Ex Parte Cook et al

Patent Trial and Appeal Board

Mar 27, 2017

14053395 (P.T.A.B. Mar. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/053,395 10/14/2013 Kelly L. Cook RSW920130101US1 3058
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
03/29/2017 EXAMINER
HICKS, MICHAEL J
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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 KELLY L. COOK, LYDIA M. DO,
EILEEN MIN, and ERIC WOODS
Appeal 2016-007654
Application 14/053,3951
Technology Center 2100
Before JUSTIN BUSCH, JOHN P. PINKERTON, and
JOHN D. HAMANN, Administrative Patent Judges.
HAM ANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
THE CLAIMED INVENTION
Appellants’ claimed invention “relates to utilizing social information
for recommending applications, and more specifically, to recommending
applications ordered by a social proximity factor.” Spec. 1. Claim 1 is
illustrative of the subject matter of the appeal and is reproduced below.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal 2016-007654
Application 14/053,395
1. A computer program product for utilizing social
information for recommending an application, comprising:
a non-transitory computer readable storage medium, said
computer readable storage medium comprising computer
readable program code embodied therewith, said computer
readable program code comprising program instructions that,
when executed, causes a processor to:
provide an application recommendation system based on
social characterizations; and
responsive to a user searching for an application meeting
a criteria, utilizing said application recommendation system to:
search for applications meeting said criteria;
characterize said applications according to a social
proximity factor to said user; and
present said applications ordered by said social proximity
factor.
REJECTION2 ON APPEAL
The Examiner rejected claims 1—20 under 35 U.S.C. § 102(a)(1) as
being anticipated by Futty et al. (US 2012/0116905 Al; published May 10,
2012) (hereinafter “Futty”).
2 The Examiner also provisionally rejected claims 1—20 for obviousness-type
double patenting over claims 1—20 of copending Application
No. 14/055,530. No patent has issued yet from that copending Application,
nor do Appellants present arguments traversing this provisional rejection.
We find it is premature to address this provisional rejection. See In re
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential).
2
Appeal 2016-007654
Application 14/053,395
ISSUE
The dispositive issue for this appeal is whether Futty discloses
ordering applications by a social proximity factor.
ANALYSIS
Appellants argue the Examiner erred in finding Futty discloses
presenting “applications ordered by [the] social proximity factor,” as recited
in claims 1, 9, and 16. App. Br. 12—15; Reply Br. 6—8. Specifically,
Appellants argue Futty instead discloses ordering (i.e., ranking) applications
based on the quality of the applications (i.e., “based on reviews or blog posts
written by social acquaintances that are considered tastemakers,” whether an
application was uninstalled or never installed, polling social acquaintances,
recommendations, or a combination thereof). App. Br. 14 (citing Futty
115). In other words, “Futty never considers how close is the relationship
between the searching user and any of the social acquaintances” — a “user’s
best friend or someone that [] user barely even knows” would impact the
ordering equally. Id.
In contrast, Appellants argue the claim language (i.e., ordered by the
“social proximity factor”) requires that the ordering reflect the closeness of
the user’s relationships. App. Br. 13—14. According to Appellants, the
Specification clearly explains that the social proximity factor relates to the
strength of a user’s relationship with others (e.g., siblings, best friends, or a
characterization of a user’s relationship strength with other users). Id.
(citing Spec. 149); see also Spec. 134. Accordingly, Appellants argue
Futty fails to disclose the disputed limitation. App. Br. 12—15; Reply Br. 6—
8.
3
Appeal 2016-007654
Application 14/053,395
The Examiner finds Futty discloses the disputed limitation. Ans. 15—
17; Final Act. 9. Focusing on the claim language, the Examiner finds
“social proximity is not defined . . . within the claims or within Appellants’]
Specification, but that social proximity is only described by way of
example.” Ans. 15. Similarly, the Examiner finds “no detail is given within
the claims as to . . . ordering and, as such, any process which can be
reasonably construed as ordering the set of presented applications based, in
some way, on the social proximity factor” discloses the disputed limitation.
Ans. 15—16.
As to Futty, the Examiner finds it discloses “what may be reasonably
construed as a measure of social proximity.” Ans. 15 (citing Futty || 12,
15). More specifically, the Examiner finds Futty discloses “a set of
applications which may potentially be presented to a user in response to a
search query . . . such that applications which are . . . within a defined social
proximity of the particular user may be included and/or . . . may be
excluded from the presentation.” Ans. 16 (citing Futty 115). The Examiner
concludes that “inclusion into a list of presented results based on [] factors
related to user who must be within a defined social proximity may be
construed as a binary form of ranking or ordering based on the social
proximity.” Id.
We are persuaded by Appellants’ arguments. Although “the PTO
must give claims their broadest reasonable construction consistent with the
specification^] . . . claims should always be read in light of the specification
and teachings in the underlying patent.” In re Suitco Surface, Inc., 603 F.3d
1255, 1259—60 (Fed. Cir. 2010) (citation omitted); Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). We find one of
4
Appeal 2016-007654
Application 14/053,395
ordinary skill in the art, in light of the Specification and claim language,
would have understood “social proximity factor” to relate to the strength of
relationships. Spec. Tflf 34, 49. We also find the Examiner construes
“ordered by” too broadly so as to incorrectly equate it with filtering (i.e., a
binary condition of including or not including). Moreover, the Examiner has
not cited to any portion of the Specification to allow for broadening the
ordinary meaning of ordering by (e.g., arranging by or organizing by) with
respect to search results — we disagree “ordering by” covers being included
in a list, as opposed to not. Accordingly, we find Futty’s disclosure of (i)
rankings relating to the strength of the applications (e.g., reviews) and (ii)
filtering of results, does not disclose the disputed limitation. Futty 115.
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
9, and 16, or the remaining claims on appeal, each of which depend, at least
indirectly, from one of these independent claims.
DECISION
We reverse the Examiner’s decision rejecting claims 1—20.
REVERSED
5