Ex Parte Goodman et alDownload PDFPatent Trial and Appeal BoardMar 17, 201411621868 (P.T.A.B. Mar. 17, 2014) Copy Citation 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. 11/621,868 01/10/2007 Brian D. Goodman YOR920060743US1 1947 59144 7590 03/18/2014 CAHN & SAMUELS, LLP 1100 17th STREET, NW SUITE 401 WASHINGTON, DC 20036 EXAMINER RAAB, CHRISTOPHER J ART UNIT PAPER NUMBER 2156 MAIL DATE DELIVERY MODE 03/18/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN D. GOODMAN, FRANK L. JANIA, and DARREN M. SHAW1 ____________ Appeal 2011-010091 Application 11/621,868 Technology Center 2100 ____________ Before ERIC B. GRIMES, LORA M. GREEN, and TINA E. HULSE, Administrative Patent Judges. HULSE, Administrative Patent Judge DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims relating to providing relevant assets in collaboration mediums. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as International Business Machines Corporation. (App. Br. 1.) Appeal 2011-010091 Application 11/621,868 2 STATEMENT OF THE CASE According to the Specification, “[p]eople and machines have trouble managing and finding assets relevant to contextual activity in collaboration mediums.” (Spec. ¶ 2.) The prior art solutions for finding assets include search engines to search a computer network and desktop dashboards to monitor local system activity. (Id.) The Specification states that, with these prior art solutions, “users are unable to share, as part of collaboration activity, their relevant assets based on their preferences, profiles, and interactions.” (Id.) Claims 2-4, 6, 8-13, 15-18, and 20-25 are on appeal. (App. Br. 2) Claim 17 is representative and is reproduced below: 17. A method for providing assets in a collaboration medium, comprising: receiving information from a first entity in the collaboration medium; analyzing the information to identify metadata; searching the first entity’s local computer system for assets relevant to the identified metadata; filtering the assets located on the first entity’s local computer system according to a predetermined user profile and an environment profile; sending pointers to the filtered assets on the first entity’s local computer system to a second entity’s local computer system; searching the second entity’s local computer system for assets relevant to the filtered assets on the first entity’s local computer system; Appeal 2011-010091 Application 11/621,868 3 filtering the assets located on the second entity’s local computer system according to a predetermined user profile and an environment profile; and displaying pointers to the filtered assets from each entity’s local computer system in the collaboration medium. The claims stand rejected under 35 U.S.C. § 103(a) as obvious over Kelly2 and Kwak.3 (Ans. 4-10.) DISCUSSION The Examiner rejected independent claim 17 as obvious over Kelly and Kwak. The Examiner found that Kelly teaches each of the limitations of claim 17, except that “Kelly does not specifically disclose that the media content is from a local computer store, and then filtered based on user profile data.” (Ans. 5.) The Examiner then found that Kwak teaches a method of searching a local computer system to locate files, and that the files are filtered based on a file filter that is established for the user. (Id.) The Examiner concluded that it would have been obvious “to incorporate the local computer system searching and filtering method taught by Kwak into the collaborative media sharing method taught by Kelly for the purpose of allowing [the] user more control over user media items to be shared in the collaborative environment.” (Id.) The issue presented on appeal is whether the preponderance of the evidence supports the Examiner’s conclusion that claim 17 would have been obvious over the teachings of Kelly and Kwak. We find that it does not. Kelly relates to “sharing media objects in a network.” (Kelly ¶ 1.) Kelly discloses a network manager that supports media-enhanced sharing 2 Kelly et al., US 2006/0004914 A1, published Jan. 5, 2006. 3 Kwak et al., US 2007/0038665 A1, published Feb. 15, 2007. Appeal 2011-010091 Application 11/621,868 4 among a network of computer users. (Id. ¶ 6.) In the system of Kelly, a processor accepts a media object from a first user of the network, stores the media object in a database, determines a similarity metric between a second user and the first user and/or the media object, and shares the media object with the second user. (Id. ¶ 14.) Kelly also teaches that the “network data manager may use the similarity metric to return additional similar objects to expand the search.” (Id. ¶ 99.) The Examiner concedes that the search in Kelly “is limited to the (collaborative) media database,” and relies on Kwak’s teaching that a “local computer store can be searched” as disclosing, in combination with Kelly, “the claimed limitation of searching the first and second local computer systems for assets.” (Ans. 12.) We do not find the Examiner’s reasoning persuasive. The Examiner has not provided a persuasive, reasoned basis for the conclusion that merely disclosing the ability to search one user’s local computer system (see Kwak ¶ 18), teaches or suggests “searching the second entity’s local computer system for assets relevant to the filtered assets on the first entity’s local computer system,” as claim 17 requires. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Moreover, although the Examiner states that it would have been obvious to incorporate the local computer searching and filtering taught by Kwak into the collaborative media sharing method taught by Kelly, the Examiner does not explain why doing so would “allow[] [the] user more control over user media items to be shared in the collaborative Appeal 2011-010091 Application 11/621,868 5 environment.” (Ans. 5.) Kelly teaches that the user manually uploads the content that the user wants to share, exercising control over what media items are shared in the collaborative environment. (See Kelly ¶¶ 47-48.) Thus, it is unclear how searching a local computer for media items to be shared would offer “more control over user media items to be shared” than the user manually uploading the shared media items himself. In light of this, we are not persuaded that a person of ordinary skill in the art would have had a reason to combine Kelly and Kwak for the reason that the Examiner states. Thus, we conclude that the preponderance of the evidence does not support the Examiner’s conclusion that claim 17 would have been obvious over Kelly and Kwak. For the same reasons, we also find the preponderance of the evidence does not support the Examiner’s rejection of independent claim 20, which includes a similar limitation. SUMMARY We reverse the Examiner’s rejection of claims 2-4, 6, 8-13, 15-18, and 20-25 under 35 U.S.C. § 103(a) over Kelly and Kwak. REVERSED tc Copy with citationCopy as parenthetical citation