially entered by the Examiner, in a subsequent non-
final Office Action issued on June 25, 2019, the Examiner indicated that the
amendment to the drawings was entered, and the drawings were no longer
part of Appellant’s application. As a result of this amendment, the contents
of the Specification reverted substantially back to the contents of the
originally filed Specification of December 12, 2016. As such, our references
to the Specification, unless noted otherwise, refer to the originally filed
version. We note that the written description issues stemming from
objections to new matter under 35 U.S.C. § 132(a) addressed below refer to
Specification amendments presented a subsequent Office Action response.
Appeal 2020-003047
Application 15/375,605

3
matching services through an individual’s own personal social network that
have somewhat been happening traditionally in the real world,” such as
when “an individual speaks to a potential match that was brought to a social
gathering by a friend of that individual.” Spec. ¶ 4. According to the
Specification, “[s]eeking potential matches through one’s own social
networks can provide a level of security and trust that users cannot attain
from meeting total strangers through online matchmaking services.” Id.
Appellant’s disclosed invention provides a “social based online
matchmaking system that lets a user view, click interested, click not
interested, and if there is a mutual interest message profiles of matches from
the user’s second to third degree of connection.” Spec. ¶ 6. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method for a social based online
matchmaking system matching users with a user having an
online social networking account, the system comprising:
enabling the user to register for a user account;
linking the user account with the online social networking
account;
enabling the user an ability to input additional profile data
into the social based online matchmaking system;
enabling the user an ability to invite additional users to
join the social based online matchmaking system, wherein the
online social networking account includes a plurality of first
degree connections such that if an additional user of the
additional users is a first degree connection from the plurality of
first degree connections or the additional user has already joined
the social based online matchmaking system, the first degree
connection will become a first degree connection on the social
based online matchmaking system;
wherein the second degree connections and the third
degree connections are linked via at least one of a plurality of
Appeal 2020-003047
Application 15/375,605

4
connected accounts on the social based online matchmaking
system;
wherein the user is operable to freely message the first
degree connection on the social based online matchmaking
system, and reply to any active messages provided in the user's
message box;
receiving the user’s preference criteria for a match;
receiving the user’s click of interested for a match and a
match’s click of interested for the user, wherein the social based
online matchmaking system is configured to determine a mutual
interest between the user and the match, wherein the click of
interested is an act of selecting an interested option on an
electronic interface;
receiving the user’s mini-profile and matching-profile,
wherein the mini-profile just includes a profile picture, a name,
and a message button, and the matching-profile includes all
profile data inputted into the social based online matchmaking
system by the user; and
wherein the user could either be a first degree connection,
a shortlisted first degree connection, a second degree connection,
a third degree connection or a beyond connection to another on
the social based online matchmaking system, wherein the beyond
connection is greater than and beyond the third degree
connection.
Appeal Br. 42–43 (Claims Appendix).
REJECTIONS
Claims 1, 9, 10, 12, and 14–20 stand rejected under 35 U.S.C.
§ 112(a) for lack of written description because amendments to the
Specification made by Appellant are objected to under 35 U.S.C. § 132 for
introducing new matter into the disclosure. Final Act. 3–5.
Claims 1, 9, 10, 12, and 14–20 stand rejected under 35 U.S.C.
§ 112(a) for lack of written description and § 112(b) for indefiniteness
Appeal 2020-003047
Application 15/375,605

5
because they recite means plus function limitations that invoke 35 U.S.C.
§ 112(f), but the written description fails to disclose adequate corresponding
structure for performing the recited functions. Final Act. 5–7.
Claims 1, 9, 10, 12, and 14–20 stand rejected under 35 U.S.C.
§ 112(b) as being indefinite for lack of clarity. Final Act. 7–9.
Claims 1, 9, 10, 12, and 14–20 stand rejected under 35 U.S.C.
§ 112(b) as being indefinite because phrase “the system comprising” at the
conclusion of the preamble makes the scope of the claim unclear. Final
Act. 9–10.
ISSUES
First Issue: Has the Examiner erred in finding that Appellant’s
amendments to the Specification add new matter in violation of 35 U.S.C.
§ 132?
Second Issue: Has the Examiner erred in determining the pending
claims recite means plus function limitations that invoke 35 U.S.C. § 112(f),
and rejecting the claims because the Specification fails to disclose adequate
corresponding structure for those limitations.
Third Issue: Has the Examiner in determining the pending claims are
indefinite for lack of clarity?
Fourth Issue: Has the Examiner erred in determining claim 1 is
indefinite because phrase “the system comprising” at the conclusion of the
preamble of method claim 1 makes the scope of the claim unclear? ?
Appeal 2020-003047
Application 15/375,605

6
ANALYSIS
First Issue—Amendments to the Specification and
Corresponding Rejection Under 35 U.S.C. § 112(a)
In connection a supplemental amendment filed on August 4, 2019,
Appellant made numerous amendments to the Specification. See Response
dated August 4, 2019 (“the August 2019 Amendment”). The Examiner
objects to several of the proposed amendments, finding that they violate the
prohibition of introducing new matter into the Specification under 35 U.S.C.
§ 132(a). Final Act. 3. The Examiner’s objections can be generally grouped
into three categories: (1) changing the phrase “open connection” to the
phrase “beyond connection”; (2) changing the phrase “extremely limited
profiles” to the phrase “mini profiles”; (3) changing the phrase “full profile”
to “full matching profile”. Final Act. 3. Based on the determination that
these amendments add new matter to the Specification, the Examiner rejects
the claims for lack of written description because the “amendments to claims
1, 9–10, 12, 14–20 is/are not supported in [the] original disclosure and is/are
replete with new matter.” Final Act. 4.
JURISDICTION OVER § 132 OBJECTION TO SPECIFICATION
An appeal under 35 U.S.C. § 134(a) to the Patent Trial and Appeal
Board is generally limited to the review of the merits of rejections of claims
and those matters which directly relate to rejections of claims, i.e., are
determinative of a rejection. 35 U.S.C. §§ 6(b), 134(a) (2018), MPEP
§ 1201; see also In re Berger, 279 F.3d 975, 984–985 (Fed. Cir. 2002)
(citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)). As stated in
Hengehold:
There are a host of various kinds of decisions an Examiner makes
in the examination proceeding–mostly matters of a discretionary,
Appeal 2020-003047
Application 15/375,605

7
procedural or nonsubstantive nature–which have not been and
are not now appealable to the board or to this court when they
are not directly connected with the merits of issues involving
rejections of claims, but traditionally have been settled by
petition to the [Director].
Hengehold, 440 F.2d at 1403.
On the other hand, we note that the subject matter the Examiner
deems to be new matter in the rejection of the pending claims under
35 U.S.C. § 112(a) for lack of written description overlaps with the subject
matter the Examiner deems to be new matter in the August 2019 amendment
to the Specification under 35 U.S.C. § 132(a). Thus, the disposition of the
written description new matter rejection of the claims directly relates to the
disposition of the new matter objection to Appellant’s amendments to the
Specification. As such, the Examiner’s objection under 35 U.S.C. § 132 to
the August 2019 amendments to the Specification is an appealable matter
over which we have jurisdiction to decide in this appeal. See MPEP
§ 2163.06(II) (“If both the claims and specification contain new matter
either directly or indirectly, and there has been both a rejection and objection
by the [E]xaminer, the issue becomes appealable and should not be decided
by petition.”).
LEGAL PRINCIPLES REGARDING NEW MATTER AND WRITTEN DESCRIPTION
Section 132(a) of the Patent Act provides in relevant part “no
amendment shall introduce new matter into the disclosure of the invention.”
Whether new matter has been added to an application via amendment to the
Specification is a fact question. Commonwealth Scientific and Industrial
Research Organisation v. Buffalo Technology, Inc., 542 F.3d 1363, 1380
(Fed. Cir. 2008). “The fundamental inquiry is whether the material added by
amendment was inherently contained in the original application.” Schering
Appeal 2020-003047
Application 15/375,605

8
Corp. v. Amgen Inc., 222 F.3d 1347, 1352 (Fed. Cir. 2000) (citations
omitted). Put another way, “[w]hen the applicant . . . amends his
specification after the original filing date . . . added material must find
support in the original specification.” TurboCare Div. of Demag Delaval
Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir.
2001).
The Manual of Patent Examining Procedure (“MPEP”) issued by the
Patent Office provides binding guidance which explains the interplay
between the prohibition on new matter under § 132 and the written
description requirement of § 112(a):
Lack of written description is an issue that generally arises with
respect to the subject matter of a claim. If an applicant amends
or attempts to amend the abstract, specification or drawings of an
application, an issue of new matter will arise if the content of the
amendment is not described in the application as filed. Stated
another way, information contained in any one of the
specification, claims or drawings of the application as filed may
be added to any other part of the application without introducing
new matter.
MPEP § 2163.06.
The MPEP provides guidance with respect to what constitutes a
permissible amendment that may be made to the Specification. Relevant
here, the MPEP states that “[m]ere rephrasing of a passage does not
constitute new matter. Accordingly, a rewording of a passage where the
same meaning remains intact is permissible.” MPEP 2163.07(I) (citing In re
Anderson, 471 F.2d 1237 (CCPA 1973)). With these principles in mind, we
address the issues raised by Appellant on appeal.
Appeal 2020-003047
Application 15/375,605

9
THE “OPEN CONNECTION”/”BEYOND CONNECTION” AMENDMENTS
Appellant makes various amendments to the Specification that change
the phrase “open connection” to the phrase “beyond connection.” August
2019 Amendment. These amendments relate to the disclosed functionality
that a user cannot “match” with a first degree connection in the system.
Appellant argues the change in phraseology is supported:
Paragraph [0012] originally stated open connection matches as
being outside of the second degree and third degree connections,
so that means it would technically include the first degree and
beyond the third degree (connections greater than & beyond the
3rd degree), but because of how [0006], [0014], [0016], [0018],
[0027], [0028], [0030], & [0031] are stated[,] the “open
connection” part can be amended to “beyond connection”
(beyond the 3rd degree), for certain parts since what pertains to
that part doesn’t apply to the first degree and in some cases also
to the second degree. The term “outside” was used initially
thinking it meant the same as “beyond” or “greater than,”
but since this aspect of the invention was described in
multiple ways, these amendments can be made.
Appeal Br. 10. Thus, Appellant argues that the change from “open
connection” to “beyond connection” was intended to better convey that the
phrase refers to connections outside of the 3rd degree of connection, because
Appellant was concerned that a hyper-technical interpretation of “open” may
leave the phrase susceptible of being interpreted to include the first degree of
connection—which was not the intended meaning.
As noted above, “a rewording of a passage where the same meaning
remains intact is permissible.” MPEP 2163.07(I). Thus, if a person of
ordinary skill in the art would have understood the phrase “open connection”
to mean those degrees of connection greater than the third degree of
connection, and if a person of ordinary skill in the art would have
Appeal 2020-003047
Application 15/375,605

10
understood “beyond connection” to have the same meaning, then
Appellant’s amendment is permissible under § 132. We find Appellant’s
argument persuasive.
The originally filed Specification refers to the ability for a user to
match with second and third degree connections and open connections.
Spec. ¶ 6. The Specification states that “[o]pen connection matches are
matches from outside the second and third degree of connection.”
Spec. ¶ 12. As Appellant points out, the originally filed Specification
repeatedly indicates that first degree connections cannot match in the
system, consistent with the notion that in the real world, relationship
matches are often made by an immediate friend introducing a person to a
friend of theirs-- i.e., a friend of a friend. For example, the Specification
states:
On the portal Tom could only access a mini profile for people in
his first degree of connection, and that mini profile just included
a profile picture, a name, and a message button. But he could see
the full dating profiles of potential matches in his second degree
and third degree of connection.
Spec. ¶ 27. Here, the Specification makes clear that the user’s immediate
connections (first degree connections) are not available for matching. In
contrast, full dating profiles are provided for users outside of those first
degree connections. The Specification further describes that the “user has
the ability to view just the extremely limited details from the profiles of the
user’s first degree of connection” (Spec. ¶ 7, § i), also indicating that first
degree connections are unavailable for matching. See also Spec. ¶ 14 (“The
user has the ability to view just the extremely limited details from the
profiles of the user's first degree of connection.”). In light of these
examples, it is reasonably clear that when the Specification refers to an
Appeal 2020-003047
Application 15/375,605

11
“open connection,” which is a connection “from outside the second and third
degree of connection,” the term would have been understood by a person of
ordinary skill in the art as being those connections that are from a degree of
connection greater than the third degree—beyond the third degree.
Similarly, the amendment to “beyond connection” conveys the same
meaning. As such, we are persuaded that amending the phrase “open
connection” to the phrase “beyond connection” does not change the scope or
meaning of the phrase, and the amendment is permissible under 35 U.S.C.
§ 132.
THE “EXTREMELY LIMITED PROFILE”/”MINI PROFILE” AMENDMENTS
The originally filed Specification referred to several instances where a
user was able to view only “extremely limited” information from a profile
associated with another user. See, e.g., Spec. ¶¶ 7, §§ i, n, p; 14 (“extremely
limited details from the profiles”); 19 (“extremely limited profiles”); 21
(“extremely limited profile”). In the August 2019 Amendment, Appellant
amended the language of the Specification to change the phrase “extremely
limited profiles” to “mini profiles.” August 2019 Amendment 2 (amending
¶ 7, § i), 3 (amending ¶ 7, §§ n, p), 5 (amending ¶¶ 19, 21).
The Examiner objects to these amendments as adding new matter
under § 132(a). Ans. 5. The Examiner determines that “‘mini profile’ and
‘extremely limited [profile]’ . . . are not synonymous, and the scopes of
meaning have been changed and these terms/phrases are not mere inclusions
of dictionary or art recognized definitions known at the time of the
invention.” Ans. 5 (citing MPEP § 2163.07(I)).
Appellant argues that the changing in wording is permissible because
it merely seeks to maintain a consistency in terminology based on the
Appeal 2020-003047
Application 15/375,605

