Facebook, Inc.

Patent Trials and Appeals Board

Jun 2, 2021

2020001075 (P.T.A.B. Jun. 2, 2021)

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.
14/621,875 02/13/2015 Olivia Hsu Bishop 1360F0055.4 3739
110828 7590 06/02/2021
Kacvinsky Daisak Bluni PLLC (1360)
2601 Weston Parkway
Suite 103
Cary, NC 27513
EXAMINER
WILLIAMS, TONY
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
Docketing@kdbfirm.com
kpotts@kdbfirm.com
mfitzsimmons@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVIA HSU BISHOP, THOMAS APOSTOLOS GEORGIOU,
JEREMY DAVID FEIN, EYAL GUTHMANN, and
JASON CURTIS JENKS
Appeal 2020-001075
Application 14/621,875
Technology Center 2400
Before JOSEPH L. DIXON, LARRY J. HUME, and
SCOTT E. BAIN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20, which are all claims pending in
the application. See Non-Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Facebook, Inc.
Appeal Br. 2.
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Application 14/621,875

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STATEMENT OF THE CASE2
The claims are directed to techniques for intelligent messaging for
message syncing. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention relate to “a persistent queue for
message syncing in which a strict sequencing of updates is maintained to
advance messaging endpoint sync efficiency.” Spec. ¶ 5.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to dispositive prior-art limitation):
1. A computer-implemented method, comprising:
receiving an incoming update at a recipient update queue
at a messaging server, the recipient update queue associated
with a recipient of the incoming update, the incoming update
corresponding to an atomic modification to a message inbox;
adding the incoming update to the recipient update
queue;
determining one or more recipient messaging endpoints
to receive the incoming update;
retrieving messaging endpoint parameters associated with
each of the one or more recipient messaging endpoints;
modifying, at the messaging server, the incoming update
for each of the one or more recipient messaging endpoints in
accordance with the recipient messaging endpoint parameters
associated with each of the one or more messaging endpoints to

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
May 2, 2019); Reply Brief (“Reply Br.,” filed Nov. 25, 2019); Examiner’s
Answer (“Ans.,” mailed Sept. 25, 2019); Non-Final Office Action (“Non-
Final Act.,” mailed Oct. 5, 2018); and the original Specification (“Spec.,”
filed Feb. 13, 2015) (claiming benefit of US 62/035,665, 62/035,663,
62/035,668, 62/035,673, filed Aug. 11, 2014).
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generate a customized incoming update for each of the one or
more messaging endpoints; and
transmitting each of the customized incoming updates to
the recipient messaging endpoint for which it has been
customized.
REFERENCES
References relied upon by the Examiner as evidence is:
Name Reference Date
Higgins et al. (“Higgins”) US 2007 /0067373 A1 Mar. 22, 2007
Ansari et al. (“Ansari”) US 2010/0071053 A1 Mar. 18, 2010
Bocharov et al.
(“Bocharov”)
US 2011/0080940 A1 Apr. 7, 2011
Clarke et al. (“Clarke”) US 2012/0231770 A1 Sept. 13, 2012
Zhang et al. (“Zhang”) US 2014/0201324 A1 July 17, 2014
REJECTIONS
R1. Claims 1–5, 10–13, and 16–19 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Clarke and Higgins. Non-Final Act. 3.
R2. Claims 6, 9, and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Clarke, Higgins, and Zhang. Non-Final Act. 16.
R3. Claims 7, 15, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Clarke, Higgins, and Ansari. Non-Final Act. 18.
R4. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable
over Clarke, Higgins, and Bocharov. Non-Final Act. 21.

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ISSUES AND ANALYSIS
We are persuaded by Appellant’s arguments with respect to claims 1,
10, and 16. Based upon our review of the record, we find a preponderance
of the evidence supports particular arguments advanced by Appellant with
respect to claims 1, 10, and 16 for the specific reasons discussed below. We
highlight and address specific findings and arguments regarding these claims
for emphasis as follows.
1. § 103 Rejection R1 of Claims 1–5, 10–13, and 16–19
Issue 1
Appellant argues (Appeal Br. 4–10; Reply Br. 2–4) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the
combination of Clarke and Higgins is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the limitation of “modifying, at
the messaging server, the incoming update for each of the one or more
recipient messaging endpoints in accordance with the recipient messaging
endpoint parameters,” as recited in claim 1 because Higgins, relied upon by
the Examiner for teaching this limitation, is non-analogous art to the claimed
invention?
Principles of Law
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011) (quotes and citation omitted). See also In
re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (A reference is analogous art if it is
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either in the field of the Appellant’s endeavor or is reasonably pertinent to
the particular problem with which the inventor was concerned.).
Analysis
In the Non-Final Action, the Examiner cites the combination of
Clarke and Higgins as teaching or suggesting all the claim limitations. See
generally Non-Final Act. 3–5. In particular, the Examiner finds Higgins
teaches or suggests the dispositive “modifying” limitation. Non-Final
Act. 4–5.
With respect to the motivation to combine Clarke with Higgins, the
Examiner finds:
Thus given the teachings of Higgins it would have been
obvious to one of ordinary skills person in the art before the
effective filing date of the claimed invention to combine the
teachings of Higgins and Clarke for a method wherein the
incoming custom update has an atomic modification. One of
ordinary skill in the art would be motivated to allow for
integration server may monitor the versions of modules on
various mobile devices.
Non-Final Act. 5 (citing Higgins ¶ 158) (emphasis added). The Examiner
does not further elaborate on the motivation to combine in the Answer, nor
does the Examiner respond to Appellant’s arguments in that regard.
Appellant argues the secondary reference Higgins is non-analogous
art to the claimed invention such that the combination of Clarke and Higgins
does not render the claimed invention obvious. Appeal Br. 11.3

3 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
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Appellant contends the “claimed embodiments address the problem of
customizing an incoming message such that it is tailored to a particular
messaging endpoint of the recipient.” Appeal Br. 12. Further, Appellant
acknowledges the two-part Bigio4 test for analogous art cited above (Appeal
Br. 11), and contends, “Higgins, is nonanalogous art[, because] Higgins is
directed to the modification of workflows deployed to mobile devices.”
Appeal Br. 12 (citing Higgins ¶ 26). Appellant argues Higgins is directed to
methods “to enable the development, deployment and update of composite
applications on mobile devices.” Id.
As noted above, the Examiner did not respond to Appellant’s
argument in the Examiner’s Answer. The Examiner’s original findings with
regards to the motivation to combine included reference to Higgins
paragraph 158. Non-Final Act. 5. However, in agreement with Appellant,
we find that Higgins paragraph 158 does not shed light on why Higgins
would be analogous to the claimed invention by meeting either of the two
prongs of the Bigio analysis. Further, this cited portion of Higgins does not
indicate why a person of ordinary skill in the art would be motivated to
combine Higgins with Clarke, and the Examiner does not further explain
these findings.
This lack of motivation to combine makes it unclear how Clarke and
Higgins, in combination, teach or suggest the dispositive claim limitation.
Appellant provides a persuasive example of this lack of clarity in
Appellant’s Argument 4: “Clarke fails to teach the element of ‘modifying

(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
4 In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004).
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the incoming update for each of the one or more recipient messaging
endpoints in accordance with the recipient messaging endpoint parameters.”
Appeal Br. 9 (emphasis omitted). The Examiner uses “Higgins paragraphs
0091, 0318, and 0563 [to] disclose [that] workflows can be easily modified,
updated; sends a message (e.g., as a workflow application); modify the
workflow. [And uses] Higgins in paragraph 0024, 0472, and 0626 [to
disclose] processing incoming messages and using a text editor and message
queues.” Ans. 4–5.
However, in agreement with Appellant, we find the cited portions of
Higgins are not pertinent to updating messages as in the claimed invention,
and the Examiner does not explain why a person using Higgins to modify
workflows in Higgins would be motivated to use the workflow
modifications in conjunction with the update notifications of Clarke.
We are persuaded by Appellant’s arguments that the Examiner did not
make a prima facie case of obviousness because Higgins is non-analogous
art by (a) not being in the same field of endeavor and by (b) not being
reasonably pertinent to the problem faced by the inventor such that the
motivation to combine is lacking. We determine the Examiner did not meet
the necessary burden under KSR by providing articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
Based upon the findings above, on this record, we are persuaded of at
least one error in the Examiner’s reliance on the cited prior art combination
to teach or suggest the disputed limitation of claim 1, such that we find error
in the Examiner’s resulting conclusion of obviousness. Therefore, we do not
sustain the obviousness Rejection R1 of independent claim 1, and we also do
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not sustain obviousness Rejection R1 of independent claims 10 and 16,
rejected on the same basis as claim 1, and which recite subject matter of
commensurate scope.
Claims 2–5, 11–13, and 17–19, variously depend from claims 1, 10,
and 16, and we likewise do not sustain Rejection R1 of these claims.
2. Rejections R2–R4 of Claims 6–9, 14, 15, and 20
In light of our reversal of the rejections of independent claims 1, 10,
and 16, supra, we also reverse obviousness Rejections R2–R4 under § 103
of claims 6–9, 14, 15, and 20, which variously depend from claims 1, 10,
and 16. On this record, the Examiner has not shown how the additionally
cited references overcome the aforementioned deficiencies with the
combination of Higgins with Clarke, as discussed above regarding claims 1,
10, and 16.
CONCLUSIONS
We REVERSE the Examiner’s rejections.
More particularly, Appellant has persuasively argued that the
Examiner erred with respect to obviousness Rejections R1 through R4 of
claims 1–20 under 35 U.S.C. § 103 over the cited prior art combinations of
record, and we do not sustain the rejections.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 10–13,
16–19
103 Clarke, Higgins 1–5, 10–13,
16–19
6, 9, 14 103 Clarke, Higgins,
Zhang
6, 9, 14
7, 15, 20 103 Clarke, Higgins,
Ansari
7, 15, 20
8 103 Clarke, Higgins,
Bocharov
8
Overall
Outcome
1–20
REVERSED