Ex Parte Cheah

Patent Trial and Appeal Board

Jul 2, 2018

13618881 (P.T.A.B. Jul. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/618,881 09/14/2012 Chris Cheah
91230 7590 07/05/2018
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.
079894.1162 2735
EXAMINER
STITT, ERIK V
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
07/05/2018 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
Appeal2017-002456 1
Application 13/618,881
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 CASE2
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 25--44. Claims 1-24 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
1 Appellant identifies Facebook, Inc. as the real party in interest. App. Br. 2.
2 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
Appeal2017-002456
Application 13/618,881
Disclosed Field of Invention
Appellant discloses a method and system for controlled distribution
and exchange of information, such as electronic business cards or contact
information, over a network. Spec. i-fi-13-8; see generally Figs. 1-3. More
specifically, Appellant discloses and claims a method (claim 25), computer-
readable non-transitory storage media including software operable to
perform the method (claim 34), and system with memory and processors to
perform the method (claim 39) for allowing a user to receive a web resource
to access an information management and distribution system to download
and install a client-side application by one of two displayed and selectable
options: either (i) registering on-line with the information management and
distribution system (Fig. 5, 506), or (ii) downloading and installing the
application prior to registering with the system (Fig. 5, 528). Spec. i-fi-137-
39, 43, and 44; Figs. 5, 6A; claims 25, 34, 39.
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
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; 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. 13/612,584 and Appeal No.
2017-008113.
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Appeal2017-002456
Application 13/618,881
Exemplary Claim
Exemplary claim 25, with bracketed lettering (indicating disputed
limitation A) and emphases added to disputed portions of the claim, reads as
follows:
25. A method comprising:
by a client device, receiving a web resource for a user to
access an information management and distribution system, the
user being unregistered;
[A] by the client device via the web resource, displaying
a plurality ofselectable options for the user. the selectable
options comprising:
a first selectable option to register on-line with the
information management and distribution system; and
a second selectable option to download and install a
client-side application prior to registering with the information
management and distribution system;
by the client device, when a selection to proceed with on-
line registration has been entered using the web resource:
providing information to present a web page
comprising a profile data entry form;
sending, to one or more computer servers
associated with the information management and distribution
system, the request for on-line registration, the request
comprising profile information for the user; and
receiving a response to the request to register the
user, the response comprising a personal identifier for the user;
by the client device, when a selection to download and
install a client-side application prior to registering with the
information management and distribution system has been
entered using the web resource:
invoking the client-side application;
presenting, by the client-side application, the
profile data entry form;
submitting, by the client-side application, the
profile information for the user to the one or more computer
servers associated with the information management and
distribution system; and
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Appeal2017-002456
Application 13/618,881
receiving the personal identifier for the user; and
by the client device, storing the personal identifier for the
newly-registered user in a local data store.
The Examiner's Rejections
(1) The Examiner rejected claims 25-30, 32, 34, 35, 37, and 39-43
under 35 U.S.C. § 103(a) as being obvious over the combination of Klug et
al. (US 2001/0011274 Al; published Aug. 2, 2001) and Johnson et al. (US
5,923,885 Bl; issued July 13, 1999). Final Act. 3-8.
(2) The Examiner rejected claims 33 and 38 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Klug, Johnson, and
Dasan (US 5,761,662; issued June 2, 1998). Final Act. 9.
(3) The Examiner rejected claims 31, 36, and 44 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Klug, Johnson, and Sonti
et al. (US 6,108,540; issued Aug. 22, 2000). Final Act. 9-10.
Appellant's Arguments
Independent claims 25 (method), 34 (computer-readable non-
transitory storage media), and 39 (system with memory and processors)
recite similar subject matter, including, allowing a user to receive a web
resource to access an information management and distribution system to
download and install a client-side application by one of two selectable
options: either (i) registering on-line with the information management and
distribution system, or (ii) downloading and installing the application prior
to registering with the system (see e.g., limitation [A] of exemplary claim
25).
With regard to the rejections of claims 25--44 over the base
combination of Klug and Johnson, Appellant argues as to independent
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Appeal2017-002456
Application 13/618,881
claims 25, 34, and 39 (see generally App. Br. 10-11; Reply Br. 2-6) that the
combination of Klug and Johnson fails to disclose, teach, or suggest
limitation [A] of claim 25, and the commensurate limitations of claims 34
and 39.
Issue on Appeal
Based on Appellant's arguments in the Briefs (App. Br. 10-20; Reply
Br. 2-12), the following principal issue is presented on Appeal:
Did the Examiner err in rejecting claims 25--44 under
35 U.S.C. § 103(a) as being obvious over the combination of Klug and
Johnson because the base combination fails to teach or suggest limitation
[A] supra, as recited in representative independent claim 25?
ANALYSIS
We have reviewed Appellant's arguments in the Briefs (App. Br.
10-20; Reply Br. 2-12), the Examiner's rejection (Final Act. 3-10), and the
Examiner's Answer (Ans. 3-10) to Appellant's arguments.
Limitation [A] of claim 25 recites in pertinent part:
by the client device via the web resource, displaying a
plurality of selectable options for the user, the selectable
options comprising:
a first selectable option to register on-line with the
information management and distribution system; and
a second selectable option to download and install a
client-side application prior to registering with the information
management and distribution system.
Claim 25, limitation [A] (emphases added). With regard to limitation [A],
we agree with Appellant (App. Br. 10-11; Reply Br. 2---6) that the Examiner
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Application 13/618,881
has not shown that the combination of Klug and Johnson discloses, teaches,
or suggests displaying the second selectable option, namely the option to
allow a user to download and install a client-side application prior to
registering with the information management and distribution system.
Neither the Examiner's position set forth in the Final Rejection (Final
Act. 3---6), nor the Examiner's response to Appellant's arguments (Ans. 3---6)
as to limitation [A] addresses the limitation argued by Appellant, namely
that the second displayed selectable option allow the user to download and
install a client-side application prior to registering with the system.
Although Johnson may disclose selectable option buttons and applets
to download applications, and Klug may disclose registering at third party
web sites by submitting registration information, both Klug and Johnson are
silent as to whether there is an option displayed to allow a user to download
and install a client-side application prior to registering with the system, as
claimed in each of claims 25, 34, and 39.
In view of the foregoing, we do not sustain the Examiner's
obviousness rejection of independent claims 25, 34, and 39 over Klug and
Johnson. For the same reasons, and because the dependent claims each
contain the same respective limitations as the respective independent claims,
we also do not sustain the Examiner's obviousness rejections of dependent
claims 26-33, 35-38, and 40-44.
CONCLUSION
The Examiner erred in rejecting claims 25--44 under 35 U.S.C.
§ 103(a) as being obvious over the base combination of Klug and Johnson,
because the combination does not teach or suggest displaying a plurality of
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Application 13/618,881
selectable options, including an option to allow a user to download and
install a client-side application prior to registering with an information and
management distribution system, as recited in each of independent claims
25, 34, and 39.
DECISION
The Examiner's obviousness rejections of claims 25--44 are reversed.
REVERSED
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