Ex Parte Cheah

Patent Trial and Appeal Board

Aug 30, 2018

11840968 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/840,968 08/19/2007 Chris Cheah
91230 7590 09/04/2018
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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.
079894.0511 1265
EXAMINER
STITT, ERIK V
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS CHEAH
Appeal2017-009638
Application 11/840,968
Technology Center 2100
Before ERIC S. FRAHM, KRISTEN L. DROESCH, and
JOHN D. HAMANN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-7, 9-27, 30-33, and 35--41. Claims 2, 8, 28, 29, and 34 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
1 We note that the instant application on appeal is related to twelve other
applications also on appeal, all having the same inventive entity (Chris
Cheah) and assignee (Facebook, Inc.). The related applications are as
follows: U.S. Patent Application No. 12/258,299 and Appeal No. 2016-
006539 decided Feb. 23, 2017 (affirmed-in-part, now abandoned); U.S.
Patent Application No. 13/609,041 and Appeal No. 2017-002678 decided
August 17, 2017 (affirmed-in-part, now abandoned); U.S. Patent Application
No. 14/599,216 and Appeal No. 2017-002157 decided January 16, 2018
Appeal2017-009638
Application 11/840,968
We affirm.
Disclosed Field of Invention
Appellant discloses a method and system for controlled distribution of
information, such as electronic business cards or contact information, over a
network. Title; Spec. ,r,r 3-5; see generally Figs. 1--4. More specifically,
Appellant discloses a method for automatically updating and distributing
contact information such as profiles or electronic business cards, as well as
allowing attachment of various additional information (e.g., business website
information or Universal Resource Locator, hyperlinks, audio/video objects,
etc.). Spec. ,r,r 10-12. A second user is provided with a display of an
authorization request responsive to an access request of a first user that
allows the second user to respond to an access request of the first user with
an authorization with a selectable option accepting or declining the access
(affirmed, now abandoned); U.S. Patent Application No. 12/268,981 and
Appeal No. 2017-008051 decided January 29, 2018 (affirmed); U.S. Patent
Application No. 12/258,295 and Appeal No. 2017-002384 decided Feb. 22,
2018 (affirmed); U.S. Patent Application No. 12/258,302 and Appeal No.
2017-002070 decided March 28, 2018 (affirmed-in-part, now abandoned);
U.S. Patent Application No. 13/615,062 and Appeal No. 2017-002088
decided June 14, 2018 (affirmed-in-part); U.S. Patent Application No.
13/612,619 and Appeal No. 2017-002455 decided August 30, 2018
(affirmed); U.S. Patent Application No. 13/615,062 and Appeal No. 2017-
002512 decided June 14, 2018 (affirmed-in-part); U.S. Patent Application
No. 13/610,560 and Appeal No. 2017-008097 decided August 30, 2018
(affirmed); and U.S. Patent Application No. 13/618,881 and Appeal No.
2017-002456 decided July 5, 2018 (reversed).
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Application 11/840,968
request directly from the authorization request. Claim 1; Spec. ,r,r 98, 104;
Figs. 12A, 18G; see also App. Br. 5
Exemplary Claims
Exemplary claims 1 and 40, with some bracketed lettering and
emphases added to disputed portions of the claims, read as follows:
1. A method comprising:
by a computer system, receiving an access request from a
first user, the access request comprising a request to access a
user profile of a second user identified by the first user, the user
profile of the second user being associated with profile
information provided by the second user and maintained in a
data repository of a plurality of user profiles of a plurality
of users, [ A J the request further comprising information about
the second user entered in an input area of a graphical user
interface by the first user;
by the computer system, [BJ providing for display to the
second user an authorization request responsive to the access
request from the first user, the authorization request displaying
one or more selectable options that permit the second user to
either accept or decline the access request from the first user
directly from the authorization request;
by the computer system, receiving an authorization
response from the second user responsive to the authorization
request, the authorization response being generated at least
in part by the second user interacting with the one or more
selectable options of the authorization request; and
by the computer system, in response to the authorization
response, permitting the first user to access the user profile of
the second user and permitting the second user to access a user
profile of the first user.
40. The method of claim 1, further comprising [ CJ
adding, by the computer system, the second user as a contact of
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Application 11/840,968
the first user only after the second user selects, using the one or
more selectable options, to accept request from the first user.
The Examiner's Rejections
The Examiner rejected claims 1, 3-7, 9, 10, 16, 20, 21, 24--32, 39, and
40 under 35 U.S.C. § I03(a) over the combination of Robertson (US
6,269,369 Bl; issued July 31, 2001), Harkins (US 5,657,461; issued Aug.
12, 1997), and Gilmour (US 6,377,949 Bl; issued Apr. 23, 2002). Final
Act. 4--14.
The Examiner rejected claims 11-15, 17-19, 22, 23, 33, and 35-38
under 35 U.S.C. § I03(a) over the combination of Robertson, Harkins,
Gilmour, and Nguyen (US 5,544,302; issued Aug. 6, 1996). Final Act. 14--
19.
The Examiner rejected claim 41 under 35 U.S.C. § I03(a) over the
combination of Robertson, Harkins, Gilmour, and Tang (US 6,349,327 Bl;
issued Feb. 19, 2002). Final Act. 19-20.
Issues on Appeal
Based on Appellant's arguments in the Briefs (App. Br. 8-19; Reply
Br. 2-9), the following issues are presented on appeal: 2
2 Appellant does not present separate arguments regarding the patentability
of claims 3-7, 9, 10, 16, 20, 21, 24--32, and 39, and instead relies on the
arguments presented as to claim 1 for their patentability (see App. Br. 11,
14; Reply Br. 4, 6). Appellant provides separate arguments for claim 40 (see
App. Br. 16-18; Reply Br. 6-8). Therefore, we select independent claim 1
as representative of the group of claims consisting of claims 1, 3-7, 9, 10,
16, 20, 21, 24--32, and 39 rejected as being obvious over the combination of
Robertson, Harkins, and Gilmour. Our analysis will address representative
claim 1, and dependent claim 40 separately argued by Appellant.
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Application 11/840,968
(1) Did the Examiner err in rejecting claims 1, 3-7, 9, 10, 16, 20,
21, 24--32, 39, and 40 under 35 U.S.C. § 103(a) over the combination of
Robertson, Harkins, and Gilmour because either (a) there is no motivation
for the combination, or (b) the combination fails to teach or suggest
limitations [ A J and [BJ, as recited in representative claim 1?
(2) Did the Examiner err in rejecting claim 40 under
35 U.S.C. § 103(a) over the combination of Robertson, Harkins, and
Gilmour because the combination, and specifically Robertson, fails to teach
or suggest limitation [CJ, including adding a user as a contact "only after"
the user selects to accept the request, as recited in dependent claim 40?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 4--20) in light
of Appellant's arguments in the Appeal Brief (App. Br. 8-19) and the Reply
Brief (Reply Br. 2-9) that the Examiner has erred, as well as the Examiner's
response to Appellant's arguments in the Appeal Brief (Ans. 3-8).
Claims 1, 3-7, 9, 10, 16, 20, 21, 24-32, and 39
With regard to claim 1, we adopt as our own ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 5-8), and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellant's Appeal Brief (see Ans. 3-8).
We concur with the conclusions reached by the Examiner with regard to the
obviousness of the subject matter of claim 1 in view of the combination of
Robertson, Harkins, and Gilmour. We disagree with Appellant's
contentions that the Examiner erred in rejecting claim 1 because (i) the
combination of Robertson, Harkins, and Gilmour teaches or suggests
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Application 11/840,968
limitations [A] and [BJ recited in claim 1 (see App. Br. 8-16; Reply Br. 2-
6); and/or (ii) there is no motivation for combining the teachings of
Robertson, Harkins, and Gilmour (see App. Br. 14--16).
Limitation [Al
We agree with the Examiner (Ans. 3-5) that all three references teach
or suggest a request having information about a user because (i) making a
request by naming a user clearly involves "information about a user" ( e.g.,
the user's name) and entering that information in an input area or field, as in
Robertson and Gilmour; and (ii) selecting how information is to be sent is
information about how a user is to receive information ( e.g., by email), as in
Harkins.
