Ex Parte Zuckerberg et al

Patent Trial and Appeal Board

Mar 15, 2017

13117888 (P.T.A.B. Mar. 15, 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.
13/117,888 05/27/2011 Mark Zuckerberg 079894.0310 8524
91230 7590 03/17/2017
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EXAMINER
2001 ROSS AVENUE OSMAN, RAMY M
SUITE 700
Dallas, TX 75201 ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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 MARK ZUCKERBERG, AARON SITTIG,
and SCOTT MARLETTE
Appeal 2016-006503
Application 13/117,888
Technology Center 2400
Before ST. JOHN COURTENAY III, TERRENCE McMILLIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 4, 5, 7—13, 16, and 18—22. Claims 2, 3, 6, 14, 15, and
17 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal “relates generally to
internet digital content, and more particularly to systems and methods for
tagging digital media.” (Spec. 12).
Appeal 2016-006503
Application 13/117,888
Representative Claim
1. A method comprising:
by a computer system, presenting to a first user of a social­
networking system a graphical user interface comprising an item of
digital media, wherein the graphical user interface comprises a
media-interface-control element comprising a component operable
to receive one or more text characters and, [L] based at least in
part on the text characters, to display a list of suggested tags that
identify one or more other users of the social-networking system;
by the computer system, receiving input from the first user
indicating a tag for the item of digital media from the list of
suggested tags, the tag comprising contact information of a second
user that is accessible to the first user through the social­
networking system in accordance with privacy settings of the
second user;
by the computer system, associating the tag with the item of
digital media, the association of the tag with the item of digital
media associating, within the social-networking system, the
contact information of the second user with the item of digital
media, the second user being a user of the social-networking
system, the contact information in the tag comprising a hyperlink
associated with the second user within the social-networking
system, and the privacy settings of the second user limiting the first
user’s access to the contact information of the second user; and
by the computer system, providing, based on the contact
information, a notification to be sent to the second user of the tag
being associated with the item of digital media by the first user.
(Contested limitation L is emphasized).
Rejections
A. Claims 1,4, 7—11, 13, 16, and 19-21 are rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over the combined teachings and
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suggestions of Leebow (US 2008/0077595 Al; Mar. 27, 2008) in
view of Bajaj (“Using Hotspots in Snaglt”, July 11, 2006,
Indezine.com) in further view of Shneiderman et al. (“Direct
Annotation”, Aug. 2000, IEEE) in further view of Pezaris et al. (US
2005/0198031 Al; Sept. 8, 2005).
B. Claim 5 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Leebow,
Bajaj, Shneiderman, Pezaris, and Sarvas et al. (“MobShare:
Controlling and Immediate Sharing of Mobile Images”, Oct. 2004).
C. Claims 12 and 22 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of
Leebow, Bajaj, Shneiderman, Pezaris, and Lunt et al. (US
2005/0235062 Al; Oct. 20, 2005).
Grouping of Claims
Based on Appellants’ arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative independent claim
1. See 37 C.F.R. § 41.37(c)(l)(iv). We address rejections B and C, infra.
To the extent Appellants have not advanced separate, substantive arguments
for particular claims and/or limitations, or other issues, such arguments are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own: (1) the findings and legal conclusions set forth by the Examiner in the
action from which this appeal is taken, and (2) the findings, legal
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conclusions, and explanations set forth in the Answer in response to
Appellants’ arguments. (Ans. 9—11). However, we highlight and address
specific findings and arguments for emphasis in our analysis below.
Rejection A of Independent Claim 1 under 35 U.S.C. § 103(a)
We decide the following issue presented in this appeal:
Issue: Under § 103, did the Examiner err by finding the cited
combination of Leebow, Bajaj, Shneiderman, and Pezaris would have
collectively taught or suggested contested limitation L:
by a computer system, presenting to a first user of a social­
networking system a graphical user interface comprising an
item of digital media, wherein the graphical user interface
comprises a media-interface-control element comprising a
component operable to receive one or more text characters and,
[L] based at least in part on the text characters, to display a list
of suggested tags that identify one or more other users of the
social-networking system[,]
within the meaning of claim 1? 1 (emphasis added).
Appellants contend, inter alia:
As admitted by the Examiner on page 3 of the Office
Action, Leebow “fails to explicitly teach the limitation of: and
based at least in part on the text characters display a list of
suggested tags that identify one or more other users of the
social-networking system.” The Examiner goes on to assert that
Shneiderman “teaches tagging photos by typing in text
characters into a user interface.” Office Action, pp. 3-A.
Although Shneiderman also teaches providing
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Cf Spec. 1 64 (“[I]t is understood that the
present invention is in no way limited to only the embodiments illustrated.”).
