Ex Parte 7853881 et al

Patent Trial and Appeal Board

Aug 12, 2015

95002097 (P.T.A.B. Aug. 12, 2015)

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.
95/002,097 08/22/2012 7853881 FABO-015/00US 9528
108756 7590 08/12/2015
Gutride Safier LLP
100 Pine Street, Suite 1250
San Francisco, CA 94111
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/12/2015 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., SALESFORCE.COM, INC.,
ORACLE CORPORATION, ROCKMELT, INC.,
CMI MARKETING, INC., MEEBO, INC. (A WHOLLY OWNED
SUBSIDIARY OF GOOGLE INC.), CONDUIT USA, INC.,
GLAM MEDIA, INC., and NING, INC.
Requester, Respondent, and Cross-Appellant

v.

REAL TIME SOCIAL INVENTIONS LLC
Patent Owner, Appellant, and Cross-Respondent
____________

Appeal 2015-002273
Reexamination Control 95/002,097
Patent 7,853,881 B1
Technology Center 3900
____________

Before STEPHEN C. SIU, DENISE M. POTHIER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL

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BACKGROUND
Facebook, Inc., Salesforce.com, Inc., Oracle Corporation, Rockmelt,
Inc., CMI Marketing, Inc., Meebo, Inc. (a wholly owned subsidiary of
Google Inc.), Conduit USA, Inc., Glam Media, Inc., and Ning, Inc.
(collectively “Requester”) filed a Request for Inter Partes Reexamination
(“Request”) of United States Patent 7,853,881 (hereinafter the “’881
patent”)1 on August 22, 2012. The ’881 patent includes claims 1–25.
During reexamination, the Examiner rejected original claims 1–25 and
rejected new claims 26–45, which Patent Owner added by amendment. See
PO Resp. to Non-Final Office Actn., Feb. 19, 2013.
Patent Owner, Real Time Social Interactions LLC (“Patent Owner”),
appealed (Notice of Appeal, Dec. 27, 2013) under 35 U.S.C. §§ 134 and 315
the Examiner’s decision to reject claims 1–45 (PO App. Br. 9–28).2 Patent
Owner also filed on March 7, 2014, an amendment under 37 C.F.R.
§ 41.33(b), canceling claims 1–9, 11–27, and 29–45. The Examiner entered
the amendment. Ans. 1 (indicating. under Status of Amendment After
Action Closing Prosecution. that the amendment filed March 7, 2014 has
been entered). Claims 10 and 28 remain pending.

1 The ’881 patent issued to Assal, et al., on December 14, 2010, from
Application 11/825,021, claiming priority to provisional applications
60/818,672 filed July 3, 2006 and 60/836,273 filed August 8, 2006.
2 Throughout this opinion, we refer to (1) the Right of Appeal Notice
mailed Nov. 27, 2013 (“RAN”); (2) Patent Owner’s Appeal Brief filed Mar.
7, 2014 (“PO App. Br.”); (3) Requester’s Respondent Brief filed Apr. 7,
2014 (“TPR Resp. Br.”); (4) the Examiner’s Answer mailed July 9, 2014
(“Ans.”) (incorporating the RAN by reference); and (5) Patent Owner’s
Rebuttal Brief filed Aug. 11, 2014 (“PO Reb. Br.”).
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Requester filed a Notice of Cross- Appeal of the Examiner’s decision
to withdraw and/or not maintain numerous proposed rejections. Notice of
Cross-Appeal, Jan. 10, 2014. Subsequent to the Notice of Cross-Appeal,
Requester did not file an appeal brief within the time limits set forth in 37
C.F.R. § 41.66(a), resulting in dismissal of Requester’s cross-appeal.
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm the
Examiner’s decision to reject claims 10 and 28.

