Stern, Edith H. et al.

Patent Trials and Appeals Board

Dec 21, 2020

2019004400 (P.T.A.B. Dec. 21, 2020)

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.
11/873,114 10/16/2007 Edith H. Stern RSW920070184US1 1047
106324 7590 12/21/2020
IBM Corp. - Fishkill Drafting Center
SVL
650 Harry Road, Almaden Research Center
C4TA/J2B
San Jose, CA 95120
EXAMINER
MITIKU, BERHANU
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
12/21/2020 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):
fdciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDITH H. STERN, PATRICK J. O’SULLIVAN,
ROBERT C. WEIR, and BARRY E. WILLNER
____________

Appeal 2019-004400
Application 11/873,114
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–6, 13–17, and 20–27. Claims 7–12, 18, and 19 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2019). According to Appellant, the real party in interest
is the assignee of record, International Business Machines (IBM)
Corporation. See Appeal Br. 1.

Appeal 2019-004400
Application 11/873,114

2
STATEMENT OF THE CASE
Appellant’s claimed invention relates to “searching, and more
specifically to enabling collaborative networks in response to searching.”
Spec. ¶ 1. Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method for providing collaborative resources
comprising:

receiving a search expression from a user;

identifying at least one keyword from the search
expression;

determining at least one person resource responsive to
the identifying of the at least one keyword and using
information related to the user including previously indexed
Email correspondence of the user, a level of experience of the
user, and an organization position of the user, [L1] wherein
determining the at least one person resource comprises
creating a collaborative resource list of individuals that have
something in common with the user using at least the at least
one keyword;

ranking individuals in the collaborative resource list of
individuals based on at least a number of prior communication
exchanges between each individual in the collaborative
resource list of individuals and prior users that are indicated by
the prior users as satisfactory;

including a particular individual in the collaborative
resource list of individuals based on the ranking of the
particular individual from the prior communication exchanges
with prior users; and

providing an indication of the at least one person resource
to the user, wherein providing the indication of the at least one
Appeal 2019-004400
Application 11/873,114

3
resource comprises presenting the collaborative resource list of
individuals to the user based on the ranking, wherein presenting
the collaborative resource list of individuals comprises
presenting presence information for each individual in the
collaborative resource list, [L2] the presence information
comprising subjects or topics for which each individual in the
collaborative resource list is receptive to receiving ad hoc
requests.

Appeal Br. 9, claim 1, Claims Appendix (Disputed limitations L1 and
L2 emphasized).

Evidence Relied Upon by the Examiner

Name Reference Date
Gunasekar et al.
“Gunasekar”
US 2005/0034079 Al Feb. 10, 2005
Kraft et al.
“Kraft”
US 6,938,068 B1 Aug. 30, 2005
Brave et al.
“Brave”
US 2007/0150470 Al Jun. 28, 2007

Rejection
Claims Rejected 35 U.S.C. § Reference(s)/Basis
17, 20–22, 25, 26 103(a)

Brave, Kraft, Gunasekar

Prior Decision
PTAB Appeal 2011-007233, Application No. 11/873,114, decided
December 12, 2013. The Examiner was affirmed over a different claim 1
and over different references than relied upon in this appeal.
Appeal 2019-004400
Application 11/873,114

4
Grouping of Claims
Based upon Appellant’s arguments, and our discretion under 37
C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the rejection of claims 1–6,
13–17, and 20–27 on the basis of representative claim 1.
ANALYSIS
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, the doctrine of forfeiture applies.2 See 37 C.F.R. § 41.37(c)(1)(iv).

We have reviewed Appellant’s arguments in the Appeal and Reply
Briefs, the Examiner’s rejections in the Final Office Action, and the
Examiner’s responses in the Answer to Appellant’s arguments. We
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.

