Ex Parte Banatwala et al

Patent Trial and Appeal Board

Mar 18, 2014

11962650 (P.T.A.B. Mar. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MUSTANSIR BANATWALA and MARY ELLEN ZURKO
__________

Appeal 2011-011712
Application 11/962,650
Technology Center 2100
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
of employing organizational context within a collaborative tagging system.
The Examiner rejected the claims as non-statutory and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellants identify the Real Party in Interest as International
Business Machines Corporation (see App. Br. 3).
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Statement of the Case
Background
“One embodiment of the present invention can include a computer-
implemented method of employing organizational context within a
collaborative tagging system” (Spec. 2 ¶ 0005). The Specification teaches
that the “method can include receiving at least one tag for an artifact from a
user, determining at least one attribute of the user, and storing a tag record
including the tag, the attribute of the user, and an association of the tag with
the artifact” (Spec. 2 ¶ 0005).
The Claims
Claims 1-3, 6, 7, 16, 17, 19, and 21 are on appeal. Claim 1 is
representative and reads as follows:
1. A computer-implemented method of employing
organizational context within a collaborative tagging system,
the method comprising:
receiving at least one tag for an artifact from a user;
determining at least one attribute of the user, wherein
the at least one attribute comprises a security level
associated with the user;
storing a tag record comprising the tag, the attribute of
the user, and an association of the tag with the artifact;
determining a subset of tags of the tagging system
according to the security level of the user; and
presenting the subset of tags to the user, wherein the
tag for the artifact is selected from the subset of tags.

The issues
A. The Examiner rejected claims 16, 17, 19, and 21 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter (Ans. 3-5).
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B. The Examiner rejected claims 1-3, 6, 7, 16, 17, 19, and 21 under 35
U.S.C. § 103(a) as obvious over Wang2 and Hibbets3 (Ans. 6-25).
A. 35 U.S.C. § 101
The Examiner finds that “the claimed invention is directed to the non-
statutory subject area of electro-magnetic signals and carrier waves” (Ans.
3). The Examiner
[I]nterprets a “computer readable storage” as a storage
defined by the characteristics in paragraphs 14-16 of the
applicant’s specification. According to paragraph 14 of the
applicant’s specification, a computer-usable medium “can be
any apparatus that can contain, store, communicate,
propagate, or transport the program for use by, or in
connection with, the instruction execution system, apparatus,
or device” (Paragraph 14).

(Ans. 3.) The Examiner finds that the “computer-usable medium may
include a propagated data signal with the computer-usable program code
embodied therewith, either in baseband or as part of a carrier wave” (Ans.
4). The Examiner concludes that “independent claim 16 is rejected for
containing nonstatutory subject matter of carrier/propagated signals/waves”
(Ans. 4).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the “computer-readable storage” of
claim 16 encompasses non-statutory signals?

2 Wang et al., US 2008/0172363 A1, published Jul. 17, 2008.
3 Hibbets, J., US 2008/0281769 A1, published Nov. 13, 2008.
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Findings of Fact
1. The Specification teaches that the “invention may take the form
of a computer program product accessible from a computer-usable or
computer-readable medium providing program code” (Spec. 3 ¶ 0014).
2. The Specification teaches that “[a]ny suitable computer-usable
or computer-readable medium may be utilized. For example, the medium
can include, but is not limited to . . . a propagation medium” (Spec. 3 ¶
0015).
3. The Specification teaches that “the computer-usable medium
may include a propagated data signal with the computer-usable program
code embodied therewith, either in baseband or as part of a carrier wave”
(Spec. 4 ¶ 0016).
Principles of Law
Our reviewing court has held that transitory, propagating signals are
not within any of the four statutory categories. Therefore, a claim directed
to a computer readable medium embodied in a signal is not statutory under
35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007); see
also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential).
“A transitory propagating signal . . . is not a ‘process, machine, manufacture,
or composition of matter.’ [These] four categories define the explicit scope
and reach of subject matter patentable under 35 U.S.C § 101; thus, such a
signal cannot be patentable subject matter.” Nuijten, 500 F.3d at 1357.
Analysis
Claim 16 is drawn to a “computer program product comprising a
computer-readable storage.” Appellants have not identified, and we do not
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find, a disclosure in Appellants’ Specification that defines the term
“computer-readable storage” to exclude transitory media. Therefore, we
broadly and reasonably construe the term “computer-readable storage”
according to its ordinary and customary meaning as encompassing both non-
transitory and transitory media. See Ex parte Mewherter, 107 USPQ2d at
1860 (“[T]he growing body of evidence . . . demonstrat[es] that the ordinary
and customary meaning of ‘computer readable storage medium’ to a person
of ordinary skill in the art was broad enough to encompass both non-
transitory and transitory media”).
For the reasons set forth above and in Mewherter, we recognize, but
are not persuaded by, Appellants’ contentions to the contrary (see App. Br.
10-20; Reply Br. 5-11).
We note that Appellants were not precluded from amending claim 16
and its dependent claims to overcome this rejection. Guidance on this point
was provided, prior to Appellants response to the non-final Office action on
October 8, 2010, in U.S. Patent & Trademark Office, Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010) (“A claim drawn to such a computer readable medium that
covers both transitory and non-transitory embodiments may be amended to
narrow the claim to cover only statutory embodiments to avoid a rejection
under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the
claim.”). Appellants did not choose to incorporate this limitation into their
claim.

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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
“computer-readable storage” of claim 16 encompasses non-statutory signals.
B. 35 U.S.C. § 103(a) over Wang and Hibbets
The Examiner finds that
Wang teaches a computer implemented method comprising:
A) receiving at least one tag for an artifact from a user
(Paragraph 34);
B) determining at least one attribute of the user (Paragraph
22);
C) wherein the at least one attribute comprises a security
level with the user (Paragraph 35);
D) storing a tag record comprising the tag, the attribute of
the user, and an association of the tag with the artifact
(Paragraph 22).

(Ans. 6.) The Examiner finds that Wang “does not explicitly teach: E)
determining a subset of tags of the tagging system according to the security
level of the user; and F) presenting the subset of tags to the user, wherein the
tag for the artifact is selected from the subset of tags” (Ans. 7). The
Examiner finds that Hibbets teaches “‘presenting the subset of tags to the
user, wherein the tag for the artifact is selected from the subset of tags’”
(Ans. 9).
The Examiner finds it obvious to “combine the teachings of the cited
references because teaching Hibbets’s would have allowed Wang’s [sic] to
provide a method that improves the semantic understanding of applied tags
to knowledge items in a social network, as noted by Hibbets” (Ans. 10).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Wang and Hibbets suggest a tag
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record comprising an attribute of a user where the “attribute comprises a
security level associated with the user” as required by claim 1?
Findings of Fact
4. Wang teaches that:
Once the user has selected a contact in which to
associate a characterizing tag, the user can manually assign a
characterizing tag using the tag component 102, as described
below. The user can also select one or more recommended
tags that are recommended by the recommendation
component 110. For example, a characterizing tag may
characterize the contact based on a user’s perspective, a
prior communication, and/or a relationship between the
contact and user, as described above. Once the user has
manually entered a characterizing tag and/or selected a
recommended characterizing tag, the user can add the
characterizing tag to the contact. At 204, the administration
component 118 determines whether the particular contact is
blocked from being tagged. If the contact is blocked from
being tagged, the flow proceeds to 206 and the user is
alerted by the notification component 112 that this particular
contact is blocked from being tagged.

(Wang 3 ¶ 0034.)
5. Wang teaches that “the characterizing tag and other data can be
stored in the tag store 104. For example, the user’s identification
information and date/time that the tag was applied can be stored along with
the characterizing tag in the tag store 104 as metadata” (Wang 3 ¶ 0035).
6. Wang teaches
In an embodiment, the tag store 104 also includes
information associated with who tagged (“the tagger”) the
particular person of interest, such as the tagger’s name, e-
mail address, or other identification information associated
with the tagger. In one embodiment, the tag store 104 can
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also include the date and/or time that delineates when the
tagger tagged the person of interest with the one or more
characterizing tags. The tag store 104 is available to users
associated with the tagging system 100.

(Wang 2 ¶ 0022.)
7 Wang teaches that “only certain users having specific privileges
may be able to use the tagging system 100” (Wang 3 ¶ 0035).
8. Hibbets teaches that:
Users with super privileges can apply a predefined set of
tags to knowledgebase items, where the knowledgebase
items can be articles, posts, or other similar information
useful to the user community. Ordinary users can apply tags
to knowledgebase items based on a community set of tags,
where the community set of tags can be any term supplied
by an ordinary user. The community set of tags can also be
configured to show the popularity of any tag within the set.
Accordingly, a subsequent user can search the
knowledgebase based on the approved set of tags, the
community set of tags, or a combination of the two tags.

(Hibbets 1 ¶ 0015.)
9. Hibbets teaches that:
More particularly, the tagging module 340 can be configured
to provide a predefined set of tags as well as a community
set of tags. The predefined set of tags can be developed
from the community set of tags by a group of users with
super privileges (such as support personnel, verified experts,
etc.). An example of the predefined set of tags can be a
support-team tags. These tags would be used by the support
personnel to tag items in the knowledgebase that are helpful,
authoritative, or other high value. Accordingly, the
predefined set of tags are given much more weight.

(Hibbets 4 ¶ 0053.)
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10. Hibbets teaches that:
In step 710, the user can tag a knowledge item with a
tag term from either the set of community tag terms 615 and
the predefined set of tags. More particularly, after reviewing
a knowledge item, the user can select at least one term from
either one of both the set of community tag terms 615 and
the predefined set of tag terms 620 that the user would like
to associate with the knowledge item. As previously
mentioned, the knowledge item can be an article, a FAQ, a
Wiki page or other written description. Multiple tag terms
can be associated with the knowledge item.

(Hibbets 5 ¶ 0062.)
Principles of Law
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Analysis
Appellants contend that “neither of the cited passages of Wang
disclose or suggest storing a tag record comprising the tag, the attribute of
the user (which comprises a security level associated with the user), and an
association of the tag with the artifact” (App. Br. 26).
The Examiner finds that “the tag store 104 of Wang clearly stores the
tag (characterizing tag), the attributes of the user (See information of the
tagger such as name/email address as well as specific privileges), and the
association of the tag with an artifact (See tagger and particular person of
interest)” (Ans. 30).
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We find that Appellants have the better position. While we agree with
the Examiner that Wang’s tag store 104 includes the tag, attributes of the
user, and association of the tag (FF 4-6), the Examiner has not established
that Wang teaches that the tag or tag store includes the attribute of “specific
privileges.”
Our review of paragraphs 22 and 35 of Wang find no specific teaching
to incorporate information regarding either a “security level” or “specific
privileges” onto the tag itself. The final portion of paragraph 35 of Wang,
teaching that “only certain users having specific privileges may be able to
use the tagging system,” does not support the conclusion that the “special
privilege” information is itself included in the tag, but rather suggests that
this information is stored in the tagging system.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Wang and Hibbets suggest a tag record comprising an attribute of a user
where the “attribute comprises a security level associated with the user” as
required by claim 1.
SUMMARY
In summary, we affirm the rejection of claims 16, 17, 19, and 21
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
W reverse the rejection of claims 1-3, 6, 7, 16, 17, 19, and 21 under
35 U.S.C. § 103(a) as obvious over Wang and Hibbets.

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

AFFIRMED-IN-PART

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