Ex Parte Lakshmanan et al

Patent Trial and Appeal Board

May 27, 2016

13117065 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/117,065 05/26/2011 Geetika T. Lakshmanan
70672 7590 06/01/2016
CRGOLAW
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BOCA RATON, FL 33434
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ATTORNEY DOCKET NO. CONFIRMATION NO.
YOR920100481US2 (014) 6816
EXAMINER
DON ABED, NINOS
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEETIKA T. LAKSHMANAN and MARTIN A. OBERHOFER
Appeal2014-006715
Application 13/117,065
Technology Center 2400
Before ST. JOHN COURTENAY III, DAVID M. KOHUT, and
KAMRAN JIVANI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection, mailed August 20, 2013, of claims 1-18. We have jurisdiction
under 35 U.S.C. § 6(b).
We Affirm.
Invention
The claimed invention on appeal is directed to: "the field of
e-meeting management and more particularly to social network integration
with an e-meeting." (Spec. i-f 2.)
Appeal2014-006715
Application 13/117,065
Representative Claim
1. A method for automated social networking for e-meetings, the
method comprising:
monitoring content provided to an e-meeting managed by an e-
meeting server executing in memory of a host computer;
detecting a name in the monitored content;
[L 1] comparing the detected name to names in a contact list for
a social networking system executing externally to the e-meeting; and,
triggering generation of a social networking introduction for the
name to different participants to thee-meeting in response to
matching the detected name to a name in the contact list.
(Emphasis added regarding the contested limitation, labeled as "LI".)
Rejections
A. Claims 13-18 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
B. Claims 1, 3, 4, 7, 9, 10, 13, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions of Appleman (US 7,979,802 Bl; issued July 12, 2011)
and Deeds (US 2006/0179114 Al; published August 10, 2006).
C. Claims 2, 8, and 14 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of
Appleman, Deeds and Komeliussen (US 2007/0285505 Al; issued
December 13, 2007).
D. Claims 5, 6, 11, 12, 17, and 18 are rejected under 35 U.S.C. §
103(a) as being obvious over the combined teachings and
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suggestions of Appleman, Deeds and Uberti (WO 2004/061612
A2; published July 22, 2004).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all claims
rejected under rejection Bon the basis of representative claim 1. See 37
C.F.R. § 41.37(c)(l)(iv). We address rejection A of claims 13-18, rejection
C of claims 2, 8, and 14, and rejection D of claims 5, 6, 11, 12, 17, and 18,
separately, infra.
ANALYSIS
We have considered Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer (2-7) in response to Appellants' arguments, to the extent
consistent with the analysis below. However, we highlight and address
specific findings and arguments for emphasis in our analysis below.
Rejection A of Claims 13-18 under§ 101
Issue: Under § 101, did the Examiner err by concluding that claims
13-18 are directed to non-statutory subject matter?
Appellants attempt to distinguish claim 13 on appeal from the claims
addressed in various Board decisions. (App. Br. 7). Appellants contend
claim 13 is directed to statutory subject matter under 35 U.S.C. § 101:
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[W]ith the opinions of Ex parte Mewherter, Ex parte Raverdy,
Ex parte Hu, Ex parte Dureau and Ex parte Bash in mind,
independent claim 15 recites a "a computer readable storage
medium having computer readable program code embodied
therewith", not just a "computer readable medium". Further, the
specification distinguishes a "storage medium" from a mere"
signal medium". Accordingly, those skilled in the art, as well
as the Honorable Board in the decisions rendered within Ex
parte Mewherter, Ex parte Raverdy, Ex parte Hu, Ex parte
Dureau and Ex parte Bash, recognize there is a difference
between a propagation medium (e.g., light, electricity, EMF,
etc.) and a storage medium (e.g., memory, hard disk, CD-ROM,
etc.).
(App. Br. 8):
The Examiner disagrees (Ans. 3):
There is no explicit definition that restricts "computer readable
storage medium" to not include a signal.
[The] Examiner's broadest readable interpretation would
therefore include non=statutory subject matter and specifically
includes a signal. Since no definition is provided for the
"computer readable storage medium", it could clearly include a
. 1 " s1gna per se ....
