Facebook, Inc.

Patent Trials and Appeals Board

Dec 13, 2021

2020005953 (P.T.A.B. Dec. 13, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/054,103 02/25/2016 Seth Garrett Steinberg Rosenberg 1360F0113.2 7692
110828 7590 12/13/2021
Kacvinsky Daisak Bluni PLLC (1360)
2601 Weston Parkway
Suite 103
Cary, NC 27513
EXAMINER
MUNDUR, PADMAVATHI V
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
12/13/2021 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):
Docketing@kdbfirm.com
kpotts@kdbfirm.com
mfitzsimmons@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SETH GARRETT STEINBERG ROSENBERG,
MATTHEW STEINER, ILYA SUKHAR, and POOYA KARIMIAN
____________________

Appeal 2020-005953
Application 15/054,103
Technology Center 2400
____________________

Before ROBERT E. NAPPI, JENNIFER S. BISK, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 6 through 9, 11, 13 through 16, and 19 through
20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2019). According to Appellant, Facebook, Inc. is the
real party in interest. Appeal Br. 2.
Appeal 2020-005953
Application 15/054,103

2
CLAIMED SUBJECT MATTER
The claimed invention relates to a technique for using messaging bots
with a communication system. Abstract. Claim 1 is reproduced below.
1. A computer-implemented method, comprising:
monitoring, at a messaging system, a message queue for
messages comprising a bot alias;
determining that a message in the message queue
comprises a bot alias, the bot alias corresponding to a name
registered with the messaging system for a messaging bot;
submitting the message comprising the bot alias to the
messaging bot having a registered name corresponding to the
bot alias from the message;
receiving a response from the messaging bot; and
adding the response to the message queue for delivery to
a messaging application on a client device.

EXAMINER’S REJECTION2
The Examiner rejects claims 1, 2, 4, 6, 8, 9, 11, 13, 15, 16, and 19
under 35 U.S.C. § 103 as unpatentable over the combined teachings of
Lynch (US 2014/0164508 Al; June 12, 2014) and Park (US 2013/0144961
Al; June 6, 2013). Final Act. 4–9.
The Examiner rejects claims 7, 14, and 20 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Lynch, Park and Morrison (US
2009/0176511 Al; July 9, 2009). Final Act. 9–11.

2 Throughout this Decision, we refer to the Appeal Brief filed March 10,
2020 (“Appeal Br.”); Reply Brief filed August 18, 2020 (“Reply Br.”); Final
Office Action mailed January 29, 2019 (“Final Act.”); and the Examiner’s
Answer mailed June 18, 2020 (“Ans.”).
Appeal 2020-005953
Application 15/054,103

3
ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, Reply
Brief, the Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejections under 35 U.S.C. § 103.
With respect to claim 1, Appellant argues the Examiner’s rejection of
claim 1 is in error as the combination of Lynch and Park do not teach the
claim 1 limitations of: (1) “submitting the message comprising the bot alias
to the messaging bot”; (2) “the bot alias corresponding to a name registered
with the messaging system for messaging bot”; and (3) “the messaging bot
having a registered name corresponding to the bot alias from the message.”
Appeal Br. 2–8.
With respect to the first point Appellant argues that the primary
difference between Lynch, the reference the Examiner relies upon to teach
this limitation, is that “in the present application, [it] is necessary for each
message which is intended to be directed to the bot to contain the bot alias.”
Appeal Br. 4. Further, Appellant argues that in Lynch the trigger which
invokes the bot (which is equated to the claimed bot alias) is not submitted
to the bot. Appeal Br. 5, Reply Br. 2–3.
With respect to the second point Appellant similarly argues that
Lynch fails to teach the message sent to the messaging bot has a name
corresponding to the bot alias from the message. Appeal Br. 6. Appellant
argues that Lynch teaches that the trigger invokes the bot, and that
subsequent messages are forward to the bot, where as in the claimed
invention “each message intended for delivery to the bot must contain the
bot alias.” Appeal Br. 6.
Appeal 2020-005953
Application 15/054,103