12
originally filed Specification’s use of the phrase “mini profile” in the
examples described at ¶¶ 27, 30, 31. Appeal Br. 7.
We agree with Appellant that the amendments are permissible in this
instance. The Examiner determines that ‘mini profile’ and ‘extremely
limited profile’ are not synonymous. Ans. 5. However, as we explained
above, the meaning of these terms is informed by context in which they are
used. Read in context, it is reasonably clear that the phrases “extremely
limited profile” and “mini profile” are intended to refer to the same thing—a
profile that displays only certain information to a user because that user is
not eligible for matching with the user associated with the profile. The
Specification provides several examples that indicate the amount of profile
information presented is restricted with respect to users that are not eligible
to be potential matches in the system.
For example, the Specification states:
h) Said user has the ability to view the matching profiles of
potential matches from the user’s second to third degree of
connection or open connection on the system that matches the
said user’s preference criteria or of a match that liked the said
user’s profile;
i) Said user has the ability to view just the extremely limited
details from the profiles of the user’s first degree of connection;
Spec. ¶ 7 (italics added); see also Spec. ¶ 14 (“The user has the ability to
view just the extremely limited details from the profiles of the user’s first
degree of connection.”).
In setting forth a working example, the Specification references the
limited amount of information available regarding first degree connections:
Tom could only access a mini profile for people in his first
degree of connection, and that mini profile just included a profile
picture, a name, and a message button. But he could see the full
Appeal 2020-003047
Application 15/375,605

13
dating profiles of potential matches in his second degree and
third degree of connection.
Spec. ¶ 27. Viewed in the context of the broader disclosure, it is reasonably
clear that the described “extremely limited profile” and the “mini profile”
are referring to the same scenario—the ability for a user to see only a
restricted amount of information about her first degree connections with
whom she is not eligible to match.
Because these phrases carry the same meaning, changing the phrase
“extremely limited profile” to “mini profile,” as Appellant has done here,
does not change the scope or meaning of the disclosure set forth in the
Specification. As such, we agree with Appellant that the amendment is
supported by the originally filed Specification, and is properly understood as
a permissible rewording of a passage where the same meaning remains
intact. MPEP § 2163.07(I). Therefore, we do not sustain the objection
under § 132(a) to the “extremely limited profile” to “mini profile”
amendments.
THE “FULL PROFILE”/”FULL MATCHING PROFILE” AMENDMENTS
In the August 2019 Amendment, Appellant amended the Specification
to introduce the word “matching” before the word “profile” in several places
in the Specification. August 2019 Amendment 3–5 (amending ¶¶ 7, 17, 20,
21 (“full matching profile”)), 5–6 (amending ¶¶ 26–27 (“dating matching
profile”)). The Examiner objects to these amendments under § 132(a).
Final Act. 4; Ans. 5.
Appellant argues that the amendments are supported by the originally
filed Specification, and do not add new matter to the Specification because
paragraphs 7(h) and 13 make clear that the profile referred to in the amended
paragraphs is a matching profile—a profile that is used to match with other
Appeal 2020-003047
Application 15/375,605

14
users. Appeal Br. 8–9. Appellant asserts that the amendment does not affect
a change in scope, and instead maintains consistency in terminology.
Appeal Br. 9.
Appellant persuades us that the Examiner has erred. Appellant’s
Specification describes a system that implements matchmaking functionality
within the context of a social networking application in order to “provide a
level of security and trust that users cannot attain from meeting total
strangers through online matchmaking services.” Spec. ¶ 4. The
Specification describes that “[t]his Social Based Online Matchmaking
System flow starts when a user who is seeking a match registers to the
system with their online social networking account. This allows the system
to access the user’s online social network.” Spec. ¶ 8. Thus, the
matchmaking system leverages the connections in the user’s social network
to provide matchmaking services.
The Specification further describes that “[t]he user can input
additional profile data into the system” although “[s]ome of the data needed
for the profile are auto-populated from the user’s social network.” Spec. ¶ 9.
These statements indicate that a separate profile is created for the purpose of
matchmaking in the system. Throughout the Specification, references to the
“profile” of users consistently make clear that the “profile” being referred to
is the user’s profile within the matchmaking system. The Specification
characterizes various versions of that profile. For example, the Specification
describes a “matching profile,” a “full profile,” and “partial profile,” and an
“extremely limited profile.” Nevertheless, in each case, the profile being
described is a dating profile that has been created in the matchmaking
system.
Appeal 2020-003047
Application 15/375,605

15
Appellant’s amendments to the Specification change “full profile” to
“full matching profile” and “dating profile” to “matching profile.” As
before, resolution of this issue turns on whether a person of ordinary skill in
the art would have understood these amendments to expand, narrow, or
otherwise change to scope of the disclosed subject matter.
With respect to the phrase “full profile,” a person of ordinary skill in
the art reasonably would have understood this phrase to be referring to the
entirety of a profile that has been created in the matchmaking system. This
understanding is confirmed by the distinction in the Specification drawn
between a “partial profile” and a “full profile.” See, e.g., Spec. ¶ 7, § o
(“[L]inks with the messages to each other’s profiles only shows partially
limited or full profiles depending on the said user’s access.”); see also
Spec. ¶ 21.
Thus, if a person of ordinary skill in the art would have understood
“full matching profile” to carry the same meaning, Appellant’s amendments
are permissible under § 132. In the context of the Specification as filed,
“full matching profile” does not substantively differ from the meaning of
“full profile,” because it is reasonably clear from the context of the
Specification that the “profile” being referred to in the phrase “full profile”
is a profile used for the purpose of making a match in the context of the
matchmaking system—a matching profile.
We arrive at the same conclusion with respect to the amendment that
changes “dating profile” to “matching profile.” The Specification makes
reasonably clear that the “dating profile” described in the Specification is a
profile that is used to match with others in the matchmaking system. That is,
Appeal 2020-003047
Application 15/375,605

16
the meaning of “dating profile” is the same as the meaning of “matching
profile,” as amended.
Accordingly, Appellant persuades us that the subject amendments are
supported by the originally filed Specification, and are properly understood
as a permissible rewording of a passage where the same meaning remains
intact. MPEP § 2163.07(I). Therefore, we do not sustain the objection
under § 132(a), nor of the § 112(a) rejection arising therefrom.

Second Issue—Means Plus Function Rejection
The Examiner determines that various claim limitations recite
functions in such a way that they invoke 35 U.S.C. § 112(f), but no
corresponding structure for performing the recited function is disclosed in
Appellant’s Specification. Final Act. 6. Specifically, the Examiner
determines that as written, the independent claims are method claims that
“comprise claimed system configured to perform functionalities of
determine . . . initiate . . . include” which invoke 35 U.S.C. § 112(f) and
“require[] disclosure of linking structure and an algorithm . . . to properly
invoke 112(f).” Id. The Examiner determines that “the written description
fail[s] to disclose a corresponding structure and acts capable of performing
the claimed functionality.” Id.
A claim is presumed to invoke § 112(f) when in explicitly uses the
phrase “means for” or the phrase “step for” and includes functional
language. MPEP § 2181(I) (“A claim limitation is presumed to invoke
35 U.S.C. 112(f) when it explicitly uses the term ‘means’ or ‘step’ and
includes functional language.”) “By contrast, a claim limitation that does
not use the phrase ‘means’ or ‘step’ will trigger the rebuttable presumption
Appeal 2020-003047
Application 15/375,605

17
that [§ 112(f)] does not apply.” Id. This presumption may be overcome
where the claim recites a non-structural term, often referred to as a “nonce
word” that is no more than a substitute for the triggering phrase. Id.
We reverse the rejection of the claims as reciting means plus function
limitations without corresponding structure. Here, the claims do not recite
the “means for” or “step for” phrase. As such, the invocation of § 112(f) is
not presumed here. In order for the claim to invoke § 112(f), the Examiner
must identify a nonce word that is used as substitute for the triggering
phrases of “means for” and “step for.” The Examiner appears to rely on the
word “system” as a nonce word. However, the Examiner does not provide
any explanation for why the recitation of “system” in Appellant’s method
claim amounts to a “nonce” word. As such, the Examiner has not
sufficiently shown the limitations at issue invoke § 112(f). Accordingly, we
do not sustain this rejection.

Third Issue—Indefiniteness for Lack of Clarity
The Examiner also rejects the claims as being indefinite for lack of
clarity. Specifically, the Examiner determines the following phrases are
indefinite:
(1) In the third “enabling” limitation of claim 1, it is not clear if “a
plurality of first degree connections” is the same or different from later
recitation of “the plurality of first degree connection.” Final Act. 7.
(2) In the third “enabling” limitation of claim 1, it is not clear if “a
plurality of first degree connections” is the same or different from the later
recitation of “the first degree connection will become a first degree
connection on the social based online matchmaking system.” Final Act. 7.
Appeal 2020-003047
Application 15/375,605

18
(3) In the same limitation, it is not clear if “an additional user of the
additional users” is the same or different from later recitation of “the
additional user.” Final Act. 7.
Thus, with respect to phrases (1)–(3), the Examiner concludes that
there is either insufficient antecedent basis, or the antecedent basis is
insufficiently clear to apprise a person of ordinary skill in the art of the
metes and bounds of the claimed subject matter. Final Act. 7 (“[I]t is not
clear what is/are the metes and bounds of the claimed subject matter and
phrases.”).
(4) The phrase “enabling the user,” as recited in “enabling the user to
register,” “enabling the user an ability to input,” and “enabling the user an
ability to invite,” is not reasonably clear. Final Act. 7.
(5) The phrase “wherein the user is operable to,” in the limitation
“wherein the user is operable to freely message the first degree connection
on the social based online matchmaking system, and reply to any active
messages provided in the user’ message box,” is not reasonably clear. Final
Act. 7.
(6) The phrase “just includes,” in the limitation “receiving the user’s
mini-profile and matching-profile, wherein the mini-profile just includes a
profile picture, a name, and a message button and the matching-profile
includes all profile data inputted into the social based online matchmaking
system by the user,” is not reasonably clear. Final Act. 7.
(7) The phrase “is an act of selecting,” in the limitation “wherein the
click of interested is an act of selecting an interested option on an electronic
interface,” is not reasonably clear. Final Act. 7.
Appeal 2020-003047
Application 15/375,605

19
(8) The phrase “could either be,” in the limitation “wherein the user
could either be a first degree connection, a shortlisted first degree
connection, a second degree connection, a third degree connection or a
beyond connection to another on the social based online matchmaking
system,” is not reasonably clear. Final Act. 7.
(9) The phrase “is greater than and beyond,” in the limitation
“wherein the beyond connection is greater than and beyond the third degree
connection,” is not reasonably clear. Final Act. 7.
With respect to phrases (4)–(9), the Examiner determines that these
phrases “is/are intended use that are not positively recited and/or makes
optional and, thus, it is not clear what is/are the metes and bounds of the
claimed subject matter and phrases.” Final Act. 7–8.
The Examiner also determines several instances where limitations
lack antecedent basis in the claims:
(10) The phrases “the second degree connections” and “the third
degree connections” in the limitation “wherein the second degree
connections and the third degree connections are linked via at least one of a
plurality of connected accounts on the social based online matchmaking
system,” lack sufficient antecedent basis. Final Act. 8.
(11) The phrase “the user’s message box,” in the limitation “wherein
the user is operable to freely message the first degree connection on the
social based online matchmaking system, and reply to any active messages
provided in the user's message box,” lacks antecedent basis. Final Act. 8.
(12) The phrase “the user’s mini-profile,” in the limitation “receiving
the user's mini-profile and matching-profile, wherein the mini-profile just
includes a profile picture, a name, and a message button, and the matching-
Appeal 2020-003047
Application 15/375,605

20
profile includes all profile data inputted into the social based online
matchmaking system by the user,” lacks antecedent basis. Final Act. 8.
(13) The phrase “the mini-profile” in the same limitation is indefinite
because it is unclear whether it is referring to “the user’s mini-profile” or
some other profile. Final Act. 8.
(14) The phrase “the matching-profile” in the same limitation is
indefinite because it is unclear whether it is referring to “the user’s matching
profile” or some other profile. Final Act. 8.
The Examiner further determines additional limitations lack clarity:
(15) The phrase “any active messages,” in the limitation “wherein the
user is operable to freely message the first degree connection on the social
based online matchmaking system, and reply to any active messages
provided in the user's message box,” is indefinite because it is not
reasonably clear in scope. Final Act. 8–9.
(16) The phrase “a beyond connection to another on the social based
online matchmaking system,” in the limitation “wherein the user could either
be a first degree connection, a shortlisted first degree connection, a second
degree connection, a third degree connection or a beyond connection to
another on the social based online matchmaking system, wherein the beyond
connection is greater than and beyond the third degree connection,” is
indefinite because it is not reasonably clear in scope. Final Act. 8–9.
We address each determination, including Appellant’s applicable
arguments and our analysis, in turn.
“A PLURALITY OF FIRST DEGREE CONNECTIONS” / “THE PLURALITY OF FIRST
DEGREE CONNECTIONS”
The third “enabling” limitation of claim 1 recites:
Appeal 2020-003047
Application 15/375,605

21
enabling the user an ability to invite additional users to join the
social based online matchmaking system, wherein the online
social networking account includes a plurality of first degree
connections such that if an additional user of the additional users
is a first degree connection from the plurality of first degree
connections or the additional user has already joined the social
based online matchmaking system, the first degree connection
will become a first degree connection on the social based online
matchmaking system.
Appeal Br. 42 (Claims Appendix) (italics added).
As noted above, the Examiner determines that it is not clear whether
the phrase “the plurality of first degree connections” refers to the “a plurality
of first degree connections” recited in the third “enabling” limitation of
claim 1. Appellant argues this limitation satisfies the definiteness
requirement because it “clearly conveys to just let user’s invite additional
users. This [is] a typical step for more computer-based online systems. So
this is a definite statement.” Appeal Br. 37.
We agree with Appellant that the Examiner has erred. In
understanding this limitation, it is important to understand that there are two
different platforms recited in the claim—(1) a social based online
matchmaking platform, and (2) a social networking platform. The initial
steps in the claim recite that a user may register for an account on the social
based online matchmaking platform (“enabling the user to register for a user
account”), and then may link the registered account on the social based
online matchmaking platform with their online social networking account on
the social networking platform (“linking the user account with the online
social networking account”). The initial steps then add additional detail to
their newly created account (“enabling the user an ability to input additional
profile data into the social based online matchmaking system.”).
Appeal 2020-003047
Application 15/375,605