RELATED PROCEEDINGS
We are informed of eight pending litigation matters and a reissue
application (Application No. 13/715,386) involving the ’881 patent. PO
App. Br. 4; accord TPR Resp. Br. 1

STATEMENT OF THE INVENTION
The ’881 patent describes a multi-user online real-time network in
which users access content associated with a plurality of social networks
related by common communities of interest. See generally ’881 patent,
Abstract.
Amended claims 10 and 28 are illustrative:3
10. A method of interacting in real-time with online
users accessible through a computer network, comprising:
accessing by a first user a first real-time social network
comprising a community of members having a specific
predetermined common interest, the first real-time social

3 Patent Owner proposed amendments rewriting claims 10 and 28 into
independent form (see Amendment Under 37 C.F.R. 41.33(b), filed Mar. 7,
2014), which amendments the Examiner entered (Ans.).
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network being within an interactor zone that includes one or a
logical collection of related real-time social networks, the first
user accessing the first real-time social network using an
interactor client application that allows the first user to
communicate in real-time with other online users who are
members of said first or another one of said real-time social
networks;
displaying in real-time to the first user identities of other
users who are online at the time and who are members of the
first or another one of said real-time social networks within said
interactor zone and who choose to be identifiable; and
enabling using the interactor client application real-time
interaction by the first user with said selected ones of said other
online users;
wherein said interactor client application comprises one
of code or a URL reference to code that is inserted into a
content page by the interaction server.

28. A method of interacting in real-time with online
users accessible through a computer network, comprising:
accessing by a first user a first real-time social network
comprising a community of members having a specific
predetermined common interest, the first real-time social
network being within an interactor zone that includes one or a
logical collection of related real-time social networks, the first
user accessing the first real-time social network using an
interactor client application that allows the first user to
communicate in real-time with other online users who are
members of said first or another one of said real-time social
networks;
displaying in real-time to the first user identities of other
users who are online at the time and who are members of the
first or another one of said real-time social networks within said
interactor zone and who choose to be identifiable; and
enabling using the interactor client application real-time
interaction by the first user with said selected ones of said other
online users,
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further comprising determining whether voice
communication with one of said other online users is enabled,
and providing voice communication access information of said
one of said other online users if said voice communication
capability is enabled.

MAIN REJECTIONS AND PROPOSED REJECTIONS
Patent Owner Appeals the Examiner rejecting the claims as follows:
1) Claim 10 under 35 U.S.C. § 102(b) as anticipated by Gold (U.S.
Patent Publication No. 2005/0102358 A1, published May 12, 2005);
2) Claim 10 under 35 U.S.C. § 102(b) as anticipated by
MacNaughton (U.S. Patent No. 5,796,393, filed August 18, 1998);
3) Claim 10 under 35 U.S.C. § 103(a) as obvious over Bauer
(U.S. Patent Publication No. 2002/0083134 A1, published June 27, 2002)
and Gold;
4) Claim 10 under 35 U.S. C. § 103(a) as obvious over Inala (U.S.
Patent No. 6,442,590 B1, filed August 27, 2002) and Gold;
5) Claim 28 under 35 U.S.C. § 112, ¶ 2, for lack of written
description;
6) Claim 28 under 35 U.S.C. § 102(b) as anticipated by Gold;
7) Claim 28 under 35 U.S.C. § 102(e) as anticipated by Manion
(U.S. Patent Publication No. 2006/0242581 A1, published October 26,
2006);
8) Claim 28 under 35 U.S.C. § 102(e) as anticipated by Harvey
(U.S. Patent No. 6,519,629 B2, published February 11, 2003); and
9) Claim 28 under 35 U.S.C. § 103(a) as obvious over Bauer and
Gold.
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REJECTION OF CLAIM 10 OVER INALA AND GOLD
Patent Owner argues that rejections of claim 10 over Gold are
erroneous at least because Gold does not disclose an interaction server
inserting code or a URL reference to code into a content page of an
interactor client application. PO App. Br. 16–19. We frame the issue with
respect to the obvious rejection of claim 10 over Gold and Inala (rejection 4)
as follows:
Did the Examiner err by finding that, under 35 U.S.C. § 103, it
would have been obvious to one of ordinary skill in the art in
view of the combined teachings of Inala and Gold for an
interactor client application to have code or a URL reference to
code inserted into a content page by an interaction server?

