Ex Parte Carter et al

Patent Trial and Appeal Board

Nov 28, 2018

14074391 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/074,391 11/07/2013
75949 7590 11/30/2018
IBM CORPORATION
C/0: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Bernadette A. Carter
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.
RSW920120138US2 1042
EXAMINER
CADORNA, CHRISTOPHER PALACA
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNADETTE A. CARTER and ARTHUR R. FRANCIS
Appeal 2018-007756
Application 14/074,391 1, 2
Technology Center 2400
Before JOHNNY A. KUMAR, JENNIFER L. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-20. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b ). See Ex parte Lemoine, 46 USPQ2d 1420, 1423
(BPAI 1994) (precedential).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 3.
2 Appellants have identified the following co-pending application as being
related to the instant application: Application No. 13/739,359 (Appeal No.
2018-004277).
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Application 14/074,391
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
personalizing a user's social networking profile page based on user
preferences and characteristics of the viewer viewing the profile page. Spec.
,r 2. The Specification describes a profile page may contain pieces of
personal data and a plurality of entries on the site-i.e., posts or "artifacts."
Spec. ,r 9. Rather than displaying all the artifacts in chronological order, in a
disclosed embodiment, certain artifacts may be emphasized or de-
emphasized (e.g., suppressed) in a presentation of the profile page, based on
user preference settings or based on the viewer. Spec. ,r,r 11-12.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method of personalizing a social networking profile
page within a computer network, the method comprising:
receiving user preferences, at a social network server,
from an owner of a social network profile;
receiving, at the social network server, data describing a
viewer of the owner's social networking profile;
receiving, at the social network server, data describing
interactions between the viewer and the owner of the social
network profile;
with a processor, differentiating via emphasis and de-
emphasis thereof, at the social network server, artifacts available
on the owner's social networking profile based on the user
preferences and data describing a viewer of the owner's social
networking profile; and
with the processor, sending, to the viewer, one of a
plurality of different versions of the social network profile based
on the data describing the viewer;
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wherein the plurality of different versions of the social
network profile viewed by the viewer changes for the viewer
when interaction between the viewer and the owner of the social
network profile exceeds a threshold; and
wherein differentiating artifacts available on the owner's
social networking profile comprises preventing the suppression
of time-sensitive artifacts describing where the owner of the
social networking profile is located and when the owner of the
social networking profile will be available.
The Examiner's Rejections
1. Claims 1-9 stand provisionally rejected under the doctrine of
obviousness-type double patenting over the claims of co-pending
Application No. 13/139,359. Non-Final Act. 3.
2. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Non-Final Act. 3-8.
3. Claims 1--4 and 10 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Galbreath et al. (US 2005/0267766 Al;
Dec. 1, 2005) ("Galbreath"); Malleshaiah (US 2013/0086078 Al; Apr. 4,
2013); and Shuman et al. (US 2013/0185285 Al; July 18, 2013)
("Shuman"). Non-Final Act. 10-15.
4. Claims 5 and 6 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Galbreath, Malleshaiah, Shuman, and Kuehr-
McLaren et al. (US 2009/0228486 Al; Sept. 10, 2009) ("Kuehr-McLaren").
Non-Final Act. 16-18.
5. Claims 7 and 18-20 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Galbreath, Malleshaiah, Shuman, and
Brikman et al. (US 2014/0025596 Al; Jan. 23, 2014) ("Brikman"). Non-
Final Act. 18-24.
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6. Claims 8 and 9 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Galbreath, Malleshaiah, Shuman, Kuehr-
McLaren, and Brikman. Non-Final Act. 24--26.
7. Claims 11 and 14--16 stand rejected underpre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Galbreath, Shuman, Kuehr-McLaren, and
Tseng (US 2012/0166433 Al; June 28, 2012). Non-Final Act. 26-32.
8. Claims 12 and 13 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Galbreath, Shuman, Kuehr-McLaren, Tseng,
and Hyatt et al. (US 2012/0150888 Al; June 14, 2012) ("Hyatt"). Non-Final
Act. 32-34.
9. Claim 17 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Galbreath, Shuman, Tseng, Kuehr-McLaren, and
Robinson et al. (US 2009/0249244 Al; Oct. 1, 2009) ("Robinson"). Non-
Final Act. 34--35.
