Ex Parte Chen et al

Patent Trial and Appeal Board

May 8, 2017

13164626 (P.T.A.B. May. 8, 2017)

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.
13/164,626 06/20/2011 Rita Chen 16113-3254001 2135
26192 7590 05/10/2017
FTSH fr RTfTTARnSON P C EXAMINER
PO BOX 1022 BARRETT, RYAN S
MINNEAPOLIS, MN 55440-1022
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
05/10/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RITA CHEN, SHIMRIT BEN-YAIR,
JONATHAN TERLESKI, and JOSEPH SMARR
Appeal 2017-002608
Application 13/164,6261
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—15, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance of the rejection of claims 3—5
as a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b)
(2015).
1 The real party in interest identified by Appellants is Google Inc. Br. 4.
Appeal 2017-002608
Application 13/164,626
STATEMENT OF THE CASE
Appellants’ “[Specification generally relates to systems and methods
for sharing digital content using a computer-implemented social networking
service.” Spec. 12. Claim 1, which is illustrative, reads as follows:
1. A system comprising:
a server comprising one or more processors that are
operable to serve a computer program to one or more client
computing devices over a network, the computer program
comprising instructions stored thereon which, when executed by
the client computing device, cause the client computing device
to perform operations for distributing digital content for display
across a network, the operations comprising:
presenting a graphical representation of a content
sharing interface of a social networking service on a
display within a stream of a user of the social networking
service, the content sharing interface including a content
input area and being absent a distribution interface;
receiving first user input to the content input area of
the content sharing interface;
in response to the first user input, automatically
expanding the content sharing interface to provide an
expanded content sharing interface comprising the content
input area and the distribution interface;
receiving second user input to the expanded content
input area, the second user input comprising digital
content that is to be distributed;
receiving third user input to the distribution
interface, the third user input indicating one or more
contacts to which the digital content is to be distributed;
in response to receiving the third user input,
displaying one or more icons within the distribution
interface, each icon of the one or more icons being a
graphical representation of the one or more contacts;
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receiving fourth user input to the content sharing
interface, the fourth user input comprising a user
instruction to distribute the digital content; and
in response to the fourth user input, transmitting a
post data set to the server computing system, the post data
set comprising digital content data and distribution data.
The Examiner relies on the following prior art in rejecting the claims:
Swanburg et al. US 2008/0235242 A1 Sept. 25, 2008
(hereinafter “Swanburg”)
wikiHow, How to Post a YouTube Video on Facebook, available at
https://web.archive.Org/web/20081228230933/http://www.wikihow.com/Pos
t-a-YouTube-Video-on-Facebook, WayBackMachine (archived Dec. 28,
2008) (last visited Sept. 6, 2015) (hereinafter “wikiHow”).
Amit Agarwal, Getting Too Many Emails from Facebook? Turn Them
into a Daily Email Digest, available at
https://www.labnol.org/intemet/facebook-email-digest/10669/ (dated Oct.
20, 2009) (last visited Sept. 9, 2015).
Leah Pearlman & Carolyn Abram, Facebook® for Dummies® §§ 5.2
6.1, Safari Books Online (2d ed. Nov. 9, 2009) (hereinafter “Pearlman”).
Srinivas Tamada, Facebook Like Extracting URL Data with Jquery
and Ajax, available at http://www.91essons.info/2010/06/facebook-like-
extracting-url-data-with.html (June 3, 2010).
Mahalo, How to update your Facebook status, YOUTUBE, available
at https://www.youtube.com/watch?v=eBb_mLDq_8w (uploaded June 9,
2010).
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Claims 1—5, 8—10, and 12—15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mahalo, Pearlman, and Swanburg. See Final
Act. 2-17.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mahalo, Pearlman, Swanburg, and Agarwal. See Final
Act. 18.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mahalo, Pearlman, Swanburg, and Tamada. See Final
Act. 19.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mahalo, Pearlman, Swanburg, and wikiHow. See Final
Act. 20.
