Vanek, Joseph M.

Patent Trials and Appeals Board

Jul 7, 2020

13617829 - (D) (P.T.A.B. Jul. 7, 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.
13/617,829 09/14/2012 Joseph M. Vanek VNK-10002/29 7201
131270 7590 07/07/2020
BELZER PC
ATTN: John G. Posa
2905 Bull St.
Savannah, GA 31405
EXAMINER
KIM, TAELOR
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
07/07/2020 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):
231patents@gmail.com
johnposa@gmail.com
jposa@belzerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH M. VANEK
___________

Appeal 2019-004148
Application 13/617,829
Technology Center 2100
_________________

Before JASON V. MORGAN, IRVIN E. BRANCH, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6 and 10–19.2 We have jurisdiction
under 35 U.S.C. § 6(b). Oral arguments were heard on June 18, 2020. A
transcript of that hearing will be added to the record in due time.
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as the
applicant/inventor Joseph M. Vanek. Appeal Br. 1.
2 Claims 7–9 are cancelled. Appeal Br. 11.
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CLAIMED SUBJECT MATTER
Invention
Appellant’s claimed subject matter relates to “automatically sharing
information between individuals who wish to become socially or
professionally ‘connected.’” Spec. ¶ 4.3
Exemplary Claim
Claim 1, the sole independent claim, is exemplary of the claimed
subject matter and is reproduced below with limitations at issue highlighted:
1. A method enabling people to discover shared
connections, comprising the steps of:
exchanging electronic communications between two
persons using separate electronic devices accessed by each
person, the communications including a request to share
connections from one of the persons, and an acceptance of the
request from the other person;
if the request is accepted, automatically and
independently accessing a computer network by the electronic
device of each person to establish a connection with a remote
computer;
automatically searching, by the remote computer,
multiple Internet websites and electronic databases with
contact lists to locate information common to, shared by, or