22
The limitation upon which the Examiner bases this rejection recites
that the user is provided the ability to invite others to join the online
matchmaking system (“enabling the user an ability to invite additional users
to join the social based online matchmaking system”). The limitation further
specifies that the user’s account on the social networking has a plurality of
first degree connections within the social networking platform (“wherein the
online social networking account includes a plurality of first degree
connections”).
If one of those first degree connections from the social networking
platform joins, or has already joined, the online matchmaking platform, that
first degree connection from the user’s account on the social networking
platform also becomes a first degree connection for the user’s account on the
online matchmaking platform (“such that if an additional user of the
additional users is a first degree connection from the plurality of first degree
connections or the additional user has already joined the social based online
matchmaking system the first degree connection will become a first degree
connection on the social based online matchmaking system”).
Nothing in the limitation indicates that the later recitation of “the
plurality of first degree connections” refers to anything other than the initial
recitation of “a plurality of first degree connections.” That is, the limitation
recites that the user has first degree connections on the social networking
platform, and when one of those first degree connections signs up on the
online matchmaking system, they become a first degree connection on the
social based online matchmaking system. As such, we agree with Appellant
that the Examiner erred in concluding “the plurality of first degree
connections” is unclear.
Appeal 2020-003047
Application 15/375,605

23
“THE FIRST DEGREE CONNECTION WILL BECOME A FIRST DEGREE CONNECTION
ON THE SOCIAL BASED ONLINE MATCHMAKING SYSTEM”
In the same limitation discussed above, the Examiner also determines
that it is not clear if “a plurality of first degree connections” is the same or
different from the later recitation of “the first degree connection will become
a first degree connection on the social based online matchmaking system.”
Final Act. 7.
Appellant argues the scope and meaning of the limitation is clear
because:
This [limitation] clearly conveys that if two users are first degree
on the online social network account (which is linked to this
system) and they join the [ ] social based matchmaking system,
they both will automatically become first degree to each other.
Appeal Br. 36.
We agree with Appellant. As we explained above, the recited “a
plurality of first degree connections” refers to the user’s connections with
others in the social networking platform. The limitation recites when one of
those first degree connections from the social networking platform joins the
online matchmaking system, they become a first degree connection on the
social based online matchmaking system as well. As such, the recitation of
“the first degree connection” refers back to one of the “plurality of first
degree connections.” The remainder of the limitation recites “will become a
first degree connection on the social based online matchmaking system.” In
this instance, it is clear that “a first degree connection on the social based
online matchmaking system” is a new, separate first degree connection (on
the online matchmaking platform) that is created when a first degree
connection from the social networking platform join the matchmaking
Appeal 2020-003047
Application 15/375,605

24
system. As such, Appellant persuades us that the Examiner erred with
respect to this determination.
“AN ADDITIONAL USER OF THE ADDITIONAL USERS” / “THE ADDITIONAL USER”
The Examiner also determines the phrase “the additional user” is
indefinite because it is not clear if “the additional user” “is the same or
different from the earlier recitation of “an additional user of the additional
users.” Final Act. 7.
Appellant disputes the Examiner’s determination, relying on the same
arguments as with the prior limitation:
This [limitation] clearly conveys that if two users are first degree
on the online social network account (which is linked to this
system) and they join the [ ] social based matchmaking system,
they both will automatically become first degree to each other.
Appeal Br. 36.
Appellant persuades us of error. The limitation begins with the
recitation “enabling the user an ability to invite additional users to join the
social based online matchmaking system.” Thus, the recited user is provided
the ability to invite “additional users” to join the matchmaking platform.
The limitation next specifies that “the online social networking account
includes a plurality of first degree connections such that if an additional user
of the additional users is a first degree connection from the plurality of first
degree connections or the additional user has already joined the social based
online matchmaking system.” The recitation of “an additional user of the
additional users” refers to a specific one of the “additional users” that can be
invited to join the matchmaking platform. The further recitation of “or the
additional user has already joined the social based online matchmaking
system” is readily understood as referring back to that same, specified
Appeal 2020-003047
Application 15/375,605

25
“additional user.” As such, we agree with Appellant that the recitation of
“the additional user” is not indefinite.
“ENABLING THE USER”
The Examiner also determines that the use of the phrase “enabling the
user,” which is recited in three separate limitations of claim 1, is indefinite.
Final Act. 7; see Claim 1 (reciting “enabling the user to register,” “enabling
the user an ability to input additional profile data,” and “enabling the user an
ability to invite additional users”). The Examiner determines that these
limitations “is/are intended use that are not positively recited and/or makes
them optional, and, thus, it is not clear what is/are the metes and bounds.”
Final Act. 7.
Appellant argues that the phrase “enabling the user” is not indefinite
because it correctly reflects, in each instance, that the claimed process
involves providing the user with the ability to perform a specified action.
Appeal Br. 37. We agree with Appellant.
Although perhaps inartfully drafted, we do not discern any ambiguity
or lack of clarity in Appellant’s use of the phrase “enabling the user.” In
each instance, this phrase is properly understood as reciting an action
(“enabling the user”) that enables a user to perform another action (“to
register for a user account”, “to input additional profile data”, “to invite
additional users”). The act of giving the user the specified ability is the act
that must be performed to be encompassed by the limitation.
Although the Examiner determines that the limitations recite intended
use, we do not agree. The limitations each recite a specific action of
“enabling the user” to perform a specified action. That the claim does not
require that the action that is enabled to be performed, does not make the
Appeal 2020-003047
Application 15/375,605

26
claim indefinite, as a person of ordinary skill in the art would understand
that the act of providing the user the ability further specified in each
limitation defines the scope of the limitation.
“WHEREIN THE USER IS OPERABLE TO”
The Examiner rejects the claims as indefinite based on the phrase
“wherein the user is operable to” in the limitation “wherein the user is
operable to freely message the first degree connection on the social based
online matchmaking system, and reply to any active messages provided in
the user’ message box.” Final Act. 7. Appellant argues “[t]his part clearly
conveys to just let users to freely message the first degree connections. So
this is a definite statement.” Appeal Br. 37. We disagree.
Although it appears that Appellant intended this phrase to mean
“wherein the user is able to,” or perhaps “wherein the online matchmaking
system is operable to,” we nevertheless must consider the claim as written.
Here, the claim recites “wherein the user is operable to.” The term operable
means “able to be used.” Thus, the phrase “wherein the user is operable to
freely message” is properly understood to mean “wherein the used is able to
be used to freely message.” However, it is not clear what it would mean for
a user to be able to be used to do something in the context of claim 1. As
such, Appellant does not persuade us that the Examiner has erred in this
instance.
“JUST INCLUDES”
Claim 1 recites the limitation “receiving the user’s mini-profile and
matching-profile, wherein the mini-profile just includes a profile picture, a
name, and a message button, and the matching-profile includes all profile
data inputted into the social based online matchmaking system by the user.”
Appeal 2020-003047
Application 15/375,605

