Ex Parte Shaffer et al

Patent Trial and Appeal Board

Sep 25, 2017

13567301 (P.T.A.B. Sep. 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.
13/567,301 08/06/2012 Shmuel Shaffer 412067-US-NP/AVA042PA 1001
136582 7590 09/27/2017
STEVENS & SHOWALTER, LLP
Box AVAYA Inc.
7019 Corporate Way
Dayton, OH 45459-4238
EXAMINER
RAHIM, MONJUR
ART UNIT PAPER NUMBER
2436
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
pto @ sspatlaw. com
pair_avaya@ firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHMUEL SHAFFER,
DOREE DUNCAN SELIGMANN,
and REINHARD P. KLEMM
Appeal 2017-006370
Application 13/567,301
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—4, 10-13, and 19-21, which are all the claims pending
Appeal 2017-006370
Application 13/567,301
in this application.1 2 Appellants canceled claims 5, 7, 14, and 16. We have
jurisdiction under 35 U.S.C. § 6(b). We Affirm.
The Invention
The disclosed and claimed invention relates to controlling users’
online access based on social network user profiles. Spec. 12.
Representative Independent Claim 1
1. A method to control access by a user to an online service,
comprising:
receiving, by a processor of a computing device, a request
from a user to use an application;
identifying, by the processor of the computing device, a
social networking characteristic of the user, wherein the social
networking characteristic comprises publicly-available
information;
1 The Examiner appears to indicate that claims 6, 8, 9, 15, 17, and 18 are
“objected to” for being dependent upon a rejected base claim: “Claim
Objection . . . Claims 6, 8, 9 and claims 15, 17, 18 if they are incorporate [d]
into independent claims 1 and 13 respectively.” (Final Act. 2). Because we
find the Examiner’s statement (id.) is unclear, we leave any clarification of
allowable subject matter to the Examiner in the event of further prosecution
(the Board does not have jurisdiction to allow claims).
2 We note the Final Office Action Summary page does not indicate any
rejected claims. Box 7 is unchecked, and the list of rejected claims is blank.
(Id.). After reviewing the Final Office Action (mailed April 4, 2016) in its
entirety, we find no detailed statement of rejection for claims 6, 8, 9, 15, 17,
and 18 to review. In box 8, the Examiner indicates that claims 6, 8, 9, 15,
17, and 18 are objected to, as discussed above in note 1. (See Final Act. 1).
Because the Board has no adverse decision establishing a prima facie case
under 35 U.S.C. § 132(a) to review for claims 6, 8, 9, 15, 17, and 18, we have
no jurisdiction under pre-AIA 35 U.S.C. §6(b) as to any claims that were not
rejected. Accordingly, claims 6, 8, 9,15,17, and 18, which are “objected
to” by the Examiner, are not before us on appeal. See Final Act. 1—2.
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classifying, by the processor of the computing device, the
user to one of a set of classifications based upon the social
networking characteristic, to produce a classification of the user,
wherein the set of classifications comprises preferred, non-target,
and malicious; and
controlling, by the processor of the computing device, a
level of access to the online service based upon the classification
of the user by allowing preferred users to access the online
service and restricting the level of access of malicious users to
the online service.
(Contested limitations lettered and emphasized in italics).
Rejections
Rl. Claims 1, 2, 11—13, 20, and 21 are rejected under 35 U.S.C
§ 103(a) as being obvious over the combined teachings and suggestions of
Spencer et al. (US 2012/0192258 Al; publ. July 26, 2012) (hereinafter
“Spencer”), and De Souza et al. (US 2011/0218948 Al; publ. Sept. 8, 2011)
(hereinafter “De Souza”).
R2. Claims 10 and 19 are rejected under 35 U.S.C § 103(a) as being
obvious over the combined teachings and suggestions of Spencer, De Souza,
and Pezaris et al. (US 2005/0198031 Al; publ. Sept. 8, 2005) (hereinafter
“Pezaris”).
R3. Claims 3 and 4 are rejected under 35 U.S.C § 103(a) as being
obvious over the combined teachings and suggestions of Spencer,
De Souza, and Official Notice.
Grouping of Claims
Based upon Appellants’ arguments (App. Br. 7—12), we decide the
appeal of claims 1, 11—13, 20, and 21, rejected under obviousness Rejection
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Rl, on the basis of representative independent claim l.3 We address
separately argued dependent claim 2, infra. To the extent Appellants have
not advanced separate, substantive arguments for rejected claims 10 and 19
(App. Br. 12), rejected under Rejection R2, such arguments are waived. See
37 C.F.R. § 41.37(c)(l)(iv). We address separately argued claims 3 and 4,
rejected under Rejection R3, infra.
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. Regarding the rejection of claims 1—4, 10—13, and 19-21, we
disagree with Appellants’ arguments, and we adopt as our own: (1) the
findings and legal conclusions set forth by the Examiner in the Final Action
(3), from which this appeal is taken, and (2) the findings, legal conclusions,
and explanations set forth in the Answer (4—8) in response to Appellants’
arguments. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection Rl of Independent Claim 1 under 35 U.S.C. § 103(a)
We decide the following issue presented in this appeal:
Issue: Under § 103, did the Examiner err by finding the cited
combination of Spencer and De Souza would have taught or suggested the
contested limitation of:
identifying, by the processor of the computing device, a
social networking characteristic of the user, wherein the social
3 Although Appellants argue rejection Rl of claims 1,2, 11, and 12 under
one sub-heading and claims 13, 20, and 21 under another separate sub­
heading, the arguments presented for the latter group are essentially identical
to those of the former group.
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networking characteristic comprises publicly-available
information[,]
within the meaning of independent representative claim 1? 4
Appellants contend, “Spencer consistently teaches that the decision to
grant a user access to the wireless network requires the user’s (non-public)
social networking credentials.” (App. Br. 8).
The Examiner finds Spencer’s online service’s use of publicly or
privately published user information teaches, or at least suggests, the
disputed limitation “wherein the social networking characteristic comprises
publicly-available information,” as recited in claim 1. (Final Act. 3, citing
Spencer 130).
Spencer (| 30), in pertinent part, describes:
the social network will generally involve that a registered user
prepare and publish, either publicly or privately to selected
contacts or friends, a social network profile which identifies at
least some legitimate information allowing others to recognise
[(Brit. sp.)] these users socially and interact with them based on
one or more commonalities.
(emphasis added).
Given this evidence (id.), we are not persuaded by Appellants’
4 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). See Spec, e.g., 1127: “the foregoing
description is not intended to be exhaustive or to limit the invention to the
precise form disclosed. Modifications and variations are possible in light of
the above teachings or may be acquired from practice of the invention.
Certain exemplary embodiments may be identified by use of an open-ended
list that includes wording to indicate that the list items are representative of
the embodiments and that the list is not intended to represent a closed list
exclusive of further embodiments.”
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arguments, and find a preponderance of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness. We find Spencer’s description of an online service having
registered users who may publicly or privately publish their social network
profile to selected contacts would have taught, or at least suggested, “the
social networking characteristic comprises publicly-available information,'1'’
as recited in claim 1. (Spencer 130).
Moreover, Appellants acknowledge De Souza relies on publicly
available information. (App. Br. 9).5 6 Therefore, Appellants admit the
disputed limitation is taught at least by the secondary De Souza reference.
Appellants further contend “[modification of Spencer to utilize
publicly available information would significantly alter Spencer's disclosed
process . . . and potentially render Spencer unsatisfactory for its intended
purpose.” (Id.). We find this argument unavailing because Spencer (| 30)
5 See App. Br. 9 (“In the interest of compact prosecution, Appellant
recognizes that De Souza's disclosed method of detecting and categorizing
spammers and other unwanted users on video social networks "[ujsing
attributes based on the user's profile, the user's social behavior in the system,
and the videos posted by the user" appears to rely, at least in part, on
publicly available information, e.g., the content of YouTube videos (see
paragraph [0010]”). (emphasis added).
6 See 37 C.F.R. § 1.104(c)( 3)(“In rejecting claims the examiner may rely
upon admissions by the applicant, or the patent owner in a reexamination
proceeding, as to any matter affecting patentability and, insofar as rejections
in applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.”); See also Manual
of Patent Examining Procedure (MPEP) § 2145 (9th ed. Nov. 2015)
(“Attorney argument is not evidence unless it is an admission, in which case,
an examiner may use the admission in making a rejection.”).
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expressly describes the use of publicly available information, as explained
above.
Moreover, ‘“the question under [35 U.S.C. § 103] is not merely what
the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989), cert, denied, 493
U.S. 975 (1989); see also MPEP § 2123.
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, Appellants have not persuaded us the
Examiner erred in finding the contested limitation of claim 1 would have
been taught or suggested by the cited combination of Spencer and De Souza.
Accordingly, we sustain the rejection R1 of representative independent
claim 1, and the rejection R1 of grouped claims 11—13, 20, and 21. See
Grouping of Claims, supra.
Rejection R1 of Dependent Claim 2
Claim 2 recites: “The method of claim 1, wherein the social
networking characteristic comprises a geographic source identifier of other
posts from the user.” (Claim 2).
