Ex Parte BARHATE et al

Patent Trial and Appeal Board

Sep 6, 2018

13483132 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/483, 132 05/30/2012
68585 7590 09/10/2018
PA TENTS ON DEMAND, P.A. - IBM CAM
4581 WESTON ROAD
SUITE 345
WESTON, FL 33331
FIRST NAMED INVENTOR
CHIRAG K. BARHATE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IN9201 l 0246US2 6278
EXAMINER
HATCHER, DEIRDRE D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/10/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing 1@patentsondemand.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIRAG K. BARHATE and MARESH S. P ARADKAR
Appeal2017-004249
Application 13/483,132
Technology Center 3600
Before JOHN A. JEFFERY, ERIC S. FRAHM, and
BETH Z. SHAW, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm the rejections of claims 1-20 under 35 U.S.C. §§ 101 and
103(a).
Appellants' application relates to "the field of data handling and, more
particularly, to using the inheritance of professional-social network
information to facilitate organizational position changes." Spec. ,r 2; see
1 According to Appellants, the real party in interest is International Business
Machines, Inc. App. Br. 3. This case is related to the appeal in U.S. Patent
Application No. 13/425,608 (Appeal No. 2017-004263), which has an
identical inventive entity and real party in interest as the instant case.
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Application 13/483, 132
also Title ("USING THE INHERITANCE OF PROFESSIONAL-SOCIAL NETWORK
INFORMATION TO FACILITATE ORGANIZATIONAL POSITION CHANGES").
Appellants claim methods for (i) maintaining social networks (method claim
1 ); preserving tacit knowledge in an organization (method claim 14 ); and
(iii) enhancing the productivity of an organization (method claim 20), that
each prevent the loss of "tacit information." See Spec. ,r,r 3, 4. Appellants
describe "tacit information" in the following manner:
(1) "Tacit information are those subtle data nuggets that members
learn over time like who is the best supplier to order from or what
font your supervisor prefers for documents." Spec. ,r 3.
(2) "The tacit knowledge comprises information regarding job
functions associated with the organizational position associated by
the member (e.g.[,] para[s]. 0002, 0025-0028)." App. Br. 8. This
can include conceptual social network information, such as people
or contacts needed in order to perform job duties in a professional,
social network. See Spec. ,r,r 25-27, 41, 42.
(3) Tacit information can include electronic communications, and "can
represent items, including, but not limited to, email messages,
instant messages, social network postings, text messages, shared
application messages and/or data, electronic documents, Web
forms, and the like." Spec. ,r 28.
( 4) Tacit information can also be senders and recipients of electronic
communications, or other organizational data. See Spec. ,r 75.
Appellants further disclose and claim ignoring social electronic
communications by removing them from the analysis, and only basing the
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analysis on work-related communications. See Spec. ,r,r 73, 74; Fig. 4, step
415 ("[i]gnores electronic communication"); claims 1, 14, 20.
Claim 1 is illustrative of the subject matter on appeal, and is
reproduced below, with bracketed lettering and emphases added to disputed
portions of the claim, as follows:
1. A method for maintaining professional-social networks
compnsmg:
one or more computing devices, executing program
instructions stored in a non-transitory medium, automatically
creating a professional-social network for each member of an
organization by a professional-social network tool based upon
electronic communication analysis, wherein each member has a
uniquely-identified organizational position within an
organizational model of the organization, wherein the
professional-social network is comprised of nodes representing
contacts with whom a member interacts with to perform job
functions defined for an organizational position associated with
the member, wherein said nodes are connected to the member by
relationships that express an interaction context, and, wherein a
contact represents at least one of a person, a group of people, and
another organization;
at least one of the one or more computing devices
segregating professional communication of the member and non-
professional communication of the member from the electronic
communication analysis, wherein the professional
communication comprises tacit knowledge of the member, and
[A] wherein the non-professional communication is
automatically removed from the electronic communication
analysis;
at least one of the one or more computing devices
automatically converting the tacit knowledge of the member into
an electronic form based on the professional
communication of the member, [BJ wherein the tacit knowledge
comprises information regarding job functions associated with
the organizational position associated by the member;
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at least one of the one or more computing devices
associating the converted tacit knowledge of the member with
the organizational position held by the member;
at least one of the one or more computing devices, in
response to a change from a first organizational position to a
second organizational position for a specified
member, dissociating the specified member from the
professional-social network of the first organizational position,
wherein the first organizational position represents an
organizational position currently held by the specified member
and the second organizational position represents an
organizational position that the specified member is being
moved into; and
at least one of the one or more computing devices
associating the specified member with the professional-social
network of the second organizational position, wherein tacit
information contained within the professional-social network
for performing the job functions of the second organizational
position is inherited by the specified member.
