Ex Parte Carlton et al

Patent Trial and Appeal Board

Jun 18, 2018

14010709 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/010,709 08/27/2013
108982 7590 06/20/2018
Wolfe-SBMC
116 W. Pacific A venue
Suite 200
Spokane, WA 99201
FIRST NAMED INVENTOR
Tyler W. Carlton
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.
3151US01 8074
EXAMINER
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TYLER W. CARLTON, RYAN E. COBOURN,
CARMEN SUTTER, and STEVEN L. WIRIG
Appeal 2018-001031
Application 14/010,709
Technology Center 2100
Before ALLEN R. MacDONALD, AMBER L. HAGY and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellants indicate the real party in interest is Adobe Systems
Incorporated. App. Br. 3.
Appeal 2018-001031
Application 14/010,709
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-13, 15-19, and 21-23. We have jurisdiction under 35 U.S.C.
§ 6(b ).
Representative Claims
Representative claims 1 and 10 under appeal read as follows
( emphasis, formatting, and bracketing added):
1. A system comprising:
[A.] one or more processors; and
[B.] one or more computer-readable storage media storing
computer-executable instructions that, responsive to
execution by the one or more processors, cause the system
to perform operations including:
[i.] receiving metric values for a group of metrics specified
for a social media author,
[a.] one or more of the metrics corresponding to an
action by a user other than the social media
author that is attributed to a referral by the
social media author,
[b.] the action by the user other than the social
media author including one or more of a
referred registration creating a new account or
a referred purchase by the user other than the
social media author that occurs based on
content posted to a social media page of the
social media author; and
[ii.] calculating an influence score for the social media
author by applying a weighting value to one of more
of the metric values and adding the metric values to
obtain a total influence score.
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10. A computer-implemented method, comprising:
[A.] specifying a set of metrics for a social media author,
including selecting a pre-configured author category for
the social media author from multiple different categories
of authors, the pre-configured author category including
the set of metrics by def a ult;
[B.] weighting individual metrics of the set of metrics; and
[C.] storing a profile for the social media author such that the
profile is usable to calculate an influence score for the
social media author based on
[i.] events the affect individual metrics of the set of
metrics, and
[ii.] weighting values specified for the individual metrics.
Rejections
The Examiner rejected claims 10-13, 15-19, and 21-23 under
35 U.S.C. § I02(a)(2) as being anticipated by Novak et al. (US
2014/0019539 Al; published Jan. 16, 2014, filed July 16, 2012).
Appellants argue separate patentability for claim 10. 2 Appellants do
not argue separate the patentability for claims 11-13, 15-19, and 21-23. To
the extent that Appellants discuss claims 12, 13, 15, 16 and 18, Appellants
merely repeat for claims 12, 13, 15, 16 and 18 arguments directed to claim
10. Such a repeated argument is not an argument for "separate
patentability." Except for our ultimate decision, we do not address claims
11-13, 15-19, and 21-23 further herein.
2 We read "claim 16" at page 18, line 14, of the Appeal Brief as being a
typographical error. We read this "claim 16" as "claim 1 O" and address the
argument accordingly.
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Application 14/010,709
The Examiner rejected claims 1-3 and 5-9 under 35 U.S.C. § 103 as
being unpatentable over the combination of Novak and Kerr (US 9,319,373
Bl; issued Apr. 19, 2016, filed Mar. 15, 2013).
Appellants argue separate patentability for claim 1. Appellants do not
argue separate patentability for claims 2, 3, and 5-9. To the extent that
Appellants discuss claim 5, Appellants merely repeat for claim 5 arguments
directed to claim 1. Such a repeated argument is not an argument for
"separate patentability." Except for our ultimate decision, we do not address
claims 2, 3, and 5-9 further herein.
Issues on Appeal
Did the Examiner err in rejecting claim 10 as being anticipated?
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
concur with the findings and conclusions reached by the Examiner.
A. Section 102 Rejection
1.
Appellants raise the following arguments in contending that the
Examiner erred in rejecting claim 10 under 35 U.S.C. § I02(a)(2).
Novak [39] simply makes a passing reference to the notion that
data elements are used to track the second user's influence score.
