Ex Parte Cheah

Patent Trial and Appeal Board

Aug 15, 2017

13609041 (P.T.A.B. Aug. 15, 2017)

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.
13/609,041 09/10/2012 Chris Cheah 079894.1136 6137
91230 7590 08/17/2017
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
08/17/2017 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 2017-002678
Application 13/609,041
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 25^40, 42, 43, 45, and 46. Claims 1—24, 41, 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 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, and containing claims
relating to customizing a layout of a user profile); 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.
Appeal 2017-002678
Application 13/609,041
We affirm-in-part.
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.
Exemplary Claims
Exemplary claims 25, 45, and 46, with some bracketed lettering and
emphases added to disputed portions of the claims, read as follows:
25. A method comprising:
registering, by one or more processors associated with one
or more computer servers, a plurality of users;
providing, by the one or more processors, a graphical user
interface (GUI) comprising an input area for identifying one of
the registered users;
[A] receiving, by the one or more processors, from a
requesting registered user, a request to access profde
information of an identified registered user, the request
13/612,619 and Appeal No. 2017-002455; U.S. Patent Application No.
12/258,295 and Appeal No. 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 13/609,041
comprising information about the identified resistered user
entered in the input area of the GUI by the requesting registered
user,
[B] sending, by the one or more processors, a message to
the identified registered user, the message comprising one or
more selectable actions that are displayed within the
message, the one or more selectable actions permitting the
identified registered user to indicate directly from the message,
whether or not to exchange user profile information with
the requesting registered user;
receiving, by the one or more processors, a reply message
comprising an indication that the identified registered user
selected one or more actions of the one or more
selectable actions, the reply message having been formed and
sent to the one or more computer servers by a computing system
associated with the identified registered user; and
sending, by the one or more processors in response to
receiving the reply message; response message to the requesting
registered user about the selected one or more actions.
45. The method of claim 25, further comprising [C]
providing for display in the GUI, 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 [D]
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 actions, to exchange user profile information with the
requesting registered user.
The Examiner’s Rejection
The Examiner rejected claims 25^40, 42, 43, 45, and 46
under 35 U.S.C. § 103(a) over the combination of Robertson (US 6,269,369
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Application 13/609,041
Bl; issued July 31, 2001), Harkins (US 5,657,461; issued Aug. 12, 1997),
and Gilmour (US 6,377,949 Bl; issued Apr. 23, 2002). Final Act. 4—12.
Issues on Appeal
Based on Appellant’s arguments in the Briefs (App. Br. 8—19; Reply
Br. 2—11), the following issues are presented on appeal:2
(1) Did the Examiner err in rejecting claims 25 40, 42, and 43
under 35 U.S.C. § 103(a) over the combination of Robertson, Harkins, and
Gilmour because either (a) there is no motivation for the combination, or
(b) the combination fails to teach or suggest limitations [A] and [B], as
recited in claim 25?
(2) Did the Examiner err in rejecting claim 45 under
35 U.S.C. § 103(a) over the combination of Robertson, Harkins, and
Gilmour because the combination, and specifically Robertson, fails to teach
or suggest limitation [C], 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, Harkins, and
Gilmour because the combination, and specifically Robertson, fails to teach
2 Appellant does not present separate arguments regarding the patentability
of claims 26-40, 42, and 43, and instead relies on the arguments presented
as to claim 25 for the patentability of claims 26-40, 42, and 43 (see App. Br.
8—15; Reply Br. 2—7). Appellant provides separate arguments for claim 45
(see App. Br. 15—16; Reply Br. 7—9) and claim 46 (see App. Br. 16—18;
Reply Br. 9—10). Therefore, we select independent claim 25 as
representative of the group of claims consisting of claims 25 40, 42, and 43
rejected as being obvious over the combination of Robertson, Harkins, and
Gilmour. Our analysis will address representative claim 25 and claims 45
and 46 separately argued.
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Application 13/609,041
or suggest limitation [D], including adding a user as a contact “only after”