ANALYSIS 3
Provisional Obviousness-type Double Patenting Rejection
Appellants do not respond to the Examiner's provisional rejection of
claims 1-9 under the doctrine of obviousness-type double patenting other
than to request that the rejection "be held in abeyance." App. Br. 14; Reply
Br. 5.
3 Throughout this Decision, we have considered the Appeal Brief, filed
October 24, 2017, supplemented on December 21, 2017 ("App. Br."); the
Reply Brief, filed July 18, 2018 ("Reply Br."); the Examiner's Answer,
mailed May 23, 2018 ("Ans."); and the Non-Final Office Action, mailed
July 26, 2017 ("Non-Final Act."), from which this Appeal is taken.
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Although the Examiner agreed to hold the rejection "in abeyance," the
Examiner notes that "ab sen[ t] of the filing of a terminal disclaimer or
compelling argument to withdraw the rejection, the rejection is still
maintained." Ans. 5. Because the rejection is still maintained (i.e., the
Examiner has not withdrawn the rejection), it is still properly before the
Board.
To the extent Appellants have not advanced separate, substantive
arguments for particular claims or issues, such arguments are considered
waived. See 37 C.F.R. § 4I.37(c)(1)(iv)(2017); see also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived."). Additionally, "[i]f a ground
of rejection stated by the examiner is not addressed in the appellant's brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it unless the examiner subsequently withdrew the
rejection in the examiner's answer." Manual of Patent Examining Procedure
("MPEP") § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018).
Accordingly, we summarily sustain the Examiner's provisional
rejection of claims 1-9 under the doctrine of obviousness-type double
patenting.
Rejection under 35 USC§ 101
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter. App. Br. 27-33; Reply
Br. 5-8. In particular, Appellants argue the claims recite patent-eligible
subject matter because they are "directed to an improvement to the computer
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functionality [rather than] being directed to an abstract idea."4 App. Br. 30;
Reply Br. 6-7. Appellants allege determining which artifacts in a social
networking profile are to be de-emphasized based on the viewer of the
profile, as well as preventing certain other artifacts from being de-
emphasized "improves the capabilities of the computer network, ... [ and
also] improves the capabilities of a physical device operating on the network
generally." App. Br. 31; Reply Br. 6-7. Appellants assert the improvement
to the computer's functionality results from "providing a social networking
site that allows an owner of a social network profile to specifically control
what viewers do and do not see with regards to posts from or to the owner."
App. Br. 31 ( emphasis omitted). Additionally, Appellants assert the
Examiner did not support the conclusion that the claims are directed to an
abstract idea. App. Br. 29-30. Moreover, Appellants contend the claims
recite significantly more than the alleged abstract idea. App. Br. 31-33.
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Banklnt'l,
134 S. Ct. 2347, 2355 (2014). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 134 S. Ct. at 2355. If so, the
4 Appellants note that in an earlier Office Action ( mailed June 1 7, 2016), the
Examiner withdrew the rejection under 35 U.S.C. § 101. See Final Office
Action 2. However, in the currently pending Office Action, the Examiner
newly rejected the claims under 35 U.S.C. § 101. Non-Final Act. 3-8. It is
this rejection that is before the Board. Accordingly, we confine our analysis
to the Examiner's findings and conclusions as set forth in the Office Action
mailed on July 26, 2017.
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second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Non-Final Act. 3-
4. In particular, the Examiner concludes the claims are directed to the
abstract ideas of "collecting information, analyzing the information, and
displaying certain results of the analysis," similar to the claims at issue in
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). Non-Final Act. 3--4; Ans. 6-7. Further, the Examiner concludes the
claims do not recite significantly more to transform the abstract idea into a
patent eligible application. Non-Final Act. 4--8. Instead, the claims recite
generic computer functions/ elements performing generic computer functions
that are well-understood, routine, and conventional. Non-Final Act. 5.
