Ex Parte O et al

Patent Trial and Appeal Board

Mar 31, 2014

12118400 (P.T.A.B. Mar. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/118,400 05/09/2008 Patrick J. O'Sullivan RSW920080067US1/40403-009 1931
75949 7590 03/31/2014
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
NAJJAR, SALEH
ART UNIT PAPER NUMBER
2492
MAIL DATE DELIVERY MODE
03/31/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte PATRICK J. O'SULLIVAN, HEMA SRIKANTH, and
CAROL S. ZIMMET
____________________

Appeal 2011-011361
Application 12/118,400
Technology Center 2400
____________________

Before: CHARLES N. GREENHUT, LYNNE H. BROWNE, and
JILL D. HILL, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011361
Application 12/118,400
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STATEMENT OF CASE
Patrick J. O’Sullivan et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 1, 4, 5, 7, 9-14, 16, and 18-26. Claims 2, 3, 6, 8,
15, and 17 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are directed to adaptive electronic introductions. Claims
1, 19, and 20 are independent. Claim 1 is reproduced below:
1. A method for providing adaptive electronic introductions
comprising:
setting control parameters within an adaptive electronic
introductions application:
automatically generating an electronic introduction
according to said control parameters;
associating said adaptive electronic introduction with an
electronic communication from a sender to a recipient; wherein
said automatically generating an electronic introduction
comprises
searching databases tor information about both
said sender and said recipient:
comparing information about said sender and said
recipient for commonalities; and
including at least a portion of said commonalities
in said electronic introduction.

PRIOR ART
Fitzpatrick
Gelormine
Wilkins
Gaedcke
US 2003/0163340 A1
US 2005/0096929 A1
US 2007/0266156 A1
US 2008/0005282 A1
Aug. 28, 2003
May 5, 2005
Nov. 15, 2007
Jan. 3, 2008
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GROUNDS OF REJECTION
1. Claim 19 stands rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1, 5, 7, 9, 12-14, 18, 19, 21, 22, 25, and 26 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Wilkins and
Fitzpatrick.
3. Claims 4, 16, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wilkins, Fitzpatrick, and Gelormine.
4. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilkins, Fitzpatrick, and Gaedcke.
5. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fitzpatrick and Gelormine.

