Ex Parte Pan

Patent Trial and Appeal Board

Feb 8, 2018

12739735 (P.T.A.B. Feb. 8, 2018)

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.
12/739,735 04/24/2010 S. Sejo Pan IPRW101076 2463
68766 7590
IPR WORKS, LLC
14 Cardinal Road
Holmdel, NJ 07733
EXAMINER
HUR, ECE
ART UNIT PAPER NUMBER
MAIL DATE DELIVERY MODE
02/08/2018 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 S. SEJO PAN
Appeal 2016-000678
Application 12/739,735
Technology Center 2100
Before JEFFREY S. SMITH, BRUCE R. WINSOR, and
MICHAEL J. ENGLE, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 14, 28, and 39-55, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 2—13,
15—27, and 29—38 are cancelled. Br. 2.
We affirm-in-part.
1 According to Appellant, the real party in interest is the inventor and
applicant S. Sejo Pan. Br. 2.
Appeal 2016-000678
Application 12/739,735
STATEMENT OF THE CASE
The Invention
Appellant’s disclosed invention “relates generally to connecting
people socially. In particular,. . . [the] invention relate [s] to . . .
subsequently connecting people who have already crossed paths.” Spec. 12.
Claim 1, which is illustrative, reads as follows:2
1. In a computer system with data storage, a method for
facilitating a mobile communications device user to
identify or connect, as a first step towards developing [a]
possible subsequent relationship, with one or more other
users encountered in proximity in a social environment
where users desire to interact with one another, the
method comprising:
obtaining an encounter inquiry from each user, wherein
the encounter inquiry from a particular user represents an
inquiry about other encountered users that are either
overlapped or neighboring in spacetime with said
particular user, said encounter inquiry comprises:
(1) a profile of said particular user, wherein said
profile comprises descriptive information of and
supplied by said particular user or an identifier
based on which said descriptive information can be
separately retrieved such that said particular user
can be identified through said profile by other
encountered users; [and]
(2) encounter information comprising at least one of
the following:
2 We note that various words appear to be missing from claim 1. We have
inserted additional words for clarity based on our understanding of the
intended meaning of the claim. In the event of further prosecution, the
Examiner and Appellant may wish to review all of the claims for
grammatical and syntactical clarity and completeness.
2
Appeal 2016-000678
Application 12/739,735
(a) a geographical description of the location of
the encounter;
(b) an ID uniquely associated with another user
in the encounter, said ID wirelessly obtained
by said particular user’s mobile device
scanning said another user’s mobile device;
[or]
(c) an ID uniquely associated with a wireless
device in the proximity that can serve as a
location reference of the encounter;
using the encounter information from said encounter
inquiry of said particular user,
calculating and displaying a discovery result to said
particular user, said discovery result comprising the
profiles of other encountered users; [and]
receiving a connection request from a first user deeming
to connect to a second user with [a] profile chosen by the
first user from among the discovery result displayed to
the first user.
The References
The Examiner relies on the following prior art in rejecting the claims
Altman et al. US 2007/0282621 Al Dec. 6, 2007
Crowley et al. US 2006/0270419 Al Nov. 30, 2006
Sloo US 7,379,879 B1 May 27, 2008
Camp et al. US 2008/0238661 Al Oct. 2, 2008
3
Appeal 2016-000678
Application 12/739,735
The Rejections
Claims 1, 14, 28, 39-42, 44-46, 48—50, and 52—54 stand rejected
under 35 U.S.C. § 103(a)3 as being unpatentable over of Altman, Sloo, and
Camp. See Final Act. 7—17.
Claims 43, 47, 51, and 55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over of Altman, Sloo, Camp, and Crowley. See Final
Act. 17-19.
The Record
Rather than repeat the arguments here, we refer to the Appeal Brief
(“Br.” filed Feb. 10, 2015) for the positions of Appellant; the Final Office
Action (“Final Act.” mailed Sept. 18, 2014) and the Examiner’s Answer
(“Ans.” mailed July 28, 2015) for the reasoning, findings, and conclusions of
the Examiner; and the Specification (“Spec.” filed Apr. 24, 2010, as
amended Feb. 13, 2013). We review the appealed rejections for error based
upon the issues identified by Appellant, and in light of the arguments and
evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential). Only those arguments actually made by Appellant
have been considered in this decision. Arguments that Appellant did not
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUES
The pivotal issues presented by Appellant’s arguments are as follows:
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011 (“pre-AIA”).
