Ex Parte Sefton et al

Patent Trial and Appeal Board

Apr 25, 2017

13416258 (P.T.A.B. Apr. 25, 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.
13/416,258 03/09/2012 Steven Craig Sefton 0103085-0533994 1078
26874 7590 04/27/2017
FROST RROWN TODD T T C EXAMINER
3300 Great American Tower MERCADO, ARIEL
301 East Fourth Street
CINCINNATI, OH 45202 ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
patents @ fbtlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN CRAIG SEFTON, JEFFREY
JON JOHNSON, and GORDON SCOTT MINDRUM
Appeal 2016-007402
Application 13/416,258
Technology Center 2100
Before ROBERT E. NAPPI, CARL L. SILVERMAN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Making Everlasting
Memories, L.L.C. App. Br. 3.
Appeal 2016-007402
Application 13/416,258
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “gathering and
publishing information and content.” Spec. 3:9—10.2 The Specification
explains that a “publisher” is (1) “configured to receive a plurality of inputs
such as audio, imagery, text, responses to questionnaires, and the like,”
(2) “operable to access a registry having pre-existing information and
content,” and (3) “operable to automatically generate a biographical text
about a deceased friend or relative of the user, based on inputs and selections
provided by the user.” Abstract.
Exemplary Claims
Independent claims 1 and 20 exemplify the subject matter of the
claims under consideration and read as follows:
1. A method of producing a biographical writing, the
method comprising:
(a) initiating a profiler to pose one or more questions
to a user about a deceased person associated with the user;
(b) receiving one or more responses to the one or more
questions from the user, wherein the one or more responses are
about the deceased person associated with the user;
(c) selecting a plurality of template options to provide
to the user, wherein the act of selecting template options
comprises:
i. analyzing the one or more responses from
the user about the deceased person associated with the
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed March 9, 2012; “Final Act.” for the Final Office Action,
mailed January 28, 2015; “App. Br.” for the Appeal Brief, filed August 27,
2015; “Ans.” for the Examiner’s Answer, mailed May 26, 2016; and “Reply
Br.” for the Reply Brief, filed July 25, 2016.
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user to determine one or more personality traits of the
deceased person associated with the user, and
ii. comparing the one or more personality traits
of the deceased person associated with the user to one or
more template options;
(d) providing the plurality of template options to the
user;
(e) receiving a template selection from the user;
(f) requesting biographical information from the user,
wherein the requested biographical information relates to the
deceased person associated with the user, wherein the requested
biographical information is usable as content for an
automatically generated biography;
(g) receiving from the user the biographical
information relating to the deceased person associated with the
user; and
(h) automatically generating a biographical text using
the template selection from the user with the content of the
biographical information provided by the user relating to the
deceased person associated with the user.
20. A method comprising:
(a) accessing a registry, wherein the registry
comprises information relating to a plurality of subjects other
than a user;
(b) receiving inputs, wherein at least a portion of the
received inputs comprises information received from the
registry pertaining to a select one of the plurality of subjects
other than the user;
(c) initiating a profiler to pose questions to a user
about the select one of the plurality of subjects other than the
user;
(d) receiving responses to the questions from the user,
wherein the responses are about the select one of the plurality
of subjects other than the user;
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(e) selecting a plurality of template options to provide
to the user, wherein the act of selecting template options
comprises:
i. analyzing the responses from the user about
the select one of the plurality of subjects other than the
user to determine one or more personality traits of the
select one of the plurality of subjects other than the user,
and
ii. comparing the one or more personality traits
of the select one of the plurality of subjects other than the
user to one or more template options;
(f) providing the plurality of template options to the
user;
(g) receiving a template selection from the user; and
(h) automatically generating a writing using the
template selection from the user with the received inputs.
App. Br. 44-45, 48-49 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Wood et al.
(“Wood”)
US 2002/0045154 Al Apr. 18, 2002
Russell et al. US 2002/0178079 Al Nov. 28, 2002
(“Russell”)
Notargiacomo et al.
(“Notargiacomo”)
US 2003/0009461 Al Jan. 9, 2003
Gatt US 2005/0125725 Al June 9, 2005
Bodin et al.
(“Bodin”)
US 2005/0154972 Al July 14, 2005
Dorward et al.
(“Dorward”)
US 7,426,483 B1 Sept. 16, 2008
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The Rejections on Appeal
Claims 1—5, 8—15, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Notargiacomo, Wood, Russell, and Gatt. Final Act. 3—28;
Ans. 2—27.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Notargiacomo, Wood, Russell, Gatt, and Bodin. Final Act. 28—29; Ans. 27—
28.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Notargiacomo, Wood, Russell, Gatt, and Dorward. Final Act. 29—30;
Ans. 28—30.
Claims 16—19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Notargiacomo, Wood, and Russell. Final Act. 31—38; Ans. 30-37.
ANALYSIS
We have reviewed the rejections of claims 1—20 in light of
Appellants’ arguments that the Examiner erred. For the reasons explained
below, we disagree with Appellants’ assertions regarding error by the
Examiner. We adopt the Examiner’s findings in the Final Office Action
(Final Act. 3—38) and Answer (Ans. 2—68). We add the following to address
and emphasize specific findings and arguments.
The Rejection of Claims 1—5, 8—15, and 20 Under 35 U.S.C. § 103(a)
Independent Claim 1: Limitations
Allegedly Missing from the References
Appellants argue that the Examiner erred in rejecting independent
claim 1 because the references do not teach or suggest limitations (a), (b),
(c)(i), and (c)(ii) concerning a “deceased person associated with the user.”
App. Br. 17—21; Reply Br. 6—8. In particular, Appellants contend that
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Russell “is directed to pets not people” and “makes no mention of a
deceased person associated with a user.” App. Br. 17. In addition,
Appellants contend that “[t]here is no mention whatsoever in Wood that any
profiler, questions, responses, analysis for personality traits, etc. are directed
to anyone other than the user themselves.” Id. at 19. Appellants also
contend that “Wood teaches a system and method for targeting advertising
and services to individuals based on their personality.” Id. at 20 (citing
Wood 1139-41).
According to Appellants:
[W]hat the Office has done here as seen on pages 5-7 of the
Office Action is to omit the limitations of element (a) that
require the questions posed by the profiler to be “about a
deceased person associated with the user.” The Office
continued by omitting the limitations of element (b) that require
the one or more responses “are about the deceased person
associated with the user.” With respect to element (c) the
Office omitted the limitations that require the one or more
personality traits are “of the deceased person associated with
the user.”. . .
This approach amounts to the Office redrafting the claim
limitation before conducting its obviousness analysis.
App. Br. 19.
Appellants’ contentions do not persuade us of Examiner error
because, as the Examiner notes, the contentions address the references
individually. Ans. 45. Where a rejection rests on a combination of
references, an appellant cannot establish nonobviousness by attacking the
references individually. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Moreover, “the test for combining references is not what
the individual references themselves suggest but rather what the combination
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of disclosures taken as a whole would suggest to one of ordinary skill in the
art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants do not address what
the Notargiacomo-Wood-Russell-Gatt combination “taken as a whole would
suggest to one of ordinary skill in the art” and, therefore, have not
persuasively argued that the Examiner erred. App. Br. 17—21; Reply Br. 6—
8.
The Examiner finds that Notargiacomo “teaches a method, system and
computer software product for capturing and distributing memories of a
deceased individual,” including a template for a website with an obituary.
Ans. 45^46; see, e.g., Notargiacomo Tflf 6, 9, 14, 19, 24, 28, 43—45, Abstract,
Figs. 2a—2b. Notargiacomo explains that a data entry system at a funeral
home “can be used for establishing and entering initial information
regarding the deceased individual,” such as names of “the surviving family
members” and “previously deceased family members.” Notargiacomo
H 44-45, Figs. 2a—2b. Further, the Examiner finds that Russell teaches
methods for “conveniently conducting various transactions and business”
relating to death, including a website that “enables users to post death
notices and obituaries.” Ans. 47 (citing Russell Tflf 36, 46); see, e.g., Russell
11 2, 36, 46, Title, Abstract; see also Ans. 41 (citing Russell 36, 40). In
the Reply Brief, Appellants do not address those findings. Reply Br. 6—8.
