Ex Parte Greenspan

Patent Trial and Appeal Board

Dec 22, 2015

12470023 (P.T.A.B. Dec. 22, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/470,023 05/21/2009
131406 7590 12/24/2015
Gilliam IP PLLC (CA)
111 Congress Ave., Suite 400
Austin, TX 78701
FIRST NAMED INVENTOR
Steven Greenspan
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.
104.20090035 3023
EXAMINER
SENSENIG, SHAUN D
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/24/2015 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):
uspto@gilliamip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN GREENSPAN
Appeal2013-005997
Application 12/470,023
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-17 and 24--31. We affirm.
1 Appellant identifies Computer Associates Think, Inc., as the real party in
interest. (Appeal Br. 2).
Appeal2013-005997
Application 12/470,023
THE CLAIMED fNVENTION
Appellant claims a social computing system and method that operates
as a function of the content of messages and not the author of messages.
(Spec. para. 1 ). Claim 1 is illustrative of the claimed subject matter:
1. A computerized process comprising:
receiving at a computer processor a message from an
author;
analyzing the message using the computer processor;
assigning the message using the computer processor to
one or more categories as a function of the analysis;
using the computer processor for extracting from a
database coupled to the processor one or more subscribers to
the computerized process that are associated with the one or
more categories, wherein the one or more subscribers are not
identified in the message from the author; and
distributing the message using the computer processor to
the one or more subscribers as a function of the one or more
categories and not as a function of the author of the message;
wherein the message comprises a social computing
message.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jacobs
Bohannon
US 2005/0203806 Al Sept. 15, 2005
US 2007/0288466 Al Dec. 13, 2007
REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1-17 and 24--31 under 35 U.S.C. § 112,
first paragraph, as introducing new matter that fails to comply with the
written description requirement.
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The Examiner rejected claims 1-17 and 24--31 under 35 U.S.C. § 112,
second paragraph, as indefinite.
The Examiner rejected claims 1-17, 24, and 27-31 under 35 U.S.C.
§ 102(b) as anticipated by Jacobs.
The Examiner rejected claims 25 and 26 under 35 U.S.C. § 103(a) as
unpatentable over Jacobs and Bohannon.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification describes, only by way of example, "[ s ]ocial
networking services, such as Twitter, allow users to publish short
messages referred to as 'tweets' that are immediately distributed to
subscribers who wish to read messages from a particular person."
(Para. 2).
2. The term "social computing" is not defined in the Free Online Dictionary
of Computing. (http://foldoc.org/social%20computing, last retrieved
Dec. 14, 2015).
3. The ordinary and customary definition of the term social, as defined by
MERRIAM-WEBSTER COLLEGIATE DICTIONARY (http://www.merriam-
webster.com/dictionary/social, last retrieved Dec. 14, 2015) is: "of or
relating to people or society in general."
4. The ordinary and customary definition of the term network, as defined by
MERRIAM-WEBSTER COLLEGIATE DICTIONARY ( http://www.merriam-
webster.com/dictionary/network, last retrieved Dec. 20, 2015) is: "an
interconnected or interrelated chain, group, or system."
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Application I2/470,023
5. The ordinary and customary definition of the term message, as defined by
MERRIAM-WEBSTER COLLEGIATE DICTIONARY (http://www.merriam-
webster.com/dictionary/message, last retrieved Dec. I4, 20I5) is: "a
communication in writing."
6. Jacobs discloses:
The potential buyer user creates at least the content of the
request for purchase information and, preferably, the format of
that information. The communication is then posted to the
system. The system includes at least one community of
suppliers, such as vendors, that have subscribed to the system
and have associated themselves with at least one category
designation.
(Para. I9).
7. The Specification does not define the term "meta-tag" but describes by
example that "a meta tag can be an HTML or XHTML element that is
used to provide structured metadata about a web page." (Para. 22).
8. The term "meta-tag" is not defined in the Free Online Dictionary of
Computing. (http://foldoc.org/meta-tag, last retrieved Dec. I 4, 20 I 5).
9. The ordinary and customary definition of the term tag, as defined by
MERRIAM-WEBSTER COLLEGIATE DICTIONARY (http://www.merriam-
webster.com/dictionary/tag, last retrieved Dec. I4, 20I5) is: "something
used for identification or location: flag, or label."
IO.The Free Online Dictionary of Computing defines meta data as "data
about data." (http://foldoc.org/meta, last retrieved Dec. I4, 20I5).
I I .Jacobs discloses that a user request includes a "category designation
selected from a predetermined list of category designations that classify
goods and services." (Para. I9).
I2.Jacobs further discloses:
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Application 12/470,023
The system associates the buyer's request with the community
or communities associated with the category designation(s)
selected by the buyer and posts the request (i.e. communication)
to a venue that is accessible only by those suppliers that have
associated themselves with the at least one category designation
that the buyer has associated with his or her request (or the
system has suggested or selected on behalf of the potential
buyer).