OPINION
Non-statutory Subject Matter
Claim 19
The Examiner determines that the phrase “computer usable storage
medium,” as set forth in claim 19, “covers forms of non-transitory tangible
media and transitory propagating signals per se in view of the ordinary and
customary meaning of computer readable media, particularly when the
specification is absent an explicit definition or is silent.” Ans. 3 (citing
MPEP § 2111.01).
Appellants argue that “[b]y reciting a ‘computer usable storage
medium,’ claim 19 excludes the transient propagating signals which the
Office Action cites as problematic . . . The term ‘storage medium’ by
definition does not include transient propagating signals because the storage
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media physically stores the computer usable program code for execution.”
App. Br. 10.
However, Appellants have not identified, nor do we discern where the
Specification expressly and unambiguously limits the claimed “computer
readable storage medium” to solely non-transitory forms of storage. The
attribute of storage, given its broadest reasonable interpretation, is
insufficient to limit the claim to non-transitory forms. See Ex parte
Mewherter, No. 2012-007692 (PTAB May 8, 2013) (expanded panel),
available at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd2012_007692_preced
ential.pdf. (Holding recited machine-readable storage medium ineligible
under 35 U.S.C. § 101 since it encompasses transitory media.). Thus,
Appellants’ argument is unpersuasive.
Accordingly, we sustain the Examiner’s rejection of claim 19 under
35 U.S.C. § 101.
Obviousness
Rejections based on Wilkins and Fitzpatrick
Claims 1, 5, 7, 9, 12-14, 18, 19, 21, 22, 25 and 26
Claims 1, 7, 9, 13, 14, and 22:
Regarding claim 1, the Examiner finds, inter alia, that Wilkins
discloses “setting control parameters within an adaptive electronic
introductions application (see paragraph 70, parameters include a serial
number, or other contact information parsed from an email).” Ans. 4. In
addition, the Examiner finds that Wilkins discloses “automatically
generating an electronic introduction according to said control parameters
(see paragraph 53, where contact information is received).” Ans. 4.
Acknowledging that Wilkins does not disclose “searching databases f[or]
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information about both said sender and said recipient; comparing
information about said sender and said recipient for commonalities; and
including at least a portion of said commonalities in said electronic
introduction” (Ans. 4), the Examiner finds that Fitzpatrick discloses “a
system for connecting businesses through common interests by querying
from an inquiring business an online business registry (see Abstract).” Ans.
5. The Examiner further finds that Fitzpatrick “discloses comparing
information about the sender and recipient for commonalities and including
an [sic] at least a portion of said commonalities in said electronic
introduction (see paragraph 26 and 29).” Id.
Appellants argue that “[t]here is absolutely no teaching or suggestion
in Wilkins that the serial number or contact information parsed by the email
application is ever used by the browser as control parameters in
automatically generating an electronic introduction.” App. Br. 13.
In response to this argument, the Examiner finds that the “control
parameter is an approval command that a user must engage before receiving
a contact record” and that “[t]he automatic generation of an electronic
introduction is performed by [the] server that releases the contact record to
the requesting User B. That is, the server provides an automated service to
gather contact information for inquiring users.” Ans. 11.
In response to these findings, Appellants contend that “[a]llowing
access to contact information cannot be reasonably interpreted as
‘automatically generating an electronic introduction according to said
control parameters’ as recited in claim 1.” Reply Br. 5. However,
Appellants do not explain why Wilkins’ response to User B’s request for
User A’s contact record does not constitute the claimed automatically
generated electronic introduction.
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Appellants’ Specification defines an electronic introduction as “a
package or information that is included with, or accessible from, an
electronic communication that introduces the sender of the electronic
communication to its recipient.” Spec., para. [0026]. Wilkins states:
the contact registry server responds with the requested record in
a format compatible with the requesting application in step 918-
for example, via an XML message, via an email or SMS
message, via an SS7 packet, or via a web page or a download
for import into the requesting application.
Wilkins, para. [0053] (emphasis added). Thus, the Examiner’s interpretation
of Wilkins’s provision of access or sending of a message with contact
information as an electronic introduction that is automatically generated in
response to User B’s request is consistent with Appellants’ usage of the term
“electronic introduction” in the Specification. Claim interpretations
excluding the preferred embodiments are rarely, if ever, correct Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1997).
Accordingly, Appellants’ argument is not persuasive.
Next, Appellants argue that “[a] search by an inquiring business
cannot be reasonably understood as ‘searching databases for information
about both said sender and said recipient.’ (Claim 1).” App. Br. 13.
In response to this argument, the Examiner finds that in Fitzpatrick
“[s]ince there is a comparison of common interests, it is implied that both
parties have information being searched about one another for those
common interests.” Ans. 11 (citing Fitzpatrick, para. [0026]). We agree and
note that Fitzpatrick discloses an embodiment where “businesses can expose
selected business attributes only to inquiring businesses having
corresponding or similar business attributes.” Fitzpatrick, para. [0020].
Thus, performance of a search for “linking businesses using common