REJECTIONS
The Examiner made the following rejections:
(1) The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter, because claims 1, 14, and
20 are drawn to (a) a fundamental economic activity (e.g., maintaining social
networks), which is an abstract idea, and can be performed by a human using
pen and paper; and (b) managing interpersonal activities, which can be
considered methods of organizing human activity (Ans. 36-45).
(2) The Examiner rejected claims 1-19 under 35 U.S.C. § I03(a) as
being unpatentable over either (a) the base combination of Skarin (US
2011/0072052 Al; published March 24, 2011), Burritt (US 2012/0110083
Al; published May 3, 2012), Dunn (US 2012/0102114 Al; published April
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26, 2012), and Sood (US 2011/0173274 Al; published July 14, 2011), or (b)
the base combination in view of various other references. Final Act. 4--32;
Ans. 2-30.
(3) The Examiner rejected claim 20 under 35 U.S.C. § I03(a) as
being unpatentable over Skarin, Prabhakar Raghavan, Social Networks:
From the Web to the Enterprise, IEEE INTERNET COMPUTING, 91-94 (2002)
(hereinafter, "Raghavan"), Sood, and Burritt. Final Act. 32-36; Ans. 31-35.
Principal Issues on Appeal
Based on Appellants' arguments in the Appeal Brief (App. Br. 12-18)
and the Reply Brief (Reply Br. 2--4), the following principal issues are
presented on appeal:
(1) Did the Examiner err in rejecting claims 1-20 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter, because
representative claim 1, taken as a whole in light of the Specification, is
directed to an abstract idea or combination of abstract ideas implemented on
generic computer equipment without reciting an element or combination of
elements that is (are) significantly more than the abstract idea( s) itself
(themselves)?
(2) Did the Examiner err in rejecting claims 1-20 under
35 U.S.C. § I03(a) over the base combination of Skarin, Burritt, and Sood
because Sood fails to teach or suggest automatic removal as in limitation [A]
and/or Skarin fails to teach or suggest tacit knowledge as in limitation [BJ,
as recited in representative claim 1, and commensurately recited in
independent claim 20?
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ANALYSIS
Issue (1): Patent-Ineligible Subject Matter
In Alice, the Supreme Court reiterated the two-step framework set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), for determining whether the claimed subject matter is
judicially-excepted from patent eligibility under § 101. Alice Corp. Pty. Ltd.
v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). Assuming that a claim
nominally falls within one of the statutory categories of machine,
manufacture, process, or composition of matter, the first step in the analysis
is to determine if the claim is directed to a law of nature, a natural
phenomenon, or an abstract idea (judicial exceptions). Alice, 134 S. Ct. at
2355. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If
the claim is directed to a judicial exception, such as an abstract idea, the
second step is to determine whether additional elements in the claim
"'transform the nature of the claim' into a patent-eligible application." Id. at
2355 ( quoting Mayo, 566 U.S. at 78). This second step is described as "a
search for an "'inventive concept"'-i.e., an element or combination of
elements that is ' ... significantly more than ... the [ ineligible concept]
itself."' Id. at 2355 (alteration in original) ( quoting Mayo, 566 U.S. at 72-
73).
"[T]he first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
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822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1854)). "We therefore look to whether
the claims ... focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
Further, as our reviewing court noted in McRO, it is important to
determine "whether the claims ... focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery." 837 F.3d at 1314. In other words, a claim that defines the way
by which a computer-related result is achieved is distinguishable from a
patent-ineligible claim that simply describes a result.
The second step in the Alice analysis requires a search for an
"'inventive concept"' that "must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (2016) (quoting Alice, 134 S. Ct. at 2355). There
must be more than "computer functions [that] are 'well-understood, routine,
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conventional activit[ies]' previously known to the industry." Alice, 134 S.
Ct. at 2359 (second alteration in original) (quoting Mayo, 566 U.S. at 73).
Step One of Alice
Regarding step one of Alice, Enfzsh held that the "directed to" inquiry
asks not whether "the claims involve a patent-ineligible concept," but instead
whether, "considered in light of the specification, ... 'their character as a
whole is directed to excluded subject matter."' Enfzsh, 822 F.3d at 1335
(internal citation omitted). Regarding improvements to computer-related
technology, the Court in Enfzsh held as follows:
We do not read Alice to broadly hold that all improvements in
computer-related technology are inherently abstract and,
therefore, must be considered at step two. Indeed, some
improvements in computer-related technology when
appropriately claimed are undoubtedly not abstract, such as a
chip architecture, an LED display, and the like. Nor do we think
that claims directed to software, as opposed to hardware, are
inherently abstract and therefore only properly analyzed at the
second step of the Alice analysis. Software can make non-
abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be
accomplished through either route. We thus see no reason to
conclude that all claims directed to improvements in computer-
related technology, including those directed to software, are
abstract and necessarily analyzed at the second step of Alice, nor
do we believe that Alice so directs. Therefore, we find it relevant
to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea,
even at the first step of the Alice analysis.
Enfzsh, 822 F.3d at 1335. Thus, we determine whether the claims "focus on
a specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, 837 F.3d at 1314.
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We agree with the Examiner (Ans. 36-41) that claim 1 is drawn to a
fundamental economic activity (maintaining a social network), which is an
abstract idea.
Claims 1, 14, and 20 require the functional results of "automatically
creating a professional-social network," "segregating professional
communication ... compris[ing] tacit knowledge," "automatically
converting the tacit knowledge," "associating the converted tacit
knowledge," "dissociating ... [a] specified member from the professional-
social network" under certain conditions, and "associating the specified
member" under other certain conditions, but do not sufficiently describe
how to achieve these results in a non-abstract way (see, e.g., claim 1 ).
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016) (holding that claims were directed to an abstract idea where they
claimed "the function of wirelessly communicating regional broadcast
content to an out-of-region recipient, not a particular way of performing
that function").
For example, independent claim 1 merely recites " [a] method for
maintaining professional-social networks" ( claim 1) that is performed
by generic computer elements ("one or more computing devices,
executing instructions stored in a non-transitory medium") for their
basic functions and, thus, do not transform the claimed abstract idea into
eligible subject matter under Alice. See Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014)
(finding that there is no inventive concept in using a generic computer "to
perform well-understood, routine, and conventional activities commonly
used in industry").
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Thus, we conclude claim 1 is drawn to little more than automating the
abstract idea of maintaining a professional-social network by performing the
operations set forth in claim 1, which we conclude is a fundamental
economic practice and method of organizing human activities and, therefore,
constitutes patent-ineligible subject matter. See Alice, 134 S. Ct. at 2357;
Bilski v. Kappas, 561 U.S. 593, 611 (2010); Enfish, 822 F.3d at 1335
("fundamental economic and conventional business practices are often found
to be abstract ideas, even if performed on a computer").
Appellants do not rebut (see generally Reply Br. 2--4) the Examiner's
conclusion that the claims are directed to a fundamental activity that is an
abstract idea for commercial purposes-and that such an abstract idea or
ideas is/are similar to other concepts found to be abstract. See Ans. 41
(citing Cybeifone Systems, LLC v. CNN Interactive Group, Inc., 558 F.
App'x 988, 991-92 (Fed. Cir. 2014)) (concluding collecting information,
then separating and transmitting that information according to its
classification is an abstract idea); SmartGene, Inc. v. Adv. Bio. Labs., SA,
555 F. App'x 950, 954 (Fed. Cir. 2014) (invalidating a claim to
computerized application of a mental process for treating medical patients
that "doctors do routinely"). Appellants' Reply Brief neither discusses nor
disputes the Examiner's comparison of the instant claims on appeal to those
found ineligible in Cybeifone and/or SmartGene.
Further, we note that examining earlier cases can have a role in
deciding whether a concept that claims are found to be directed to is an
abstract idea. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) ("Instead of a definition [ for what an 'abstract
idea' encompasses], then, the decisional mechanism courts now apply is to
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examine earlier cases in which a similar or parallel descriptive nature can be
seen-what prior cases were about, and which way they were decided").
We note the similarity of claim 1 on appeal to the concept found
ineligible in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1351-53 (Fed. Cir. 2016) (collecting information, analyzing it, and
displaying results is an abstract idea). In this regard, the claims of the
instant application are similar to the claims in Electric Power, which did
"not go beyond requiring the collection, analysis, and display of available
information in a particular field, stating those functions in general terms,
without limiting them to technical means for performing the functions that
are arguably an advance over conventional computer and network
technology." Electric Power, 830 F.3d at 1351. Specifically, our reviewing
Court held that "collecting information, including when limited to particular
content (which does not change its character as information), as within the
realm of abstract ideas" and that "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Id. at
1353-54 (citations omitted).
Our conclusion that claims 1, 14, and 20 are directed to an abstract
idea is supported by analogy to the Federal Circuit's decision in Electric
Power, where the court concluded claims that focused on "gathering and
analyzing information of a specified content, then displaying the results," to
be directed to an abstract idea. 830 F.3d at1354.
Here too, Appellants' claims 1, 14, and 20 recite no more than a
generic processor and storage to implement the claimed functions of
gathering and analyzing information.
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Having concluded the claims are directed to an abstract idea that is
patent-ineligible, we tum to step two of the Alice test.
Step Two of Alice
Regarding step two of Alice, Appellants' contentions that (i) the
Examiner has "read out limitations that weigh against a finding in
ineligibility;" and (ii) "[o]ne claim limitation missing from the rejection's
consideration is 'creating a professional-social network tool based upon
electronic communication analysis"' (see Reply Br. 2), are unpersuasive.
Notably, the term "professional-social network tool" does not appear in any
of claims 1, 14, and/or 20. Claims 1, 14, and 20 on appeal merely recite
generic computer components, such as "one or more computing devices"
( claim 1 ), "a data store" and "a computer-implemented system" ( claims 14
and 20). And, although paragraph 29 of Appellants' Specification describes
using a tool implemented on a computing device, the device is merely
generic and performs generic functions ( collecting, categorizing, acting on
data). The same can be said of Appellants' Figure 2, showing computing
devices 210 and 220 and data store 280 in "a system that utilizes a
professional-social network tool" (Spec. ,r 12). See App. Br. 8, Summary of
Claimed Subject Matter (supporting the "one or more computing devices" of
claim 1 as elements 210 and 220 shown in Figure 2); see also Spec. ,r 50
( describing computing devices 210 and 220 as "a variety of computing
devices capable of supporting operation of the communication user interface
215 and communicating with the corresponding communications application
240 over the network 295"). Paragraphs 17 through 23 of the Specification
also support our understanding that the computing device/system and data
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store recited in claims 1, 14, and 20 on appeal are nothing more than
standard, generic computer components.
Appellants' argument that "[ n Jo evidence is given that these elements
are conventional and well known" (Reply Br. 3), referring to the analysis
and separation of non-professional communications from professional
communications, is also unpersuasive. The Drawings, in particular Figure 2,
support ignoring electronic communications when they are not work-related
(Fig. 2, step 415; Spec. ,r 7 4 ). The Specification does not provide detailed
explanation as to how the communications are separated, and simply states
that "[i]t can be determined if an electronic communication is work-related
in step 410," wherein it can ensured that "social ... communications are not
included in a member's professional-social network" (Spec. ,r 73).
Considering the claimed elements individually and as an ordered
combination, the claims do no more than simply instruct the practitioner to
implement the abstract idea on a generic computer or processer. Alice, 134
S. Ct. at 2359; Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir.
2012) ("Simply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render ... [a] claim patent
eligible") (internal citation omitted). And, merely making the practice of an
abstract idea more effective by implementing the idea on a computer does
not suffice to meet the inventive concept requirement of Alice. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
("[R ]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible").
In sum, Appellants have not demonstrated their claims provide a
"solution ... necessarily rooted in computer technology in order to
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overcome a problem specifically arising in the realm of computer networks,"
as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), or provide an "unconventional
technological solution ... to a technological problem" that "improve[ s] the
performance of the system itself," as explained in Amdocs (Israel) Ltd., 841
F.3d at 1300, 1302.
With regard to claims 5-9, Appellants' contention that these claims
"recite in further detail regarding analysis of the electronic communication
and how the network is modified" (Reply Br. 3) is unpersuasive. Although
claims 5-9 recite "modifying the professional-social network" ( claim 5),
"identifying differences" ( claim 8), determining an importance ( claim 8),
"adjusting the current state of the professional-social network" ( claim 8),
and "capturing basic information" ( claim 9), these claims do not specify, or
provide further detail as to how the network is modified. Thus, these steps
are nothing more than the organization of human activity to accomplish a
fundamental economic activity (e.g., maintaining a social network), which is
an abstract idea.
We are, therefore, not persuaded the Examiner erred by rejecting as
patent-ineligible independent claims 1, 14, and 20, as well as claims 2-13,
and 15-19 depending respectively therefrom.
Issue (2): Obviousness
In formulating the obviousness rejection, the Examiner relies upon
(i) Skarin (Ans. 48--49 ( citing Skarin ,r,r 54, 56, 79)) as teaching or
suggesting tacit knowledge; and (ii) Sood (Ans. 47--48 ( citing Sood ,r,r 30,
127)) as teaching or suggesting automatically removing non-professional
communications, as recited in claims 1, 14, and 20. We agree with the
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Examiner's findings as to the individual references, and one of ordinary skill
in the art would predictably desire to remove non-professional
communications from analysis in determining what professional
communication/information should be passed on as tacit knowledge, as
claimed.
Limitation [A]: Sood
Limitation [A] of claim 1 recites, "wherein the non-professional
communication is automatically removed from the electronic
communication analysis" ( emphasis added). Claim 20 similarly recites,
"automatically removing the non-professional communication from the
analysis" (emphasis added). The Examiner finds, and we agree, that Sood
(i1i130, 127) teaches or suggests automatic removal as set forth in limitation
[A] of claim 1 (see Final Act. 6; Ans. 4--5, 47--48), and as similarly set forth
in claim 20 (see Final Act. 36; Ans. 34, 50).
Specifically, Sood discloses that (i) "the user may select to remove
certain email communications from the social network analysis if he/she
feels that that specific dataset of email is sensitive or personal" (,I 30)
( emphases added); and (ii) contacts and emails can be marked as private by
the user, and '[t]hose emails[, e.g., from a "'spouse' email address,"] will be
excluded from the dataset to be analyzed" (i-f 127).
Appellants admit Sood teaches that a user selects email for removal
from analysis, and argue only that Sood fails to teach automatically
removing the emails (App. Br. 15-16).2 However, we agree with the
2 In so much as Appellants argue that automating a manual operation (such
as in this case having a user manually remove personal emails from analysis)
is patentable on that basis alone, we note that providing an automatic way to
replace a manual activity, which accomplishes the same result, is not
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Examiner (Ans. 47--48) that "Sood teaches that once a user indicates that
certain emails or contacts [are] private[,] they are automatically excluded
from the data set to be analyzed (see at least Sood para. 127)," and "[a]s
such, Sood teaches when the nature of the electronic communication is non-
professional, automatically removing the electronic communication from the
analysis by the professional social network tool as required by Claim 1"
(Ans. 48). And, notably, Appellants' Reply Brief neither discusses nor
disputes the Examiner's amplified reasoning found at pages 4 7--48 of the
Answer, and just discussed above.
In view of the foregoing, Appellants' contentions (App. Br. 15-17)
that Sood fails to disclose the automatic removal of non-professional or
personal emails from analysis as recited in claims 1 and 20, are
unpersuasive. This is especially true when taken with (i) the understanding
of one of ordinary skill in the art that removing more than several emails
(e.g., 100 or more) manually may be time consuming and undesirable when
computers could be instructed to perform such action more efficiently (i.e.,
with one user instruction to remove 100 or more emails from analysis at
once); and/or (ii) Sood's disclosure of the desirability of establishing
"security, privacy[,] and legal policies" (i-f 123) by"[ e ]xcluding emails that
are considered to be 'sensitive', 'confidential', 'deleted' or involved in
'litigation"' (i-f 128).
sufficient to distinguish over the prior art. In re Venner, 262 F .2d 91, 95
(CCPA 1958); see also Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1161 (Fed. Cir. 2007) ("Applying modem electronics to older
mechanical devices has been commonplace in recent years").
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Limitation [BJ: Skarin
Limitation [BJ of claim 1 recites, "wherein the tacit knowledge
comprises information regarding job functions associated with the
organizational position associated by the member" ( emphases added).
Independent claim 14 similarly recites, "wherein the tacit knowledge
comprises information regarding job functions associated with an
organizational position held by the member" ( emphases added). And,
remaining independent claim 20 more broadly and simply recites "tacit
knowledge" without any explicit definition. The Examiner finds, and we
agree, that Skarin teaches or suggests tacit knowledge as recited in limitation
[BJ of claim 1 (Final Act. 7; Ans. 5-6, 48--49), as similarly recited in claim
14 (Final Act. 27-28; Ans. 49), and as more broadly recited in claim 20
(Final Act. 34--35; Ans. 50).
Specifically, we agree with the Examiner's amplified reasoning and
findings regarding Skarin found at pages 48 through 49 of the Answer. This
includes determining (Ans. 49) that Skarin (i) teaches "entity interaction data
will be assembled from email messages and other[] sources," and this "data
is used to create both entity and interaction profiles" (i-f 56); and (ii)
"[l]ooking at patterns of interactivity-the social network of an
organization-provides insight into the status and health of an organization,
as those patterns reflect dynamics not easily discerned through casual
observation" (i-f 79). Furthermore, we agree with the Examiner that (i)
paragraph 54 of Skarin teaches "[ t ]he entity profile system and methods of
its use are able to increase the efficiency of organizations by profiling and
optimizing the patterns of creative interaction in an organization" by
building knowledge of informal and potential networks; and (ii) the
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knowledge or "entity interaction data" (see ,r 54) can be derived from
interactions "such as e-mails, instant messaging, time cards, phone calls,
web conferences and other collaborative work environments that generate
data representing latent structural information about the knowledge, social
networks and tasks" (i-f 79) (emphases added). Ans. 48. And, notably,
Appellants' Reply Brief neither discusses nor disputes the Examiner's
amplified reasoning found at pages 48--49 of the Answer, and just discussed
above.
In view of the foregoing, Appellants' contention (App. Br. 16) that
Skarin's paragraph 54 only teaches indexing knowledge of an entity, and not
where the information is acquired or from what source, is unpersuasive.
This is especially true when taken with (i) the understanding of one of
ordinary skill in the art that knowledge of an entity such as a business
organization would include interaction data between employees, as well as
job duties/descriptions of employees; and/or Skarin's disclosure that (i) an
entity can include an "organization" (i-f 41 ); and (iii) "entity knowledge" or
"the organization's knowledge" can, thus, be accurately maintained based on
"knowledge of informal and potential networks" (i-f 54).
Summary
We are, therefore, not persuaded the Examiner erred in rejecting as
obvious representative claim 1, as well as claims 2, 10, and 12 grouped
therewith. For similar reasons, and because Appellants rely on the
arguments presented as to claim 1 for the patentability of claims 3-9, 11, and
13-20, we are also not persuaded the Examiner erred in rejecting as obvious
claims 3-9, 11, and 13-20.
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Appeal2017-004249
Application 13/483, 132
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-20 under
35 U.S.C. § 101 as being directed toward patent-ineligible subject matter.
(2) The Examiner did not err in rejecting claims 1-19 under
35 U.S.C. § 103(a) over the base combination of Skarin, Burritt, Dunn, and
Sood.
(3) The Examiner did not err in rejecting claim 20 under 35 U.S.C.
§ 103(a) over the combination of Skarin, Raghavan, Burritt, and Sood.
DECISION
We affirm the Examiner's decision to reject claims 1-20 (i) under
35 U.S.C. § 101 as being drawn to patent ineligible subject matter; and
(ii) under 35 U.S.C. § 103(a) as being obvious over the base combination of
Skarin, Burritt, and Sood, taken with either Dunn ( claims 1-19), or
Raghavan ( claim 20).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
19