Ex Parte Lessin

Patent Trials and Appeals Board

Jun 26, 2019

14923365 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/923,365 10/26/2015
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
06/28/2019
FIRST NAMED INVENTOR
Samuel Lessin
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.
26295-30915/US 5648
EXAMINER
SCOTT, RANDY A
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL LESSIN
Appeal2018-006649
Application 14/923,365
Technology Center 2400
Before JOHN A. EVANS, JOHN D. HAMANN, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20. App. Br. 10. 2 We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.
1 According to Appellant, the real party in interest is Facebook, Inc. of
Menlo Park, California. App. Br. 2.
2 Throughout this opinion, we refer to the Final Office Action ("Final Act.")
mailed July 3, 2017; the Appeal Brief ("App. Br.") filed February 20, 2018;
the Examiner's Answer ("Ans.") mailed April 10, 2018; and the Reply Brief
("Reply Br.") filed June 11, 2018. The Appeal Brief and Reply Brief lack
page numbers. The page numbers in this opinion refer to the pages in order
beginning from the cover page.
Appeal2018-006649
Application 14/923,365
THE INVENTION
Appellant's invention generally relates to exporting claims in a social-
networking system. Spec. ,r 2. "Claims are assertions made by an author in
the context of an audience." Id. ,r 5. For example, a user may claim to have
attended a certain college, worked for a certain company, or been raised in a
certain location. Id. ,r 17. According to the Specification, existing systems
do not provide a way to efficiently export a user's assertions to other
applications, users, entities, and third-party developers. Id. ,r 6.
Claim 1 is reproduced below with our emphasis:
1. A method comprising:
receiving a plurality of terms of service for an agent using
a publisher, the plurality of terms of service pertaining to
generating one or more claims in a platform system;
generating a plurality of permissions for the agent
regarding whether claims generated by the agent may be
exported outside of the platform system, the permissions based
on the received plurality of terms of service;
receiving a request to export one or more claims generated
by the agent outside of the platform system;
determining whether the one or more claims may be
exported outside of the platform system according to the plurality
of permissions; and
responsive to a determination that the plurality of
permissions allow the one or more claims to be exported outside
of the platform system, exporting the one or more claims
generated by the agent outside of the platform system responsive
to the request.
THE EVIDENCE
The Examiner relies on the following as evidence:
Rose US 2005/0060417 Al Mar. 17, 2005
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Application 14/923,365
Tudor et al.
Suehiro
Braginsky
US 2009/0083155 Al
US 2009/0265432 Al
US 2012/0239507 Al
THE REJECTIONS
Mar. 26, 2009
Oct. 22, 2009
Sept. 20, 2012
The Examiner rejects claims 1-5, 11, and 12 on the ground of
nonstatutory double patenting as being unpatentable over claims 1-5 and 9-
10 of U.S. Patent No. 9,201,836. Final Act. 3---6.
The Examiner rejects claims 1-7, 9-17, 19, and 20 under 35 U.S.C.
§ 103 as unpatentable over Suehiro, Tudor, and Rose. Final Act. 7-13.
The Examiner rejects claims 8 and 18 under 35 U.S.C. § 103 as
unpatentable over Suehiro, Tudor, Rose, and Braginsky. Final Act. 13-14.
THE DOUBLE PATENTING REJECTION
Appellant does not provide an argument against the Examiner's
double-patenting rejection. See generally App. Br.; Reply Br. We review
the appealed rejections for error based upon the issues identified by
Appellant and in light of the produced arguments and evidence. Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). So, in the
absence of an argument on this particular issue, we sustain the Examiner's
double-patenting rejection of claims 1-5, 11, and 12. See id. at 107 5-7 6
( explaining that if Appellant fails "to present arguments on a particular
issue----or, more broadly, on a particular rejection-the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection"); see also MPEP § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018) ("If
a ground of rejection stated by the examiner is not addressed in the
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Application 14/923,365
appellant's brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it.").
THE REJECTION OVER SUEHIRO, TUDOR, AND ROSE
Claim 1 recites, in part "determining whether the one or more claims
may be exported outside of the platform system according to the plurality of
permissions."
In the combination of Suehiro, Tudor, and Rose, the Examiner finds
that Suehiro teaches the determination recited in claim 1. Final Act. 7
(citing Suehiro ,r 53). According to the Examiner, Suehiro judges whether
the contents of a user's blog can be published. Id.
Appellant argues that Suehiro does not determine whether claims may
be exported outside the platform system. App. Br. 8-9. Appellant argues
that Suehiro simply determines whether a user's content can be published to
other users. Id. at 9 (citing Suehiro ,r 53). Also, in Appellant's view, the
Examiner's obviousness rationale is improper and unclear. Id. at 7. We
agree.
The recited determination relates to exporting claims outside the