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With respect to the third point, Appellant acknowledges that the
Examiner relies upon Park to teach the limitation that a bot alias is registered
with a messaging system in combination with Lynch, and argues; “Appellant
fails to see how modifying Lynch with the teachings of Park suggest that
each message which the user intends to be directed to the bot must comprise
the bot alias.” Appeal Br. 7.
The Examiner provides a comprehensive response to Appellant’s
arguments on pages 4 through 7 of the Answer. In this response the
Examiner identifies that Appellant’s arguments directed to each of the three
points are based upon construing the claim such as reciting that it is
necessary for each message intended for the bot to contain the bot alias.
Ans. 4. The Examiner identifies that the claim is not this narrow, rather the
claim recites monitoring a message queue, which the Examiner equates to
the conversation thread in Lynch, and determination that a message includes
a bot alias (e.g. the trigger phrase “let us ask the brain”). Ans. 4. With
respect to the second point the Examiner additionally states:
The claim limitation reciting ‘the messaging bot having a
registered name corresponding to the bot alias from the
message’ is interpreted as a mapping between the bot alias (a
designated word/phrase) in the message and a corresponding
bot function (bot or agent) for message routing purposes for
which Lynch has support as demonstrated in the Office action.
Park reference is introduced only for clarity with respect to the
“registered name” recited in the limitation, which supports a
bot store (registry or a database) of multiple bot aliases and
their corresponding bots, facilitating the function of mapping a
bot alias to its corresponding bot (registering) in the messaging
system and it would be obvious to have such a mapping data
structure for message routing purpose.
Ans. 6.
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Application 15/054,103

5
The Examiner provides a similar response to the third point. Ans. 6–7.
We have reviewed the Examiner’s rejection, Appellant’s arguments,
and the teachings of Lynch and Park cited by the Examiner in the Final
Action. We concur with the Examiner that the claim does not require that
each message contains the bot alias. As the three points raised by
Appellant’s in the Appeal Brief are premised based upon the claim being
interpreted in this manner, we are unpersuaded of error in the Examiner’s
rejection. We additionally note that Lynch states that the first device, having
virtual agent capability (equivalent to the claimed bot) may receive a
communication and invoke the virtual agent upon detecting the trigger in the
communication. Lynch ¶ 32. Further, Lynch teaches that the bot may
receive the “entire communication history” (which necessarily includes the
trigger). Lynch ¶ 132 (emphasis added). These paragraphs of Lynch,
further support the Examiner’s finding that Lynch teaches that the bot on the
machine receives the message and the bot alias (trigger in Lynch).
We additionally note that for the first time in the Reply Brief,
Appellant argues that the rejection is in error as “in the claimed
embodiments, the bot is not a member of the conversation and, as such,
cannot directly read messages submitted by other participants in the message
thread” and that neither Lynch or Park teach a queue. Reply Brief 3, 4.
These new arguments could have been presented in the Appeal Brief, are not
prompted by the Examiner’s Answer, and are not based on any new
arguments or grounds of rejection in the Examiner’s Answer. As a result,
Appellant has waived these untimely arguments because Appellant has not
shown good cause for belatedly raising the new arguments. See 37 C.F.R.
§ 41.41(b)(2) (2019). Further, the argument directed to the references not
Appeal 2020-005953
Application 15/054,103

6
teaching a queue, does not address the Examiner’s finding that the claimed
queue is met by Lynch’s conversation thread. Ans. 4.
For the aforementioned reasons Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of claim 1. Appellant has
grouped claims 1, 2, 4, 6 through 9, 11, 13 through 16, and 19 through 20.
Appeal Br. 3. Thus, we sustain the Examiner’s obviousness rejections of
claims 1, 2, 4, 6 through 9, 11, 13 through 16, and 19 through 20.
CONCLUSION
We affirm the Examiner’s rejections of claims 1, 2, 4, 6 through 9, 11,
13 through 16, and 19 through 20.
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 2, 4, 6,
8, 9, 11,
13, 15, 16,
19
103 Lynch, Park 1, 2, 4, 6,
8, 9, 11,
13, 15, 16,
19

7, 14, 20 103 Lynch, Park,
Morrison
7, 14, 20
Overall
Outcome
1, 2, 4,
6– 9, 11,
13–16, 19,
20

Appeal 2020-005953
Application 15/054,103

7
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2013).
AFFIRMED