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to 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." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
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inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Our reviewing court has concluded that abstract ideas include the
concepts such as the collection and analysis of information. Elec. Power,
830 F.3d at 1353; see also Elec. Power, 830 F.3d at 1354 ("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"). Additionally, the collecting of data, recognizing
certain data within the collected data set, and storing the data in memory are
also abstract ideas. Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see
also SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018)
("merely presenting the results of abstract processes of collecting and
analyzing information ... is abstract as an ancillary part of such collection
and analysis") ( quotations omitted). Further, in Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) the court
concluded customizing information and presenting it to users based on
particular characteristics is an abstract idea.
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co. Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to
another abstract idea ... does not render the claim non-abstract."); see also
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016) ( determining the pending claims were directed to a combination
of abstract ideas).
Here, Appellants' claims are generally directed to personalizing a
social networking profile page based on various pieces of information. The
information used to personalize a profile page includes user preferences
settings and data about the viewer of the social networking profile page.
Spec. ,r 2. Based on the user preferences and visitor-related data (i.e., data
describing the visitor and data describing interactions between the visitor
and the owner of the profile page), content (i.e., artifacts) of a user's social
networking profile page may be emphasized or de-emphasized to create
different versions of the profile page. Spec. ,r,r 31-33.
The receiving of user preferences and visitor data is similar to the
abstract idea of collecting and gathering information to be analyzed. See
Elec. Power, 830 F.3d at 1354; Content Extraction, 776 F.3d at 1347.
Further, the emphasis/de-emphasis of certain content (i.e., artifacts) based on
the analysis of the received data is similar to the abstract idea of customizing
information and presenting it to users based on particular characteristics.
Capital One Bank, 792 F.3d at 1370. The additional limitations recited in
the independent claims (e.g., preventing the suppression of time-sensitive
artifacts) or in the dependent claims (which refine how the artifacts are
differentiated or characteristics of the different data) do not alter the
character of the claims, which is directed to an abstract idea, discussed
supra.
Additionally, the Examiner determines the current claims are not
directed to a specific improvement in the way computers operate, but instead
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describe a desired outcome from computer operation. Ans. 8. Contrary to
Appellants' arguments (see, e.g., App. Br. 30-31 ), the claims are
distinguishable from the self-referential table claimed in Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Ans. 8-10. As opposed to
the specific technological improvement claimed in Enfzsh (i.e., a self-
referential table over a traditional database), Appellants do not provide
persuasive arguments that de-emphasizing certain artifacts of a social
network profile are an improvement to computer technology. See Ans. 9-
10. We agree with the Examiner that Appellants' claims are not directed to
an improvement in the ways computers operate or the capabilities of a
physical device operating on a network.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to "significantly more" than
the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73, 77-79 (2012)). The
implementation of the abstract idea involved must be "more than [the]
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original).
Here, we agree with the Examiner that the claims do not require any
nonconventional computer, network, or display or a non-conventional and
non-generic arrangement of known conventional pieces. Non-Final Act. 4--
8. See also Elec. Power, 830 F.3d at 1355; Bascom Global Internet Servs. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); cf Spec.
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,r 52 ( describing that the claimed invention may be embodied in a computer
program product); see also Mortgage Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (finding generic
computer components such as an "interface," "network," and "database,"
fail to satisfy the inventive concept requirement); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and
sends the information over a network-with no further specification-is not
even arguably inventive.").
For the reasons discussed supra, we are unpersuaded that the
Examiner erred in rejecting claim lunder 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Accordingly, we sustain the Examiner's
rejection of claim 1. Additionally, we sustain the Examiner's rejection of
independent claims 7 and 11, which recite similar limitations and were not
argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv). Further, we sustain the
Examiner's rejection of claims 2-6, 8-10, and 12-20, which depend directly
or indirectly therefrom and were not argued separately. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Rejections under 35 US.C. § 103
a. Claims 1-6 and 10
In rejecting independent claim 1, inter alia, the Examiner relies on
Malleshaiah to teach generating different versions of a social networking
profile page based on "when interaction between the viewer and the owner
of the social network profile exceeds a threshold." See Non-Final Act. 12
( citing Malleshaiah ,r,r 34, 44, 55, and 73). In particular, the Examiner finds
Malleshaiah teaches accessing user interest profile information wherein the
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user interest profile comprise action data such as viewing other user's
profiles (i.e., interactions). Non-Final Act. 12. Further, the Examiner finds
Malleshaiah teaches "dynamically generating a social page when content
and interest scores from interactions exceed a predefined threshold." Non-
Final Act. 12 (citing Malleshaiah ,r 55).
