Ex Parte Hart-Davidson et al

Patent Trial and Appeal Board

Aug 29, 2016

13045644 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/045,644 03/11/2011 William Hart-Davidson
21186 7590 08/31/2016
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
3000.0l 7US 1 3326
EXAMINER
SALAD,ABDULLAHIELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM HART-DAVIDSON, JEFFREY GRABILL, and
MICHAEL MCLEOD
Appeal2015-002691
Application 13/045,644
Technology Center 2400
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellants is the assignee, Board of
Trustees of Michigan State University. Appeal Br. 2.
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Application 13/045,644
STATEMENT OF THE CASE
Introduction
Appellants' described and claimed invention relates generally to
tracking and evaluating social writing activities. Abstract.
Claim 1 is representative and reads as follows (with the disputed
limitation emphasized):
1. A method comprising:
monitoring content creation activities within a social
software environment, the monitoring including capturing a
plurality of written artifacts produced by multiple users
collaborating on creating a common piece of content;
tracking social behaviors related to the content creation
activities performed within the social software environment;
identifying activities of value associated with the content
creation activities, identifYing activities of value includes
evaluating the plurality of written artifacts and determining a
sub-set of the plurality of written artifacts that contributed to the
common piece of content;
associating the activities of value with a complex activity
to form a composite picture, the complex activity includes a
series of tasks and an outcome, the outcome at least partially
represented by some form of content created during the complex
activity and including the common piece of content; and
providing an interface to present information related to the
composite picture.
Appeal Br. 23 (Claims App.).
References
Kott US 2006/0190281 Al Aug.24,2006
Beringer US 2007/0276715 Al Nov. 29, 2007
McCauley US 2009/0070426 Al Mar. 12, 2009
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Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kott, in view of Beringer, and further in view of
McCauley.
Issues on Appeal
Appellants' arguments in the Appeal Brief2 and Reply Brief present us
with the following issues:
1. Does the combination of Kott, Beringer, and McCauley
teach or suggest "capturing a plurality of written artifacts
produced by multiple users collaborating on creating a
common piece of content," and "evaluating the plurality
of written artifacts and determining a sub-set of the
plurality of written artifacts that contributed to the
common piece of content," as recited in claims 1, 9, and
13?
2. Does the combination of Kott, Beringer, and McCauley
teach or suggest "identifying content reuse during the
content creation activities related to the complex
activity," as recited in claim 2 and similarly recited in
claim 14?
2 Our Decision refers to the Final Office Action (mailed Nov. 21, 2013,
"Final Act."), Appellants' Appeal Brief (filed July 21, 2014, "Appeal Br.")
and Reply Brief (filed Jan. 5, 2015, "Reply Br."), the Examiner's Answer
(mailed Nov. 5, 2014, "Ans."), and the original Specification (filed Mar. 11,
2011, "Spec.").
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3. Does the combination of Kott, Beringer, and McCauley
teach or suggest "extracting written artifacts associated
with the social behaviors," as recited in claim 4 and
similarly recited in claim 16?
4. Does the combination of Kott, Beringer, and McCauley
teach or suggest "analyzing individual contributions to
the content creation activities in relation to the outcome
associated with the complex activity," as recited in claim
6 and similarly recited in claim 18?
5. Does the combination of Kott, Beringer, and McCauley
teach or suggest "tracking revisions, comments, content
reuse, and feedback received from a plurality of users
during the monitored content creation activities," as
recited in claim 7 and similarly recited in claim 19?
6. Does the combination of Kott, Beringer, and McCauley
teach or suggest "a folksonomic tagging system to
generate user-generated organizational categories and
metadata associated with the content creation activities,"
as recited in claim 1 O?
ANALYSIS
We are not persuaded by Appellants' arguments that the Examiner has
erred. Appeal Br. 10-22; Reply Br. 2-7. Unless otherwise indicated, we
agree with, and adopt as our own, the Examiner's findings and reasons as set
forth in the Final Office Action from which this appeal is taken (Final
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Act. 2-9) and the Examiner's Answer (Ans. 2-11). For emphasis, we
highlight specific arguments and findings as follows.
