Jonathan David. Perlow et al.

Patent Trials and Appeals Board

Dec 17, 2019

15087867 - (D) (P.T.A.B. Dec. 17, 2019)

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.
15/087,867 03/31/2016 Jonathan David Perlow 26295-33269/US 1232
87851 7590 12/17/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
SARKER, SANCHIT K
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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 JONATHAN DAVID PERLOW, BENJAMIN PETER
DAVENPORT, LUCY CONGYUN ZHANG, and
BEN HAMILTON1
____________________

Appeal 2018-006142
Application 15/087,867
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, HUNG H. BUI, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is
Facebook, Inc. Appeal Br. 2.
2 Our Decision refers to the Specification (“Spec.”) filed March 31, 2016,
the Final Office Action (“Final Act.”) mailed January 11, 2017, the Appeal
Brief (“Appeal Br.”) filed September 29, 2017, the Examiner’s Answer
(“Ans.”) mailed March 27, 2018, and the Reply Brief (“Reply Br.”) filed
May 25, 2018.
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Application 15/087,867

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BACKGROUND
The claims are directed to an online system (a social networking
system) allowing communications between registered and non-registered
users. Spec. ¶ 6. A registered user may be an “initiating user” who starts an
online conversation with an initial message to a non-registered user who is
identified by an item of contact information (the non-registered user is
variously referred to as an “additional user” or “contact user”). Id. The
system generates a conversation object including the initial message and the
item of contact information for the additional user. Spec. ¶ 21. Thereafter, a
“claiming user” may claim the item of contact information, and the system
generates an edge object between the conversation object and the user
profile of the claiming user. Id.; claim 1. The claiming user can then view
the conversation. Spec. ¶ 7.
Claims 1, 10, and 17 are independent. Claim 1, reproduced below, is
representative of the claimed invention, and incorporates the mentioned
features:
1. A method comprising:
receiving, by one or more processors of an online system, a
request to establish a conversation within the online
system from an initiating user, the conversation including
an initial message to a registered user of the online system
and an additional user identified by an item of contact
information not associated with any user of the online
system, the item of contact information being associated
with communication external to the online system;
generating, by the one or more processors, a conversation object
by sending the initial message to the registered user within
the online system and to the additional user via the item of
contact information external to the online system, the
conversation object including the initial message and the
item of contact information for the additional user;
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receiving, by the one or more processors, a reply to the initial
message via the item of contact information external to the
online system;
receiving, by the one or more processors subsequent to the
conversation, a request from a claiming user of the online
system claiming the item of contact information as
belonging to a user profile of the claiming user; and
generating, by the one or more processors, an edge object
between the conversation object and the user profile of the
claiming user.
Appeal Br. 14 (Claims Appendix). Independent claims 10 and 17 are
method and computer program product claims similar to the method
of claim 1. The remaining claims depend from one of these three
independent claims.

REJECTIONS
Claims 1–20 stand rejected under the ground of nonstatutory
obviousness-type double patenting over Perlow (US 13/356,951, filed
January 24, 2012 (now US 9,311,681)). Final Act. 5–11.
Claims 1–20 stand rejected under 35 U.S.C. § 103 based on Tejada-
Gamero (US 2012/0079023 A1, published March 29, 2012) and Ravula
(US 2006/0088038 A1, published April 27, 2006). Final Act. 12–32.
ANALYSIS
Double Patenting
A complete response to a nonstatutory double patenting rejection is
either (1) a reply by applicant showing that the claims subject to the
rejection are patentably distinct from the reference claims or (2) the filing of
a terminal disclaimer in accordance with 37 C.F.R. § 1.321. MPEP
§ 804 I.B.1. Appellant does not address the double patenting rejection in the
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Appeal or Reply Briefs. Accordingly, we summarily affirm the Examiner’s
rejection of claims 1–20 on the ground of nonstatutory obviousness-type
double patenting.
Obviousness
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) where present, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
Appellant argues independent claims 1, 7 and 13 together as one
group and presents no separate arguments for the dependent claims.
App. Br. 12. Accordingly, we select claim 1 as representative of all claims
grouped together, and we address specifically only this claim in our analysis.
See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that the combination of Tejada-Gamero and Ravula
fails to disclose the limitation of claim 1 reciting “receiving . . . a request . . .
claiming the item of contact information as belonging to a user profile.”
App. Br. 9–10. The Examiner acknowledges that Tejado-Gamero does not
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disclose the claimed feature, but finds that Ravula does. Final Act. 14
(citing Ravula ¶¶ 6, 8, 20–22, 31–34, 63, 64).
Reviewing the Ravula paragraphs cited by the Examiner, we do not
find the claimed feature disclosed therein. Rather, the cited paragraphs of
Ravula discuss relationships between users or contacts in a social network
(¶¶ 6, 8, 20–22, 31–34) and synchronizing messages of a contact with an
alias of that contact (¶¶ 63, 64). The request received in claim 1, however,
relates to “claiming an item of contact information as belonging to a user
profile.” As examples, the Specification mentions the “item of contact
information” can be “an email address or mobile phone number.” Spec. ¶ 3.
In other words, an “item of contact information” of claim 1 is not a user or
contact, but something that can be used to direct communication to a user or
contact on a network. Accordingly, we agree with Appellant that receiving a
request claiming an item of contact information as belonging to a user
profile, as in claim 1, is different from synchronizing messages of a contact
and an alias thereof, as disclosed by Ravula. See App. Br. 9.
To the extent that the Examiner views Ravula’s synchronizing
messages of a contact and an alias thereof as equivalent to claiming an item
of contact information for a user profile in claim 1, the Examiner has not
provided sufficient explanation to support this position. “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with rational underpinning
to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Thus, we do not sustain the obviousness rejection of claim 1. As
Appellant argues all claims together with claim 1 and we have grouped them
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accordingly in our analysis, we also do not sustain the obviousness
rejections of claims 2–20.
Our decision on the argument addressed above is dispositive of the
obviousness rejection, so we do not reach Appellant’s remaining arguments.
DECISION
We affirm the Examiner’s rejection of claims 1–20 for nonstatutory
obviousness-type double patenting.
We reverse the Examiner’s rejection of claims 1–20 as obvious under
35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
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).

Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–20
Nonstatutory
obviousness-type
double patenting
1–20
1–20

103

Tejada-Gamero,
Ravula 1–20
Overall
Outcome

1–20

AFFIRMED