Ex Parte Okubo et al

Patent Trial and Appeal Board

Jun 3, 2016

11963464 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111963,464 12/21/2007 Trisha Lee Okubo
49845 7590 06/07/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
2043.499US 1 1036
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
06/07/2016 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
lJNITEu STATES PATENT ANu TRAuEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRISHA LEE OKUBO, YUAN DER HO, CROON CHONG,
ROLF SKYBERG, MASSIMILIANO MANCINI,
ADAM TRACHTENBERG, and PHILIP LAW
Appeal2013-007557 1
Application 11/963,4642
Technology Center 3600
Before HUBERT C. LORIN, KEVIN W. CHERRY, and
BRUCE T. WIEDER, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Trisha Lee Okubo et al. (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-3, 5-12, and 14--27, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision references the Appellants' Appeal Brief ("Appeal Br."), filed
February 1, 2013, and Reply Brief ("Reply Br.") filed May 20, 2013, and the
Examiner's Answer ("Ans."), mailed March 19, 2013.
2 Appellants' brief identifies eBay Inc., as the real party in interest for this
appeal (Appeal Br. 2).
Appeal2013-007557
Application 11/963,464
We AFFIRM.
Appellants' claimed invention relates to a system and method for
promoting shopping information on a network-based social platform
(Spec. ii 18).
Claim 1, one of seven independent claims, is illustrative of the subject
matter on appeal and is reproduced below.
1. A method comprising:
at a network-based social platform,
receiving a request from a first user of the network-based
social platform to request a second user of the network-based
social platform to accept an agreement to publish an
advertisement on the network-based social platform in an area of
an interface associated with the second user, the interface
including a profile of the second user, the advertisement to
advertise a sale of at least one item offered for sale by the first
user on a network-based marketplace;
receiving an acceptance of the agreement from the second
user to publish the advertisement on the network-based social
platform on the profile of the second user on the network-based
social platform, the agreement being between the first and the
second user to publish the advertisement on the network-based
social platform on the profile of the second user on the network-
based social platform; and
publishing the advertisement on the network-based social
platform, the publishing comprising:
publishing the advertisement on the profile of the second
user on the network-based social platform;
receiving a first selection from the second user that causes
the advertisement to be copied from the profile of the second user
to a message that is being authored by the second user;
communicating the message including the advertisement
to another user; and
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Application 11/963,464
rece1vmg a second selection that 1dent1t1es the
advertisement on the profile of the second user on the networked
based social platform, the second selection being received from
a third user on the network-based social platform that results in
a sale of at least one item offered for sale by the first user on the
network-based marketplace.
(Appeal Br. 25, Claims App.).
Rejections
Claims 1-3, 5-8, 10-12, 14--17, 19, and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Starr (US 2006/0287916 Al,
pub. Dec. 21, 2006), Morgenstern (US 2005/0149397 Al, pub. July 7,
2005), Maigret (US 2008/0109306 Al, pub. May 8, 2008), and Chu
(US 2004/0148221 Al, pub. July 29, 2004).
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Starr, Morgenstern, Maigret, Chu, and Humphries (US
2007 /0050245 Al, pub. Mar. 1, 2007).
Claims 21-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Starr, Chu, and Maigret.
ANALYSIS
Obviousness over Starr, Morgenstern, Maigret, and Chu
Appellants argue claims 1-3, 5-8, 10-12, 14--17, 19, and 20 as a
group. Appeal Br. 4--9. We select claim 1 as representative and claims 2-3,
5-8, 10-12, 14--17, 19, and 20 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(iv).
Appellants' main argument is that Chu fails to teach or suggest
"receiving a second selection that identifies the advertisement on the profile
of the second user on the networked based social platform, the second
selection being received from a third user on the network-based social
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Application 11/963,464
platform that results in a sale of at least one item offered for sale by the first
user on the network-based marketplace," as recited by claim 1 (Appeal
Br. 19-22; Reply Br. 2-8). In particular, Appellants raise two points. First,
Appellants submit that "the 'game player profile,' mentioned by Chu is
