Ex Parte Cheah

Patent Trial and Appeal Board

Feb 20, 2018

12258295 (P.T.A.B. Feb. 20, 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.
12/258,295 10/24/2008 Chris Cheah 079894.0512 8748
91230 7590 02/22/2018
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
02/22/2018 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 2017-002384
Application 12/258,295
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—20 and 24^42. Claims 21—23 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
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); U.S. Patent Application No. 14/599,216 and Appeal No.
2017-002157 decided January 16, 2018 (affirmed); U.S. Patent Application
Appeal 2017-002384
Application 12/258,295
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. A first or requesting user requests access to a user
profile of a second user, and a display of an authorization request is provided
to the second user before any relationships are established between the first
and second users. Spec. H 23, 28, 100; claim 1; see Fig. 18G; see also App.
Br. 5, Summary of Claimed Subject Matter. After an authorization response
is received from the second user, the first and second users are permitted to
access each other’s user profiles. Spec. H 15—18, 27, 29, 100; claim 1; see
also App. Br. 5, Summary of Claimed Subject Matter. Then, at least the
user profile of the second user is displayed, including textual profile
information as well as at least one data object (i.e., an icon) representing
No. 12/268,981 and Appeal No. 2017-008051 decided January 29, 2018
(affirmed); 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. 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.
2
Appeal 2017-002384
Application 12/258,295
additional content accessible through the second user’s profile. Spec. 15—
18, 124—128; claim 1; see Figs. 19A, 19A1; see also App. Br. 5, Summary
of Claimed Subject Matter.
Exemplary Claims
Exemplary claims 1 and 5, with bracketed lettering (indicating
disputed limitations A, B, and C) and emphases added to disputed portions
of the claims, read as follows below:
1. A method comprising:
by a computer system, receiving an access request from a
requesting user, the access request comprising a request to
access a user profile of a second user, the user profile of
the second user being associated with profile information
provided by the second user and maintained in a data repository
of a plurality of user profiles of a plurality of users;
[A] by the computer system, before any relationships are
established between the reauestins user and the second user.
providing for display to the second user an
authorization request responsive to the access request from the
requesting user,
by the computer system, receiving an authorization
response from the second user via a network responsive to the
authorization request, the authorization response being
generated at least in part by the second user interacting with one
or more selectable options displayed with the authorization
request;
[B] by the computer system, in response to receiving the
authorization response from the second user:
permitting the requesting user to access the user
profde of the second user; and
permitting the second user to access a user profde
of the requesting user, and
by the computer system, causing the display of the user
profile of at least the second user, the displayed user profile
comprising textual profile information associated with
the second user and at least one data object, the at least one data
3
Appeal 2017-002384
Application 12/258,295
object comprising a representation of additional content
accessible through the user profile of the second user, wherein
the additional content comprises one or more data types
selected by the second user from a plurality of different
available data types.
5. The method of claim 1, [C] wherein at least one data
object is packaged within a HTML wrapper.
The Examiner’s Rejections
(1) The Examiner rejected claims 1—4, 6—17, 19, 20, 24, 27—36, and
38-42 under 35 U.S.C. § 103(a) as being obvious over the combination of
Robertson (US 6,269,369 Bl; issued July 31, 2001) and Tang (US
5,793,365; issued Aug. 11, 1998). Final Act. 4—20; Ans. 3—7.
(2) The Examiner rejected claims 18 and 37 under 35 U.S.C. § 103(a)
as being obvious over the combination of Robertson, Tang, and Kukkal (US
5,774,117; issued June 30, 1998). Final Act. 20-21.
(3) The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
obvious over the combination of Robertson, Tang, and Dasan (US
5,761,662; issued June 2, 1998). Final Act. 21—22; Ans. 7—8.
(4) The Examiner rejected claims 25 and 26 under 35 U.S.C. § 103(a)
as being obvious over the combination of Robertson, Tang, and Appelman
(US 7,539,942 Bl; issued May 26, 2009). Final Act. 22-23.