Issue 1
Appellants argue Kott and Beringer, whether considered individually
or in combination, fail to teach or suggest "capturing a plurality of written
artifacts produced by multiple users collaborating on creating a common
piece of content," as recited in claims 1, 9, and 13. Appeal Br. 15-16; Reply
Br. 2-3. As argued by Appellants, neither Kott nor Beringer teach or
suggest collaboration among users to create a common piece of content.
Appeal Br. 15-16.
We do not find this argument persuasive. Appellants' argument
regarding the "capturing" limitation is directed to Kott and Beringer, but the
Examiner relies on the combination of Kott, Beringer, and McCauley as
teaching or suggesting this limitation. Final Act. 4---6; Ans. 2-8. Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined teachings
of the references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the Examiner finds Kott teaches monitoring a user's behavior
within a social network (e.g., network activity, posting messages, posting
comments). Ans. 3 (citing Kott i-fi-133, 39, 58). The Examiner then relies on
McCauley as teaching or suggesting an online project collaboration between
users including contributing material, editing content, and commenting,
where information associated with the contributed material (e.g., revisions,
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versions, contributors) is tracked. 3 Ans. 3--4 (citing McCauley iii! 56, 122);
see also McCauley if 77. As discussed below in greater detail with respect
to McCauley, Appellants have not provided persuasive evidence or
arguments to rebut these findings. Thus, we are not persuaded that the
Examiner erred in finding the combination of Kott, Beringer, and McCauley
teaches or suggests "capturing a plurality of written artifacts produced by
multiple users collaborating on creating a common piece of content."
Appellants further argue McCauley fails to teach or suggest
"evaluating the plurality of written artifacts and determining a sub-set of the
plurality of written artifacts that contributed to the common piece of
content," as recited in claims 1, 9, and 134 . Appeal Br. 16-17; Reply Br. 4.
Instead, as argued by Appellants, McCauley merely teaches an online
project collaboration module that "allegedly includes contributing material,
editing content, a discussion and/or commenting," an extra collaboration
module that "may enable communication between external social
communities," and a tracking module that performs "rudimentary version
tracking of documents" including "highlighting in different colors ... in
order to identify the changes made to an original version." Appeal Br. 16-
17; Reply Br. 4 (internal citations omitted).
We do not find this argument persuasive. We agree with the
Examiner that McCauley teaches a track module that tracks information
3 The Examiner further relies on Beringer as teaching or suggesting
limitations not at issue in this appeal. Ans. 6-7 (citing Beringer iii! 25 and
31).
4 The Examiner conceded that Kott and Beringer, whether considered
individually or in combination, fail to teach or suggest the aforementioned
limitation. See Final Act. 5.
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associated with contributed material of an online project and provides
control over edits made by other users (e.g., contributors, co-editors, etc.) to
a user's content. Ans. 3--4 (citing McCauley i-fi-156, 122); see also McCauley
i1 77. As McCauley teaches tracking edits and other types of contributed
material contributing to content of an online project, we agree with the
Examiner that McCauley teaches or suggests evaluating a plurality of
written artifacts and determining a sub-set of the written artifacts that
contributed to a common piece of content. Thus, we are unpersuaded that
the Examiner erred in finding the combination of Kott, Beringer, and
McCauley teaches or suggests "evaluating the plurality of written artifacts
and determining a sub-set of the plurality of written artifacts that contributed
to the common piece of content."
Appellants also argue that, without Appellants' claims as a roadmap,
no person of ordinary skill in the art would have been motivated to make the
Examiner's combination of references, as none of the cited references
provide a rationale for the proffered combination. Appeal Br. 14; Reply
Br. 5. We do not find this argument persuasive. The Supreme Court has
rejected the rigid requirement of demonstrating a teaching, suggestion, or
motivation to combine references in order to show obviousness. KSR Int 'l
Co. v. Teleflex Co., 550 U.S. 398, 419 (2007). Instead, a rejection based on
obviousness only needs to be supported by "some articulated reasoning with
some rational underpinning" to combine known elements in the manner
required by the claim. Id. at 418. Further, a combination of known elements
according to known methods that does no more than yield predictable results
is likely obvious to one of ordinary skill in the art. Id. at 416. The Examiner
provided a rationale for combining the features of Kott, Beringer, and
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McCauley (see Final Act. 5---6), while Appellants failed to either rebut this
rationale or establish that the combination would yield more than predictable
results. See Appeal Br. 14; see also Reply Br. 3-5.
Therefore, for at least the reasons described above, we sustain the
Examiner's rejection of claims 1, 9, and 13, as well as claims 3, 5, 8, 11-12,
15, 17, and 20, which are not argued separately.
Issue 2
Appellants argue the combination of Kott, Beringer, and McCauley
fails to teach or suggest "identifying content reuse during the content
creation activities related to the complex activity," as recited in claim 2 and
similarly recited in claim 14. Appeal Br. 17-18; Reply Br. 5---6. As argued
by Appellants, paragraph 22 of Beringer discusses allowing a developer of
workflows to use reusable blocks to create a desired workflow, and the
"reuse" discussed by Beringer has nothing to do with content creation and is
also not "identified ... during the content creation activities related to [a]
complex activity." Appeal Br. 18; see also Reply Br. 5---6.
We do not find this argument persuasive. We agree with the
Examiner that Beringer teaches modeling complex activity as workflows,
where workflows include actions generated as reusable building blocks that
define operations that are performed in the context of an activity. Ans. 8-9
(citing Beringer i-fi-1 22-23, 31 ). Neither Appellants' claims, nor Appellants'
Specification, define "content creation activities" in a manner that
distinguishes from the activities taught by Beringer. Further, we disagree
with Appellants' contention that the activities taught by Beringer do not
include content creation, as Beringer further describes that a sub-set of the
operations performed in a context of an activity include creating a purchase
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order and creating a vendor record. See Beringer if 31. Thus, we are
unpersuaded that the Examiner erred in finding the combination of Kott,
Beringer, and McCauley teaches or suggests "identifying content reuse
during the content creation activities related to the complex activity."
Therefore, for at least the reasons described above, we sustain the
Examiner's rejection of claims 2 and 14.
Issue 3
Appellants argue the combination of Kott, Beringer, and McCauley
fails to teach or suggest "extracting written artifacts associated with the
social behaviors," as recited in claim 4 and similarly recited in claim 16.
Appeal Br. 18-19. As argued by Appellants, paragraph 58 of Kott discusses
tracking exchanges of gifts, and tracking exchanges of gifts is not
comparable to "extracting written artifacts associated with . . . social
behaviors," because merely tracking the exchange does not teach extracting
a written artifact from the exchange. Id.
We do not find this argument persuasive. We agree with the
Examiner that Kott teaches collecting data in connection with user behavior
on a social network, where the collected data includes: content and
frequency of user postings or comments, data of trades, gifts, or other
exchanges; and data regarding user feedback or ratings. Final Act. 7 (citing
Kott if 58). Each of these enumerated data collections involves a written
artifact that is extracted from the user interaction within the social network.
Further, similar to "content creation activities," neither Appellants' claims,
nor Appellants' Specification, define "written artifacts" in a manner that
distinguishes from the aforementioned data taught by Kott. Thus, we are
unpersuaded that the Examiner erred in finding the combination of Kott,
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Beringer, and McCauley teaches or suggests "extracting written artifacts
associated with the social behaviors." Therefore, for at least the reasons
described above, we sustain the Examiner's rejection of claims 4 and 16.
Issue 4
Appellants argue the combination of Kott, Beringer, and McCauley
fails to teach or suggest "analyzing individual contributions to the content
creation activities in relation to the outcome associated with the complex
activity," as recited in claim 6 and similarly recited in claim 18. Appeal
Br. 19-20; Reply Br. 6. As argued by Appellants, paragraph 53 of Kott
merely discusses monitoring activities associated with a gift, a trade, or a
purchase of assets, and such activities are not content creation activities, let
alone content creation activities leading to a creation of a common
document. Appeal Br. 19-20. As also argued by Appellants, McCauley
merely teaches tracking individual contributions to a project, and tracking
individual contributions to a project does not necessarily involve "analyzing
individual contributions to the content creation activities in relation to the
outcome associated with the complex activity" because contributions can be
tracked without any analysis in reference to an outcome. Reply Br. 6.
We do not find this argument persuasive. We agree with the
Examiner that McCauley discloses a track module that tracks contributed
materials to an online project, including tracking content contributors (i.e.,
individuals who have contributed material for a project). Ans. 9 (citing
McCauley i-fi-177, 127). Thus, we are unpersuaded that the Examiner erred in
finding the combination of Kott, Beringer, and McCauley teaches or
suggests "analyzing individual contributions to the content creation activities
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in relation to the outcome associated with the complex activity."5 Therefore,
for at least the reasons described above, we sustain the Examiner's rejection
of claims 6 and 18.
Issue 5
Appellants argue the combination of Kott, Beringer, and McCauley
fails to teach or suggest "tracking revisions, comments, content reuse, and
feedback received from a plurality of users during the monitored content
creation activities," as recited in claim 7 and similarly recited in claim 19.
Appeal Br. 20-21. As argued by Appellants, paragraph 58 of Kott merely
discusses monitoring user activity on a social network, where such user
activity includes user logon frequency, content and frequency of posting or
comments, trades, gifting, and other exchanges, and where the cited
paragraph fails to discuss "tracking revisions" or "content reuse." Id.
We do not find this argument persuasive. Appellants' argument is
directed to Kott, but the Examiner relies on the combination of Kott,
Beringer, and McCauley as teaching or suggesting this limitation. Final
Act. 4--7; Ans. 2-10. We agree with the Examiner that Beringer teaches
"content reuse" and that McCauley teaches "tracking revisions." Final
Act. 5; Ans. 7, 10. Thus, we are unpersuaded that the Examiner erred in
finding the combination of Kott, Beringer, and McCauley teaches or
suggests "tracking revisions, comments, content reuse, and feedback
received from a plurality of users during the monitored content creation
5 The Examiner also found paragraph 53 of Kott teaches or suggests the
aforementioned limitation. See Final Act. 7. We take no position regarding
this finding, as we agree with the Examiner that McCauley teaches or
suggests the aforementioned limitation, for the reasons discussed above.
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activities." Therefore, for at least the reasons described above, we sustain
the Examiner's rejection of claims 7 and 19.
Issue 6
Appellants argue the combination of Kott, Beringer, and McCauley
fails to teach or suggest "a folksonomic tagging system to generate user-
generated organizational categories and metadata associated with the content
creation activities," as recited in claim 10. Appeal Br. 21-22. As argued by
Appellants, paragraphs 33-34 of Kott merely discuss "categorizing" user
behavior as "good" or "bad," and the good and bad categories are not "user-
generated organizational categories," as recited in the claims. Id.
We do not find this argument persuasive. Instead, we agree with the
Examiner that McCauley teaches user-generated organizational categories
because McCauley discloses a tag module that generates tags associated
with interest categories. Ans. 10-11 (citing McCauley i-f 86). Thus, we are
unpersuaded that the Examiner erred in finding the combination of Kott,
Beringer, and McCauley teaches or suggests "a folksonomic tagging system
to generate user-generated organizational categories and metadata associated
with the content creation activities."6 Therefore, for at least the reasons
described above, we sustain the Examiner's rejection of claim 10.
6 The Examiner also found paragraphs 33-34 of Kott teach or suggest the
aforementioned limitation. See Final Act. 7. We take no position regarding
this finding, as we agree with the Examiner that McCauley teaches or
suggests the aforementioned limitation, for the reasons discussed above.
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DECISION
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 103(a).7
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
7 Subsequent to the Examiner's Final Action, the Supreme Court in Alice
Corp., v. CLS Bank Int'!, 134 S. Ct. 2347 (2014) set forth a two-part test to
determine compliance of a claim with 35 U.S.C. § 101. The Court held that
a mere instruction to implement an abstract idea on a computer cannot
impart patent eligibility. 134 S. Ct. at 2357-59. Should there be further
prosecution of this application, we suggest that the Examiner re-review all
pending claims in light of the Court's Alice decision and any subsequent
agency guidance.
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