(Id.).
13.Jacobs discloses its system will "display all posted communications
associated with the category designation(s) .... " (Para. 27).
14.Jacobs discloses determining a category based on an open request,
stating, "the category designation or designations to be associated with
the request may also be suggested or selected by the system via an
analysis of the content of the request." (Para. 19).
15.Jacobs discloses the request may be an email. (Para. 20).
ANALYSIS
Rejection under 35 U.S.C. § 112, First Paragraph
Each of independent claims 1, 11, and 24 recite "wherein the message
comprises a social computing message."
Appellant argues support for the term "social computing message" is
present in the Specification at paragraphs 2 and 14. (Appeal Br. 9). The
Examiner rejects the claims on the basis that the Appellant did not have
possession of the claimed subject matter at filing because "it is unclear as to
what is meant" by the term. (Final Act. 3). The Specification describes
messages published as part of "social networking services." (FF 1 ). Thus,
at best, the Specification can only provide a basis for showing that applicant
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Application 12/470,023
was in possession of the invention as now claimed for messages that are part
of social networking services. But, as to the "computing" aspect of the term,
we find nothing in the Specification which defines or even describes how the
message relates to the "computing" limitations recited in the independent
claims.
For this reason we affirm the rejection under 35 U.S.C. § 112, first
paragraph.
Rejection under 35 U.S.C. § 112, Second Paragraph
The Examiner found, "[i]n regards to Claims 1-17 and 24-31, it is
unclear as to what is meant by 'social computing message' and/ or how it
differentiates from any other form of message that was/is covered by the
claim language." (Final Act. 3).
Appellant argues that several disclosed "aspects" of a social
networking message render its meaning as clear. (Appeal Br. 9--10, Reply
Br. 1-2). Specifically, those "aspects" comprise "an author of a message,
subscribers, and distributing the message to the subscribers." (Appeal Br.
10). Appellant contrasts this with a "simple email message, [where] there
are no subscribers, but only a 'To' field wherein the sender of the email
message identifies recipients." (Id.).
We are not persuaded by Appellant's argument, because, for example,
a simple email message sent to an email address corresponding to a
Majordomo server, or an email reflector address, also has subscribers, in the
sense that individuals subscribe to the mailing list and receive a copy of the
email that was not specifically addressed to them. Thus, even though a
general sense of what is meant by a "social networking message" may be
perceived to exist in a general population of Twitter followers (Reply Br. 1-
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2), the ordinary artisan would be hard-pressed to specifically understand the
metes and bounds of the meaning of the claim term, which was introduced
by amendment to distinguish the claims over the prior art. (See Argument
and Claims Amendment filed May 4, 2012).
In addition, the term "social networking" is undefined by the Free
Online Dictionary of Computing. (FF 2).
Thus, we affirm the rejection under 35 U.S.C. § 112, second
paragraph, on the basis of the term "social computing message" being
indefinite.
Rejection of Claims 1-7, 10, 11, 24, 27, 28, 30, and 31
under 35 U.S.C. § 102(b)
Initially, we note that the Appellant argues independent claims 1 and
24 together as a group. (Appeal Br. 102). Correspondingly, we select
representative claim 1 to decide the appeal of these claims, with remaining
claim 24 standing or falling with claim 1. Appellant does not provide a
substantive argument as to the separate patentability of claims 2-7, 10, 11
that depend from claim 1, and claims 27, 28, 30, and 31 that depend from
claim 24. Thus claims 2-7, 10, 11, 24, 27, 28, 30, and 31 stand or fall with
claim 1. See, 37 C.F.R. § 41.37(c)(l)(vii).
For the purposes of advancing the case, we construe the meaning of
"social computing message" to mean written communications that are part
of social networking services (FF 1-5). We construe social network to mean
an interconnected group of people (FF 3, 4).
2 Although Appellant has a separate section labeled as being directed to
claim 24, at page 12 of the Appeal Brief, that section instead is directed only
to dependent claim 3 0.
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Appellant argues "that there is a patentable distinction between
Jacobs' commercial system and the recited 'social computing message' of a
social networking system." (Appeal Br. 10-11; see also Reply Br. 2). We
are not persuaded by Appellant's argument. Jones discloses communicating
messages via computer from a buyer to a community/ group of subscribed
parties. (FF 6). This meets the "social computing message" because it is a
written message relating to a group of people (network) concerning what
they want to buy or sell.
Rejection of claims 11-17 under 35 U.S.C. § 103(a)
The rejection is affirmed as to claim 11. Appellant does not provide a
substantive argument as to the separate patentability of claims 12-17 that
depend from claim 11, which is the sole independent claim among those
claims. Therefore, we address only claim 11, and claims 12-17 fall with
claim 11. See, 37 C.F.R. § 41.37(c)(l)(iv).
