Jonathan David. Perlow et al.Download PDFPatent Trials and Appeals BoardDec 17, 201915087867 - (D) (P.T.A.B. Dec. 17, 2019) Copy Citation 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. Appeal 2018-006142 Application 15/087,867 2 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; Appeal 2018-006142 Application 15/087,867 3 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 Appeal 2018-006142 Application 15/087,867 4 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 Appeal 2018-006142 Application 15/087,867 5 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 Appeal 2018-006142 Application 15/087,867 6 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 Copy with citationCopy as parenthetical citation