Ex Parte Tiu et al

Patent Trial and Appeal Board

Dec 21, 2018

14179382 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/179,382 02/12/2014 William K. Tiu
91230 7590 12/26/2018
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.
079894.2014 7501
EXAMINER
ABRAHAM, AHMED M
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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 WILLIAM K. TIU, KENT LINDSTROM,
and ROSS A. MACKINNON1
Appeal2017-000545
Application 14/179 ,3 82
Technology Center 2100
Before JASON V. MORGAN, ADAM J. PYONIN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
1 This paper is captioned by inventor name according to our pre-AIA
convention. Facebook, Inc. is the Applicant, Appellant, Assignee, and real
party in interest. (See App. Br. 3.)
Appeal2017-000545
Application 14/179,382
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
THE INVENTION
This application "generally relates to processing of online social
network data." (Spec. ,r 2.) Claim 1, reproduced below, exemplifies the
subject matter on appeal:
1. A method comprising, by a computing device:
receiving, at a social-networking system, a query for content
that has been changed, added to, or updated on the social-
networking system by a first user of the social-networking
system, wherein the query is received from a third-party system
that is separate from and external to the social-networking
system;
determining, by the social-networking system and in
response to the query received from the third-party system,
whether content associated with the first user has been changed,
added to, or updated on the social-networking system; and
sending information to the third-party system responsive to
the query.
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Appeal2017-000545
Application 14/179,382
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ho et al.
Ramer et al.
Stem
Akella et al.
US 2005/0283753 Al
US 2007/0060129 Al
US 2007 /0282959 Al
US 7,539,697 Bl
THE REJECTIONS
Dec. 22, 2005
Mar. 15, 2007
Dec. 6, 2007
May 26, 2009
1. Claims 1-20 stand rejected for nonstatutory double patenting
over claims 1-20 of U.S. Patent No. 8,037,093. (See Final Act. 2--4. 2)
2. Claims 1, 2, 3, 6, 18, and 20 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Akella and Stem. (See Final Act. 4--7.)
3. Claims 4, 5, 7-12, 17, and 19 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Akella, Stem, and Ho. (See Final Act. 7-11.)
4. Claims 13-16 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Akella, Stem, Ho, and Ramer et al. (See Final Act. 11-
12.)
2 As Appellant observes (see App. Br. 5 n.1.), U.S. Patent No. 8,037,093
contains only claims 1-20, not claims 41-60 as identified in the Final
Action. We therefore treat the double patenting rejection as being based on
claims 1-20 of the '093 patent.
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Appeal2017-000545
Application 14/179,382
ANALYSIS
Double Patenting
Because Appellant presents no arguments regarding the double
patenting rejection (see App. Br. 5), we summarily sustain the rejection of
claims 1-20 for obviousness-type double patenting over claims 1-20 of U.S.
Patent No. 8,037,093.
Obviousness
Appellant argues:
[T]he proposed Akella-Stem combination fails to disclose,
teach, or suggest determining, by the social-networking system
and in response to the query received from the third-party
system, whether content associated with the first user has been
changed, added to, or updated on the social-networking system,
as independent Claim 1 recites.
(App. Br. 6 (emphasis omitted).) This is so, says Appellant, because "Stem
is only prior art to the present Application to the extent that its disclosure is
supported by the '769 [provisional] application" and "the cited sections of
Stem are not supported by the disclosure of the '769 application." (Id. at 7.)
The Examiner responds that the subject matter of the cited paragraphs
of Stem is supported in the provisional at page 3, lines 10-13. (See Ans. 3.)
Rather than rebutting the Examiner's finding, Appellant shifts the
argument, asserting that "the combination does not teach a social-
networking system that makes the claimed determination in response to a
query" because "the Akella-Stem combination merely teaches event alerts
being sent through a push mechanism, which unlike a pull mechanism is not
triggered in response to queries." (Reply Br. 2.)
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Appeal2017-000545
Application 14/179,382
We find that the provisional does provide adequate support for the
cited portions of Stem. For example, the pre-grant patent publication states
that
FIG. 5 illustrates one possible implementation of an alert and
delivery system of an embodiment. The alert process, as
illustrated in FIG. 6, starts by an event occurring 610 at the
Content Server 501. The event may in the form of a Content
502 update. For example an update to a web site, an updated
RSS feed, an e-mail arrival, updated to a blog on a social
network web page or any other data that may have been
updated or changed.
(Stem ,r 111, cited in Final Act. 5.) The Examiner relies on this paragraph to
teach or suggest the disputed determining recitation of claim 1. (See Final
Act. 5; Appeal Br. 7.) We agree with the Examiner that this language is
adequately supported in, at least, the following passage of the provisional:
The system may be used with various units/ systems that
generate an event wherein the system may include an API for
the alert system so that the alert system can operate with
various different systems. For example, the alert system can
operate with a web site, such as MySpace.com, wherein the
event is any modification of the blog of the Myspace user so
that the alert system is able to notify the user of the change and
optionally render the blog of the user with the changes shown.
('769 Provisional, Spec. 3:10-15).
Essentially, the above portions of the patent and the provisional both
describe an alert triggered by an event that may be a modification to, for
example, a blog on a web site. Because the cited passages of Stem are
supported, the argument to the contrary in the appeal brief does not identify
reversible error in the Examiner's reliance on Stem.
As noted above, Appellant argues in the Reply that the combination
"teaches event alerts being sent through a push mechanism, which unlike a
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Appeal2017-000545
Application 14/179,382
pull mechanism is not triggered in response to queries." (Reply Br. 2.) We
conclude that even if this argument has merit, it comes too late. See 3 7
C.F .R. § 41.41 (b )(2) (2015) ("Any argument raised in the reply brief which
was not raised in the appeal brief, or is not responsive to an argument raised
in the examiner's answer ... will not be considered by the Board for
purposes of the present appeal, unless good cause is shown"). We agree
with the Examiner (see Ans. 3) that, in the Appeal Brief, Appellant sought
reversal only on the ground that the cited portion of the reference was not
supported in the provisional (see App. Br. 6-8). Thus, Appellant did not
articulate the new argument about queries in a timely manner.
Appellant's failure to timely and squarely raise the reply argument
deprived the Examiner a chance to respond to the contention in the Answer,
and deprived Board the benefit of the Examiner's expertise. It is for these
reasons that arguments not made in opening briefs are waived. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not."); 37 C.F.R. §§ 41.41(b)(2) (2015).
Appellant does not make separate arguments for the patentability of
dependent claims 2-20. (See App. Br. 8.) The rejections of those claims
are, therefore, sustained for the reasons provided in connection with claim 1.
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Appeal2017-000545
Application 14/179,382
DECISION
The Examiner's decision rejecting claims 1-20 for obviousness-type
double patenting and as obvious is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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