Ex Parte Cheah

Patent Trial and Appeal Board

Jan 11, 2018

14599216 (P.T.A.B. Jan. 11, 2018)

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.
14/599,216 01/16/2015 Chris Cheah 079894.2503 7661
91230 7590 01/16/2018
Raker Rntts; T T P /Faeehnnk Tne
EXAMINER
2001 ROSS AVENUE STITT, ERIK V
SUITE 700
Dallas, TX 75201 ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
01/16/2018 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
ptomai!2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS CHEAH
Appeal 2017-002157
Application 14/599,216
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 CASE1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—23. We have jurisdiction under 35 U.S.C. § 6(b).
1 We note that the instant application on appeal is related to nine 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); U.S. Patent Application
No. 13/609,041 and Appeal No. 2017-002678, decided Aug. 17, 2017
(affirmed-in-part); U.S. Patent Application No. 13/615,062 and Appeal No.
2017-002512; U.S. Patent Application No. 13/618,881 and Appeal No.
2017-002456; U.S. Patent Application No. 13/612,619 and Appeal No.
2017-002455; U.S. Patent Application No. 12/258,295 and Appeal No.
Appeal 2017-002157
Application 14/599,216
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. 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. 10-12. After (i) a first user submits personal profile
information and sends a request for electronic information distribution to a
second user; and (ii) a second user accepts the request and “establishes an
association” between the users, updated electronic information is distributed
between the users “to an extent permitted by the second user” (claim 1). See
2017-002384; U.S. Patent Application No. 13/612,606 and Appeal No.
2017-002088; U.S. Patent Application No. 12/258,302 and Appeal No.
2017-002070; U.S. Patent Application No. 11/840,968 and Appeal No.
2017-009638; U.S. Patent Application No. 13/610,560 and Appeal No.
2017-008097; and U.S. Patent Application No. 13/612,584 and Appeal No.
2017-008113.
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Application 14/599,216
Fig. 12B, step 1220; Fig. 18D; see also Spec. Tflf 108, 110, 112, 113;
Abstract; and App. Br. 10-11.2
Exemplary Claim
Exemplary claim 1, with bracketed lettering and emphases added to
disputed portions of the claim, reads as follows below:
1. A method comprising:
receiving, by one or more servers, a personal identifier
and profile information from a first user;
storing, by one or more servers, the personal identifier in
association with the profile information for the first user in a
computer readable storage medium;
receiving, by one or more servers, from the first user, a
request for electronic information distribution with a second
user;
sending, by one or more servers, the request for
electronic information distribution to the second user;
[A ] receiving, by one or more servers, from the second
user, an acceptance of the request for electronic information
distribution, wherein the acceptance of the request establishes
2 Notably, Appellant’s Appeal Brief is not in compliance with 37 C.F.R.
§ 41.37(c)(l)(iii), which requires a concise explanation of the subject matter
defined in each rejected independent claim. Although Appellant provides a
lengthy explanation of the disclosed invention from pages 5 through 13 of
the Appeal Brief, there is no mapping of the limitations of claims 1,10, and
19 on appeal to the Specification and/or Drawings in the “Summary of
claimed subject matter” section of the Appeal Brief (see generally App. Br.
5—13). And, most notably, Appellant’s “Summary of Claimed Subject
Matter” in the Appeal Brief fails to provide an explanation and/or support in
the Specification and/or Drawings for claim limitation [A] at issue in the
instant case on appeal (see infra, claim limitation [A]).
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Application 14/599,216
an association that allows electronic information of the second
user to be distributed to the first user; and
thereafter distributing updated electronic information
between the first user and the second user to an extent permitted
by the second user.
The Examiner’s Rejections
(1) The Examiner rejected claims 1, 3, 5—10, 12, 14—19, and 21—23
under 35 U.S.C. § 102(e) as being anticipated by Robertson (US 6,269,369
Bl; issued July 31, 2001). Final Act. 4—7; Ans. 2—5.
(2) The Examiner rejected claims 4 and 13 under 35 U.S.C. § 103(a)
as being obvious over the combination of Robertson and Kukkal et al. (US
5,774,117; issued June 30, 1998, hereinafter “Kukkal”). Final Act. 8.
(3) The Examiner rejected claims 2, 11, and 20 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Robertson and Gilmour
(US 6,377,949 Bl; issued Apr. 23, 2002). Final Act. 8-9.
Issue on Appeal
Based on Appellant’s arguments in the Briefs (App. Br. 14—17; Reply
Br. 2—5), the following principal issue is presented on Appeal:3
3 Appellant does not present separate arguments regarding the patentability
of claims 3, 5—10, 12, 14—19, and 21—23, and instead relies on the arguments
presented as to claim 1 for the patentability of these claims (see App. Br.
