Ex Parte Cheah

Patent Trial and Appeal Board

Aug 30, 2018

13612619 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/612,619 09/12/2012 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.
079894.1149 5623
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
Appeal2017-002455
Application 13/612,619
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 25-31, 33--42, and 45--47. Claims 1-24, 32, 43, and 44 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); 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 (affirmed); U.S.
Appeal2017-002455
Application 13/612,619
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. When updated user profiles are available, the user
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); 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. 11/840,968 and Appeal No. 2017-009638 decided
August 30, 2018 (affirmed); U.S. Patent Application No. 13/610,560 and
Appeal No. 2017-008097 decided August 20, 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 13/612,619
can press an update button 1914 to receive the updates. See Fig. 19 A; Spec.
,r 114; claim 25.
Exemplary Claims
Exemplary claims 25, 30, and 47, with bracketed lettering and
emphases added to disputed portions of the claims, read as follows:
25. A method comprising:
by one or more processors associated with one or more
computer systems, receiving an access request from a first user
of an information exchange system, the access request
comprising a request to access a user profile of a second user of
the information exchange system, [A] the second user having
been identified by the first user entering information about
the second user in an input area of a graphical user interface,
the user profile of the second user being associated with profile
information provided by the second user and maintained in
a data repository, the profile information comprising contact
information for the second user;
by the one or more processors, 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 select directly from the authorization request
whether or not to exchange profile information with the first
user;
by the one or more processors, 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 displayed with the authorization request;
receiving, by the one or more processors, updated profile
information from the second user; and
[BJ sending, by the one or more processors if the
authorization response from the second user indicates that the
first user may access the user profile of the second user,
information to present one or more visual notifications on a
client device associated with the first user, the one or more
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Application 13/612,619
visual notifications indicating that updated profile information
for the second user is available.
30. The method of Claim 25, further comprising:
providing information to [CJ display an update button to
the first user in the graphical user interface, the update button
configured, when selected, to request the updated
profile information for the second user.
47. The method of Claim 25, further comprising [DJ
adding, by the one or more processors, the identified second user
as a contact of the first user only after the second user selects,
using the one or more selectable options, to exchange user
profile information with the first user.
The Examiner's Rejections
The Examiner rejected claims 25, 28-31, 34, 37--42, and 47
under 35 U.S.C. § I03(a) over the combination of Robertson (US 6,269,369
Bl; issued July 31, 2001) and Zhang (US 6,016,478; issued Jan. 18, 2000).
Final Act. 4--10.
The Examiner rejected claims 26, 27, 35, and 36 under 35 U.S.C.
§ I03(a) over the combination of Robertson, Zhang, and Patel (US
5,220,596; issued June 15, 1993). Final Act. 10-11.
The Examiner rejected claim 33 under 35 U.S.C. § 103(a) over the
combination of Robertson, Zhang, and Pepe (US 5,742,668; issued April 21,
1998). Final Act. 11-12.
The Examiner rejected claims 45 and 46 under 35 U.S.C. § I03(a)
over the combination of Robertson, Zhang, and Theimer (US 5,493,692;
issued Feb. 20, 1996). Final Act. 12-13.
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Issues on Appeal
Based on Appellant's arguments in the Briefs (App. Br. 8-18; Reply
Br. 2-12), the following issues are presented on appeal: 2
(1) Did the Examiner err in rejecting claims 25, 28-31, 34, 37--42,
and 47 under 35 U.S.C. § 103(a) over the combination of Robertson and
Zhang 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 25?
(2) Did the Examiner err in rejecting claims 30, 39, and 41 under
35 U.S.C. § 103(a) over the combination of Robertson and Zhang because
the combination fails to teach or suggest limitation [CJ, including displaying
an update button, as recited in each of claims 30, 39, and 41?
(3) Did the Examiner err in rejecting claim 47 under
35 U.S.C. § 103(a) over the combination of Robertson and Zhang, because
the combination, and specifically Robertson, fails to teach or suggest
limitation [DJ, including adding a user as a contact "only after" the user has
been selected for information exchange, as recited in dependent claim 4 7?
2 Appellant does not present separate arguments regarding the patentability
of claims 28, 29, 31, 34, 37, 38, 40, and 42, and relies instead on the
arguments presented as to claim 25 (App. Br. 10, 11 ). Appellant provides
separate arguments for claims 30, 39, 41, and 47 (see App. Br. 14--17; Reply
Br. 9-11). Independent claim 25 is a method claim, and recites limitations
commensurate in scope with remaining independent claims 34 ( computer-
readable storage media) and 40 (system). Therefore, we select independent
claim 25 as representative of the group of claims consisting of claims 25, 28,
29, 31, 34, 37, 38, 40, and 42 rejected as being obvious over the combination
of Robertson and Zhang. Our analysis will address representative claim 25,
and dependent claims 30, 39, 41, and 47 separately argued by Appellant.