2 See In re Google Technology Holdings LLC, 2020 WL 6685948, slip op.
at * 3 (Fed. Cir. 2020):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
Appeal 2019-004400
Application 11/873,114

5
ANALYSIS
Rejection of Claim 1 under 35 U.S.C. § 103(a)
Under pre-AIA 35 U.S.C. § 103(a), we focus our analysis on the
following argued limitations L1 and L2, regarding the rejection of
representative independent claim 1:

Issue: Did the Examiner err by finding that Brave, Kraft, and
Gunasekar collectively, teach or suggest the disputed limitations L1 and L2:
[L1] wherein determining the at least one person
resource comprises creating a collaborative resource list of
individuals that have something in common with the user using
at least the at least one keyword;

[L2] the presence information comprising subjects or
topics for which each individual in the collaborative resource
list is receptive to receiving ad hoc requests[,]
within the meaning of independent claim 1? 3 (emphasis added).
Claim 1, Limitation L1
Appellant disputes the Examiner’s findings regarding limitation L1.
See Appeal Br. 4. Appellant notes that the Examiner principally relied upon
paragraph 212 of Brave to teach or suggest:
[L1] wherein determining the at least one person resource
comprises creating a collaborative resource list of individuals
that have something in common with the user using at least the
at least one keyword;
Claim 1 (emphasis added).

3 Throughout this opinion, we give the contested claim limitations the
broadest reasonable interpretation (BRI) consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2019-004400
Application 11/873,114

6
Appellant contends that Brave does not teach limitation L1 because:
Brave simply teaches bringing together any given group
of users and determining their collective opinion on a document
by combining or summing every user’s usage vector for the
group of anonymous users to create a collective view of the
document. The sum of every user’s vector is the global vector.
Therefore, Brave teaches a global vector which is the sum of the
group of anonymous user’s usage vectors associated with the
document and not a collaborative resource list as recited in claim
1. Accordingly, Brave fails to teach or suggest “wherein
determining the at least one person resource comprises creating
a collaborative resource list of individuals that have something
in common with the user using at least the at least one keyword”
as recited in claim 1. Additionally, Brave teaches that the group
of users are anonymous. Therefore, Brave clearly does not teach
or suggest “a collaborative resource list of individuals” as
recited in claim 1. Kraft and Gunasekar also fail to teach or
suggest these features of claim 1.
Appeal Br. 5 (emphasis added).
The Examiner disagrees with Appellant (id.), and further explains the
evidentiary basis for the rejection:
Brave at [Figure 10] discloses creating a collaborative resource
list. For instance, see [Figure 10] the displayed screen showing a
user library, in this case “My Library for Dave”. My Library
for Dave listed experts on various subjects and topics. Expert
related to Sales, “My library for Dave” listed Sam as an expert.
Expert related to Marketing “My library for Dave”, listed Mark
as an expert. The aforementioned experts listed under “Trusted
Experts”. On the other related to “My Indirect Experts”, My
library for Dave” listed Ganesh as an expert for Engineering and
Tina listed as a marketing expert. Thus unlike the Appellant's
argument, Brave discloses creating a collaborative resources
(experts) list.
Ans. 4.
Appeal 2019-004400
Application 11/873,114

7
The Examiner finds that “Brave, explicitly discloses at paragraphs
[0119] - [0120] the process of identifying collaborative resources (experts) is
based on search terms utilized.” Ans. 4–5. The Examiner also relies upon
Brave’s paragraph 213. See Ans. 5. The Examiner additionally finds:
“Brave clearly discloses that determining a person of resource with
knowledge of subject matter is based on using keyword or search
expression. In addition, as seen in [Figure 10 an] [i]ndividual with subject
matter knowledge (expert) list is created.” Id.
Turning to the evidence, we note that Brave, at paragraph 120,
describes in pertinent part:
The theory behind this search processor is that if a user can
identify experts in a particular subject, then documents that
those experts find interesting, i.e. that appear in the experts’
libraries, are presumably of interest to the user as well when
conducting a search in that subject. Furthermore, it is assumed
that expert relationships are transitive. Thus, if user A considers
user B to be an expert on some topic, and user B considers user
C to be an expert on the same topic, then user A would consider
user C to be an expert on that topic as well, even though user A
does not necessarily know user C.
Brave, ¶ 120. (emphasis added).
Regarding the claim term “collaborative resource list of individuals
that have something in common with the user” (claim 1), we find no limiting
or explicit definition is provided in the Specification for the collaborative
resource list, nor has Appellant argued any limiting definition. In this
context, we emphasize that, because “applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Appeal 2019-004400
Application 11/873,114

8
Under a broad but reasonable interpretation of claim 1, we conclude
that the scope of the claim 1 limitation “collaborative resource list of
individuals that have something in common with the user” broadly
encompasses a list that has one or more individuals who have anything in
common with the user. (emphasis added).
Given our claim construction and the evidence cited by the Examiner
(e.g., Brave, paragraphs 119, 120, 213, Figure 10), we find Brave teaches or
suggests disputed limitation L1: “[L1] wherein determining the at least one
person resource comprises creating a collaborative resource list of
individuals that have something in common with the user using at least the
at least one keyword.” Claim 1 (emphasis added).

Claim 1, Limitation L2
Appellant also disputes the Examiner’s findings regarding limitation
L2 of claim 1, and notes that the Examiner principally relies upon paragraph
119 of Gunasekar to teach or suggest the limitation: “[L2] the presence
information comprising subjects or topics for which each individual in the
collaborative resource list is receptive to receiving ad hoc requests.” 4

4 We note the use of alternative “or” language as recited in limitation L2 of
claim 1: “the presence information comprising subjects or topics.” When a
claim covers several alternatives, the claim may be unpatentable if any of the
alternatives within the scope of the claim are taught by the prior art. See
Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001); see also Schumer v.
Lab. Computer Sys., Inc., 308 F.3d 1304, 1311 (Fed. Cir. 2002) (citing
Brown v. 3M, 265 F.3d at 1352).

Appeal 2019-004400
Application 11/873,114

9
Appellant contends:
Gunasekar discloses a conference scheduling application 101
that provides a conferencing wizard. Gunasekar teaches that the
complementary options provided to the user by the conferencing
wizard may be affected by such factors as an assessment of
resources that will be available during the desired meeting time
... and schedule availability of invitees as may be determined in
real time by checking calendar information or presence
information. Appellant respectfully submits that there is no
teaching or suggestion in Gunasekar of “the presence
information comprising subjects or topics for which each
individual in the collaborative resource list is receptive to
receiving ad hoc requests” as recited in claim 1.
Appeal Br. 6.
As an initial matter of claim construction, we note that the claim 1
language “each individual in the collaborative resource list is receptive to
receiving ad hoc requests” involves ascertaining the subjective intent of an
individual. (emphasis added). We conclude that determining whether a given
individual may be “receptive” (or not receptive) “to receiving ad hoc
requests” (claim 1) involves the exercise of subjective judgment.
But a claim that requires the exercise of subjective judgment without
restriction may render the claim indefinite. See In re Musgrave, 431 F.2d
882, 893 (CCPA 1970). In particular, when a claim term “depend[s] solely
on the unrestrained, subjective opinion of a particular individual purportedly
practicing the invention,” without sufficient guidance in the specification to
provide objective direction to one of skill in the art, the term is indefinite.
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed.
Cir. 2005); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1373 (Fed. Cir. 2014) (holding the claim phrase “unobtrusive manner”
indefinite because the specification did not “provide a reasonably clear and
Appeal 2019-004400
Application 11/873,114

10
exclusive definition, leaving the facially subjective claim language without
an objective boundary”).
During prosecution, the applicant may overcome a rejection by
amending the claim to remove the subjective term, or by providing evidence
that the meaning of the term can be ascertained by one of ordinary skill in
the art when reading the disclosure. However, “[f]or some facially
subjective terms, the definiteness requirement is not satisfied by merely
offering examples that satisfy the term within the specification.” DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1261 (Fed. Cir. 2014).
Here, we bring the claimed subjective intent (“receptive to receiving
ad hoc requests”) to the attention of the Examiner. See claim 1 (emphasis
added). In the event of further prosecution, we leave it to the Examiner to
consider a rejection under pre-AIA 35 U.S.C. §112, second paragraph,
regarding whether the claim 1 limitation L2, is indefinite, because the claim
language “each individual in the collaborative resource list is receptive to
receiving ad hoc requests” involves determining the subjective intent of an
individual.5
Turning to the evidence, we note that Gunasekar describes, in
pertinent part:
The complement of options provided to the user by the conferencing
wizard may be affected by such factors as an assessment of resources
that will be available during the desired meeting time, the set of features
that the user is authorized to employ for conference scheduling,
capabilities and schedule availability of invitees as may be determined
in real time by checking calendar information or presence information,

5 Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b),
no inference should be drawn when the Board elects not to do so. See Manual
of Patent Examining Procedure (MPEP) § 1213.02.