The claim terms "meta tag" and "meta-tag" are not defined by
Appellant's Specification, but the term is described by example as data that
describes metadata about a web page. (FF 7). No further explanation of the
structure of a "meta tag" is provided. The terms "meta-tag" and "meta tag"
are not defined by the Free Online Dictionary of Computing. (FF 8). The
ordinary and customary meaning of the word "tag" is identification, flag, or
label. (FF 9). The Free Online Dictionary of Computing defines "metadata"
as "data about data." (FF 10). We thus construe a "meta tag" as data about
data.
Appellant argues that Jacobs does not disclose a "meta-tag" in either
of paragraphs 19 or 29. (Appeal Br. 11; see also Reply Br. 2-3).
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Application 12/470,023
We are not persuaded by Appellant's argument. Jacobs discloses a
"category designation" included in a request, which is data about the
classification of goods or services, and is thus data about data, which meets
the claim term "meta tag." (FF 11 ). In an anticipation rejection, the
elements must be arranged as required by the claim, but this is not an
ipsissimis verb is test, i.e., identity of terminology is not required. In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Rejection of claim 8 under 35 U.S.C. § 102(b)
Dependent claim 8 recites "configuring the processor to enable the
one or more subscribers to the computerized process to subscribe to an
additional message from the author."
Appellant argues Jacobs does not disclose "a subscriber (or seller)
subscribing to additional messages from an author (or buyer)."
(Appeal Br. 11, Reply Br. 3).
We are not persuaded by Appellant's argument, because Jacobs
discloses users subscribe to "at least one category" (FF 6), which implies
that the user may subscribe to more than one category, thus meeting the
claim language because buyers may associate more than one category with
their request (FF 12).
Rejection of claims 9, 16, and 29 under 35 U.S.C. § 102(b)
Dependent claims 9, 16, and 29 each disclose "wherein the processor
filters messages such that more than one copy of a message is not sent to a
subscriber to the computerized process."
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Appellant argues Jacobs provides "no mention of removing duplicate
messages." (Appeal Br. 11-12; see also Reply Br. 3).
We are persuaded by Appellant's argument.
The Examiner does not respond to this argument (Answer 5), but
relies on paragraphs 19 and 27-29 as disclosing the claim language (Final
Act. 6-7). These paragraphs do not disclose filtering, deleting, or avoiding
the sending of duplicate messages, but instead discloses sending "all posted
communications associated with the category designation(s)." (FF 13). If
all messages are sent, then Jacobs does not meet the claim language as to
filtering messages to not send multiple copies of a single message.
Rejection of claim 30 under 35 U.S.C. § 102(b)
Dependent claim 30 recites "wherein the subject matter of the content
is contained within an email message currently opened by the subscriber."
Appellant argues Jacobs does not disclose the language of claim 30 at
paragraph 20, as alleged. (Appeal Br. 123; see also Reply Br. 34). We are
not persuaded by Appellant's argument. Prior to sending a request to the
subscribers of a category, Jacobs discloses its system analyzes the content of
the request and assigns a category (FF 14), and that the request may be an
email (FF 15). Jacobs' analysis of an open request email thus meets the
claim language.
3 The argument directed to claim 30 is presented in a section with a title
relating only to claim 24. Appeal Br. 12.
4 Appellant's arguments directed to claim 24 in the Reply Brief are actually
about claim 30. See Reply Br. 3.
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Rejection of claims 25 and 26 under 35 U.S.C. § 103(a)
Dependent claim 25 recites "wherein the message that is sent to the
subscriber was created during a particular time frame."
Appellant argues Bohannon fails to meet the claim language because
Bohannon's "server threads are a different entity than messages," because
messages may be transmitted over threads. (Appeal Br. 12). We are not
persuaded, because Appellant does not define or limit what a "particular
time frame" means. Jacobs discloses a user creates a request (FF 6). The
user in Jacobs therefore creates a request during the "particular time frame"
that designates the time when the request was created, thus meeting the
claim language. Because Jacobs discloses the claim language, Bohannon is
a cumulative reference. Dependent claim 26 is not separately argued and its
rejection is also affirmed.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-17 and 24--31 under 35
U.S.C. § 112, first paragraph.
The Examiner did not err in rejecting claims 1-17 and 24--31 under 35
U.S.C. § 112, second paragraph.
The Examiner did not err in rejecting claims 1-8, 10-15, 17, 24, and
27, 28, 30, and 31under35 U.S.C. § 102(b).
The Examiner erred in rejecting claims 9, 16, and 29 under 35 U.S.C.
§ 102(b).
The Examiner did not err in rejecting claims 25 and 26 under 35
U.S.C. § 103(a).
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DECISION
For the above reasons, the Examiner's rejection of claims 1-17 and
24--31 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
Ssc
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