We find Appellants' Specification does not exclude signals from the
scope of the recited "computer readable storage medium" by a limiting
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definition or express disclaimer. 1'2 Instead, Appellants' Specification
broadly describes, in pertinent part (i-f 20): "aspects of the present invention
may take the form of a computer program product embodied in one or more
computer readable medium(s) having computer readable program code
embodied thereon." See also Spec. (i-f 21 ): "A computer readable storage
medium may be, for example, but not limited to, an electronic, magnetic,
optical, electromagnetic, infrared, or semiconductor system, apparatus, or
device, or any suitable combination of the foregoing." See also Spec.
(i-f 22): "A computer readable signal medium may include a propagated
data signal with computer readable program code embodied therein, for
1 We note the scope of the claims on appeal, at a minimum, at least covers
the corresponding supporting embodiment( s) described in the Specification.
We emphasize, however, that under a broad but reasonable interpretation (or
the more narro\~1 constrt1ction applied by the federal courts), and absent a
limiting definition or express disclaimer, the scope of the claims is not
limited to the preferred embodiments described in the Specification. Our
reviewing court has repeatedly "cautioned against limiting the claimed
invention to preferred embodiments or specific examples in the
specification." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47
(Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)).
2 The Specification may show that "the patentee has disclaimed subject
matter or has otherwise limited the scope of the claims." Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1343 (Fed. Cir. 2001); SciMed Life Sys., Inc.
v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed.Cir.2001)
(relying on a disclaimer in the written description of subject matter that
could have otherwise fallen within the scope of the claim language).
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example, in baseband or as part ofa carrier wave." (Emphasis added).
Given the non-limiting, exemplary support described in the
Specification (id.), we conclude the intended scope of the claim term
"computer program product" broadly covers both statutory and non-statutory
computer readable mediums, under a broad but reasonable interpretation.
Our reviewing court guides:
The four categories [of§ 101] together describe the
exclusive reach of patentable subject matter. If a claim covers
material not found in any of the four statutory categories, that
claim falls outside the plainly expressed scope of§ 101 even if
the subject matter is otherwise new and useful.
In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).
Notwithstanding Appellants' arguments (App. Br. 4--8), we are bound
by the holding of Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PT AB
2013) (precedential). The expanded PT AB merits panel in Mewherter held
the scope of a "computer readable storage medium" encompassed transitory
media such as signals or carrier waves, where, as here, the Specification
does not expressly disclaim transitory forms. 3 Therefore, we find the
holding of Mewherter is directly on point and controlling regarding the
"computer program product" that includes the "computer readable storage
medium" recited in Appellants' independent claim 13.
Accordingly, we apply the holding of Mewherter to Appellants'
recited "computer program product" that includes a "computer readable
storage medium" (claim 13), and we sustain the Examiner's rejection of
claims 13-18 under§ 101, as being directed to non-statutory subject matter.
3 See n.2. supra.
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Rejection B of Claims 1, 3, 4, 7, 9, 10, 13, 15 and 16 under§ 103
Contentions
Appellants contend Deeds does not teach contested claim 1 limitation
L 1: "comparing the detected name to names in a contact list for a social
networking system executing externally to thee-meeting; .... "See App. Br.
12:
[C]laim 1 expressly recites "comparing the detected name to
names in a contact list for a social networking system executing
externally to thee-meeting" --not merely comparing the
detected name to names in a contact list of a particular user of a
social networking system. In other words, "a contact list for a
social networking system" is not a contact list of one user.
Rather "a contact list for a social networking system" includes
all users of the social networking system. Additionally, it is
plain that a contact list is not a "system"-it is a list, a set of
names. A social networking system is plainly understood to
mean a system in which users share social information with one
another and develop individual networks of other users.
Appellants additionally refer to extrinsic U.S. Patent No. 8,601,596
B2, to Wu et al., for a definition of a "social networking system." (App. Br.
12).
The Examiner disagrees, and refers to Deeds at paragraphs 4 7 and 69
(Ans. 6-7):
[The] Examiner points to paragraph[] [0047] of Deeds
which teaches "After all communication identifiers within the
received email message have been identified, the next step
typically would be to compare each of these communication
identifiers to the user's contact list to identify matches, as
shown in block 104 of PIG. 3. A user would typically have a
contact list stored in the memory of the user's communication
terminal or in a remote memory, such as in a server
accessible by the terminal. A contact list typically comprises
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a number of individual contacts, with each individual contact
typically comprising specific contact information for one
person or other entity (e.g., corporate entity)."