Final Act. 2.
4
Appeal 2016-000678
Application 12/739,735
Does the Examiner err in finding the combination of Altman, Sloo,
and Camp teaches or suggests a “discovery result” calculated using an
“encounter inquiry,” as recited in claim 1?
Does the Examiner err in finding the combination of Altman, Sloo,
and Camp teaches or suggests “said [wireless mobile device (WMD)]
blocking connection requests from all users relayed by the encounter
matching system from reaching the user of said WMD except from a user
with whom the user of said WMD is also trying to connect,” as recited in
claim 40?
Does the Examiner err in finding the combination of Altman, Sloo,
and Camp teaches or suggests “said WMD receiving connection requests
from other users relayed by the encounter matching system and notifying its
user of a certain connection request from a certain other user only when its
user has made the connection request indicating a desire to connect to said
certain other user,” as recited in claim 41?
Does the Examiner err in finding the combination of Altman, Sloo,
and Camp teaches or suggests
said WMD allowing its user to set or store a self-intention
indicator locally in the WMD; [and] said WMD receiving
connection requests from other users relayed by the encounter
matching system and notifying its user a certain connection
request from a certain other user only if the received
connection-intention indicator from said certain other user and
the self-intention indicator of its own user jointly satisfy a
predetermined condition,
as recited in claim 42?
Does the Examiner err in finding the combination of Altman, Sloo,
Camp, and Crowley teaches or suggests “allowing the user of said WMD to
send a verification question to and receive an answer thereof from said
5
Appeal 2016-000678
Application 12/739,735
second user directly or through the encounter matching system to resolve
ambiguities in either the profile or the encounter information of the second
user,” as recited in claim 43?
ANALYSIS
Claim 1
We have reviewed Appellant’s arguments and contentions (Br. 8—24)
in light of the Examiner’s findings and conclusions (Final Act. 7—12), and
further explanations (Final Act. 3—6; Ans. 2—5) regarding claim 1. Frye,
94 USPQ2d at 1075. We agree with the Examiner’s findings, conclusions,
and explanations as they pertain to the Examiner’s reliance on Altman and
Sloo for claim 1. As explained below, we do not reach Appellant’s
arguments and contentions regarding the Examiner’s reliance on Camp and
do not rely on Camp in this opinion. Except as set forth below, we adopt as
our own the Examiner’s findings and conclusion regarding the application of
Altman and Sloo to the rejection of claim 1. The following discussion,
findings, and conclusions are for emphasis.
The Encounter Limitation4
Although Appellant argues various limitations of claim 1, the
gravamen of the arguments is that the combination of Altman and Sloo does
4 Appellant describes the conduct of prosecution of the subject Application.
Br. 12. Section 134(a) of 35 U.S.C., which provides the right of appeal in
patent prosecution, refers only to the appeal of decisions to reject claims
and, accordingly, restricts the jurisdiction of the Board to considering the
propriety of such “rejections.” To the extent Appellant contends there was
error in the conduct of prosecution, such arguments, not relating to the
substance of the rejection itself, are reviewable by petition to the Director of
the U.S. Patent and Trademark Office, or as delegated by the Director. See
6
Appeal 2016-000678
Application 12/739,735
not teach or suggest “identify[ing] or connecting], as a first step towards
developing [a] possible subsequent relationship, with one or more other
users encountered in proximity in a social environment,” as recited in the
preamble of claim 1. See generally Br. 8—24. More particularly, Appellants
argue that the combination of Altman and Sloo does not teach or suggest a
“discovery result” calculated using an “encounter inquiry,” as recited in
claim 1. For the reasons stated below, we are not persuaded of error.
The Examiner relies on Altman to teach all of the limitations of
claim 1, except for the “scanning” aspect of encounter information
alternative element (b), as discussed below, and except for an “encounter.”
Final Act. 7—11 (citing Altman, Abstract, || 6, 9, 36, 39, 44-45, 47, 85, 89,
92—94, Figs. 2A, 11). The Examiner relies on Sloo to teach or suggest
applying Altman’s teaching to an encounter. Final Act. 11 (citing Sloo, col.
