Dev MelepuraDownload PDFPatent Trials and Appeals BoardDec 30, 20212020003047 (P.T.A.B. Dec. 30, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation