Ex Parte Cheah

Patent Trial and Appeal Board

Jul 2, 2018

13612584 (P.T.A.B. Jul. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/612,584 09/12/2012 Chris Cheah
91230 7590 07/05/2018
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.
079894.1138 1469
EXAMINER
STITT, ERIK V
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
07/05/2018 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
Appeal2017-008113 1
Application 13/612,584
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 CASE2
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 25, 27--40, 42, 44, and 45. Claims 1-24, 26, 41, and 43 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 Appellant identifies Facebook, Inc. as the real party in interest. App. Br. 2.
2 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); U.S. Patent Application No. 14/599,216 and Appeal No.
Appeal 2017-008113
Application 13/612,584
Disclosed Field of Invention
Appellant discloses a method and system for controlled distribution
and exchange of information, such as electronic business cards or contact
information, over a network. Spec. i-fi-13-8; see generally Figs. 1-3. More
specifically, Appellant discloses and claims a method (claim 25), computer-
readable non-transitory storage media including software operable to
perform the method (claim 3 5), and client device with one or more
processors and a memory to perform the method (claim 39) for
(i) determining whether a personal identifier exists for a user registered with
an information management and distribution system exists on a client device
(Figs. 6A/B, 7 (704); i-fi-156, 69, 83); (ii) if such a personal identifier does not
exist, registering the user and storing the personal identifier in a local data
store at the client device (Spec. i-fi-156, 78, 83, 89); and (iii) once the personal
identifier exists, sending the personal identifier to servers of the information
management and distribution system during user profile exchange operations
2017-002157 decided January 16, 2018 (affirmed); U.S. 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; 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; U.S. Patent Application No. 13/610,560 and Appeal No.
2017-008097; and U.S. Patent Application No. 13/618,881 and Appeal No.
2017-002456.
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Appeal 2017-008113
Application 13/612,584
with one or more registered users of the system (Spec. i-fi-178, 91, 134, 184).
See claims 25, 35, 39.
Exemplary Claim
Exemplary claim 25, with bracketed lettering (indicating disputed
limitation A) and emphases added to disputed portions of the claim, reads as
follows:
25. A method comprising:
[A] by a client device, determining whether a personal
identifier exists on the client device. the personal identifier
being a unique identifier associated with a user who is
registered with an information management and distribution
system;
by the client device, when it is determined that the
personal identifier does not exist on the client device:
sending, to one or more computer servers
associated with an information management and
distribution system, a request to register the user of the
client device, the request comprising identifying
information for the user;
receiving a response to the request to register the
user, the response comprising the personal identifier for
the user, the personal identifier having been generated by
the one or more computer servers associated with the
information management and distribution system in
response to receiving the request to register the user and
determining that the user has not previously registered
with the information management and distribution
system; and
storing the personal identifier in a local data store
of the client device; and
by the client device, once the personal identifier exists on
the client device, sending, to the one or more computer servers
associated with the information management and
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Application 13/612,584
distribution system, the personal identifier during user profile
exchange operations with one or more other users who are
registered with the information management and distribution
system.
The Examiner's Rejections
(1) The Examiner rejected claims 25, 27-30, 32-37, 39, 40, 42, and
44 under 35 U.S.C. § 103(a) as being obvious over the combination of Klug
(US 2001/0011274 Al; published Aug. 2, 2001), Paltenghe (US 6,421,729
Bl; issued July 16, 2002), and Robertson (US 6,269,369 Bl; issued July 31,
2001 ). Final Act. 4--9.
(2) The Examiner rejected claims 31, 38, and 45 under 35 U.S.C. §
103(a) as being obvious over the combination of Klug, Paltenghe,
Robertson, and Beer (US 5,684,676; issued Jan. 26, 1999). Final Act. 10.
Appellant's Arguments
Independent claims 25 (method), 35 (computer-readable non-
transitory storage media), and 39 (client device with one or more processors
and a memory) recite similar subject matter, namely a method of sending a
personal identifier for a user registered with an information management and
distribution system during user profile exchange operations with other users,
including determining whether a personal identifier exists for a user
registered with an information management and distribution system exists on
a client device (see e.g., limitation [A] of exemplary claim 25).
With regard to the rejections of claims 25, 27--40, 42, 44, and 45 over
the base combination of Klug, Paltenghe, and Robertson, Appellant argues
as to independent claims 25, 35, and 39 (see generally App. Br. 10-11;
Reply Br. 2-6) that the combination of Klug, Paltenghe, and Robertson fails
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Appeal 2017-008113
Application 13/612,584
to disclose, teach, or suggest limitation [A] of claim 25, and the
commensurate limitations of claims 35 and 39.
Issue on Appeal
Based on Appellant's arguments in the Briefs (App. Br. 10-20; Reply
Br. 2-12), the following principal issue is presented on Appeal:
Did the Examiner err in rejecting claims 25, 27--40, 42, 44, and 45
under 35 U.S.C. § 103(a) as being obvious over the base combination of
Klug, Paltenghe, and Robertson because the base combination fails to teach
or suggest limitation [A] supra, as recited in representative independent
claim 25?
ANALYSIS
We have reviewed Appellant's arguments in the Briefs (App. Br.
8-15; Reply Br. 2-11), the Examiner's rejection (Final Act. 4--10), and the
Examiner's Answer (Ans. 3-7) to Appellant's arguments.
Limitation [A] of claim 25 recites in pertinent part:
by a client device, determining whether a personal
identifier exists on the client device. the personal identifier
being a unique identifier associated with a user who is
registered with an information management and distribution
system ...
Claim 25, limitation [A] (emphases added). With regard to limitation [A],
we agree with Appellant (App. Br. 10-11; Reply Br. 5-7) that the Examiner
has not shown that the combination of Klug, Paltenghe, and Robertson
discloses, teaches, or suggests determining whether a personal identifier
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Application 13/612,584
exists for a user registered with an information management and distribution
system exists on a client device.
The Examiner relies on Paltenghe as disclosing treating a user as a
first time visitor at a web site, and not placing a cookie on the user's device,
when the user has not accepted cookies (Final Act. 4; Ans. 5). However,
neither the Examiner's position set forth in the Final Rejection (Final Act. 4--
7), nor the Examiner's response to Appellant's arguments (Ans. 5---6) as to
limitation [A] addresses the specific limitation argued and claimed by
Appellant, namely determining whether a personal identifier exists on a
client device. In other words, the Examiner has not sufficiently explained
how not accepting a cookie leads to making a determination that a personal
identifier exists on the client device.
Although Paltenghe may disclose determining whether a user will
accept cookies that include a visitor's ID, and Klug may disclose registering
a user to access a third party web site and storing registration information
locally, both Klug and Paltenghe are silent as to determining whether a
personal identifier exists on a client device, the personal identifier being a
unique identifier associated with a user who is registered with an
information management and distribution system, as claimed in each of
claims 25, 35, and 39.
In view of the foregoing, we do not sustain the Examiner's
obviousness rejection of independent claims 25, 35, and 39 over Klug,
Paltenghe, and Robertson. For the same reasons, and because the dependent
claims each contain the same respective limitations as the respective
independent claims, we also do not sustain the Examiner's obviousness
rejections of dependent claims 27-34, 36-38, 40, 42, 44, and 45.
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CONCLUSION
The Examiner erred in rejecting claims 25, 27--40, 42, 44, and 45
under 35 U.S.C. § 103(a) as being obvious over the base combination of
Klug, Paltenghe, and Robertson, because the base combination does not
teach or suggest determining whether a personal identifier exists for a user
registered with an information management and distribution system exists on
a client device, as recited in each of independent claims 25, 35, and 39.
DECISION
The Examiner's obviousness rejections of claims 25, 27--40, 42, 44,
and 45 are reversed.
REVERSED
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