In addition, the Examiner finds that: (1) Russell teaches a method
where a user answers questions associated with a subject other than the user;
(2) Wood teaches a method for determining “which questions] to ask to a
user in order to gather information” including personality information; and
(3) Gatt teaches user selection from among a plurality of publication
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templates. Ans. 41, 46-48 (citing Russell Abstract; Wood H 36, 40, 75—77,
109—113; Gatt H 55—58, Fig. 7A); see Final Act. 5—9.
The Examiner reasons that the Notargiacomo-Wood-Russell-Gatt
combination teaches or suggests limitations (a), (b), (c)(i), and (c)(ii) in
claim 1 because: (1) “Notargiacomo is receiving information about a
deceased person”; (2) “Wood is determining the type of question[s]” to ask a
user and analyzing the user’s answers “to obtain personality data”;
(3) Russell discloses a website for death notices and obituaries for a subject
other than the user; and (4) Gatt discloses template options. Ans. 47-49.
We discern no error in the Examiner’s reasoning.
Appellants’ contentions that Russell “is directed to pets not people”
and “makes no mention of a deceased person associated with a user”
overlook Russell’s disclosure regarding the website MyEtribute.com relating
to people not pets. See, e.g., Russell H 20, 24—34, 107—111, 115—229,
Figs. 1—10; see also App. Br. 17. For instance, Russell explains that
“MyEtribute.com combines, among other activities, tributes, messages,
shopping, education and gathering of information into a single one-stop web
site that offers a more convenient forum with which to conduct death related
transactions.” Russell 1107. Russell also explains that “MyEtribute.com
provides a platform for mourners to learn about the death, respond to family
wishes and access additional information.” Id. 1110. As examples, Russell
discusses “Susan, Coordinating Mourner for the Death of Her Mother,
Elizabeth,” and “Deborah, Long-Distance Mourner of Former Asian-
American Classmate, Anna.” Id. H 115—180.
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Independent Claim 1: Motivation to Combine
Appellants argue that the Examiner erred in rejecting claim 1 because
the motivation to combine the references provided by the Examiner “is
insufficient” and “grounded solely in the use of hindsight bias.” App.
Br. 12 ; see Reply Br. 3—6. Appellants assert that the Examiner “merely
makes a conclusory and unsupported statement that the combination and
modification would be obvious to one of ordinary skill because making the
combination and modification allegedly satisfies the claim limitation in
question.” App. Br. 13; see Reply Br. 3. Appellants also assert that the
Examiner provides (1) “no explanation as to why or how the teachings of
Wood can be combined with the teachings of Notargiacomo” and (2) “no
cite to any reference” regarding “the motivation to combine and modify”
Notargiacomo and Wood with Russell and Gatt. App. Br. 13—15. In
addition, Appellants argue that the Examiner “believes that the motivation
for combining the teachings of the art of record is sufficient merely because
... the art of record is analogous.” Reply Br. 4.
Appellants’ arguments do not persuade us of Examiner error because
(1) the Examiner finds that the motivation to combine comes from the
references themselves and (2) the Examiner cites various portions of the
references as support. See, e.g., Final Act. 7—9 (citing Wood Abstract;
Russell Abstract; Gatt 127); Ans. 7—9, 39-43 (citing Wood Abstract;
Russell Abstract; Gatt 127). More specifically, the Examiner finds that one
of ordinary skill in the art would have been motivated to combine Wood
with Notargiacomo to improve Notargiacomo’s obituary website by adding
the deceased person’s personality type and preferences based on Wood’s
teaching concerning “determining personal characteristics of an individual
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or group,” including “personality dimensions.” Final Act. 7 (citing Wood
Abstract); Ans. 7, 40 (citing Wood Abstract); see Notargiacomo Tflf 44-45,
Figs. 2a—2b; Wood Abstract. Based on Russell’s teaching, the Examiner
finds that one of ordinary skill in the art would have been motivated to
combine Russell with Notargiacomo and Wood to further improve the
obituary website with information associated with a subject other than the
user to provide a one-stop website for conducting various death-related
transactions. Final Act. 8 (citing Russell Abstract); Ans. 8, 41—42 (citing
Russell 136, Abstract); see Russell 136, Abstract. And based on Gatf s
teaching, the Examiner finds that one of ordinary skill in the art would have
been motivated to combine Gatt with Notargiacomo, Wood, and Russell to
further improve the obituary website with information compiled from a
group of users. Final Act. 9 (citing Gatt 127); Ans. 9, 42-43 (citing Gatt
127); see Gatt 127.
Accordingly, the Examiner has articulated reasoning with a rational
underpinning for why one of ordinary skill in the art at the time of invention
would have combined Notargiacomo, Wood, Russell, and Gatt, including
identifying advantages and improvements achieved with the combination.
Final Act. 7—9; Ans. 7—9, 39-43. “[T]he law does not require that the
references be combined for the reasons contemplated by the inventor.” In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). “[A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining” references. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). “[T]he desire to enhance
commercial opportunities by improving a product or process is universal
. . . DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356, 1368
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(Fed. Cir. 2006); see In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
“[A]n implicit motivation to combine” may result from a desire to make a
product or process “stronger, cheaper, cleaner, faster, lighter, smaller, more
durable, or more efficient.” DyStar, 464 F.3d at 1368.
Appellants assert that “a person of ordinary skill in the art would only
choose to combine” Wood with Notargiacomo “when guided by the
hindsight granted by the claimed invention” because (1) “Notargiacomo
does not discuss any weakness relating to the template it uses” and (2) Wood
discloses a self-administered test for creating “promotional materials
targeted at the user that self-administers.” Reply Br. 4. But the motivation
to combine Wood with Notargiacomo rests on an advantage that Wood
discloses instead of a weakness that Notargiacomo discusses. See Final
Act. 7; Ans. 7, 40. In addition, Wood teaches broader use of personality
data than just creating “promotional materials targeted at the user that self-
administers,” such as obtaining “personality-based advice, content, and
people-matching services . . . .” See, e.g., Wood 142, Abstract; see also
Reply Br. 4 (citing Wood 142); Wood 140 (describing “the delivery of
personality based products and services”).
Appellants assert that “there is no apparent way to use Wood to
determine a promotional material that is effective for marketing to persons
associated with the person that is self-administering the test.” Reply Br. 5.
That assertion misconstrues the rejection. The Examiner relies on Russell,
not Wood, for teaching questions eliciting information about a subject other
than the user. See Final Act. 8; Ans. 7—8, 41—42, 47-48. The Examiner
relies on Wood for teaching questions eliciting personality information. See
Final Act. 5-7; Ans. 4-7, 39-40, 46-47.
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Appellants further assert that “[b]y introducing information from
another entity, as described in Russell, the self-administered test and
targeted promotional aspect of Wood is no longer functional” and “Wood is
rendered unsatisfactory for its intended purposed.” Reply Br. 5. But “[t]he
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference . . .
Keller, 642 F.2d at 425. Instead, an obviousness analysis should consider
“what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Id. Here, the combined teachings of
Notargiacomo, Wood, and Russell would have suggested a website with an
obituary about a deceased person other than the user that includes
personality information about the deceased person. See Final Act. 3—8;
Ans. 3—8, 39-42, 45 48. Combining Wood and Russell with Notargiacomo
does not render Notargiacomo unsatisfactory for its intended purposed.
Summary for Independent Claim 1
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Notargiacomo, Wood, Russell, and Gatt. Hence, we sustain the
rejection of claim 1.
Dependent Claims 2-5 and 8-15
Appellants do not make any separate patentability arguments for
dependent claims 2—5 and 8—15. App. Br. 21. Because Appellants do not
argue the claims separately, we sustain the rejection of claims 2—5 and 8—15
for the same reasons as claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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Independent Claim 20: Limitations
Allegedly Missing from the References
Appellants argue that the Examiner erred in rejecting independent
claim 20 because the references do not teach or suggest limitations (e)(i) and
(e)(ii) concerning “one or more personality traits of. . . [a] subject[] other
than the user.” App. Br. 28—31. More specifically, Appellants assert that
the Examiner “only partially addresses these limitations . . . when discussing
the Wood reference” and “fails to consider” the aspects of these limitations
pertaining to the “one or more personality traits of the subject other than the
user.” App. Br. 29. Appellants also assert that the Examiner “leaves the
above aspects of elements (e)(i) and (e)(ii) of claim 20 directed to
personality traits of subjects other than the user unaddressed by Russell or
any of the combined art of record.” Id. Although Appellants advance
additional arguments for claim 20, those additional arguments parallel
Appellants’ arguments for claim 1. Compare App. Br. 29—31, with id.
at 19-21.
