Ex Parte Taylor et al

Patent Trial and Appeal Board

Jul 23, 2014

12000596 (P.T.A.B. Jul. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GREGORY TAYLOR and DOUGLAS MORGEN1
____________________

Appeal 2012-003236
Application 12/000,596
Technology Center 2100
____________________

Before: SALLY GARNDER LANE, JOHN G. NEW, and
NATHAN A. ENGELS, Administrative Patent Judges.

ENGELS, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellants, the real party in interest is Taylor Morgen Corp.
App. Br. 3.
Appeal 2012-003236
Application 12/000,596
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1-48. Specifically, claims 1-48 stand rejected
under 35 U.S.C. § 102(a) as being anticipated by Lunt (US 7,117,254 B2,
published Oct. 3, 2006). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

NATURE OF THE CLAIMED INVENTION
The claims on appeal are directed to methods of connecting mutually
interested people by allowing users to rate one another and then determining
mutual interest based on each other’s ratings. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of facilitating contact between mutually
interested entities, comprising:
providing on an electronic communications system a
graphical interface for a user to input a rating of its level of
interest in one or more respects in at least one other user from a
preexisting list of contacts,
not displaying the user's input ratings to other users, and
electronically notifying a pair of users when each user’s
input rating for the other has exceeded a threshold level.

ISSUES
Appellants seek our review of the Examiner’s rejection of claims 1-48
under 35 U.S.C. § 102(a) as anticipated by Lunt. Appellants argue that Lunt
fails to teach the following limitations from claim 1: (1) providing a
graphical interface for a user to input a rating of its level of interest in one or
Appeal 2012-003236
Application 12/000,596
3
more respects in at least one other user from a pre-existing list of contacts;
(2) not displaying the user’s input ratings to other users; and (3) notifying a
pair of users when each user’s input rating for the other has exceeded a
threshold level. App. Br. 10.

ANALYSIS
Appellants characterize the claimed invention as a method of
connecting mutually interested people by allowing users to rate one another
and make determinations of mutual interests based on those ratings without
revealing a user’s interest level to other users who are not interested. App.
Br. 10-11. Appellants characterize Lunt as a reference that teaches
connecting people based not on user-generated ratings, but on the presence
of acquaintances that fall within certain “degrees of separation” set by a
user. App. Br. 11.
Lunt defines “degrees of separation” as “[t]he number of connections
linking any two individuals in a social network.” Col. 7, ll. 53-54. Lunt
illustrates that definition with the following example: “if individual A is
connected to individual B through two intermediate acquaintances (C and D)
they are connected at three degrees of separation.” Col. 7, ll. 54-57.
For the limitation of claim 1 that recites “providing . . . a graphical
interface for a user to input a rating of its level of interest in one or more
respects in at least one other user from a pre-existing list of contacts,” the
Examiner cites Lunt’s disclosure of a graphical user interface that allows
users to set a maximum number of degrees of separation. Answer 12-13.
The Examiner’s rejection equates Lunt’s methods of allowing users to set
degrees of separation with the functional limitation of claim 1 that requires
allowing a user to “input a rating of its level of interest.”
Appeal 2012-003236
Application 12/000,596
4
Appellants argue that the degrees-of-separation system for filtering
potential connections does not fall within the scope of the “rating” functional
limitation in claim 1, and we agree. Lunt teaches a system in which users
can define a maximum number of degrees of separation, and the Lunt system
then filters potential connections using the settings. The settings described
in Lunt are not set specifically to other individual users and do not constitute
ratings of individual users, as claim 1 requires.
Accordingly, we find that Lunt does not disclose at least one
limitation of claim 1, and we decline to sustain the Examiner’s rejection of
claim 1. See, e.g., Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.”). Because the “rating” limitation
in claim 1 is dispositive of the Examiner’s anticipation rejection, we need
not address the additional grounds upon which Appellants argue that Lunt
does not anticipate claim 1. Because claims 2-46 depend from claim 1, we
consequently do not sustain the Examiner’s rejections of those claims.
Further, because independent claims 47 and 48 include the same limitation
as claim 1, we find that Lunt does not anticipate claims 47 or 48 for the same
reasons addressed supra. We therefore do not sustain the Examiner’s
rejection of claims 47 and 48.

DECISION
The Examiner’s rejections of claims 1-48 under 35 U.S.C. § 102(a)
are reversed.

Appeal 2012-003236
Application 12/000,596
5
REVERSED

tj