Ex Parte 6519629 et al

Patent Trials and Appeals Board

Feb 5, 2013

95001070 - (D) (P.T.A.B. Feb. 5, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,070 07/21/2008 6519629 0065431-1008 3890
68368 7590 02/05/2013
Barcelo, Harrison & Walker, LLP
2901 W. Coast Hwy
Suite 200
Newport Beach, CA 92663
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/05/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

FACEBOOK, INC.
Requester and Appellant

v.

CROSS ATLANTIC CAPITAL PARTNERS, INC.
Patent Owner and Cross-Appellant
____________

Appeal 2013-001716
Reexamination Control 95/001,070
Patent 6,519,629 B2
Technology Center 3900
____________

Before ALLEN R. MACDONALD, KARL D. EASTHOM, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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In response to our previous Decision on Appeal dated June 28, 2011
in which we entered new grounds of rejection of claims 1-32 (Decision 17),
Patent Owner requests reopening prosecution under 37 CFR § 41.77(b)(1).
Patent Owner appeals the Examiner’s decision to reject claims 1-32 and new
claims 74-146. We have jurisdiction under 35 U.S.C. §§ 134 and 306.

STATEMENT OF THE CASE
This proceeding arose from a request by Facebook, Inc. for an inter
partes reexamination of U.S. Patent 6,519,629 B2, titled “System For
Creating a Community for Users With Common Interests to Interact In,” and
issued to James Harvey, Andrew Fegly, Matt Hulan, and Robert Dekelbaum
on February 11, 2003 (the ‘629 patent). Claims 1-32 were subject to inter
partes reexamination (see, e.g., Request for Inter Partes Reexamination,
dated July 21, 2008, pp. 4-5).
In our previous decision dated June 28, 2011, we entered new grounds
of rejection as follows:
1. Claims 17-32 under 35 U.S.C. § 102(e) as being anticipated by
U.S. Patent No. 6,223,177 B1 (“Tatham”);
2. Claims 1-32 under 35 U.S.C. § 102(e) as being anticipated by U.S.
Patent No. 6,608,636 B1 (“Roseman”);
3. Claims 1, 2, 4-7, 9, 10, 12-15, 17, 18, 20-23, 25, 26, and 28-31
under 35 U.S.C. § 102(b) as being anticipated by Sunil K. Sarin &
Irene Greif, “Software for Interactive On-Line Conferences,”
Massachusetts Institute of Technology, Laboratory for Computer
Science, 1984 (“Sarin”);
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4. Claims 24 and 32 under 35 U.S.C. § 103(a) as being unpatentable
over Tatham and U.S. Patent no. 6,029,195 (“Herz”);
5. Claims 17-32 under 35 U.S.C. § 103(a) as being unpatentable over
Tatham and Brad Hill, “Yahoo! For Dummies,” IDG Books
Worldwide, Inc., 1999 (“Yahoo”); and
6. Claims 3, 11, 19, and 27 under 35 U.S.C. § 103(a) as being
unpatentable over Sarin and Yahoo.
Responsive to our new grounds of rejection and in a paper filed July
28, 2011, Patent Owner requested reopening prosecution before the
Examiner and “provided an amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both” pursuant to 37 CFR §
41.77(b)(1). Patent Owner also provided new claims 76-146.
In response to Patent Owner’s “amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both,” the Examiner
stated that “[a]ll of third party requester’s (‘3PR’) proposed rejections as set
forth in the Comments on the Patent Owner’s (‘PO’) Amendments (filed
Oct. 29, 2011) are adopted and incorporated here by reference. As such,
claims 1-32 and 76-146 are rejected” (Determination under 37 CFR
41.77(d) dated November 15, 2011, p. 2).
Thus, the Examiner appears to have maintained each of the six new
grounds of rejection as enumerated above and in the previous Decision on
Appeal and further rejected claims 1-32 and new claims 76-146 as follows:
1) Claims 1-32 and 76-146 under 35 U.S.C. § 103(a) as unpatentable
over the combination of (“Miller”) and (“Liu”) or the combination
of (“Tatham”), Liu, and either one of Yahoo or Herz;
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2) New claims 91-100, 122-131, 140, 141, 145, and 146 under 35
U.S.C. § 112, first paragraph as failing the written description
requirement;
3) New claims 76-90, 101-112, 114-121, 132-139, 142-144 under 35
U.S.C. § 305 as impermissibly broadening the scope of the claimed
invention.

The ‘629 patent describes communications protocols to enable users
to interact and communicate in communities (col. 1, ll. 11-19). Claim 1, as
amended, reads as follows:
1. A method for creating a community for users with
common interests to interact in, the method comprising the steps of:
receiving a creation transmission from a registered user, the creation
transmission indicating that the registered user desires to create a
community;
receiving community identification information from the registered
user;
receiving a selection of at least one application object from the
registered user, said at least one application object including an executable
component;
creating a community based on the community identification
information and the at least one application object;
receiving at least one communications address designated by the
registered user, the at least one communications address corresponding to a
user to receive a created community; and
transmitting the created community, including the at least one
application object, based in part on the at least one communications address.

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ISSUE

Did the Examiner err in rejecting or maintaining the rejection(s) of
claims 1-32 and 76-146?

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Claims 17-32 – Anticipation over Tatham and obviousness over Tatham and
Yahoo; Claims 24 and 32 – Obviousness over Tatham and Herz

Claim 17 and claim 25, as amended, recite that the application object
includes “an executable component” and “receiving a transmission of the
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created community, including the at least one application object.” In view of
Patent Owner’s amendments to claim 17 and claim 25 and for reasons set
forth in our previous Decision, we agree that Tatham fails to disclose the
application object including “an executable component” and transmission of
the community, including the application object (and the executable
component) as now required by claim 17 and claim 25.
The Examiner and Requester do not provide additional arguments
with respect to the Yahoo or Herz references or dependent claims 18-24 and
26-32.
The Examiner erred in maintaining the rejection of amended claims
17-32 as anticipated by Tatham or unpatentable over Tatham and Yahoo.
The Examiner also erred in maintaining the rejection of claims 24 and 32 as
obvious over Tatham and Herz.

Claims 1-32 – Anticipation over Roseman

Claim 1, as amended, recites that the application object includes “an
executable component” and “transmitting the created community, including
the at least one application object.” Claims 9, 17, and 25 have been similarly
amended.
As we stated in our previous Decision, Roseman discloses
transmitting “an application object” and an “executable component” (e.g., an
“invitation card”) (Decision 13). Patent Owner argues that the “invitation
card” of Roseman “is a user interface to facilitate the invitation process,” “is
at most a message component and not an executable component,” and is “an
icon” that “does not itself comprise an executable component” (Amendment
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and Request to Reopen Prosecution dated July 28, 2011, pp. 35, 36, 40). We
disagree with Patent Owner.
Roseman discloses, for example, the invitation card is an “active icon”
(col. 5, l. 57) “for issuing commands to the host” (col. 5, l. 58). Patent
Owner does not adequately explain how an “active icon” that issues
“commands” is not an “executable component,” since one of ordinary skill
in the art would have understood that code that issues commands is code that
is executing (i.e., an “executable component”) in order to issue the
command. In addition, as Requester points out, Roseman also discloses a
“key” that is “passed to the Delegate [i.e., user]” (col. 7, l. 8) and disclosed
as “a code” (col. 6, ll. 60-61). Patent Owner does not sufficiently
demonstrate how a “code” that one of skill in the art would have understood
performs functions by “executing” and is, hence, an “executable
component,” differs from the “executable component” as recited in amended
claim 1, for example.
Patent Owner further argues that Roseman fails to disclose features
recited in claims 8, 16, 24, and 32 that are unamended and not previously
argued (Amendment and Request to Reopen Prosecution dated July 28,
2011, pp. 42-45). However, the “new grounds of rejection raised by the
Board does not ‘reopen the prosecution’ . . . except as to that subject matter
to which the new rejection was applied” (Ex parte Burrowes, 110 O.G. 599,
19404 C.D. 155 (Comm’r pat. 1904). Since the new ground of rejection was
not applied to the unamended features of claim 8, 16, 24, and 32, which
Patent Owner is now arguing (and Patent Owner did not previously provide
arguments in support of these unamended features), Patent Owner’s new
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arguments pertaining to unamended features of claims 8, 16, 24, and 32 will
not be considered.

Claims 1, 2, 4-7, 9, 10, 12-15, 17, 18, 20-23, 25, 26, ad 28-31 – Anticipation
over Sarin

Claim 1, as amended, recites that the application object includes “an
executable component and “transmitting the created community, including
the at least one application object.” Claims 9, 17, and 25 have been similarly
amended.
As we stated in the previous Decision, Sarin discloses sharing a
“specified collection of objects” (p. 49, col. 1) and a server that “proceeds to
‘give’ these objects to the participant” (Decision 15). Patent Owner argues
that Sarin fails to disclose that objects include “an executable component”
(Amendment and Request to Reopen Prosecution dated July 28, 2011, pp.
47-51). We disagree with the Patent Owner.
As we previously stated, Sarin discloses that objects are “given” to a
user and that the “objects and activities” (p. 50, col. 2) include “Add-
Participant, Join-Conference, and Leave-Conference downcalls” (p. 50, col.
2), for example, which Patent Owner does not adequately demonstrate to
differ from an “executable component.” For example, one of skill in the art
would have understood an “executable component” to be any entity that
executes an activity while Sarin discloses such entities that execute activities
(e.g., adding participants or enabling participants to join or leave a
conference).

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Claims 3, 11, 19, and 27 – Obviousness over Sarin and Yahoo

Patent Owner does not present additional arguments in support of
claims 3, 11, 19 and 27 with respect to Sarin and Yahoo.

Claims 1-32 and new claims 76-146 – Obviousness over the combination of
Miller and Liu or the combination of Tatham, Liu and one of Yahoo or Herz

Patent Owner argues that new claims 76 and 107 (and dependent
claims 77-81 and 108-112) are patentable over both Roseman and Sarin
because both Roseman and Sarin fail to disclose “vendor product[s]” or
“information regarding ‘a vendor product or service” as new claims 76 and
107 recite (Amendment and Request to Reopen Prosecution dated July 28,
2011, pp. 53-54). As previously indicated, “new grounds of rejection raised
by the Board does not ‘reopen the prosecution’ . . . except as to that subject
matter to which the new rejection was applied” (Ex parte Burrowes, 110
O.G. 599, 19404 C.D. 155 (Comm’r pat. 1904)). Also, amended or new
claims must be directed to the same subject matter as the appealed claims
(Ex parte Comstock, 317 O.G. 4, 1923 C.D. 82 (Comm’r Pat. 1923)).
In the present case, Patent Owner now submits proposed new claims
(i.e., claims 76-81 and 107-112) that claim subject matter (i.e., “vendor
products,” “vendor product or service”) for which our previous grounds of
rejection did not apply. Nor are the proposed new claims directed to the
same subject matter as the previously appealed claims. For example, the
previously appealed claims are directed to transmitting a community based
on a communications address while the proposed new claims 76-81 and 107-
112 are specifically directed to presenting information associated with a
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vendor product or service. Indeed, previously appealed claim 1 does not
recite a “presenting information” step at all much less a step in which
“vendor product or service” information is presented. Since Patent Owner
may not “reopen the prosecution” except as to subject matter which new
grounds of rejection was applied and the now argued claim features recited
in proposed new claims 76-81 and 107-112, at least, do not constitute
subject matter which the new grounds of rejection were applied, such new
claims are not properly presented for consideration.
While the Examiner had the option of refusing entry of the proposed
new claims 76-146 as lacking claim amendments (or “evidence”) pursuant to
37 C.F.R. 41.77(b), the Examiner nevertheless entered the proposed new
claims and has deemed the new claims as unpatentable based on the grounds
stated above. In view of the Examiner’s entry of new claims 76-146, we
will consider new claims in view of the proposed rejections and timely
presented issues raised by the parties.
As Requester points out, the ‘629 patent was accorded a priority date
of February 25, 2000, which Patent Owner did not previously dispute (Third
Party Requester’s Reply, dated January 17, 2012, p. 16-17). Patent Owner
now argues for the first time that the ‘629 patent is entitled to a priority date
that is earlier than the previously determined priority date of February 25,
2000 (see, e.g., Patent Owner Comments, dated December 15, 2011, pp. 37-
38 and 44). For at least the reasons set forth by the Requester, we agree that
Patent Owner’s newly presented arguments pertaining to the priority date of
the ‘629 patent are untimely presented (see, e.g., Third Party Requester’s
Reply, dated January 17, 2012, pp. 16-19). Also, as stated above, “new
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grounds of rejection raised by the Board does not ‘reopen the prosecution’ . .
. except as to that subject matter to which the new rejection was applied” (Ex
parte Burrowes, 110 O.G. 599, 19404 C.D. 155 (Comm’r pat. 1904). Since
Patent Owner could have but chose not to make arguments pertaining to
priority and since such newly presented arguments are not necessitated by
our new grounds of rejection as raised in our previous Decision, such newly
presented arguments are deemed to have been waived and will not be
considered.
Even assuming that Patent Owner’s untimely presented arguments
pertaining to priority are considered, however, we agree with Requester that
Patent Owner has failed to demonstrate support for an earlier priority date
for at least the reasons set forth by Requester (Third Party Requester’ Reply,
dated January 17, 2012, pp. 20-27).
Patent Owner also argues that the combination of Miller and Liu or
the combination of Tatham, Herz, and Liu fails to disclose or suggest “the
‘transmitting’ limitation” or “transmitting the community” (Patent Owner’s
Comments in Response to Determination Under 37 C.F.R. 41.77(d), filed
December 15, 2011, p. 47). We disagree with Patent Owner for at least the
reasons set forth by the Requester (Third Party Requester’s Reply, dated
January 17, 2012, pp. 31-34). For example, as Requester points out, Liu
discloses that “an ‘applet’ . . . may be downloaded . . . to the user end
system” (Third Party Requester’s Reply, dated January 17, 2012, p. 31,
citing Liu, col. 2, ll. 8-18). Patent Owner does not demonstrate a difference
between transmitting an applet (i.e., an application) by downloading to a
user end system and the claimed feature of “transmitting.”
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Patent Owner argues that Tatham and Yahoo fail to disclose or
suggest “transmitting the community” (Patent Owner’s Comments in
Response to Determination Under 37 C.F.R. 41.77(d), filed December 15,
2011, p. 45-47). We disagree with Patent Owner for at least the reasons set
forth by the Requester (Third Party Requester’s Reply, dated January 17,
2012, pp. 28-31). For example, as Requester points out, Yahoo discloses a
system that “delivers applications to your computer” (Third Party Requester’
Reply, dated January 17, 2012, p. 29, citing Yahoo, p. 267). Patent owner
does not sufficiently demonstrate a difference between delivering
applications to a computer (as disclosed by Yahoo) and the claimed
“transmitting.”
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined Miller and Liu (Patent Owner’s
Comments in Response to Determination Under 37 C.F.R. 41.77(d), filed
December 15, 2011, p. 40-44). Miller discloses a computer network that
permits multiple users to collaborate and/or transact business (¶ [0003]). Liu
also discloses a computer network in which users collaborate and further
discloses downloading (or “transmitting”) code to a computer of an end user
(col. 2, ll. 10-18). We agree with Requester that it would have been obvious
to one of ordinary skill in the art to have combined Miller and Liu at least
because both references disclose computer networks in which users
collaborate and the combination of two such known similar systems would
have resulted in no more than the predictable result of a computer network in
which users collaborate and receive transmissions (a known operational
characteristic of computer networks).
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Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined Tatham, Yahoo and Liu (Patent
Owner’s Comments in Response to Determination Under 37 C.F.R.
41.77(d), filed December 15, 2011, p. 45). Patent Owner did not previously
argue combinability of the Tatham and Yahoo references, both of which
were previously cited in combination. Patent Owner’s new arguments
pertaining to the combination of Tatham and Yahoo that were not raised by
Patent Owner but could have been raised previously are considered untimely
and will not be addressed.
Pertaining to the combination of Tatham and Liu, Liu discloses a
computer network in which end users may collaborate and may receive and
store applications or “applet” while Tatham also discloses a network in
which users may collaborate. We agree with Requester that it would have
been obvious to one of ordinary skill in the art to have combined Tatham
and Liu since both Tatham and Liu discloses similar computer systems, each
of which would have been known to one of ordinary skill in the art, and
combining features of such known computer networks would have resulted
in no more than the predictable result of a computer system in which
applications may be downloaded (or “transmitted”) to end users.

Claims 91-100, 122-131, 140, 141, 145, and 146 (35 U.S.C. § 112, first
paragraph) and claims 76-90, 101-112, 114-121, 132-139, 142-144 (35
U.S.C. § 305)

Affirmance of the rejection for the above-referenced claims based on
Roseman, Sarin, combination of Sarin and Yahoo, combination of Miller
and Liu, or the combination of Tatham, Liu and one of Yahoo or Herz
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renders it unnecessary to reach the propriety of the Examiner’s decision to
reject those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331,
1338 (Fed. Cir. 2009). As such, we need not reach the propriety of the
rejection of those claims over 35 U.S.C. § 112, first paragraph or 35 U.S.C.
§ 305.
CONCLUSION
The Examiner did not err in rejecting or maintaining the rejection(s)
of claims 1-32 and 76-146.
DECISION
We affirm the Examiner’s decision to reject or maintain the rejection
of claims 1-32 under 35 U.S.C. § 102(e) as anticipated by Roseman; claims
1, 2, 4-7, 9, 10, 12-15, 17, 18, 20-23, 25, 26, and 28-31 under 35 U.S.C.
§ 102(e) as anticipated by Sarin; claims 3, 11, 19, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Sarin and Yahoo; claims 1-32 and 76-146
under 35 U.S.C. § 103(a) as unpatentable over Miller and Liu; and claims
1-32 and 76-146 under 35 U.S.C. § 103(a) as unpatentable over Tatham, Liu,
and either one of Yahoo or Herz.
We reverse the Examiner’s rejection of claims 17-32 under 35 U.S.C.
§ 102(e) as anticipated by Tatham; claims 24 and 32 under 35 U.S.C.
§ 103(a) as unpatentable over Tatham and Herz; and claims 17-32 under
35 U.S.C. § 103(a) as unpatentable over Tatham and Yahoo.

AFFIRMED

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