Rather than repeat the arguments here, we refer to the Appeal Brief
(“Br.” filed May 3, 2016) and the Specification (“Spec.” filed June 20, 2011)
for the positions of Appellants and the Final Office Action (“Final Act.”
mailed Oct. 14, 2015) and Examiner’s Answer (“Ans.” mailed Oct. 4, 2016)
for the reasoning, findings, and conclusions of the Examiner. Only those
arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
ISSUES
The issues presented by Appellants’ arguments are as follows:
Does the Examiner err in finding the combination of Mahalo,
Pearlman, and Swanburg teaches or suggests
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receiving third user input to the distribution interface, the third
user input indicating one or more contacts to which the digital
content is to be distributed; in response to receiving the third user
input, displaying one or more icons within the distribution
interface, each icon of the one or more icons being a graphical
representation of the one or more contacts[,]
(hereinafter the “icon display limitation”) as recited in claim 1?
Does the Examiner err in finding the combination of Mahalo,
Pearlman, and Swanburg teaches or suggest “wherein an icon of the one or
more icons corresponds to a social circle of the user within the social
networking service, the social circle defining a subset of the one or more
contacts,” as recited in claim 2?
Does the Examiner err in finding the combination of Mahalo,
Pearlman, and Swanburg teaches or suggest “wherein an icon of the one or
more icons corresponds to a second social networking service that the user
participates in,” as recited in claim 3?
ANALYSIS
We have reviewed Appellants’ arguments and contentions (Br. 12—16)
in light of the Examiner’s findings and conclusions (Final Act. 2—7) and
further explanations (Ans. 3 4) regarding the argued claims. We agree with
the Examiner’s findings and explanations and, except as set forth below, we
adopt them as our own. The following discussion, findings, and conclusions
are for emphasis.
Claims 1 and 6 15
Appellants contend Swanburg teaches displaying an icon in response
to an inquiring subscriber requesting a local search for contacts, but not in
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response to an input indicating contacts “to which the digital content is to be
distributed,” as recited in the independent claims. Br. 14 (discussing
Swanburg || 31—32, 41). Appellants further contend the icon illustrated in
Figure 5-1 of Pearlman, described as a “gray lock icon” to serve as a menu
for choosing one audience option (p. 2, § 5.2.1), is not “a graphical
representation of the one or more contacts” and is not displayed in response
to an input indicating one or more contacts “to which the digital content is to
be distributed,” as recited in the independent claims. Br. 14.
Appellants’ argument addressing the Examiner’s findings regarding
Swanburg (see Br. 14) and Pearlman (see id.) are unpersuasive because they
do not address what a person of ordinary skill in the art would have
understood from the combination of Swanburg and Pearlman. It is well
settled that “one cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
The Examiner relies on Swanburg, when combined with Pearlman,
rather than either Swanburg or Pearlman standing alone, to teach the icon
display limitation as recited in claim 1. Final Act. 5—6. Specifically, the
Examiner relies on Pearlman for disclosing user input (p. 2, Fig. 5-1)
indicating one or more contacts to which digital content is to be distributed.
Final Act. 5. The Examiner relies on Swanburg for disclosing the display of
one or more icons (132; Fig. 1, second GUI menu 106) in response to
receiving user input (| 32; Fig. 1, first GUI menu 104), each icon of the one
or more icons being a graphical representation of one or more contacts.
Final Act. 6; see also Ans. 3. Thus, it is the combination of Pearlman and
Swanburg that teaches or suggests displaying one or more icons in response
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to receiving user input indicating one or more contacts to which digital
content is to be distributed, each icon of the one or more icons being a
graphical representation of the one or more contacts.
For the foregoing reasons, we sustain the rejections of (1) claim 1; (2)
claims 14 and 15, each of which was argued together with claim 1 (see Br.
14—15); and (3) claims 6—13, which depend from claim 1 and were not
separately argued with particularity (see Br. 15).
Claim 2
Appellants contend Swanburg does not teach or suggest “an icon of
the one or more icons corresponds to a social circle of the user within the
social networking service, the social circle defining a subset of the one or
more contacts,” as recited in claim 2, because “Swanburg’s discussion of an
icon is limited to ‘an icon or other identification [that] can be used to notify
the inquiring subscriber of the active device for each contact, if available.’”
Br. 15 (quoting Swanburg 141) (emphasis in original). Appellants further
contend “[although Swanburg elsewhere mentions that ‘the contact
information includes social network information,’ . . . Swanburg does not
teach or even suggest ‘an icon . . . [that] corresponds to a social circle of the
user within the social networking service’ ... as recited by [claim] 2.” Br.
15 (quoting Swanburg 19) (emphasis in original).
We are not persuaded of error. As pointed out by the Examiner,
“Swanburg’s icon represents a user and that user may be correlated to the
social networking circle of’ paragraph 58. Ans. 4; see also Final Act. 7. We
find the Examiner’s explanation to be reasonable. Swanburg’s Figure 8 is
reproduced below:
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FIG. 8
Swanburg Figure 8 illustrates a peer screen that allows a user to view
contacts affiliated with other contacts. Swanburg | 58. “In the illustrated
example, the contact Juliet Brown has two peers . . . listed beneath her
name.” Id. Swanburg further teaches the affiliated contact information may
be retrieved from social networking websites or subscriber groups. Id. We
conclude that the contact’s peers on the peer screen fall within the broadest
reasonable interpretation of “an icon of the one or more icons corresponds to
a social circle of the user within the social networking service, the social
circle defining a subset of the one or more contacts,” as recited in claim 2.
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Appellants have made no argument that persuasively rebuts the
Examiner’s findings and explanation regarding paragraph 58 of Swanburg.
Accordingly, we sustain the rejection of claim 2.
Claims 3—5
Appellants contend Swanburg does not teach or suggest “wherein an
icon of the one or more icons corresponds to a second social networking
service that the user participates in,” as recited in claim 3, for the same
reasons discussed supra regarding claim 2. See Br. 15.
We are not persuaded of error. The Examiner finds paragraph 45 of
Swanburg teaches the disputed limitation of claim 3. Final Act. 7; Ans. 4.
We find the Examiner’s explanation to be reasonable. Swanburg teaches a
user can access a map including all contacts that have posted hotspot and
contact point information. Swanburg 145. Swanburg further teaches “[a]
group concept is also applicable, wherein subscribers that are mutual
contacts can form a group with similar interests.” Id. The Examiner
explains Swanburg teaches “[tjhose within the group are free to see
information posted by other group members. This can be tied in to social
networking websites.” Final Act. 7 (quoting Swanburg 145). We conclude
Swanburg teaches a user’s contacts’ posted hotspot and contact point
information (the claimed “an icon of one or more icons”) on the accessed
map corresponds to a first social networking service the user participates in.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, ... § 103 likely bars its
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patentability.” Id. at 417; cf. In re Marcum, 47 F.2d 377, 378 (CCPA 1931)
(citing Topliffv. Topliff, 145 U.S. 156, 163 (1892)) (“A mere duplication of
parts is not invention.”); accord In reHarza, 274 F.2d 669, 671 (CCPA
1960).
It would have been obvious to one of ordinary skill in the art to
provide a user’s contacts’ posted hotspot and contact point information (the
claimed “an icon of one or more icons”) (Swanburg 145) corresponding to a
second social networking service the user participates in. Doing so would be
an obvious variation amounting to little more than mere duplication of
elements without producing a new or unexpected result. See Harza, 274
F.2d at 671. As such, it would be a combination of familiar elements
according to known methods that does no more than yield predictable
results, see KSR, 550 U.S. at 416, that can be implemented by a person of
ordinary skill, see id. at 417.
For the reasons discussed supra, we sustain the rejection of claim 3
and claims 4 and 5, which depend from claim 3 and were not separately
argued with particularity. Although the overall thrust of our analysis is the
same as the Examiner’s reasoning, we have provided additional explanation
not provided by the Examiner. Accordingly, in the interests of giving
Appellants a full and fair opportunity to respond, we designate our
affirmance of the rejection of claims 3—5 as a new ground of rejection.
DECISION
The decision of the Examiner to reject claims 1—15 is affirmed and the
affirmance of the rejection of claims 3—5 is designated as a new ground of
rejection within our authority under 37 C.F.R. § 41.50(b).
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
37 C.F.R. §41.50(b).
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED
37 C.F.R, § 41,501b)
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