Facebook, Inc.

Patent Trials and Appeals BoardOct 25, 2021

2020003887 (P.T.A.B. Oct. 25, 2021)

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. 14/075,028 11/08/2013 Erick Tseng 8011-6253 8813 168743 7590 10/25/2021 Jordan IP Law, LLC (Facebook) 12501 PROSPERITY DRIVE SUITE 401 SILVER SPRING, MD 20904 EXAMINER HALIM, SAHERA ART UNIT PAPER NUMBER 2457 NOTIFICATION DATE DELIVERY MODE 10/25/2021 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): admin@jordaniplaw.com info@jordaniplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERICK TSENG Appeal 2020-003887 Application 14/075,028 Technology Center 2400 Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and JASON J. CHUNG, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 4, 7, 8, 11, 14, 15, and 18, which constitute all the claims pending in this application. Claims 2, 3, 5, 6, 9, 10, 12, 13, 16, 17, 19, and 20 have been cancelled. Appeal Br. 16-18. (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this appeal is FACEBOOK, INC. See Appeal Br. 3. Appeal 2020-003887 Application 14/075,028 2 STATEMENT OF THE CASE 2 Introduction Appellant’s claimed subject matter relates generally to social networking. Spec. ¶ 2. Appellant’s Specification describes: a method includes receiving an indication that a user of the social networking system watched at least a portion of a program, determining that the user intended to watch the program, and generating a story in response to the determination, the story is published to the social- networking system a predetermined amount of time after receiving the indication. Abstr. Illustrative Claim 1 1. A method comprising: by one or more computers of a social-networking system, receiving, from a client system of a user of the social-networking system, an indication that the user of the social-networking system selected a program to watch; by the one or more computers of a social-networking system, starting a timer in response to receiving the indication that the user of the social- networking system selected the program to watch; and by the one or more computers of the social-networking system, in response to the timer counting a predetermined amount of time after receiving the indication that the user of the social-networking system selected the program to watch, publishing a story to a timeline of the user on the social-networking system, the story comprising: a visual indication that the user watched or is watching the program; a first user-selectable option to share the story with one or more friends or connections of the user on the social-networking system; a second user-selectable option to indicate to the social-networking system that the user likes the story; and 2 We herein refer to the Final Office Action, mailed May 31, 2019 (“Final Act.”); Appeal Brief, filed December 27, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed March 3, 2020 (“Ans.”); and Reply Brief, filed April 29, 2020 (“Reply Br.”). Appeal 2020-003887 Application 14/075,028 3 a third user-selectable option that permits the user to remove the story from the timeline of the user. Appeal Br. 16 (Claims App.) (disputed claim limitations emphasized). REJECTION Claims 1, 4, 7, 8, 11, 14, 15, and 18 stand rejected under 35 U.S.C. § 102(e) as anticipated by Ketkar, US Patent 2012/0030586 A1, published February 2, 2012. Final Act. 3; 5. ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. Throughout this opinion, we give the claim limitations the broadest reasonable interpretation (“BRI”) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection under 35 U.S.C. § 102(e) of Claim 1 Dispositive Issue: Under 35 U.S.C. § 102(e), did the Examiner err by finding that Ketkar expressly or inherently discloses or describes the following disputed limitation of claim 1 “a third user-selectable option that permits the user to remove the story from the timeline of the user”? Appeal Br. 16 (Claims App.) (emphasis added).3 A claim is anticipated only if each and every element as set forth in 3 Independent claim 8 and 15 recite the disputed limitations of claim 1 using similar language having commensurate scope. Appeal Br. 17, 18 (Claims App.). Appeal 2020-003887 Application 14/075,028 4 the claims is found, either expressly or inherently described in a single prior art reference, and arranged as required by the claim. Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). As an initial matter, we turn to the Appellant’s Specification to interpret the limitation in dispute. Appellant’s Specification discloses: The app may delay publishing a story that a user watched a program in some embodiments. The app may determine that a user intended to watch a program in some embodiments. The app may generate a story and publish the story a predetermined amount of time after receiving an indication that the user watched a portion of the program. In some embodiments, the app may remove a story from the user's timeline upon receiving an indication that the user wants the post removed. Spec. ¶ 7. Settings button 1030 may be operable to remove a publication that the user does not want displayed to other users in some embodiments. For example, after story 1020c published, the user may touch interactive settings button l030 to change publication settings, including removing story l020c. Spec. ¶ 132. Accordingly, we construe the limitation “remove the story from the timeline” to include removing the story from the user's timeline upon receiving an indication that the user wants the post removed; or after the story has been published, the user may change publication settings by removing the story from the timeline. In support of the anticipation rejection, the Examiner cites to Ketkar’s paragraph 76 as purportedly disclosing the “remove the story from the timeline” limitation of claim 1 by describing an “application [that] may Appeal 2020-003887 Application 14/075,028 5 allow the user to cancel a recommendation.” See Final Act. 4 (citing Ketkar, ¶ 76) (emphasis added). Appellant contends “there is no disclosure [in Ketkar] that the published recommendation includes at least ‘publish to profile 510’ option of FIG. 5 and the ‘cancel a recommendation’ described in ¶ [0076].” Appeal Br. 12; Reply Br. 4 (arguing the same). In other words, Appellant contends Ketkar’s cancelling of a recommendation does not correspond to the removing of the story from the timeline. We agree because cancelling is not the same as removing. We agree with Appellant as our interpretation of the cited portions of Ketkar coincide with that of Appellant. Appellant further contends, and we agree, “the rejection at issue is an anticipation rejection and not an obviousness rejection and any reliance of the Office on obviousness-based analysis to support the anticipation rejection is misplaced.” Reply Br. 4. Thus, we find the record before us supports Appellant’s contentions that the Examiner has not established that Ketkar expressly or inherently discloses or describes the disputed “a third user-selectable option that permits the user to remove the story from the timeline of the user” limitation of independent claim 1. Accordingly, we do not sustain the Examiner’s anticipation rejection of claim 1, and independent claims 8 and 15, which recite commensurate limitations. Because we reverse the rejection of each independent claims 1, 8, and 15 on appeal, we also reverse the rejection of each associated dependent claim—specifically, claims 4, 7, 11, 14, and 18. Appeal 2020-003887 Application 14/075,028 6 CONCLUSION The Examiner erred in rejecting claims 1, 4, 7, 8, 11, 14, 15, and 18 under 35 U.S.C. § 102(e) as being anticipated by Ketkar. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 7, 8, 11, 14, 15, 18 102(e) Ketkar 1, 4, 7, 8, 11, 14, 15, 18 REVERSED