the 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. 8—19) and the Reply
Brief (Reply Br. 2—11) 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—40, 42, and 43
With regard to 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 claim 25 in view of the combination of Robertson, Harkins,
and Gilmour. We disagree with Appellant’s contentions (App. Br. 8—14;
Reply Br. 2—7) that the Examiner erred in rejecting claim 25 (and claims 26—
40, 42, and 43, which depend respectively therefrom) because the
combination of Robertson, Harkins, and Gilmour teaches or suggests
limitations [A] and [B] recited in claim 25, including a request having
information about a user.
Specifically, we agree with the Examiner (Ans. 3—5) that all three
references teach or suggest a request having information about a user
because (i) making a request by naming a user clearly involves “information
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about a user” (e.g., the user’s name), as in Robertson and Gilmour; and
(ii) selecting how information is to be sent is information about how a user is
to receive information (e.g., by email), as in Harkins.
We also agree with the Examiner (Ans. 5—6) that the combination of
references teaches or suggests a message having one or more selectable
actions that indicate, directly from the message, whether or not user profile
information is to be exchanged, as recited in claim 25. 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. 7) that all three references
pertain to “user interface profile management systems” and that it would
have been obvious to combine the references for the reasons provided by the
Examiner at pages 5—8 of the Final Rejection.
Accordingly, we sustain the Examiner’s rejection of claim 25, as well
as claims 26-40, 42, and 43 grouped therewith.
Claim 45
We concur with Appellant’s contentions (App. Br. 15—16; Reply Br.
7—9) that the combination of Robertson, Harkins, and Gilmour, and
specifically Robertson, fails to teach or suggest limitation [C], including
displaying a status indication, as recited in dependent claim 45. Although
Robertson’s Figure 11 shows a member update pseudo graphical user
interface including status indications 650-14 (new affiliated members) and
650-18 (members who have linked to the user and requested reciprocation),
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Robertson is silent as to displaying the status of each and every one of the
“prior profile requests that the requesting registered user has previously
submitted,” as recited in claim 45.
Accordingly, we do not sustain the Examiner’s rejection of claim 45.
Claim 46
We concur with Appellant’s contentions (App. Br. 16—18; Reply Br.
9—10) that the combination of Robertson, Harkins, and Gilmour, and
specifically Robertson, fails to teach or suggest limitation [D], including
adding a user as a contact “only after” the user has been selected for
information exchange, as recited in dependent claim 46. More specifically,
we agree with the Appellant’s arguments (App. Br. 17—18; Reply Br. 10)
that the portions of Robertson relied upon by the Examiner actually disclose
the opposite of what is claimed. In other words, we agree with Appellant
(App. Br. 17—18; Reply Br. 10) that Robertson’s disclosure of adding
member B to member A’s address book even if member B does not
reciprocate does not meet what is claimed, namely adding “the identified
registered user as a contact of the requesting registered user only after the
identified registered user selects ... to exchange user profile information
with the requesting registered user,” as recited in claim 46.
Accordingly, we do not sustain the Examiner’s rejection of claim 46.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 25 40, 42, and 43
under 35 U.S.C. § 103(a) over the combination of Robertson, Harkins, and
Gilmour because (a) there is proper motivation for the combination, and
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(b) the combination teaches or suggests limitations [A] and [B], as recited in
claim 25.
(2) The Examiner erred in rejecting claim 45 under 35 U.S.C. § 103(a)
over the combination of Robertson, Harkins, and Gilmour because the
combination, and specifically Robertson, fails to teach or suggest limitation
[C] , including displaying a status indication, as recited in dependent claim
45.
(3) The Examiner erred in rejecting claim 46 under 35 U.S.C. § 103(a)
over the combination of Robertson, Harkins, and Gilmour because the
combination, and specifically Robertson, fails to teach or suggest limitation
[D] , 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 rejection of (i) claims 25^40, 42, and 43
is affirmed, and (ii) claims 45 and 46 is reversed.
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-IN-PART
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