Appellants assert Malleshaiah describes maintaining and updating a
user interest profile according to information most recently or frequently
requested and accessed by the user. App. Br. 19 ( citing Malleshaiah ,r 68);
Reply Br. 10. Further, Appellants assert this information is the "user's
action data" and relates only to the type of content viewed and is not the
same as an interaction[ s] between the viewer and the owner of the social
network profile. App. Br. 16 ( citing Malleshaiah ,r,r 67, 73). Additionally,
Appellants argue Malleshaiah fails to teach using the number of instances
(i.e., a tally) when a viewer has viewed the owner's profile to determine
when the interaction between the viewer and the owner of the social network
page exceeds a threshold. App. Br. 18-19; Reply Br. 10.
As an initial matter, the Examiner responds that the claimed
"interaction" is not solely a quantitative description, but may be considered
to have a qualitative component. Ans. 14--15. Additionally, the Examiner
notes that claim 1 does not recite a number of interactions exceeds a
threshold, but rather that the claim recites a singular "interaction." Ans. 14--
15. Accordingly, the Examiner finds the claim does not require a number
( or tally) of instances or interactions between a viewer and owner of a social
network page to exceed a threshold-"[i]t could be any aspect of any type of
interaction" (e.g., denoting one as a favorite, sharing a common interest, or
belonging to the same social network). Ans. 14--15. Applying this
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understanding, the Examiner finds Malleshaiah teaches dynamically
changing the owner's social network page in accordance to a viewer's
interest score for certain content exceeding a predefined threshold. Ans. 15
(citing Malleshaiah ,r 61, Fig. 4).
In reply, Appellants explain the claim recites an "interaction between
the viewer and the owner of the social network profile exceeds a threshold."
Reply Br. 11. Thus, Appellants argue, it is clear that a plurality of
interactions are required. Reply Br. 11. Further, Appellants assert that such
an understanding is consistent with the Specification. Reply Br. 11 ( citing
Spec. ,r 50 ( describing contact between the owner of the profile page and a
viewer exceeding a certain threshold).
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, the broadest reasonable interpretation differs from the broadest
possible interpretation. In re Smith Int'!, Inc., 871 F.3d 1375, 1383 (Fed.
Cir. 2017). The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is "an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is 'consistent with the
specification."' Smith, 871 F.3d at 1382-83 (quoting In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997)). Additionally, we are mindful that limitations
are not to be read into the claims from the Specification. In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993).
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Here, we agree with Appellants that, consistent with the Specification,
a person of ordinary skill in the art would understand that for the
"interaction" of claim 1 to "exceed[] a threshold," it is construed to have a
quantitative aspect (i.e., not merely denoting an owner's social network
profile page as a favorite, or being members of the same social network).
Malleshaiah is generally directed to dynamically generating a social
page of a user based on the visiting user's interests. Malleshaiah, Abstract.
In the disclosed system, a customized version of a user's social networking
profile is generated based on the visiting user's interests. Malleshaiah ,r 7.
In other words, certain information (i.e., artifacts) of a user's social
networking profile that correspond to a visiting user's interests will be
presented (i.e., emphasized) to the visiting user. Malleshaiah ,r,r 7-9. As
identified by the Examiner, Malleshaiah describes an activity database that
"records the actions ( or interactions) for each user" that are monitored by a
content engine. Malleshaiah ,r 34. Malleshaiah describes these actions may
include activity over the network, such as actions with other user's profiles.
Malleshaiah ,r 34. Additionally, Malleshaiah describes this data may be for
a certain period of time "or in accordance with an identified frequency of
activity." Malleshaiah ,r 34. User interest profiles may be generated for
action data. Malleshaiah ,r 43.
Malleshaiah also describes the use of "relationship data." Malleshaiah
,r,r 45--4 7. Relationship data may include social network data and can
indicate relationships between users. Malleshaiah ,r 46. Relationship
information may also be used to deduce action data. Malleshaiah ,r 46.
Action data is used to produce an interest score. Malleshaiah ,r 48.
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Malleshaiah further describes an example scenario when a visitor
(VI) requests to view a user's (i.e., owner's) social network page.
Malleshaiah ,r,r 55-57. Interest scores associated with visitor (VI) are
identified and matched with content associated with the user's social
network profile page. Malleshaiah ,r 54. A matching module compares
scores within the visitor interest profile with scores for content "in order to
identify which content has scores above a threshold." Malleshaiah ,r 55. If
the interest and content scores are both above a predefined threshold, then
relevant content is identified and included on a version of the user's social
network profile page. Malleshaiah ,r,r 55-57.
Although the visitor's interest profile may be based on information
collected related to a visitor's activity (including a "frequency of activity"
regarding visiting users' social network profile pages), the Examiner has not
provided sufficient persuasive evidence or reasoning that Malleshaiah
teaches the visitor's interest score is based on the visitor's interaction with
the owner of the social network profile being visited exceeding a threshold.
Rather, Malleshaiah's disclosure of determining whether something exceeds
a threshold relates to the visitor's interest score and the owner's content
score.
For the reasons discussed supra, we do not sustain the Examiner's
rejection of independent claim 1 under pre-AIA 35 U.S.C. § I03(a).
Additionally, we do not sustain the Examiner's rejection under pre-AIA
35 U.S.C. § 103(a) of claims 2---6 and 10, which depend directly or indirectly
therefrom. Because we do not sustain the Examiner's rejection under pre-
AIA 35 U.S.C. § I03(a) for the reasons discussed herein, we need not
address Appellants' further arguments. See Beloit Corp. v. Valmet Oy, 742
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F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at
liberty to reach a decision based on "a single dispositive issue").
b. Claims 7-9 and 18-20
Independent claim 7, in relevant part, recites: "wherein the different
version of the owner's profile changes based on the number of instances
when each viewer has viewed the owner's profile." The Examiner relies on
Malleshaiah to teach this limitation. Non-Final Act. 20-21 (citing
Malleshaiah ,r,r 5, 68).
Similar to their arguments related to independent claim 1 (see supra),
Appellants argue that Malleshaiah fails to teach using the number of
instances (i.e., a tally) when a viewer has viewed the owner's profile to
generate different versions of the owner's profile page (i.e., emphasizing
certain artifacts on the owner's profile page). App. Br. 20-21; Reply Br. 16.
Instead, Appellants assert Malleshaiah describes assigning a score to the
individual interests of the viewer and user based on their individual interests
(i.e., not on the number of times a viewer has viewed the owner's profile
page). App. Br. 20-21 ( citing Malleshaiah ,r 68).
The Examiner relies on the same response provided regarding
independent claim 1. See Ans. 18.
Although the scope of independent claim 7 differs from independent
claim 1 ( cf an "interaction between the viewer and the owner ... exceeds a
threshold," with "the number of instances when each viewer has viewed the
owner's profile"), for similar reasons discussed related to claim 1, the
Examiner the Examiner has not provided sufficient persuasive evidence or
reasoning that Malleshaiah teaches different version of the owner's profile
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changes are based on the number of instances when each viewer has viewed
the owner's profile.
For the reasons discussed supra, we do not sustain the Examiner's
rejection of independent claim 7 under pre-AIA 35 U.S.C. § 103(a).
Additionally, we do not sustain the Examiner's rejections under pre-AIA
35 U.S.C. § 103(a) of claims 8, 9, and 18-20, which depend directly or
indirectly therefrom.
c. Claims 11-17
Independent claim 11, in relevant part, recites:
provide a version among a number of versions of the owner's
social networking profile to the viewer and change that version
provided to the user based on a length of time that has passed
since the owner of the profile and the viewer have been
acquainted on a social networking site hosting the owner's social
networking profile.
In rejecting claim 11, the Examiner relies on the combined teachings
of Galbreath and Kuehr-McLaren to teach this limitation. Non-Final
Act. 27-28 (citing Galbreath ,r 41, Fig. 4A Kuehr-McLaren ,r,r 12, 23).
Specifically, the Examiner finds Galbreath teaches, inter alia, providing a
version among a plurality of versions of the owner's social networking
profile to the viewer, and changing that version based on a degree of
separation. Non-Final Act. 27. Additionally, the Examiner relies on Kuehr-
McLaren to teach changing a profile based on a length of time that has
passed since the owner of the profile and the viewer have been acquainted
on the social networking site. Non-Final Act. 27-27. The Examiner
explains it would have been obvious to one of skill in the art to combine the
teachings of Kuehr-McLaren with Galbreath to yield the predictable result of
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"a known technique for using a threshold criteria for allowing access to
certain profile information. Non-Final Act. 28-29.
Appellants argue the Examiner is erroneously equating Galbreath's
"degree of separation" with the claimed "length of time that has passed since
the owner of the profile and the viewer have been acquainted on a social
networking site." App. Br. 25. Appellants assert Galbreath defines a degree
of separation as "the minimum number of hops required to traverse the
graph from one node to the other," which is unrelated to the claimed length
of time the visitor and owner have been acquainted. App. Br. 25 ( quoting
Galbreath 20, emphasis omitted).
We are unpersuaded of Examiner error at least because Appellants'
arguments are not responsive to the rejection as articulated by the Examiner.
Additionally, non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCP A 1981 ). Rather, the test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee's
invention to a person having ordinary skill in the art. In re Merck & Co.
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As discussed above, the
Examiner does not equate Galbreath's degree of separation with the claimed
length of time, but instead relies on Kuehr-McLaren to teach the claimed
length of time the visitor and owner have been acquainted on a social
networking site. See Non-Final Act. 28.
Additionally, Appellants assert the prior art fails to teach "wherein the
artifact distinguishing module prevents the suppression of time-sensitive
artifacts describing when the owner of the social networking profile will be
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available and where the owner of the social networking profile is located." 5
App. Br. 24--25. In particular, Appellants argue Shuman, as relied on by the
Examiner, describes always presenting certain profile information based on
user preferences and data describing the potential viewer. App. Br. 16-18;
Reply Br. 11-13. Appellants assert Shuman describes merely selecting a
profile to be shown to a viewer "at the profile owner's fiat." App. Br. 17;
Reply Br. 12-13. Further, Appellants argue Shuman's profile is not an
artifact, as recited in the claims. App. Br. 17; Reply Br. 12-13.
We do not find Appellants' arguments persuasive of Examiner error.
Rather, as the Examiner explains, Shuman's teaching of using user
preferences to always present a certain profile (or information) is similar to
Appellants' description of preventing the suppression of time-sensitive
artifacts. Ans. 16. In particular, the Examiner finds, and we agree,
Appellants describe a user selecting a preference via a user interface to allow
time-sensitive artifacts to be viewed by all viewers and the artifact
distinguishing module will not de-emphasize this information. Ans. 16
( citing Spec. ,r 44 ). Thus, the prevention of suppressing time-sensitive
artifacts as also at the profile owner's fiat.
Further, we disagree with Appellants that Shuman does not teach or
reasonably suggest preventing the suppression of time-sensitive artifacts
because Shuman is directed to presenting certain profiles, rather than
5 Relatedly, Appellants assert because the prior art fails to teach preventing
the suppression of time-sensitive artifacts, the prior art similarly fails to
teach "wherein the prevention of the suppression of the time-sensitive
artifacts is maintained until the time-sensitive artifact is temporally relevant
and wherein the time-sensitive artifact is suppressed when the time-sensitive
artifact is not temporally relevant." App. Br. 24--26. Appellants do not
provide separate, substantive arguments related to this limitation.
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artifacts. As the Examiner notes, a profile is comprised of artifacts and by
always presenting a profile (i.e., preventing the suppression of the profile),
Shuman teaches preventing the suppression of the artifacts of such profile.
See Ans. 17 ( citing Spec. ,r 10).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection under pre-AIA
35 U.S.C. § 103(a) of independent claim 11. For similar reasons, we also
sustain the Examiner's rejection of claims 12-17, which depend directly or
indirectly therefrom and were not argued separately. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
DECISION
We summarily affirm the Examiner's decision provisionally rejecting
claims 1-9 under the doctrine of obviousness-type double patenting.
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-10 and 18-20
under pre-AIA 35 U.S.C. § 103(a).
We affirm the Examiner's decision rejecting claims 11-17 under pre-
AIA 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1-20 is
affirmed. See 37 C.F.R. § 41.50(a)(l ).
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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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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