Ex Parte CheahDownload PDFPatent Trial and Appeal BoardAug 30, 201813612619 (P.T.A.B. Aug. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/612,619 09/12/2012 Chris Cheah 91230 7590 09/04/2018 Baker Botts L.L.P./Facebook Inc. 2001 ROSS A VENUE SUITE 900 Dallas, TX 75201 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 079894.1149 5623 EXAMINER STITT, ERIK V ART UNIT PAPER NUMBER 2145 NOTIFICATION DATE DELIVERY MODE 09/04/2018 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): ptomaill@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 CHRIS CHEAH Appeal2017-002455 Application 13/612,619 Technology Center 2100 Before ERIC S. FRAHM, KRISTEN L. DROESCH, and JOHN D. HAMANN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE 1 Introduction Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 25-31, 33--42, and 45--47. Claims 1-24, 32, 43, and 44 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b ). 1 We note that the instant application on appeal is related to twelve other applications also on appeal, all having the same inventive entity (Chris Cheah) and assignee (Facebook, Inc.). The related applications are as follows: U.S. Patent Application No. 12/258,299 and Appeal No. 2016- 006539 decided Feb. 23, 2017 (affirmed-in-part); U.S. Patent Application No. 13/609,041 and Appeal No. 2017-002678 decided August 17, 2017 (affirmed-in-part, now abandoned); U.S. Patent Application No. 14/599,216 and Appeal No. 2017-002157 decided January 16, 2018 (affirmed); U.S. Appeal2017-002455 Application 13/612,619 We affirm. Disclosed Field of Invention Appellant discloses a method and system for controlled distribution of information, such as electronic business cards or contact information, over a network. Title; Spec. ,r,r 3-5; see generally Figs. 1--4. More specifically, Appellant discloses a method for automatically updating and distributing contact information such as profiles or electronic business cards, as well as allowing attachment of various additional information (e.g., business website information or Universal Resource Locator, hyperlinks, audio/video objects, etc.). Spec. ,r,r 10-12. When updated user profiles are available, the user Patent Application No. 12/268,981 and Appeal No. 2017-008051 decided January 29, 2018 (affirmed); U.S. Patent Application No. 12/258,295 and Appeal No. 2017-002384 decided Feb. 22, 2018 (affirmed); U.S. Patent Application No. 12/258,302 and Appeal No. 2017-002070 decided March 28, 2018 (affirmed-in-part); U.S. Patent Application No. 13/615,062 and Appeal No. 2017-002088 decided June 14, 2018 (affirmed-in-part); U.S. Patent Application No. 13/612,619 and Appeal No. 2017-002455 decided August 30, 2018 (affirmed); U.S. Patent Application No. 13/615,062 and Appeal No. 2017-002512 decided June 14, 2018 (affirmed-in-part); U.S. Patent Application No. 11/840,968 and Appeal No. 2017-009638 decided August 30, 2018 (affirmed); U.S. Patent Application No. 13/610,560 and Appeal No. 2017-008097 decided August 20, 2018 (affirmed); and U.S. Patent Application No. 13/618,881 and Appeal No. 2017-002456 decided July 5, 2018 (reversed). 2 Appeal2017-002455 Application 13/612,619 can press an update button 1914 to receive the updates. See Fig. 19 A; Spec. ,r 114; claim 25. Exemplary Claims Exemplary claims 25, 30, and 47, with bracketed lettering and emphases added to disputed portions of the claims, read as follows: 25. A method comprising: by one or more processors associated with one or more computer systems, receiving an access request from a first user of an information exchange system, the access request comprising a request to access a user profile of a second user of the information exchange system, [A] the second user having been identified by the first user entering information about the second user in an input area of a graphical user interface, the user profile of the second user being associated with profile information provided by the second user and maintained in a data repository, the profile information comprising contact information for the second user; by the one or more processors, providing for display to the second user an authorization request responsive to the access request from the first user, the authorization request displaying one or more selectable options that permit the second user to select directly from the authorization request whether or not to exchange profile information with the first user; by the one or more processors, receiving an authorization response from the second user responsive to the authorization request, the authorization response being generated at least in part by the second user interacting with the one or more selectable options displayed with the authorization request; receiving, by the one or more processors, updated profile information from the second user; and [BJ sending, by the one or more processors if the authorization response from the second user indicates that the first user may access the user profile of the second user, information to present one or more visual notifications on a client device associated with the first user, the one or more 3 Appeal2017-002455 Application 13/612,619 visual notifications indicating that updated profile information for the second user is available. 30. The method of Claim 25, further comprising: providing information to [CJ display an update button to the first user in the graphical user interface, the update button configured, when selected, to request the updated profile information for the second user. 47. The method of Claim 25, further comprising [DJ adding, by the one or more processors, the identified second user as a contact of the first user only after the second user selects, using the one or more selectable options, to exchange user profile information with the first user. The Examiner's Rejections The Examiner rejected claims 25, 28-31, 34, 37--42, and 47 under 35 U.S.C. § I03(a) over the combination of Robertson (US 6,269,369 Bl; issued July 31, 2001) and Zhang (US 6,016,478; issued Jan. 18, 2000). Final Act. 4--10. The Examiner rejected claims 26, 27, 35, and 36 under 35 U.S.C. § I03(a) over the combination of Robertson, Zhang, and Patel (US 5,220,596; issued June 15, 1993). Final Act. 10-11. The Examiner rejected claim 33 under 35 U.S.C. § 103(a) over the combination of Robertson, Zhang, and Pepe (US 5,742,668; issued April 21, 1998). Final Act. 11-12. The Examiner rejected claims 45 and 46 under 35 U.S.C. § I03(a) over the combination of Robertson, Zhang, and Theimer (US 5,493,692; issued Feb. 20, 1996). Final Act. 12-13. 4 Appeal2017-002455 Application 13/612,619 Issues on Appeal Based on Appellant's arguments in the Briefs (App. Br. 8-18; Reply Br. 2-12), the following issues are presented on appeal: 2 (1) Did the Examiner err in rejecting claims 25, 28-31, 34, 37--42, and 47 under 35 U.S.C. § 103(a) over the combination of Robertson and Zhang because either (a) there is no motivation for the combination, or (b) the combination fails to teach or suggest limitations [ A J and [BJ, as recited in representative claim 25? (2) Did the Examiner err in rejecting claims 30, 39, and 41 under 35 U.S.C. § 103(a) over the combination of Robertson and Zhang because the combination fails to teach or suggest limitation [CJ, including displaying an update button, as recited in each of claims 30, 39, and 41? (3) Did the Examiner err in rejecting claim 47 under 35 U.S.C. § 103(a) over the combination of Robertson and Zhang, because the combination, and specifically Robertson, fails to teach or suggest limitation [DJ, including adding a user as a contact "only after" the user has been selected for information exchange, as recited in dependent claim 4 7? 2 Appellant does not present separate arguments regarding the patentability of claims 28, 29, 31, 34, 37, 38, 40, and 42, and relies instead on the arguments presented as to claim 25 (App. Br. 10, 11 ). Appellant provides separate arguments for claims 30, 39, 41, and 47 (see App. Br. 14--17; Reply Br. 9-11). Independent claim 25 is a method claim, and recites limitations commensurate in scope with remaining independent claims 34 ( computer- readable storage media) and 40 (system). Therefore, we select independent claim 25 as representative of the group of claims consisting of claims 25, 28, 29, 31, 34, 37, 38, 40, and 42 rejected as being obvious over the combination of Robertson and Zhang. Our analysis will address representative claim 25, and dependent claims 30, 39, 41, and 47 separately argued by Appellant. 5 Appeal2017-002455 Application 13/612,619 ANALYSIS We have reviewed the Examiner's rejections (Final Act. 4--12) in light of Appellant's arguments in the Appeal Brief (App. Br. 9--20) and the Reply Brief (Reply Br. 2-9) that the Examiner has erred, as well as the Examiner's response to Appellant's arguments in the Appeal Brief (Ans. 3-8). Claims 25, 28, 29, 31, 34, 37, 38, 40, 42 With regard to representative claim 25, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 4--7), and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief (see Ans. 3-8). We concur with the conclusions reached by the Examiner with regard to the obviousness of claim 25 in view of the combination of Robertson and Zhang. We disagree with Appellant's contentions (App. Br. 8-13; Reply Br. 2-9) that the Examiner erred in rejecting claim 25 because (i) the combination of Robertson and Zhang fails to teach or suggest limitations [A] and [BJ recited in claim 25; and/or (ii) there is no motivation for combining the teachings of Robertson and Zhang. Limitation [A] We agree with the Examiner (Ans. 2-5) that the combination of Robertson and Zhang teaches or suggests limitation [A] set forth in claim 25, namely, a request having information about an identified registered user (i.e., second user as claimed) entered in an input area of a graphical user interface (GUI) by a requesting registered user (i.e., first user as claimed). Specifically, we agree with the Examiner that Robertson discloses an input area for specifying information about an identified user (Ans. 4 citing Robertson col. 8, 11. 14--23; Fig. 8; see also col. 7, 11. 28-30). Robertson 6 Appeal2017-002455 Application 13/612,619 describes making a request by naming a user, which involves "information about a user" (e.g., the user's name) being entered into a GUI (information is entered into GUI 560 in Figure 7 and GUI 580 in Figure 8 allows a user to select other users) via server personal contact manager software 343 shown in Figure 5. In addition, Robertson discloses various other information entry about users, such as information entered (i) into Friend Table 460 which includes CustomerID 460-4, FriendID 460-6, and permission level 460-10 (Ans. 4 citing Robertson col. 5, 11. 20-24); and (ii) by users into various data fields of GUI 560 shown in Figure 7 (Ans. 4 citing Robertson col. 6, 11. 48- 65). In this light, Appellant's arguments (App. Br. 8-10; Reply Br. 2-5) that Robertson fails to disclose a first user entering information about a second user, and thus the combination of Robertson and Zhang fails to disclose, teach, or suggest limitation [A] recited in claim 25, are unpersuasive. Limitation [BJ We also agree with the Examiner (Ans. 5) that the combination of references teaches or suggests limitation [BJ set forth in claim 25, namely "one or more visual notifications on a client device of a first user that indicates that updated profile information for the second user is available" ( claim 25)( emphasis added). Specifically, the Examiner finds (Ans. 5), and we agree, that Robertson discloses (i) a GUI shown Figure 11 that provides a first user with specific information that has changed about other users (including a second user) to which the first user is linked (Ans. 5 citing Robertson col. 4, 11. 1-5); and (ii) item 650-8 in Figure 11 that is a textual notification that "Tom Khon" has updated his profile address information 7 Appeal2017-002455 Application 13/612,619 Ans. 5 citing Robertson Fig. 11 ). As a result, we find Robertson teaches or suggests one or more visual notifications as recited in limitation [BJ of claim 25. In this light, Appellant's arguments (App. Br. 10-11; Reply Br. 6-8) that Robertson fails to disclose a first user entering information about a second user, and thus the combination of Robertson and Zhang fails to disclose, teach, or suggest limitation [BJ recited in claim 25, are unpersuasive. Motivation and Reasonable Expectation of Success A sufficient rationale to support a conclusion that a claim would have been obvious is where all the claimed elements were known in the prior art and one skilled in the art would have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Such understandings about reasons to combine or countervailing reasons not to combine could come from the knowledge, skill, and creativity of the ordinarily skilled artisan. KSR, 550 U.S. at 418. In the instant case, the Examiner finds (Ans. 6), and we agree, that both Robertson and Zhang pertain to the art of profile management, because both Robertson (Ans. 6 citing Robertson Fig. 10) and Zhang (Ans. 6 citing Zhang Fig. 5E) concern email address profile information. We also agree with the Examiner (Ans. 6; Final Act. 6) that because Robertson sends invitation emails to users, and Zhang discloses emails having information as to how to respond to invitation requests such as "I accept" or "I decline" (see Final Act. 6 citing Zhang Figs. 5E, 13; col. 3, 11. 31-32), the combination of 8 Appeal2017-002455 Application 13/612,619 these features would predictably result in allowing users to see how they should respond to an email message. In this light, Appellant's arguments (App. Br. 12-13; Reply Br. 8-9) that the Examiner failed to demonstrate a prima facie showing of obviousness, and only provides conclusory statements, are not persuasive. Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir. 2009) ("An obviousness determination requires that a skilled artisan would have perceived a reasonable expectation of success in making the invention in light of the prior art."). The "reasonable expectation of success" requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention, and does not look to whether one would reasonably expect the prior art references to operate as those references intended once combined. Instead, there must be a motivation to combine accompanied by a reasonable expectation of achieving what is claimed. The teachings of the prior art can provide a sufficient basis for a reasonable expectation of success. Merck, 800 F .2d at 1097. In the case before us, the Examiner has met this burden in making findings about the teachings of the individual references as they relate to the claimed subject matter. In addition, evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 1054 (CCPA 1976). In the instant case, Appellant has not 9 Appeal2017-002455 Application 13/612,619 provided any evidence or reasoning showing there was no reasonable expectation of success. Appellant's contentions (see App. Br. 12-13) do not persuade us that the Examiner erred. Specifically, Appellant merely avers that (i) the Examiner's resorts to hindsight (App. Br. 12-13; Reply Br. 9); and (ii) there is no reasonable expectation of success (App. Br. 12-13), without providing any reasoning, and such naked assertions, without any evidence, are not persuasive. It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ( attorney argument is not evidence). Moreover, the Examiner makes specific findings as to why a person of ordinary skill in the art would have a reasonable expectation of success, based on the teachings of the references (see Final Act. 4--7). Final Act. 6 (finding Robertson and Zhang are in the "analogous art of an email profile manager"); Ans. 6 ("Robertson and Zhang are analogous art of profile management"). Summary Accordingly, we sustain the Examiner's rejection of claim 25, and claims 28, 29, 31, 34, 37, 38, 40, and 42 grouped therewith. For similar reasons, and because Appellant does not present any arguments as to claims 26, 27, 33, 35, 36, 45, and 46 which are also rejected for similar reasons and on the same base combination of Robertson and Zhang as representative claim 25, we also sustain the Examiner's rejections of claims 26, 27, 35, and 36 over Robertson, Zhang, and Patel; claim 33 over Robertson, Zhang, and Pepe; and claims 45 and 46 over Robertson, Zhang, and Theimer. 10 Appeal2017-002455 Application 13/612,619 Claims 3 0, 3 9, and 41 Appellant contends (App. Br. 14--15; Reply Br. 9--10) that the combination of Robertson and Zhang, and specifically Zhang, fails to teach or suggest limitation [CJ, including displaying an update button, as recited in dependent claims 30, 39, and 41. We disagree. Instead, we agree with the Examiner (Ans. 6-7) that Robertson discloses (i) updating a profile when a user changes information in the profile (Ans. 6 citing Robertson col. 3, 11. 17-21 ); and (ii) a graphical user interface 620 (Fig. 10) for selecting a name (Fig. 10, user name 630) in order to show the updated profile information for the selected user/name (see Robertson col. 10, 11. 17---col. 11, 1. 3) ( describing Figure 10). Because Robertson discloses using a mouse to control a cursor and click on the name to be selected in order to receive updated profile information (see col. 10, 11. 42--46), we agree with the Examiner (Ans. 7) that Robertson does not necessarily disclose using a button. However, we agree with the Examiner that Zhang (Fig. 5E) discloses using selectable icons 532 and buttons (e.g., next button 535, selection button 536; see col. 11, 11. 54--62) for making selections in order to reveal a user's profile information (Ans. 7 citing Zhang Fig. 5E; col. 11, 11. 57-58). Therefore, we also agree with the Examiner (Ans. 7) that the combination of Robertson and Zhang teaches or suggests how updated profile information for a particular user can be selected for receipt and display, using a button. Accordingly, we sustain the Examiner's rejection of claims 30, 39, and 41. 11 Appeal2017-002455 Application 13/612,619 Claim 47 Appellant contends (App. Br. 15-17; Reply Br. 10-11) that the combination of Robertson and Zhang, and specifically Robertson, fails to teach or suggest limitation [DJ, including adding a user as a contact "only after" the user has been selected for information exchange, as recited in dependent claim 47. In the Examiner's Answer, the Examiner newly cites to column 9, lines 7 through 14 of Robertson as disclosing this limitation (see Ans. 7-8). We agree with the Examiner (Ans. 8) that Robertson (col. 9, 11. 11-14) discloses adding registered users as contacts only after the requested user has granted permission. In this light, and because Robertson discloses multiple options of adding the identified registered user (with either a listing, personal information, or work information) as a contact only after the requesting user receives permission from the requested user (see Robertson, col. 9, 11. 10-26), Appellant's arguments that Robertson fails to disclose, teach, or suggest limitation [DJ are unpersuasive. Accordingly, we sustain the Examiner's rejection of claim 47. CONCLUSIONS (1) The Examiner did not err in rejecting claims 25-29, 31, 33-38, 40, 42, 45, and 46 under 35 U.S.C. § 103(a) over the base combination of Robertson and Zhang because (a) there is proper motivation for the combination, and (b) the combination teaches or suggests limitations [ A J and [BJ, as recited in claim 25. (2) The Examiner did not err in rejecting claims 30, 39, and 41 under 35 U.S.C. § 103(a) over the combination of Robertson and Zhang because 12 Appeal2017-002455 Application 13/612,619 the combination teaches or suggests limitation [CJ, including displaying an update button, as recited in dependent claims 30, 39, and 41. (3) The Examiner did not err in rejecting claim 47 under 35 U.S.C. § 103(a) over the combination of Robertson and Zhang because the combination, and specifically Robertson, teaches or suggests limitation [DJ, including adding a user as a contact "only after" the user has been selected for information exchange, as recited in dependent claim 4 7. DECISION The Examiner's obviousness rejections of claims 25-31, 33--42, and 45--47 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation