Ex Parte Goodman et al

Patent Trial and Appeal Board

Mar 17, 2014

11621868 (P.T.A.B. Mar. 17, 2014)

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.)
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Application 11/621,868

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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;
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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.
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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
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Application 11/621,868

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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

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