Facebook, Inc.Download PDFPatent Trials and Appeals BoardOct 22, 20212020004877 (P.T.A.B. Oct. 22, 2021) Copy Citation 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. 15/467,891 03/23/2017 Yigal Dan Rubinstein 26295-36748/US 6931 87851 7590 10/22/2021 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER PATEL, DHAIRYA A ART UNIT PAPER NUMBER 2453 NOTIFICATION DATE DELIVERY MODE 10/22/2021 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): fwfacebookpatents@fenwick.com ptoc@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YIGAL DAN RUBINSTEIN, JACOB ANDREW BRILL, ARTURO BEJAR, JONATHAN H. FRANK, and DAVID BREGER ____________________ Appeal 2020-004877 Application 15/467,891 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, ERIC S. FRAHM, and JOYCE CRAIG, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–20 (see Non-Final Act. mailed May 21, 2019). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a) (2019). According to Appellant, Facebook, Inc. is the real party in interest (Appeal Br. 2) (we note Appellant’s Appeal Brief is not paginated. For purposes of this Decision, we refer to pages 1–21 of the Appeal Brief in sequential order). Appeal 2020-004877 Application 15/467,891 2 DISCLOSED AND CLAIMED INVENTION Appellant’s disclosed invention, entitled “Using Social Graph for Account Recovery” (see Title), “relates to social networking systems and in particular to determining real-world interaction between users of a social networking system and using the information for account recovery” (Spec. ¶ 2), for example, when online systems lock user accounts if the user is associated with suspicious activities or is locked out because the user has forgotten the password and made too many login attempts (Spec. ¶ 5). Appellant achieves these purposes by sending access codes to users associated with the user that is locked out (see Spec. ¶¶ 8–12; claims 1 and 20). Appellant claims a computer implemented method (claim 1) and non- transitory, computer-readable medium with processor instructions (claim 20) for recovering a user’s account with access codes sent to other users determined to have a likelihood of a real-world relationship with the user based on social networking information (see independent claims 1, 20). Independent claim 1 is illustrative of the invention and is reproduced below. 1. A computer implemented method comprising: receiving, at a social networking system, a request for recovering an account of a requesting user of a social networking system, wherein the requesting user is connected to a plurality of users of the social networking system; [A] determining, for each user of the plurality of users, a likelihood of a real-world relationship between the requesting user and the corresponding user; [B] selecting, by the social networking system, a subset of the plurality of users to send a first set of access codes, the subset of users being selected based on the determined likelihoods of real-world relationships of the plurality of users; Appeal 2020-004877 Application 15/467,891 3 sending the first set of access codes to the selected subset of users; receiving a second set of access codes from the requesting user; and responsive to one or more access codes in the second set matching the access codes in the first set, granting access to the account to the requesting user. Appeal Br. 17, Claims App. (formatting, bracketed lettering, and emphasis added). EXAMINER’S REJECTIONS (HEREINAFTER, “REJECTIONS 1–5”) (1) The Examiner rejected claims 1–15 and 17–20 under 35 U.S.C. § 103(a) as being unpatentable over Schechter et al. (US 2010/0293600 A1; published Nov. 18, 2010) (hereinafter, “Schechter”) and Morin et al. (US 2012/0124508 A1; published May. 17, 2012) (hereinafter, “Morin”). Non- Final Act. 3–8. (2) The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Schechter, Morin, and Anderson et al. (US 9,064,246 B1; issued June 23, 2015) (hereinafter, “Anderson”). Non-Final Act. 9. (3) The Examiner rejected claims 1–3, 9–15, and 18–20 under 35 U.S.C. § 103(a) as being unpatentable over Schechter and Marcus et al. (US 2011/0161429 A1; published June 30, 2011) (hereinafter, “Marcus”).2 2 We note that the heading of the statement of the rejection, labeled by the Examiner as “2nd Rejection” (Non-Final Act. 10), does not list Morin as being included in the basis of the rejection. Although the Examiner addresses Morin in the last paragraph at the bottom of page 10 of the rejection, this appears to be a cut and paste error, as the same paragraph was included in the discussion of the rejection of claim 1 over Schechter and Morin at page 4 of the rejection, and no motivation statement is provided for Appeal 2020-004877 Application 15/467,891 4 Non-Final Act. 10–14. (4) The Examiner rejected claims 4–8 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Schechter, Marcus, and Morin. Non- Final Act. 14–16. (5) The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Schechter, Marcus, and Anderson. Non-Final Act. 17. ISSUES We note that if Appellant fails to present arguments on a particular rejection, we will not unilaterally review those uncontested aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue - or, more broadly, on a particular rejection - the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (The Board may treat arguments Appellant failed to make for a given ground of rejection as waived). combining Morin with Schechter and Marcus (see also Ans. 14 “Examiner made a typographical error by citing Morin reference in the second rejection. The Morin reference is not being cited in the second rejection.”). We further note that “Schechter and Morin” are seemingly applied for dependent claims 18 and 19 (see Final Act. 13), but we interpret this to be “Schechter and Marcus.” In addition, Morin is included in the heading of the statement of Rejection 4 (see Non-Final Act. 14), indicating that Morin was added as to claims 4–8 and 17, but not as to claim 1 (see Rejection 3). In view of the foregoing, we have not considered Morin as part of this rejection, as Morin is not part of the statement of the rejection and may not be properly relied upon. Appeal 2020-004877 Application 15/467,891 5 With regard to Rejection 3, Appellant does not separately argue with particularity the limitations of claims 2 and 3 (rejected over the combination of Schechter and Marcus) apart from merely asserting that these claims recite further features that expand upon the limitations argued as to claim 1 (Appeal Br. 12–13). Appellant has not addressed the findings by the Examiner as to claims 2 and 3, but rather, Appellant merely point outs what claims 2 and 3 recite and requests “reconsideration and withdrawal of the rejection” (Appeal Br. 13). Such nominal statements and conclusions are not considered a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (stating that interpreting 37 C.F.R. § 41.37(c)(1)(iv) to require a more substantive argument than a naked assertion that the prior art fails to teach limitation in order to address a claim separately, is not an unreasonable interpretation of the rule); Ex parte Belinne, 2009 WL 2477843 at *4 (BPAI 2009) (“Informative”) (“Appellants’ argument . . . repeatedly restates elements of the claim language[] and simply argues that the elements are missing from the reference. However, Appellants do not present any arguments to explain why the Examiner’s explicit fact finding is in error.”). And, such conclusory assertions without supporting explanation or analysis particularly pointing out errors in the Examiner’s reasoning fall well short of persuasively rebutting the Examiner’s prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We therefore sustain the Examiner’s rejection of claims 2 and 3 over the combination of Schechter and Marcus for the reasons provided for representative claim 1, from which claims 2 and 3 directly depend. Appeal 2020-004877 Application 15/467,891 6 Because Appellant does not present any separate patentability arguments as to the obviousness rejections of (i) claims 4–8 and 17 over the combination of Schechter, Marcus, and Morin (Rejection 4); and (ii) claim 16 over the combination of Schechter, Marcus, and Anderson (Rejection 5), Appellant has not shown that the Examiner erred in rejecting claims 4–8, 16, and 17, and we sustain the obviousness rejections of claims 4–8, 16, and 17 pro forma. Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010) (precedential) (“[T]he Board will generally not reach the merits of any issues not contested by an appellant.”); 37 C.F.R. § 41.37(c)(1)(iv) (2017) (Each ground of rejection must be treated under a separate heading.). Other than including the prior art rejections of claims 4–8, 16, and 17 (see supra Rejections 4 and 5) in our conclusion, we will not discuss these rejections further. Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4– 16) and the Reply Brief (Reply Br. 2–6),3 the following principal issues are presented on appeal: (1) With regard to Rejections 1 and 2, did the Examiner err in rejecting claims 1–20 under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Schechter and Morin, because there is no motivation to combine Morin with Schechter, and Morin fails to teach or 3 Appellant argues (i) Rejections 1 and 2 over the same base combination of Schechter and Morin on the basis of claim 1 (see Appeal Br. 4–10; Reply Br. 2–5); and (ii) Rejections 3–5 over the same base combination of Schechter and Marcus on the basis of claim 1 (see Appeal Br. 10–16; Reply Br. 5–6). Based on Appellant’s arguments, we select claim 1 as representative of claims 1–3, 9–15, and 18–20 rejected over Schechter and Marcus. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-004877 Application 15/467,891 7 suggest limitations A and B set forth in claim 1, and the commensurate limitations set forth in claim 20? (2) With regard to Rejection 3, has Appellant shown the Examiner erred in rejecting claims 1–3, 9–15, and 18–20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Schechter and Marcus, because Schechter, and thus the combination of Schechter and Marcus, fails to teach or suggest limitations A and B, as recited in representative claim 1? ANALYSIS We have reviewed Appellant’s arguments in the Appeal Brief (Appeal Br. 4–16) and the Reply Brief (Reply Br. 2–6), the Examiner’s rejections (Final Act. 3–17), and the Examiner’s response to Appellant’s arguments (Ans. 3–22). Issue (1): Base Combination of Schechter and Morin (Rejections 1 and 2) Appellant’s arguments have persuaded us of error in the Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a) based on a lack of motivation for modifying Schechter with Morin (see Appeal Br. 9–10), and because we agree with Appellant’s contentions that the cited portions of Morin fail to teach or suggest either limitation A or limitation B of claim 1, and the commensurate limitations found in remaining independent claim 20 (see Reply Br. 4–5). Appellant asserts that (i) Morin (i) has “no perpetual connection between users (e.g., being ‘friends’ in a conventional social networking system)” (Appeal Br. 5); and (ii) “in Morin, a user’s friends or connections are those that they regularly communicate to perpetuate a ‘path’ forward” (Appeal Br. 5), thus Morin fails to teach or suggest limitations A and B of Appeal 2020-004877 Application 15/467,891 8 claim 1 (see Appeal Br. 7–8; Reply Br. 4–5). We agree. Morin’s Figure 10 and paragraphs 57 through 59 merely disclose providing a path sharing operation between users that are selected using photo tagging. These portions of Morin, relied upon by the Examiner as supporting the rejection of claims 1–20 (including for example, limitations A and B recited in claim 1), are silent as to determining a likelihood of a real- world relationship based on social networking information (see e.g., claim 1, limitation A), and selecting a subset of users to send a first set of access codes to for recovery purposes based on the determined likelihood (see e.g., claim 1, limitation B). We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). Furthermore, in light of Morin’s failure to teach or suggest limitations A and B of claim 1 (and the commensurate limitations of claim 20), Appellant’s arguments that “the combination does not result in the claimed invention” (Appeal Br. 9), are persuasive. Based on the record before us, Appellant’s arguments as to the rejections of claims 1–20 over the combination of Schechter and Morin are persuasive. Accordingly, we do not sustain the Examiner’s obviousness rejections of claims 1–20 over (i) Schechter and Morin (as to claims 1–15 and 17–20); and (ii) Schechter, Morin, and Anderson (as to claim 16). Issue (2): Base Combination of Schechter and Marcus (Rejection 3) With regard to claim 1, we agree with and adopt as our own the Appeal 2020-004877 Application 15/467,891 9 Examiner’s findings of facts and conclusions as set forth in the Final Rejection (Final Act. 10–11) and Answer (Ans. 12–22). Appellant’s arguments with respect to claim 1 (see Appeal Br. 10–16; Reply Br. 5–6) regarding the combination of Schechter and Marcus, as failing to teach or suggest limitations A and B of claim 1, are not persuasive. Under the broadest reasonable interpretation, claim 1 only requires determining a likelihood of a real-world relationship, and does not define how that determination is made (by user selection, or automatically via computer processor). As such, Schechter discloses allowing a user to select a subset of people (i.e., other users) as trustees (friends that the user knows have a real likelihood of having a real-world relationship with the user), thus Schechter actually teaches or suggests both limitations A and B of claim 1. In other words, Appellant’s claim 1 does not positively recite that the user is not involved in the subset selection process. Because the user in Schechter selects trustees, one of ordinary skill in the art would understand that the user operates a mouse, keypad, or other input device to instruct a computer processor to perform the operation of selecting a subset of users. Thus, Schechter teaches or suggests both limitations A and B of claim 1 based upon the broadest reasonable interpretation, and Appellant’s arguments (see Appeal Br. 11–14) that Schechter, alone or in combination with Marcus, fails to teach or suggest limitation A are unpersuasive. Additionally, Marcus, in paragraph 46, discloses a relationship classification (RC) process 12 that classifies relationships via photo tagging, and selects a subset of users (see Fig. 1 elements 44, 46, 48, 50) using the RC process. The RC process 12 can also be configured by a user “such that when the user tags someone in a photo, this will almost always indicate that Appeal 2020-004877 Application 15/467,891 10 the person being tagged is a ‘good friend’” (Marcus ¶ 46). As a result, Appellant’s arguments (see Appeal Br. 13–14) that Marcus fails to teach or suggest limitation B are unpersuasive. Appellant’s arguments that the motivation to combine Schechter and Marcus is improper (see Appeal Br. 14–16) are also unpersuasive. We agree with the Examiner’s determination set out in Rejection 3: It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention was made to implement Marcus’s teaching in Schechter’s teaching to come up with having real-world relationship between the requesting user and the corresponding user. The motivation for doing so would be [sic][that] the user may restrict access to photos he posts in his private area and this will almost always indicate that the person being tagged is a good friend. Non-Final Act. 11. And, notably, under our interpretation of claim 1, Schechter teaches or suggests all of the limitations of claim 1, Marcus is not needed.4 Accordingly, we sustain the Examiner’s rejection of representative claim 1, as well as claims 2, 3, 9–15, and 18–20 grouped therewith. 4 A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for “anticipation is the epitome of obviousness.” Jones V. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). See also In re Fracalossi, 681 F.2d 792,794 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); see also In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that ‘anticipation is the epitome of obviousness.”’) (citation omitted). Appeal 2020-004877 Application 15/467,891 11 CONCLUSIONS (1) Appellant has shown the obviousness rejections of claims 1–20 over the base combination of Schechter and Morin to be in error. Therefore, we do not sustain Rejections 1 and 2 over the base combination of Schechter and Morin. (2) Appellant has not shown the obviousness rejection of claim 1 over the combination of Schechter and Marcus to be in error. Accordingly, we sustain the Examiner’s obviousness rejection of representative claim 1, along with claims 2, 3, 9–15, and 18–20 grouped therewith (Rejection 3). (3) Appellant has not presented any separate arguments as to claims 4–8, 16, and 17, therefore Appellant has not shown the Examiner erred in rejecting claims 4–8, 16, and 17 over the base combination of Schechter and Marcus taken with various other tertiary prior art references. Accordingly, we summarily sustain the Examiner’s obviousness rejections of claims 4–8, 16, and 17 over the combination of Schechter and Marcus taken with various other tertiary prior art references (Rejections 4 and 5). In view of the foregoing, we (i) reverse the Examiner’s obviousness rejections of claims 1–20 over the base combination of Schechter and Morin, under 35 U.S.C. § 103; and (ii) affirm the Examiner’s obviousness rejections of claims 1–20 over the base combination of Schechter and Marcus. As a result, we affirm the Examiner’s decision to reject claims 1–20, because at least one ground of rejection has been affirmed for each claim. 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”). Appeal 2020-004877 Application 15/467,891 12 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–15, 17–20 103(a) Schechter, Morin 1–15, 17– 20 16 103(a) Schechter, Morin, Anderson 16 1–3, 9–15, 18– 20 103(a) Schechter, Marcus 1–3, 9– 15, 18–20 4–8, 17 103(a) Schechter, Marcus, Morin 4–8, 17 16 103(a) Schechter, Marcus, Anderson 16 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation