Ex Parte Roth et al

Patent Trial and Appeal Board

Sep 26, 2017

13741909 (P.T.A.B. Sep. 26, 2017)

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.
13/741,909 01/15/2013 Eyal Roth 83096096 1701
56436 7590 09/28/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
PEREZ-ARROYO, RAQUEL
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EYAL ROTH, OLGA TUBMAN, and BORIS
KORENFELD
Appeal 2017-005722
Application 13/741,9091
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, 5—9, and 12—24. Appellants have previously
canceled claims 3, 4, 10, and 11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Hewlett Packard
Enterprise Development LP. App. Br. 1.
Appeal 2017-005722
Application 13/741,909
STATEMENT OF THE CASE2
The Invention
Appellants' claimed invention relates to file-based social
recommendations in a social network. Spec., Title.
Exemplary Claims
Claims 1,14, and 21, reproduced below, are representative of the
subject matter on appeal (emphasis and/or labeling added to contested
limitations):
1. A system for file-based social recommendations,
the system comprising:
a processor to:
determine a file type of the given file; and
select a compact representation scheme based on the file
type, wherein the compact representation scheme includes at
least one of a minhash-based signature scheme, a locality
sensitive hashing scheme, and a vector-based word scheme;
use the compact representation scheme to generate a
compact representation for the given file;
[LI] search a social network to identify a plurality of
uploaded files that are similar to a given file from a user based
on the compact representation, wherein each of the plurality of
uploaded files is associated with a respective social context that
is different from a social context associated with the given file
and has a respective compact representation that shares at least
one feature with the compact representation of the given file;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Aug
8, 2016); Examiner's Answer ("Ans.," mailed Oct. 20, 2016); Final Office
Action ("Final Act.," mailed Mar. 4, 2016); and the original Specification
("Spec.," filed Jan. 15, 2013).
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[L2] identify a plurality of unconnected users that each
uploaded at least one of the plurality of uploaded files to the
social network, wherein each of the plurality of unconnected
users is not connected to the user in the social network; and
[L3] in response to identifying the plurality of
unconnected users, communicate a user recommendation that at
least one of the plurality of unconnected users be added to the
social context.
14. The machine-readable storage medium of claim
13, further comprising instructions for:
receiving a context recommendation that the user join a
second social context associated with one of the plurality of
uploaded files; and
in response to receiving confirmation of the context
recommendation, displaying the second social context including
the user.
21. The machine-readable storage medium of claim
13, wherein the social network is restricted to an enterprise
local area network.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Marvit et al. ("Marvif')
Ruiz-Velasco
Caldwell et al. ("Caldwell")
Mungi
York et al. ("York")
Efstathopoulos
US 2009/0094233
US 2012/0005245
US 2013/0007009
US 2013/0218854
US 2013/0275429
US 8,898,120 B1
Al Apr. 9,2009
Al Jan. 5,2012
Al Jan. 3,2013
Al Aug. 22,2013
Al Oct. 17, 2013
Nov. 25, 2014
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Rejections on Appeal
Rl. Claims 1, 5—7, 13—15, 18, and 19 stand rejected under 35
U.S.C. § 103(a) as obvious over the combination of York, Ruiz-Velasco, and
Efstathopoulos. Final Act. 3.
R2. Claims 2, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of York, Ruiz-Velasco, Efstathopoulos, and
Mungi. Id. at 16.
R3. Claims 8, 9, 12, and 20-24 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of York, Ruiz-Velasco,
Efstathopoulos and Caldwell. Id. at 20.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 7—14), we decide the
appeal of Rejection Rl of claims 1, 5—7, 13, 15, 18, and 19 on the basis of
independent claim 1. We address the appeal of Rejection Rl of separately
argued dependent claim 14, and Rejection R3 of separately argued
dependent claim 21, infra. We address remaining claims 2, 8, 9, 12, 16, 17,
20, and 22—24 in rejections R2 and R3, not argued separately, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1,14,
and 21 and, unless otherwise indicated, we incorporate herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
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from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. However, we
highlight and address specific findings and arguments for emphasis as
follows.
1. Rejection R1 of Claims E 5—7, 13, 15, 18, and 19
Issue 1
Appellants argue (App. Br. 7—14) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of York,
Ruiz-Velasco, and Efstathopoulos is in error. These contentions present us
with the following issues:
a) Did the Examiner err in finding the cited prior art combination
teaches or suggests limitations LI through L3, as recited in claim 1?
b) Did the Examiner err in combining the cited prior art to reject
claim 1 under § 103 because, purportedly, the Examiner's rejection "failed to
satisfy the burden set forth in KSR"?
Analysis
(a)
Limitation LI
Appellants contend:
[T]he cited material is silent regarding identifying a plurality of
uploaded files that are each associated with a respective social
context that is different from a social context associated with
the given file. Rather, at best, the cited material merely
describes that a user can receive recommendations regarding
"related content objects" of different types, but clearly fails to
disclose that each of the recommended objects is associated
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with a social context that is different from the social context
associated with the given file.
App. Br. 9—10 (emphasis omitted).
The Examiner, citing to York, paragraphs 52 and 89 in the first
instance, finds York's determination of other content or people teaches or at
least suggests the disputed limitation "different from a social context
associated with the given file," as recited in claim 1. Ans. 2. We agree with
the Examiner's finding because the scope of the claim term "different"
covers other. The plain language of the claim does not preclude "different
from the social context associated with the given file" as argued. We agree
with the Examiner's expanded findings and legal conclusion as set forth on
page 2 of the Answer, which we incorporate herein and adopt as our own.
We note Appellants did not file a Reply Brief to rebut the Examiner's
findings, explanations and clarifications in support of the legal conclusion of
obviousness in the Examiner's Answer.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on York to teach or suggest
contested limitation LI.
Limitation L2
Appellants contend York's network graph "appears to include users
that have not uploaded any files at all, and thus clearly does not identify a
plurality of unconnected users that each uploaded at least one of the plurality
of uploaded files to the social network." App. Br. 11. Appellants further
contend "York says nothing whatsoever regarding each user shown in the
"network graph" being unconnected to the user in the social network." Id.
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We agree with the Examiner's finding that York's teaching of
identification of other people and content to be provided as
recommendations to the user, and teaching non-social relationships between
users and documents teaches or at least suggests "a plurality of unconnected
users that each uploaded at least one of the plurality of uploaded files to the
social network, wherein each of the plurality of unconnected users is not
connected to the user in the social network," as recited in claim 1. Ans. 2—3,
citing York, || 89, 113, Fig. 3.
We agree with the Examiner because York's expansion of the user's
social network database by contacting users that may be helpful to the user
teaches or at least suggests disputed limitation L2. York, | 89. York's
dynamic creation of a network graph encompasses "not only social
relationships between people, but also a much broader range of relationships
between objects" further teaches or at least suggests disputed limitation L2,
i.e., identify a plurality of unconnected users that each uploaded at least one
of the plurality of uploaded files to the social network, wherein each of the
plurality of unconnected users is not connected to the user in the social
network. York, 1113, Fig. 6.
We again note Appellants have not filed a Reply Brief to rebut the
Examiner's findings, explanations, and clarifications in support of the legal
conclusion of obviousness in the Examiner's Answer.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on York to teach or suggest
contested limitation L2.
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Limitation L3
Appellants contend "York reveals that they are silent regarding adding
any unconnected users to the social context associated with the given file."
App. Br. 12 (emphasis omitted).
The Examiner finds York's displaying of recommended unconnected
users associated with the document of the user, teaches or at least suggests
disputed limitation L3. Ans. 3, citing York, Fig. 15, H 11, 90.
We agree with the Examiner's unrebutted finding because York's user
being presented with recommendations from other users teaches or at least
suggests "in response to identifying the plurality of unconnected users,
communicate a user recommendation that at least one of the plurality of
unconnected users be added to the social context." York, Fig. 190.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on York to teach or suggest
contested limitation L3.
(b)
Appellants argue "Appellants] respectfully submit[] that the provided
rationales for the proposed combinations of references are insufficient to
establish a prima facie case of obviousness." App. Br. 13. Appellants
further argue "[T]he provided rationales failed to satisfy the burden set forth
in KSR." Id. at 14 (emphasis omitted).
In KSR, the Court stated "[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
416(2007).
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill .... [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417. Further, the relevant inquiry is whether the Examiner has set
forth "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
The Examiner finds:
[I]t would have been obvious to one of ordinary skill in the art
at the time the invention was made, to combine the teachings of
the cited references, and modify the file-based recommendation
system as taught by York as modified by Ruiz-Velasco, to
incorporate the selection of a compact representation scheme
based on the file type where the representation scheme includes
at least one of a minhash-based signature scheme, a locality
sensitive hashing scheme, and a vector-based word scheme as
taught by Efstathopoulos [Column 7], since the inventions
perform a comparison of files and document elements to
generate representations for the documents, which will enable
the identification of documents in a more efficient and accurate
manner.
Final Act. 7 (emphasis added). The Examiner further explains his reasoning
and concludes:
[A] person of ordinary skill in the art would be motivated to
perform the combination, since this will enable the
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identification of documents in a more efficient and accurate
manner, because the comparison of documents can be
performed by comparing the compact representations, and not
having to compare the whole documents. And more
specifically, identifying documents based on a compact
representation like a locality sensitive hashing scheme,
increases accuracy, since the hash provides a more specific
representation for each document. Moreover, the inventions are
in the same field of endeavor.
Ans. 4—5.
We note our reviewing court has affirmed that efficiency results in a
more desirable product:
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the 'improvement' is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient
... In such situations, the proper question is whether the
ordinary artisan possesses knowledge and skills rendering him
capable of combining the prior art references.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006); see also KSR, 550 U.S. at 421 (citing
DyStar with approval).
We find the Examiner's findings of motivation meet the articulated
reasoning and rational underpinning requirements of KSR, cited above.
Moreover, Appellants have presented no evidence that combining these cited
references was "uniquely challenging or difficult for one of ordinary skill in
the art" or "represented an unobvious step over the prior art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418-19). Nor have Appellants provided objective
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evidence of secondary considerations which our reviewing court guides
"operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak
Cheese and Powder Sys., Inc. 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection R1 of independent claim 1, and grouped
claims 5—7, 13, 15, 18, and 19 which fall therewith. See Claim Grouping,
supra.
2. Rejection R1 of Claim 14
Issue 2
Appellants argue (App. Br. 14—15) the Examiner's rejection of
claim 14 under 35 U.S.C. § 103(a) as being obvious over the combination of
York, Ruiz-Velasco, and Efstathopoulos is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[t]he machine-readable storage medium of claim 13" that
includes, inter alia, instructions executable by a processor for "in response
to receiving confirmation of the context recommendation, displaying the
second social context including the user," as recited in claim 14?
Analysis
Appellants contend "the cited portions of York are silent regarding
displaying a second social context that includes the user. Rather, at best, the
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cited material merely describes that, when a user clicks on an icon for an
object, the object is opened. However, the cited material (as well as York as
a whole) says nothing about displaying the user himself." App. Br. 14—15
(emphasis omitted).
The Examiner finds York's user's selection of an icon associated with
the user recommendation displays the context to the user teaches or at least
suggests the disputed limitation. Ans. 5, citing York, 1124. We agree with
and adopt as our own the Examiner's unrebutted findings in connection with
claim 14. Arguments not made are waived.
Furthermore, as a matter of claim construction, we note the recitation
of "displaying the second social context including the user" in claim 14
represents data that is not recited as imparting functionality to a storage
medium within the broad scope of claim 14.
Appellants' arguments urging patentability, cited supra, are predicated
on non-functional descriptive material (i.e., the content of a display screen
intended for human viewing).3 App. Br. 14—15. Non-functional descriptive
material is not accorded patentable weight.4 Specifically, the contested
limitation "displaying the second social context including the user" is merely
3 See MPEP § 2111.05, 9th ed., Mar. 2014 ("where the claim as a whole is
directed 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.").
4 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003,
affd, Rule 36 (June 12, 2006)); Ex parte Mathias, 191 Fed. Appx. 959 (Fed.
Cir. 2006).
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data to be displayed which is intended for human perception and which does
not affect the structure of the claimed storage medium; therefore, the
disputed limitation is non-functional descriptive material per se.
Thus, non-functional descriptive material does not confer patentability
to inventions that are otherwise either anticipated or obvious over the prior
art. We find the recitation in limitation of "displaying the second social
context including the user" is directed to nonfunctional descriptive material
that does not further limit claim 14.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 14.
3. Rejection R3 of Claim 21
Issue 3
Appellants argue (App. Br. 16—17) the Examiner's rejection of
claim 21 under 35 U.S.C. § 103(a) as being obvious over the combination of
York, Ruiz-Velasco, Efstathopoulos, and Caldwell is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[t]he machine-readable storage medium of claim 13, wherein
the social network is restricted to an enterprise local area network," as
recited in claim 21?
Analysis
Appellants contend "the cited portions of Caldwell say nothing
regarding restricting a social network to an enterprise local area network. In
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fact, the cited portions appear to be entirely silent regarding either a 'social
network' or an 'enterprise local area network,' much less that a social
network is restricted to an enterprise local area network." App. Br. 17
(emphasis omitted).
The Examiner finds Caldwell's invention, being directed to users of an
enterprise social network, teaches or suggests the disputed limitation
"enterprise local area network," as recited in claim 21. Ans. 5, citing
Caldwell ]Hf 1—3. The Examiner further finds Caldwell's user signing into a
corporate intranet teaches or at least suggests the recited "enterprise local
area network." Id., citing Caldwell 138.
We agree with the Examiner’s broad but reasonable interpretation that
the scope of the claim term "enterprise local area network" covers Caldwell's
corporate intranet. Caldwell 138. Accordingly, we find the Examiner's
unrebutted interpretation is not overly broad, unreasonable, or inconsistent
with Appellants' Specification.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection R3 of claim 21.
4. Rejections R2 and R3 of Claims 2, 8, 9, 12, 16, 17, 20, and 22—24
In view of the lack of substantive and/or separate arguments directed
to obviousness Rejections R2 and R3 of claims 2, 8, 9, 12, 16, 17, 20, and
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22—24 under § 103 (see App. Br. 15—16), we sustain the Examiner's rejection
of these claims. Arguments not made are waived.5
To the extent Appellants present separate arguments regarding
independent claim 9 (App. Br. 17—18), we find these arguments are
unpersuasive for the same reasons as those presented and discussed
regarding claim 1, Issue 1, above.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
through R3 of claims 1,2, 5—9, and 12—24 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 5—9,
and 12-24.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
5 In connection with various dependent claims, Appellants merely argue,
"York, Ruiz-Velasco, and Efstathopoulos fail to establish a prima facie case
of obviousness for independent claims 1 and 13." App. Br. 15, 16.
15