Facebook, Inc.

Patent Trials and Appeals Board

May 7, 2020

13709741 - (D) (P.T.A.B. May. 7, 2020)

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.
13/709,741 12/10/2012 Andrew J. Barkett 079894.1181 2219
168743 7590 05/07/2020
Jordan IP Law, LLC (Facebook)
12501 PROSPERITY DRIVE
SUITE 401
SILVER SPRING, MD 20904
EXAMINER
YOON, SAE WON
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
05/07/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte ANDREW J. BARKETT and DAVID HARRY GARCIA
________________

Appeal 2019-000966
Application 13/709,741
Technology Center 2600
________________

BEFORE JOHNNY A. KUMAR, BETH Z. SHAW and
JASON M. REPKO Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–8, 12, 13, 17, and 21–27. 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. According to Appellant, Facebook, Inc. is the real party in
interest. Appeal Br. 3.
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INVENTION
The invention relates to customized image processing for a social-
networking system. Spec. ¶¶ 1–2.
Claim 1 is illustrative of the invention and is reproduced below, with
emphases to indicate limitations in dispute:
1. A method, comprising:

by one or more computing devices, receiving information
associated with an image;

by one or more computing devices, determining, prior to
receiving a request from a user to view the image and before the
image is presented to the user, that the user will request to view the
image, the determination based at least on an action taken with respect
to the image by the user or by another user;

by one or more computing devices, accessing image-viewing
preferences for the user;

by one or more computing devices, determining based on the
viewing preferences whether to customize the image;

by one or more computing devices, when the image is to be
customized, customizing at least a portion of the image in accordance
with the viewing preferences; and

by one or more computing devices, determining whether the
customized image will be used by one or more other users;

in response to a determination that the customized image
will be used the by one or more other users, storing the customized
image on a server computing device; or

in response to a determination that the customized image
will not be used by the one or more other users, providing the
customized image to a client computing device of the user[].
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Appeal Br. 15 (Claims App.) (emphases added).

REJECTIONS2
Claims 1, 4–6, 8, 13, 17, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sokolov et al. (U.S. 2013/0141456 A1;
published June 6, 2013) (“Sokolov”), Lu et al. (U.S. 2011/0087842 A1;
published Apr. 14, 2011) (“Lu”), and Jacobs et al. (U.S. 2008/0154931 A1;
published June 26, 2008) (“Jacobs”). Final Act. 7–18.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sokolov, Lu, Jacobs, and Blose (U.S. 2009/0077129 A1;
published Mar. 19, 2009). Final Act. 18–20.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sokolov, Lu, Jacobs, Blose, and Inomata et al. (U.S.
2008/0297597 A1; published Dec. 4, 2008) (“Inomata”). Final Act. 20–21.
Claims 7 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sokolov, Lu, Jacobs, and Yamazaki et al. (U.S.
2007/0109284 A1; published May 17, 2007) (“Yamazaki”). Final Act. 21–
26.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sokolov, Lu, Jacobs, and Mukai et al. (U.S.
2010/0149399 A1; published June 17, 2010) (“Mukai”). Final Act. 26–27.

2 The Examiner withdrew the rejections of claim 24 and 26 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. See Ans. 4. Therefore, this rejection is not before us
on appeal.
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Claims 24, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sokolov, Lu, Jacobs, and Kiyohara et al. (U.S.
2012/0027256 A1; published Feb. 2, 2012) (“Kiyohara”). Final Act. 27–31.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sokolov, Lu, Jacobs, Kiyohara, and Lumer (U.S.
2012/0001919 A1; published Jan. 5, 2012). Final Act. 31–34.

ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs.3 Arguments Appellant could have made in the Briefs,
but chose not to make, are deemed waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Independent claim 1
The Examiner finds that the combination of Sokolov, Lu, and Jacobs
teaches the limitations of claim 1. Final Act. 8–14. The Examiner finds, in
particular, that Jacobs teaches the limitations in dispute, because “Jacobs
teaches [the] feature of allowing created new image[s] to either be stored at
[a] user’s local device or uploading the image to [a] server for purpose of
sharing with other users where the server includes image stores that can
store images.” Id. at 12 (citing Jacobs ¶ 51); see also Ans. 7. The Examiner
further finds that Jacobs reasonably teaches that the computer system
performs the claimed determining step, because:
it has been determined/decided that the content is to be shared
to other users. . . .[T]here would be no need for the system to

3 In the instant appeal, claims 2–8, 12, 13, 17, and 21–26 are not argued
separately from claim 1 in either of Appellant’s briefs (Appeal Br. 7–11;
Reply Br. 1–5), and will not be separately addressed.
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perform (or the system is unable to perform) uploading
functionality unless it is actually determined that there is a need
to share content to the other user.