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interests” (Fitzpatrick, para. [0026]) requires a search of information about
both the sender and the recipient businesses.
Appellants further argue that “there is absolutely no teaching in the
cited portions of Fitzpatrick of any type of automatically generated
introduction or any type of introduction which includes commonalities
between a sender and a recipient as recited in claim 1.” App. Br. 13-14.
Appellants’ argument is not responsive to the rejection as articulated by the
Examiner. As discussed supra, Wilkins describes an automatically
generated electronic introduction and Fitzpatrick teaches “expos[ing]
selected business attributes only to inquiring businesses having
corresponding or similar business attributes.” Exposing attributes is a
teaching to provide them to a requester. Doing so in the manner of Wilkins,
in an introduction, yields the claimed subject matter. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon the combined teachings of Wilkins and
Fitzpatrick. See In re Merck & Co. Inc., 800 F.2d 1091, 1097, (Fed. Cir.
1986). Accordingly, Appellants’ argument is not persuasive.
For these reasons, we sustain the Examiner’s rejection of claim 1, and
claims 7, 9, 13, 14, and 22 which depend from claim 1 and were not argued
separately.
Claim 19:
In rejecting claim 19, the Examiner finds, inter alia, that Fitzpatrick
discloses “gathering information [that] is at least partially controlled by a
search depth control setting adjustable by a recipient of said electronic
introduction (see Fitzpatrick paragraph 28). Ans. 5.
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Appellants argue that “[t]he inquiring business cannot be reasonably
understood to be a ‘recipient of an electronic introduction’ as recited in
claim 19.” App. Br. 15.
In response to this argument, the Examiner further finds that “[a]
recipient of the introduction can also set privacy settings that will limit the
amount of attributes that can be searched (see paragraph 20).” Ans. 11.
Based on this finding, the Examiner concludes that “[g]iven that a potential
recipient of an introduction can keep them[selves] from being found through
a search query by setting privacy settings, it is believed that a search depth is
achieved.” Id.
The Examiner’s finding is correct and we agree with the Examiner’s
conclusion drawn therefrom. We further note that claim 19 does not
preclude the inquiring business from being the recipient of the electronic
introduction. Thus, Appellants’ argument is not persuasive.
Accordingly, we sustain the Examiner’s rejection of claim 19 under
35 U.S.C. § 103(a).
Claim 5:
Appellants argue that Fitzpatrick “does not teach ‘said recipient
settings comprising a scope setting providing the recipient control over an
amount of data displayed in the adaptive electronic introduction.’ (Claim
5).” App. Br. 17. Specifically, Appellants argue that “a search by an
inquiring business is not an adaptive electronic introduction sent to a
recipient as recited in claim 5;” “restriction on a search engine operated by
the inquiring business is not a recipient control over the amount of data
displayed in an adaptive electronic introduction;” and “the relationship status
determines the ‘level of access to particular profiles as well as particular
business attributes’ (Fitzpatrick, paragraph (019).” App. Br. 17-18.
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In response to this argument, as discussed supra, the Examiner finds
that “[a] recipient of the introduction can also set privacy settings that will
limit the amount of attributes that can be searched (see paragraph 20).” Ans.
11. Based on this finding, the Examiner determines that “a potential
recipient of an introduction can keep them[selves] from being found through
a search query by setting privacy settings . . . [therefore] a search depth is
achieved.” Id.
We agree. In both paragraphs [0019] and [0020] Fitzpatrick describes
security features (scope settings) which restrict access to a recipient’s data.
The Examiner correctly finds that Fitzpatrick describes recipient control of
these features. Ans. 11 (citing Fitzpatrick, para. [0020]).
For these reasons, we sustain the Examiner’s rejection of claim 5.
Claim 12:
Appellants argue that “[c]ategorization of businesses into market
segments as taught by Fitzpatrick is clearly not ‘identification of the sender
within an organizational hierarchy’ or ‘identification of the sender’s report
to superiors.’ (Claim 12).” App. Br. 19.
In response to this argument, the Examiner finds that “Fitzpatrick
shows that business profiles can be categorized according to a particular
market segment and business function. The business function relates to a
hierarchy and broadly relates to a hierarchy related to superiors such as the
manufacturer provides goods to the retailer (see paragraph 19).” Ans. 12.
The recited identification of the sender is “within an organizational
hierarchy” and that identification comprises “identifying the sender’s report
to superiors.” We cannot agree with the Examiner that these limitations are
met by various discrete business organizations that may cooperate, because
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there is no hierarchal structure among them where a party in one business is
“superior[]” to a party in another.
Thus, Appellants correctly note that there is no mention in this
paragraph of “identifying the sender’s report to superiors” as required by
claim 12.
For these reasons, we do not sustain the Examiner’s rejection of claim
12.
Claim 18:
Regarding claim 18, Appellants argue that “the contact registry server
taught by Wilkins is not a recipient platform. Paragraph 0041 explicitly
teaches that the contact registry server disseminates contact information to
third party requesters through a web browser interface on the network device
or email to a user.” App. Br. 20. Appellants further argue that
“[c]onsequently, nowhere in paragraph 0041, or anywhere else in Wilkins, is
it taught or suggested that an electronic introduction is pushed to a recipient
platform prior to a request by a recipient.” Id.
