Ex Parte Haugen et alDownload PDFPatent Trial and Appeal BoardJan 31, 201713759787 (P.T.A.B. Jan. 31, 2017) Copy Citation 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. 13/759,787 02/05/2013 Austin Daniel Haugen 26295-21200 9499 87851 7590 02/02/2017 Faoehnnk/Fen wi ok EXAMINER Silicon Valley Center LI, MICHAEL J 801 California Street Mountain View, CA 94041 ART UNIT PAPER NUMBER 2457 NOTIFICATION DATE DELIVERY MODE 02/02/2017 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): ptoc @ fenwick.com fwfacebookpatents @ fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AUSTIN DANIEL HAUGEN, ALEX HIMEL, ZACHARY RAIT, and ANDREW ROTHBART Appeal 2016-005897 Application 13/759,787 Technology Center 2400 Before JASON V. MORGAN, JEREMY J. CURCURI, and DAVID J. CUTITTAII, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—16. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1—16 are rejected under 35 U.S.C. § 103(a) as obvious over Taylor (US 2011/0265011 Al; publ. Oct. 27, 2011) and Rathod (US 2011/0276396 Al; publ. Nov. 10, 2011). Final Act. 3-13. We reverse. STATEMENT OF THE CASE Appellants’ invention relates to “capturing interactions with descriptions of actions performed by users outside of a social networking Appeal 2016-005897 Application 13/759,787 system.” Spec. 121. Claim 1 is illustrative and reproduced below, with the key disputed limitations emphasized: 1. A method comprising: maintaining user profiles associated with one or more users of a social networking system; receiving first information from a third-party system describing a first action performed on the third-party system by a first user of a social networking system, the third-party system associated with a domain different than a domain of the social networking system; storing the first information describing the first action and an association between the first information describing the first action and a first user profile associated with the first user that performed the action; receiving second information from the third-party system describing a second action performed on the third-party system, the second action performed in response to a story about the first action displayed on the third party system; identifying the first information describing the first action from the second information describing the second action; identifying the first user profile associated with the first user that performed the first action; and transmitting a notification of the second action to the first user. ANALYSIS Claims 1—6 The Examiner finds Taylor and Rathod teach all limitations of claim 1. Final Act. 3—5. The Examiner finds Taylor teaches all limitations except for the key disputed limitations. Final Act. 3^4. The Examiner finds Rathod teaches the key disputed limitations. Final Act. 4—5 (citing Rathod Tflf 97, 100, 106—10, 116, 206, 286, 289). The Examiner reasons: “It would have been obvious to one of ordinary skill in the art to combine Rathod in view of 2 Appeal 2016-005897 Application 13/759,787 Taylor to add dynamic monitoring, tracking and processing of user actions and activities between social networks and third party websites or domains to enhance social network relationships.” Final Act. 5 (citing Rathod 6, 7,21). Appellants present, among other arguments and with respect to the key disputed limitations, the following principal arguments: [i.] Rathod does not disclose or suggest receiving information about a second action performed in response to a story about the first action, for which first information was previously received from the third-party system. In short, Rathod shows no receiving of information about secondary actions relating back to a first action about which information was received. There is no relational aspect in Rathod, just display of the action. App. Br. 6; see also Reply Br. 3—6. [ii.] Rathod at [0206] states only that the following paragraphs describe an embodiment of communications in a network, but otherwise has no content. Rathod at [0286] & [0289] describe an activity log in a social network for tracking activities of users. Nowhere does Rathod describe identifying first information describing a first action from second information describing a second action, as claimed. App. Br. 8; see also Reply Br. 7—8. Appellants’ arguments (i) and (ii) persuade us that the Examiner erred in finding Rathod teaches the key disputed limitations. In the Final Office Action, the Examiner maps Rathod’s actions or activities from third-party websites or domains to the recited second information from the third-party system. See Final Act. 4—5. Then, the Examiner goes on to map Rathod’s user subscribing to another users’s activity and seeing the other user’s actions or activities from third party websites or domains to the recited identifying the first information. See 3 Appeal 2016-005897 Application 13/759,787 Final Act. 5 (citing Rathod 206, 286, 289). Even assuming this characterization of Rathod’s teachings is correct, we do not see how Rathod teaches the key disputed limitations. The key disputed limitations require: second information is received from the third-party system (claim 1 ’s “receiving second information . . . ”), and this received second information relates back to first information previously received from the third-party system (claim 1 ’s “identifying the first information . . . ”). We agree with Appellants’ argument (i) that the first cited portions of Rathod (Rathod 97, 100, 106—10, 116) only disclose display of actions, and we also agree with Appellants’ argument (ii) that Rathod’s further disclosures of an activity log (Rathod 206, 286, and 289) have the same deficiency. That is, to the extent a first user in Rathod sees the actions or activities of a second user in Rathod, those actions of the second user being mapped to second information received from the third party system, we do not see how those actions of the second user relate back to first information previously received from the third-party system, as required by the disputed limitations of claim 1. In the Response to Argument section of the Examiner’s Answer, the Examiner explains that a sender and responder in Rathod collaborate, and the responder’s response to the sender’s activity is the recited second information. See Ans. 2—3; see also Ans. 4—5. This further explanation in the Examiner’s Answer has the same shortcomings discussed above. In reaching our conclusion, we emphasize that the language of claim 1 requires the second information received from the third-party system relates back to first information received from the third-party system. Thus, to the extent a responder’s response relates to a 4 Appeal 2016-005897 Application 13/759,787 sender’s activity in Rathod, we do not see how this teaches the disputed claim limitations. We, therefore, do not sustain the Examiner’s rejection of claim 1, or of claims 2—6, which depend from claim 1. Claims 7—15 Independent claim 7 recites “receiving second information from the third-party system describing a second action performed on the third-party system, the second action performed in response to a story about the first action displayed on the third party system.” This language is identical to a portion of the disputed limitations of claim 1. For reasons discussed above when addressing claim 1, we are persuaded that the Examiner erred in finding (Final Act. 8—9, Ans. 2—3) Rathod teaches (claim 7) “receiving second information from the third-party system describing a second action performed on the third-party system, the second action performed in response to a story about the first action displayed on the third party system.” See App. Br. 5—7; see also Reply Br. 3—6. We, therefore, do not sustain the Examiner’s rejection of claim 7, or of claims 8—15, which depend from claim 7. Claim 16 Independent claim 16, drafted from the perspective of the third-party system, recites the following key disputed limitations: receiving a second action at the third-party system, the second action associated with the story about the first action; and transmitting a description of the second action to the social networking system, the description of the second action 5 Appeal 2016-005897 Application 13/759,787 including a third-party identifier of the second action used by the third-party system, the third-party identifier of the first action, and the identifier of the third-party system. Appellants present the following principal arguments: i. “Taylor describes an action logger 215 that ‘receives data describing a user’s action with an external website,’ and logs that information. See Taylor, [0034], However, Taylor does not describe receiving a second action at a third-party system, as claimed.” App. Br. 9; see also Reply Br. 8—9. ii. “Taylor does not disclose actions by the third-party system such as transmitting a description of the second action. Nor does Taylor describe the claimed third-party identifier of the second action; the only identifier described is a URL or other identifier of the third-party website itself.” App. Br. 10; see also Reply Br. 9-10. Appellants’ arguments persuade us that the Examiner erred in finding Taylor teaches the key disputed limitations of claim 16. Regarding Appellants’ argument (i), in the Final Office Action, the Examiner finds Taylor’s interaction between a social network system and external websites teaches the recited (claim 16) “receiving a second action at the third-party system, the second action associated with the story about the first action.” Final Act. 12—13 (citing Taylor || 27, 32—34, 43). However, we agree with Appellants’ argument (i) that Taylor discloses receiving activities at the social networking system and so we do not agree Taylor teaches the receipt of a second action at the third party system that relates back to the first action as claimed. See Taylor 134 (“the action logger 215 receives data describing a user’s interaction with an external website 120 from the web server 210”). 6 Appeal 2016-005897 Application 13/759,787 The Examiner’s additional explanation in the Examiner’s Answer (see Ans. 5) does not overcome the above-noted deficiency of Taylor because the Examiner cites to the same paragraphs of Taylor, which are deficient. Regarding Appellants’ argument (ii), in the Final Office Action, the Examiner also finds Taylor’s interaction between a social network system and external websites teaches the recited (claim 16) “transmitting a description of the second action to the social networking system, the description of the second action including a third-party identifier of the second action used by the third-party system, the third-party identifier of the first action, and the identifier of the third-party system.” Final Act. 12—13 (citing Taylor || 27, 32—34, 43). However, we agree with Appellants’ argument (ii) and we do not agree Taylor teaches transmitting a description of the second action including, in particular, the third-party identifier of the first action, as claimed. In short, as discussed above, we do not see, in Taylor, a relation back to the first action. The Examiner’s additional explanation in the Examiner’s Answer (see Ans. 6 (citing Taylor || 6, 7, 22, 27, 32—34, 43, 45, 46)) does not overcome the above-noted deficiency of Taylor because to the extent Taylor includes third-party websites in the social graph, this does not show the key disputed limitations, and in particular, the claimed relationship of the second action to the first action in the key disputed limitations. We, therefore, do not sustain the Examiner’s rejection of claim 16. ORDER The Examiner’s decision rejecting claims 1—16 is reversed. 7 Appeal 2016-005897 Application 13/759,787 REVERSED 8 Copy with citationCopy as parenthetical citation