Snapchat, Inc.

Patent Trials and Appeals Board

Feb 26, 2021

2019005517 (P.T.A.B. Feb. 26, 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.
14/494,226 09/23/2014 Nicholas Richard Allen 4218.001US1 1011
21186 7590 02/26/2021
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
DORAISWAMY, RANJIT P
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
02/26/2021 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):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS RICHARD ALLEN, SHELDON CHANG,
TIMOTHY MICHAEL SEHN, and WILLIAM WU
____________

Appeal 2019-005517
Application 14/494,226
Technology Center 2100
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–4 and 6–21, which constitute all of the claims
pending in this application. Appeal Br. 24–29 (Claims App’x). 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. Appellant identifies the real party in interest as Snap Inc.
Appeal Br. 3.
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Application 14/494,226

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THE INVENTION
The disclosed and claimed invention generally “relates to user
interface technology,” and specifically to “systems and methods for a
platform for publishing context relevant media filters, for presentation on the
user interfaces of mobile devices.” Spec. ¶ 1.2
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A server comprising:
one or more hardware processors comprising a media filter
publication module, a messaging module, and a media filter
engine,
the media filter publication module configured to receive
a content item and a selected geolocation from a first device, and
to generate a media filter from the content item, the media filter
associated with the selected geolocation;
the media filter engine configured to process a geolocation
of a client device, to identify a plurality of filters comprising at
least the media filter based at least in part on the geolocation of
the client device, and to provide the plurality of filters
comprising the media filter to the client device display of the
media filter on a user interface of the client device; and
the messaging module configured to receive, from the
client device, a message comprising media content overlaid by
the media filter, wherein the first device is different from the
client device.
Appeal Br. 24 (Claims App’x).

2 We refer to the Specification filed Sept. 23, 2014 (“Spec.”); Final Office
Action mailed June 1, 2018 (“Final Act.”); Appeal Brief filed Mar. 1, 2019
(“Appeal Br.”); Examiner’s Answer mailed June 11, 2019 (“Ans.”); and the
Reply Brief filed July 11, 2019 (“Reply Br.”).
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Application 14/494,226

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REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Nicholas US 2006/0026067 A1 Feb. 2, 2006
Popp US 2009/0153492 A1 June 18, 2009
Polachek US 2009/0292608 A1 Nov. 26, 2009
Llano US 2012/0099800 A1 Apr. 26, 2012
Kendall US 2012/0197724 A1 Aug. 2, 2012
Thramann US 2013/0080254 A1 Mar. 28, 2013
McEvilly US 2013/0218968 A1 Aug. 22, 2013
Cummins US 2013/0311255 A1 Nov. 21, 2013
Ramalingam WO 2011/119407 A1 Sept. 29, 2011

REJECTIONS
Claims 1, 2, 16, and 20 stand rejected under 35 U.S.C. § 102 as
anticipated by McEvilly. Final Act. 4.
Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over
McEvilly, Ramalingam, and Nicholas. Final Act. 8.
Claims 4, 6, 10, and 17–19 stand rejected under 35 U.S.C. § 103 as
unpatentable over McEvilly and Ramalingam. Final Act. 10.
Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable over
McEvilly and Llano. Final Act. 17.
Claims 8 and 21 stand rejected under 35 U.S.C. § 103 as unpatentable
over McEvilly and Kendall. Final Act. 19.
Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over
McEvilly and Thramann. Final Act. 21.
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Application 14/494,226

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Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over McEvilly and Cummins. Final Act. 24.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over McEvilly and Polachek. Final Act. 26.
Claim 15 stands rejected under 35 U.S.C. § 103 as unpatentable over
McEvilly and Popp. Final Act. 29.

ANALYSIS
Section 102 Rejection
Claim 1 recites (with emphasis added): “A server comprising: . . . the
messaging module configured to receive, from the client device, a message
comprising media content overlaid by the media filter, wherein the first
device is different from the client device.” Appeal Br. 24 (Claims App’x).
The Examiner finds that McEvilly’s system receives the user’s
geolocation and sends the user templates based on the geolocation, and that
the user chooses a template to be combined with the media data object file
by the system creating a digital postcard. Final Act. 4–5 (citing McEvilly
¶¶ 80–81, Figs. 1–2). According to the Examiner, McEvilly’s “digital
postcard discloses the media filter” as claimed, and McEvilly’s “media data
object discloses the content item” as claimed. Id. at 5; see also Ans. 3–4.
Appellant argues that McEvilly “specifically describes the system
receiving elements separately, with no specific disclosure of an embodiment
where the system ‘receive(s), from the client device a message comprising
media content overlaid by the media filter.’” Appeal Br. 12 (citing McEvilly
Fig. 11, ¶¶ 68, 81, 91). Specifically, Appellant argues that “McEvilly
describes receiving a location and then responding with content” instead of
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the claimed server modules receiving a content item, selected geolocation,
and media content overlaid by the media filter, as claimed. Reply Br. 2.
We are persuaded by Appellant’s argument as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
McEvilly describes receiving, at “the messaging module” in the server, “a
message comprising media content overlaid by the media filter” from “the
client device,” as claimed.
The cited sections of McEvilly disclose providing templates to the
user to choose “[b]ased upon the geo-location.” McEvilly ¶ 80. “Once the
user chooses a template from the supplied subset of templates, the user
provides a media data object file to the system” and then “the system 100
combines the user-selected template with the user-selected and sent media
data object file, creating a digital postcard.” Id. ¶ 81. McEvilly also
considers an embodiment “allow[ing] for users to generate their own media
template data,” and “[w]hen the consumer uploads the digital postcard to his
or her social media network(s), the information from the user may be
synthesized with centrally accessed information.” Id. ¶ 74.
In other words, the sections of McEvilly cited by the Examiner and on
the record before us do not describe that the client device synthesizes a
digital postcard by overlaying content with a filter. Instead, McEvilly
describes that the user sends the selected template and content to the system
and that the system combines these to create a digital postcard. McEvilly
also describes a user device searching for a template to combine with
content and uploading that to social networks but not to the server.
Therefore, we agree with Appellant that the Examiner’s finding that
McEvilly describes the disputed limitation is in error because it is not
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supported by a preponderance of the evidence. See In re Caveney, 761 F.2d
671, 674 (Fed. Cir. 1985) (The Examiner’s burden of proving non-
patentability is by a preponderance of the evidence.); see also In re Warner,
379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty
of supplying the factual basis for its rejection. It may not, because it may
doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”).
Accordingly, we are constrained on the record before us to reverse the
Examiner’s rejection of independent claim 1, along with the rejection of
independent claims 16 and 20, which recite limitations commensurate in
scope to the disputed limitation discussed above, and dependent claim 2, not
separately argued.
Section 103 Rejections
The Examiner has not shown that the additional references cure the
foregoing deficiency regarding the rejection of the independent claims 1, 16,
and 20. Therefore, we will similarly not sustain the obviousness rejections
of dependent claims 3, 4, 6–15, 17–19, and 21.
DECISION
We reverse the Examiner’s § 102 rejection of claims 1, 2, 16, and 20.
We reverse the Examiner’s § 103 rejections of claims 3, 4, 6–15, 17–
19, and 21.
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 16, 20 102 McEvilly 1, 2, 16, 20
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Application 14/494,226

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Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
3 103 McEvilly,
Ramalingam,
Nicholas
3
4, 6, 10, 17–19 103 McEvilly,
Ramalingam
4, 6, 10, 17–19
7 103 McEvilly, Llano 7
8, 21 103 McEvilly, Kendall 8, 21
9 103 McEvilly,
Thramann
9
11, 12 103 McEvilly, Cummins 11, 12
13, 14 103 McEvilly, Polachek 13, 14
15 103 McEvilly, Popp 15
Overall
Outcome
1–4, 6–21

REVERSED