However, there is no discussion of "the pre-configured author
category including the set of metrics by def a ult. " The data
elements of Novak are not discussed as including any set of
metrics by default, but appear to be individually selected by a
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first user, or automatically selected using a predefined policy
provided by the first user. As referenced above, Novak indicates
the "first user may then select, from the displayed list, those data
elements he wishes to include in the subset of the social-
networking data for the second user." Novak at [0039]. There is
no mention of a "pre-configured author category including the
set of metrics by default," as recited in claim 10. In point of fact,
the only mention of anything remotely similar to "default" in
Novak mentions that "the subset of the social-networking data
for the second user may be specified automatically, e.g., by the
device processor using a predefined policy provided by the first
user." Novak at [0039]. (emphasis added).
App. Br. 15-16 (emphasis added).
In point of fact, Novak appears to imply that no pre-configured
author categories exist, rather, all author profiles are individually
created by selecting which data elements the user wishes to
include in the social networking data for the second user.
Thus, other than discussing individually selected data
elements, there is no discussion in Novak of any author
categories, much less "multiple different categories of authors"
as recited in claim 10. This feature of claim 10 is not found in
Novak.
App. Br. 17 ( emphasis added).
As to Appellants' contention, we disagree. First, we construe the
critical terms "pre-configured" and "default" of claim 10. Reviewing the
Specification, we do not find the Appellants provide their own definitions
for these terms. Therefore, we tum to Dictionary.com 3, which states that in
the field of computers the term "configure" means:
Computers. to set up (a software program or device) for a
particular computer, computer system, or task.
3 Dictionary.com Unabridged; Based on the Random House Unabridged
Dictionary,© Random House, Inc. 2018 (Accessed June 1, 2018).
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Dictionary.com further states as to the term "pre-":
a prefix occurring originally in loanwords from Latin, where it
meant "before" (preclude; prevent); applied freely as a prefix,
with the meanings "prior to," "in advance of," "early,"
"beforehand " "before " "in front of" and with other figurative
' ' ' meanings (preschool; prewar; prepay; preoral; prefrontal).
We find these dictionary definitions are consistent with Appellants' use of
the term "pre-configured" in the Specification. As to the term "default,"
Dictionary.com states that in the field of computers the term means:
Computers. a value that a program or operating system assumes,
or a course of action that a program or operating system will take,
when the user or programmer specifies no overriding value or
action.
We find this dictionary definition is consistent with Appellants' use of the
term "default" in the Specification.
Second, based on these dictionary definitions, we conclude the
Examiner is correct in concluding that Novak discloses these argued
limitations.
The subset of the social-networking data for the second user 10
may, for example, be specified to include only data relating to
only topics or subjects that are of interest to the first user 6 ( e.g.,
sports, politics, etc.). These topics of interest may be specified
by using keywords or categories etc. In other words, the subset
may be specified by removing data relating to subjects that are
not of interest to the first user 6.
Novak 38 ( emphasis added).
Also for example, the subset of the social-networking data for
the second user 10 may be specified or pre-defined by the first
user 6 ( or by a different party).
Novak 39 (emphasis added).
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We note that the topic example of "sports" (Novak 3 8) corresponds to
Appellants' author category example of "Sports Participant" (Spec. 39).
2.
Appellants raise the following arguments in contending that the
Examiner erred in rejecting claim 10 under 35 U.S.C. § 102(a)(2).
There is no discussion in these sections [Novak 38--41, 43, and
48] of any type of "weighting individual metrics of the set of
metrics." Rather, Novak discusses selecting individual data
points, but not specified weighting values for those selected data
points. The data points in Novak are either selected, or not
selected . ... The Novak system allows for manipulation of the
influence score based on subjective biases of the user, not by
"weighting individual metrics of the set of metrics."
App. Br. 18-19 ( emphasis added).
[I]t is impossible for Novak to disclose any calculation based on
"weighting values specified for the individual metrics" because
these weighting values simply do not exist in Novak.
App. Br. 20 ( emphasis added).
As to Appellants' contention, we disagree. Appellants acknowledge,
"the data points in Novak are either selected, or not selected." App. Br. 19.
However, Appellants overlook that such selecting is setting the weighting of
the data point to a value of either "O" or "1" for purposes of determining the
influence score. While Appellants' Figure 2 ( discussed at page 13 of the
Appeal Brief) shows a greater granularity to Appellants' weighting of metric
values (i.e., values greater than "O" and less than "1") than the "O" or "1"
weighting of Novak, Appellants' claim 10 is not so limited.
