Ex Parte Melcher

Patent Trial and Appeal Board

May 16, 2016

11961009 (P.T.A.B. May. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111961,009 12/20/2007 Ryan Melcher
49845 7590 05/18/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
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.
2043.501US 1 5463
EXAMINER
BRIER, JEFFERY A
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
05/18/2016 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 RY AN MELCHER
Appeal2014-003944
Application 11/961,009
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY III, 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 of claims 1-3, 5-11, 13-19, and 21-24. Claims 4, 12, and 20 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We Affirm.
Appeal2014-003944
Application 11/961,009
The Invention
Appellant's claimed invention relates to a system and method for
creating relationship visualizations in a networked system. (Spec. i-f 1 ).
Representative Claim
1. A method comprising:
providing a control mechanism having a web server
interface and an application programming interface (API);
[L 1] receiving a user request via the control mechanism,
the user request including information indicative of a
relationship and a subject entity, the relationship corresponding
to an interaction on a website with the subject entity;
obtaining information related to the status of the
relationship associated with the subject entity;
creating, by use of a processor, a relationship visualization
defining the status of the subject entity, [L2] the relationship
visualization including a first image corresponding to the subject
entity and a second image corresponding to a verb describing
the subject entity, the second image having a variable color
indicating a state of the verb; and
rendering the relationship visualization in real time.
(Bracketing and emphases added to the contested limitations, labeled as L 1
and L2).
2
Appeal2014-003944
Application 11/961,009
Rejections
A. Claims 1-3, 6-11, 14--19, and 22-24 are rejected under 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
Sewell (US 2004/0054985 Al, publ. Mar. 18, 2004), Underwood (US
6,601,057 Bl, issued July 29, 2003), and Meek (US 2008/0005072 Al, publ.
Jan. 3, 2008).
B. Claims 5, 13, and 21 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Sewell,
Underwood, Meek, and Andy Borman et al., PicNet: Augmenting Semantic
Resources with Pictorial Representations, Am. Assoc. for Artificial Intel.,
pp. 1-7 (Mar. 2005) (www.aaai.org) ("Borman").
Grouping of Claims
Based on Appellant's arguments, we decide the appeal all claims
rejected under Rejection A on the basis of representative claim 1. 1 37 C.F .R.
§ 41.37(c)(l)(iv). We address Rejection B of claims 5, 13, and 21, not
separately argued, infra.
ISSUE
Under§ 103(a), did the Examiner err by finding the cited combination
of Sewell, Underwood, and Meek, would have taught or suggested contested
limitations LI and L2, in particular: "[LI] the relationship corresponding to
an interaction on a website with the subject entity," and "[L2] the second
image having a variable color indicating a state of the verb" (Emphasis
added)?
1 We note Appellant has not filed a Reply Brief to further rebut the
Examiner's findings and legal conclusions.
3
Appeal2014-003944
Application 11/961,009
ANALYSIS
In reaching this Decision, we have considered all of Appellant's
arguments and any evidence presented. We disagree with Appellant's
arguments, and we incorporate herein and adopt as our own: ( 1) the findings
and reasons set forth by the Examiner in the Office Action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellant's arguments. However, we highlight and
address specific findings and arguments regarding claim 1 for emphasis in
our analysis below.
Limitation LI
Appellant contends Meek, which is cited by the Examiner for teaching
limitation L 1 ("the relationship corresponding to an interaction on a website
with the subject entity"), does not teach this limitation, because Meek
"certainly does not mention that the user queries 'includ[e] information
indicative of a relationship and a subject entity; the relationship
corresponding to an interaction on a website with the subject entity,' as
recited by claim 1." (Br. 11).
The Examiner finds Meek's search component 108, and steps 202,
402, 1002, 1102, and 1302, form social network relationships for the subject
entity. (Final Act. 5).
We find Appellant's arguments unpersuasive, because a
preponderance of the evidence supports the Examiner's legal conclusion of
obviousness. We find Meek's user querying, and relationships within a
social network, teach or at least suggest the contested limitation: "receiving
a user request ... the relationship corresponding to an interaction on a
website with the subject entity." (Ans. 18-19 (citing Meek, paras. 36, 37,
4
Appeal2014-003944
Application 11/961,009
41, Figs. 1--4, 9-11 and 13, social network graph 106 of Figs. 1, 3, and 9,
steps 202, 402, 1002, 1102, and 1302, described in paras. 33, 39, 64, 66, 68,
and 71)).2
Limitation L2
Appellant contends the Examiner's citations in Sewell "provides
insufficient detail to teach or suggest a 'second image having a variable
color indicating a state of the verb.' More specifically, mere mention of
using color in visual elements does not suggest that the color is variable, nor
does it suggest that the color indicates a state of a verb." (Br. 10).3
2 In the event of fmiher prosecution, we leave it to the Examiner to consider
whether at least claim 1 should be rejected under 35 U.S.C. § 101. Abstract
ideas have been identified by the comis by way of exarnpk, including
fundamental economic practices, certain methods of organizing human
activities, an idea "of itself~" and mathematical relationships/formulas. Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355-56 (2014). ?v1ethod
claim 1 is directed to a "relationship con-esponding to an interaction on a
\};lebsite~'~ a11d a ''relatio'l1ship 'lisualization~'~ tl1e latter of \l:lhich appears to be
directed to data intended for human perception (note: '"rendering the
relationship visualization" on a displav is not expressly clairned).
Under the two-part test described by the Supreme Court in Alice,
"[w]e [must first] determine whether the claims at issue are directed to a
patent-ineligible concept," such as an abstract idea. Alice,. 134 S. Ct. at
2355. Regarding method claim 1, "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011).
We leave further consideration of whether the claims on appeal are