Appeal 2019-004400
Application 11/873,114

11
or consulting of databases or directories or applications (organizational
chart, project tracking application, etc.) which determine a set of
invitees corresponding to a particular group or class of invitees.
Gunasekar ¶ 119 (emphasis added).
Although Appellant traverses (Appeal Br. 6) the Examiner’s findings
(Final Act. 6) regarding Gunasekar’s paragraph 119, Appellant does not
address in either of the Briefs the Examiner’s findings regarding
Gunasekar’s paragraph 54, which describes in pertinent part: “For example,
the indication of presence by a party via an instant communications client is
used to update presence information in the NS/RS 131.”6 (emphasis added).
As a matter of claim construction, the Examiner turns to Appellant’s
Specification for context regarding the intended meaning of the claim term
“presence information.” See Ans. 6. The Examiner finds that paragraph 30
of the Specification expressly describes: “Presence information relates to
whether a person is online or otherwise currently available (e.g., user may be
called now, emailed now, or may be sent an Instant Message (IM)).” Ans. 6
(citing Spec. ¶ 30).
Given that Gunasekar (paragraph 54) expressly teaches “the indication
of presence by a party via an instant communications client is used to update
presence information in the NS/RS 131,” we find a preponderance of the
evidence supports the Examiner’s finding that disputed limitation L2 of
claim 1 is at least suggested by the cited portions of Gunasekar, when
combined with the teachings and suggestions of Brave and Kraft.

6 In the Answer, the Examiner additionally supports the rejection by relying
upon Gunasekar at paragraphs 46, 47, 200, 201, and Figure 1, element 129,
and Figure 15, step 1513. See Ans. 6.

Appeal 2019-004400
Application 11/873,114

12
Regarding the collective teachings of Brave, Kraft, and Gunasekar, we
emphasize that “‘the question under 35 USC 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) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (emphasis added); see also
MPEP § 2123.
We note Appellant advances a “teaching away” argument in the Reply
Brief (3). However, we find this argument is untimely under 37 C.F.R.
§ 41.41(b)(2). We emphasize that the reply brief is not an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative).
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
37 C.F.R. § 41.41(b)(2).
To the extent that our reviewing court may find Appellant’s “teaching
away” argument is timely, we additionally emphasize that the “mere
disclosure of alternative designs does not teach away.” In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted). A teaching away
requires a reference to actually criticize, discredit, or otherwise discourage
the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). For at least this reason, we are not persuaded that Brave “teaches
away” from Appellant’s claimed invention.
Appeal 2019-004400
Application 11/873,114

13
Moreover, Appellant does not point to any evidence of record that
shows combining the respective teachings of Brave, Kraft, and Gunasekar in
the manner found by the Examiner (Final Act. 4–7) would have been
“uniquely challenging or difficult for one of ordinary skill in the art” or
would have “represented an unobvious step over the prior art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Therefore, on this record, we find the Examiner (Final Action 4–7)
has provided a sufficient “rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). Based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness regarding the
rejection of independent representative claim 1.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s obviousness rejection of independent representative claim 1 over
the collective teachings and suggestions of Brave, Kraft, and Gunasekar.
Remaining grouped claims 2–6, 13–17, and 20–27 fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).

CONCLUSION

The Examiner did not err in rejecting claims 1–6, 13–17, and 20–27
as being obvious under pre-AIA 35 U.S.C. § 103(a), over the cited
combination of Brave, Kraft, and Gunasekar.

Appeal 2019-004400
Application 11/873,114

14
DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 13–17,
20–27
103(a)

Brave, Kraft, and
Gunasekar
1–6, 13–17,
20–27

FINALITY AND RESPONSE
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