Ex Parte Tseng

Patent Trial and Appeal Board

Sep 29, 2016

12976743 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/976,743 12/22/2010
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
10/03/2016
FIRST NAMED INVENTOR
Erick Tseng
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.
26295-17321 8023
EXAMINER
LO,ANNJ
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
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 ERICK TSENG and DAVID BRAGINSKY
Appeal2014-005996
Application 12/976,743 1
Technology Center 2100
Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and
STACY B. MARGOLIES, Administrative Patent Judges.
MARGOLIES, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52 on
August 2, 2016 ("Request"), requesting that we reconsider our Decision on
Appeal of June 2, 2016 ("Decision"). In our Decision, we affirmed the
Examiner's rejection of claims 1-8 and 18-24 under 35 U.S.C. § 102(b) as
anticipated by Ramer (US 2008/0214148 Al; Sept. 4, 2008).
We reconsider our Decision in light of Appellants' arguments in the
Request, but we decline to change the Decision. We are not persuaded that
1 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 1.
Appeal2014-005996
Application 12/976,743
we misapprehended or overlooked the points argued by Appellants in
rendering our Decision.
ISSUES AND ANALYSIS
Appellants contend that we erred by citing "different configurations"
of Ramer. Request 2. Specifically, Appellants argue that a first
configuration relates to an authoritative user and ranking content, and a
second configuration relates to an influential user and targeting sponsored
content. Id. at 3. Appellants contend that the cited sections of Ramer
"describe two different configurations and cannot be properly combined to
anticipate the claim as arranged." Id. at 4--5. Appellants also maintain that
their argument of legal error is proper under 37 C.F.R. § 41.52(a)(4) because
the Examiner's final rejection does not cite or combine these sections of
Ramer and no new ground of rejection was designated in the Answer, "[i]n
effect, this creates an undesignated new ground of rejection in the Decision."
Request 5.
We are not persuaded of error in our Decision. As a preliminary
matter, we note that our Decision cites passages of Ramer directed to the
two purported different embodiments that both the Examiner and Appellants
cite. Compare Decision 4, with Answer 4--6 (citing Ramer i-fi-1 884, 982,
983 2), Reply 4--6 (collectively addressing Ramer' s discussion of influential
and authoritative users). Thus, the Decision does not contain an
undesignated new ground of rejection. Moreover, Appellants failed to
2 As Appellants observed in their Reply Brief (Reply Br. 3 n.1 ), the
Examiner's paragraph number cites accompanying the cited passages of
Ramer on pages 4--6 of the Answer are incorrect. We agree with Appellants
and included corrected citations in this Decision on Request for Rehearing.
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Appeal2014-005996
Application 12/976,743
timely file a petition seeking review of the Examiner's purported failure to
designate a rejection as a new ground of rejection in the Answer, and thus
waive any argument that the Answer should have designated a new ground
of rejection. 37 C.F.R. § 41.40(a).
The cited passages of Ramer all relate to targeting content within a
social network based on relevance of the content. See Ramer, Title, i-fi-1 883-
884, 933, 938, and 982-984. Ramer discloses ranking the relevance of
content based on a connection of a user and providing a targeted list of
content based on that ranking. Id. In contrast to NetMoneyin, Inc. v.
Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008), cited by Appellants, Ramer
contemplates combining the disclosed features. See Blue Calypso, LLC v.
Groupon, Inc., 815 F.3d 1331, 1342--44 (Fed. Cir. 2016). For example,
Ramer describes using the search technology for both targeted search results
and better target advertising. Ramer ,-r 335. Ramer also repeatedly describes
its targeted search technology as being "[i]n embodiments," rather than
limited to separate embodiments. See, e.g., Ramer i-fi-1 106, 109, 111, 884,
885, 914, 933, 938, 982. Moreover, Ramer states generally: "While the
invention has been disclosed in connection with the preferred embodiments
shown and described in detail, each of the technologies described herein
may be incorporated, associated with, combined, and the like with each of
the use scenarios described herein, and each of the applications described
herein .... " Ramer ,-r 997 (emphasis added).
In summary, Appellants' attempt to characterize the cited Ramer
disclosures as directed to separate configurations lacks merit. We are not
persuaded that we misapprehended or overlooked the points argued by
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Appeal2014-005996
Application 12/976,743
Appellants in rendering our Decision, and Appellants thus have not
persuaded us of error in our Decision.
DECISION
We grant Appellants' Request for Rehearing to the extent that we
have reconsidered our Decision, but we deny the Request with respect to
making any changes thereto.
REQUEST FOR REHEARING DENIED
4