Ex Parte 6519629 et alDownload PDFPatent Trials and Appeals BoardFeb 5, 201395001070 - (D) (P.T.A.B. Feb. 5, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,070 07/21/2008 6519629 0065431-1008 3890 68368 7590 02/05/2013 Barcelo, Harrison & Walker, LLP 2901 W. Coast Hwy Suite 200 Newport Beach, CA 92663 EXAMINER HUGHES, DEANDRA M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/05/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ FACEBOOK, INC. Requester and Appellant v. CROSS ATLANTIC CAPITAL PARTNERS, INC. Patent Owner and Cross-Appellant ____________ Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 Technology Center 3900 ____________ Before ALLEN R. MACDONALD, KARL D. EASTHOM, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON APPEAL Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 2 In response to our previous Decision on Appeal dated June 28, 2011 in which we entered new grounds of rejection of claims 1-32 (Decision 17), Patent Owner requests reopening prosecution under 37 CFR § 41.77(b)(1). Patent Owner appeals the Examiner’s decision to reject claims 1-32 and new claims 74-146. We have jurisdiction under 35 U.S.C. §§ 134 and 306. STATEMENT OF THE CASE This proceeding arose from a request by Facebook, Inc. for an inter partes reexamination of U.S. Patent 6,519,629 B2, titled “System For Creating a Community for Users With Common Interests to Interact In,” and issued to James Harvey, Andrew Fegly, Matt Hulan, and Robert Dekelbaum on February 11, 2003 (the ‘629 patent). Claims 1-32 were subject to inter partes reexamination (see, e.g., Request for Inter Partes Reexamination, dated July 21, 2008, pp. 4-5). In our previous decision dated June 28, 2011, we entered new grounds of rejection as follows: 1. Claims 17-32 under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent No. 6,223,177 B1 (“Tatham”); 2. Claims 1-32 under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent No. 6,608,636 B1 (“Roseman”); 3. Claims 1, 2, 4-7, 9, 10, 12-15, 17, 18, 20-23, 25, 26, and 28-31 under 35 U.S.C. § 102(b) as being anticipated by Sunil K. Sarin & Irene Greif, “Software for Interactive On-Line Conferences,” Massachusetts Institute of Technology, Laboratory for Computer Science, 1984 (“Sarin”); Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 3 4. Claims 24 and 32 under 35 U.S.C. § 103(a) as being unpatentable over Tatham and U.S. Patent no. 6,029,195 (“Herz”); 5. Claims 17-32 under 35 U.S.C. § 103(a) as being unpatentable over Tatham and Brad Hill, “Yahoo! For Dummies,” IDG Books Worldwide, Inc., 1999 (“Yahoo”); and 6. Claims 3, 11, 19, and 27 under 35 U.S.C. § 103(a) as being unpatentable over Sarin and Yahoo. Responsive to our new grounds of rejection and in a paper filed July 28, 2011, Patent Owner requested reopening prosecution before the Examiner and “provided an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both” pursuant to 37 CFR § 41.77(b)(1). Patent Owner also provided new claims 76-146. In response to Patent Owner’s “amendment of the claims so rejected or new evidence relating to the claims so rejected, or both,” the Examiner stated that “[a]ll of third party requester’s (‘3PR’) proposed rejections as set forth in the Comments on the Patent Owner’s (‘PO’) Amendments (filed Oct. 29, 2011) are adopted and incorporated here by reference. As such, claims 1-32 and 76-146 are rejected” (Determination under 37 CFR 41.77(d) dated November 15, 2011, p. 2). Thus, the Examiner appears to have maintained each of the six new grounds of rejection as enumerated above and in the previous Decision on Appeal and further rejected claims 1-32 and new claims 76-146 as follows: 1) Claims 1-32 and 76-146 under 35 U.S.C. § 103(a) as unpatentable over the combination of (“Miller”) and (“Liu”) or the combination of (“Tatham”), Liu, and either one of Yahoo or Herz; Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 4 2) New claims 91-100, 122-131, 140, 141, 145, and 146 under 35 U.S.C. § 112, first paragraph as failing the written description requirement; 3) New claims 76-90, 101-112, 114-121, 132-139, 142-144 under 35 U.S.C. § 305 as impermissibly broadening the scope of the claimed invention. The ‘629 patent describes communications protocols to enable users to interact and communicate in communities (col. 1, ll. 11-19). Claim 1, as amended, reads as follows: 1. A method for creating a community for users with common interests to interact in, the method comprising the steps of: receiving a creation transmission from a registered user, the creation transmission indicating that the registered user desires to create a community; receiving community identification information from the registered user; receiving a selection of at least one application object from the registered user, said at least one application object including an executable component; creating a community based on the community identification information and the at least one application object; receiving at least one communications address designated by the registered user, the at least one communications address corresponding to a user to receive a created community; and transmitting the created community, including the at least one application object, based in part on the at least one communications address. Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 5 ISSUE Did the Examiner err in rejecting or maintaining the rejection(s) of claims 1-32 and 76-146? PRINCIPLES OF LAW In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted). 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, and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17- 18 (1966). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). ANALYSIS Claims 17-32 – Anticipation over Tatham and obviousness over Tatham and Yahoo; Claims 24 and 32 – Obviousness over Tatham and Herz Claim 17 and claim 25, as amended, recite that the application object includes “an executable component” and “receiving a transmission of the Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 6 created community, including the at least one application object.” In view of Patent Owner’s amendments to claim 17 and claim 25 and for reasons set forth in our previous Decision, we agree that Tatham fails to disclose the application object including “an executable component” and transmission of the community, including the application object (and the executable component) as now required by claim 17 and claim 25. The Examiner and Requester do not provide additional arguments with respect to the Yahoo or Herz references or dependent claims 18-24 and 26-32. The Examiner erred in maintaining the rejection of amended claims 17-32 as anticipated by Tatham or unpatentable over Tatham and Yahoo. The Examiner also erred in maintaining the rejection of claims 24 and 32 as obvious over Tatham and Herz. Claims 1-32 – Anticipation over Roseman Claim 1, as amended, recites that the application object includes “an executable component” and “transmitting the created community, including the at least one application object.” Claims 9, 17, and 25 have been similarly amended. As we stated in our previous Decision, Roseman discloses transmitting “an application object” and an “executable component” (e.g., an “invitation card”) (Decision 13). Patent Owner argues that the “invitation card” of Roseman “is a user interface to facilitate the invitation process,” “is at most a message component and not an executable component,” and is “an icon” that “does not itself comprise an executable component” (Amendment Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 7 and Request to Reopen Prosecution dated July 28, 2011, pp. 35, 36, 40). We disagree with Patent Owner. Roseman discloses, for example, the invitation card is an “active icon” (col. 5, l. 57) “for issuing commands to the host” (col. 5, l. 58). Patent Owner does not adequately explain how an “active icon” that issues “commands” is not an “executable component,” since one of ordinary skill in the art would have understood that code that issues commands is code that is executing (i.e., an “executable component”) in order to issue the command. In addition, as Requester points out, Roseman also discloses a “key” that is “passed to the Delegate [i.e., user]” (col. 7, l. 8) and disclosed as “a code” (col. 6, ll. 60-61). Patent Owner does not sufficiently demonstrate how a “code” that one of skill in the art would have understood performs functions by “executing” and is, hence, an “executable component,” differs from the “executable component” as recited in amended claim 1, for example. Patent Owner further argues that Roseman fails to disclose features recited in claims 8, 16, 24, and 32 that are unamended and not previously argued (Amendment and Request to Reopen Prosecution dated July 28, 2011, pp. 42-45). However, the “new grounds of rejection raised by the Board does not ‘reopen the prosecution’ . . . except as to that subject matter to which the new rejection was applied” (Ex parte Burrowes, 110 O.G. 599, 19404 C.D. 155 (Comm’r pat. 1904). Since the new ground of rejection was not applied to the unamended features of claim 8, 16, 24, and 32, which Patent Owner is now arguing (and Patent Owner did not previously provide arguments in support of these unamended features), Patent Owner’s new Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 8 arguments pertaining to unamended features of claims 8, 16, 24, and 32 will not be considered. Claims 1, 2, 4-7, 9, 10, 12-15, 17, 18, 20-23, 25, 26, ad 28-31 – Anticipation over Sarin Claim 1, as amended, recites that the application object includes “an executable component and “transmitting the created community, including the at least one application object.” Claims 9, 17, and 25 have been similarly amended. As we stated in the previous Decision, Sarin discloses sharing a “specified collection of objects” (p. 49, col. 1) and a server that “proceeds to ‘give’ these objects to the participant” (Decision 15). Patent Owner argues that Sarin fails to disclose that objects include “an executable component” (Amendment and Request to Reopen Prosecution dated July 28, 2011, pp. 47-51). We disagree with the Patent Owner. As we previously stated, Sarin discloses that objects are “given” to a user and that the “objects and activities” (p. 50, col. 2) include “Add- Participant, Join-Conference, and Leave-Conference downcalls” (p. 50, col. 2), for example, which Patent Owner does not adequately demonstrate to differ from an “executable component.” For example, one of skill in the art would have understood an “executable component” to be any entity that executes an activity while Sarin discloses such entities that execute activities (e.g., adding participants or enabling participants to join or leave a conference). Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 9 Claims 3, 11, 19, and 27 – Obviousness over Sarin and Yahoo Patent Owner does not present additional arguments in support of claims 3, 11, 19 and 27 with respect to Sarin and Yahoo. Claims 1-32 and new claims 76-146 – Obviousness over the combination of Miller and Liu or the combination of Tatham, Liu and one of Yahoo or Herz Patent Owner argues that new claims 76 and 107 (and dependent claims 77-81 and 108-112) are patentable over both Roseman and Sarin because both Roseman and Sarin fail to disclose “vendor product[s]” or “information regarding ‘a vendor product or service” as new claims 76 and 107 recite (Amendment and Request to Reopen Prosecution dated July 28, 2011, pp. 53-54). As previously indicated, “new grounds of rejection raised by the Board does not ‘reopen the prosecution’ . . . except as to that subject matter to which the new rejection was applied” (Ex parte Burrowes, 110 O.G. 599, 19404 C.D. 155 (Comm’r pat. 1904)). Also, amended or new claims must be directed to the same subject matter as the appealed claims (Ex parte Comstock, 317 O.G. 4, 1923 C.D. 82 (Comm’r Pat. 1923)). In the present case, Patent Owner now submits proposed new claims (i.e., claims 76-81 and 107-112) that claim subject matter (i.e., “vendor products,” “vendor product or service”) for which our previous grounds of rejection did not apply. Nor are the proposed new claims directed to the same subject matter as the previously appealed claims. For example, the previously appealed claims are directed to transmitting a community based on a communications address while the proposed new claims 76-81 and 107- 112 are specifically directed to presenting information associated with a Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 10 vendor product or service. Indeed, previously appealed claim 1 does not recite a “presenting information” step at all much less a step in which “vendor product or service” information is presented. Since Patent Owner may not “reopen the prosecution” except as to subject matter which new grounds of rejection was applied and the now argued claim features recited in proposed new claims 76-81 and 107-112, at least, do not constitute subject matter which the new grounds of rejection were applied, such new claims are not properly presented for consideration. While the Examiner had the option of refusing entry of the proposed new claims 76-146 as lacking claim amendments (or “evidence”) pursuant to 37 C.F.R. 41.77(b), the Examiner nevertheless entered the proposed new claims and has deemed the new claims as unpatentable based on the grounds stated above. In view of the Examiner’s entry of new claims 76-146, we will consider new claims in view of the proposed rejections and timely presented issues raised by the parties. As Requester points out, the ‘629 patent was accorded a priority date of February 25, 2000, which Patent Owner did not previously dispute (Third Party Requester’s Reply, dated January 17, 2012, p. 16-17). Patent Owner now argues for the first time that the ‘629 patent is entitled to a priority date that is earlier than the previously determined priority date of February 25, 2000 (see, e.g., Patent Owner Comments, dated December 15, 2011, pp. 37- 38 and 44). For at least the reasons set forth by the Requester, we agree that Patent Owner’s newly presented arguments pertaining to the priority date of the ‘629 patent are untimely presented (see, e.g., Third Party Requester’s Reply, dated January 17, 2012, pp. 16-19). Also, as stated above, “new Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 11 grounds of rejection raised by the Board does not ‘reopen the prosecution’ . . . except as to that subject matter to which the new rejection was applied” (Ex parte Burrowes, 110 O.G. 599, 19404 C.D. 155 (Comm’r pat. 1904). Since Patent Owner could have but chose not to make arguments pertaining to priority and since such newly presented arguments are not necessitated by our new grounds of rejection as raised in our previous Decision, such newly presented arguments are deemed to have been waived and will not be considered. Even assuming that Patent Owner’s untimely presented arguments pertaining to priority are considered, however, we agree with Requester that Patent Owner has failed to demonstrate support for an earlier priority date for at least the reasons set forth by Requester (Third Party Requester’ Reply, dated January 17, 2012, pp. 20-27). Patent Owner also argues that the combination of Miller and Liu or the combination of Tatham, Herz, and Liu fails to disclose or suggest “the ‘transmitting’ limitation” or “transmitting the community” (Patent Owner’s Comments in Response to Determination Under 37 C.F.R. 41.77(d), filed December 15, 2011, p. 47). We disagree with Patent Owner for at least the reasons set forth by the Requester (Third Party Requester’s Reply, dated January 17, 2012, pp. 31-34). For example, as Requester points out, Liu discloses that “an ‘applet’ . . . may be downloaded . . . to the user end system” (Third Party Requester’s Reply, dated January 17, 2012, p. 31, citing Liu, col. 2, ll. 8-18). Patent Owner does not demonstrate a difference between transmitting an applet (i.e., an application) by downloading to a user end system and the claimed feature of “transmitting.” Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 12 Patent Owner argues that Tatham and Yahoo fail to disclose or suggest “transmitting the community” (Patent Owner’s Comments in Response to Determination Under 37 C.F.R. 41.77(d), filed December 15, 2011, p. 45-47). We disagree with Patent Owner for at least the reasons set forth by the Requester (Third Party Requester’s Reply, dated January 17, 2012, pp. 28-31). For example, as Requester points out, Yahoo discloses a system that “delivers applications to your computer” (Third Party Requester’ Reply, dated January 17, 2012, p. 29, citing Yahoo, p. 267). Patent owner does not sufficiently demonstrate a difference between delivering applications to a computer (as disclosed by Yahoo) and the claimed “transmitting.” Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined Miller and Liu (Patent Owner’s Comments in Response to Determination Under 37 C.F.R. 41.77(d), filed December 15, 2011, p. 40-44). Miller discloses a computer network that permits multiple users to collaborate and/or transact business (¶ [0003]). Liu also discloses a computer network in which users collaborate and further discloses downloading (or “transmitting”) code to a computer of an end user (col. 2, ll. 10-18). We agree with Requester that it would have been obvious to one of ordinary skill in the art to have combined Miller and Liu at least because both references disclose computer networks in which users collaborate and the combination of two such known similar systems would have resulted in no more than the predictable result of a computer network in which users collaborate and receive transmissions (a known operational characteristic of computer networks). Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 13 Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined Tatham, Yahoo and Liu (Patent Owner’s Comments in Response to Determination Under 37 C.F.R. 41.77(d), filed December 15, 2011, p. 45). Patent Owner did not previously argue combinability of the Tatham and Yahoo references, both of which were previously cited in combination. Patent Owner’s new arguments pertaining to the combination of Tatham and Yahoo that were not raised by Patent Owner but could have been raised previously are considered untimely and will not be addressed. Pertaining to the combination of Tatham and Liu, Liu discloses a computer network in which end users may collaborate and may receive and store applications or “applet” while Tatham also discloses a network in which users may collaborate. We agree with Requester that it would have been obvious to one of ordinary skill in the art to have combined Tatham and Liu since both Tatham and Liu discloses similar computer systems, each of which would have been known to one of ordinary skill in the art, and combining features of such known computer networks would have resulted in no more than the predictable result of a computer system in which applications may be downloaded (or “transmitted”) to end users. Claims 91-100, 122-131, 140, 141, 145, and 146 (35 U.S.C. § 112, first paragraph) and claims 76-90, 101-112, 114-121, 132-139, 142-144 (35 U.S.C. § 305) Affirmance of the rejection for the above-referenced claims based on Roseman, Sarin, combination of Sarin and Yahoo, combination of Miller and Liu, or the combination of Tatham, Liu and one of Yahoo or Herz Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 14 renders it unnecessary to reach the propriety of the Examiner’s decision to reject those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach the propriety of the rejection of those claims over 35 U.S.C. § 112, first paragraph or 35 U.S.C. § 305. CONCLUSION The Examiner did not err in rejecting or maintaining the rejection(s) of claims 1-32 and 76-146. DECISION We affirm the Examiner’s decision to reject or maintain the rejection of claims 1-32 under 35 U.S.C. § 102(e) as anticipated by Roseman; claims 1, 2, 4-7, 9, 10, 12-15, 17, 18, 20-23, 25, 26, and 28-31 under 35 U.S.C. § 102(e) as anticipated by Sarin; claims 3, 11, 19, and 27 under 35 U.S.C. § 103(a) as unpatentable over Sarin and Yahoo; claims 1-32 and 76-146 under 35 U.S.C. § 103(a) as unpatentable over Miller and Liu; and claims 1-32 and 76-146 under 35 U.S.C. § 103(a) as unpatentable over Tatham, Liu, and either one of Yahoo or Herz. We reverse the Examiner’s rejection of claims 17-32 under 35 U.S.C. § 102(e) as anticipated by Tatham; claims 24 and 32 under 35 U.S.C. § 103(a) as unpatentable over Tatham and Herz; and claims 17-32 under 35 U.S.C. § 103(a) as unpatentable over Tatham and Yahoo. AFFIRMED Appeal 2013-001716 Reexamination Control 95/001,070 Patent 6,519,629 B2 15 cu Copy with citationCopy as parenthetical citation