Facebook, Inc.

Patent Trials and Appeals Board

Mar 8, 2021

2019004535 (P.T.A.B. Mar. 8, 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.
14/722,987 05/27/2015 Rohit Dhawan 26295-29530/US 5819
87851 7590 03/08/2021
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
BLAIR, DOUGLAS B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
03/08/2021 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHIT DHAWAN, JEFFREY ANDREW KANTER, and
THOMAS GIOVANNI CARRIERO
Appeal 2019-004535
Application 14/722,987
Technology Center 2400
Before JASON V. MORGAN, JAMES B. ARPIN, and IRVIN E. BRANCH,
Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20, all of the pending claims. See
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant’s Appeal Brief does not include page numbers. We refer to
pages beginning with the first page as page 1.
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Facebook, Inc. Appeal Br. 2.
Appeal 2019-004535
Application 14/722,987
2
CLAIMED SUBJECT MATTER
The claims are directed to sharing content within a social networking
system, particularly to sharing recommendations for a non-user entity within
the social networking system. Spec. ¶ 2. Claim 1, reproduced below, is
illustrative:
1. A method comprising:
receiving, by a social networking system, a post from a
first client device associated with a first user of a plurality of
users of the social networking system;
maintaining a plurality of pages by the social networking
system, where each page of the plurality of pages is about a topic;
identifying a topic included in the post, wherein
identifying the topic included in the post comprises determining
that a topic page for the identified topic is mentioned in the post;
responsive to receiving the post, providing a user interface
element to the first client device prompting the first user to
provide a tip about the topic;
receiving, via the user interface element, a tip from the first
user about the topic;
identifying a plurality of tips, including the received tip,
about the topic, the plurality of tips shared by one or more of the
plurality of users of the social networking system;
receiving, via a second client device, a request from a
second user of the plurality of users to display one or more of the
plurality of [tips] about the topic, wherein each tip is associated
with respective privacy criteria that identifies users having
permission to view that tip;
determining that the second user meets privacy criteria
associated with a set of candidate tips of the plurality of tips;
selecting one or more tips, including the received tip, from
the set of candidate tips to display to the second user based in
part on, for a given candidate tip, a likelihood that the second
user is interested in reading the given candidate tip; and
responsive to the selecting, providing a page to the second
client device, the page displaying the selected one or more tips.
Appeal 2019-004535
Application 14/722,987
3
REFERENCES
The Examiner relies on the following references:
Name Reference Date
Del Favero US 8,255,248 B1 Aug. 28, 2012
Calabria US 2006/0143066 A1 June 29, 2006
Sathish US 2011/0082825 A1 Apr. 7, 2011
Ramanujam US 2012/0233191 A1 Sept. 13, 2012
Weinberg US 2013/0055354 A1 Feb. 28, 2013
REJECTIONS
Claims 1–6, 9–14, and 17–20 stand rejected under 35 U.S.C. § 103(a)
as obvious over the combined teachings of Calabria, Sathish, and
Del Favero. Final Act. 3.
Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a) as
obviousover the combined teachings of Calabria, Sathish, Del Favero, and
Weinberg. Final Act. 6.
Claims 8 and 16 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over the combined teachings of Calabria, Sathish, Del Favero, and
Ramanujam. Final Act. 7.
OPINION3
Appellant argues the limitations “receiving, by a social networking
system, a post from a first client device associated with a first user of a
plurality of users of the social networking system;” and “responsive to
receiving the post, providing a user interface element to the first client
device prompting the first user to provide a tip about the topic” are not

3 Because Appellant argues all claims based on claim 1, we do not mention
the remaining claims further, except for our ultimate decision.
Appeal 2019-004535
Application 14/722,987
4
taught or suggested by Del Favero. Appeal Br. 6–8. Appellant’s principal
argument is that Del Favero prompts a different user than the user who
“post[ed] from a first client device,” as claimed. Appellant contends,
“Del Favero does not provide a user interface element prompting a user to
provide a tip about the topic, where that same user is the one from which the
post was received,” and “[s]ince the other references (Calabria and Sathish)
were not cited for [providing a user interface element to the first client
device prompting the first user to provide a tip about the topic], they do not
remedy this error.” Id. at 7–8.
The Examiner finds:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to combine the teachings of Sathish
regarding soliciting more information with the teachings of
Del Favero regarding soliciting information directly responsive
to receiving a post because doing so collects information in a
timely manner and such a feature would not affect the
functioning of the Sathish in any adverse manner.
Final Act. 5 (citing Del Favero, Fig. 5A (steps 515, 519), 22:67–23:3, 23:8–
24, 23:25–35; Sathish ¶¶ 36, 57).
The Examiner clarifies the rejection in the Answer as follows:
Del Favero shows in Figure 5A that a review can be received
from a user (step 515) and in direct response to that review the
same user can be solicited to provide another review (step 519).
The 11/20/2018 Final Rejection did not assert that
Del Favero showed that the review in step 515 of Figure 5A is
about the same topic as the review solicited in step 519 of Figure
5A. Clearly, the reviews regard different business category
listings. Del Favero was cited to show that a solicitation for more
information, like that described in paragraph 57 of Sathish, could
be performed in a cause and effect manner. This was clearly
Appeal 2019-004535
Application 14/722,987
5
explained in the content of the rejection and the Response
Arguments section of the 11/20/2018 Final Rejection.
Ans. 4–5.
We adopt the Examiner’s response to Appellant’s Appeal Brief
arguments.
Appellant’s Reply Brief arguments include assertions that the
Examiner “shifted” the rejection (Reply Br. 2 (“In the Answer, the examiner
has shifted—or at least clarified—the way that the cited references are being
applied to the claims.”)), and that “the combination of references as now
described in the Answer also fail to establish a prima facie case of
nonobvious, in part, because the references cannot be combined as the
Answer suggests” (id.). Appellant further contends the Examiner’s Answer
amounts to a new ground of rejection, that the references address a different
problem, and that the combination is “untenable.” Id. at 2–6.
Generally, if an appellant believes an examiner’s answer contains an
undesignated new ground of rejection, the appellant has two options. If the
appellant desires to maintain the appeal and provide arguments for review
and consideration by Board responsive to the examiner’s answer, the
appellant can file a reply brief under 37 C.F.R. § 41.41. If, however, the
appellant desires to reopen prosecution, the appellant may file a petition to
the Director under 37 C.F.R. § 1.181 seeking review of the examiner’s
failure to designate a rejection as a new ground of rejection in an examiner’s
answer. The filing of such a petition puts the appeal on hold, and the petition
is routed to a Technology Center Director for review and decision. See 37
C.F.R. § 41.40(a) (tolling of time period for reply brief) and MPEP
§ 1002.02(c) (delegation of Director’s authority to decide such petition to
the Technology Center Director).
Appeal 2019-004535
Application 14/722,987
6
Failure of an appellant to timely file a petition seeking review of the
examiner’s failure to designate a rejection as a new ground of rejection in an
examiner’s answer waives any arguments that a rejection must be designated
as a new ground of rejection. 37 C.F.R. § 41.40(a).
Here, because Appellant did not filed a petition seeking review, we
conclude Appellant waives the argument that the rejection must be
designated as a new ground of rejection. 37 C.F.R. § 41.40(a).
As to the substance of Appellant’s arguments, we are not persuaded of
error based on Appellant’s argument that “Del Favero teaches a different
approach to a different problem.” Reply Br. 3. Appellant contends, “[t]he
claimed invention thus relies on the idea that a user who has posted about a
topic is likely to have the topic in mind and is more likely to provide a
helpful tip about the same topic,” but that Del Favero “instead is focused on
finding a post about a different topic that another user has searched for.” Id.
at 4. We understand Appellant to argue Del Favero’s being directed to a
“different problem” amounts to a teaching away. See id. at 3. This argument
is unpersuasive because “[a] finding that two inventions were designed to
resolve different problems . . . is insufficient to demonstrate that one
invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian
Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004).
Appellant also unpersuasively argues that “the combination of
Del Favero and Sathish is untenable.” Reply Br. 4. Appellant contends,
“[t]he examiner is picking and choosing features or attributes of parts of the
cited references, and does not consider how one of skill would actually
understand and be motivated by the references.” Id. at 6
We are not persuaded the Examiner errs by “picking and choosing
features or attributes of parts of the cited references.” Id. Appellant does not
Appeal 2019-004535
Application 14/722,987
7
point to evidence of record that the combinations would be “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters. Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418–19 (2007)). The Examiner’s findings are reasonable
because the skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” because the skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21.
We are persuaded the claimed subject matter exemplifies the principle that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”Id.
at 416.
We also are unpersuaded that the Examiner errs by “not consider[ing]
how one of skill would actually understand and be motivated by the
references.” Reply Br. 6. Appellant’s bald assertion overlooks the
Examiner’s proposed reason for combining the teachings of Sathish
“regarding soliciting more information” that of Del Favero “regarding
soliciting information directly responsive to receiving a post,” namely
“because doing so collects information in a timely manner and such a feature
would not affect the functioning of the Sathish in any adverse manner.”
Final Act. 5. We recognize that the Examiner must articulate some
“reasoning with some rational underpinning to support the legal conclusion
of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “Under the
correct [obviousness] analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” KSR, 550 U.S.
at 420. Appellant does not persuasively rebut the Examiner’s reasoning.
Appeal 2019-004535
Application 14/722,987
8
Accordingly, we sustain the rejection of claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–6, 9–14,
17–20
103(a) Calabria, Sathish,
Del Favero
1–6, 9–14,
17–20

7, 15 103(a) Calabria, Sathish,
Del Favero,
Weinberg
7, 15
8, 16 103(a) Calabria, Sathish,
Del Favero,
Ramanujam
8, 16
Overall
Outcome
1–20
TIME PERIOD FOR 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).
AFFIRMED