We are unpersuaded of error.
Gold depicts a URL reference to code embedded in HTML code for a
web page (i.e., a “content page”). Gold, Fig. 36. Patent Owner argues this
code is not the claimed “code or URL reference to code” because it is not
inserted by an interaction server but is instead inserted by the web site owner
(i.e., licensee). PO App. Br. 11–14. We find this argument unavailing
because, as the Examiner finds, the “set up, management and usage
functions of the instant system may be served directly from the licensor web
server 401 to licensee web site 402.” ACP4 at 57 (quoting Gold, ¶ 0116). In
other words, while the licensee may be manipulating the “setup” user
interface (e.g., Gold, Figs. 12–16), because Gold discloses that the insertion
of the “URL reference to code . . . into a content page” (Fig. 36) is
performed on the licensor web server (i.e., the interaction server), an

4 Action Closing Prosecution, entered October 4, 2013.
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interaction server is performing the insertion. This meets the disputed
limitation in claim 10.
Patent Owner’s further assertion that Gold teaches away from the
licensor adding code (PO App. Br. 15 (quoting Gold ¶ 117 (“Preferably, no
code is added to any page of the licensee’s web site . . . .” (emphasis
omitted)))) is unavailing, because Gold expressly teaches the licensor server
inserting the code as discussed above.
In view of the foregoing, we are unpersuaded of error in the
Examiner’s rejection of claim 10 as obvious over Inala and Gold (rejection
4).
REJECTION OF CLAIM 28 OVER BAUER AND GOLD
Patent Owner argues the rejections of claim 28 over Gold because
Gold allegedly does not disclose user-specific settings that allow users to
specify criteria for determining their availability to other users. PO App.
Br. 23. Patent Owner states that Gold “discloses an ‘Allow Voice Meetings’
checkbox that enables all users in a particular online community to call any
other user who is online” and “users of Gold’s system can only tell whether
another user is online or offline.” Id. at 23–24 (bolding and emphasis in
original). Patent Owner asserts that “Gold’s relatively simplistic
communications system is entirely different from, and does not anticipate,
the more sophisticated system required by claim 28.” Id. at 24.
We analyze the Examiner’s rejection of claim 28 over Bauer and Gold
(rejection 9), framing the issue as follows:
Did the Examiner err by finding that, under 35 U.S.C. § 103, it
would have been obvious to one of ordinary skill in the art in
view of the combined teachings of Bauer and Gold to determine
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whether voice communication with one of said other online
users is enabled and provide voice communication access
information of said one of said other online users if said voice
communication capability is enabled?

We are unpersuaded of error for at least the reasons stated by
Requester. TPR Resp. Br. 18–20. To the extent Patent Owner’s arguments
are premised on the claim requiring user-specific settings (PO App. Br. 23),
we are unpersuaded of error because the claim does not require user-specific
settings. Although claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. See
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir.
2004). We also find that Gold’s “Allow Voice Meetings” checkbox (Gold
Fig. 11) at least suggests the claimed “determining whether voice
communication with one of said other online users is enabled” (i.e., if the
checkbox is checked, voice communication is enabled). And we further find
that the associated “Voice Meeting URL Location” and “Voice Meeting
Server IP” blanks (Gold Fig. 11) at least suggest the claimed “providing
voice communication access information of said one of said other online
users if said voice communication capability is enabled” (i.e., if voice
communication is requested, the information is “provided” to thereby initiate
communication).
Accordingly, we are unpersuaded of error in the Examiner’s
determination that claim 28 is obvious over Bauer and Gold (rejection 9).

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WRITTEN DESCRIPTION REJECTION
Claim 28 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. RAN 5–6. Patent
Owner does not argue this rejection. We therefore summarily sustain the
rejection. Cf. Manual of Patent Examining Procedure (MPEP) § 1205.02,
9th ed., March 2014 (“If a ground of rejection stated by the examiner is not
addressed in the appellant's brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it . . . .”)

CONCLUSIONS
We are unpersuaded of error in the Examiner’s decision to reject:
1) claim 10 under 35 U.S. C. § 103(a) as obvious over Inala and Gold
(rejection 4); 2) claim 28 under 35 U.S.C. § 103(a) as obvious over Bauer
and Gold (rejection 9); and 3) claim 28 under 35 U.S.C. § 112, first
paragraph.
In view of our decision that all claims on appeal stand properly
rejected, it is unnecessary to reach the remaining issues. Cf. In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional rejections).
DECISION
Based on the record before us, we sustain the Examiner’s decision to
reject claims 10 and 28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
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In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

peb

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Patent Owner:

GUTRIDE SAFIER LLP
100 Pine Street, Suite 1250
San Francisco, CA 94111

Third Party Requester:

COOLEY LLP ATTN: PATENT GROUP
1299 Pennsylvania Avenue, NW, Suite 700
Suite 1100
Washington, DC 20004