Ans. 8.
The Appellant disagrees that Jacobs teaches the claim limitations,
arguing that a person of ordinary skill would not understand “for the
purposes of sharing” (Jacobs ¶ 51) to explicitly or inherently disclose
determining whether the image will be used by another user. Appeal Br. 8 –
9; Reply Br. 2–3. Namely, “doing something for the purposes of achieving a
thing is not the same as determining the thing will actually be achieved.”
Appeal Br. 9; see also Reply Br. 3. Appellant further argues that the Jacobs
system receiving an instruction to upload content to the server, does not
equate to the claimed determining, by a computer, whether the image will be
used. Reply Br. 3–4.
Paragraph 51 of Jacobs teaches that, “a user may create a new image
and temporarily or permanently store it on his or her local device. The
system may also upload a copy to central server 120 for purposes of sharing
with other users, generating an image compilation and so on.” Jacobs ¶ 51.
The Examiner further finds that the combined teachings of Sokolov
and Jacobs—although Sokolov was not previously relied upon in the Final
Action for teaching the disputed limitations (see Final Act. 8–14)—also
teaches the disputed limitations. Ans. 12–13. In particular, the Examiner
finds, and we agree, that Figure 5 and corresponding descriptive paragraphs
66–67 of Sokolov, teach determining, by a computing device, whether the
customized image will be used by one or more other users. Id.
Figure 5 of Sokolov is reproduced below:
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Figure 5, above, illustrates a block diagram of an example system that
can manage presentation of image content across various devices. Sokolov ¶
14.
Notably, Sokolov teaches:
For example, when the second communication device 508
is being used to obtain image content associated with the first
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communication device 502 . . . the second communication
device 508 can transmit a request for the image content to the
computing device 506. . . . In response to the request . . . the
content management component 512 of the computing device
506 can transmit a query to the second communication device
508, wherein the query can request information relating to the
display characteristics of the second communication device.

Id. at ¶ 66 (emphases added). Sokolov further teaches:
The content management component 512 can analyze the
image content, information including modification information
(e.g., information relating to cropping, re-sizing, applying of
visual effects, changes to orientation, framing adjustments to
the image content within an image display frame, etc.) relating
to the image content . . . . The content management component
512 can modify the image content . . . to generate modified
image content 516 for display . . . [on] the second display
component 510.