Limitation [BJ
We also agree with the Examiner (Ans. 5-7) that the combination of
references teaches or suggests an authorization request displaying one or
more selectable options permitting a second user to accept or decline an
access request from a first user directly from the authorization request, as
recited in claim 1. More specifically, we agree with the Examiner that
Robertson discloses that (i) a second use receives a notification when a first
user has linked to the second user (Ans. 5 citing Robertson col. 8, 11. 14--23;
Figs. 8, 9); and (ii) then allowing the requested user to grant, or not,
permissions to the requesting user, i.e., to accept or decline (Ans. 5---6 citing
Robertson Fig. 9). Notably, Robertson's Figure 9 shows a submit button
600-16, which operates, along with permission selections 600-6 through
600-10, 600-12, 600-14, and 600-16, to accept or decline various parts of a
request for profile sharing (see generally Robertson col. 8, 1. 11---col. 9, 1. 65)
( describing Fig. 9). We also agree with the Examiner that Gilmour discloses
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(i) how notifications can be sent as email and contain selectable controls;
and (ii) that the email notification can include the presentation of target user
options, selectable for example with a universal resource locator (URL)
(Ans. 6 citing Gilmour col. 21, 11. 6-11; Fig. 17D). As a result, we agree
with the Examiner (Final Act. 6-7; Ans. 5---6) that the combination of
Robertson, Harkins, and Gilmour teaches or suggests allowing a user to
accept or decline a request directly from the authorization request.
As to the recitation in claim 1 that the second user accept of decline
"directly from the authorization request" ( claim 1) ( emphasis added),
Appellant's Specification and Drawings describe what this means.
Specifically, paragraph 98 of the Specification describing Figure 18G3 has
the following to say about accepting/declining the request:
FIG. 18G illustrates a representative exchange screen
for the requested party of the exchange request. The
representative exchange screen for the requested party includes
a requested exchange area 1840. In this example, the
requested exchange area 1840 includes an entry 1842 that
indicates that a particular requestor has submitted a request to
exchange profile information with the requested party (block
1202). The particular requestor is identified by the entry 1842
(e.g., first name, last name, and email address). To refresh the
requested exchange area 1840 a refresh button 1844 can be
depressed. Upon selecting the entry 1842 in the requested
exchange area 1840, the requested party then decides whether
to accept or decline the request. A authorization area 1846 on
the representative exchange screen of FIG. 18G includes an
accept button 1848 and a decline button 185 0. The requested
party selects the accept button 1848 to permit the requested
3 Appellant cites Figure 18G for support of limitation [BJ. See App. Br. 5.
Although not cited by Appellant, paragraph 98 of the Specification describes
Figure 18G.
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exchange (block 1210), and selects the decline button 1850 to
deny the requested exchange (block 1216).
Figure 18G (emphases added). Thus, Appellant's Specification as
originally filed does not use the term "directly" in describing the
accept/decline response, but the Specification shows and describes
using an accept button (1848) and decline button (1850) to respond to
the request. We find Robertson's Figure 9, showing the use of a
submit button 600-16, along with permission selections 600-6 through
600-10, 600-12, 600-14, and 600-16, to accept or decline various parts
of a request for profile sharing (see generally Robertson col. 8, 1. 11-
col. 9, 1. 65) (describing Fig. 9)), to be encompassed by the "directly"
language recited in claim 1. As a result, we find the combination of
Robertson, Harkins, and Gilmour teaches or suggest limitation [BJ,
inasmuch as "directly from the authorization request" has been
defined by Appellant's Specification.
Motivation
A sufficient rationale to support a conclusion that a claim would have
been obvious is where all the claimed elements were known in the prior art
and one skilled in the art would have combined the elements as claimed by
known methods with no change in their respective functions, and the
combination would have yielded nothing more than predictable results to
one of ordinary skill in the art. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Such understandings about reasons to combine or
countervailing reasons not to combine could come from the knowledge,
skill, and creativity of the ordinarily skilled artisan. KSR, 550 U.S. at 418.