To the extent that Appellants are arguing that Novak fails to teach
weighting values greater than "O" and less than "1," Appellants' argument is
not commensurate with the scope of the claim language. The "weighting"
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step of claim 10 is not explicitly so limited, nor do Appellants explain how
claim 10 would be inherently so limited, nor do we find alternative language
that would similarly mandate such a limitation.
B. Section 103 Rejection
1.
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
[In claim 1 a] user's actions or events may correlate to a
social media post made by a social media author, and thereby be
quantified for purposes of determining influence. See, e.g.,
Appellant's specification as filed at paragraph [ 0018] and [ 0019].
For at least the reasons discussed below, Appellant submits that
Kerr does not disclose, teach, or suggest subject matter even
remotely similar to these features.
Generally, Kerr discusses initiating a direct marketing
campaign originating from one user to another user. Kerr at col.
5, ln. 4-40. Claim 1 includes features that are simply not found
in Kerr. Thus, Appellant maintains that the Office has failed to
establish a prima facie case of obviousness with respect to claim
1 for at least the reason that Novak and Kerr do not disclose,
teach, or suggest each and every feature of claim 1.
Kerr [at column 5, lines 4--40 and column 7, line 16-
column 6, line 18] simply makes a reference to the notion of
communicating a directed advertisement to a recipient. There is
no discussion of "the action by the user other than the social
media author including one or more of a referred registration
creating a new account or a referred purchase by the user other
than the social media author that occurs based on content posted
to a social media page of the social media author."
App. Br. 41--43.
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Essentially, Appellants' argument, that "Kerr does not disclose, teach,
or suggest subject matter even remotely similar to these features," is an
argument that Kerr is not analogous art. Prior art is analogous if either
(A) "the art is from the same field of endeavor, regardless of the problem
addressed" or (B) regardless of field of endeavor, the reference is
"reasonably pertinent to the particular problem with which the inventor is
involved." Innovention Toys, LLCv. MGA Ent., Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011) (quotation omitted). "A reference is reasonably pertinent if
... it is one which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in considering his
problem." Id. (quotation omitted). "If a reference disclosure has the same
purpose as the claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness rejection." Id.
(quotation omitted). However, "[t]he pertinence of the reference as a source
of solution to the inventor's problem must be recognizable with the foresight
of a person of ordinary skill, not with the hindsight of the inventor's
successful achievement." Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d
1355, 1359 (Fed. Cir. 2014).
In Innovention, the patentee argued the references "describ[ ed]
computer-based, chess-like strategy games" and were "non-analogous art
because the [ asserted] patent's inventors were concerned with making a
non-virtual, three-dimensional, laser-based board game, a project that
involves mechanical engineering and optics, not computer programming."
637 F.3d at 1316, 1321. The Federal Circuit found "an electronic, laser-
based strategy game, even if not in the same field of endeavor, would
nonetheless have been reasonably pertinent to the problem facing an
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Application 14/010,709
inventor of a new, physical, laser-based strategy game" because both "relate
to the same goal: designing a winnable yet entertaining strategy game." Id.
at 1322.
Given the record before us, we are not persuaded by Appellants'
arguments. Appellants' invention is ranking the social media author based
on their influence score. Spec. ,r 106. "[A]s an addition or an alternative to
ranking by influence scores, authors can be ranked by attributed revenue."
Spec. ,r 108. In Appellants' claim 1, one or more metrics correspond to a
user action including a user "referred purchase" based on author-posted
content. We read the claimed "referred purchase" as a "attributed revenue"
(i.e., revenue attributed to the author) used as a metric in computing the
influence score. We find Kerr to be highly pertinent prior art as it is directed
to the value of a player. In Kerr, the value of a player can include monetary
value in the form of "summing a total of cash purchases of the player's
referrals." Kerr, col. 7, 11. 65-66. "Similar to referrals, 'derivative cash' is
total cash spent on the site by a player's derivative referrals." Kerr, col. 8, 11.
19-20. We conclude that Kerr is analogous art, and, contrary to Appellants'
argument, we conclude that Kerr discloses an action by the user other than
the social media author including a referred purchase by the user.
2.
Appellants also raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
Further, the actions are not discussed as "based on content posted
to a social media page of the social media author," but appear to
be direct marketing messages sent to a targeted individual. As
referenced above, Kerr indicates "an exemplary method of
generating a user to user message" Kerr at col. 5, ln. 4-6.
Appellant submits that Kerr simply makes no mention of "the
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action by the user other than the social media author including
one or more of a referred registration creating a new account or
a referred purchase by the user other than the social media author
that occurs based on content posted to a social media page of
the social media author."
App. Br. 43 ( emphasis added).
As to Appellants' contention regarding claim 1, we disagree.
Appellants argue the Kerr reference fails to disclose or suggest the limitation
of actions based on content posted to a social media page of the social media
author. However, the Examiner did not cite Kerr for this limitation. Rather,
the Examiner cited Novak. Final Act. 19 ("Novak discloses actions by users
other than a social media author that occurs based on content posted to a
social media page of the social media author.").
We conclude that Appellants' argument does not address the actual
reasoning of the Examiner's rejections. Instead, Appellants attack the Kerr
reference singly for lacking teachings that the Examiner relied on a
combination of references to show. It is well established that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
This form of argument is inherently unpersuasive to show Examiner error.
Our reviewing court requires that references must be read, not in isolation,
but for what they fairly teach in combination with the prior art as a whole.
Merck, 800 F.2d at 1097 (Fed. Cir. 1986).
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3.
Appellants also raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
Novak permits a user to only select which data points he wishes
to include in the calculation of the influence score, and change
that influence score by manually overriding the calculation or
selecting a new set of data points from which to re-calculate the
influence score. Novak does not permit "receiving metric values
for a group of metrics."
App. Br. 44 ( emphasis added).
[N]one of these portions of Novak [paragraphs 29, 30, 38, and
68] involve any calculation by "applying a weighting value to
one of more of the metric values and adding the metric values to
obtain a total influence score." It is impossible for Novak to
disclose any calculation based on any "weighting values"
because these values simply do not exist in any part of Novak.
App. Br. 45 ( emphasis added).
As to this argument, it repeats the "weighting" argument Appellants
presented for claim 10. Again, we are unpersuaded of Examiner error for
the reasons we have previously set forth for Appellants' claim 10 argument.
4.
Appellants also raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
[T]he Office argues that it would be obvious to combine Novak
and Kerr to "determine a value of a user as a best candidate to
refer other users by calculating points for the user based on
metrics determined by actions of referred users (Kerr: Column 7,
line 16 - Column 8, line 18)." Office Action at page 20. However,
the Office's motivation to combine Novak and Kerr
is inaccurate.
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The portion of Kerr cited by the Office fails to describe
what the Office claims. Rather, Kerr describes a method of
calculating a message's ROI based on the value of the intended
recipient, not based on the sender. Kerr at Col. 7, ln. 16-18. The
recipient's value is based on "loyalty points" earned by the
recipient's actions. Nowhere in the cited portion of Kerr does
the reference contemplate calculating the author's value.
Consequently, it is impossible for Kerr to motivate a person of
ordinary skill in the art to calculate an influence score of an
author when Kerr merely describes calculating a value of a
message.
Additionally, the combination of Kerr with Novak would
render Novak inoperable because Kerr is only concerned with
determining the ROI of a message based on the value of the
message recipient, which is not the information that Novak uses
to complete its calculation.
App. Br. 46 ( emphasis added).
As to Appellants' above contention regarding claim 1, we disagree.
As we discussed above, in Kerr, the value of a player can include monetary
value in the form of "summing a total of cash purchases of the player's
referrals." Kerr, col. 7, 11. 65-66. Kerr is also explicit that "a referral can be
considered an initial referral from a player to his friend(s)." Kerr, col. 7, 11.
37-38. We deem such a referral to be an act of authorship by the player
making the referral. Kerr is not limited to merely disclosing calculating a
value of a message. Rather, we find Kerr also discloses calculating the value
of a player as the author of his referrals. Contrary to Appellants' argument,
we are not persuaded adding Kerr's referral author valuation process to
Novak's influence score calculation method would render Novak's method
inoperative.
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CONCLUSIONS
(1) The Examiner did not err in rejecting claims 10-13, 15-19, and
21-23 as being anticipated under 35 U.S.C. § 102(a)(2).
(2) The Examiner has not erred in rejecting claims 1-3 and 5-9 as
being unpatentable under 35 U.S.C. § 103.
(3) Claims 1-3, 5-13, 15-19, and 21-23 are not patentable.
DECISION
The Examiner's rejection of claims 10-13, 15-19, and 21-23 as being
anticipated under 35 U.S.C. § 102(a)(2) is affirmed.
The Examiner's rejections of claims 1-3 and 5-9 as being
unpatentable under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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