Facebook, Inc.

Patent Trials and Appeals Board

May 29, 2020

2020001649 (P.T.A.B. May. 29, 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.
14/328,509 07/10/2014 Dale W. Malik 19487.370.4.1 8611
107193 7590 05/29/2020
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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 DALE W. MALIK
Appeal 2020-001649
Application 14/328,509
Technology Center 3600
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and JOHN D. HAMANN,
Administrative Patent Judges.
DIXON, 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. Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as Facebook,
Inc. Appeal Br. 1.
Appeal 2020-001649
Application 14/328,509
2
CLAIMED SUBJECT MATTER
The claims are directed to facilitating a communication between users.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A method comprising:
receiving, from a first client device associated with a first
user, a communication request for a first user to communicate
with a second user associated with a second client device, the
communication request received based on the first user
selecting a first option within a communication graphical user
interface on the first client device associated with the first user;
accessing, based on receiving the communication
request, user profile information for the second user to
determine one or more communication types that are available
on the second client device associated with the second user;
comparing, by at least one processor, user profile
information for the first user to the user profile information for
the second user to determine a communication type from the
one or more communication types based on the communication
type being available on the first client device associated with
the first user;
automatically providing, within the communication
graphical user interface of the first client device and based on
the determined communication type, a communication template
that utilizes the determined communication type that is
available on the first client device and the second client device;
and
facilitating a communication between the first client
device and the second client device using the determined
communication type.
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Application 14/328,509
3
REFERENCES
The prior art relied upon by the Examiner is:
Bauer et al. US 6,385,311 B1 May 7, 2002
Ram et al. US 6,625,258 B1 Sept. 23, 2003
Schnarel et al. US 7,225,409 B1 May 29, 2007
REJECTIONS2
Claims 1–4, 6–8, 10, 12, 13, and 15–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ram in view of Bauer.
Claims 5, 9, 11, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ram in view of Bauer in further view of Schnarel.
OPINION
Appellant argues Claims 1–20 as a group. We select Claim 1 and
decide the appeal with respect to Claim 1 as the illustrative claim.
Independent Claims 12 and 19 contain similar limitations.
Appellant argues that Ram does not teach or suggest “a
communication template that utilizes the determined communication type.”
Appeal Br. 19. Appellant contends that Ram discloses reach lists that allow
users to be contacted through a routing process, but that “Ram does not
mention providing a communication template as part of such routing (or any

2 In the Final Action, mailed December 13, 2017, Claims 1–20 stood
rejected under 35 U.S.C. § 101 because the claimed invention was directed
to a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. In the Non-Final Action, mailed
September 7, 2018, the Examiner appeared to maintain this rejection, but did
not actually include it in the Non-Final Action. Nevertheless, the Appellant
argues the rejection of Claims 1–20 under 35 U.S.C. § 101. Appeal Br. 8.
In response, the Examiner withdrew the rejection of Claims 1–20 under 35
U.S.C. § 101. Ans. 3. Therefore, the § 101 rejection is not before us.
Appeal 2020-001649
Application 14/328,509
4
other) process.” Appeal Br. 20. Appellant additionally argues that neither
Bauer nor Schnarel make up for the deficiencies of Ram. Appeal Br. 20.
The Examiner responds by finding that Ram teaches that a user is
provided with a notification, such as an email message, when the user is
unavailable or cannot be reached. Ans. 4. Relying on a dictionary definition
for the word “template,” the Examiner newly finds such notification
corresponds to the claimed communication template because Ram’s
notifications include patterned fields within the email message such as the to
line, the from line, the subject line, and the actual message. Ans. 5.
In the Reply Brief, Appellant contends that the Examiner’s
interpretation of the term “template” is an “unreasonably broad
interpretation” because it is not based on consideration of the Specification
or the claims. Reply Br. 3. Appellant argues that the communication
template of the Specification is for a communication that is not yet sent,
whereas Ram’s notification corresponds to an already-sent communication.
Reply Br. 4. Appellant additionally argues that “Ram’s email message or
other voice-message notification” is not provided within a graphical user
interface of the first client device, but is instead provided to the second client
device. Reply Br. 5, 7.
We are persuaded by Appellant’s arguments. Specifically, we agree
that Ram does not teach or fairly suggest the claimed “automatically
providing, within the communication graphical user interface of the first
client device and based on the determined communication type, a
communication template that utilizes the determined communication type
that is available on the first client device and the second client device.”

Appeal 2020-001649
Application 14/328,509
5
Ram discloses a system that allows users to communicate through a
virtual assistant system (VAS). See Ram, Abstract, Figure 1. According to
Ram, each user is provided with a profile that contains, inter alia, the
respective user’s contact information and “a plurality of reach lists for the
subscriber, each reach list including a set of contact numbers/addresses for
the subscriber.” See Ram, col. 4, line 60–col. 5, line 5. Based on these
reach lists and users’ schedules, “the VAS routes communications and
messages to the subscriber and also notifies the subscriber of incoming
communications.” See Ram, col. 5, lines 7–10. According to Ram, “the
VAS provides single-number access for the subscriber, independent of the
subscriber’s physical location or communication contact path.” See Ram,
col. 5, lines 13–15. Ram’s system is advantageous in that each user does not
need to carry multiple devices and subscribe to multiple systems. See Ram,
col. 2, lines 52–63.
However, the Examiner has not persuasively shown how Ram teaches
or suggests determining a communication type that is available on the first
client device for allowing communication between the first client device and
the second client device by comparing user profile information for the first
user to user profile information for the second user. Furthermore, the
Examiner has not persuasively shown how Ram teaches or suggests
automatically providing a communication template based on the determined
communication type and providing the communication template within a
graphical user interface of the first client device.
In Ram, when a first user attempts to contact a second user, the
second user’s reach list is accessed to determine which forms of
communication are available for the second user at the time the first user
makes the contact attempt. Ram, col. 5, lines 15–37. If the second user is
Appeal 2020-001649
Application 14/328,509
6
unavailable at the time of the attempted contact, a message is left with the
second user. Ram, col. 5, lines 38-42. The message is in the form of a
notification, such as “a page, email message, or other notification
communication.” Ram, col. 5, lines 38–42. However, Ram does not teach
or fairly suggest that a notification is provided on a graphical user interface
of the first user’s device. Furthermore, Ram does not teach or suggest that
such notification is a template.
While the Appellant’s Specification does not specifically define the
term “template,” the Specification gives context with an example of an email
template that is provided to the first user through the graphical user interface
of the first user’s device. Spec. 25. According to the Specification,
“[i]nformation in the template regarding the communicating partner, the
user, etc. may be supplied so as to further facilitate the user’s
communication.” Spec. 25.
It is well settled that, during patent examination, claims must be given
their broadest reasonable interpretation consistent with the specification.
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). The
broadest reasonable interpretation standard requires the words of the claims
to be given their “broadest reasonable meaning . . . in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Although we interpret claims broadly but reasonably in light of the
Specification, we must not import limitations from the Specification into the
claims. See Phillips, 415 F.3d at 1323 (citations omitted).
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Application 14/328,509
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In this case, we agree with Appellant that Ram’s notifications do not
further facilitate a communication between the users using the determined
communication type as required by the language of independent Claim 1.
Additionally, the Examiner does not identify how the teachings of Bauer or
Schnarel remedy the noted deficiency. Therefore, we reverse the
Examiner’s rejections of Claims 1–20 under 35 U.S.C. § 103(a).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–8, 10,
12, 13, 15–20
103(a) Ram, Bauer 1–4, 6–8,
10, 12, 13,
15–20
5, 9, 11, 14 103(a) Ram, Bauer, Schnarel 5, 9, 11, 14
Overall
Outcome
1–20
REVERSED