14—16; Reply Br. 2-4). Claims 1 (method), 10 (apparatus), and 19
(computer-readable medium) recite similar subject matter, including
receiving information from a first user, sending a request to distribute
electronic information to a second user, and receiving an acceptance to
distribute electronic information from a second user. Therefore, we select
independent claim 1 as representative of the group of claims consisting of
claims 1, 3, 5—10, 12, 14—19, and 21—23 rejected as being anticipated by
Robertson. Because Appellant does not present separate arguments as to the
obviousness rejections of: (i) claims 4 and 13 over Robertson and Kukkal;
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Application 14/599,216
Did the Examiner err in rejecting claims 1, 3, 5—10, 12, 14—19, and
21—23 under 35 U.S.C. § 102(e) as being anticipated by Robertson because
Robertson fails to disclose, either explicitly or inherently, limitation [A], as
recited in independent claim 1, and as similarly recited in remaining
independent claims 10 and 19?
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (App. Br. 14—
17; Reply Br. 2—5), the Examiner’s rejection (Final Act. 4—9), and the
Examiner’s response (Ans. 2—5) to Appellant’s arguments.
Anticipation Rejection of Claims 1, 3, 5—10, 12, 14—19, and 21—23
With regard to representative 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. 4—5); and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief
(see Ans. 3—5). We concur with the conclusions reached by the Examiner
with regard to the anticipation of claim 1 by Robertson. We disagree with
Appellant’s contentions (App. Br. 14—16; Reply Br. 3 4) that the Examiner
erred in rejecting claim 1, and we find Robertson discloses limitation [A] as
recited in claim 1.
Representative claim 1 on appeal requires receiving information from
a first user, sending a request to distribute electronic information to a second
user, and receiving an acceptance to distribute electronic information from a
and (ii) claims 2, 11, and 20 over Robertson and Gilmour, the outcome of
the obviousness rejections will fall with the outcome for representative claim
1. Accordingly, our analysis will only address representative claim 1.
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second user. More specifically, as to receiving an acceptance from the
second user, limitation [A] of representative claim 1 recites that “the
acceptance of the request establishes an association that allows electronic
information of the second user to be distributed to the first user” (claim 1)
(emphasis added).
The Examiner determines that Robertson discloses this limitation in
Figure 9 and column 8, lines 10 to 29 (Final Act. 5),4 as well as Figures 5, 8,
and 10 and the corresponding descriptions for those figures, including
column 5, lines 20 to 29 and column 9, lines 57 to 62 (Ans. 3—5). We agree
with the Examiner’s findings, and add that even if Robertson does not
expressly disclose the disputed limitation, Robertson inherently discloses the
disputed limitation because Robertson necessarily functions in accordance
with the disputed limitation as supported by Appellant’s Specification and
Drawings.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. . . . ‘Under the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.’” In re Cruciferous Sprout Litigation, 301 F.3d
1343, 1349 (Fed. Cir. 2002) (citations omitted). Where the Examiner finds a
reference inherently discloses a claim element, the Examiner bears the
burden of providing reasonable proof that a claim limitation is an inherent
4 The Examiner (Final Act. 5) incorrectly cites to paragraph 57, however the
Examiner is referring to column 8, lines 10 to 29 which describes Figure 9.
We consider this as harmless error. And, as a point of fact, Appellant
responds in the Reply Brief by discussing column 8, lines 11 to 23 of
Robertson (see Reply Br. 2).
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Application 14/599,216
characteristic of the prior art. In re Best, 562 F.2d 1252, 1254—55 (CCPA
1977); see also Crown Operations Int’l, LTD v. Solatia Inc., 289 F.3d 1367,
1377 (Fed. Cir. 2002). “In relying upon the theory of inherency, the
[EJxaminer must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)
(emphasis added). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). Minor deviations from
the strict disclosure of the prior art are accepted, as long as one of skill in the
art would understand that those minor deviations are consistent with the
prior art’s teachings. See Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047
n.4 (Fed. Cir. 1995).
In the instant case before us, the Examiner has addressed the required
proof and has shown Robertson’s acceptance of a request establishes an
association allowing distribution of electronic information between users as
recited in claim 1 on appeal. We agree with the Examiner (Ans. 3—5) that a
second user accepts a request that establishes an association between a first
user and the second user which allows distribution of electronic information
between the first and second users. More specifically, Robertson’s Figure 9
shows a graphical user interface (GUI) 600 for setting permission levels of
profile information to be shared (i.e., allowed for distribution). And, Figure
10 shows different permission levels 620 (level 1), 626 (level 2), and 632
(level 3) for sharing different types/amounts of electronic information. The
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Application 14/599,216
second user sets the level of permission (col. 5,11. 20—29, “certain level of
permissions 460-10”) using GUI 600 shown in Figure 9. The GUI 600
“allow[s] the second user to set data field permissions for the first user [600-
5]” (col. 8,11. 22-23).
Notably, Appellant’s flow chart in Figures 12A and 12B shows the
second user’s “acceptance with limitations” (Fig. 12B, step 1220) as being
followed by the display of the limitations on the screen (Fig. 12B, step 1222)
and the selection of limits for the information exchange (Fig. 12B, step
1224) using the GUI shown in Figure 18D. Spec. Tflf 108, 110, 112, and 113;
see also App. Br. 10—11. This is the same as Robertson’s disclosure of a
second user’s acceptance of a request from a first user 600-5 (Robertson col.
8,11. 11—23), followed by display of the permission levels on a screen, and
the selection of permission levels for the information exchange using GUI
600 shown in Figure 9 (selection of permission levels by checking boxes
(e.g., 600-7, 600-9)) and GUI 618 shown in Figure 10 with three different
levels of permission (620, 626, and 632). Both Appellant (Fig. 18D; Spec. 1
112) and Robertson (Figs. 9, 10; col. 3,11. 17—21; col. 5,11. 20-24; and col.
8,11. 11—23) disclose a second user accepting a request from a first user by
selecting limits/permission levels for information exchange which
establishes an association permitting automatic updates of profile
information.
Appellant’s arguments (App. Br. 14—16; Reply Br. 3 4) that
Robertson fails to disclose “the acceptance of the request establishes
an association that allows electronic information of the second user to be
distributed to the first user,” as recited in claim 1, are not persuasive in light
of Robertson’s ample disclosures concerning allowing a second user to set
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permission levels for sharing (i.e., establishing an association for distribution
of information between first and second users). For example, Robertson
discloses: (i) “allowing] each user to specify on an individual basis which
of their contacts are permitted to access respective datums of their user
information” (Abstract, 11. 4—7); (ii) setting a permission type 542 (Fig. 6) to
form an association that “relates users to each other” (Robertson col. 5,1. 21)
“with a certain level of permissions 460-10” {id. at col. 5,1. 24); and
(iii) setting at least three different levels {id. at Fig. 10, level 1 620, level 2
626, and level 3 632; and col. 10,11. 17—67).
Appellant’s arguments (App. Br. 15—16; Reply Br. 3 4) that
Robertson’s description {see col. 8,11. 64—66) that an email forwarding
address for member B will be added to member A’s virtual address book
fails to disclose “the acceptance of the request establishes an association that
allows electronic information of the second user to be distributed to the first
user” as recited in claim 1 are not persuasive, as the Examiner does not rely
on this disclosure in rejecting claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 1, as well
as claims 3, 5—10, 12, 14—19, and 21—23 grouped therewith.
Obviousness Rejections of Claims 2, 4, 11, 13, and 20
Based on Appellant’s failure to address the Examiner’s prima facie
case of obviousness as to (i) claims 4 and 13 over Robertson and Kukkal,
and (ii) claims 2, 11, and 20 over the combination of Robertson and
Gilmour, Appellant has failed to show that the Examiner erred in
determining that the combination of Robertson and either of the secondary
references teaches or suggests the subject matter recited in claims 2, 4, 11,
13, and 20. Accordingly, we summarily sustain the Examiner’s obviousness
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rejections of these claims. See 37 C.F.R. § 41.37(c)(l)(iv) (“Each ground of
rejection contested by Appellant must be argued under a separate heading,
and each heading shall reasonably identify the ground of rejection being
contested;” and “any arguments or authorities not included in the [Ajppeal
[Bjrief will be refused consideration.”).
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1,3, 5—10, 12, 14—
19, and 21—23 under 35 U.S.C. § 102(e) as being anticipated by Robertson,
because Robertson discloses limitation [A] as recited in representative claim
1.
(2) Appellant has not adequately shown the Examiner erred in
rejecting (a) claims 4 and 13 over Robertson and Kukkal; and/or (b) claims
2, 11, and 20 over Robertson and Gilmour.
DECISION
The Examiner’s (i) anticipation rejection of claims 1, 3, 5—10, 12, 14—
19, and 21—23; and (ii) obviousness rejections of claims 2, 4, 11, 13, and 20
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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