Facebook, Inc.

Patent Trials and Appeals Board

Sep 30, 2020

2019004159 (P.T.A.B. Sep. 30, 2020)

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.
15/603,275 05/23/2017 Michael James LeBeau 079894.4765 1622
91230 7590 09/30/2020
BAKER BOTTS L.L.P./FACEBOOK INC.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201
EXAMINER
WON, MICHAEL YOUNG
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
Cal-PTOmail@bakerbotts.com
judy.wan@bakerbotts.com
ptomail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL JAMES LEBEAU, SAMUEL WHARTON LESSIN,
JOSEPH DAVID BARILLARI, AMIR SHIMONI,
ARLENE GABRIANA MURILLO, MATEUSZ MAREK NIEWCZAS,
MANISH MODI and CAITLIN E. KALINOWSKI
_____________

Appeal 2019-004159
Application 15/603,275
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–43. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We Affirm in Part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is Facebook, Inc. See Appeal Br. 3.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention “relates to exchanging information
over wireless communications sessions, particularly within the context of an
online social network.” Spec. ¶ 2.
Independent Claim 1
1. A method comprising, by one or more computing devices
of an online social network:
receiving session information associated with a first user
of the online social network, wherein:
the session information comprises an identifier of the
first user and information indicating that a current wireless
communication session has been established between a first
client system of the first user and a beacon associated with a
particular third-party, wherein:
the beacon is proximate to the first client system at the
time of the current wireless communication session; and
the current wireless communication session allows the
online social network to send social-networking information of
the first user to the third-party;
receiving a request for social-networking information
associated with the first user;
determining a category associated with the third-party;
accessing a set of social-networking information
associated with the first user;

2 We herein refer to the Final Office Action, mailed Oct. 16, 2018 (“Final
Act.”); Appeal Brief, filed Jan. 31, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed March 18, 2019 (“Ans.”); and the Reply Brief, filed May 3,
2019 (“Reply Br.”).

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determining one or more types of social-networking
information corresponding to the determined category
associated with the third-party;
retrieving a particular subset of social-networking
information from the accessed set of social-networking
information associated with the first user based on the
determined one or more types of social-networking information
corresponding to the determined category associated with the
third-party; and
sending, responsive to receiving the request, the session
information associated with the first user and the retrieved
subset of social-networking information associated with the
first user to a third-party system of the third-party for display.
Claims Appendix, Appeal Br. 12 (emphasis added regarding the disputed
“determining” and “retrieving” steps under anticipation Rejection A).
Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Cox et al. (“Cox”) US 2011/0314065 A1 Dec. 22, 2011
Spencer et al. (“Spencer”) US 2012/0192258 A1 July 26, 2012
Rejections
Rej. Claims Rejected 35 U.S.C. § Reference(s)/Basis
A 1, 6–20, 25–433 102(a) Spencer
B 2–5, 21–24 103 Spencer, Cox

3 We have corrected a typographical error in the Examiner’s listing of claims
for Rejection A under 35 U.S.C. § 102(a) on page 4 of the Final Action.
Although the Examiner indicates that claims 1, 6–20, and 25–39 are rejected
over Spencer, a detailed anticipation rejection for claims 40–43 over Spencer
is found on page 16 of the Final Action. As corrected above, claims 1,
6–20, and 25–43 are rejected under § 102(a) Rejection A.
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Analysis
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
Rejection A under § 102 of Claims 1, 6–20, and 25–43
Issues under § 102
Under 35 U.S.C. § 102(a), we focus our analysis on the argued
“determining” and “retrieving” steps regarding anticipation Rejection A of
independent method claim 1.
Issues: Did the Examiner err by finding Spencer expressly or
inherently discloses the disputed, dispositive steps:
determining one or more types of social-networking
information corresponding to the determined category
associated with the third-party;
retrieving a particular subset of social-networking
information from the accessed set of social-networking
information associated with the first user based on the
determined one or more types of social-networking information
corresponding to the determined category associated with the
third-party;
within the meaning of independent claim 1? (emphasis added).4
We note that Appellant states: “Independent Claims 19 and 20 recite
similar limitations.” Appeal Br. 7.

