Ex Parte Tuchman et al

Patent Trial and Appeal Board

Oct 30, 2018

13185309 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/185,309 07/18/2011
8791 7590 11/01/2018
WOMBLE BOND DICKINSON (US) LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Kenneth D. Tuchman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9092P008 2058
EXAMINER
NGUYEN, THUY N
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
FIP _Group@bstz.com
PTO.MAIL@BSTZPTO.COM
PTO.MAIL@BSTZ.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH D. TUCHMAN, BRUCE A. SHARPE,
and HENRY D. TRUONG
Appeal2017-001520
Application 13/185,309
Technology Center 3600
Before JOHN A. EV ANS, STEVEN M. AMUNDSON, and
JASON M. REPKO, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the Examiner's
final rejection of Claims 1-14 and 23-32. Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 Appellants state the real party in interest is Tele Tech Holdings, Inc. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed May 25, 2016, "Br."), the Examiner's
Answer (mailed September 21, 2016, "Ans."), the Final Office Action
Appeal2017-001520
Application 13/185,309
STATEMENT OF THE CASE
The claims relate to a method of messaging within a social
community. See Abstract.
INVENTION
Claims 1, 11, and 29 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below:
1. A computer-implemented method for routing messages
amongst users, the method comprising:
maintaining, at a first computer server associated with a
support center, a user database having a plurality of user
accounts associated with a plurality of users who have
registered a plurality of products with the support center,
wherein the first computer server is to provide support services
to the users concerning the products on behalf of a plurality of
vendors that provide the products;
accessing, by an analysis module executed by a processor
of the first computer server, a first user account of the user
database that is associated with a first of the plurality of users to
identify a first product, wherein the first product was purchased
by the first user from a first of the plurality of vendors, and
wherein the first product has been previously registered with
the first computer server by the first user;
accessing by the analysis module a second user account
of the user database that is associated with a second of the
plurality of users to identify a second product, wherein the
second product was purchased by the second user from a
second of the plurality of vendors, and wherein the second
(mailed November 25, 2015, "Final Act."), and the Specification (filed July
18, 2011, "Spec.") for their respective details.
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product has been previously registered with the first computer
server by the second user;
accessing by the analysis module a product database
maintained by the first computer server to determine whether
the first product and the second product are related products
based on product information stored in the product database;
in response to determining that the first product and the
second product are related products, accessing, by a social
posting engine hosted by the first computer server, the first user
account and the second user account respectively to determine
whether the first user and the second user are members of a first
social community, wherein the first social community is hosted
by a second computer server that is communicatively coupled
to the first computer server via a first an [sic] application
programming interface (API) of the first computer server,
wherein the first social community is hosted by a third party
that is independent from the support center over a network;
in response to determining that the first user and the
second user are members of the first social community,
transmitting, by the social posting engine via a second API of
the first computer server over the network, a first message to a
first mobile application running within a first mobile device
associated with the first user to invite the first user to connect
with the second user via the first social community without
requiring the first user directly accessing the first social
community, wherein the first message includes information
identifying the first product; and
transmitting, by the social posting engine via the second
API of the first computer server, a second message to a second
mobile application running within a second mobile device
associated with the second user to invite the second user to
connect with the first user via the first social community
without requiring the second user directly accessing the first
social community, wherein the second message includes
information identifying the second product.
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Krapf, et al.,
Wen, et al.,
Tawakol, et al.,
Peters, et al.,
Kelly, et al.,
Vernal, et al.,
Biolchini, et al.,
Novak, et al.,
Trevithick, et al.,
Rathod
Shah, et al.,
Omoigui
References and Rejections
US 2003/0074661 Al
US 2003/0229678 Al
US 2009/0228397 Al
US 8,943,145 Bl
US 8,296,380 B 1
US 2010/0132049 Al
US 2012/0023124 Al
US 2011/0306426 Al
US 2010/0274645 Al
US 2011/0191417 Al
US 2012/0209918 Al
US 2012/0191716 Al
The claims stand rejected as follows:
Apr. 17, 2003
Dec. 11, 2003
Sept. 10, 2009
Filed Feb. 8, 2010
Filed Apr. 1, 2010
May 27, 2010
Filed July 20, 2010
Filed June 10, 2010
Oct. 28, 2010
Filed Nov. 24, 2010
Filed Feb. 15, 2011
Filed June 24, 2011
1. Claims 1-14 and 23-32 stand rejected under 35 U.S.C. § 112 ,r 2, as
being indefinite. Final Act. 2-3.
2. Claims 1-14 and 23-32 stand rejected under 35 U.S.C. § 101, as being
directed to a judicial exception. Final Act. 3---6.