Appellants’ arguments do not persuade us of Examiner error because,
as the Examiner notes, the arguments address the references individually.
Ans. 53. Appellants do not address what the Notargiacomo-Wood-Russell-
Gatt combination “taken as a whole would suggest to one of ordinary skill in
the art” and, therefore, have not persuasively argued that the Examiner erred.
App. Br. 28-31.
The Examiner relies on Russell for teaching questions eliciting
information about a subject other than the user and Wood for teaching
questions eliciting personality information. See Final Act. 23—27; Ans. 23—
26, 51—52, 54—56. In particular, Examiner finds that Russell teaches a
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method where a user answers questions associated with a subject other than
the user and Wood teaches a method for determining “which questions] to
ask to a user in order to gather information” including personality
information. Ans. 51—52, 54—56 (citing Russell 36, 40, 46, Abstract;
Wood 75—77, 109—113, 299, Abstract); see Final Act. 23—27. The
Examiner further finds that “a pet associated with the user” as disclosed in
Russell “may be considered a subject other than the user.” Ans. 56.
Consequently, we discern no error in the Examiner’s finding that the
combined teachings of the references satisfy limitations (e)(i) and (e)(ii) in
claim 20.
Independent Claim 20: Motivation to Combine
Appellants make essentially the same arguments regarding the
motivation to combine Notargiacomo, Wood, Russell, and Gatt for claim 20
as for claim 1. Compare App. Br. 23—28, with id. at 12—17. For the reasons
discussed for claim 1, Appellants’ arguments do not persuade us of
Examiner error in combining Notargiacomo, Wood, Russell, and Gatt for
claim 20.
Summary for Independent Claim 20
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 20 for obviousness
based on Notargiacomo, Wood, Russell, and Gatt. Hence, we sustain the
rejection of claim 20.
The Rejections of Claims 6 and 7 Under 35 U.S.C. § 103(a)
For the obviousness rejections of dependent claim 6 based on
Notargiacomo, Wood, Russell, Gatt, and Bodin and dependent claim 7 based
on Notargiacomo, Wood, Russell, Gatt, and Dorward, Appellants argue that
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claims 6 and 7 “include all of the limitations of independent claim 1” and the
arguments regarding claim 1 “apply equally” to claims 6 and 7. App. Br. 21.
Appellants do not make any separate patentability arguments for claims 6
and 7. Id. Because Appellants do not argue the claims separately, we
sustain the rejections of claims 6 and 7 for the same reasons as claim 1. See
37 C.F.R. §41.37(c)(l)(iv).
The Rejection of Claims 16—19 Under 35 U.S.C. § 103(a)
Independent Claim 16: Limitations
Allegedly Missing from the References
Appellants argue that the Examiner erred in rejecting independent
claim 16 because the references do not teach or suggest limitations (c), (d),
(e)(i), (e)(ii), and (e)(iii) concerning a “deceased person associated with the
user.” App. Br. 37-42; see Reply Br. 6—8. Appellants make essentially the
same arguments regarding the limitations allegedly missing from the
references for claim 16 as for claim 1. Compare App. Br. 37-42, with id.
at 17-21 ; see Reply Br. 6—8. For the reasons discussed for claim 1,
Appellants’ arguments do not persuade us of Examiner error in finding that
the references teach or suggest limitations (c), (d), (e)(i), (e)(ii), and (e)(iii)
in claim 16.
Independent Claim 16: Motivation to Combine
Appellants make essentially the same arguments regarding the
motivation to combine Notargiacomo, Wood, and Russell for claim 16 as for
claim 1. Compare App. Br. 33—37, with id. at 12—15. For the reasons
discussed for claim 1, Appellants’ arguments do not persuade us of
Examiner error in combining Notargiacomo, Wood, and Russell for
claim 16.
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Summary for Independent Claim 16
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 16 for obviousness
based on Notargiacomo, Wood, and Russell. Hence, we sustain the rejection
of claim 16.
Dependent Claims 17-19
Appellants do not make any separate patentability arguments for
dependent claims 17—19. App. Br. 42. Because Appellants do not argue the
claims separately, we sustain the rejection of claims 17—19 for the same
reasons as claim 16. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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