Ex Parte 6,253,216 et al

Board of Patent Appeals and Interferences

Feb 22, 2012

90010792 (B.P.A.I. Feb. 22, 2012)

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.
90/010,792 12/22/2009 6,253,216 109493-2 7326
21125 7590 02/23/2012
NUTTER MCCLENNEN & FISH LLP
SEAPORT WEST
155 SEAPORT BOULEVARD
BOSTON, MA 02210-2604
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/23/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Tele-Publishing, Inc.1,
Appellant and Patent Owner
____________

Appeal 2011-009264
Reexamination Control No. 90/010,792
Patent 6,253,216 B12
Technology Center 3900
____________

Before JAMESON LEE, SCOTT R. BOALICK, and KEVIN F. TURNER,
Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
Tele-Publishing, Inc., Appellant, appeals under 35 U.S.C. §§ 134(b)
and 306 from a final rejection of claims 1-34. We have jurisdiction under 35
U.S.C. §§ 134(b) and 306.
We REVERSE.

1 Tele-Publishing, Inc. is the Patent Owner and the real party in interest
(App. Br. 1).
2 Issued June 26, 2001, to Andrew B. Sutcliffe et al.
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Reexamination Control No. 90/010,792
United States Patent 6,253,216 B1

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STATEMENT OF THE CASE3
This proceeding arose from a request for ex parte reexamination filed
on behalf of Facebook, Inc. on December 22, 2009, of United States Patent
6,253,216 B1 (the '216 Patent), based on U.S. Patent Application 08/876,008
filed June 13, 1997.
The '216 Patent was asserted in Tele-Publishing, Inc. v. Facebook,
Inc., No. 1:10-cv-11686-DPW (D. Mass. 2009) (App. Br. 1), where that case
is apparently ongoing.
We heard oral arguments from a representative of Appellant on
August 3, 2011, a transcript4 of which is part of the record.

CLAIMED INVENTION
Appellant’s invention relates to a method and apparatus for providing
a personal page over a network, allowing users to securely display personal
information to other users (col. 1, ll. 14-18).
We take independent claims 1 and 29 to be representative:
1. A method for providing a personal page on a
computer system accessible to a plurality of remote users
through a computer network, the remote users having profile
information stored in the computer network and accessible to
other remote users, comprising the steps of:
a) [acceptable] accepting profile information from a

3 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 21, 2010) and Reply Brief (“Reply Br.,” filed May 3,
2011), and the Examiner’s Answer (“Ans.,” mailed March 3, 2011).
4 Record of Oral Hearing (hereinafter Oral Hr’g Tr.)
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plurality of remote users;
b) prompting a page-creating remote user with a
plurality of page templates for the personal page and receiving
a template selection from the remote user;
c) prompting the page-creating remote user to enter text
to the personal page and receiving entered text from the remote
user;
d) prompting the page-creating remote user to select or
enter graphical information to display on the personal page and
receiving the selection or entry from the remote user;
e) storing attributes representing each selection or entry
made by the page-creating remote user in one or more
databases;
f) providing the page-creating remote user with means to
input security parameters for the personal page, the security
parameters specifying authorization of at least one other
remote user to access the personal page;
g) storing the security parameters in one or more
databases; and
h) displaying the personal page upon request only to
remote users who are authorized to access the personal page.

29. In a networked computer system having a plurality
of remote users, a computer program product comprising
computer useable medium having computer readable program
code to:
a) store profile information relating to each remote user,
the profile information being accessible to other remote users of
the system;
b) provide a page-creating remote user with means to
create a personal page having personal information;
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c) store attributes representing the personal information
in the page-creating remote user's personal page in one or more
databases;
d) provide the page-creating remote user with means to
select other remote users to whom the page-creating remote
user may wish to allow access to the personal page;
e) provide the page-creating remote user with means to
input security parameters for the personal page, the security
parameters specifying authorization of at least one other
selected remote user to view the personal page; and
f) store the security parameters in one or more databases.

REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Herr-Hoyman 5,727,156 Mar. 10, 1998
de Hond 5,796,395 Aug. 18, 1998
David Fox & Troy Downing, Web Publisher’s Construction Kit with
HTML 3.2 435-446 (John Crudo ed., Waite Group Press 1996) (“Fox”).
Jack L. Hursch and Carolyn J. Hursch, Working with Oracle 1-16
(Tab Book Inc. 1987) (“Hursch”).
The Examiner rejected the claims on the following bases:5
 claims 1-26 and 28-34 under 35 U.S.C. § 102(e) as being anticipated
by de Hond (Ans. 3-35);

5 Appellant has made no separate arguments with respect to the obviousness
rejections and accepts that the dependent claims, rejected in the obviousness
rejections, stand or fall with the independent claims from which they
ultimately depend (App. Br. 5-6).
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 claim 9 under 35 U.S.C. § 103(a) as being unpatentable over de Hond
and Herr-Hoyman (Ans. 35-37);
 claim 27 under 35 U.S.C. § 103(a) as being unpatentable over de
Hond and Fox (Ans. 37-38); and
 claims 2-8, 11-15, and 17-20 under 35 U.S.C. § 103(a) as being
unpatentable over de Hond and Hursch (Ans. 38-46).

ISSUE
Appellant raises numerous arguments as to whether de Hond
anticipates the instant claims (App. Br. 6-42; Reply Br. 2-21), some of
which we discuss below. We have considered in this decision only those
arguments that Appellant actually raised in the Briefs. Arguments which
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
The issue arising from the respective positions of Appellant and the
Examiner is:
Did the Examiner err in finding that claims 1-26 and 28-34 were
anticipated by de Hond under 35 U.S.C. § 102(e)?

FINDINGS OF FACT
1. The '216 Patent is a method and apparatus for providing a personal
page over a network, allowing users to securely display personal
information to other users (col. 1, ll. 14-18).
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2. The Specification of the '216 Patent provides that “[a] template is a
World Wide Web style page design which includes graphics and
page layout information” (col. 8, 48-49).
3. De Hond is directed to a system for publishing and searching
interests of individuals (Abs.), where individual users register and
are allowed to select “houses” that “visitors” are permitted to visit
through database searches (col. 3, ll. 55-60).
4. De Hond discloses that the user supplies information through
fillable fields, selects an icon for their house, and sets other options
for their house. When another user selects the user’s house, based
on a search of the database, a screen, based on the user’s
information and preferences, is sent the other user (col. 9, l. 18 -
col. 10, l. 42; figs. 6-10).
5. De Hond discloses that a user is “given the opportunity to design
his or her own ‘house’” through selection of formats and modular
building blocks, as well as design the house’s interior using a floor
plan of different rooms (col. 4, ll. 3-27).
6. De Hond discloses that a user can initiate a database search which
provides a graphical depiction of a street of houses whose owners
satisfy the search criteria (col. 11, ll. 13-48; Fig. 14).

PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
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the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999).
The claims, of course, do not stand alone. Rather, they
are part of “a fully integrated written instrument,” consisting
principally of a specification that concludes with the claims.
For that reason, claims “must be read in view of the
specification, of which they are a part” . . . [and] the
specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single
best guide to the meaning of a disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)
(citations omitted).

ANALYSIS
Independent Claims 1, 10, 16 and 21
Independent claim 1 recites, in part, “b) prompting a page-creating
remote user with a plurality of page templates for the personal page,” with
claim 10 reciting “a plurality of page templates for selection for the personal
page,” claim 16 reciting “a plurality of pre-stored page templates,” and claim
21 reciting “a plurality of page templates for displaying a personal page.”
Appellant argues that de Hond does not describe these features of those
claims (App. Br. 40-42). More specifically, Appellant argues that the
Examiner’s rejection points to “single static Web page in Figure 10 and
states that it is an example of a page template,” but even if that were correct,
it would only amount to single template and not a plurality (App. Br. 41).
Appellant also argues that the Examiner’s support for the plurality of
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templates relies on portions not disclosed by de Hond with respect to use of
a template (App. Br. 41-42).
The Examiner finds that de Hond provides for a normal template and
a template which allows a user to design their own house and floor plan
(Ans. 86). The Examiner also provides that since there is a plurality of
houses to choose from, with each house having a floor plan, as part of the
page template, de Hond discloses a plurality of templates to choose from
(id.). The Examiner also finds that since the purpose of the different
templates in the instant invention is to create unique, customized personal
pages, the rejection should be upheld because de Hond provides such
customized pages (Ans. 87). We do not agree.
We find that the Specification of the '216 Patent provides a definition
of “template,” which we find supports the limitation “page templates” (FF
2). Based on such a definition, i.e., requiring page layout information, we do
not find that de Hond discloses a plurality of page templates. By whatever
means a user inputs information into the forms (Figs. 8-9 of de Hond), a
similar page is produced (Fig. 10 of de Hond) (FF 4). What is presented on
the resulting page is changed by what information the user enters, i.e., lists
may shorten or lengthen, but the layout of the page is unchanged. Similarly,
the icons provided are user-selectable, but the template for the page is the
same (FF 4). In de Hond, changing from a “castle” to a “camper” does not
change the page format of the page provided.
Further to the Examiner’s findings (Ans. 86), we do not agree that
every house has its own page template. We find that de Hond is silent as to
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how a user selects rooms for a floor plan or map (FF 5), and how those
rooms are presented to a “visitor.” It does not appear that it would be
accomplished through a page template in de Hond. Appellant may be
correct that de Hond is using the house designing and building merely as a
metaphor for entering information (App. Br. 40-41), but nonetheless, we
find no disclosure of allowing a user to select a particular page template to
accomplish the same.
In addition, while the Examiner finds that de Hond provides for
customized pages, which is the purpose of the page templates in the instant
invention (Ans. 87), we do not find that the same result belies the same
method. The cited independent claims recite the use of page templates and
any anticipatory reference must teach or make inherent the presentation of
multiple page templates to a user. As such, we do not find that a user is
presented with a plurality of page templates in de Hond as recited in
independent claims 1, 10, 16, and 21. Thus, we find that the Examiner erred
in rejecting those claims as being anticipated by de hond.

Independent Claims 29 and 32
Claim 29 recites, in part, that the system has program code to “e)
provide the page-creating remote user with means to input security
parameters for the personal page, the security parameters specifying
authorization of at least one other selected remote user to view the personal
page,” with claim 32 reciting similar subject matter. Appellant argues that
the claims require that a user’s profile information is accessible to other
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remote users and that the personal page, which utilizes that profile
information, is provided with further restriction (App. Br. 39). Appellant
argues that the “houses” of de Hond are accessible by any user who finds
them, without further restriction (id.).
The Examiner finds that in de Hond, both the profile information and
personal page are accessible by other remote users (Ans. 84), and that de
Hond discloses that they are separate (id.). Additionally, the Examiner finds
that the personal page of de Hond is viewable only by those individuals that
meet the requirements set forth by the page-creating remote user (id.), and
that the claims do not require that the personal information be accessible to
everyone (id). We cannot agree.
Claims 29 and 32 clearly require “security parameters” to allow
authorization to view the personal page. In de Hond, the Examiner is correct
that the personal page can be restricted by the search the remote user
performs (FF 6), but it is unclear how a remote user would access the profile
information except through the personal page. The Examiner acknowledges
that de Hond teaches both profile information and a personal page, and that
they are separate (Ans. 85), but does not reveal how the personal interests
and data about the user from the profile information are accessed by the
remote user if not via the personal page. In de Hond, there does not appear
to be a way to view personal profile information without also being able to
view the user’s personal page. If the limitation “security parameters” and its
recited use in claims 29 and 32 are to have any meaning, it must provide
some restriction to access. In other words, if every remote user has access to
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both the profile information and a personal page, as in de Hond, then the
additional authorization recited in claims 29 and 32 is meaningless. As
such, we do not find that remote users are authorized to access the profile
information and a personal page differently in de Hond, as recited in
independent claims 29 and 32. Thus, we find that the Examiner erred in
rejecting those claims as being anticipated by de Hond.

CONCLUSION
We conclude that the Examiner erred in finding that that claims 1-26
and 28-34 were anticipated by de Hond under 35 U.S.C. § 102(e). As the
obviousness rejections are based on the teachings of de Hond applied to the
independent claims, we further find that the additional obviousness
rejections of the dependent claims were also made in error.

DECISION
We reverse the Examiner’s decision to reject claims 1-34.

REVERSED

Appeal 2011-009264
Reexamination Control No. 90/010,792
United States Patent 6,253,216 B1

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ack
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FOR PATENT OWNER:
NUTTER MCCLENNEN & FISH LLP
SEAPORT WEST
155 SEAPORT BOULEVARD
BOSTON MA 02210-2604

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