Ex Parte Vesterinen et al

Patent Trial and Appeal Board

Jul 8, 2016

12433714 (P.T.A.B. Jul. 8, 2016)

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.
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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
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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.
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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
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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
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