Furthermore, paragraphs [0069] which teaches "For
example, the received email may have contained a telephone
number for a particular person. If that particular person is in
the user's contact list, and that person's telephone number and
email address are in the contact, then the contact will be
displayed in the generated list. If that particular person is in the
user's contact list, and that person's telephone number in the
contact but that person's email address is not in the contact, then
the contact will typically not be displayed in the generated list
because the terminal will not be able to initiate a meeting
request by email to that person. The generated list will
typically also comprise any email address that were extracted
from the received email message (either from a header or from
the body of the message) but did not match any email addresses
in any of the contacts. Even though such an email address does
not match any of the contacts, the processor of the terminal can
still initiate a meeting request by email to such an email address
if selected by the user."
This section clearly teaches that a "contact list" is a social
networking list because a contact list is a collection of screen
names of people in a network with some relationship to one
another which would be a social network system. Furthermore
the claim limitation reads "comparing the detected name to
names in a contact list FOR a social networking system" and
clearly a contact list of Deeds is FOR an instant messaging
social networking system.
Issue: Under§ 103, did the Examiner err by finding the cited
combination of Appleman and Deeds would have taught or suggested
contested limitation LI: "comparing the detected name to names in a
contact list for a social networking system executing externally to the e-
meeting," within the meaning of representative claim 1? (Emphasis added.)
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This appeal turns on claim construction. Appellants urge "A social
networking system is plainly understood to mean a system in which users
share social information with one another and develop individual networks
of other users." (App. Br. 12). Appellants proffer as extrinsic evidence,
U.S. Patent No. 8,601,596 B2, to Wu et al.
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted).
Here, Appellants support their claim interpretation by asking the panel
to construe the claim 1 term "social networking system" in light of another
inventor's patent-Wu '596, rather than the instant Specification. We
decline to consider such untimely extrinsic evidence, because it was not
identified in the Evidence Appendix of the Appeal Brief (App. Br. 21), nor
was the reference provided under the exceptions set forth under 37 C.F.R.
§ 41.33(d)(2). 4
Turning to the intrinsic evidence, we look to Appellants' Specification
for context and find the term "social networking system" is not defined in
4 See Evidence Appendix (App. Br. 21 ): "No evidence submitted pursuant
to 37 C.F.R. §§ 1.130, 1.131, or 1.132 of this title or of any other evidence
entered by the Examiner has been relied upon by Appellants in this Appeal,
and thus no evidence is attached hereto."
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claim 1 or in the Specification. 5 Moreover, Appellants fail to identify in the
Briefs any limiting definition or express disclaimer in the originally-filed
Specification. See n.2. supra.
The Examiner finds the contact list taught by Deeds (i-f 47, Fig. 3)
teaches or suggests a "contact list for a social networking system," because it
relates to screen names in an Instant Messaging system. (Ans. 7).
Because Appellants have not provided a definition for "social
networking system " in the claim or Specification, or rebuttal evidence
properly entered and considered by the Examiner in the record, we are not
persuaded the Examiner's reading of the claim term "social networking
system" is overly broad, unreasonable, or inconsistent with Appellants'
Specification. 6
Therefore, by a preponderance of the evidence, and for the reasons
discussed above, we are not persuaded the Examiner erred. Accordingly, we
sustain Rejection B of representative claim 1, independent claims 7 and 13,
5 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
6 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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and dependent claims 3, 4, 9, 10, 15, and 16, also rejected under rejection B,
which fall with claim 1. See "Grouping of Claims," supra.
Rejection C of Claims 2, 8, and 14 under§ 103
Appellants advance no separate arguments for the noted claims, which
are rejected under rejection C. Arguments not made are considered waived.
See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain rejection C of
dependent claims 2, 8, and 14.
Rejection D of Claims 5, 6, 11, 12, 17, and 18 under§ 103
Appellants advance no separate arguments for the noted claims, which
are rejected under rejection D. Arguments not made are considered waived.
Therefore, we sustain rejection D of dependent claims 5, 6, 11, 12, 17, and
18.
Conclusion
For the reasons discussed above, and by a preponderance of the
evidence, we are not persuaded the Examiner erred regarding rejection A
under 35 U.S.C. § 101, and rejections B-D under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 13-18 under§ 101.
We affirm the Examiner's rejections of claims 1-18 under§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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