4 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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Analysis
The Examiner relies upon Spencer’s description, at paragraphs 30, 49,
68 (Final Act. 5–6) for disclosing the “determining” step, and upon
Spencer’s paragraphs 30, 49, 67, 68 for disclosing the “retrieving” step
(Final Act. 6).
The Examiner expands his findings in the Answer and further reads
the “social-network information” recited in the “retrieving” step of claim 1
on Spencer’s description at paragraph 50, in which “a user posts a particular
preference for the products offered by a given coffee house chain on their
social networking profile.” When the user uses the credentials associated
with this particular profile at a hotspot from the coffee house chain, they
may be provided with a free coffee offer. See Ans. 4–5 (citing Spencer ¶
50).
Appellant argues that the Examiner cites to different embodiments in
paragraphs 50 and 67 for disclosing the “retrieving” limitation. Reply Br. 6.
Appellant specifically contends:
[P]aragraph 0050 is a distinct embodiment from paragraph
0067 such that the Examiner is impermissibly selecting aspects
of one embodiment of Spencer and combining them with
aspects of a separate embodiment of Spencer. In particular,
Spencer teaches two distinct, non-overlapping embodiments -
paragraph 0050 discloses service customization based on a user
profile, while paragraph 0067 discloses access control to
various services based on user attributes. Independent Claim 1
includes multiple steps; however, the Examiner's Answer relies
on the embodiment of paragraph 0050 for teaching the first four
steps of “receiving,” “determining,” “accessing,” and
“determining,” and the embodiment of paragraph 0067 for
teaching the fifth step of “retrieving.”
Reply Br. 6–7.
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Appellant further urges:
the teachings of paragraphs 0050 and 0067 relate to entirely
different and non-overlapping embodiments. Notably, the
Examiner has not cited to any portions of Spencer where the
service customization process of paragraph 0050 is used with
the access control process of paragraph 0067. Accordingly, the
rejection of independent Claim 1 based on a combination of
paragraphs 0050 and 0067 is improper because Spencer does
not actually teach the arrangement of elements on which the
Examiner's Answer relies. See MPEP § 2131 (8th ed. Rev. 9,
Aug. 2012) (reference must teach every element “arranged as
required by the claim” to anticipate); see also In re Arkley, 455
F.2d 586, 587-88 (CCPA 1972) (“picking and choosing”
between distinct embodiments is improper in making an
anticipation rejection).
Reply Br. 7.
Based upon our review of Spencer, we agree with the positions
articulated by the Appellant regarding the Examiner’s improper reliance on
separate, distinct embodiments in Spencer to support anticipation Rejection
A. Id.
In particular, the respective portions of Spencer’s paragraphs 50 and
67 that are relied upon by the Examiner refer to different disclosed
embodiments, as indicated by the first sentence of each paragraph: e.g.,
“Fig. 10 provides an example of an attribute targeting process . . . .” (para.
67), “As a further example, and in accordance with an embodiment of the
invention, a user whose social networking profile identifies them as having
particular interests may be directed to a network access landing page related
to this particular interest . . . .” (para. 50).
Although “combining two embodiments disclosed adjacent to each
other in a prior art patent does not require a leap of inventiveness” (Boston
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Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009)),
we emphasize the court in Boston Scientific Scimed was considering a
question of obviousness, in contrast to the question of anticipation presented
here.
Because of the Examiner’s reliance upon multiple distinct
embodiments in Spencer, Appellant’s argument is persuasive. See Reply Br.
6–7.5 We agree that the claimed retrieving of “a particular subset of social-
networking information from the accessed set of social-networking
information associated with the first user based on the determined one or
more types of social-networking information corresponding to the
determined category associated with the third-party” is not anticipated by
Spencer. See independent claims 1, 19, and 20 (emphasis added). We note
that the aforementioned limitations argued by Appellant are similarly recited
in commensurate form in each independent claim 1, 19, and 20.
Therefore, for essentially the same reasons argued by Appellant
(Reply Br. 6–7), we are constrained on this record to reverse the Examiner’s
anticipation Rejection A for each independent claim 1, 19, and 20 on appeal.
Because we have reversed the Examiner’s Rejection A of each independent

5 To anticipate under § 102, the prior art reference “must not only disclose
all elements within the four corners of the document, but must also disclose
those elements arranged as in the claim.” Net MoneyIn, Inc. v. Verisign,
Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal quotation
marks omitted). “Thus, it is not enough that the prior art reference discloses
part of the claimed invention, which an ordinary artisan might supplement to
make the whole, or that it includes multiple, distinct teachings that the
artisan might somehow combine to achieve the claimed invention.” Id. at
1371 (emphasis added).
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claim, we also reverse the Examiner’s anticipation Rejection A for
dependent claims 6–18 and 25–43.

Section 103 Rejection B of Dependent Claims 2–5 and 21–24
Regarding the § 103 rejection of dependent claims 2–5 and 21–24,
Appellant contends that “even if the proposed Spencer–Cox combination
were proper, it would still fail to disclose, teach, or suggest all the
limitations of dependent Claims 2–5 and 21–24.” Reply Br. 7.
However, we note that that Appellant’s argument regarding the
Examiner’s improper reliance on separate, distinct embodiments of Spencer
in the context of anticipation is inapplicable to the Examiner’s reliance upon
separate embodiments of Spencer (and the secondary Cox reference) in the
context of obviousness. See Boston Scientific Scimed, Inc. 554 F.3d at 991
(“combining two embodiments disclosed adjacent to each other in a prior art
patent does not require a leap of inventiveness”).
Because Appellant has not shown reversible error6 in the Examiner’s
obviousness rejection of dependent claims 2–5 and 21–24, we sustain the

6 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Jung argues that the
Board gave improper deference to the examiner’s rejection by requiring
Jung to ‘identif[y] a reversible error’ by the examiner, which improperly
shifted the burden of proving patentability onto Jung. Decision at 11. This
is a hollow argument, because, as discussed above, the examiner established
a prima facie case of anticipation and the burden was properly shifted to
Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must
identify to the Board what the examiner did wrong . . . .”).

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Examiner’s § 103 Rejection B of these claims.7
CONCLUSIONS
The Examiner erred in rejecting claims 1, 6–20, and 25–43, as being
anticipated under 35 U.S.C. § 102(a), over Spencer.
Appellant has not shown the Examiner erred in rejecting claims 2–5
and 21–24, as being obvious under 35 U.S.C. § 103, over the cited
combination of Spencer and Cox.
DECISION SUMMARY
Rej. Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
A 1, 6–20,
25–43
102(a) Spencer 1, 6–20,
25–43
B 2–5,
21–24
103 Spencer, Cox 2–5,
21–24

Overall
Outcome
2–5,
21–24
1, 6–20,
25–43

7 We decline to set forth new grounds of rejection under § 103 in this
Decision. But cf. Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344
(Fed. Cir. 2009) (“A broader independent claim cannot be nonobvious where
a dependent claim stemming from that independent claim is invalid for
obviousness.”); Avantis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d
1293, 1300 (Fed. Cir. 2007); Ormco Corp. v. Align Tech., Inc., 498 F.3d
1307, 1319–20 (Fed. Cir. 2007) (law of the case that a dependent claim was
obvious means the parent claim must also have been obvious); In re
Muchmore, 433 F.2d 824, 25 (CCPA 1970) (“Since we agree with the
[B]oard’s conclusion of obviousness as to these narrow claims, the broader
claims must likewise be obvious.”). We leave this additional issue of
obviousness to the Examiner’s consideration in the event of further
prosecution of this application. Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) § 1213.02.
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FINALITY AND RESPONSE
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)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED IN PART