Ex Parte Weinstein et al

Patent Trial and Appeal Board

Feb 27, 2017

13491876 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/491,876 06/08/2012 Mark Weinstein 33406- 1001-UT 1700
5179 7590 03/01/2017
PEACOCK MYERS, P.C.
201 THIRD STREET, N.W.
SUITE 1340
ALBUQUERQUE, NM 87102
EXAMINER
SAVENKOV, VADIM
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
info@peacocklaw.com
awehrle @ peacocklaw. com
docketing @peacocklaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK WEINSTEIN and JONATHAN WOLFE
Appeal 2016-005395
Application 13/491,8761
Technology Center 2400
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1—4, 9—16, and 18—24, which constitute all the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Sgrouples, LLC.
Br. 1.
2 Claims 5—8 and 17 have been cancelled. Br. 15, 19.
Appeal 2016-005395
Application 13/491,876
Invention
The claims are directed to a method of creating groups and sharing
content with groups. Abstract.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. A method of sharing information limited by permission,
the method comprising the steps of:
a user providing content to be shared to a data store;
the user specifying to an online service a plurality of
individuals or Groups with which to share the content;
after the providing and specifying steps, automatically
creating via the online service a new Group comprising the
specified plurality;
inviting the individuals or Groups to become members of
the new Group;
allowing an individual with a set permission level who is
not the user to invite other members to join the new Group;
allowing the individual to specify different individual
permission levels for each new person that they invite;
wherein a member of the new group can purchase an add­
on which can then be used by everyone in the new group;
displaying the content from the data store on demand to
the online service from one of the individuals or a member of one
of the Groups that has accepted membership in the new Group;
and
allowing members of the new group to share group
content, wherein group content can have its own permissions,
including those permissions delineated by members when
posting the content.
2
Appeal 2016-005395
Application 13/491,876
Applied Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wherry et al. US 2008/0034040 Al Feb. 7, 2008
Coley US 2009/0106076 Al Apr. 23, 2009
Pearlman et al. US 2010/0318571 Al Dec. 16, 2010
Crowley et al. US 8,055,644 B2 Nov. 8,2011
Fan et al. US 2012/0173356 Al July 5, 2012
Counts et al. US 8,219,133 B2 July 10, 2012
Terleski et al. US 2012/0197980 Al Aug. 2, 2012
Laurie Miltner, Picks of the Week: New Facebook Features, PR20/20 (Oct.
8, 2010), http://www.pr2020.com/blog/new-facebook-groups-features
(hereinafter “PR20/20”).
Cisco, User Guide for Cisco Unified MeetingPlace Web Conferencing
Release 5.4 (Aug. 2007) (hereinafter “Cisco”).
Facebook Hopes to Increase Grown Through App Invites to Non-Members,
Inside Facebook (Dec. 23, 2008) (hereinafter “InsideFacebook”).
REJECTIONS
The Examiner made the following rejections:
Claims 1—4, 9—16, and 18—23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Terleski, Fan, and Pearlman. Final Act. 4—16.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Terleski, Fan, Pearlman, and Official Notice. Id. at lb-
17.
Claims 1 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley, PR20/20, Wherry, Fan, and Pearlman. Id. at
17-22.
3
Appeal 2016-005395
Application 13/491,876
Claims 2, 3, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Crowley, PR20/20, Wherry, Fan, Pearlman, and
Cisco. Id. at 22—24.
Claims 4 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley, PR20/20, Wherry, Fan, Pearlman, Cisco, and
InsideFacebook. Id. at 24—26.
Claims 13—16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Counts, Coley, Wherry, and Pearlman. Id. at 26—33.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley, PR20/20, Counts, Wherry, and Pearlman. Id. at
33—40.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley, PR20/20, Counts, Wherry, Pearlman, and Fan.
Id. at 40-41.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley, PR20/20, Counts, Wherry, Pearlman, and Cisco.
Id. at 41.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley, PR20/20, Counts, Wherry, Pearlman, and
InsideFacebook. Id. at 41^42.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley, PR20/20, Counts, Wherry, Pearlman, and
Official Notice. Id. at 42.
