FACEBOOK, INC.

Patent Trials and Appeals Board

Dec 16, 2020

2019005080 (P.T.A.B. Dec. 16, 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.
14/702,521 05/01/2015 Danny Ben Shitrit 19487.146.1.1.1 5315
107193 7590 12/16/2020
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
PATEL, HITESHKUMAR R
ART UNIT PAPER NUMBER
2419
NOTIFICATION DATE DELIVERY MODE
12/16/2020 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
following e-mail address(es):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DANNY BEN SHITRIT
________________

Appeal 2019-005080
Application 14/702,521
Technology Center 2400
________________

Before JASON V. MORGAN, DEBORAH KATZ, and
JON M. JURGOVAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Facebook, Inc. Appeal Br. 1.
Appeal 2019-005080
Application 14/702,521

2

SUMMARY OF THE DISCLOSURE
Appellant’s claimed subject matter relates to “monitoring user
behavior . . . to automate user actions.” Spec. 14:12–13.
REPRESENTATIVE CLAIM
(Disputed Limitations Emphasized and Bracketing Added)
1. A method comprising:
monitoring, using at least one processor, a plurality of
communication sessions of a user;
identifying, based on monitoring the plurality of
communication sessions, a plurality of recurring user actions
used by the user for one or more of the plurality of
communication sessions, wherein a recurring user action
comprises a user behavior that the user has repeatedly
performed for previous communication sessions and that has
been recorded as recurring;
generating, based on identifying the plurality of recurring user
actions, a behavior synopsis indicating the plurality of recurring
user actions;
[1] providing the behavior synopsis for display to the user
together with an option to automate one or more recurring user
actions of the plurality of recurring user actions indicated by
the behavior synopsis; and
in response to receiving user input selecting the option to
automate the one or more recurring user actions, automatically
performing the one or more recurring user actions indicated by
the behavior synopsis for a subsequent communication session
of the user.
Appeal 2019-005080
Application 14/702,521

3

REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Horvitz et al. (“Horvitz ’421”) US 2003/0046421 A1 Mar. 6, 2003
Horvitz et al. (“Horvitz ’663”) US 2004/0199663 A1 Oct. 7, 2004
Venkatasubramanian US 2005/0055444 A1 Mar. 10, 2005
REJECTIONS
The Examiner rejects claims 1 and 3–20 under 35 U.S.C. § 103(a) as
obvious over Horvitz ’663 and Horvitz ’421. Final Act. 8–21.
The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as obvious
over Horvitz ’663, Horvitz ’421, and Venkatasubramanian. Final Act. 21–
23.
ANALYSIS
Claim includes recitation [1]: “providing the behavior synopsis for
display to the user together with an option to automate one or more recurring
user actions of the plurality of recurring user actions indicated by the
behavior synopsis.” The Specification discloses that “behavior synopsis
1320 includes a categorization of how a user exhibits certain behaviors with
respect to the communication application.” Spec. 14:17–18. In particular, the
behavior synopsis “specifies the particular user behaviors that have been
recorded as reoccurring.” Id. 14:24–26. This can include, for example,
depicting “the number of consecutive instances a user has engaged [in] a
behavior with respect to a particular contact,” or instead presenting such
behavior “as a frequency or total number of occurrences irrespective of
uninterrupted repetition.” Id. 14:19–22. The Specification’s Figure 13,
which discloses an example of such behavior synopsis, is reproduced below.
Appeal 2019-005080
Application 14/702,521

4

The Specification’s Figure 13 depicts an offer to automate recorded
behaviors (“CLICK HERE IF YOU WOULD LIKE COMPAD TO
AUTOMATE THESE STEPS IN THE FUTURE”). Id. 14:27–28. The steps
to automate are listed in behavior synopsis 1320 (“COMPAD HAD [sic]
NOTICED THAT THE LAST 10 TIMES YOU HAVE ATTEMPTED TO
COMMUNICATE WITH NIKITA, YOU HAVE: 1. ENTERED NIKITA’S
NAME INTO CONTACTS[;] 2. OPENED THE COMMUNICATIONS
PANEL[;] 3. ACCESSED THE VIDEO PANE[;] 4. INITIATED VIDEO
CHAT[;]5. TURNED UP MICROPHONE VOLUME”). Id. 14:28–29.
In rejecting claim 1 as obvious, the Examiner finds that Horvitz
’663—by teaching user interfaces for message routing and control options—
teaches recitation [1], “providing the behavior synopsis for display to the
user together with an option to automate one or more recurring user actions
of the plurality of recurring user actions indicated by the behavior synopsis.”
Final Act. 9–11 (citing Horvitz ’663 ¶¶ 27, 28, 31, 34, 44–49, 79, Figs. 4, 5);
Appeal 2019-005080
Application 14/702,521

5

Ans. 12–13. In particular, the Examiner characterizes Figures 4 and 5 of
Horvitz ’663 as “providing user options for identifying the one or more
frequent[] actions” such as scheduling notifications or mailing notifications,
sending meeting reminders, and notifying the user about new mail. Final
Act. 11. The Examiner finds “these selections . . . enable[] users to route
messages based on one or more frequent actions.” Final Act. 11.
Appellant contends the Examiner erred because the system of Horvitz
’663 “notifies users of emails and provides an option to receive notifications
when the priority of a message is greater than 80 (among other options), but
such an option is to automate computer behavior, not to automate actions
previously taken by the user.” Appeal Br. 24; Reply Br. 6–7.
Appellant’s argument is persuasive. The Examiner does not identify
any options in Figures 4 and 5 of Horvitz ’663 that automate user behaviors.
Instead, Horvitz ’663 discloses interfaces that, for example, allow the user to
modify when and how desktop alerts are provided to the user (Horvitz ’663
Figure 4) and when to provide the user with notifications of new emails or
meetings (id. Fig. 5). Even if the Examiner is correct that the selections
affect how to route messages “based on one or more frequent actions” (Final
Act. 11 (emphasis omitted)), the frequent actions (i.e., user behavior) are not
automated. Rather, the routing of messages—computer behavior—based on
the frequent actions is automated. Therefore, we agree with Appellant that
Horvitz ’663 fails to teach or suggest recitation [1].
The Examiner does not rely on Horvitz ’421 and Venkatasubramanian
to cure the noted deficiency of Horvitz ’663. Accordingly, we do not sustain
the Examiner’s 35 U.S.C. § 103(a) rejections of claim 1, and claims 2–20,
which contain similar recitations.
Appeal 2019-005080
Application 14/702,521

6

CONCLUSION
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1, 3–20 103(a) Horvitz ’663,
Horvitz ’421
1, 3–20
2 103(a) Horvitz ’663,
Horvitz ’421,
Venkatasubramanian
2
Overall
Outcome
1–20
REVERSED