David Edward. Braginsky et al.

Patent Trials and Appeals Board

Mar 20, 2020

13042375 - (D) (P.T.A.B. Mar. 20, 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.
13/042,375 03/07/2011 David Edward Braginsky 079894.0193 6792
91230 7590 03/20/2020
BAKER BOTTS L.L.P./FACEBOOK INC.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
03/20/2020 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):
judy.wan@bakerbotts.com
ptomail1@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID EDWARD BRAGINSKY, CHAMATH PALIHAPITIYA
and MATTHEW NICHOLAS PAPAKIPOS 1
___________

Appeal 2018-007290
Application 13/042,375
Technology Center 2400

____________

Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and
DAVID J. CUTITTA II, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1–20 under
35 U.S.C. § 134(a). Appeal Brief 3. 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). Appellant identifies Facebook, Inc., as the real party in interest.
Appeal Brief 3.
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Application 13/042,375

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Introduction
According to Appellant, the invention is a “geo-social networking
service and, more particularly, [relates] to dynamically generating
recommendations associated with one or more places based on a user’s
current location and/or location history.” Specification ¶ 1.
Representative Claim
1. A method comprising:
by one or more computing devices, accessing a data store
for location data of a first user of a social-networking system,
wherein each user is represented by a node in a social graph;
by the one or more computing devices, accessing one or
more location data stores for one or more places in proximity to
one or more locations indicated by the location data, wherein at
least one or more places is represented by a node in the social
graph;
by the one or more computing devices, generating a set
of recommendations for the first user based at least in part on:
the one or more places in proximity to the locations
indicated by the location data;
and
past check-in activities of the user, wherein a past check-
in activity comprises an action, shared to a social-networking
system, by the first user or a second user of the social-
networking system, the action indicating a location of the first
user; and
by the one or more computing devices, sending one or
more recommendations of the set of recommendations to the
first user.

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Application 13/042,375

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References
Name2 Reference Date
Horvitz US 2007/0005419 A1 January 4, 2007
Schiff US 2012/0095863 A1 April 19, 2012
Curtis US 2012/0124176 A1 May 17, 2012

Rejections on Appeal
Claims 1–7 stand rejected under 35 U.S.C. §112 (pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor
regards as the invention. Final Action 2–3.
Claims 1–4, 6–11 and 13–20 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over Horvitz and Schiff. Final Action 3–11.
Claims 5 and 12 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Horvitz, Schiff, and Curtis. Final Action 11–13.

ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner’s
determinations, we refer to the Appeal Brief (filed January 10, 2018), the
Reply Brief (filed July 9, 2018), the Final Action (mailed March 6, 2017)
and the Answer (mailed May 9, 2018), for the respective details.

35 U.S.C. §112, Second Paragraph Rejection
Appellant contends:
Appellant respectfully submits that Appellant previously
amended Claim 1 in its Response dated 18 November 2016 so

2 All reference citations are to the first named inventor only.

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that Claim l’s subsequent recitations in lines 4, 7, and 15 now
recite “by the one or more computing devices,” therefore
establishing antecedent basis in the “by one or more computing
devices” as recited in line 2. See 18 November 2016 Response to
Office Action at 2. Appellant respectfully submits that this
recitation has sufficient antecedent basis, and requests the Board
to reverse this rejection.

Appeal Brief 5.
The Examiner determines:
It is the Examiner’s position that Applicant has not yet
submitted claims drawn to limitations, which define the
operation and apparatus of Applicant’s disclosed invention in
manner, which distinguishes over the prior art.
Failure for Applicant to significantly narrow
definition/scope of the claims and supply arguments
commensurate in scope with the claims implies the Applicant
intends broad interpretation be given to the claims. The Examiner
has interpreted the claims with scope parallel to the Applicant in
the response and reiterates the need for the Applicant to more
clearly and distinctly define the claimed invention.