3 We refer to: (1) the originally filed Specification filed September 14, 2012
(“Spec.”); (2) the Non-Final Office Action mailed June 12, 2018 (“Non-
Final Act.”); (3) the Appeal Brief filed January 15, 2019 (“Appeal Br.”); (4)
the Examiner’s Answer mailed March 5, 2019 (“Ans.”); and (5) the Reply
Brief filed May 6 2019 (“Reply Br.”).
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linking the two persons; and, if such information is found
during the independent searches,
providing the information to both persons through their
electronic devices.
Appeal Br. 10 (APPENDIX).
REFERENCE AND REJECTION
The Examiner rejects claims 1–6 and 10–19 under pre-AIA
35 U.S.C. § 102(b) as anticipated by Ahuja (US 2010/0280904 A1,
published Nov. 4, 2010). Non-Final Act. 4–7.
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
We adopt as our own the findings and reasons set forth by the Examiner (1)
in the Non-Final Rejection (Non-Final Act. 4–7) and (2) in the Examiner’s
Answer (Ans. 3–12) and concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.
The Examiner finds Ahuja discloses “if the request is accepted,
automatically and independently accessing a computer network by the
electronic device of each person to establish a connection with a remote
computer,” as recited in claim 1. Non-Final Act. 5–6 (citing Ahuja ¶¶ 9, 43,
56, 62); Ans. 4–9 (citing Ahuja ¶¶ 45, 55, 56, 60–62, 99, 100).
Appellant argues that “in Ahuja, a computer network is not
automatically and independently accessed by the electronic device of each
person to establish a connection with a remote computer.” Appeal Br. 6.
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Appellant’s argument is unpersuasive. We agree with the Examiner’s
findings, noting that in Ahuja, “[i]f User 2 accepts the friend request, both
users are added in each other's friend’s list” and “if the two users Active
profile displays links of their accounts with similar networking sites,
MySpace, Facebook, and others, the device automatically sends ‘Friend
Request’ related to those Social Networking sites as well.” Ahuja ¶ 60.
Because Ahuja discloses each user device automatically connecting with
various social networking sites to send friend requests, we agree with the
Examiner that Ahuja discloses “automatically and independently accessing a
computer network by the electronic device of each person to establish a
connection with a remote computer” where the remote computer is for one
of the social networking sites, as recited in claim 1.
Appellant next argues that Ahuja fails to disclose “automatically
searching, by the remote computer, multiple Internet websites and electronic
databases with contact lists to locate information common to, shared by, or
linking the two persons,” as recited in claim 1. Of particular relevance,
Appellant argues
[i]n Ahuja information common to, shared by, or linking the
two persons is not found during independent searches, and the
information is not provided to both persons through their
electronic devices. Instead, to the extent Ahuja performs a
search, it is very limited, and the information is provided to a
social networking server.
Appeal Br. 8 (citing Ahuja ¶ 60).
The Examiner finds Appellant’s argument that shared information is
not provided to both users on the device unpersuasive “because the invention
is based on using a device to perform actions that can be executed by the
device itself or by a remote computer.” Ans. 11 (citing Ahuja ¶¶ 8, 44, 51).
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The Examiner further finds “[t]here are many teachings of providing
information to users through their respective electronic devices as above
noted because ‘Ahuja devices’ is based on using devices to perform certain
automated and manual functions.” Ans. 11.
Appellant’s arguments are unpersuasive of reversible Examiner error.
We agree with the Examiner that Ahuja discloses the claimed automatic
searching. As an example, Appellant fails to persuasively demonstrate error
in the finding that Ahuja’s X-Path server automatically searches multiple
websites and electronic databases to locate and update user profile or contact
information and provides the updated information to all of the user’s
devices. Non-Final Act. 6 (citing Ahuja ¶¶ 23, 45, 51, 97, 100); see also
Ans. 4 (citing Ahuja ¶ 99).
Furthermore, although we do not rely upon the following analysis to
affirm the Examiner’s rejection, we find Appellant’s arguments are not
commensurate with the scope of the claim. Under the broadest reasonable
interpretation of the claimed method steps, the following steps are only
performed if certain conditions precedent are met; and as such, the Examiner
does not have to find that the prior art discloses these method steps. Ex
parte Schulhauser, Appeal 2013-007847, 2016 WL 6277792, at *7–8 (Apr.
28, 2016) (precedential). Specifically, the steps of “automatically and
independently accessing a computer network by the electronic device of
each person to establish a connection with a remote computer,”
“automatically searching, by the remote computer, multiple Internet
websites and electronic databases with contact lists to locate information
common to, shared by, or linking the two persons,” and, “if such information
is found during the independent searches, providing the information to both
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persons through their electronic devices,” are conditional steps and thus, are
only performed “if the request is accepted.” Claim 1 (emphasis added).
More specifically, if the request is not accepted, none of the conditional
steps identified above will be performed. This claim interpretation is
supported by Appellant’s Figure 2, which shows that the claimed process
ends without establishing a connection with a remote computer if recipient
does not accept/verify the sender’s request. Even further, some of the
claimed conditional steps would only be performed if additional conditions
precedent were met (e.g., “providing the information to both persons through
their electronic devices” “if such information is found during the
independent searches” (claim 1 (emphasis added)). Accordingly, under a
broad but reasonable interpretation in light of binding precedent set forth in
Schulhauser, the claimed method would only encompass the step of
“exchanging electronic communications between two persons using separate
electronic devices accessed by each person, the communications including a
request to share connections from one of the persons, and an acceptance of
the request from the other person,” as recited in claim 1.
We, therefore, sustain the 35 U.S.C. § 102(b) rejection of independent
claim 1. We also sustain the Examiner’s § 102(b) rejection of dependent
claims 2–6 and 10–19, which are not argued separately. See Appeal Br. 5–9.
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–6 and 10–19
under 35 U.S.C. § 102(b).
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference  Affirmed Reversed
1–6,
10–19
102(b) Ahuja 1–6,
10–19

TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED