Ex Parte Tiu et al

Patent Trial and Appeal Board

Jun 22, 2016

13337829 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/337,829 12/27/2011
91230 7590 06/24/2016
Baker Botts L.L.P.
2001 Ross Avenue. 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
William K. Tiu JR.
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.
079894.0439 1018
EXAMINER
WON, MICHAEL YOUNG
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte WILLIAM K. TIU, JR. and JEFFREY J. ROBERTO
Appeal2015-000173
Application 13/337,829
Technology Center 2400
Before HUNG H. BUI, JOHN F. HORVATH, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000173
Application 13/337,829
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-8, 10, 14, 21, 23, and 25-30, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
"The present invention generally relates to processing of online social
network data, and more particularly, to a method and system for managing
multimedia content appearing on user pages of an online social network."
(Spec i12.) Claim 1, reproduced below, is illustrative:
1. A method comprising, by one or more processors associated
with one or more third-party application servers:
receiving, by one or more of the processors, a request at the
third-party application servers from a first user of an online social
network to view a selected video, wherein the third-party
application servers are communicably connected with the online
social network;
sending, by one or more of the processors, information to
display the selected video in response to the request;
receiving, by one or more of the processors, a request from
the first user to share the selected video;
determining, by one or more of the processors, that the first
user has been authenticated with respect to the online social
network by sending authentication information from the third-
party application servers to the online social network and
receiving an indication that the user has been authenticated by
the online social network;
1 Appellants identify Facebook, Inc. as the real party in interest. (See App.
Br. 3.)
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sending, by one or more of the processors, information to
display the selected video in association with the first user on a
web page; and
receiving, by one or more of the processors, a request at the
third-party application servers from a second user of the online
social network to view the selected video on the web page,
wherein the second user is connected to the first user in the online
social network.
THE REFERENCES AND THE REJECTION
Claims 1-8, 10, 14, 21-23, and 25-30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rosenbaum et al. (US 8, 117,545 B2; issued
Feb. 14, 2012) and Tabuki (US 5,841,970; issued Nov. 24, 1998). (See Final
Act. 4--14.)
APPELLANTS' CONTENTIONS
Appellants argue that the rejections are improper for the following
reasons:
1. "[T]he proposed Rosenbaum-Tabuki combination fails to
disclose, teach, or suggest receiving a request at the third-party application
servers from a first user of an online social network to view a selected video,
wherein the third-party application servers are communicably connected
with the online social network, as independent Claim 1 recited." (App. Br.
7, emphasis omitted.)
2. "[T]he proposed Rosenbaum-Tabuki combination fails to
disclose, teach, or suggest receiving a request from a second user of the
online social network to view the selected video on the web page, wherein
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the second user is connected to the first user in the online social network, as
independent Claim 1 recites." (App. Br. 7, emphasis omitted.)
3. "[T]he Examiner has failed to establish a prima facie case of
obviousness, because the Examiner has failed to provide a clear articulation
of the reasons why the proposed Rosenbaum-Tabuki combination would
have been obvious to one of skill in the art" and "[f]urthermore, one of
ordinary skill in the art would not have been motivated to combine the video
channel host in Rosenbaum with the authentication system disclosed in
Tabuki as the Examiner proposes." (App. Br. 8, 10, emphasis omitted.)
Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See 3 7
C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
"a request at the third-party application servers
from a first user of an online social network to view a selected
video, wherein the third-party application servers are
communicably connected with the online social network"
Regarding this claim language, Appellants argue ( 1) that "the cited
sections of Rosenbaum do not disclose anything related to users of online
social networks, nor anything with respect to such users requesting anything
at third-party application servers" and (2) "[i]n fact, the Examiner has
previously conceded that Rosenbaum does not disclose a first user of an
online social network." (App. Br. 7, emphasis omitted.)
We find the first argument unpersuasive because the reference does,
in fact, refer to social networks. (See Rosenbaum 4:66-5:4 ("The system
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thus facilitate[ s] the process of discovery and organization within a vertical
channel of online video content, drawing in videos from all over the Internet,
and collecting them in new topical contexts, where they can be annotated by
members of a social network, online community, or other group with a
shared interests." (emphasis added)).)
We find the second argument unpersuasive because, as the Examiner
explains, "[a]lthough the examiner previous[ly] and erroneously conclude[d]
that Rosenbaum did not teach [a] social network, such conclusion was
corrected in the Final Office action filed January 22, 2014." (Ans. 4. 2)
Appellants' characterization of the Examiner's position is not accurate.
receiving a request from a second user of the online
social network to view the selected video on the web page, wherein the
second user is connected to the first user in the online social network
For this claim language, Appellants argue that "[w]hile Rosenbaum
vaguely describes users of a 'social network' annotating videos, there is no
discussion of whether these users are connected to each other within the
social network." (App. Br. 8.) We agree with the Examiner that
"[ m ]embers of an online social network, to one of ordinary skill in the art,
are clearly connected to one another in an online social network." (Ans. 4.)
2 See Final Act. 14 ("After further consideration, claims 1, 8, 10, 14, 21, 23,
and 25-29 are explicitly taught by [Rosenbaum] in view of [Tabuki].
Rosenbaum clearly teaches all the limitations of the independent claims
including that the system can be employed within social networking and the
functionality claimed with respect to hosting videos selected from third-
party application servers. Tabuki teaches the obvious limitation of retrieving
authentication information of a user from an associated server." (emphasis
added)).
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The fact that the members are part of a "network" means that they are, by
definition, "connected."
Motivation to Combine
The Examiner found that a person of ordinary skill in the art would
have made the combination because (a) Tabuki teaches determining that the
first user has been authenticated "by sending authentication information
from the third party application server to the online network and receiving
an indication" regarding authentication and (b) "Tabuki teaches such
implementation frees the application server from having to 'maintain a
database for such verification.'" (Final Act. 6.)
Appellants argue that "the Examiner must articulate among other
things 'a finding that there was reasonable expectation of success."' (App.
Br. 9.) We do not agree. Establishing prima facie obviousness requires
showing that one of ordinary skill in the art would have had a reason or
suggestion to modify or combine the prior art and either predictability or a
reasonable expectation of success. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Here, because the relevant field of endeavor is
predictable, the Examiner was not required to make a specific finding
regarding a reasonable expectation of success.
Appellants additionally argue that one of skill in the art would not
have been motivated to combine because "Rosenbaum makes only a cursory
reference to authentication, where it briefly discloses that a 'user may
authenticate to the site (or some portion thereof) by entry of a usemame and
password"' and "[t]his single reference to authenticating users can hardly be
called a teaching, suggestion, or motivation to modify the video channel host
of Rosenbaum to use the method of Tabuki." (App. Br. 10.) The Examiner,
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however, does not rely on that teaching of Rosenbaum, instead concluding
that it would have been obvious to modify Rosenbaum with the teachings of
Tabuki in order to free the application server from having to maintain a
database for verification, or for user convenience. (See Final Act. 6; Ans. 6
("There is ample motivation why one of ordinary skill in the art would
combine the teachings of Tabuki to the system of Rosenbaum such as in
inhibiting the users from having to tediously or repetitively log-in and
register multiple times at each network.").) We conclude that the
combination is appropriately based on a rational underpinning. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellants' argument that "[i]t is unlikely that anyone of ordinary
skill in the art circa the priority dat[ e] of this Application would attempt to
modify the video channel host of Rosenbaum ... as asserted by the
Examiner" (App. Br. 10) is merely attorney argument, unsupported by
evidence. Moreover, it is not clear that these claims, which require the
application server to receive an indication that the user is authenticated, are
supported in the original disclosure, which appears only to contemplate that
the social network authenticate the user, and does not appear to contemplate
that it sends an indication to the third party application server that it has
authenticated the user. (See Spec. i-fi-136-37 & Fig. 5.)
Finally, Appellants argue that "[t]he Examiner's reliance on this
relatively ancient art is evidence that the cited reference was not, in fact,
obvious to modify." (App. Br. 10.) We do not agree because "[t]he mere
age of the references is not persuasive of the unobviousness of the
combination of their teachings, absent evidence that, notwithstanding
knowledge of the references, the art tried and failed to solve the problem."
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Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016) (quoting Jn re
Wright, 569 F.2d 1124, 1127 (CCPA 1977). The case cited by Appellants,
Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir.
2013), is not on point because it concerned whether a pharmaceutical
combination would have been "obvious to try," not, as here, whether it
would have been obvious to combine known software techniques to achieve
predictable results.
DECISION
The Examiner's decision to reject claims 1-8, 10, 14, 21, 23, and 25-
3 0 is affirmed.
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
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