4
Appeal 2016-005395
Application 13/491,876
ANALYSIS
Independent Claims 1, 9, and 18
Unpatentability over Terleski, Fan, and Pearlman
Appellants contend the Examiner erred in finding Terleski teaches:
a user providing content to be shared to a data store;
the user specifying to an online service a plurality of
individuals or Groups with which to share the content;
after the providing and specifying steps, automatically creating
via the online service a new Group comprising the specified
plurality;
inviting the individuals or Groups to become members of the
new Group,
as recited in claim 1 and similarly recited in claims 9 and 18.3 Br. 9.
Specifically, Appellants argue Terleski teaches “setting up the groups,
inviting the individuals, and then providing content, all as separate steps in
that order,” rather than first selecting groups or individuals to share content
with and then creating a new group from those selected groups and
individuals. Id.
We are persuaded by Appellants’ argument. The Examiner finds
(Final Act. 4—5) Terleski “presents an interface that assists the user with
adding one or more digital images to the post” and allows the user to select
“contacts, social circles, groups, or other distribution entities from the
3 We note that Appellants appear to contend claim 13 recites similar
limitations as claim 1 (Br. 9); however, claim 13 does not similarly recite
“after the providing and specifying steps, automatically creating via the
online service a new Group comprising the specified plurality,” as recited in
claim 1. Accordingly, Appellants’ arguments directed to this limitation are
not persuasive of Examiner error for claim 13 because claim 13 does not
include this limitation.
5
Appeal 2016-005395
Application 13/491,876
sharing region to specify an ACL (access control list) for controlling who is
allowed to see (or otherwise access) the post” (Terleski || 67—68; see
Terleski H 103—104, Fig. 6A). The Examiner further finds Terleski allows a
user to create social circles, i.e., groups, and invite others to join those social
circles. Final Act. 5 (citing Terleski || 36—37, 70, 77, 96).
The portions of Terleski cited by the Examiner, however, do not
disclose that a new group is formed automatically based on entities a user
has chosen to share content with. Indeed, Terleski teaches that “private
circles are social circles that user 202 creates and invites . . . contacts to
voluntarily join.” Terleski || 36—37; see Terleski || 33—35, 38—39. Terleski
teaches that a user creates a group and the user populates the group by
inviting members, rather than teaching automatic group creation comprising
entities that the user had selected to share content with. Terleski || 36—37;
see Terleski || 33—35, 38—39. Further, while the Examiner finds that
Terleski teaches sharing content with selected entities and also teaches group
creation features, the Examiner has not identified where Terleski teaches
group creation comprising the entities the user has selected to share content
with. See Final Act. 4—5; see also Ans. 3. Moreover, the Examiner has not
explained why it would have been obvious to create a new group comprising
entities a user has selected to share content with. See Final Act. 4—5; see
also Ans. 3.
Accordingly, on this record, we are constrained to reverse the
Examiner’s § 103 rejection of independent claims 1, 9, and 18 over Terleski,
Fan, and Pearlman. Because we agree with at least one of the arguments
advanced by Appellants, we need not reach the merits of Appellants’ other
arguments directed to these claims for this rejection. See Br. 9.
6
Appeal 2016-005395
Application 13/491,876
Unpatentability over Crowley, PR20/20, Wherry, Fan, and Pearlman
Appellants contend the Examiner erred in finding the combination of
Crowley and PR20/20 teaches
a user providing content to be shared to a data store; the user
specifying to an online service a plurality of individuals or
Groups with which to share the content; after the providing and
specifying steps, automatically creating via the online service a
new Group comprising the specified plurality; inviting the
individuals or Groups to become members of the new Group,
as recited in claim 1 and similarly recited in claim 9. Br. 10—11.
Specifically, Appellants argue Crowley “first creat[es] a group, then invit[es]
members, then shar[es] content,” rather than first selecting members to share
content with and then creating a group comprising those selected members.
Id. Appellants further argue, similarly, that in PR20/20 “groups are [first]
created and then one invites the members.” Id.
We are persuaded by Appellants’ arguments. The Examiner finds
(Final Act. 17), in Crowley, “[fjirst, the group information for a group is
generated 710. In this step, the user configures each group and designates
members to each group” and “[t]hen . . . the user indicates which content
items are to be shared with which group” (Crowley 7:35—51). The Examiner
further finds PR20/20 teaches a user creates a new group and the user invites
members to the new group. Final Act. 19 (citing PR20/20 1—2).