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suggestions of names based on “name completion strategies”
using “3—5 of the most commonly occurring names,” this is
purely based on a generic list of commonly-occurring names.
Shneiderman, page 5, col. 1, lines 3—8. This is very different
than suggesting tags that identify one or more other users of a
social-networking system. Although Leebow generically
discusses social networking, Leebow likewise fails to disclose
suggesting tags that identify one or more other users of a social­
networking system. None of the other cited references, taken
alone or in combination, cure this deficiency in Shneiderman.
(App. Br. 7).
The Examiner disagrees, referring to Shneiderman:
In figure 5, each of the screen shots (a) through (e) have a data
entry field in the middle-left of the screen. The data entry field
is titled “Create New Name”, and comprises “Last Name”
followed by “First Name”. On page 6 column 2 paragraph 2,
last line, AND page 7 column 1 lines 1-8, Shneiderman clearly
states that a user can type names into these fields in order to
create a new person. The name of the new person is added to
the list of people in the “People in Library” box as shown in the
screenshots of figure 5. Shneiderman also teaches a “name
completion strategy” tool that can be used for the names (page
5 column 1 paragraph 1 lines 7—8). This type of tool is used by
people of ordinary skill in the art to complete names as they are
typed in by the user, thus allowing for quicker selection of the names.
(Ans. 10).
We note Shneiderman (§ 4) teaches, in pertinent part:
To cope with these challenges we developed the concept of
direct annotation: selectable, dragable labels that can be placed
directly on the photo. Users can select from a scrolling or pop­
up list and drag by mouse or touch screen. This applies direct
manipulation principles [12] that avoid the use of a keyboard,
except to enter a name the first time it appears. The name labels
can be moved or hidden, and their presence is recorded in the
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database in the Appearance relation with an X-Y location,
based on an origin in the upper left hand comer of the photo.
Although Appellants urge, “[t]his is very different than suggesting
tags that identify one or more other users of a social-networking system.”
(App. Br. 7), we find Appellants are attacking Shneiderman in isolation. We
note the Examiner relies on Leebow for teaching a social network with
associated users. (Final Act. 3). Leebow is directed to a “System and
Method for Facilitating Online Social Networking” (Title) and teaches, in
pertinent part:
A registered user can invite a friend or friends to
join the website by uploading a group picture or photograph
56 to the website. As used herein, the term the “group
picture” generally refers a photograph showing a plurality of
individuals. FIG. 5 shows an exemplary invitation page or
screen 60 for using a group picture 56 to invite friends to join
the website. Once the group picture 56 is uploaded, the user
labels or tags the picture 56 by identifying the people in the
group picture 56 by first and last name and e-mail address.
The user also puts a box or box tag 62 around each person’s
head.
(Leebow 145).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover,
“neither the particular motivation nor the avowed purpose of the
[Appellants] controls” in an obviousness analysis. KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007). Nor do Appellants further rebut the
Examiner’s findings and response to Appellants’ arguments (Ans. 9—11) by
filing a Reply Brief.
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Given the strength of the evidence cited by the Examiner (Final Act.
3—6), we find Shneiderman and Leebow (in further combination with Bajaj
and Pezaris) teach or suggest “a graphical user interface [that] comprises a
media-interface-control element comprising a component operable to receive
one or more text characters and,” (contested limitation L) “based at least in
part on the text characters, to display a list of suggested tags that identify
one or more other users of the social-networking system,” within the
meaning of claim 1. (Emphasis added).
We additionally note “the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F. 2d 804,
807—808 (Fed. Cir. 1989); see also MPEP § 2123. Moreover, on this record,
we find the Examiner’s proffered combination of the respective teachings of
Leebow, Bajaj, Shneiderman, and Pezaris would have merely yielded
predictable results, and thus would have been obvious to an artisan
possessing an ordinary level of skill at the time of Appellants’ invention.
See KSR, 550 U.S. at 416 (“The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.”).
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, Appellants have not persuaded us the
Examiner erred. Accordingly, we sustain rejection A of representative
independent claim 1, and rejection A of the associated grouped claims,
which fall with claim 1. See Grouping of Claims, supra.
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Rejections B and C of the Remaining Dependent Claims
Because Appellants have not advanced separate and substantive
arguments regarding the rejections of the remaining dependent claims on
appeal, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv). (See
App. Br. 8).
Conclusion
For at least the aforementioned reasons, we find a preponderance of
the evidence supports the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness regarding all contested claims on
appeal.
DECISION
We affirm the Examiner’s rejections of claims 1, 4, 5, 7—13, 16, and
18-22 under 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
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