27
Appeal Br. 43 (Claims Appendix) (italics added). The Examiner determines
the phrase “just includes” is indefinite as merely stating an intended use that
is not positively recited. Final Act. 7–8.
Appellant argues the phrase “just includes” is clear because ‘[t]his
part clearly conveys that the mini-profile just has a profile picture, a name,
and a message button.” Appeal Br. 37. We agree that the Examiner has
erred.
As an initial matter, the Examiner does not provide any explanation
for how the phrase “just includes” could be reasonably understood to be
merely stating an intended use with respect to the claimed method. Nor do
we readily discern any such possible understanding. In our view, the phrase
“just includes” in the context of the larger expression “wherein the mini-
profile just includes a profile picture, a name, and a message button,” is
readily understood to mean that the mini-profile only includes a profile
picture, a name, and a message button. Such an understanding is consistent
with the embodiments described in the Specification. See, e.g., Spec. ¶ 27
(“On the portal Tom could only access a mini profile for people in his first
degree of connection, and that mini profile just included a profile picture, a
name, and a message button.”). As such, we do not sustain the Examiner’s
determination that the phrase “just includes” is indefinite.
“IS AN ACT OF SELECTING”
Claim 1 recites the limitation:
receiving the user’s click of interested for a match and a match’s
click of interested for the user, wherein the social based online
matchmaking system is configured to determine a mutual interest
between the user and the match, wherein the click of interested
Appeal 2020-003047
Application 15/375,605

28
is an act of selecting an interested option on an electronic
interface.
Appeal Br. 42–43 (Claims Appendix) (italics added).
The Examiner determines that the phrase “is an act of selecting” in the
larger expression “wherein the click of interested is an act of selecting an
interested option on an electronic interface,” is indefinite as recited in
claim 1. Final Act. 7–8. The Examiner again reasons that the phrase merely
recites an intended use that is not positively recited. Final Act. 7.
Appellant argues the claim is definite because “[a]n act of selecting
leads to a definite function in the system that is regarded as the invention,
which is that there is an interested option there for matches and it needs to be
selected in order to achieve the mutual interest on the system.” Appeal
Br. 37.
Appellant persuades us the Examiner has erred. This limitation
relates to how a match is made in the matchmaking system. The
matchmaking system receives an indication of interest from a user (receiving
the user’s click of interested for a match”), and the subject of that interest
provides a reciprocal indication of interest (“and a match’s click of
interested for the user”). When each of the indications of interest is received
by the matchmaking system, it determines that a mutual interest exists
(“wherein the social based online matchmaking system is configured to
determine a mutual interest between the user and the match”). The
limitation further specifies that the indication of interest that is provided by
the user and the match is resultant from the selection of an option on an
electronic interface (“wherein the click of interest is an act of selecting an
interested option on an electronic interface”).
Appeal 2020-003047
Application 15/375,605

29
We discern no ambiguity in the phrase “wherein the click of interest is
an act of selecting an interested option on an electronic interface.” Although
it uses somewhat unusual language, a person of ordinary skill in the art
reasonably would have understood that this clause means that the “click of
interest” is provided to the system by a user selecting an interested option
that is presented on an electronic display, such as a computer user interface.
The Examiner has not explained by this limitation amounts to only a
statement of intended use, nor do we see any basis for such a determination.
As such, we are persuaded the Examiner erred in determining that “an act of
selecting” is indefinite.
“COULD EITHER BE”
The concluding “wherein” clause of claim 1 recites:
wherein the user could either be a first degree connection, a
shortlisted first degree connection, a second degree connection,
a third degree connection or a beyond connection to another on
the social based online matchmaking system, wherein the beyond
connection is greater than and beyond the third degree
connection.
Appeal Br. 43 (Claims Appendix).
The Examiner determines that the phrase “could either be” is
indefinite because it makes the various degrees of connection optional, and
as a result “it is not clear what is/are the metes and bounds of the claimed
subject matter and phrases.” Final Act. 7–8.
Appellant argues that the phrasing “could either be” is permissible
because it merely “is the same as ‘or’, so it clearly conveys the kinds of
connections a user could [have] to another on the system.” Appeal Br. 37.
Appellant does not persuade us that the Examiner has erred. The
MPEP provides that the use of alternative expressions such as “or” are
Appeal 2020-003047
Application 15/375,605

30
acceptable. MPEP § 2173.05(h)(II). The MPEP further states that
additional analysis is required when the term “optionally” is used to express
alternative language. MPEP § 2173.05(h)(III) (“In the instance where the
list of potential alternatives can vary and ambiguity arises, then it is proper
to make a rejection under 35 U.S.C. 112, second paragraph, and explain why
there is confusion.”).
The limitation at issue recites that the user could be any one of several
types of connections to another user on the matchmaking system. However,
the limitation does not require that the user must be, or “is,” one of those
several types of connections. This is, the limitation recites that “the user
could either be a first degree connection, a shortlisted first degree
connection, a second degree connection, a third degree connection or a
beyond connection to another on the social based online matchmaking
system,” which indicates the possibility that the user does not necessarily
have to be any of these types of recited connections.
Appellant argues that the “could either be” limitation is merely an
alternative expression. Appeal Br. 37. But, as currently written, it is not
clear whether having a degree of connection with another is required, or if
such a connection is merely optional. As such, a person of ordinary skill in
the art would not be apprised of whether the claim covers a situation in
which the user does not have any degree of connection with another user in
the system. Because of this ambiguity, we agree with the Examiner that the
phrase “could either be,” as recited in claim 1, is indefinite under 35 U.S.C.
§ 112(b).
Appeal 2020-003047
Application 15/375,605

31
“IS GREATER THAN AND BEYOND”
Claim 1 concludes with the limitation “wherein the beyond
connection is greater than and beyond the third degree connection.” Appeal
Br. 43 (Claims Appendix). The Examiner concludes that the phrase “is
greater than and beyond” is indefinite. Final Act. 7.
Appellant argues the rejection is in error “because with ‘greater than
and beyond’ both mean the same thing, ‘greater than’ or ‘beyond’, so it
clearly conveys that the beyond connection is ‘greater than’ or ‘beyond’ the
third degree connection.” Appeal Br. 37. We agree with Appellant.
The Examiner’s rejection is based on a determination that the
limitation is either an intended use, not positively recited, or optional. Final
Act. 7–8. None of these reasons are applicable here. The phrase “is greater
than and beyond” is not any of an intended use, not positively recited, or
optional, but instead is a direct characterization of what a “beyond
connection” is within the matchmaking system. As Appellant correctly
argues, a person of ordinary skill in the art reasonably would have
understood “greater than and beyond the third degree of connection” to
mean a degree of connection that is further away from a direct connection
than the third degree connection—the fourth degree, fifth degree, sixth
degree, etc. Although the use of both “greater than” and “beyond” is
perhaps superfluous, superfluous language does not necessarily make a
claim limitation indefinite. As such, we agree with Appellant that the
Examiner has not sufficiently shown that the phrase “greater than and
beyond” is indefinite under § 112(b).
Appeal 2020-003047
Application 15/375,605

32
“THE SECOND DEGREE CONNECTIONS” AND
“THE THIRD DEGREE CONNECTIONS”
The Examiner determines that the phrases “the second degree
connections” and “the third degree connections” in the limitation “wherein
the second degree connections and the third degree connections are linked
via at least one of a plurality of connected accounts on the social based
online matchmaking system” lack sufficient antecedent basis. Final Act. 8.
Appellant argues that antecedent basis for “the second degree
connections” and “the third degree connections” is found in the last
limitation of claim 1, which recites “wherein the user could either be a first
degree connection, a shortlisted first degree connection, a second degree
connection, a third degree connection or a beyond connection.” Appeal
Br. 39.
In order for a limitation to provide antecedent basis for allegedly
indefinite claim limitation, it must be antecedent (i.e., precede) the allegedly
indefinite limitation in the claim. Here, the limitations Appellant relies upon
for antecedent basis are insufficient because they do not precede “the second
degree connections” and “the third degree connections” in the claim. As
such, Appellant does not persuade us that the Examiner has erred concluding
“the second degree connections” and “the third degree connections” are
indefinite.
“THE USER’S MESSAGE BOX”
Claim 1 recites the limitation “wherein the user is operable to freely
message the first degree connection on the social based online matchmaking
system, and reply to any active messages provided in the user's message
box.” Appeal Br. 42 (Claims Appendix) (italics added). The Examiner
Appeal 2020-003047
Application 15/375,605

33
determines that “the user’s message box” is indefinite because it lacks
antecedent basis in the claim. Final Act. 8–9.
Appellant argues that the claim provides antecedent basis for “user”
and as such provides sufficient antecedent basis for the limitation. Appeal
Br. 38 (identifying antecedent basis for “the user”). We are persuaded the
Examiner has erred. The MPEP states that “the failure to provide explicit
antecedent basis for terms does not always render a claim indefinite. If the
scope of a claim would be reasonably ascertainable by those skilled in the
art, then the claim is not indefinite.” MPEP § 2173.05(e) (citations omitted).
In our view, a person of ordinary skill in the art would understand the phrase
“the user’s message box” to indicate possession of a message box by the
user. Put another way, a person of ordinary skill in the art would reasonably
ascertain that the scope of “the user’s message box” is akin to “a message
box of the user.” The claim provides antecedent basis for “the user” because
the preamble of the claim recites “a user having an online social networking
account.” As such, we agree with Appellant that the Examiner has erred in
determining that “the user’s message box” is indefinite for lack of
antecedent basis.
“THE USER’S MINI-PROFILE”
Claim 1 also recites the limitation:
receiving the user’s mini-profile and matching-profile, wherein
the mini-profile just includes a profile picture, a name, and a
message button, and the matching-profile includes all profile
data inputted into the social based online matchmaking system
by the user.
Appeal Br. 43 (Claims Appendix) (italics added). The Examiner determines
that the phrase “the user’s mini-profile” is indefinite because it lacks
antecedent basis. Final Act. 8–9.
Appeal 2020-003047
Application 15/375,605

34
Our analysis with respect to this limitation is similar to our analysis of
the previous limitation. The phrase “the user’s mini-profile” indicates
possession—synonymous with “a mini-profile of the user.” Because the
claim provides antecedent basis for “the user,” we agree with Appellant that
the Examiner has erred in determining “the user’s mini-profile” is indefinite
for lack of antecedent basis.
“THE MINI-PROFILE”
In the same limitation discussed above, the Examiner determines that
the phrase “the mini-profile” in the expression “wherein the mini-profile just
includes . . .” is indefinite because it is unclear whether it refers to “the
user’s mini-profile” or some other profile. Final Act. 8–9. Appellant argues
that the phrase “the user’s mini-profile” provides sufficient antecedent basis
for “the mini-profile.” Appeal Br. 38.
We agree with Appellant. The Examiner concludes that the recitation
of “the mini-profile” is unclear, presumably because the use of the word
“user’s” in in the earlier phrase “the user’s mini-profile.” As we noted
above, under our binding guidance set forth in the MPEP, “[i]f the scope of a
claim would be reasonably ascertainable by those skilled in the art, then the
claim is not indefinite.” MPEP 2173.05(e). The MPEP cites as authority for
this proposition, the Board’s decision in Ex parte Porter, 25 USPQ2d 1144,
1145 (Bd. Pat. App. & Inter. 1992) (“controlled stream of fluid” provided
reasonable antecedent basis for “the controlled fluid”). Although “the user’s
mini-profile” is not identical to the phrase “the mini-profile,” we conclude
that, consistent with Ex parte Porter, “the user’s mini-profile” provides
reasonable antecedent basis for “the mini-profile.” We further note that
there is no other use of “mini-profile” earlier in the claim that could cause
Appeal 2020-003047
Application 15/375,605

35
confusion as to whether “the mini-profile” derives it antecedent basis from
“the user’s profile.” Accordingly, we are persuaded the Examiner has erred
with respect to “the mini-profile.”
“THE MATCHING-PROFILE”
In the same limitation, “receiving the user’s mini-profile and
matching-profile,” the Examiner also determines that the phrase “the
matching-profile” is indefinite because it is unclear whether “the matching
profile” is referring to “the user’s mini-profile and matching-profile” or to
some other matching profile. Final Act. 8. As was the case with “mini-
profile” above, there is no other preceding recitation of the phrase
“matching-profile” in the claim, and our analysis with respect to “the
matching-profile” mirrors that of our analysis regarding “the mini-profile.”
A person of ordinary skill in the art would have been able to reasonably
ascertain that the prior recitation of “the user’s . . . matching-profile”
provided antecedent basis for “the matching-profile.” As such, we are
persuaded the Examiner has erred in determining “the matching profile” is
indefinite.
“ANY ACTIVE MESSAGES”
Claim 1 recites the limitation “wherein the user is operable to freely
message the first degree connection on the social based online matchmaking
system, and reply to any active messages provided in the user's message
box.” Appeal Br. 43 (Claims Appendix) (italics added). The Examiner
determines that the phrase “any active messages” is indefinite “because it is
not clear what is the scope of ‘any active messages’ . . . and, thus, the metes
and bounds of [the] claims are unclear.” Final Act. 8. The Examiner
provides no further reasoning or explanation. Appellant argues that there is
Appeal 2020-003047
Application 15/375,605

36
no antecedent basis issue, as the phrase “any active messages” is used only a
single time in the claims. Appeal Br. 38.
The MPEP states that “the Examiner should clearly communicate in
an Office action any findings and reasons which support the rejection and
avoid a mere conclusion that the claim term or phrase is indefinite.” MPEP
§ 2173.02(III)(B). Here, the Examiner provides only a mere conclusion that
the phrase “any active messages” is indefinite. The rejection does not make
clear whether it is based on a lack of antecedent basis, or some other
reasoning. As such, the Examiner has not provided sufficient reasoning in
support of the determination that “any active messages” is indefinite, and we
agree with Appellant that the Examiner has erred.
“A BEYOND CONNECTION TO ANOTHER”
The Examiner also determines that the phrase “a beyond connection to
another on the social based online matchmaking system” in the limitation
“wherein the user could either be a first degree connection, a shortlisted first
degree connection, a second degree connection, a third degree connection or
a beyond connection to another on the social based online matchmaking
system, wherein the beyond connection is greater than and beyond the third
degree connection,” is indefinite. Final Act. 8–9. The Examiner again finds
that “it is not clear what is the scope of . . . “a beyond connection to another
. . .” and, thus, the metes and bounds of claims [are] unclear.” Final Act. 9.
Like before, the Examiner provides no further reasoning or explanation.
Although the Examiner does not explicitly state that an antecedent
basis issue is present in the limitation, Appellant apparently interprets the
Examiner’s cursory analysis as such, and argues that there is no antecedent
basis issue with the word “another.” Appeal Br. 39.
Appeal 2020-003047
Application 15/375,605

37
As we explained above, the MPEP provides that “the Examiner
should clearly communicate in an Office action any findings and reasons
which support the rejection and avoid a mere conclusion that the claim term
or phrase is indefinite.” MPEP § 2173.02(III)(B). The Examiner again
provides only a mere conclusion that the phrase “a beyond connection to
another” is indefinite. Although the Examiner underlines the word
“another,” there is no further reasoning or explanation for its significance in
the rejection made. We are left to speculate as to the detailed basis for the
rejection, with the rejection failing to make clear if it is based on a lack of
antecedent basis, or some other deficiency. As such, the Examiner has not
provided sufficient reasoning in support of the determination that “a beyond
connection to another” is indefinite, and we agree with Appellant that the
Examiner has erred.
Fourth Issue—Indefiniteness for Mixed-Type Claiming
The Examiner also rejects the claims as indefinite because they recite
a “method for a social based online matchmaking system matching users
with a user having an online social networking account, the system
comprising: . . .” and it is unclear whether applicant intends to claim a
method or system and/or both and, therefore, the metes and bounds of the
claims are indefinite.” Final Act. 10. The Examiner notes that “[f]or
purposes of examination, claims 1, 9–10, 12, and 14–20 are examined as
method claims and rejected accordingly.” Id.
The MPEP provides that “[a] single claim which claims both an
apparatus and the method steps of using the apparatus is indefinite under
35 U.S.C. 112, second paragraph.” MPEP § 2173.05(p) (citing In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir.
Appeal 2020-003047
Application 15/375,605

38
2011)). The Federal Circuit has explained that such claims are indefinite
because they do not make clear whether infringement occurs by performing
the claimed method steps, or by making the claimed system.
Appellant does not address this rejection in the briefs. It appears to us
that the recitation of “the system comprising” in claim 1 is a typographical
error on the part of Appellant, and Appellant intended for the preamble to
conclude with the phrase “the method comprising.” Moreover, we
understand that the claim term “system” sometimes is used to refer to a
method instead of a device. For example, a claim might recite “a system of
banking” or “an accounting system.”
Nevertheless, we must consider the claim as written, and as written
here, the claim is indefinite because the recitation of “the system
comprising” makes it confusing as to why the claim first recites the term
“method” and subsequently recites “system.” For example, it is not
reasonably clear if “system” is intended to be synonymous with “method” or
somehow further narrow the preamble to some specific type of system. We
note this indefiniteness issue present in claim 1 is overcome by correcting
the typographical error by changing “the system comprising” to “the method
comprising,” to make clear that claim 1 is directed to a method.3

3 Although not specifically discussed in the final office action, we note that
claims 18–20, which depend from method claim 1, also reference
capabilities of “a system.” See, e.g., Claim 18 (“wherein the system could
alternatively . . .”) (emphasis added).
Further, as drafted, claims 18–20 recite that steps are performed that
are alternatives to the steps set forth in claim 1. As such, claim 1 may fail to
further narrow the claim with respect to claim 1, as required by 35 U.S.C.
§ 112(d). In the event of further prosecution, we encourage Appellant and
Appeal 2020-003047
Application 15/375,605

39
PRO SE INVENTOR RESOURCES
We note the Appellant appears to be pursuing this application pro se.
Appeal Br. 35 (§ 3.2.1). For reference, the USPTO has launched a Pro Se
Assistance Program “to help inventors meet their goals of protecting their
valuable intellectual property.” https://www.uspto.gov/patents-getting-
started/using-legal-services/pro-se-assistance-program (last accessed
November 23, 2021). The USPTO also maintains an Inventor’s Assistance
Center, which “is staffed by former Supervisory Patent Examiners and
Primary Examiners who answer general questions concerning patent
examining policy and procedure.” https://www.uspto.gov/learning-and-
resources/support-centers/inventors-assistance-center-iac) (last accessed
November 23, 2021).
CONCLUSION
We reverse the Examiner’s decision to reject claims 1, 9, 10, 12, and
14–20 under 35 U.S.C. § 112(a) for lack of written description based on the
Examiner’s objection under 35 U.S.C. § 132 to the Specification
amendments introduced by Appellant.
We reverse the Examiner’s decision to reject claims 1, 9, 10, 12, and
14–20 under 35 U.S.C. § 112(a) for lack of written description and § 112(b)
for indefiniteness based on the Examiner’s determination that the claims
recite means plus function limitations that invoke 35 U.S.C. § 112(f), but the
written description fails to disclose adequate corresponding structure for
performing the recited functions.

the Examiner to discuss potential amendments to these claims to ensure
compliance with all provisions of § 112.
Appeal 2020-003047
Application 15/375,605

40
We affirm the Examiner’s decision to reject claims 1, 9, 10, 12, and
14–20 under 35 U.S.C. § 112(b) as being indefinite for lack of antecedent
basis and/or lack of clarity.4
We affirm the Examiner’s decision to reject claims 1, 9, 10, 12, and
14–20 under 35 U.S.C. § 112(b) as being indefinite because the phrase “the
system comprising” in method claim 1 renders the scope of the claim
unclear.
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner’s decision to reject the claims. 37 C.F.R.
§ 41.50(a)(1).

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 9, 10, 12,
14–20
132,
112(a)
New matter /
written description
1, 9, 10, 12,
14–20
1, 9, 10, 12,
14–20
112(a),
112(b)
Written description
and indefiniteness
(means plus
function)
1, 9, 10, 12,
14–20
1, 9, 10, 12,
14–20
112(b) Indefiniteness
(lack of clarity and
antecedent basis)
(“user is operable”
and “could either
be” limitations)
1, 9, 10, 12,
14–20

4 As noted in the Decision Summary, we did not sustain the Examiner’s
indefiniteness determinations for most limitations. However, because we
have sustained the determination with respect to two of the limitations, we
affirm the rejection.
Appeal 2020-003047
Application 15/375,605

41
1, 9, 10, 12,
14–20
112(b) Indefiniteness
(lack of clarity and
antecedent basis)
(all other
limitations)
1, 9, 10, 12,
14–20
1, 9, 10, 12,
14–20
112(b) Indefiniteness
(lack of clarity)
(“the system
comprising”)
1, 9, 10, 12,
14–20

Overall
Outcome
1, 9, 10, 12,
14–20

AFFIRMED