never represented in 'Game Play Space,' where it is visible to the players,
but, instead, remains hidden" (Appeal Br. 21; Reply Br. 2-3). Appellants
assert that "Chu explains that the 'game player profile' is used 'to match a
preferred profile or to fulfill certain game requirements before game players
may view specific advertisements or promotions"' (id. at 22; Reply Br. 2-3).
Thus, Appellants argue that the "game player profile" cannot teach or
suggest the "profile of the second user" (id. at 22-23; Reply Br. 2-3).
Second, Appellants argue the "game character" of the user in Chu fails to
teach or suggest a "profile of the second user" as recited by claim 1 (Reply
Br. 3---6). Appellants submit that the "game character" of Chu functions "to
hide the identity of the user" and "Chu fails to relate the 'game character' as
communicating an identity of a user (e.g., biographical information) to other
users of the game" (id. at 5---6). Appellants further argue that Chu fails to
teach or suggest the "profile of the second user" because Chu expresses a
desire that unwanted distractions are to be avoided but the "profile of the
second user" of claim 1 "functions otherwise" (id.).
We are not persuaded by either of these points. First, the Examiner
does not rely on the "game player profile" of Chu (see Ans. 13-14). Thus,
Appellants' arguments regarding this disclosure of Chu do not apprise us of
Examiner error. Second, we are not persuaded by Appellants' argument that
the "game character" of Chu fails to teach or suggest the "profile of the
second user" recited in claim 1 because, regardless of exact construction of
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Application 11/963,464
"profile," the Examiner's combination would still render this element
obvious. The Examiner relies on Starr as disclosing the "profile of the
second user" (Ans. 3). Chu is relied on for its teaching of "a game character
which may contain areas in which advertisements may appear" as
"indicative" of advertisements being on the profile of the second user (id. at
14). As the Examiner explains, this teaching is at least "indicative" (i.e.,
suggestive) of the claimed "profile of the second user" (id.). We determine
this finding to be supported by the record evidence (see Chu i-fi-168, 69, 73).
We also find that the other references of record support this finding.
Morgenstern, for example, equates a personal webpage or user profile with
the user's online presence in various web applications or social networking
systems (Morgenstern, Abstract, i1 44) much as the game character of Chu is
the user's presence in the online gaming experience of Chu (see Chu i-fi-141,
42).
When the suggestion of Chu is combined with Starr's explicit
teaching of a profile of the second user, we agree with the Examiner that the
claimed "receiving a second selection that identifies the advertisement on
the profile of the second user on the networked based social platform, the
second selection being received from a third user on the network-based
social platform that results in a sale of at least one item offered for sale by
the first user on the network-based marketplace," as recited by claim 1,
would have been obvious to a person of ordinary skill. See In re Keller, 642
F.2d 413, 426 (CCPA 1981) ("one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references") (citation omitted).
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Appellants also argue for the first time in the reply brief that Chu
teaches away from the combination with Starr, Morgenstern, and Maigret
(Reply Br. 7-8). This argument is neither responsive to the Examiner's
arguments nor have Appellants shown good cause why they could not have
raised this argument earlier. Accordingly, we deem this argument untimely
and decline to consider it. See 37 C.F.R. § 41.41(b)(2).
Thus, we sustain the Examiner's rejection of claims 1-3, 5-8, 10-12,
14--17, 19, and 20.
Obviousness over Starr, Morgenstern, Maigret, Chu, and Humphries
Appellants raise no separate arguments, besides those considered
above, regarding the rejection of claims 9 and 18 as obvious over Starr,
Morgenstern, Maigret, Chu, and Humphries (Appeal Br. 22). Thus, for the
reasons discussed above, we sustain the Examiner's rejection of claims 9
and 18.
Obviousness over Starr, Chu, and Maigret
Appellants raise no separate arguments, besides those considered
above, regarding claim 1 in response to the rejection of claims 21-27 as
obvious over Starr, Chu, and Maigret (Appeal Br. 23-24). Thus, for the
reasons discussed above, we sustain the Examiner's rejection of claims 21-
27.
DECISION
The Examiner's decision to reject claims 1-3, 5-12, and 14--27 is
affirmed.
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Application 11/963,464
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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