Ex Parte Haugen et al

Patent Trial and Appeal Board

Jan 31, 2017

13759787 (P.T.A.B. Jan. 31, 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.
13/759,787 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
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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
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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
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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
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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
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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”).
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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.
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REVERSED
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