3. Claims 1, 11, and 29 stand rejected under 35 U.S.C. § I03(a), as
unpatentable over Novak, Rathod, and Vernal. Final Act. 7-20.
4. Claims 2, 12, and 30 stand rejected under 35 U.S.C. § I03(a), as
unpatentable over Novak, Rathod, Vernal, Biolchini, and Kelly. Final
Act. 20-27.
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5. Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a), as
unpatentable over Novak, Rathod, Vernal, Biolchini, Kelly, Shah, and
Peters. Final Act. 27-30.
6. Claims 3 and 13 stand rejected under 35 U.S.C. § 103(a), as
unpatentable over Novak, Rathod, Vernal, and Omoigui. Final Act. 31-
33.
7. Claims 4--7, 14, and 23-25 stand rejected under 35 U.S.C. § 103(a), as
unpatentable over Novak, Rathod, Vernal, Omoigui, and Trevithick.
Final Act. 33-39.
8. Claims 8, 9, 26, and 27 stand rejected under 35 U.S.C. § 103(a), as
unpatentable over Novak, Rathod, Vernal, Omoigui, Trevithick, Krapf,
and Tawakol. Final Act. 39-41.
9. Claims 10 and 28 stand rejected under 35 U.S.C. § 103(a), as
unpatentable over Novak, Rathod, Vernal, Omoigui, Trevithick, Krapf,
Tawakol, and Wen. Final Act. 42--43.
ANALYSIS
We have reviewed the rejections of Claims 1-14 and 23-32 in light of
Appellants' arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellants actually raised in the Brief. Any
other arguments which Appellants could have made but chose not to make in
the Brief are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We are
not persuaded that Appellants identify reversible error.
Upon consideration of the arguments presented in the Appeal Brief,
we do not agree with Appellants that the claims are patentable under
35 U.S.C. §§ 112, 101, and/or 103. With respect to the rejections, we adopt
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as our own the findings and reasons set forth in the rejection from which this
appeal is taken and in the Examiner's Answer, to the extent consistent with
our analysis below. We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellants' arguments seriatim, as they are presented in the Appeal
Brief, pages 18-153.
CLAIMS 1-14 AND 23-32: INDEFINITENESS.
Appellants argue independent Claims 1, 11, and 29 as a group and
designate claim 1 as representative. Br. 18. Thus, we decide the appeal of
the§ 112 rejection on the basis of representative Claim 1, and refer to the
rejected claims collectively herein as "the claims." See 37 C.F.R.
§ 4I.37(c)(l)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Independent Claims 1, 11, and 29 recite, inter alia, "wherein the first
computer server is to provide support services to the users concerning the
products on behalf of a plurality of vendors that provide the products." The
Examiner finds these are intended use recitations because it is unclear what
impact the recitations may have on the remaining limitations. Final Act. 2.
Specifically for Claim 1, the Examiner finds it unclear how the disputed
recitation affects the step of "maintaining ... a user database having a
plurality of user accounts associated with a plurality of users." Id.
Appellants quote Ex parte Chalon3 for the proposition that "[ t ]he test
for definiteness under 35 U.S.C. § 112, second paragraph, is whether 'those
3 Ex parte Chalan, Appeal 2009-005318, slip op. 7 (BP AI Nov. 6, 2009)
(quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565,
1576 (Fed. Cir. 1986)).
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skilled in the art would understand what is claimed when the claim is read in
light of the specification."' Br. 20. Appellants argue that one of ordinary
skill in the art would understand the claims "because claim 1 sets forth-via
precise, clear, correct, and unambiguous claim limitations-a first computer
server, which is associated with a support center, that maintains a user
database and that provides support services for multiple products on behalf
of one or more vendors that provide the products." Id. at 20-21.
The Examiner finds the claim must "inform those skilled in the art about the
scope of the invention with reasonable certainty."4 Ans. 4 (italics omitted).
The disputed recitation (italicized) forms a portion of a larger "maintaining"
limitation:
maintaining, at a first computer server associated with a support
center, a user database having a plurality of user accounts
associated with a plurality of users who have registered a
plurality of products with the support center, wherein the first
computer server is to provide support services to the users
concerning the products on behalf of a plurality of vendors that
provide the products.
Claim 1. The Examiner determines the claims do not describe what the
"support services" might be or how such services would have an effect on,
or require certain actions to be included in the remainder of the
"maintaining" limitation. Ans. 4--5.
Appellants do not reply to the Examiner and do not persuade us that
the Examiner has erred. Appellants do not separately argue the dependent
claims. See Br. 21.
4 Citing nonspecifically to Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014).
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CLAIMS 1, 11, AND 29: INELIGIBLE SUBJECT MATTER.