3,1. 65—col. 4,1. 5). The Examiner concludes “[i]t would [have been]
obvious to one of ordinary skill in the art at the time of the invention to add
this feature of crossed paths in person to Altman because this would allow to
identify a person after seeing in person based on description as illustrated in
Sloo.” Id.
We note initially, “the name of the game is the claim.” In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citing Giles Sutherland Rich,
Extent of Protection and Interpretation of Claims—American Perspectives,
21 Int’l Rev. Indus. Prop. & Copyright L. 497,499 (1990)). We give
37 C.F.R. § 1.181 et seq.; see also Manual of Patent Examining
Procedure (MPEP) § 1201 (“The Board will not ordinarily hear a question
that should be decided by the Director on petition . . . .”).
7
Appeal 2016-000678
Application 12/739,735
claims “an interpretation that corresponds with what and how the inventor
describes his invention in the specification, i.e., an interpretation that is
‘consistent with the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375,
1382—83 (Fed. Cir. 2017) (quoting In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997)). That said, however, we do not import un-recited limitations
from the specification into the claims. See In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
We further note that claim 1 uses the transition term “comprising” and
is presumptively open-ended. “‘Comprising’ is a term of art used in claim
language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997). “The word ‘comprising’ transitioning from the preamble to the body
signals that the entire claim is presumptively open-ended.” Gillette Co. v.
Energizer Holdings Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005); see also
MPEP § 2111.03 (8th ed. 2001, rev. 2012). In other words, the recitation of
limitations, steps, or functions in claim 1 does not prevent the claim from
reading on methods that perform additional steps or functions or that have
additional limitations.
Appellant argues that “[t]he ‘matching’ mechanism in Altman is
completely different from [cjlaim 1.” Br. 9. However, Appellant’s
arguments focus on features and advantages described in the Specification
and not actually recited in the claim. For example, claim 1 recites “a profile
of [a] particular user, wherein said profile comprises descriptive information
of and supplied by said particular user.” Such a recitation does not limit the
scope of the descriptive information to “minimum, anonymous, or encounter
8
Appeal 2016-000678
Application 12/739,735
dependent” (Br. 9) or “dynamic and per-encounter” (Br. 10 (emphasis
omitted)) descriptive information. See also Ans. 2. We agree with the
Examiner that Altman teaches “a profile of [a] particular user” as recited in
claim 1. Final Act. 8 (citing Altman Abstract); see also Altman, 11 6, 34,
Figs. 14—16. Furthermore, we agree with the Examiner that Altman teaches
matching based on, at least in part, “users that are either overlapped or
neighboring in spacetime with said particular user,” as recited in claim 1.
Final Act. 8 (citing Altman, Abstract, 1139, 93—94, Fig. 2A). We note that
nothing in claim 1 precludes using additional criteria, such as “detailed
personal data and dating preferences” (Br. 9, 17), to establish the matches,
nor does claim 1 require returning “a list of profiles of all other encountered
users such that, users may recognize who-is-who, and subsequently do the
match-making themselves” (Br. 9, 17—19). Nor does claim 1 preclude using
a database of people to determine matches with encountered users (Br. 13).
Rather, claim 1 merely recites returning a “discovery result comprising the
profiles of other encountered users.”
As acknowledged by the Examiner, the difference between Altman’s
method and claim 1 is that Altman does not teach that the spacetime defining
the degree to which users overlap or neighbor one another is small enough to
constitute an “encounter.” See Final Act. 11. The Specification defines an
“encounter” as follows:
Encounter: An encounter means two or more people
having correlated events, that is, events that are either
overlapped or neighboring in spacetime. When two users
encounter one another, their events correlate, and they are
essentially at the same place at the same time, at least, after
considering the resolution of space and time of the event
information and general human eye sight range, it’s possible
9
Appeal 2016-000678
Application 12/739,735
they could see each other. A threshold, or a set of thresholds
can be used for determining if two time descriptions, or two
location descriptions, or any combination of the dimensions in
the events are correlated.
