Ex Parte CheahDownload PDFPatent Trial and Appeal BoardAug 30, 201813610560 (P.T.A.B. Aug. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/610,560 09/11/2012 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. 079894.1133 8433 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 Appeal2017-008097 Application 13/610,560 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 the Examiner's Final Rejection of claims 25, 26, and 29-46, which constitute all the claims 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. 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 Appeal2017-008097 Application 13/610,560 pending in this application. Claims 1-24, 27, and 28 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b ). 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 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; 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; U.S. Patent Application No. 13/610,560 and Appeal No. 2017-008097; and U.S. Patent Application No. 13/618,881 and Appeal No. 2017-002456 decided July 5, 2018 (reversed). 2 Appeal2017-008097 Application 13/610,560 information or Universal Resource Locator, hyperlinks, audio/video objects, etc.). Spec. ,r,r 10-12. Exemplary Claims Exemplary claims 25, 45, and 46, with bracketed lettering and emphases added to disputed portions of the claims, read as follows: 25. A method comprising: storing, by one or more processors, profile information received from each of a plurality of users in a user database, the profile information for a respective user comprising contact information for the respective user; receiving, by the one or more processors, from a requesting registered user, a request to exchange user profile information with an identified registered user, [A] the request comprising information about the identified registered user entered in an input area of a graphical user interface by the requesting registered user; [BJ sending, by the one or more processors, a request email to the identified registered user, the request email comprising: a notification of the request from the requesting registered user; and one or more selectable options that are displayed within the request email that permit the identified registered user to select, directly from the request email, whether or not to exchange user profile information with the requesting registered user; receiving, by the one or more processors, a response from the identified registered user in connection with the request email, the response being generated at least in part by the identified registered user interacting with the one or more 3 Appeal2017-008097 Application 13/610,560 selectable options displayed within the request email, the response comprising a selection relating to the request; and sending, by the one or more processors, information to the requesting registered user in accordance with the selection. 45. The method of claim 25, further comprising [CJ providing for display in the graphical user interface, by the one or more processors, a status area that displays a status indication of each of one or more prior profile requests that the requesting registered user has previously submitted. 46. The method of claim 25, further comprising [DJ adding, by the one or more processors, the identified registered user as a contact of the requesting registered user only after the identified registered user selects, using the one or more selectable options, to exchange user profile information with the requesting registered user. The Examiner's Rejections The Examiner rejected claims 25, 26, 29-44, and 46 under 35 U.S.C. § I03(a) over the combination of Robertson (US 6,269,369 Bl; issued July 31, 2001), Zhang et al. (US 6,016,478; issued Jan. 18, 2000) ("Zhang"), and Harkins et al. (US 5,657,461; issued Aug. 12, 1997) ("Harkins"). Final Act. 4--11. The Examiner rejected claim 45 under 35 U.S.C. § 103(a) over the combination of Robertson, Tang et al. (US 6,349,327 Bl; issued Feb. 19, 2002) ("Tang"), Harkins (US 5,657,461; issued Aug. 12, 1997), and Gilmour (US 6,377,949 Bl; issued Apr. 23, 2002). Final Act. 11-12. 4 Appeal2017-008097 Application 13/610,560 Issues on Appeal Based on Appellant's arguments in the Briefs (App. Br. 9--20; Reply Br. 2-9), the following issues are presented on appeal: 2 (1) Did the Examiner err in rejecting claims 25, 26, 29-44, and 46 under 35 U.S.C. § 103(a) over the combination of Robertson, Zhang, and Harkins 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 claim 45 under 35 U.S.C. § 103(a) over the combination of Robertson, Tang, Harkins, and Gilmour because the combination, and specifically Robertson, fails to teach or suggest limitation [CJ, including displaying a status indication, as recited in dependent claim 45? (3) Did the Examiner err in rejecting claim 46 under 35 U.S.C. § 103(a) over the combination of Robertson, Zhang, and Harkins, because the combination, and specifically Robertson, fails to teach or suggest limitation [DJ, including adding a user as a contact "only after" the 2 Appellant does not present separate arguments regarding the patentability of claims 26, and 29--44, and instead relies on the arguments presented as to claim 25 for the patentability of claims 26, and 29-44 (see App. Br. 11, 13, 14; Reply Br. 3, 6). Appellant provides separate arguments for claim 45 (see App. Br. 17-18; Reply Br. 7-8) and claim 46 (see App. Br. 16--17; Reply Br. 6--7). Therefore, we select independent claim 25 as representative of the group of claims consisting of claims 25, 26 and 29--44 rejected as being obvious over the combination of Robertson, Zhang, and Harkins. Our analysis will address representative claim 25, and claims 45 and 46 separately argued by Appellant. 5 Appeal2017-008097 Application 13/610,560 user has been selected for information exchange, as recited in dependent claim 46? 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, 26, 29-44, and 46 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--8), and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief (see Ans. 3-7). We concur with the conclusions reached by the Examiner with regard to the obviousness of the subject matter of claim 25 in view of the combination of Robertson, Zhang, and Harkins. We disagree with Appellant's contentions (App. Br. 9--15; Reply Br. 2---6) that the Examiner erred in rejecting claim 25 (and claims 26, and 29--44, which depend respectively therefrom) because the combination of Robertson, Zhang, and Harkins teaches or suggests limitations [A] and [BJ recited in claim 25, including a request having information about a user. We agree with the Examiner (Ans. 3-5) that the combination of Robertson and Harkins teaches or suggests limitation [A] set forth in claim 25, namely, a request having information about an identified registered user entered in an input area of a graphical user interface ( GUI) by a requesting registered user. Specifically, we agree with the Examiner that (i) Robertson 6 Appeal2017-008097 Application 13/610,560 discloses an input area for specifying information about an identified user (Ans. 3--4 citing Robertson col. 8, 11. 14--17; Fig. 8; see also col. 7, 11. 28-30) because making a request by naming a user clearly 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; and (ii) Harkins discloses selecting how information is to be sent (Ans. 4 citing Harkins col. 11, 11. 2-5; Fig. 11), which is information about how a user is to receive information ( e.g., by electronic mail). We also agree with the Examiner (Ans. 4--5) that the combination of references teaches or suggests limitation [BJ set forth in claim 25, namely a request email with one or more selectable options displayed within the request email permitting an identified user to select, directly from the request email, whether or not to exchange user profile information with the requesting registered user. More specifically, Robertson discloses that when member B grants permission to exchange information with member A, member B's information will appear in member A's Virtual Address Book as an identified user, as well as not displaying information about a member when no permission is given by a user (see col. 9, 11. 7-9, 17-29, 57-62; see also col. 10, 11. 59---61). Finally, we agree with the Examiner (Ans. 6) that all three references pertain to allowing registered users to set communication preferences for communications among members, and that it would have been obvious to combine (i) Zhang to allow a user to accept/decline requests (Final Act. 5---6 citing Zhang Fig. 13; col. 3, 11. 31-32; Ans. 6); and (ii) Harkins to allow a user to set the method of sending the request (e.g., by email, fax, etc.) and 7 Appeal2017-008097 Application 13/610,560 select other users they want to send to (Final Act. 6 citing Harkins Fig. 2, 11; col. 11, 11. 2-5; Ans. 6). In this light, Appellant's argument (App. Br. 14-- 15) that the Examiner failed to demonstrate a prima facie showing of obviousness, and only provides conclusory statements, is not persuasive. Accordingly, we sustain the Examiner's rejection of claim 25, as well as claims 26, and 29--44 grouped therewith. Claim 45 Appellant contends (App. Br. 16-17; Reply Br. 6-7) that the combination of Robertson, Tang, Harkins, and Gilmour, and specifically Gilmour, fails to teach or suggest limitation [CJ, including a status area for displaying a status indication, as recited in dependent claim 45. We disagree. Instead, we agree with the Examiner (Ans. 6-7) that Gilmour discloses notifying users about their status via case controller 45A (Ans. 6 citing Gilmour col. 9, 11. 66-67), summarizing open cases in a Web area for a user/inquirer ( Ans. 6 citing Gilmour col. 10, 11. 31-34 ), and communicating a status to the user when a case is denied (Ans. 7 citing Gilmour col. 10, 11. 33-35). Gilmour discloses case controller 45A and notification controller (shown in Figure 2) for sending notifications to users about the status of a request (see generally col. 9, 1. 66-col. 10, 1. 40) ( describing status notification operations). Because the status of at least one previous user request is being notified to the user by the case controller 45A and/or notification controller, Gilmour teaches or suggests "a status indication of each of one or more prior profile requests that the requesting registered user has previously submitted," as recited in claim 46 ( emphasis added). Accordingly, we sustain the Examiner's rejection of claim 45. 8 Appeal2017-008097 Application 13/610,560 Claim 46 With regard to claim 46, we agree with Appellant (Reply Br. 8) that "the Examiner's statement regarding M.P.E.P. 2144.04 is not applicable to this or any other of Appellant's claims," because the claims do not include a "forwarding email address step" as found by the Examiner (see Ans. 8). Therefore, there is no issue as to claim 46 as to whether or not it would have been obvious to not add a forwarding email address step. This is harmless error, and does not affect the Examiner's other findings with regard to Robertson, as discussed below. Appellant contends (App. Br. 17-19; Reply Br. 7-8) that the combination of Robertson, Harkins, and Gilmour, 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 46. In the Examiner's Answer, the Examiner newly cites to column 9, lines 15 through 18 of Robertson as disclosing this limitation (see Ans. 7). We agree with the Examiner (Ans. 7) that Robertson ( col. 9, 11. 15-18) 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 are unpersuasive. Accordingly, we sustain the Examiner's rejection of claim 46. 9 Appeal2017-008097 Application 13/610,560 CONCLUSIONS (1) The Examiner did not err in rejecting claims 25, 26, 29-44, and 46 under 35 U.S.C. § 103(a) over the combination of Robertson, Zhang, and Harkins 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 claim 45 under 35 U.S.C. § 103(a) over the combination of Robertson, Tang, Harkins, and Gilmour because the combination, and specifically Robertson, teaches or suggests limitation [CJ, including displaying a status indication, as recited in dependent claim 45. (3) The Examiner did not err in rejecting claim 46 under 35 U.S.C. § 103(a) over the combination of Robertson, Zhang, and Harkins 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 46. DECISION The Examiner's obviousness rejections of claims 25, 26, and 29-46 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 10 Copy with citationCopy as parenthetical citation