Appellants argue independent Claims 1, 11, and 29 as a group and
designate Claim 1 as representative. Br. 21. Thus, we decide the appeal of
the § 101 rejection on the basis of representative Claim 1, and refer to the
rejected claims collectively herein as "the claims." See 37 C.F.R.
§ 4I.37(c)(l)(iv); King, 801 F.2d at 1325.
Prima facie case.
Appellants contend the Examiner failed to established a prima facie
case of patent-ineligible subject matter under 35 U.S.C. § 101 because the
Examiner fails to "specifically point out the factors that are relied upon in
making the determination." Br. 24 (quoting MPEP § 2106(II)(B)(2)).
We disagree. The Federal Circuit has explained repeatedly that "the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The Examiner carries the burden of establishing a prima facie case when a
rejection satisfies 35 U.S.C. § 132 by setting forth the rejection in a
sufficiently articulate and informative manner. In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011). If the Examiner "adequately explain[s] the
shortcomings ... the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument." Hyatt, 492 F.3d at 1370.
The Final Office Action adequately explains the § 101 rejection. See
Final Act. 3---6. The Examiner's statements satisfy§ 132(a) because they
apply the Mayo/Alice analytical framework and apprise Appellants of the
reasons for the§ 101 rejection under that framework. Appellants have not
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responded by alleging a failure to understand the rejection. To the contrary,
Appellants clearly identify an abstract idea as found by the Examiner. See,
e.g., Br. 25 ("the Examiner has stated that claim 1 'generally indicates' the
concept of 'connecting and routing messages amongst users'"). Appellants
argue the "Examiner simply concluded that this alleged concept is an
abstract idea and therefore analyzed it under the second step of the Alice
analysis." Id. For these reasons, we are not persuaded the Examiner failed
to make a prima facie case of patent ineligibility under § 101.
Examination Guidance.
Appellants contend the Examiner's findings are deficient because the
Examiner fails to conform to various USPTO Examination Guidance
documents. See, e.g., inter alia, Br. 36-37, 41-50. Appellants admit the
"Interim Eligibility Guidance does not constitute substantive rulemaking and
does not have the force and effect of law." Br. 45.
Appellants are correct in realizing examination guidance does not
have the force and effect of law:
This Interim Eligibility Guidance has been developed as a
matter of internal Office management and is not intended to
create any right or benefit, substantive or procedural,
enforceable by any party against the Office. Rejections will
continue to be based upon the substantive law, and it is these
rejections that are appealable. Failure of Office personnel to
follow this Interim Eligibility Guidance is not, in itself, a proper
basis for either an appeal or a petition.
US PTO, 2014 Interim Guidance on Patent Subject Matter Eligibility,
79 Fed. Reg. 74618, 74619 (December 16, 2014).
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The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014 ). Appellants have acknowledged the Examiner has analyzed the
claims under the Alice framework. Br. 25 (the "Examiner simply concluded
that this alleged concept is an abstract idea and therefore analyzed it under
the second step of the Alice analysis"). The Examiner explicitly analyses the
claims under the Alice two-step approach. See Final Act. 3-6 (labeling the
steps "Step 2A" and "Step 2B").
Claim Construction.
Appellants contend "the Examiner has failed to properly construe
each of claims 1, 11, and 29, as a whole, under the broadest reasonable
interpretation standard before attempting to apply the two-step Alice test for
patentability." Br. 3 5 (boldface omitted) ( citing Ex parte Kane, Appeal
2012-000901, slip op. at 4 (PTAB Oct. 10, 2014) ("Before we can determine
whether the claims are directed to an abstract idea and, thus, patent-
ineligible, the broadest reasonable construction of the claims must first be
determined." (citing State St. Bank & Trust Co. v. Signature Fin. Group, 149
F.3d 1368, 1370 (Fed. Cir. 1998) ("whether the ... patent is invalid for
failure to claim statutory subject matter under 35 U.S.C. § 101 is a matter of
both claim construction and statutory construction")))).
In Kane, the Board reversed the rejection under § 101 because the
examiner found that to overcome the rejection "the fund transfer should be
done by the computer or machine not via network or device," but the Board
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decided a detailed claim construction was required to explain why the
claimed process would pass § 101 muster if performed by a "computer or
machine," but not where performed "via a device linked to an electronic
network," as claimed. Kane, slip op. at 5. Appellants argue the present
Examiner failed to properly construe the claimed "product information." Br.
35. However, Appellants fail to show how a "proper" construction of that
term might alter an analysis under§ 101 in the present case. See Br. 35-36.
Mayo-Alice Step 1.
As noted above, the Supreme Court has instructed us to use a two-step
framework to "distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. At the first step,
we determine whether the claims at issue are "directed to" a patent-ineligible
concept. Id.
The Examiner determines Claim 1 "generally describes the concept of
managing relationships and social activities such as ... connecting users via
third party social communit[ies] and routing [ and] transmitting messages
amongst users" and, thus, is directed to the abstract idea known as "Certain
Methods of Organizing Human Activity." Final Act. 3 (boldface omitted).
The Examiner further determines that steps 1 through 7 of the claimed
method recite accessing various databases, determining relationships, and
transmitting messages. Id. at 3--4. The Examiner concludes these method
steps are directed to the abstract idea of collecting and comparing known
information. Id. at 4.
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Appellants contend each of independent Claims 1, 11, and 29 is not
abstract and discuss the claims in terms of the Federal Circuit's holding in
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016):
First, as identified by the Federal Circuit in Enfish, each of
claims 1, 11, and 29 is directed to a support/service center that
compares a pair of purchased/registered products to determine
whether they are related products based on product information
stored in a specialized product database, where "product
information" set forth in claim 1 is directed to at least one of
"(e.g., barcode, UPC code, or serial number) ... [or] product
identifier (e.g., machine-readable code), ... obtained and
compiled by the service center in response to a machine-
readable code received during the registration [ of a product]."
See, e.g., claim 1 and originally filed specification, paragraphs
[0053] and [0061].
Br. 38 (boldface omitted). However, we find Appellants thus admit the
claims are directed to comparing known information by explicitly stating
that "each of claims 1, 11, and 29 is directed to a support/service center that
compares a pair of purchased/registered products to determine whether they
are related products based on product information stored in a specialized
product database." Id.
The Examiner's Answer responds to Appellants' contentions. See
Ans. 6-9. The Examiner determines the claims collect and compare known
information and analogizes the claims to those of Classen.5 Ans. 8.
Appellants do not file a reply and do not persuade us the claims are
not directed to an abstract idea.
5 Classen Immunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011).
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Mayo-Alice Step 2.
Where, as here, the claims are "directed to" a patent-ineligible
concept, we then "consider the elements of each claim both individually and
'as an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quoting Mayo Collaborative Services v. Prometheus
Labs., Inc., 566 U.S. 66, 79, 78 (2012)). This analysis has been
characterized as the search for an "inventive concept"- something
sufficient to ensure that the claim amounts to "significantly more" than the
abstract idea itself. Id. (quoting Mayo, 566 U.S. at 72-73).
The Examiner determines the claimed method generically recites steps
of "accessing," determining," "maintaining," and "transmitting" information
and whether viewed individually or as a whole the claimed method merely
applies abstract ideas to a generic computer. Final Act. 5. "Whether a
combination of claim limitations supplies an inventive concept that renders a
claim 'significantly more' than an abstract idea to which it is directed is a
question of law." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018).
Appellants contend the claims recite "significantly more" than an
abstract idea because the claims are "specialized for the function of
'providing life cycle support services for a product' and are not similar to
performing repetitive calculations." Br. 56 (boldface omitted). Appellants
argue that similar to the case of DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014), the claims address an internet-centric
challenge in a manner that is inextricably tied to a computer. Br. 57.
The Examiner finds the computer functions of receiving and
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transmitting data over the internet are "well-understood, routine, and
conventional functions," which thus are not significantly more than the
abstract idea. Ans. 9--10 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716-17 (Fed. Cir. 2014)).
Appellants do not reply to the Answer and fail to persuade us the
Examiner has erred in rejecting Claims 1, 11, and 29 under 35 U.S.C. § 101.
Claims 2 and 12: Ineligible Subject Matter.
Appellants argue dependent Claims 2 and 12 as a group and designate
Claim 2 as representative. Br. 64.
The Examiner determines Claim 2 and 12 merely add further details
of the abstract steps recited in Claims 1 and 11 without including an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment. Final Act. 5-6.
Appellants contend that at least one of the limitations set forth in each
of Claims 2 and 12 recites significantly more because each of Claims 2 and
12 is directed to solving a business challenge that is particular to
communications networks as identified by DDR Holdings. Br. 65 (citing
773 F.3d at 1257).
We are not persuaded. Appellants do not cite specific claim language,
nor demonstrate how the claims specifically improve a technological
function. Rather, Appellants describe the claims at an impermissibly "high
level of abstraction," such that they are "untethered from the language of the
claims." Enfzsh, 822 F.3d at 1337.
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CLAIMS 3 AND 13: INELIGIBLE SUBJECT MATTER.
Appellants argue dependent Claims 3 and 13 as a group and designate
Claim 3 as representative. Br. 66.
The Examiner determines Claim 3 and 13 merely add further details
of the abstract steps recited in Claims 1 and 11 without including an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment. Final Act. 5-6.
Similarly as for Claims 2 and 12, Appellants contend that at least one
of the limitations set forth in each of Claims 3 and 13 recites significantly
more because each of Claims 3 and 13 is directed to solving a business
challenge that is particular to communications networks as identified by
DDR Holdings. Br. 67.
We are not persuaded. Appellants do not cite specific claim language,
nor demonstrate how the claims specifically improve a technological
function. Rather, Appellants describe the claims at an impermissibly "high
level of abstraction," such that they are "untethered from the language of the
claims." Enfzsh, 822 F.3d at 1337. By way of specific example, Appellants
argue that:
a one-touch application on the mobile device can serve as a
central service point to a support center that provides support
services to a variety of products or services provided by a
variety of vendors that are independent of each other over a
communications network using a variety of communications
channels.
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E.g., Br. 68. However, none of Claims 1-3, 12, or 13 recites "a one-touch
application." Appellants' argument is not commensurate in scope with the
claims, which do not recite "a one-touch application." See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims.").
CLAIMS 4, 6, 14, AND 24: INELIGIBLE SUBJECT MATTER.
Appellants argue dependent Claims 4, 6, 14, and 24 as a group and
designate Claim 4 as representative. Br. 68.
Appellants also separately group Claims 5 and 23, 7-10 and 25-28,
and 30-32, but present substantially identical arguments for each group. Br.
71-77. Indeed, Appellants' arguments substantially reprise those presented
above, which cite Enfzsh. See Br. 69-70.
For the reasons discussed above, we are not persuaded the Examiner
errs.
CLAIMS 1, 11, AND 29:
OBVIOUSNESS OVER NOVAK, RATHOD, AND VERNAL.
Appellants argue independent Claims 1, 11, and 29 as a group and
designate Claim 1 as representative. Br. 77, 107.
The Examiner finds Novak teaches, inter alia, a method and system
for routing messages among users comprising several elements of the
claimed method. Final Act. 7-13. The Examiner finds several claimed
elements, not taught by Novak are taught by Rathod. Final Act. 15-17.
Finally, the Examiner finds those elements not taught by the combination of
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Novak and Rathod are taught by Vernal. Final Act. 18-20. The Examiner
provides a statement of motivation to synthesize the Novak, Rathod, and
Vernal teachings. Id.
Appellants contend that each of Novak, Rathod, and Vernal fails to
disclose:
maintaining, at a first computer server associated with a support
center, a user database having a plurality of user accounts
associated with a plurality of users who have registered a
plurality of products with the support center, wherein the first
computer server is to provide support services to the users
concerning the products on behalf of a plurality of vendors that
provide the products; ... accessing by the analysis module a
product database maintained by the first computer server to
determine whether the first product and the second product are
related products based on product information stored in the
product database; in response to determining that the first
product and the second product are related products, accessing,
by a social posting engine hosted by the first computer server,
the first user account and the second user account respectively
to determine whether the first user and the second user are
members of a first social community, wherein the first social
community is hosted by a second computer server that is
communicatively coupled to the first computer server via a first
an application programming interface (API) of the first
computer server, wherein the first social community is hosted
by a third party that is independent from the support center over
a network; ... transmitting, by the social posting engine via a
second API of the first computer server over the network, a first
message to a first mobile application running within a first
mobile device associated with the first user to invite the first
user to connect with the second user via the first social
community ... ; transmitting, by the social posting engine via
the second API of the first computer server, a second message
to a second mobile application running within a second mobile
device associated with the second user to invite the second user
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to connect with the first user via the first social community
... ,[] as set forth in [independent C]laim 1.
Br. 80-81.
Appellants characterize the disclosures of Novak and allege
shortcomings therein. Br. 81-96. Appellants characterize the disclosures of
Rathod and allege shortcomings therein. Br. 96-100. Appellants
characterize the disclosures of Vernal and allege shortcomings therein.
Br. 100-04.
We find that Appellants have failed to present substantive arguments
and supporting evidence persuasive of Examiner error regarding the
aforementioned disputed limitations. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule
41.3 7 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art."). For example, Appellants
contend "Novak discloses a gaming environment for a gaming and media
console that provides a multi-player service that hosts a multi-player game
for multiple players," but that "Novak lacks any disclosure of 'a first
computer associated with a support center."' Br. 83.
Appellants fail to engage the Examiner's case. To find a first
computer server associated with a support center, the Examiner cites the
Abstract, Figure 3, and paragraphs 2 and 3 of Novak. Final Act. 7. The
Examiner finds a single service provider is taught by the combination of the
multi player network service and the network service provider. Id. ( citing
Novak ,r 45). However, Appellants contend that "[a]t best, Novak discloses
a gaming environment for a gaming and media console that provides a
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multi-player service that hosts a multi-player game for multiple players."