platform where they were generated. "Claims are assertions made by an
author in the context of an audience." Spec. ,r 5. Claims may be generated
in a social-networking system platform. Id. ,r 41. In one example, agents
may export positive reviews from this platform to a restaurant's website. Id.
An export permission, though, may forbid using a claim for advertising.
Id. ,r 22. So the system must determine from the export permissions whether
the claim can be exported outside the platform. Id. ,r 49. Although non-
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Application 14/923,365
limiting, these examples nevertheless inform our understanding of the
recited determination.
The Examiner finds that Suehiro determines whether the claims may
be exported outside of the platform system. Final Act. 7 ( citing
Suehiro ,r 53). For this feature, the Examiner cites Suehiro's browse-
permission-information program. Id.
Suehiro's platform system is a social network site. Suehiro ,r 4. The
browse-permission-information program determines whether content can be
published to other users of the social network. Id. ,r 53. For example, the
other user can be a user's "Friend" or have some other relationship to the
user on the social network. Id. ,r 94. That is, unlike the recited
determination, Suehiro' s determination relates to publication within the
platform, not outside. See App. Br. 9.
In other parts of the rejection, the Examiner quotes Suehiro's
discussion of the Common Gateway Interface (CGI) program. Final Act. 7.
But, as Appellant points out, Suehiro' s CGI program has a different function
from the browse-permission-information program. See App. Br. 9
( discussing Suehiro ,r 53). In particular, Suehiro's CGI program provides
"dynamic information" to an external environment. Suehiro ,r 53. And the
Examiner has not shown that the CGI program uses the same permissions as
the browse-permission-information program. See Final Act. 7.
In the Answer, the Examiner responds to Appellant's arguments by
discussing Rose instead of Suehiro. See Ans. 5-8 ( citing App. Br. 8).
Appellant points out that the Examiner's response relies on a new rationale
for concluding that the determining step would have been obvious.
Reply Br. 3 ( comparing the Final Rejection with the Answer). To the extent
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that the Examiner introduces a new obviousness rationale in the Answer, the
Examiner has not adequately explained how Suehiro would have been
modified by Rose's teachings to arrive at the recited determination. See
Ans. 5-8. Such an explanation is needed here considering the differences
between Suehiro and Rose. See App. Br. 7 ( comparing the references).
In contrast to Suehiro, Rose generally relates to a contract about a
user's information. Rose ,r 49. In particular, Rose teaches a "coalition of
providers," which include businesses that want to advertise to the user. Id.
Coalition members enter into an omnibus contract with each other and with
an electronic agent. Id. Rose's omnibus contract specifies a common set of
rules and roles for the providers. Id. For instance, the providers agree not to
violate the user's preferences and the associated permissions. Id.
In the Answer, the Examiner cites Rose's teachings related to
information that identifies the user-for example, address, telephone, e-mail,
among other things. Id. ,r 57, cited in Ans. 5. To the extent that Rose's
contract can be regarded as the recited terms of service, the Examiner has
not explained why a skilled artisan would have applied Rose's terms about
personal information to sharing content with other social network users in
Suehiro. App. Br. 7.
Also, the obviousness rationale that appears in the Final Rejection
(Final Act. 9) is based on a different combination of features. See
Reply Br. 2-3 ( comparing the Examiner's citations). So it is unclear how
the Final Rejection's reasoning applies to the new findings made in the
Answer. On this record, the Examiner has not adequately explained how or
why Suehiro's browse-permission-information program would have been
modified by Rose's teachings to arrive at the claimed invention. Accord
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Application 14/923,365
App. Br. 7 ( explaining that the obviousness rationale is improper and
unclear).
Thus, we do not sustain the § 103 rejection of claim 1.
Independent claims 11 and 20 recite similar limitations. Claims 2-7,
9-10, 12-17, and 19 contain the recited determination because they depend
from claims 1 or 11. So we also do not sustain the § 103 rejection of claims
2-7, 9-17, 19, and 20 for the same reason as claim 1.
THE REMAINING OBVIOUSNESS REJECTION
The Examiner rejects claims 8 and 18 as being obvious over Suehiro,
Tudor, Rose, and Braginsky. Final Act. 10-18. Because the Examiner does
not rely upon Braginsky to teach the limitation missing from Suehiro, Tudor,
and Rose, Braginsky does not cure the deficiency discussed above. See id.
Thus, we do not sustain the § 103 rejection of claims 8 and 18 for the same
reasons discussed above concerning claim 1.
DECISION
We affirm the Examiner's rejection of claims 1-5, 11, and 12 on the
ground of nonstatutory double patenting.
We reverse the Examiner's rejections of claims 1-20 under§ 103.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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