directed to a patent-ineligible abstract idea, to the Examiner. Although, the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02 (9th Ed., Rev. 7, Nov. 2015).
3 As a matter of claim construction, we conclude the limitation "a variable
color indicating a state of the verb," as recited in claim 9, does not further
limit the structure of the apparatus. The recited "color" is nonfunctional
5
Appeal2014-003944
Application 11/961,009
The Examiner finds Sewell uses color attributes of verb images to
represent verbs where the color indicates a state of the verb. (Final Act. 6
(citing Sewell abstract, paras. 8, 13, 14, and claims 1 and 3)).
We agree with the Examiner that Sewell' s teaching of a plurality of
colors at least suggests "a variable color." (Ans. 16 (citing Sewell, paras. 8,
13, claim 1: "a plurality of ... colors")). Specifically, we agree that the
broadest reasonable interpretation of the claim limitation "having a variable
color indicating a state of the verb" (emphasis added), covers Sewell' s
plurality of colors.4 (Claim 1). We conclude the Examiner's broad but
reasonable interpretation of the claim term "variable color" (added by
Amendment during prosecution), is also consistent with Appellant's
Specification.
descriptive material ("NFDl\1"), i.e., informational content intended for
human perception. See MPEP § 2111.05 ("[\V]here the clahn as a whole is
directed to conveying a message or meaning to a human reader independent
of the intended computer system, and/or the computer-readable medium
merely serves as a support for information or data, no functional relationship
exists''). Furthermore, the recited "relationship visualization" that is
rendered also appears to be NFDM intended for human perception. See Ex
parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he
nature of the information being manipulated does not lend patentabiHty to an
otherwise unpatentable computer-implernented product or process").
Therefore, in the event of further prosecution, we leave it to the Examiner to
consider how much patentable weight, if any, to give to such recited NFDfv1.
4 Patentability is based upon the claims. "It is the claims that measure the
invention." SRI Int'! v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121
(Fed. Cir. 1985) (en bane) (citations omitted). "During prosecution ... the
PTO gives claims their 'broadest reasonable interpretation."' In re Bigio,
381F.3d1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211F.3d1367,
1372 (Fed. Cir. 2000)).
6
Appeal2014-003944
Application 11/961,009
Appellant's Specification describes non-limiting, exemplary
embodiments:
Additional information regarding the relationships shown as
visualizations can be provided in a number of ways in particular
embodiments. For example, color can be used to further indicate
the status of an entity of a verb. For example, green can be used
to convey a favorable, active, or positive status. Red can be used
to convey an unfavorable, inactive, or negative status. As shown
in Figure 2, visualization 340 shows a 'Thumbs down' verb in red
to indicate the item indicated in the predicate image has been lost
at auction - a negative result. Variations in color are quickly
understood by a viewer of the relationship status visualization.
(Spec. i-f 24 (emphasis added)).
We are not persuaded by Appellant's argument, because we find the
Specification is silent as to any basis on which to distinguish the disputed
claim term "variable color" from a plurality of colors. Therefore, we are not
persuaded the Examiner's interpretation of the claim term "variable color"
(as covering Sewell's plurality of colors) is overly broad or unreasonable. 5
Moreover, we find a preponderance of the evidence supports the
Examiner's finding that Sewell's image representing a verb, using color to
convey the meaning of the verb to a viewer, teaches or at least suggests the
contested claim 1 limitation: "a variable color indicating a state of the verb."
(Ans. 16 (citing Sewell, paras. 8, 13. 14)).
Furthermore, claim 1 does not require that a color is actually being
varied in real time. The claim term recited is "variable" (not "varied"), and
the claim does not recite "rendering the relationship visualization in real
5 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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Appeal2014-003944
Application 11/961,009
time," as an iterative step. Therefore, under a broad, but reasonable
interpretation, we conclude the "variable color" recited in claim 1 does not
preclude a reading on Sewell's plurality of colors.
On this record, we are not persuaded the Examiner's proffered
interpretation of "having a variable color" (claim 1 ), as suggested by
Sewell' s plurality of colors, would have been "uniquely challenging or
difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR int?
Co. v. Teleflex Inc., 550 U.S. 3985 418 (2007)). The Supreme Court guides
the skilled artisan is "a person of ordinary creativity, not an automaton."
KSR, 550 U.S. at 420-21.
Therefore, based upon the findings above, on this record, we are not
persuaded of error regarding the Examiner's reliance on the combined
teachings and suggestions of the cited prior art to teach or suggest the
contested limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's § 103 rejection A of
independent claim 1, and the associated grouped claims which fall therewith.
See Claim Grouping, supra.
Rejection B of claims 5, 13, and 21 under §103(a)
In view of the absence of any substantive, separate arguments directed
to rejection B of dependent claims 5, 13, and 21 (see Br. 12), we sustain the
Examiner's§ 103 rejection of these claims. Arguments not made are
waived. 6
6 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) ("When the
appellant fails to contest a ground of rejection to the Board, section
8
Appeal2014-003944
Application 11/961,009
CONCLUSIONS
( 1) For the aforementioned reasons, as supported by a
preponderance of the evidence, we are not persuaded the Examiner erred
regarding Rejection A, of claims 1-3, 6---11, 14--19, and 22-24, under 35
U.S.C. § 103(a), over the cited prior art combination of record, and we
sustain the rejection.
(2) On this record, we are not persuaded the Examiner erred
regarding Rejection B, of claims 5, 13, and 21, under 35 U.S.C. § 103, over
the cited prior art combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5-11, 13-19,
and 21-24 under §103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
1.192(c)(7) [(now section 41.37(c)(l)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection . . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived").
9