Answer 5–6.
We do not agree with the Examiner’s determination and find
Appellant’s argument persuasive. The Examiner is free to interpret a claim
broadly within reason, however the claim’s broadness does not render the
claim indefinite when the claim language defines the scope of the claim
consistent with the Specification. See MPEP3 §2173.02 (“A decision on
whether a claim is indefinite under 35 U.S.C. §112, second paragraph
requires a determination of whether those skilled in the art would understand
what is claimed when the claim is read in light of the specification. Power-

3 Manual of Patent Examining Procedure.
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One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010);
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed.
Cir.1986).”). We reverse the Examiner’s 35 U.S.C. § 112, second paragraph
rejection of claims 1–7.

35 U.S.C. § 103 Rejection
Appellant contends that:

[E]ven if the § 103 rejection based on Horvitz and Schiff were
[sic] proper at this point, the cited portions of Schiff also do not
qualify as prior art under § 102(e). The nonprovisional patent
application which led to the Schiff publication was filed 11
October 2011[4] [sic], which is after the filing date of this
Application [March 7, 2011]. Schiff claims priority to a
provisional application (U.S. App. 61/393,793) (“Schiff
Provisional”) filed 15 October 2010, which would pre-date the
filing date of this Application.

Appeal Brief 6.
Appellant further contends:
However, the Schiff Provisional does not disclose, teach, or
suggest that the users or places correspond to nodes of a social
graph, and does not support the Examiner’s statement that Schiff
teaches “each user being a user of a social-networking system,
wherein each user is represented by a node in a social graph
(Schiff: paragraphs [0041] and [0053]).” Office Action at 5-6.
The cited portions of Schiff are not disclosed in the provisional
and are thus unavailable as a prior art reference.

Appeal Brief 6.

4 The actual filing date of Schiff’s non-provisional patent application is
October 14, 2011.
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Appellant’s arguments have persuaded us of error. Schiff’s non-
provisional application does not antedate Appellant’s application without
relying upon the filing data of Schiff’s provisional application. Our
reviewing court has said: In Dynamic Drinkware, we clearly explained that
for a non-provisional application to claim priority to a provisional
application for prior art purposes, “the specification of the provisional
[application] must contain a written description of the invention . . . in such
full, clear, concise, and exact terms, to enable an ordinarily skilled artisan to
practice the invention claimed in the non-provisional application.” Amgen
Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017) (alteration in original)
(quoting Dynamic Drinkware, LLC v. National Graphics Inc., 800 F.3d
1375, 1378 (Fed. Cir. 2015).
Accordingly, the non-provisional application can rely upon the filing
date of the provisional application only if at least one of the claims in the
non-provisional application is supported by the written description of the
provisional application in compliance with pre-AIA 35 U.S.C. § 112, first
paragraph. See MPEP § 2136.03 (III) (citing Dynamic Drinkware, 800 F.3d
at 1381) (finding insufficient the combination of: (1) a comparison between
the claims of the patent-in-suit and the disclosure of the prior art patent; and
(2) a comparison between a claim of the patent-in-suit and the provisional
application upon which the prior art patent’s priority claim is based).
Thus, regardless of whether the Examiner’s rejection relies upon the
limitations of the claims in the Schiff non-provisional application, for the
Examiner to rely upon the filing date of the Schiff provisional application, at
least one claim of the published application (non-provisional application)
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must be supported by the provisional application. Here, the Examiner has
not made any findings in this regard. See Answer 4–6; Final Action 3–11.
Consequently, we are constrained by the record before us and find that
the Examiner erred in rejecting claims 1–20 under the combination of
Horvitz and Schiff because Horvitz alone fails to establish unpatentability.
See Final Action 5. Further, Curtis was not used to reject independent
claims 1, 8 or 17 and therefore fails to address Horvitz’s noted deficiency.
See Final Action 11. We reverse the Examiner’s obviousness rejection of
claims 1-20.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7 112, 2nd
paragraph
Indefiniteness 1–7
1–4, 6–11,
13–20
103(a) Horvitz, Schiff 1–4, 6–11,
13–20
5, 12 103(a) Horvitz, Schiff,
Curtis
5, 12
Overall
Outcome
1–20

REVERSED