Ex Parte Hacid et al

Patent Trial and Appeal Board

Apr 25, 2017

13503530 (P.T.A.B. Apr. 25, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/503,530 04/23/2012 Hakim Hacid LUTZ 201452US01 1364
48116 7590 04/27/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor TRAN, JIMMY H
The Halle Building
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAKIM HACID and JOHANN STAN
Appeal 2016-007340
Application 13/503J5301
Technology Center 2400
Before LARRY J. HUME, JUSTIN BUSCH, and CARL L. SILVERMAN,
Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—8, which constitute all the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as Alcatel Lucent. App. Br. 1.
Appeal 2016-007340
Application 13/503,530
STATEMENT OF THE CASE
The disclosed and claimed invention relates to management of tag
information for shared multimedia objects. Abstract, Spec. H 2, 3.
Claim 1, reproduced below, is exemplary of the subject matter on
appeal (disputed limitations emphasized):
1. A method to manage at least one user tag associated with a
multimedia object held by a user and stored in memory on an
application server, the user tag being liable to be accessed by at least
one other user through a telecommunication network, comprises the
following steps on the application server:
Semantically analysing the user tag to determine a structured
set of confidentiality tags,
When another user accesses the user tag, determining the social
category of the other user in relation to the user and selecting a
confidentiality tag from the structured set relating to the user tag
based on the determined social category,
Sending the selected confidentiality tag to the other user.
App. Br. 14. (Claims App’x.).
THE REJECTION
Claims 1—8 stand rejected under 35 U.S.C. § 102(a) as being
unpatentable over Lajmi et al. “Extended Social Tags: Identity Tags Meet
Social Networks” (IDS Filed 4/23/2012) (“Lajmi”). Final Act. 5—8.
ISSUES AND ANALYSIS
Appellants argue, inter alia, the Examiner errs in finding Lajmi
discloses the claim 1 term confidentiality tags and, therefore, Lajmi cannot
disclose the claim 1 limitations semantically analysing the user tag to
determine a structured set of confidentiality tags, selecting a confidentiality
tag from the structured set relating to the user tag based on the determined
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social category, and sending the selected confidentiality tag to the other
user. App. Br. 5—7; Reply Br. 3—6.
Appellants argue the “claimed ‘confidentiality tag’ is a tag associated
with a level of trust/confidentiality and dictates the amount of information
provided to the viewer (the other user in the subject claim).” App. Br. 6.
(Emphasis added.)
Regarding Lajmi, Appellants argue:
There is no level of confidentiality that dictates an amount of
information provided to the viewer in Lajmi. Rather there is only
merely a difference in relationship perspective as far as the Lajmi
tags are concerned. Lor instance, the Lajmi tag indicates whether
Steven is a brother-in-law or a colleague’s brother in law
depending on who is viewing the photograph, but does not apply
or impose a level of confidentiality based on who is viewing the
image. In other words, Lajmi merely annotates images as a
function of relationships between the viewer and the subjects in
the image but does not change the amount of information
provided.
. . . [T]he subject claims sets forth receiving a user tag,
semantically analyzing the user tags to determine a set of
confidentiality tags, and selecting a confidentiality tag based on
a determined social category into which another user falls. The
confidentiality tags of the subject claims dictate an amount of
granularity with which information is presented to a viewer
depending on the viewer’s social status. Lor example, if the
viewer is determined to be a family member, the confidentiality
tag displays “birthday party” for an image of a birthday party.
However, if the viewer is determined to be a stranger, the
confidentiality tag displays “event,” thereby providing less
context for the stranger than for the family member. (See, e.g.,
page 6, lines 1-32 of the specification.) Thus, “confidentiality”
in the subject claims relates to an amount of information that is
shared as a function of the closeness or confidence between the
user who generates the user tags and the other user (the viewer).
Lajmi fails to describe selecting confidentiality tags as a function
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of the social category of the other user. Moreover, Lajmi is silent
with regard to sending the selected confidentiality tag(s) to the
other user as set forth in the subject claim. Accordingly, Lajmi
fails to describe each and every feature of the subject claims.
App. Br. 6—7 (emphases omitted).
The Examiner finds the features upon which Appellants’ argument
depends—i.e., that the ‘“confidentiality tag’ is a tag associated with a level
of trust/confidentiality and dictates the amount of information provided to
the viewer”—is not recited in the rejected claims. Ans. 6. The Examiner
finds the claim does not define confidentiality tags and relies on the
Specification to determine the meaning. Id. 6—7. The Examiner finds the
broadest reasonable interpretation is “‘annotation with specific social
relationship to the viewer’ since the annotations] are used to identify the
specific level of the social relationship of the viewer regarding the viewee.”
Id. at 7 (citing Spec. 5,14; 8; 12). Applying this definition, the Examiner
finds Lajmi describes enriching annotations with specific social relationships
and adapting them to the current viewer. Id. at 7—9 (citing Lajmi 182—183;
section II; Fig 1).
Regarding the meaning of confidentiality tags, while we agree with
the Examiner that Appellants argue features not recited in the claim, we find
the Examiner’s proffered meaning is unreasonably broad in view of the plain
meaning of the term confidentiality, and is inconsistent with the
Specification. Claim terms in a patent application are given the broadest
reasonable interpretation consistent with the specification, as understood by
one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed.
Cir. 2004).
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In particular, the Examiner’s interpretation effectively reads the term
confidentiality out of the claims. For example, a plain and ordinary meaning
of confidential is “private or secret.” See Merriam-Webster
https://www.merriam-webster.com/dictionary/confidentiality (last accessed
April 19, 2017). Moreover, the Specification portions cited by the
Examiner, supra, employ the term confidentialilty in the context of
establishing confidentiality (private or secret) tags.
While Lajmi’s enrichment techniques may encompass the Examiner’s
overly broad claim interpretation, the Examiner presents insufficient
evidence to establish Lajmi discloses the claimed confidentiality tags, as
reasonably interpreted, and which employ private or secret restrictions.
We are persuaded by Appellants’ arguments because the Examiner’s
findings are insufficient to establish anticipation. A claim is anticipated only
if each and every element as set forth in the claims is found, either expressly
or inherently described in a single prior art reference, and arranged as
required by the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
F.2d 628, 631 (Fed. Cir. 1987). In particular, we agree the Examiner
presents insufficient findings regarding Lajmi’s disclosure of the disputed
term confidentiality tag and the related claim limitations, supra, reciting this
term.
In view of the above, based on the record before us, we do not sustain
the rejection of claim 1, and independent claims 7 and 82 which recite the
2 Claim 8 recites “[a] computer program capable of. . . .” In the event of
further prosecution, we encourage the Examiner to determine whether the
claim encompasses transitory media, which is not patent eligible under 35
U.S.C. § 101. See Exparte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
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disputed term and related limitations in commensurate form. We also do not
sustain the rejection of dependent claims 2—6. Because our decision with
regard to the disputed term and related limitations is dispositive of the
rejection of the rejected claims, we do not address additional arguments
raised by Appellants.
DECISION
We reverse the Examiner’s decision rejecting claims 1—8 under
35U.S.C. § 102(a).
REVERSED
(precedential); see also In re Nuijten, 500 F.3d 1346, 1356—57 (Fed. Cir.
2007); and U.S. Patent & Trademark Office, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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