Ex Parte Galbreath et al

Patent Trial and Appeal BoardSep 27, 2017

12981311 (P.T.A.B. Sep. 27, 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. 12/981,311 12/29/2010 Nicholas Galbreath 079894.0220 6324 91230 7590 09/29/2017 Raker Rntts; T T P /Faeehnnk Tne EXAMINER 2001 ROSS AVENUE KUDDUS, DANIEL A SUITE 700 Dallas, TX 75201 ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 09/29/2017 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): ptomaill @bakerbotts.com ptomai!2 @ bakerbotts .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICHOLAS GALBREATH and MIRKO PREDOSIN Appeal 2015-004796 Application 12/981,311 Technology Center 2100 Before JAMES R. HUGHES, CARL L. SILVERMAN, and JOHN D. HAMANN, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1—24, which constitute all the claims pending in this application. Final Act. 1—2; App. Br. I.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to Appellants’ Specification (“Spec.”) filed Dec. 29, 2010 (claiming benefit of US 10/854,054 filed May 26, 2004), Appeal Brief (“App. Br.”) filed Nov. 3, 2014, and Reply Brief (“Reply Br.”) filed Mar. 23, 2015. We also refer to the Examiner’s Answer (“Ans.”) mailed Jan. 30, 2015, and Final Office Action (Final Rejection) (“Final Act.”) mailed May 7, 2014. Appeal 2015-004796 Application 12/981,311 Appellants ’ Invention The invention generally relates to social networking systems, computer-readable storage media, and methods utilizing devices in a social networking system for processing the query using a stored list of member relationships and returning the query results to an application server, where the query results comprise degrees-of-separation information with respect to one or more members of the social-networking system. Spec, 2, 4—6, 29— 31; Abstract. Representative Claim Independent claim 1, reproduced below with key disputed limitations emphasized, further illustrates the invention: 1. A method comprising: by one or more computing devices, storing a list of member relationships in a social-networking system, the social networking system comprising a graph comprising a plurality of nodes and edges connecting the nodes, wherein at least some of the nodes correspond to the members of the social-networking system; by one or more computing devices, monitoring changes in relationship between the members of the social-networking system; by one or more computing devices, updating the list in response to relationship changes; by one or more computing devices, receiving from an application server a query; by one or more computing devices, processing the query using the stored list of member relationships; and by one or more computing devices, returning the query results to the application server, wherein the query results comprise degrees-of-separation information with respect to one or more members of the social-networking system. 2 Appeal 2015-004796 Application 12/981,311 Rejections on Appeal 1. The Examiner rejects claims 1—24 on the ground of non- statutory obviousness-type double patenting over corresponding claims 1—14 Patent No. US 8,572,221 B2 (“’221 Patent”).2 2. The Examiner rejects claims 1—5, 9-13, and 17—21 under 35 U.S.C. § 102(e) as being anticipated by Akella et al. (US 7,512,612 Bl, issued Mar. 31, 2009 (filed Dec. 13, 2002)) (“Akella”). 3. The Examiner rejects claims 6—8, 14—16, and 22—24 under 35 U.S.C. § 103(a) as being unpatentable over Akella and Hendrey et al. (US 2002/0111173 Al, published Aug. 15, 2002) (“Hendrey”). ISSUE Based upon our review of the record, Appellants’ contentions, and the Examiner’s findings and conclusions, the issue before us follows: Did the Examiner err in finding that Akella discloses “returning the query results to the application server, wherein the query results comprise degrees-of-separation information with respect to one or more members of the social-networking system” within the meaning of Appellants’ claim 1 and the commensurate limitations of Appellants’ claims 9 and 17? 2 The Examiner provisionally rejected claims 1—24 on the ground of non- statutory obviousness-type double patenting over claims 1—14 of co-pending patent application US 10/854,054 (“’054 App.”) now issued patent US 8,572,221 B2 (“’221 Patent”) — because the ’221 Patent has issued, the rejection is no longer “provisional” and we amend the statement of rejection to remove the provisional language. 3 Appeal 2015-004796 Application 12/981,311 ANALYSIS The Double Patenting Rejection Appellants do not provide specific arguments showing error in the Examiner’s double patenting rejection.3 Accordingly, we pro forma affirm the double patenting rejection of claims 1—24, and leave it for the Examiner to determine whether to require a terminal disclaimer in accordance with MPEP § 804.I.B(1). The 35 U.S.C. §§ 102 and 103 Rejections The Examiner rejects independent claim 1 as anticipated by Akella. See Final Act. 8—9; Ans. 2—6. Appellants contend Akella does not disclose the disputed feature of claim 1. See App. Br. 6—9; Reply Br. 2—5. Specifically, Appellants contend Akella does not describe “any query results comprising degrees-of-separation information with respect to one or more members of the social-networking system.'” App. Br. 7. The Examiner cites numerous portions of Akella as describing the degree-of-separation (d/s) information. See Final Act. 9; Ans. 3—6. Appellants persuade us of error in the Examiner’s anticipation rejection. We agree with Appellants that the broadest reasonable interpretation of d/s information is “the minimum number of hops required to traverse” a relationship graph “from one node to the other.” Spec. 13; see Spec. 14; Appeal Br. 7. The Examiner cites disparate portions of Akella as 3 Appellants do not mention the double patenting rejection in either their Appeal Brief or Reply Brief. Appellants stated in an earlier Amendment that they are willing to file a terminal disclaimer — “Applicant is willing to file a terminal disclaimer to obviate this rejection” (Amendment dated Feb. 12, 2014 at p. 7). 4 Appeal 2015-004796 Application 12/981,311 disclosing the disputed d/s information, in particular, determining a path length and/or a geodesic distance. See Ans. 4; Akella col. 12,11. 26-40; col. 15,11. 19—30. While we agree with the Examiner that a geodesic distance (see Akella col. 15,11. 29-30) may indicate degrees-of-separation (see Ans. 4), the Examiner does not provide any clear explanation of how the information is returned in a query result. That is, even if Akella describes d/s information, Akella does not describe how such information is provided (returned) to the requestor. Accordingly, we find the Examiner has cited no explicit disclosure of determining “degrees-of-separation information,” much less providing such information in a query result as required by the disputed claim limitation — “returning the query results to the application server, wherein the query results comprise degrees-of-separation information with respect to one or more members of the social-networking system” (claim 1). Consequently, we are constrained by the record before us to find that the Examiner erred in finding Akella discloses the disputed limitations of Appellants’ claim 1. Independent claims 9 and 17 include limitations of commensurate scope. Dependent claims 2—8, 10-16, and 18—24 depend on claims 1, 9, and 17, respectively, and stand with their respective independent claims. Accordingly, we reverse the Examiner’s anticipation rejection of claims 1—5, 9—13, and 17—21 and the Examiner’s obviousness rejection of claims 6—8, 14—16, and 22—24. CONCLUSIONS Appellants have not shown that the Examiner erred in rejecting claims 1—24 on the non-statutory ground of obviousness-type double patenting. 5 Appeal 2015-004796 Application 12/981,311 Appellants have shown that the Examiner erred in rejecting claims 1— 5, 9-13, and 17-21 under 35 U.S.C. § 102(e). Appellants have shown that the Examiner erred in rejecting claims 6— 8, 14—16, and 22-24 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). DECISION We affirm the Examiner’s rejection of claims 1—24. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6