Br. 83. We disagree with Appellants.
.;:.
'"
.....
Figure 3 of Novak is reproduced below.
1 ~'fl.iJ:.,f::,$:t~~ l ,,,,,K,
.. ,.
P~<;:~f ::Sl~G
f)~V;{.f:
!_ _______ Ml,{ _______ _
FIG. 3
Novak Figure 3 is a block diagram of an exemplary operating environment
for enabling users to participate in a multiplayer game based on user intent.
Novak discloses:
FIG. 3 is a block diagram of an environment for performing the
operations of disclosed technology. In one example, multiple
processing devices 300A-300X are coupled to a network 307
and can communicate with a multiplayer network service 302
having one or more server(s) 304 via network 307. The
processing devices 300A-300X may include a gaming and
media console, a personal computer, or one or more mobile
devices such as, for example, a cell phone, a web-enabled smart
phone, a personal digital assistant, a palmtop computer or a
laptop computer. Also present and coupled to the network is a
network service provider 350. In one embodiment, network
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307 comprises the Internet, though other networks such as LAN
or WAN are contemplated. The server( s) 304 also includes a
communication component capable of receiving information
from and transmitting information to processing devices 300A-
X and provides a collection of services that applications
running on processing devices 300A-X may invoke and utilize.
For example, the server(s) 304 in the multi player network
service 302 may manage a plurality of multiplayer activities
concurrently by aggregating events from users executing one or
more applications on the processing devices 300A-X. The
multiplayer network service 302 and the network service
provider 350 may be combined and offered by a single service
provider and/ or on a single server.
Novak ,r 45.
Motivation.
Appellants contend a person of ordinary skill in the art would have
lacked motivation to combine the references. Br. 104. Appellants
characterize Vernal as related to a social network system and characterize
Rathod as relating to a brands social network. Id. Appellants argue the
network systems of Vernal and Rathod are completely unrelated to the
"gaming and media console as disclosed by Novak." Id. Appellants'
argument overlooks the gaming network disclosed by Novak. Appellants
argue the Examiner's proposed combination could not work because of
alleged incompatibilities between Novak's gaming console (impliedly a
stand-alone device) and the various networks of the remaining references.
See Br. 104---05. We are not convinced because Appellants' analysis omits
Novak's network. See Novak, Figure 3.
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CLAIMS 2 AND 12: OBVIOUSNESS OVER NOVAK,
RATH OD, VERNAL, BIOLCHINI, AND KELLY. 6
Appellants argue Claims 2 and 12 as a group and designate Claim 2 as
representative. Br. 108. Appellants contend their foregoing arguments, with
respect to Claim 1, have demonstrated the combination of Novak, Rathod,
and Vernal fails to disclose "at least one of the claim limitations set forth in
claim 2." Br. 109. We disagree in view of our foregoing discussion.
Appellants further contend the Examiner found the combination of Novak,
Rathod, Vernal, and Biolchini fails to disclose:
in response to the third message, retrieving by the social posting
engine from the fist [sic] user account of the user database first
credentials associated with the first user for accessing the first
social community ... [ and] retrieving by the social posting
engine from the first user account of the user database second
credentials associated with the first user for accessing the
second social community,[] as set forth in [C]laim 2.
Br. 109. Appellants next summarily conclude:
Therefore, Appellants respectfully submit that a
combination of Novak, Rathod, Vernal, Biolchini, and Kelly
fails to disclose "in response to the third message, retrieving by
the social posting engine from the first user account of the user
database first credentials associated with the first user for
accessing the first social community; ... retrieving by the
social posting engine from the first user account of the user
database second credentials associated with the first user for
accessing the second social community; and transmitting by the
social posting engine a third post request having the third
message and the second credentials to a third computer server
6 Claims 2, 12, and 30 stand rejected under 35 U.S.C. § 103(a) over Novak,
Rathod, Vernal, Biolchini, and Kelly. Final Act. 20--27. However,
Appellants choose an alternative grouping to argue the claims. See Br. 108.
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hosting the second social community to allow the second social
community to authenticate the first user and to post the third
message within the second social community," as set forth in
claim 2.
Br. 109 ( emphasis added).
We are not persuaded because Appellants' arguments mischaracterize the
Examiner's findings. For example, Appellants argue:
The "social networking communication interface system" and
social networking servers 120 and 130 disclosed by Biolchini
cannot be equated with "in response to the third message,
retrieving by the social posting engine from the first user
account of the user database first credentials associated with the
first user for accessing the first social community; .... "
Br. 110 (boldface omitted). Appellants are not persuasive, at least in part,
because the Examiner finds:
Kelly [ not Biolchini as alleged by Appellants] teaches the
general concept of retrieving from the first user account of the
user database first credentials associated with the first user for
accessing the first social community (first social media system)
and retrieving the first user account of the user database second
credentials associated with the first user for accessing second
social community.
Final Act. 25 (italics omitted).
Appellants allege a lack of motivation to combine the references by
advancing an argument substantially similar to that we found not persuasive
with respect to that advanced for the independent claims. Compare Br. 112,
with Br. 106.
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CLAIMS 3 AND 13: OBVIOUSNESS OVER NOVAK,
RATHOD, VERNAL, AND 0MOIGUI.
Appellants argue Claims 3 and 13 as a group and designate Claim 3 as
representative. Br. 114. Appellants re-allege their prior arguments with
respect to Claim 1. In view of our prior discussion, we are not persuaded.
The Examiner finds Omoigui teaches the general concept of retrieving
from the first user account of the user database first credentials associated
with the first user for accessing the social community, without prompting the
first user for the same credentials. Final Act. 32; Ans. 65 ( citing Omoigui
if 134).
Appellants contend:
The "integrated implementation framework and resulting
medium for knowledge retrieval, management, delivery and
presentation" disclosed by Omoigui cannot be equated with
"retrieving by the social posting engine from the first user
account of the user database first credentials associated with the
first user for accessing the first social community, without
prompting the first user for the first credentials, .... "
Br. 115-16 (some emphasis omitted) (citing Omoigui, Abstract, ,r 64).
We are not persuaded by Appellants' mere conclusory statements.
Appellants cite to the Abstract and to paragraph 64 of Omoigui, but fail to
engage the Examiner's case, which cited paragraph 134.
CLAIMS 4, 6, 14, AND 24: OBVIOUSNESS OVER NOVAK,
RATHOD, VERNAL, 0MOIGUI, AND TREVITHICK.
Appellants argue these claims as a group and designate Claim 4 as
representative. Br. 118, 123. Appellants re-allege their prior arguments
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with respect to Claims 1 and 3. In view of our prior discussion, we are not
persuaded.
Appellants contend:
The "user directed advertisement network" disclosed by
Trevithick cannot be equated with "accessing by the social
monitoring engine a first set of one or more delivery rules
associated with the first user stored in the first user account of
the user database to determine whether the third message
should be delivered to the first user; .... "
Br. 120 (some emphasis omitted).
The Examiner's Answer finds the disputed limitation is taught by the
combination of Novak, Rathod, Vernal, Omoigui, and Trevithick, but not by
Trevithick alone. Ans. 68---69 (citing Final Act. 33-38). We are not
persuaded the Examiner errs. "[O]ne cannot show non-obviousness by
attacking references individually where ... the rejections are based on
combinations of references." In re Keller, 642 F.2d 413,426 (CCPA 1981);
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
CLAIMS 5 AND 23: OBVIOUSNESS OVER NOV AK,
RATHOD, VERNAL, 0MOIGUI, AND TREVITHICK.
Appellants allege the shortcomings of Trevithick. See Br. 125-26.
The Examiner's Answer finds the disputed limitation is taught by the
combination of Novak, Rathod, Vernal, Omoigui, and Trevithick, but not by
Trevithick alone. Ans. 72 (citing Final Act. 33-36). We are not persuaded
the Examiner errs. "[O]ne cannot show non-obviousness by attacking
references individually where ... the rejections are based on combinations
of references." Keller, 642 F.2d at 426; Merck, 800 F.2d at 1097.
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CLAIMS 7 AND 25: OBVIOUSNESS OVER NOVAK,
RATHOD, VERNAL, 0MOIGUI, AND TREVITHICK.
Appellants allege the shortcomings of Trevithick. See Br. 129--31.
The Examiner's Answer finds the disputed limitation is taught by the
combination of Novak, Rathod, Vernal, Omoigui, and Trevithick, but not by
Trevithick alone. Ans. 76 (citing Final Act. 37-38). We are not persuaded
the Examiner errs. "[O]ne cannot show non-obviousness by attacking
references individually where ... the rejections are based on combinations
of references." Keller, 642 F.2d at 426; Merck, 800 F.2d at 1097.
CLAIMS 8, 9, 26, AND 27: OBVIOUSNESS OVER NOVAK,
RATHOD, VERNAL, 0MOIGUI, TREVITHICK, KRAPF, AND TAWAKOL.
Appellants contend the Examiner has found that a combination of
Novak, Rathod, Vernal, Omoigui, Trevithick, and Krapf fails to teach:
transmitting by the message monitoring module a result of the
analysis to the third computer server associated with the first
vendor to allow the first vendor determining subsequent
actions,[] as set forth in claim 8.
Br. 135 (emphasis omitted) (citing Final Act. 41). Given this understanding
of the Examiner's findings, Appellants further contend that neither Krapf,
nor Tawakol, completes the teaching. Br. 137.
The Answer finds Appellants mischaracterize the Final Action
findings. Ans. 80 ( citing Final Act. 40).
Appellants do not file a reply to this or any other portion of the
Answer and are not persuasive of Examiner error.
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CLAIMS 10 AND 28: OBVIOUSNESS OVER NOVAK, RATHOD, VERNAL,
0MOIGUI, TREVITHICK, KRAPF, TAWAKOL, AND WEN.
Appellants contend the Examiner finds the combination of Novak,
Rathod, Vernal, Omoigui, Trevithick, Krapf, and Tawakol fails to disclose:
wherein the first product was registered by transmitting a
machine readable code uniquely identifying the first product
from the first mobile device to the first computer server,
wherein the machine-readable code was obtained by scanning
the first product using a scanner of the first mobile device, and
wherein the first computer server is configured to compile the
detailed information of the first product without the first user
specifically providing detailed information of the first product.
Br. 140 ( emphasis omitted) ( citing Final Act. 42).
The Examiner disagrees with Appellants' characterization of the Final
Action findings and maintains the combination of references, including
Wen, in fact teaches the disputed limitation. Ans. 84 (citing Final Act. 42-
43). The Examiner finds Appellants only contest the field of invention of
Wen, but ignore the fair teachings of Wen. Id.
Appellants do not reply to the Examiner's findings in the Answer and
so fail to persuade us the Examiner has erred.
CLAIMS 30: OBVIOUSNESS OVER NOVAK, RATHOD,
VERNAL, BIOLCHINI, AND KELLY.
Appellants argue Claims 30--32 as a group and designate Claim 30 as
representative. 7 Br. 144.
7 Notwithstanding grouping Claims 30--32 together (see Br. 144), Appellants
argue claims 31 and 32 under a separate header. See Br. 148-53.
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Appellants contend the combination ofNovak, Rathod, Vernal,
Biolchini, and Kelly fails to disclose:
identifying the first product based on the first post request,
wherein the first post request includes information identifying
the first product; determining a discussion thread of the first
community associated with the first product, wherein members
of the discussion thread discuss the first product; and
transmitting the second post request to the second computer
server to request the third message to be posted within the
discussion.
Br. 145. Appellants further contend Kelly's disclosure of "social media
based messaging systems" cannot be taken to teach:
identifying the first product based on the first post request,
wherein the first post request includes information identifying
the first product; determining a discussion thread of the first
community associated with the first product, wherein members
of the discussion thread discuss the first product; and
transmitting the second post request to the second computer
server to request the third message to be posted within the
discussion,[] as set forth in [C]laim 30.
Br. 146.
The Answer explains, however, that the Examiner has not cited Kelly
to teach the disputed limitations. Ans. 88. Instead, the Examiner cites
Biolchini in combination with the other references to address the recited
identifying. Final Act. 26 ( citing Biolchini Figs. 1-2, ,r,r 19-20). As for
Biolchini, the Examiner finds Appellants only contest the field of invention
of Biolchini, but ignore the teachings of Biolchini. Ans. 88. Essentially,
Appellants argue the references are not from analogous fields and so are not
eligible to be combined. "Two separate tests define the scope of analogous
prior art: ( 1) whether the art is from the same field of endeavor, regardless of
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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. " In re Klein, 64 7
F.3d 1343, 1348 (Fed. Cir. 2011). We find the references are at least,
"reasonably pertinent."
Appellants do not reply to the Examiner's findings in the Answer and
thus, we are not persuaded the Examiner errs.
CLAIMS 31 AND 32: OBVIOUSNESS OVER NOVAK, RATHOD,
VERNAL, BIOLCHINI, KELLY, SHAH, AND PETER.
Appellants contend the cited art fails to teach "monitoring, by a social
monitoring engine hosted by the first computer server by communicating
with the second computer server, messages posted by the members within
the discussion thread." Br. 149--50. Appellants first argue the shortcomings
of Shah. See Br. 150. Appellants next argue Peters similarly fails to teach
the disputed limitation. See Br. 151.
The Examiner finds the combination of Shah and Peters, not Shah or
Peters alone, teaches the disputed limitation. Ans. 91.
Appellants do not reply to the Examiner's findings in the Answer and
so fail to persuade us the Examiner has erred.
DECISION
The rejection of Claims 1-14 and 23-32 under 35 U.S.C. § 112 is
AFFIRMED.
The rejection of Claims 1-14 and 23-32 under 35 U.S.C. § 101 is
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AFFIRMED.
The rejections of Claims 1-14 and 23-32 under 35 U.S.C. § 103 are
AFFIRMED.
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. § 4I.50(f).
AFFIRMED
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