Issues on Appeal
Based on Appellant’s arguments in the Briefs (App. Br. 11—20; Reply
Br. 2—10), the following principal issues are presented on Appeal:2
2 With regard to the rejection over Robertson and Tang, Appellant does not
present separate arguments regarding the patentability of claims 2—4, 6—17,
19, 20, 24, 27—36, and 38-42, and instead relies on the arguments presented
4
Appeal 2017-002384
Application 12/258,295
(1) Did the Examiner err in rejecting claims 1—4, 6—17, 19, 20, 24,
27—36, and 38-42 under 35 U.S.C. § 103(a) as being obvious over the
combination of Robertson and Tang because the combination fails to teach
or suggest limitations [A] and/or [B], as recited in representative
independent claim 1 supra, and as similarly recited in remaining
independent claims 16, 19, and 24?
(2) Did the Examiner err in rejecting claim 5 under 35 U.S.C. § 103(a)
as being obvious over the combination of Robertson, Tang, and Dasan
because the combination, and specifically Dasan, fails to teach or suggest
limitation [C] supra, as recited in dependent claim 5?
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (App. Br.
11—20; Reply Br. 2—10), the Examiner’s rejection (Final Act. 4—23), and the
Examiner’s response (Ans. 3—8) to Appellant’s arguments.
as to claim 1 (see generally App. Br. 11—17; Reply Br. 2—7). Independent
claims 16 (method), 19 (method), and 24 (system) recite similar subject
matter as recited in claim 1, including “providing for display to the second
user an authorization request” and permitting access to user profiles “in
response to receiving the authorization response from the second user” as
recited in limitations [A] and [B] of claim 1. Therefore, we select
independent claim 1 as representative of the group of claims consisting of
claims 2—4, 6—17, 19, 20, 24, 27—36, and 38-42 rejected as being obvious
over Robertson and Tang. Because Appellant does not present separate
arguments as to the obviousness rejections of: (i) claims 18 and 37 over
Robertson, Tang, and Kukkal; and (ii) claims 25 and 26 over Robertson,
Tang, and Appelman, the outcome of these rejections will fall with the
outcome for representative claim 1. Accordingly, our analysis only
addresses representative claim 1, and dependent claim 5 separately argued
(see App. Br. 17—19; Reply Br. 8—9).
5
Appeal 2017-002384
Application 12/258,295
Obviousness Rejection of Claims 1—4, 6—17, 19, 20, 24, 27—36, and 38—42
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—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—7). We concur with the conclusions reached by the Examiner
with regard to the obviousness of claim 1 over Robertson and Tang. We are
not persuaded by Appellant’s contentions (App. Br. 11—17; Reply Br. 2—7)
that the Examiner erred in rejecting claim 1, and we find the combination of
Robertson and Tang teaches or suggests limitations [A] and [B] as recited in
claim 1. We provide the following for emphasis.
With regard to limitation [A], we agree with the Examiner’s
comparison of Appellant’s screen illustration in Figure 18E (showing
“linked users” who have made requests) with Robertson’s Figure 8 (showing
specifying a user 580-10 desired to link with using box 580-14 and submit
button 580-16) and Figure 9 (showing a GUI 600 being displayed after
linking first and second users by granting permission to link) as described in
Robertson’s column 8, lines 11—20 (see Ans. 3—5). Specifically, we agree
with the Examiner (Ans. 4 citing Robertson col. 8,11. 11—29; Figs. 8, 9) that
Robertson’s disclosure of a first user sending a request before a second user
decides whether to establish a relationship teaches is the same as Appellant’s
process implemented in Figure 18E showing linked users who have made
requests. We also agree with the Examiner (Ans. 4—5; see also Final Act.
4—5) that no relationship is established between the requesting user and
responding user until after the second user authorizes the requesting user’s
request to establish a link/relationship, because the second or responding
6
Appeal 2017-002384
Application 12/258,295
user must set data field permissions for the first or requesting user as shown
in Figure 9 and the accompanying description in column 8, lines 11—29. The
relationship begins when the responding user grants permission to the
requesting user’s request; and that way user profile information can then be
shared.
In this light, Appellant’s arguments (App. Br. 11—13; Reply Br. 2—5)
that Robertson, including the disclosure at column 8, lines 11—29, fails to
disclose, teach, or suggest limitation [A], including providing an
authorization request for display to a second user before any user
relationships are established, are unpersuasive.
With regard to limitation [B], we agree with the Examiner (Final Act.
5—6; Ans. 6) that Robertson (see Robertson Fig. 9; col. 9,11. 10—26)
discloses permitting access to user profiles “in response to receiving the
authorization response from the second user” as recited in limitation [B] of
claim 1, which constitutes a visual indicator. We agree with the Examiner’s
finding that “upon member B granting permission to member A, address
book profile access will appear in both member A and member B’s address
book” (Ans. 6), as supported by column 9, lines 10-26. And, Robertson
discloses user profiles being personal information 600-8 and/or work
information 600-10 (col. 8,11. 50-51; Fig. 9).
In this light, Appellant’s contention (Reply Br. 6) that Robertson’s
column 9, lines 10-26 merely “disclose[s] adding information to address
books” and thus does not disclose, teach, or suggest limitation [B] is not
persuasive.
7
Appeal 2017-002384
Application 12/258,295
Motivation and Reasonable Expectation of Success
A rationale to support a conclusion that a claim would have been
obvious is that 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'l Co. v. Teleflex Inc., 550 U.S. 538, 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 determines that it would have been
obvious “to combine Robertson with Tang so that users can display a
means[,] i.e., an object as a means[,] of communicating with them [Tang
figure lb]” (Final Act. 6). The Examiner also determines that it would have
been obvious to modify Robertson with the display properties of Tang “to
display profile information in a different format or in a different means that
is preferable to others” (Ans. 7). We agree.
In this light, Appellant’s contention (App. Br. 15—16) that “the
Examiner has failed to provide a clear articulation of the reasons why the
proposed Robertson-Tang combination would have been obvious to one of
ordinary skill in the art” is not persuasive. And, notably, Appellant does not
respond with any evidence supporting a finding of a lack of motivation. We
agree with the Examiner (Final Act. 6; Ans. 7) that one of ordinary skill in
the art, looking at the combined teachings and suggestions of Robertson (see
e.g., Figs. 5, 8, 9 showing user profiles and access request and permission
forms) and Tang (Fig. lb, business card object 29, stick-up text button 34,
8
Appeal 2017-002384
Application 12/258,295
email button 36, video conference button 38), would have found it
predictable to successfully perform the method of claim 1, including
“providing for display to the second user an authorization request” and
permitting access to user profiles “in response to receiving the authorization
response from the second user” as recited in limitations [A] and [B], as well
as displaying a user profile along with a data object as recited in claim 1.
Where there is a reason to modify or combine the prior art to achieve
the claimed invention, the claims may be rejected asprima facie obvious
provided there is also a reasonable expectation of success. In re Merck &
Co., Inc., 800 F.2d 1091 (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. In re
Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 2009). 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
9
Appeal 2017-002384
Application 12/258,295
F.2d 1048 (CCPA 1976). In the instant case, Appellant has not provided any
evidence or reasoning showing there was no reasonable expectation of
success. Appellant’s contentions (see App. Br. 15—17; Reply Br. 6—7) do
not persuade us that the Examiner erred. Specifically, Appellant merely
avers (App. Br. 16—17) that there is no reasonable expectation of success
without providing any reasoning, and such a naked assertion, without any
evidence, is 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 Tang are in the analogous art of user profiles); Ans.
7 (“Robertson and Tang are analogous art of user profiles displayed on a
user interface.”).
In view of the foregoing, we sustain the Examiner’s rejection of claim
1, as well as claims 2-4, 6—17, 19, 20, 24, 27—36, and 38—42 grouped
therewith.
Obviousness Rejection of Claim 5
With regard to dependent claim 5 rejected over Robertson, Tang, and
Dasan, Appellant argues (App. Br. 17—19; Reply Br. 8—9) that the
combination fails to disclose, teach, or suggest limitation [C] because,
although Dasan’s Figure 2 may disclose using HTML (Hypertext Markup
Language) and HTTP (Hypertext Transfer Protocol) to present an object,
10
Appeal 2017-002384
Application 12/258,295
this is not the same as “wrapping” or “packaging” a data object “within a
HTML wrapper” as recited in claim 5.3
Appellant’s Specification discloses pages, such as registration page
(see Spec. 140), a registration download application page (Spec. 144), and a
profile page, as being HTML pages (see Fig. 18A; Spec. 141). We note that
the profile page shown in Appellant’s Figure 18A is similar to Dasan’s user
profile displayable/retrievable in HTML.
We note an equivalent teaching in Dasan is not required to support a
legal conclusion of obviousness. Rather, “the question under [35 U.S.C.
§ 103] is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the time the
invention was made.” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545
F.2d 747, 750 (Fed. Cir. 1976); see also MPEP § 2123.
In this light, Dasan’s disclosure in columns 3—4, describing the
operation of server 150’s HTML functionality in Figure 2, teaches or
suggests packaging at least one data object (e.g., a user profile) within a
HTML wrapper as claimed (see e.g., col. 4,11. 8—13, 26—50). Server 150
provides HTML functionality 210 by displaying and retrieving certain
textual and other data based upon Hypertext views (col. 4,11. 29-32), and
“[t]he server’s application program, the personal newspaper generator,
3 Mere attorney arguments and conclusory statements (such as Appellant’s
contention that Dasan’s presentation of an object HTML is not the same as
“packaging” a data object “within a HTML wrapper” as recited in claim 5),
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d at 1470; see also In re Pearson, 494 F.2d at
1405 (attorney argument is not evidence).
11
Appeal 2017-002384
Application 12/258,295
maintains a record of the state of each user’s profile, and thus, provides state
functionality from session to session” (col. 4,11. 36-40). One of ordinary
skill in the art would have understood that data objects are wrapped in
HTML packages for display and retrieval by a user of a browser 200 on a
client side 100 via server 150 implementing HTML functionality 210 (see
Fig. 2).
The Examiner has made a prima facie case for the obviousness of
claim 5, including packaging an object within a HTML wrapper, and
Appellant has not sufficiently rebutted the Examiner’s findings and
conclusion with respect to Dasan.
Furthermore, Appellant’s arguments that (i) “Claim 5 does not simply
require presenting something ‘in HTML’ as alleged by the Examiner”
(Reply Br. 8) and (ii) “no portion of Dasan discloses ‘wherein at least one
data object is packaged within a HTML wrapper,’ as recited in Claim 5”
(id.), are not supported by any evidence or industry-recognized definition,
and are therefore unpersuasive.
In view of the foregoing, we sustain the Examiner’s obviousness
rejection of claim 5 over Robertson, Tang, and Dasan.
Obviousness Rejections of Claims 18, 25, 26, and 37
Based on Appellant’s failure to address the Examiner’s prima facie
case of obviousness as to (i) claims 18 and 37 over the combination of
Robertson, Tang, and Kukkal; and (ii) claims 25 and 26 over the
combination of Robertson, Tang, and Appelman, Appellant has failed to
show that the Examiner erred in determining that the combination of
Robertson, Tang, and either of Kukkal or Appelman teaches or suggests the
subject matter recited in these claims. Accordingly, we summarily sustain
12
Appeal 2017-002384
Application 12/258,295
the Examiner’s obviousness rejections of claims 18, 25, 26, and 37. See 37
C.F.R. § 41.37(c)(l)(iv) (requiring a statement in the briefs as to each
ground of rejection presented by Appellant for review and stating that
arguments not presented in the briefs will be refused consideration).
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1—4, 6—17, 19, 20,
24, 27—36, and 38—42 under 35 U.S.C. § 103(a) as being obvious over the
combination of Robertson and Tang, because (a) the combination teaches or
suggests limitations [A] and [B] recited in representative claim 1; and
(b) there is sufficient motivation to combine as well as a reasonable
expectation of success in achieving the claimed subject matter.
(2) The Examiner did not err in rejecting claim 5 under
35 U.S.C. § 103(a) as being obvious over the combination of Robertson,
Tang, and Dasan, because Appellant has not sufficiently rebutted the
Examiner’s prima facie case that Dasan discloses limitation [C] as recited in
claim 5.
(3) Appellant has not adequately shown the Examiner erred in
rejecting (a) claims 18 and 37 over Robertson, Tang, and Kukkal; and
(b) claims 25 and 26 over Robertson, Tang, and Appelman.
DECISION
The Examiner’s obviousness rejections of claims 1—20 and 24-42 are
affirmed.
13
Appeal 2017-002384
Application 12/258,295
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
14