In response to this argument, the Examiner finds that “Wilkins shows
that a determination is made if approval is required before the contact
registry disseminates User A’s contact information.” Ans. 13. Based on this
finding, the Examiner concludes that it would have been obvious “that
information would just be given to the recipient without any formal request
for approval if the setting was to allow third parties access (see paragraph
42).” Id.
While the Examiner’s finding and the conclusion he draws based on
the finding are correct, they do not address the argument raised by
Appellants. The Examiner has not identified, nor do we discern, where
Wilkins discloses the required recipient platform. As persuasively argued by
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Appellants supra, the contact registry does not meet this limitation because
the electronic introduction is not pushed to it “prior to a request by a
recipient” as required by claim 18.
For these reasons, we do not sustain the Examiner’s rejection of claim
18.
Claim 21:
Appellants argue that Fitzpatrick fails to teach or suggest “‘displaying
a visual indication of a proportion of data being hidden as a result of a
given scope setting.’ (Claim 21).” App. Br. 21.
In response to this argument, the Examiner finds that “Fitzpatrick
shows that some search results can be hidden by adding a search depth, and
the hidden ones are not displayed among the results (see paragraph 28).”
Ans. 13.
Although, the Examiner’s finding is correct, it does not address the
argument raised by Appellants. The Examiner has not identified, nor do we
discern, where Fitzpatrick describes “displaying a visual indication of a
proportion of data being hidden.
Accordingly, we do not sustain the Examiner’s rejection of claim 21.
Claim 25:
Regarding claim 25, Appellants argue that Fitzpatrick fails to disclose
“any type of tailoring of content and search scope of an electronic
introduction according to the content of a collaborative exchange between
said sender and said recipient.” App. Br. 21-22.
In response to this argument, the Examiner finds that “Fitzpatrick
shows that participants can control the amount of content that can be
searched for.” Ans. 13. The Examiner determines that “an initiation of
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communication between two parties qualifies as collaboration (see
paragraph 21).” Id.
While the Examiner’s finding is correct and the determination based
thereon is reasonable, the Examiner’s response does not address the
argument raised by Appellants. The Examiner has not identified, nor do we
discern, where Fitzpatrick describes “tailoring content and search scope of
said adaptive electronic introduction according to content of a collaborative
exchange between said sender and said recipient” as required by claim 25.
Accordingly, we do not sustain the Examiner’s rejection of claim 25.
Claim 26:
Regarding claim 26, the Examiner finds, inter alia, that “Fitzpatrick
discloses that a server performs a generic search for said information about
both sender and recipient and a client side gathers additional information
based on preferences of said recipient (see paragraph 23).” Ans. 6.
Appellants argue that “[n]owhere in paragraph 0023 of Fitzpatrick is
there any teaching or suggestion of ‘a client side’ which ‘gathers additional
information based on preferences of said recipient.’ (Claim 26).” App. Br.
22.
In response to this argument, the Examiner finds that “[a] client side is
considered the recipients computer that takes in the preferences before doing
a search. Any information [is] believe[d] to qualify as ‘additional
information’.” Ans. 13.
Given the breadth of the claim terminology “client side” (which
encompasses both the sender and the recipient) and “additional information”
(which reasonably includes any information that is gathered); and, given that
Appellants have not explained why Fitzpatrick does not describe these
limitations, we do not find Appellants’ argument to be persuasive.
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For these reasons, we sustain the Examiner’s rejection of claim 26.
Rejections based on Wilkins, Fitzpatrick, and Gelormine
Claims 4, 16, 23, and 24
Claim 4:
Regarding claim 4, the Examiner finds that Gelormine “discloses
automatically updating said electronic introduction being triggered by a next
interaction between said sender and recipient (see paragraph 46, where a
next interaction i.e. future date will update the history that the sender and
recipient have).” Ans. 6.
Appellants argue that “Paragraph 0046 of Gelormine does not appear
to be relevant to claim 4.” App. Br. 24. Appellants note that they have
“previously requested that the Examiner provide clarification about this
rejection, but the Examiner has not responded” and that “it appears that
paragraph 0046 of Gelormine may have been cited in error.” Id.
We agree. Paragraph [0046] describes screening for an event.
Accordingly, we do not sustain the Examiner’s rejection of claim 4.
Claims 16 and 23:
Appellants argue that Gelormine fails to disclose or suggest “that a
‘listing of past events which both said sender and said recipient participated’
are communicated in an electronic introduction” as required by claim 16.
App. Br. 25.
Appellants’ argument is not responsive to the argument as articulated
by the Examiner. Wilkins, not Gelormine, is relied upon to meet the
electronic introduction limitations. Appellants have not explained why the
combined teachings of Wilkins, Fitzpatrick, and Gelormine do not render the
limitation at issue obvious. Accordingly, Appellants’ argument is not
persuasive.
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For these reasons, we sustain the Examiner’s rejection of claim 16,
and claim 23 which depends therefrom and was not argued separately.
Claim 24:
Claim 24 depends from claim 1 and is rejected based on the combined
teachings of Wilkins, Fitzpatrick, and Gelormine. Appellants did not
provide separate arguments for the patentability of claim 24.
Accordingly, we sustain the Examiner’s rejection of claim 24.