Appellants assert the user’s current geographical location, as taught in
Spencer, would “also presumably be non-public.” (App. Br. 11).
We are not persuaded by Appellants’ argument, because it is based
upon an assumption. (Id.). We find a preponderance of the evidence
supports the Examiner’s findings, because we find the user’s social profile
information in Spencer, including the user’s “current geographical location”
(1 50), would have taught, or at least suggested, the disputed feature of claim
2. (Final Act. 3—4, citing Spencer | 50).
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Therefore, on this record, we are not persuaded of error regarding the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness regarding claim 2. Accordingly, we affirm the Examiner’s
obviousness rejection R1 of dependent claim 2.
Rejection R2 of Claims 10 and 19 under 35 U.S.C. § 103(a)
Regarding claims 10 and 19, Appellants do not present separate,
substantive arguments. (App. Br. 12). Arguments not made are waived. See
37 C.F.R. § 41.37(c)(l)(iv). To the extent Appellants contend the tertiary
Pezaris reference fails to remedy the deficiencies of rejection R1 of
independent claims 1 and 13 (App. Br. 12), we find no deficiencies with the
base combination of Spencer and De Souza, for the reasons discussed above
regarding representative independent claim 1.
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s legal conclusion of obviousness regarding claims 10 and 19.
Accordingly, we affirm the Examiner’s obviousness rejection R2 of
dependent claims 10 and 19.
Rejection R3 of Claims 3 and 4 under 35 U.S.C. § 103(a)
Claim 3 recites: “The method of claim 1, wherein the social
networking characteristic comprises an IP address of the user.'”
Claim 4 recites: “The method of claim 1, wherein the social
networking characteristic comprises a subnet address of the user.”
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Regarding dependent claims 3 and 4, Appellants contend the
Examiner has not met the required burden for taking Official Notice. (App.
Br. 13).
The Examiner has taken Official Notice that capturing the IP address
and subnet address of a user to determine a user’s location (and for other
purposes) is a common practice in the art. (Final Act. 6).
In support of the Examiner’s position, we note that Official notice
unsupported by documentary evidence should only be taken by the
Examiner where the facts asserted to be well-known, or to be common
knowledge in the art, are capable of instant and unquestionable
demonstration as being well-known. As noted by the court in In re Ahlert,
424 F.2d 1088, 1091 (CCPA 1970), the notice of facts beyond the record
which may be taken by the Examiner must be “capable of such instant and
unquestionable demonstration as to defy dispute” (citing In re Knapp
Monarch Co., 296 F.2d 230 (CCPA 1961)). In Ahlert, the court held that the
Board properly took judicial notice that “it is old to adjust intensity of a
flame in accordance with the heat requirement.” See also In re Fox, 471
F.2d 1405, 1407 (CCPA 1973) (the court took “judicial notice of the fact
that tape recorders commonly erase tape automatically when new ‘audio
information’ is recorded on a tape which already has a recording on it”).
In this appeal, we find both IP and subnet addresses (of users) are
capable of instant and unquestionable demonstration as being well-known.
Furthermore, we find the limitations in dependent claims 3 and 4 are well
known knowledge in the art, even without the support of documentary
evidence, because the facts so noticed are of notorious character and serve
only to “fill in the gaps” in the evidentiary showing made by the Examiner
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to support a particular ground of rejection. In re Zurko, 258 F.3d 1379,
1385, (Fed. Cir. 2001); Ahlert, 424 F.2d at 1092.
Moreover, in reviewing the record, we find Appellants have not
properly traversed the Examiner’s finding by stating in the record that the
purported well-known fact is not considered to be common knowledge or
well-known in the art. See MPEP § 2144.03(C) (“To adequately traverse
such a finding, an applicant must specifically point out the supposed errors
in the examiner's action, which would include stating why the noticed fact is
not considered to be common knowledge or well-known in the art. See 37
CFR 1.111 (b).” (Emphasis added)). An adequate rebuttal of the Examiner's
taking of Official Notice must contain sufficient information or argument to
create on its face a reasonable doubt regarding the circumstances justifying
the Examiner's notice of what is well known to one of ordinary skill in the
art. In re Boon, 439 F.2d 724, 728 (CCPA 1971).
Appellants’ arguments have not created a reasonable doubt here.
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s legal conclusion of obviousness regarding claims 3 and 4.
Accordingly, we affirm the Examiner’s obviousness rejection R3 of
dependent claims 3 and 4.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause, which Appellants have not
shown. See 37 C.F.R. § 41.41(b)(2).
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DECISION
We affirm the Examiner's decision rejecting claims 1—4, 10—13,
and 19-21 under 35 U.S.C. § 103(a).
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).
AFFIRMED
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