Id. at ¶ 67 (emphases added).
Therefore, Sokolov teaches by computing device 506 (see Fig. 5),
determining that the customized image (i.e., the image modified by content
management component 512) will be used by one or more other users of the
second communication device 508, when the computing device receives a
request to transmit the image content from the second communication device
or when the computing device sends the image content to the second
communication device, and the image content is displayed by the second
communication device. See Sokolov Fig. 5, ¶¶ 66–67.
Appellant does not submit arguments rebutting the Examiner’s cited
teachings of Figure 5 and paragraphs 66 and 67 of Sokolov (see Appeal Br.
7–11; Reply Br. 1–6), and we find no error with the Examiner’s findings.
The Examiner’s findings with respect to Lu are merely cumulative teachings
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for the rejection of claim 1, and as such, Appellant’s arguments against those
findings (Reply Br. 4–5; see also Ans. 9–12) are not persuasive to show
error in the Examiner’s findings with respect to Sokolov. Similarly,
Appellant’s arguments regarding the alleged deficiencies of Jacobs, namely
that Jacobs fails to teach either that the customized image will be used by
one or more other users, or one or more computing device making such a
determination, are insufficient to overcome the Examiner’s additional
findings regarding the teachings of Sokolov.
Appellant additionally argues that Jacobs does not teach the claimed
“temporal requirement between the determination about whether an image
will be used by another user and the decision to upload that image to a
server.” Appeal Br. 9; see also Reply Br. 3–4. Specifically, Appellant
contends that the determination that another user will use the image must
occur prior to the decision to upload the image to a server, and is therefore a
necessary condition precedent to uploading the image to the server. Id.
In view of the above findings with respect to Sokolov, we determine
that Appellant’s arguments directed to the deficiencies of Jacobs alone are
remedied by the combined teachings of Sokolov and Jacobs, and that a
skilled artisan would have had motivation to combine the teachings of
Sokolov and Jacobs for the reasons proffered by the Examiner, and which
Appellant does not dispute. See Final Act. 13–14.
Based on a preponderance of the evidence before us, and for the
foregoing reasons, we sustain the Examiner’s obviousness rejection of
claims 1, 13, and 17 in view of Sokolov, Lu, and Jacobs, and also of claims
2–8, 12, and 21–26 depending therefrom. Accordingly, we affirm the
Examiner’s rejection of claims 1–8, 12, 13, 17, and 21–26.
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Dependent claim 27
Appellant argues that the Examiner fails to set forth a prima facie case
of obviousness with respect to dependent claim 27 because the Examiner
does not explain how Sokolov teaches the determination that another user
will use the image “because the user has a particular display device,” and
does not explain how or why the system of Jacobs, prior to uploading a
customized image to a server device, would have been modified to
determine that the image satisfies the particular display device of another
user. Appeal Br. 11. Furthermore, Appellant argues that “in Claim 27, the
viewing context determining that another user will use content is based
entirely on the specific display device the user uses.” Reply Br. 6.
Appellant’s arguments that the claim requires determining that a user
will use the image either (1) “because” the user has a particular display
device, or (2) “based entirely on” the specific display device, amount to
“but-for” arguments that are not commensurate with the scope of the claim.
See Appeal Br. 11; Reply Br. 11. Here, claim 27 recites the open-ended
transitional phrase “comprises.” See claim 27. As such, the claim does not
limit the determining to be based entirely or solely or because of the
particular display device, and does not preclude the determining with respect
to the viewing context to include other factors or considerations. See, e.g.,
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
(“Comprising” is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.); Moleculon Research
Corp. v. CBS, Inc., 793 F.2d 1261, (Fed. Cir. 1986); Gillette Co. v.
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Energizer Holdings Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005) (“The word
‘comprising’ transitioning from the preamble to the body signals that the
entire claim is presumptively open-ended.” (citations omitted)).
Furthermore, the Examiner cites Sokolov in combination with Lu,
Jacobs, and Kiyohara, not Sokolov or Jacobs alone, for teaching the features
of claim 27. See Final Act. 31. Therefore, Appellant’s arguments attacking
Sokolov or Jacobs singly for individual shortcomings, without considering
the combination of the references, are not effective arguments against
obviousness. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck &
Co., 800 F.2d 1091 (Fed. Cir. 1986).
With respect to Appellant’s arguments that the Examiner improperly
conflates the Kiyohara user identity with a user device (see Reply Br. 6;
Ans. 17–20), these arguments are not persuasive to show that claim 27 is
nonobvious in view of the combined teachings of Sokolov, Lu, Jacobs, and
Kiyohara. Notably, Sokolov at Figure 5 and paragraphs 66 and 67 at least
suggests that when the image as customized by the computing device 506
satisfies the technical specifications or state of the second display
component 510 (see Sokolov ¶ 67), i.e., claimed “viewing context” (see
Spec. ¶ 9) comprises a particular display device, determining that the
customized image will be used by sending the image to the second
communication device 508 for display. Sokolov Fig. 5, ¶¶ 66–67.
Therefore, we affirm the Examiner’s obviousness rejection of
dependent claim 27.

CONCLUSION
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In summary:

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). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–6, 8,
13, 17, 22,
23
103(a) Sokolov, Lu,
Jacobs
1, 4–6, 8, 13,
17, 22, 23

2 103(a) Sokolov, Lu,
Jacobs, Blose
2
3 103(a) Sokolov, Lu,
Jacobs, Blose,
Inomata
3
7, 21 103(a) Sokolov, Lu,
Jacobs, Yamazaki
7, 21
12 103(a) Sokolov, Lu,
Jacobs, Mukai
12
24, 26, 27 103(a) Sokolov, Lu,
Jacobs, Kiyohara
24, 26, 27
25 103(a) Sokolov, Lu,
Jacobs, Kiyohara,
Lumer
25
Overall
Outcome
1–8, 12, 13,
17, 21–27