Ex Parte Vandermolen et al

Patent Trials and Appeals Board

May 6, 2019

13836745 - (D) (P.T.A.B. May. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/836,745 03/15/2013 Harmannus Vandermolen
107193 7590 05/08/2019
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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.
19487 .234.1.4 5646
EXAMINER
MINA,FATIMAP
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
05/08/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARMANNUS VANDERMOLEN, CHARLES FISH, KAREN
HOWE, PAUL VIDICH, and SCOTT J. LEVINE
Appeal2018-000285
Application 13/83 6, 7 45 1
Technology Center 2100
Before JOHNNY A. KUMAR, SCOTT E. BAIN, and ALEX S. YAP,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 53-72, which constitute all claims pending in the
application. Claims 1-52 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 2.
Appeal2018-000285
Application 13/836,745
STATEMENT OF THE CASE
The Claimed Invention
Appellants' claimed invention relates to identifying content in a
document that is significant to a user. Spec. ,r 1. According to the
Specification, the invention provides an indicator separate from a document,
such as a "floating 'I Like This' button," permitting a user to signify that a
document contains content of interest to the user. Id. ,r,r 1-2, 5. When the
user identifies interest, such as by selecting the floating "I Like This" button,
the invention analyzes the document to determine what part of the document
interests the user. Id. ,r,r 5---6.
Claims 53 and 68 are independent. Claim 53 is representative of the
invention and the subject matter of the appeal, and reads as follows:
53. A method comprising:
enabling a selectable user interface element for
presentation to a user in association with an electronic
document separate from the selectable user inteiface element,
wherein selection by a user of the selectable user interface
element indicates that the user is interested in at least a portion
of the electronic document;
detecting a selection by the user of the selectable user
interface element;
analyzing, in response to the detected selection and using
at least one processor, the electronic document to identify a
plurality of portions of content of the electronic document; and
identifying at least one portion from the plurality of
portions of the content of the electronic document that the user
is interested in.
App. Br. 14 (Claims App'x.) (emphasis added).
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Appeal2018-000285
Application 13/836,745
The Rejections on Appeal
Claims 53, 54, 59, 64, and 67----69 stand rejected under 35 U.S.C. § 103
as unpatentable over Stevenson (WO 2004/095,314 A2; publ. Nov. 4, 2004)
and Kotler et al. (US 2005/0044496 Al; publ. Feb. 24, 2005) ("Kotler").
Final Act. 3----6.
Claims 55 and 70 stand rejected under 35 U.S.C. § 103 as
unpatentable over Stevenson, Kotler, and Grainger (US 2002/0116363 Al;
publ. Aug. 22, 2002). Final Act. 6-7.
Claims 56, 57, 71, and 72 stand rejected under 35 U.S.C. § 103 as
unpatentable over Stevenson, Kotler, and Kurzweil et al. (US 2006/0071950
Al; publ. Apr. 6, 2006) ("Kurzweil"). Final Act. 7-9.
Claim 58 stands rejected under 35 U.S.C. § 103 as unpatentable over
Stevenson, Kotler, and Lieberman et al. (US 7,028,253 Bl; iss. Apr. 11,
2006) ("Lieberman"). Final Act. 9-10.
Claims 60----63 stand rejected under 35 U.S.C. § 103 as unpatentable
over Stevenson, Kotler, and Shanahan et al. (US 2003/0033287 Al; pub 1.
Feb. 13, 2003) ("Shanahan"). Final Act. 10-12.
Claims 65 and 66 stand rejected under 35 U.S.C. § 103 as
unpatentable over Stevenson, Kotler, and Joshi et al. (US 2006/0048046 Al;
publ. Mar. 2, 2006) ("Joshi"). Final Act. 12-13.
ANALYSIS
We have reviewed the Examiner's rejections in light of the arguments
raised in the Briefs. On the record before us, we cannot sustain the
Examiner's rejections.
The Examiner relies on the combination of Stevenson and Kotler in
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Application 13/836,745
rejecting independent claim 53 as obvious. In particular, the Examiner finds
Kotler teaches or suggests "enabling a selectable user interface element for
presentation to a user in association with an electronic document separate
from the selectable user interface element," as recited in claim 53. Ans. 2-3;
Final Act. 3. The Examiner finds this limitation in Kotler' s description of
"free floating fields" in an electronic document. Ans. 2. Appellants argue
the Examiner has erred, because Kotler's "free floating fields" are not
separate from the electronic document, as recited in claim 53. App. Br. 9-
10. We agree with Appellants' argument.
Kotler is directed to "spreadsheet fields in text." Kotler [54], ,r 2. The
architecture disclosed in Kotler "allows insertion of discrete individual
fields, referred to as 'free floating fields,' inline with normal textual
sentences" in a document, so that the free floating fields and the text
elements are "rendered together as an integrated document." Id. Abstract
( emphasis added). Kotler provides that "the document [] combines a text-
based body[,] one or more tables[,] and one or more free floating fields
.... " Id. at ,r 42 (emphasis added). Moreover, Kotler paragraph 42
discloses:
[t]he document 120 combines a text-based body 122, one or
more tables 124(1) and 124(2), and one or more free floating
fields (FFF) 126(1) and 126(2). Each free floating fields 126 is
akin to a single cell of a table that may be inserted anywhere in
the document, including in the middle of a text-based body.
Id. at ,r 44 (emphasis added).
All of the foregoing passages suggest, as Appellants argue, that the
free floating fields in Kotler are part of the electronic document, not
"separate" from it. The Examiner, nevertheless, finds that Kotler's "floating
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Application 13/836,745
fields are not part of the electronic document." Ans. 3 (citing Kotler ,r 44).
The Examiner, however, has not sufficiently explained this finding, and in
light of Kotler's disclosures described above, we do not find adequate
support in the record for the Examiner's finding.
We, therefore, conclude that the rejection lacks the requisite
specificity needed for the establishment of a prima facie case of
unpatentability. The Examiner bears the initial burden of presenting a prima
facie case ofunpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). A prima facie case is established when the party with the burden of
proof points to evidence that is sufficient, if uncontroverted, to entitle it to
prevail as a matter of law. See Saab Cars USA, Inc. v. United States, 434
F.3d 1359, 1369 (Fed. Cir. 2006). For the reasons explained above, that
burden has not been met as to the disputed limitation of claim 53.
Sustaining the rejection would require us to resort to impermissible
speculation or unfounded assumptions or rationales, and we decline to do so.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Thus, on this record, we
must conclude the Examiner has erred.
For the foregoing reasons, we do not sustain the Examiner's
obviousness rejection of independent claim 5 3. For the same reasons, we
also do not sustain the same rejection of independent claim 68, which recites
the same disputed limitation as claim 53. We further do not sustain the
rejections of the remaining dependent claims, because the Examiner has not
explained how any of the additional references cure the deficiency described
above.
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Appeal2018-000285
Application 13/836,745
DECISION
We reverse the Examiner's decision rejecting claims 53-72.
REVERSED
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