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ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 4--12) in light
of Appellant's arguments in the Appeal Brief (App. Br. 9--20) 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 25, 28, 29, 31, 34, 37, 38, 40, 42
With regard to representative claim 25, 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--7), 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 claim 25 in view of the combination of
Robertson and Zhang. We disagree with Appellant's contentions (App. Br.
8-13; Reply Br. 2-9) that the Examiner erred in rejecting claim 25 because
(i) the combination of Robertson and Zhang fails to teach or suggest
limitations [A] and [BJ recited in claim 25; and/or (ii) there is no motivation
for combining the teachings of Robertson and Zhang.
Limitation [A]
We agree with the Examiner (Ans. 2-5) that the combination of
Robertson and Zhang teaches or suggests limitation [A] set forth in claim 25,
namely, a request having information about an identified registered user
(i.e., second user as claimed) entered in an input area of a graphical user
interface (GUI) by a requesting registered user (i.e., first user as claimed).
Specifically, we agree with the Examiner that Robertson discloses an input
area for specifying information about an identified user (Ans. 4 citing
Robertson col. 8, 11. 14--23; Fig. 8; see also col. 7, 11. 28-30). Robertson
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describes making a request by naming a user, which involves "information
about a user" (e.g., the user's name) being entered into a GUI (information is
entered into GUI 560 in Figure 7 and GUI 580 in Figure 8 allows a user to
select other users) via server personal contact manager software 343 shown
in Figure 5. In addition, Robertson discloses various other information entry
about users, such as information entered (i) into Friend Table 460 which
includes CustomerID 460-4, FriendID 460-6, and permission level 460-10
(Ans. 4 citing Robertson col. 5, 11. 20-24); and (ii) by users into various data
fields of GUI 560 shown in Figure 7 (Ans. 4 citing Robertson col. 6, 11. 48-
65).
In this light, Appellant's arguments (App. Br. 8-10; Reply Br. 2-5)
that Robertson fails to disclose a first user entering information about a
second user, and thus the combination of Robertson and Zhang fails to
disclose, teach, or suggest limitation [A] recited in claim 25, are
unpersuasive.
Limitation [BJ
We also agree with the Examiner (Ans. 5) that the combination of
references teaches or suggests limitation [BJ set forth in claim 25, namely
"one or more visual notifications on a client device of a first user that
indicates that updated profile information for the second user is available"
( claim 25)( emphasis added). Specifically, the Examiner finds (Ans. 5), and
we agree, that Robertson discloses (i) a GUI shown Figure 11 that provides a
first user with specific information that has changed about other users
(including a second user) to which the first user is linked (Ans. 5 citing
Robertson col. 4, 11. 1-5); and (ii) item 650-8 in Figure 11 that is a textual
notification that "Tom Khon" has updated his profile address information
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Ans. 5 citing Robertson Fig. 11 ). As a result, we find Robertson teaches or
suggests one or more visual notifications as recited in limitation [BJ of claim
25.
In this light, Appellant's arguments (App. Br. 10-11; Reply Br. 6-8)
that Robertson fails to disclose a first user entering information about a
second user, and thus the combination of Robertson and Zhang fails to
disclose, teach, or suggest limitation [BJ recited in claim 25, are
unpersuasive.
Motivation and Reasonable Expectation of Success
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'! 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.
In the instant case, the Examiner finds (Ans. 6), and we agree, that
both Robertson and Zhang pertain to the art of profile management, because
both Robertson (Ans. 6 citing Robertson Fig. 10) and Zhang (Ans. 6 citing
Zhang Fig. 5E) concern email address profile information. We also agree
with the Examiner (Ans. 6; Final Act. 6) that because Robertson sends
invitation emails to users, and Zhang discloses emails having information as
to how to respond to invitation requests such as "I accept" or "I decline" (see
Final Act. 6 citing Zhang Figs. 5E, 13; col. 3, 11. 31-32), the combination of
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these features would predictably result in allowing users to see how they
should respond to an email message. In this light, Appellant's arguments
(App. Br. 12-13; Reply Br. 8-9) that the Examiner failed to demonstrate a
prima facie showing of obviousness, and only provides conclusory
statements, are not persuasive.
Where there is a reason to modify or combine the prior art to achieve
the claimed invention, the claims may be rejected as prima facie obvious
provided there is also a reasonable expectation of success. In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); Amgen Inc. v. F. Hoffman-La
Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir. 2009) ("An obviousness
determination requires that a skilled artisan would have perceived a
reasonable expectation of success in making the invention in light of the
prior art.").
The "reasonable expectation of success" requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention, and does not look to whether one would reasonably expect the
prior art references to operate as those references intended once combined.
Instead, there must be a motivation to combine accompanied by a reasonable
expectation of achieving what is claimed. The teachings of the prior art can
provide a sufficient basis for a reasonable expectation of success. Merck,
800 F .2d at 1097. In the case before us, the Examiner has met this burden in
making findings about the teachings of the individual references as they
relate to the claimed subject matter.
In addition, evidence showing there was no reasonable expectation of
success may support a conclusion of nonobviousness. In re Rinehart, 531
F.2d 1048, 1054 (CCPA 1976). In the instant case, Appellant has not
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provided any evidence or reasoning showing there was no reasonable
expectation of success. Appellant's contentions (see App. Br. 12-13) do not
persuade us that the Examiner erred. Specifically, Appellant merely avers
that (i) the Examiner's resorts to hindsight (App. Br. 12-13; Reply Br. 9);
and (ii) there is no reasonable expectation of success (App. Br. 12-13),
without providing any reasoning, and such naked assertions, without any
evidence, are not persuasive. It is well settled that mere attorney arguments
and conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
( attorney argument is not evidence).
Moreover, the Examiner makes specific findings as to why a person of
ordinary skill in the art would have a reasonable expectation of success,
based on the teachings of the references (see Final Act. 4--7). Final Act. 6
(finding Robertson and Zhang are in the "analogous art of an email profile
manager"); Ans. 6 ("Robertson and Zhang are analogous art of profile
management").
Summary
Accordingly, we sustain the Examiner's rejection of claim 25, and
claims 28, 29, 31, 34, 37, 38, 40, and 42 grouped therewith. For similar
reasons, and because Appellant does not present any arguments as to claims
26, 27, 33, 35, 36, 45, and 46 which are also rejected for similar reasons and
on the same base combination of Robertson and Zhang as representative
claim 25, we also sustain the Examiner's rejections of claims 26, 27, 35, and
36 over Robertson, Zhang, and Patel; claim 33 over Robertson, Zhang, and
Pepe; and claims 45 and 46 over Robertson, Zhang, and Theimer.
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Claims 3 0, 3 9, and 41
Appellant contends (App. Br. 14--15; Reply Br. 9--10) that the
combination of Robertson and Zhang, and specifically Zhang, fails to teach
or suggest limitation [CJ, including displaying an update button, as recited in
dependent claims 30, 39, and 41. We disagree. Instead, we agree with the
Examiner (Ans. 6-7) that Robertson discloses (i) updating a profile when a
user changes information in the profile (Ans. 6 citing Robertson col. 3, 11.
17-21 ); and (ii) a graphical user interface 620 (Fig. 10) for selecting a name
(Fig. 10, user name 630) in order to show the updated profile information for
the selected user/name (see Robertson col. 10, 11. 17---col. 11, 1. 3)
( describing Figure 10). Because Robertson discloses using a mouse to
control a cursor and click on the name to be selected in order to receive
updated profile information (see col. 10, 11. 42--46), we agree with the
Examiner (Ans. 7) that Robertson does not necessarily disclose using a
button. However, we agree with the Examiner that Zhang (Fig. 5E)
discloses using selectable icons 532 and buttons (e.g., next button 535,
selection button 536; see col. 11, 11. 54--62) for making selections in order to
reveal a user's profile information (Ans. 7 citing Zhang Fig. 5E; col. 11, 11.
57-58). Therefore, we also agree with the Examiner (Ans. 7) that the
combination of Robertson and Zhang teaches or suggests how updated
profile information for a particular user can be selected for receipt and
display, using a button.
Accordingly, we sustain the Examiner's rejection of claims 30, 39,
and 41.
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Claim 47
Appellant contends (App. Br. 15-17; Reply Br. 10-11) that the
combination of Robertson and Zhang, and specifically Robertson, fails to
teach or suggest limitation [DJ, including adding a user as a contact "only
after" the user has been selected for information exchange, as recited in
dependent claim 47. In the Examiner's Answer, the Examiner newly cites to
column 9, lines 7 through 14 of Robertson as disclosing this limitation (see
Ans. 7-8). We agree with the Examiner (Ans. 8) that Robertson (col. 9, 11.
11-14) 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 that Robertson fails to disclose,
teach, or suggest limitation [DJ are unpersuasive.
Accordingly, we sustain the Examiner's rejection of claim 47.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 25-29, 31, 33-38, 40,
42, 45, and 46 under 35 U.S.C. § 103(a) over the base combination of
Robertson and Zhang 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 25.
(2) The Examiner did not err in rejecting claims 30, 39, and 41 under
35 U.S.C. § 103(a) over the combination of Robertson and Zhang because
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the combination teaches or suggests limitation [CJ, including displaying an
update button, as recited in dependent claims 30, 39, and 41.
(3) The Examiner did not err in rejecting claim 47 under
35 U.S.C. § 103(a) over the combination of Robertson and Zhang because
the combination, and specifically Robertson, teaches or suggests limitation
[DJ, including adding a user as a contact "only after" the user has been
selected for information exchange, as recited in dependent claim 4 7.
DECISION
The Examiner's obviousness rejections of claims 25-31, 33--42, and
45--47 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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