Ex Parte Vesterinen et alDownload PDFPatent Trial and Appeal BoardJul 8, 201612433714 (P.T.A.B. Jul. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/433,714 0413012009 11764 7590 Ditthavong & Steiner, P,C, 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 07112/2016 FIRST NAMED INVENTOR Matti Vesterinen 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. P2271USOO 9640 EXAMINER SENSENIG, SHAUN D ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 07/12/2016 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): docket@dcpatent.com Nokia.IPR@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex Parte MATTI VESTERINEN, MATTI JOHANNES NELIMARKKA, TEEMU HARJU, TOMI KULMALA, and VILLE RANTALA Appeal2014-004537 1 Application 12/433,7142 Technology Center 3600 Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 2, 4--14, and 16-22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed September 30, 2013) and Reply Brief ("Reply Br.," filed February 19, 2014), and the Examiner's Answer ("Ans.," mailed December 19, 2013) and Final Office Action ("Final Act.," mailed May 9, 2013). 2 Appellants identify Nokia Corporation as the real party in interest. App. Br. 1. Appeal2014-004537 Application 12/433,714 CLAIMED fNVENTION Appellants' claimed invention relates to a method and apparatus for intuitive management of privacy settings in a social networking site available over the Internet (Spec. i-fi-f l-7). Claim 1, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal: 1. A method comprising: [(a)] receiving data that indicates: a contact radius related to how socially close a contact is to a user who is registered with a network service, and an information radius related to how private is information about the user; [ (b)] in response to a request from the contact for information about the user, causing, at least in part, by a processor, a providing of information about the user which has an information radius value in a range that is based on a value of the contact radius associated with the contact; and [ ( c)] causing, at least in part, a presentation at a graphical user interface of: a plurality of nested circles representing corresponding information radii for a plurality of associated private information about the user; and a plurality of icons for associated contacts positioned among the plurality of nested circles based on a corresponding plurality of associated contact radii, wherein each icon of the plurality of icons is inside a circle with an information radius greater than a contact radius associated with the icon and outside a circle with an information radius less than the contact radius. 2 Appeal2014-004537 Application 12/433,714 REJECTIONS Claim 20 is rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1, 2, 4, 10-14, and 16-22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pezaris (US 2005/0198031 Al, pub. Sept. 8, 2005) and Kelly (US 2006/0248584 Al, pub. Nov. 2, 2006). Claims 1, 2, 4, 5, 10, 12-14, 16, 17, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Petty (US 2009/0125521 Al, pub. May 14, 2009) and Kelly. ANALYSIS Non-Statutory Subject Matter Appellants do not offer any response to the Examiner's rejection of claim 20 under 35 U.S.C. § 101. Therefore, we summarily sustain the Examiner's rejection. Obviousness In rejecting independent claims 1, 12, and 20 under 35 U.S.C. § 103(a), the Examiner finds that Pezaris (and also Petty) discloses a system and method for controlling access, in a social networking environment, to user information based on the closeness of a relationship between individual users, i.e., "receiving data that indicates a contact radius related to how socially close a contact is to a user ... and an information radius related to how private is information about the user" and "in response to a request from the contact for information about the user ... providing ... information about the user which has an information radius value in a range that is based on a value of the contact radius associated with the contact," as 3 Appeal2014-004537 Application 12/433,714 recited in limitations (a) and (b) of claim 1, and similarly recited in independent claims 12 and 20 (Final Act. 3--4, 6-7). The Examiner acknowledges that neither Pezaris nor Petty discloses "causing ... a presentation at a graphical user interface of: a plurality of nested circles representing corresponding information radii for a plurality of associated private information about the user," as recited in claim 1, and similarly in claims 12 and 20 (Final Act. 4, 7). And the Examiner cites Figure 5 of Kelly to cure this deficiency (id.). The Examiner also acknowledges that none of the cited references explicitly discloses "icons representing contacts," i.e., "causing ... a presentation at a graphical user interface of: ... a plurality of icons for associated contacts positioned among the plurality of nested circles based on a corresponding plurality of associated contact radii," as recited in claim 1, and similarly recited in claims 12 and 20 (id.). Nonetheless, the Examiner maintains that the rejection is proper because "the displayed material of Claims 1, 12 and 20 represents merely non-functional descriptive material and is therefore given no patentable weight" (see, e.g., id. at 4). Appellants argue that the Examiner's reliance on Figure 5 of Kelly is misplaced, and further that the concept of non-functional descriptive material is improperly applied in the Final Office Action (App. Br. 6-9; see also Reply Br. 2-6). We agree. Independent claim 1 recites "causing ... a presentation of a graphical user interface" of a plurality of nested circles representing corresponding information radii and a plurality of icons for associated contacts positioned among the plurality of nested circles." Independent claims 12 and 20 include substantially similar language. 4 Appeal2014-004537 Application 12/433,714 The Examiner cites Figure 5 of Kelly as disclosing "nested circles representing privacy level" and asserts that "[ u ]sing display techniques such as those taught by Kelly does not change nor effect [sic, affect] the normal functions of privacy settings/levels as taught by" Pezaris or Petty (Final Act. 4, 7). Yet we find nothing in Figure 5 of Kelly that discloses or suggests any "display techniques;" nor, for that matter, does the Examiner point to any such disclosure or suggestion. As Appellants correctly observe, Figure 5 of Kelly is merely an illustration to aid in the explanation of the disclosure, not an illustration of a graphical user interface (App. Br. 6-7). The Examiner asserts, in the Answer, that "[t]he prior art and rejections clearly show, in addition to the other claimed concepts, that the systems on which the methods are performed have the ability to display the received information" (Ans. 11 ). The Examiner also asserts that "[t]he actual visuals displayed to represent [the privacy radii] (i.e., icons, circles) is [sic] non-functional because it does not affect the performance of the claimed invention" (id. at 10 (emphasis omitted)). Yet the Examiner does not point to any portion of any of the cited references that discloses or suggests "causing ... a presentation at a graphical user interface" of any privacy radii, as recited in independent claims 1, 12, and 20, whether the privacy radii are displayed in the form of icons and nested circles or otherwise. Although nested circles and icons might properly be considered non- functional where the prior art discloses and/ or suggests the presentation of a graphical user interface of privacy radii using different visuals, that is not the situation here where the Examiner has not shown that any of the cited references explicitly discloses or suggests "causing ... the presentation of a 5 Appeal2014-004537 Application 12/433,714 graphical user interface of" privacy radii. The Examiner also has not provided the evidence and/or technical reasoning required to establish that this feature is inherently disclosed. See Continental Can Co. USA, Inc. v. Monsanto Co., 948F.2d1264, 1269 (Fed.Cir.1991) ("Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient" (quoting In re Oelrich, 666 F.2d 578, 581(CCPA1981)). In view of the foregoing, we do not sustain the Examiner's rejections of independent claims 1, 12, and 20 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner's rejections of claims 2, 4--11, 13, 14, 16-19, 21, and 22, each of which ultimately depends from one of independent claims 1, 12, and 20. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). DECISION The Examiner's rejection of claim 20 under 35 U.S.C. § 101 is affirmed. The Examiner's rejections of claims 1, 2, 4--14, and 16-22 under 35 U.S.C. § 103(a) are reversed. 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-IN-PART 6 Copy with citationCopy as parenthetical citation