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In the instant case, we agree with the Examiner (Ans. 7) that all three
references pertain to "user interface profile management systems" and that it
would have been obvious to combine the references for the reasons provided
by the Examiner at pages 5-8 of the Final Rejection. We also agree with the
Examiner that (i) both Robertson and Gilmour pertain to the analogous art of
permitting profile access on a user interface (Final Act. 7); and (ii) both
Robertson and Harkins pertain to the analogous art of profile user interfaces
(Final Act. 6). Furthermore, we agree with the Examiner (Ans. 7; Final Act.
6) that because Robertson stores email addresses in user profiles (Ans. 7
citing Robertson Fig. 10, item 634-2), and Harkins discloses allowing a user
to select how to be communicated with, e.g., by email (see Final Act. 6
citing Harkins Figs. 2, 11; col. 11, 11. 2-5), the combination of these features
would predictably result in providing users the ability to select other users to
which they desire to send communications (see Final Act. 6).
In this light, Appellant's arguments (App. Br. 14--16) that the
Examiner failed to demonstrate a prima facie showing of obviousness, and
only provides conclusory statements, are not persuasive.
Summary
Accordingly, we sustain the Examiner's rejection of claim 1, as well
as claims 3-7, 9, 10, 16, 20, 21, 24--32, and 39 grouped therewith. For
similar reasons, and because Appellant does not present any arguments as to
claims 11-15, 17-19, 22, 23, 33, and 35-38 which are also rejected for
similar reasons and on the same base combination of Robertson, Harkins,
and Gilmour as representative claim 1, we also sustain the Examiner's
rejections of claims 11-15, 17-19, 22, 23, 33, and 35-38 over Robertson,
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Application 11/840,968
Harkins, Gilmour, and Nguyen; and claim 41 over Robertson, Harkins,
Gilmour, and Tang.
Claim 40
With regard to claim 40, we agree with Appellant (Reply Br. 7-8) that
"the Examiner's statement regarding M.P.E.P. 2144.04 is not applicable to
this or any other of Appellant's claims," because the claims do not include a
"forwarding email address step" as found by the Examiner (see Ans. 8).
Therefore, there is no issue as to claim 40 as to whether or not it would have
been obvious to mot a forwarding email address step. This is harmless error,
and does not affect the Examiner's other findings with regard to Robertson,
as discussed below.
Appellant contends (App. Br. 16-18; Reply Br. 6-8) that the
combination of Robertson, Harkins, and Gilmour, and specifically
Robertson, fails to teach or suggest limitation [CJ, including adding a second
user as a contact "only after" the second user selects to accept the access
request from the first user, as recited in dependent claim 40. In the
Examiner's Answer, the Examiner newly cites to column 9, lines 15 through
18 of Robertson as disclosing this limitation (see Ans. 8). We agree with the
Examiner (Ans. 8) that Robertson (col. 9, 11. 15-18) discloses adding
registered users as contacts only after the requested user has granted
permission. In this light, and because Robertson discloses multiple options
of adding the identified registered user ( with either a listing, personal
information, or work information) as a contact only after the requesting user
receives permission from the requested user (see Robertson, col. 9, 11. 10-
26), Appellant's arguments are unpersuasive.
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In view of the foregoing, we are not persuaded by Appellant's
contentions (App. Br. 16-18; Reply Br. 6-8) that the combination of
Robertson, Harkins, and Gilmour, and specifically Robertson, fails to teach
or suggest limitation [CJ, including adding a user as a contact "only after"
the user selects to accept the request, as recited in dependent claim 40.
Accordingly, we sustain the Examiner's rejection of claim 40.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 3-7, 9, 10, 16, 20,
21, 24--32, 39, and 40 under 35 U.S.C. § 103(a) over the combination of
Robertson, Harkins, and Gilmour because (a) there is proper motivation for
the combination, and (b) the combination teaches or suggests limitations [ A J
and [BJ, as recited in claim 1.
(2) The Examiner did not err in rejecting claim 40 under
35 U.S.C. § 103(a) over the combination of Robertson, Harkins, and
Gilmour because the combination, and specifically Robertson, teaches or
suggests limitation [DJ, including adding a user as a contact "only after" the
user selects to accept the request, as recited in dependent claim 40.
DECISION
The Examiner's obviousness rejections of claims 1, 3-7, 9-27, 30-33,
and 3 5--41 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).
AFFIRMED
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