Ex Parte Yao et al

Patent Trial and Appeal Board

Aug 31, 2016

13215018 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/215,018 08/22/2011
91230 7590 09/02/2016
Baker Botts L.L.P.
2001 Ross Avenue. 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
Rose Yao
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.
079894.0262 1402
EXAMINER
KHAN, AFTAB N
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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
Ex parte ROSE YAO and BRANDON MARSHALL W ALKIN
Appeal2015-003412
Application 13/215,018
Technology Center 2400
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
.6. .... ,1 .... ,....,-TTr'l.r-"\l\-1,....Al/'\.r'" C- "1 • ,• r'" Appeuants' appeal unaer j) u.~.L. s lj4~aJ rrom a rma1 reJecuon or
claims 1-7 and 21-33. We have jurisdiction under 35 U.S.C. § 6(b). Claims
8-20 are canceled. See Final Act. 2.
We reverse and enter a new ground of rejection within the provisions
of 37 C.F.R. § 41.50(b) (2013).
1 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 3.
Appeal2015-003412
Application 13/215,018
STATEMENT OF THE CASE
The Invention
Appellants' invention relates to "integration of information stored
remotely at a social networking system into a real-time reverse lookup dialer
application." Spec. i-f 1. Claims 1, 21, and 28 are independent. Claim 1 is
illustrative of the subject matter on appeal:
1. A method comprising:
by a client computing device of a first user, receiving input
from the first user to initiate a communication to a second user;
by the client computing device, determining whether a
first portion of a social-network user profile of the second user is
stored locally on the client computing device;
by the client computing device, when it is determined that
the first portion of the social-network user profile of the second
user is stored locally on the client computing device, displaying
to the first user, in connection with at least the initiation of the
communication, the first portion of the social-network user
profile;
by the client computing device, when it is determined that
the first portion of the social-network user profile is not stored
locally on the client computing device:
sending the input to a server computing device;
receiving a second portion of the social-network
user profile of the second user that is stored remotely from
the client computing device; and
displaying to the first user, in connection with at
least the initiation of the communication, the second
portion of the social-network user profile of the second
user.
See App. Br. 14 (Claims App'x).
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Application 13/215,018
Rejection on Appeal
Claims 1-7 and 21-33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Walsh et al. (US 2013/0132519 Al; published May 23,
2013) ("Walsh") and Li (US 2005/0210125 Al; published Sept. 22, 2005).
See Final Act. 2-6.
ANALYSIS
The Examiner found Li teaches a wireless device that couples to a
mobile cache via a mobile network and connects to a wireless application
protocol ("W AP") proxy server. See Ans. 9; Li Fig. 1 (items 100, 102, 104,
106, 100), i-f 10. The Examiner found Li's mobile cache stores user profiles
locally in a user profile database. See Final Act. 3 (citing Li i-f 11 ). The
Examiner explained that Li's mobile cache is local to ("stored locally on," as
recited in claim 1) Li's wireless device because both are situated at a client
location. See Ans. 9. Moreover, even if Li's mobile cache were not "stored
locally on" Li's wireless device, the Examiner stated that any client device
such as a personal computer or desktop "can be partitioned to operate both
as client and proxy ... and ... configured to house a database ... with
cached user profiles" (Ans. 10) and that "an ordinary person in the art would
agree that separating two caches or combining the caches does not constitute
a novelty ... and can be easily derived from the teachings of Li[] and Walsh
combined" (Ans. 10). Based on these findings, explanations, and
statements, the Examiner found that the combination of Walsh and Li
teaches or suggests "by the client computing device, determining whether a
first portion of a social-network user profile of the second user is stored
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Application 13/215,018
locally on the client computing device," as recited in claim 1. See Final Act.
2--4; Ans. 9-11.
Appellants contend the combination of Walsh and Li does not
disclose, teach, or suggest this limitation of claim 1. See App. Br. 11-12;
Reply Br. 2-5. Specifically, Appellants argue Walsh's social-network
profiles are not "stored locally on" its nodes, but remotely at a social-
network database that connects to a mediating server. See App. Br. 11.
Further, Appellants argue Li's user profiles are stored on a mobile cache that
is remote from and not local to Li's wireless device. See id.; Reply Br. 3--4.
Accordingly, Appellants argue that neither Walsh nor Li discloses, teaches,
or suggests a portion of a second user's social-network profile that is "stored
locally on" a client computing device of a first user, as recited in claim 1.
See App. Br. 11; Reply Br. 3--4. We find Appellants' arguments persuasive.
First, even though Appellants are correct that Walsh teaches storing
social-network profiles in a remote social-network database (see App. Br.
11; Walsh i-f 34), Walsh also teaches storing a social-network profile locally
on a peer node (for example, a mobile phone) associated with the user. See
Walsh i-f 35. Accordingly, Walsh at least suggests determining whether a
portion of a first user's social-network profile is stored locally on the first
user's peer node. But the Examiner has not shown that Walsh teaches or
suggests determining whether a portion of a second user's social-network
profile is stored locally on the first user's peer node. See Final Act. 2--4;
Ans. 9-11.
Second, we agree with the Examiner that Li's mobile cache stores
user profiles in a user profile database. See Final Act. 3 (citing Li i-f 11 ).
But, as Appellants argue, these user profiles are not "stored locally on the
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Application 13/215,018
client computing device" (claim 1) because the mobile cache is located
remote from and not on Li's wireless device. See App. Br. 11; Li Fig. 1
(items 102, 100), i-f 11. Moreover, the Examiner has not identified sufficient
evidence from the cited prior art to support the conclusion that relocating
Li's mobile cache to within Li's wireless device would have been obvious to
one skilled in the art. See Ans. 9-10. Furthermore, the rationale articulated
by the Examiner is conclusory. See id. Accordingly, the Examiner has not
shown that Li teaches or suggests determining whether a portion of a second
user's profile is stored locally on the first user's wireless device. See Final
Act. 2--4; Ans. 9-11.
In view of the foregoing, we conclude the Examiner erred in finding
that the combination of Walsh and Li teaches or suggests "by the client
computing device, determining whether a first portion of a social-network
user profile of the second user is stored locally on the client computing
device," because none of the cited art teaches a "user profile of the second
user is stored locally on the client computing device." We do not sustain the
rejection of independent claim 1. For the same reason, we do not sustain the
rejections of independent claims 21 and 28, and dependent claims 2-7, 22-
27, and 29-33, each of which include the same deficiency discussed above
for the rejection of claim 1. See App. Br. 11-12; Reply Br. 2-5; Ans. 9-12;
Final Act. 2-6.
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NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 1, 21, and 28
We enter a new ground of rejection for claims 1, 21, and 28 under
35 U.S.C. § 103(a) as unpatentable over Walsh, Li, and Hawkins et al. (US
7,738,912 Bl; issued June 15, 2010) ("Hawkins"). 2
We adopt as our own the Examiner's findings, conclusions, and
reasoning for claims 1, 21, and 28 (see Final Act. 2--4, 6; Ans. 9-10) except
that, as discussed above, the Examiner has not shown that the combination
of Walsh and Li teaches or suggests a "user profile of the second user is
stored locally on the client computing device," as recited in claim 1 and
similarly recited in claims 21and28 (see App. Br. 15-17 (Claims App'x)).
Nevertheless, Hawkins, in the same field of endeavor, i.e., user
interfaces for mobile communication devices (see Hawkins col. 1, 11. 25-27),
teaches this limitation. See Hawkins Figs. 2 (showing contact names-"first
portion of social-network user profile of the second user"---on first user's
mobile phone), 14 (showing a screen including names and presence
indicators for contacts on first user's mobile phone), 15 (showing names,
phone numbers, and presence indicators for contacts in a lookup list on the
first user's mobile phone); col. 11, 11. 1-5). Hawkins further teaches that the
lookup list, i.e., "address book," is located locally on communication device
100. See Hawkins col. 9, 11. 15-17; see also id. col. 2, 1. 17 ("contact lists in
a communication device"). These disclosures of Hawkins are consistent
with the plain language of the claims viewed in light of Appellants'
Specification, which discloses that a portion of a second user's social-
2 Hawkins is listed and made of record in a Notice of References Cited
(Form PT0-892) mailed September 19, 2013.
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network user profile can be the second user's name or phone number. See
Spec. Figs. 3-5, i-fi-124, 26, 28. It would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Wal sh and Li
to include the teachings of Hawkins, providing an easy-to-use mechanism
that facilitates communication between contacts (See Hawkins col. 2, 1. 61-
col. 3, 1. 2) and addresses the need to display contact information in an
integrated manner in a communication device (see Hawkins col. 2, 11. 37-
57).
Claims 2-7, 22-27, and 29-33
We have entered a new ground of rejection for claims 1, 21, and 28.
We leave it to the Examiner to consider the patentability of dependent
claims 2-7, 22-27, and 29-33, in light of our findings and conclusions
supra. The fact that we did not enter new grounds of rejection for claims 2-
7, 22-27, and 29-33 should not be construed to mean that we consider those
claims to be directed to patentable subject matter or to be patentable over the
prior art of record.
DECISION
The decision of the Examiner to reject claims 1-7 and 21-33 is
reversed.
We enter a new ground of rejection for claims 1, 21, and 28 under 35
U.S.C. § 103(a) over Walsh, Li, and Hawkins.
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
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Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
REVERSED
37 C.F.R. § 41.50(b)
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