Rejections based on Wilkins, Fitzpatrick, and Gaedcke
Claims 10 and 11
Claims 10 and 11:
Appellants argue that “nowhere in paragraph 0063 is any type of
searching of a social network performed to discover information relevant to
or included in any type of electronic introduction.” App. Br. 26.
Appellants’ argument is not responsive to the rejection as articulated
by the Examiner. While the rejection relies upon Gaedcke to teach
searching a social network, it relies upon Wilkins’ disclosure for including
the information found in this search in the electronic introduction.
Appellants have not explained why the combined teachings of Wilkins,
Fitzpatrick, and Gaedcke do not render claims 10 and 11 obvious.
Accordingly, Appellants’ argument is not persuasive.
For this reason, we sustain the Examiner’s rejection of claims 10 and
11.
Rejections based on Fitzpatrick and Gelormine
Claim 20
Regarding claim 20, the Examiner finds, inter alia, that Gelormine
teaches:
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creating a temporal adaptation of said electronic introduction,
content of said temporal adaptation being at least partially
controlled according to an amount of time which elapsed
between a preceding electronic communication between said
sender and said recipient and a current electronic
communication between said sender and said recipient (see
paragraph 39 and 40).
Ans. 9.
Appellants argue that “Gelormine does not teach or suggest that
‘elapsed time’ between preceding and current electronic communications
has any effect whatsoever. Gelormine does not even discuss elapsed time as
a factor to be considered.” App. Br. 28.
In response to this argument, the Examiner finds that “[t]he recording
of history and events [as taught by Gelormine] inherently discloses a time
line of events. This timeline of events controls the possibility of two people
meeting again during the current event.” Ans. 15.
The Examiner’s response does not address the argument raised by
Appellants. The Examiner does not identify, nor do we discern, where
Gelormine describes creating a temporal adaptation of the electronic
introduction wherein the content of the temporal adaptation is at least
partially controlled by the time that has elapsed between electronic
communications.
Accordingly, we do not sustain the Examiner’s rejection of claim 20.

DECISION
The Examiner’s rejection of claim 19 under 35 U.S.C. § 101 is
AFFIRMED.
The Examiner’s rejection of claims 1, 7, 9-11, 13, 14, 16, 19, 22-24,
and 26 under 35 U.S.C. § 103(a) is AFFIRMED.
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The Examiner’s rejection of claims 4, 5, 12, 18, 20, 21, and 25 under
35 U.S.C. § 103(a) is REVERSED.

AFFIRMED-IN-PART

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