Spec. 111. In general, then, Appellant defines an “encounter” as a
correlation in spacetime such that the users are close enough in time and
space that they could potentially see each other, whereas Altman looks at a
larger physical area such that the users may or may not have the potential of
seeing each other. See, e.g., Altman Fig. 2A. This, however, is a difference
of degree of spacetime correlation, rather than the functionality of the steps
performed. Altman teaches that a user can specify a radius for notifications
of identified users. Altman | 62.
The Examiner relies on Sloo to teach that it would be obvious to
search for matches for people close enough in time and space to be seen, i.e.,
“encountered,” such as to make Altman’s radius small and to define an
encounter location by an address. See Final Act. 11. Appellant contends
“Sloo requires a user to describe a target person, but Claim 1 requires a user
to describe himself.” Br. 15. However, the Examiner relies on Altman, not
Sloo, to teach a profile of a user entered by the user. See Final Act. 8.
Appellant contends that the Examiner has improperly combined Sloo
with Altman. We disagree.
In an obviousness analysis,
[t]wo separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
10
Appeal 2016-000678
Application 12/739,735
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphases added)
(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Altman is
analogous art in Appellant’s field of endeavor, i.e., “connecting people
socially” (Spec. 12) based on location information (id. (“crossed paths”))
using computer technology. See Altman 12 (“[T]he invention relate[s]
... to an online dating system that uses the relative location information for
users.”). Although in a different field of endeavor, Sloo is reasonably
pertinent to Appellant’s problem of identifying people with whom a user has
“crossed paths,” and is, therefore, also analogous art that “logically would
have commended itself to an inventor’s attention.” Klein, 647 F.3d at 1348
(quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)); see also Ans. 3.
The Examiner concludes “[i]t would [have been] obvious to one of ordinary
skill in the art at the time of the invention to add this feature of crossed paths
in person to Altman because this would allow to identify a person after
seeing in person based on description as illustrated in Sloo.” Final Act. 11;
see also id. at 3; Ans. 4. In other words, the Examiner has relied on a
motivation to combine the references in reaching the conclusion of
obviousness. MPEP § 2143(1) (Exemplary Rationale (G)). We also note,
that the combination of Sloo with Altman articulated by the Examiner is no
more than the simple substitution of one known element (Sloo’s more
precise location) for another (Altman’s more general location) to obtain
predictable results. Id. (Exemplary Rationale (B)); see also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellant contends Altman teaches away from an in-person encounter
because Altman teaches using approximate locations to protect a user’s
privacy. App. Br. 15 (citing Altman H 81, 94, 95). Although Appellant is
11
Appeal 2016-000678
Application 12/739,735
correct that Altman teaches various features that allow the user to protect the
user’s privacy, Altman also teaches that “[t]he user can specify the
maximum distance within which matches can be found” (Altman | 92), and
teaches embodiments “in which absolute location security is not required”
{id. 195). Accordingly, we do not agree that Altman teaches away from an
in-person encounter.
For the foregoing reasons, we find no error in the Examiner’s finding
and conclusion that the combination of Altman with Sloo teaches or suggests
the encounter limitation of claim 1.
The Camp Reference
Claim 1 recites
encounter information comprising at least one of the following:
(a) a geographical description of the location of the encounter;
(b) an ID uniquely associated with another user in the
encounter, said ID wirelessly obtained by said particular user’s
mobile device scanning said another user’s mobile device; [or]
(c) an ID uniquely associated with a wireless device in the
proximity that can serve as a location reference of the encounter
(emphasis added). The Examiner relies on Camp, when combined with
Altman and Sloo, to teach scanning another user’s mobile device. Final Act.
11—12 (citing Camp | 8). Appellant contends the Examiner’s reliance on
Camp is error. See Br. 11, 13, 15—16.
Claim 1 recites that the encounter information comprises “at least one
of’ elements (a), (b), or (c). Therefore, elements (a), (b), and (c) are claimed
in the alternative. The Examiner’s findings regarding Camp apply only to
alternative element (b). As pointed out by the Examiner, it is only necessary
for the Examiner to demonstrate that the prior art teaches or suggests one of
the recited alternatives to support a conclusion of obviousness. See Ans. 4.
12
Appeal 2016-000678
Application 12/739,735
The Examiner finds, and we agree, that Altman, when combined with
Sloo, teaches “encounter information comprising . . .: (a) a geographical
description of the location of the encounter” (claim 1). See Final Act. 9
(citing Altman, Abstract, | 6. Fig. 2A); see also id. at 11 (citing Sloo col. 3,
1. 65—col. 4,1. 5). We note that Altman’s teaching of a settable radius for
identifying other users around a user’s location, when combined with Sloo’s
suggestion that the radius could be small enough to permit the user to see
identified other users, and with Sloo’s teaching of an address of an encounter
(see Sloo, col. 3,11. 31—32 (“the exact or general location of the incident”)),
teaches “a geographical description of the location of the encounter” of
alternative element (a). Because we agree with the Examiner that the
combination of Altman and Sloo teaches or suggests alternative element (a),
it is unnecessary for us to consider whether the Examiner errs in mapping
alternative elements (b) and (c) to the prior art. Therefore, it is irrelevant to
this appeal whether the Examiner’s partial reliance on Camp to teach
alternative element (b) is in error. Accordingly, in considering the
Examiner’s rejection of claim 1, we do not rely on the teachings of Camp.5
Summary
For the foregoing reasons, we find no error in the Examiner’s
rejection of claim 1. Accordingly, we sustain the rejection of independent
claim 1 and independent claims 14, 28, and 39, which are argued together
with claim 1 (see Br. 24).
5 The fact that we rely on fewer than all of the references the Examiner
applied does not, in itself, warrant a new ground of rejection. In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Bush, 296 F.2d491, 496
(CCPA 1961)); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966).
13
Appeal 2016-000678
Application 12/739,735
Claims 40 and 41
Claim 40 recites that “said [wireless mobile device (WMD)] block[s]
connection requests from all users relayed by the encounter matching system
from reaching the user of said WMD except from a user with whom the user
of said WMD is also trying to connect.” Similarly, claim 41 recites “said
WMD receiving connection requests from other users relayed by the
encounter matching system and notifying its user of a certain connection
request from a certain other user only when its user has made the connection
request indicating a desire to connect to said certain other user.”
The Examiner finds that Altman teaches the limitations of claims 40
and 41 by displaying a “status flag . . . defined to allow the user to specify
[inter alia] whether he or she is busy or free to all or certain users.” Final
Act. 13 (citing Altman 144,6 Fig. 2A); accord Final Act. 14.
Appellant contends Altman’s status flags do not teach or suggest the
claimed feature which “assures only parties with mutual interest interact, and
a one-sided interest from a certain party will not be known to the other party.
These mechanism are completely absent in Altman.” Br. 25. We agree with
Appellant. Claims 40 recites blocking requests unless both parties have
initiated a request. Claim 41 recites only receiving requests if both parties
have initiated requests, e.g., blocking all others. Altman’s teaching of
setting a flag, although it may be indicative of interest, does not teach or
suggest actually blocking requests as claimed.
For the foregoing reasons, we find error in the Examiner’s rejection of
claims 40 and 41. Accordingly, we do not sustain the rejection of claims 40
6 The Examiner appears to have mistakenly cited paragraph 73 instead of the
intended paragraph 44. See Br. 25.
14
Appeal 2016-000678
Application 12/739,735
and 41 and claims 44, 45, 48, 49, 52, and 53, which are variously argued
together with claims 40 and 41 (see Br. 26—27).
Claim 42
Claim 42 recites that
said WMD allow[s] its user to set or store a self-intention
indicator locally in the WMD; [and] said WMD receiving
connection requests from other users relayed by the encounter
matching system and notifying its user a certain connection
request from a certain other user only if the received
connection-intention indicator from said certain other user and
the self-intention indicator of its own user jointly satisfy a
predetermined condition.
The Examiner finds Altman teaches the limitations added by claim 42 by
allowing a user to “set intention by specifying what they are looking for
‘Relationship, Friendship, Casual Dating’, and other intentions.” Final Act.
14—15 (citing Altman H 86, 91, 92). We agree with the Examiner that
Altman’s teaching of the users specifying “the type of relationship they are
seeking” (Altman | 87) teaches a “connection-intention indicator” (claim
42). The fact that the word “intention” may be missing from Altman (Br.
28) is of no significance. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990)
(explaining that the analysis of references “is not an ‘ipsissimis verbis’
test”).
Appellant contends “[e]ven if the ‘relationship, friendship, casual
dating’ concept brought up by Examiner are considered intentions, there is
no teaching in Altman for Claim 42’s unique mechanism of using two
different intention indicators with the originator-receiver roles taken into
account.” Br. 28. We disagree. Altman teaches that matches are returned
based on correlation of proximity and profile information (which includes
the type of relationship sought) between the user and prospective matches.
15
Appeal 2016-000678
Application 12/739,735
See, e.g., Altman 191. Thus, Altman teaches that matches, and, therefore,
subsequent connection requests to or from any specific individual chosen by
the user only occur if the originating and receiving users’ information
satisfies a predetermined condition with regard to the respective self­
intention indicators.
For the foregoing reasons, we find no error in the Examiner’s
rejection of claim 42. Accordingly, we sustain the rejection of claim 42 and
claims 46, 50, and 54, which are argued together with claim 42 (see Br. 29).
Claim 43
Claim 43 recites, “allowing the user of said WMD to send a
verification question to and receive an answer thereof from said second user
directly or through the encounter matching system to resolve ambiguities in
either the profile or the encounter information of the second user.” The
Examiner finds Altman teaches allowing a WMD user to communicate with
a matched encountered person, but does not explicitly teach using the
communication to send verification questions to resolve ambiguities. Final
Act. 17—18 (citing Altman, Abstract, || 6, 94, Figs. 2A). The Examiner
finds Crowley teaches a dating system in which verification questions are
used to resolve ambiguities. Final Act. 18 (citing Crowley, Abstract, || 64,
69).
Appellant contends Crowley in non-analogous art because “it aims to
solve completely different problems” than claim 43. Br. 29. However, the
Examiner’s stated reason for finding Crowley to be analogous art is that
Crowley, like claim 43, is directed to a dating system, and is in the same
field of endeavor as claim 43. See Final Act. 18. Appellant points out that
Crowley is a dating system for dating “among a group of acquaintances”
16
Appeal 2016-000678
Application 12/739,735
(Br. 31), but does not explain how this places Crowley in a different field of
endeavor from Appellant’s invention.
Appellant further argues that Altman, Sloo, and Crowley fail to teach
certain features that are not limitations found in the claim, e.g., “providing a
list of all encountered users indiscriminately to a certain user” (Br. 30
(emphases added)), “users can send messages to any encountered user” (id.
(emphasis added)), “part of the matching process” (Br. 31), and “verify who-
is-who” (id.). The Examiner argues that Altman only allows a message to be
sent after a match has been made. Br. 30. However, we find nothing in the
claim that requires that the verification message be sent before a match is
made. Indeed, implicit in Appellant’s argument is the initial making of a
spacetime correlation match. Nothing in the claim precludes the use of other
matching criteria before communication is allowed.
Finally, Appellant contends there is no motivation to combine
Crowley with Altman and Sloo. The Supreme Court instructs us is that an
obviousness “analysis should be made explicit” for the “more difficult”
cases where “the claimed subject matter may involve more than the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement.” KSR,
550 U.S. at 417—18. Here, Altman teaches the sending of messages in a
manner that meets every functional requirement of the claim. The only
missing elements are the subject matter of the messages, i.e., “verification
questions]. . . and . . . answer[s]... to resolve ambiguities in either the
profile or the encounter information.” We conclude it would be a simple
substitution of one known element (Crowley’s verification questions and
17
Appeal 2016-000678
Application 12/739,735
answer) for another (Altman’s communication between users) to obtain
predictable results. See Ans. 6—7.
For the foregoing reasons, we find no error in the Examiner’s
rejection of claim 43. Accordingly, we sustain the rejection of claim 43 and
claims 47, 51, and 55, which are argued together with claim 43 (see Br. 31).
DECISION
The decision of the Examiner to reject claims 1, 14, 28, 39, 42, 43, 46,
47, 50, 51, 54, and 55 is affirmed.
The decision of the Examiner to reject claims 40, 41, 44, 45, 48, 49,
52, and 53 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).
AFFIRMED-IN-PART
18