The portions of Crowley and PR20/20 cited by the Examiner,
however, do not disclose that a new group is formed automatically
comprising entities a user has chosen to share content with. In particular,
PR20/20 teaches “[t]o create a group . . . click ‘Create Group’ . . . name the
Group, select an icon for it and add members (which start to populate as you
7
Appeal 2016-005395
Application 13/491,876
type, using your Facebook friends list).” PR20/20 2. That is, PR20/20
teaches that a user creates a group and populates the group, but PR20/20
does not teach group creation comprising entities the user has selected to
share content with. Further, the Examiner has not identified where Crowley
or PR20/20 teach group creation comprising entities a user has selected to
share content with. See Final Act. 19—20; see also Ans. 7—8. Moreover, the
Examiner has not explained why it would have been obvious to create a new
group comprising entities a user has selected to share content with. See
Final Act. 19-20; see also Ans. 7—8.
Accordingly, on this record, we are constrained to reverse the
Examiner’s § 103 rejection of independent claims 1 and 9 over Crowley,
PR20/20, Wherry, Fan, and Pearlman. Because we agree with at least one of
the arguments advanced by Appellants, we need not reach the merits of
Appellants’ other arguments directed to these claims for this rejection. See
Br. 10-11.
Dependent Claims 2—4, 10—12, and 19—24
As discussed supra, we do not sustain the Examiner’s § 103 rejections
of claims 1, 9, and 18 and, accordingly, we do not reach the merits of
Appellants’ § 103 arguments regarding claims 3,4, 11, 12, 22, and 23 which
depend directly or indirectly from claims 1, 9, and 18. Br. 9-11. Because
we do not sustain the Examiner’s § 103 rejection of claims 1,9, and 18, it
follows that we do not sustain the Examiner’s § 103 rejection of dependent
8
Appeal 2016-005395
Application 13/491,876
claims 2-4, 10—12, and 19—24, which depend directly or indirectly from
claims 1, 9,4 and 18.
Independent Claim 13
“invite other members ”
Appellants contend the Examiner erred in finding Fan teaches “code
allowing an individual member with a set permission level who is not a
Group creator to invite other members to join that Group,” as recited in
independent claim 13. Br. 9. Specifically, Appellants argue Fan’s group
members who are owners, i.e., “[a]dministrators[,] do not invite others to
become members of another user’s group.” Id.
We are not persuaded. The Examiner finds (Ans. 3), and we agree,
Fan teaches a “family space owner and/or a co-owner may set the access
control policies and apply them to every family space member” (Fan 157).
The Examiner further finds, and we agree, that it is “common knowledge”
that other members can be given control policies as “co-owners who enjoy
some or all of the privileges the owner has” and those control policies
“includ[e] adding users.” Ans. 3 (citing Wherry | 62); Final Act. 10.
Appellants’ arguments do not address the Examiner’s finding that one
of ordinary skill in the art would have understood that setting control
policies for Fan’s group members include giving group members owner
privileges which include inviting new group members. Indeed, the
Examiner cites (Ans. 3; Final Act. 10) Wherry as evidence that one of
4 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review claim 9 and its
dependent claims for compliance with 35U.S.C. § 101 and determine
whether they encompass non-statutory subject matter, i.e., transitory signals.
9
Appeal 2016-005395
Application 13/491,876
ordinary skill in the art would have understood that the owner of a group
“may assign certain users to become moderators who may enjoy some or all
of the privileges the owner has to control the activities in the group,” and
those owner privileges include “the ability to . . . invite new users to join”
(Wherry 1 62). Accordingly, we are not persuaded the Examiner erred in
finding Fan teaches, or at least suggests, “code allowing an individual
member with a set permission level who is not a Group creator to invite
other members to join that Group,” within the meaning of claim 13.
“controlling, depending on permissions granted to the user ”
Appellants contend the Examiner erred in finding Terleski teaches
controlling, depending on permissions granted to the user, one
or more of the features from the group consisting of:
comments added to the content by other users may or may
not be displayed to the user;
the user may or may not be able to add comments to the
content;
the user may or may not be able to reshare the content; and
the user may or may not be able to download the content,
as recited in claim 13. Br. 9. Specifically, Appellants argue Terleski
“merely discusses filtering of content.” Id.
We are not persuaded. The Examiner finds, and we agree, Terleski
teaches a system which allows users to view posted content and filter posted
content. Final Act. 8—9 (citing Terleski Figs. 5A—5Q, 181); Ans. 4. The
Examiner further finds that users which are “unable to view the post due to
either their filtering policies or their permissions” are “thereby unable to add
or view comments, reshare the post, and/or download the post.” Ans. 4.
Appellants’ argument that Terleski “merely discusses filtering of
content” (Br. 9), does not persuasively address the Examiner’s finding that
10
Appeal 2016-005395
Application 13/491,876
when content is filtered such that a user does not have access to the content;
it follows that the filtered content cannot be viewed, commented on,
reshared, or downloaded (Ans. 4). Accordingly, we are not persuaded the
Examiner erred in finding Terleski teaches
controlling, depending on permissions granted to the user, one
or more of the features from the group consisting of:
comments added to the content by other users may or may
not be displayed to the user;
the user may or may not be able to add comments to the
content;
the user may or may not be able to reshare the content; and
the user may or may not be able to download the content,
within the meaning of claim 13.
For the reasons discussed above, we sustain the Examiner’s decision
to reject claim 13.
Dependent Claims 15 and 16
Appellants contend the Examiner erred in finding Terleski teaches
“the user can select via the online service any subset of the Groups in which
they are a member for the displaying step,” as recited in claim 15, and in
finding Terleski teaches “the user can select via the online service any subset
of the individual members in Groups in which the user is a member for the
displaying step,” as recited in claim 16. Br. 10. Specifically, Appellants
argue “Figs. 50, 5P, 6B, and 6C” of Terleski “do not relate to an ability to
select any subset of one’s groups or any subset of individuals within a single
group for which to have content displayed.” Id.
We are not persuaded. The Examiner finds, and we agree, Terleski
teaches that a user who shares content “may choose from a variety of
11
Appeal 2016-005395
Application 13/491,876
distribution entities when determining with whom to share their post.” Ans.
6—7 (citing Terleski Figs. 5B—5F, 51—5N and 5Q); Final Act. 12. The
Examiner further finds, and we agree, shared content is subsequently
displayed in the user’s shared content feed. Final Act. 9 (citing Terleski
Figs. 5A-5Q).
Appellants’ argument that Terleski does not “relate to an ability to
select any subset” (Br. 10) does not persuasively address the Examiner’s
finding that Terleski allows a user to select which particular social circle or
individual contact to share content with. In particular, Figures 5C—5F of
Terleski show the user sharing content by selecting, from a list of the user’s
social circles, the user’s “Friends” social circle and individual contact “Tim
Tam,” i.e., subsets of groups and individuals. Furthermore, the claims recite
that a user selects subsets “for the displaying step,” but the claims do not
require how, or even if at all, the selection of subsets affects the displaying
step. Accordingly, we are not persuaded the Examiner erred in finding
Terleski teaches “the user can select via the online service any subset of the
Groups in which they are a member for the displaying step,” within the
meaning of claim 15 and “the user can select via the online service any
subset of the individual members in Groups in which the user is a member
for the displaying step,” within the meaning of claim 16.
For the reasons discussed above, we sustain the Examiner’s decision
to reject claims 15 and 16.
Dependent Claim 14
Appellants do not argue separate patentability for dependent claim 14,
which depends from claim 13. See Br. 9, 11. For the reasons set forth
12
Appeal 2016-005395
Application 13/491,876
above, therefore, we are not persuaded the Examiner erred in rejecting this
claim. See In reLovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) (“We conclude
that the Board has reasonably interpreted Rule 41.37 to require applicants to
articulate more substantive arguments if they wish for individual claims to
be treated separately.”). Accordingly, we sustain the Examiner’s decision to
reject claim 14. See 37 C.F.R. § 41.37(c)(l)(iv).
Alternate Grounds of Rejection
With respect to the Examiner’s other ground of rejection, namely the
unpatentability of claims 13—15 over Counts, Coley, Wherry, and Pearlman,
because we have sustained the Examiner’s rejection of claims 13—15 as
unpatentable under the ground of rejection discussed supra, i.e., over
Terleski, Fan, and Pearlman, we do not reach the alternate ground of
rejection. See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.”).
DECISION
We REVERSE the Examiner’s decision to reject claims 1—4, 9—12,
and 18-24 under 35 U.S.C. § 103(a).
We AFFIRM the Examiner’s decision to reject claims 13—16 under 35
U.S.C. § 103(a).
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-IN-PART
13