Jonathan F. Brunn et al.

Patent Trials and Appeals Board

Aug 7, 2019

15146659 - (D) (P.T.A.B. Aug. 7, 2019)

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.
15/146,659 05/04/2016 Jonathan F. Brunn RSW920150015US2 4500
75949 7590 08/07/2019
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
EXAMINER
OHRI, ROMANI
ART UNIT PAPER NUMBER
2413
NOTIFICATION DATE DELIVERY MODE
08/07/2019 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@fabianvancott.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN F. BRUNN and JENNIFER HEINS1
____________

Appeal 2018-002990
Application 15/146,659
Technology Center 2400
____________

Before DENISE M. POTHIER, JENNIFER S. BISK, and
LARRY J. HUME, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which are all the claims pending in this
application. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm-in-part.

1 Appellants identify the real party in interest as International Business
Machines Corporation. Appeal Br. 2.
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BACKGROUND2
Appellants’ invention relates generally to “forming a group of users,
and more specifically, to forming the group of the users for a conversation.”
Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to the contested limitation discussed below):
1. A method for forming a group of users for a
conversation, the method comprising:
determining when users are accessing information
associated with each other;
maintaining a group of the users, the group of the users
representing a transitive closure over a viewing relationship of
the information;
displaying, via a display of the user device, digital
representations of the users in the group accessing the
information; and
initiating, based on an action of at least one of the users
in the group of the users, a conversation.
Appeal Br. 30 (Claims App’x).
REJECTIONS 3
A. Claims 1–9 and 11–19 are provisionally rejected for nonstatutory
obviousness-type double patenting as being unpatentable over claims

2 Throughout this Decision we have considered the Specification filed May
4, 2016 (“Spec.”), the Final Rejection mailed April 6, 2017 (“Final Act.”),
the Appeal Brief filed September 13, 2017 (“Appeal Br.”), the Examiner’s
Answer mailed December 1, 2017 (“Ans.”), and the Reply Brief filed
January 26, 2018 (“Reply Br.”)
3 The Examiner withdrew the rejection of claims 1–20 under 35 U.S.C.
§ 101 as being directed to a judicial exception, without significantly more.
Ans. 2; Final Act. 2.
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9–14 and 17–28 of copending Application No. 14/701,058.4 Final
Act. 5–19.
B. Claims 1–3, 5–7, 9–13, 15, and 16 are rejected under 35 U.S.C. § 103
as being obvious over the combined teachings and suggestions of
Dunn et al. (US 2013/0263021 A1, published Oct. 3, 2013) and Jessup
et al. (US 2013/0268377 A1, published Oct. 10, 2013), hereinafter
referred to as Dunn and Jessup, respectively. Final Act. 14.
C. Claims 4 and 14 are rejected under 35 U.S.C. § 103 as being obvious
over the combined teachings and suggestions of Dunn, Jessup, and
Hodgson (US 2016/0189407 A1, published June 30, 2016)
(hereinafter “Hodgson”). Final Act. 34.
D. Claims 8, 18, and 20 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Dunn,
Jessup, and Talukder (US 2012/0268553 A1, published Oct. 25, 2012)
(hereinafter “Talukder”). Final Act. 34, 38.
E. Claims 17 and 19 are rejected under 35 U.S.C. § 103 as being obvious
over the combined teachings and suggestions of Dunn, Jessup, and Ma
(US 2014/0313282 A1, published Oct. 23, 2014) (hereinafter “Ma”).
Final Act. 37, 40.
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented and affirm the Examiner’s non-statutory obviousness-type double

4 A decision reversing the Examiner’s art rejection, for reasons similar to
those discussed here, in copending Application No. 14/701,058 was issued
September 14, 2018. Appeal No. 2018-003155. Further, we note that this
rejection is no longer provisional given the issuance of Application No.
14/701,058 as U.S. Patent No. 10,263,922 on April 16, 2019.
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patententing rejection of claims 1–9 and 11–20. However, we agree with the
Appellants that the Examiner has erred in rejecting claims 1–20 under 35
U.S.C. § 103 as being obvious over the cited combinations of references.
We highlight and address specific findings and arguments for emphasis in
our analysis below.
Rejection of Claims 1–9 and 11–19 for Nonstatutory Obviousness-Type
Double Patenting
The Examiner rejects claims 1–9 and 11–19 on the ground of non-
statutory obviousness-type double patenting. Final Act. 5–19.
Appellants do not address this ground on the merits, but request “this
rejection be held in abeyance until the claims are otherwise in condition for
allowance.” Appeal Br. 18; Reply Br. 5. The Examiner does not address
this rejection in the Answer and has not officially withdrawn the rejection in
any other communication of record.
We, therefore, pro forma affirm the Examiner’s rejection of
claims 1–9 and 11–20 on the ground of non-statutory obviousness-type
double patenting.
Rejection of Claims 1–20 under § 103
Both independent claims 1 and 12 recite “determining when users [on
a computer network] are accessing information associated with each other”
(“the contested limitation”). Appeal Br. 30–31 (Claims App’x). The
Examiner points to Jessup as disclosing this limitation. Final Act. 20–21
(citing Jessup ¶¶ 103–105, Fig. 5). According to the Examiner:
The group member information 520 can be configured to display
the names of the members of the groups, a picture of the members
of the group, and/or other information that can be used to identify
group members. The group member information 520 can display
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the users who were invited to join the group in the group invitees
field 315 of the create group interface 300 and accepted the
invitation to join the group. Those who accept the invitation can
be added to the group and if they are currently not a user of the
gift collaboration system, a new user account can be created for
them upon accepting the application to join the group.
Id.; Ans. 3.
Appellants argue that “Jessup at most describes groups of users,
but makes no mention of any determination as to ‘when users are
accessing information associated with each other.’” Appeal Br. 20.
Appellants further explain “merely indicating what users are in a
group is in no way the same as determining or indicating when users
are accessing information associated with each other.” Reply Br. 6
(emphasis added).
We agree with Appellants that nothing in the record shows that
any of the relied upon portions of Jessup, including Jessup’s group
member information 520, teaches or suggests the claimed temporal
limitation of “determining when users are accessing information
associated with each other,” as required by the language of
independent claims 1 and 12. Nor do we find any other specific
mapping of this limitation by the Examiner.5 Therefore, we reverse
the rejection of claims 1 and 12 as obvious over the combination of
Dunn and Jessup. We also reverse the rejection of dependent claims

5 See 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence
of each reference, if not apparent, must be clearly explained and each
rejected claim specified.” (emphasis added).
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2, 3, 5–7, 9–11, 13, 15, and 16, which depend directly from claims 1
or 12, as obvious over the combination of Dunn and Jessup.
The Examiner rejected claims 4 and 14 over the combination of
Dunn, Jessup, and Hodgson; claims 8, 18, and 20 over the
combination of Dunn, Jessup, and Talukder; and claims 17 and 19
over the combination of Dunn, Jessup, and Ma. Each of these claims
depends directly from either claim 1 or claim 12 and the Examiner’s
explanation for the prior art disclosure of the contested limitation is
based on the same reasoning as given for the rejections of claims 1
and 12. See Final Act. 34–40. The Examiner does not rely on the
additional references as disclosing any portion of the contested
limitation. Id. Thus, for the same reasons described above for claims
1 and 12, we reverse the rejection of claims 4, 8, 14, and 17–20 as
obvious over the cited combinations of references.
DECISION
We affirm the Examiner’s decision rejecting claims 1–9 and 11–19 for
nonstatutory obviousness-type double patenting.
We reverse the Examiner’s decision rejecting claims 1–20 under 35
U.S.C. § 103.
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)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART