Facebook, Inc.Download PDFPatent Trials and Appeals BoardNov 25, 20202019004472 (P.T.A.B. Nov. 25, 2020) Copy Citation 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. 14/561,766 12/05/2014 Samantha P. Krug 26295-26729/US 2085 87851 7590 11/25/2020 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER MUHEBBULLAH, SAJEDA ART UNIT PAPER NUMBER 2177 NOTIFICATION DATE DELIVERY MODE 11/25/2020 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): fwfacebookpatents@fenwick.com ptoc@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAMANTHA P. KRUG, RYAN JACOB GOMBA, and PETER XIU DENG Appeal 2019-004472 Application 14/561,766 Technology Center 2100 Before MARC S. HOFF, JOHN A. EVANS, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–7 and 11–24. See Final Act. 1. Claims 8–10 have been cancelled. Id. at 2. 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. Appellant identifies the real party in interest as Facebook, Inc. Appeal Br. 2. Appeal 2019-004472 Application 14/561,766 2 CLAIMED SUBJECT MATTER The claims are directed to identifying and selecting contacts to include in a face tray of a messaging application and sending images to selected contacts. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A computer program product comprising a non-transitory computer-readable medium having instructions encoded thereon that, when executed by a processor, cause the processor to: present a user interface of a messaging application to a user of a client device, the user interface including: a face tray, the face tray comprising a plurality of contact icons, each contact icon representing one or more contacts of the user; and a camera view configured to present a current view viewed by a camera on the client device to the user, the face tray overlaying the camera view in the user interface of the messaging application; retrieve a set of contacts of the user of the client device; identify a set of attributes associated with the retrieved contacts; rank the retrieved contacts based on the attributes associated with each contact, the ranking based on a prediction of contacts with whom the user is most likely to interact using the messaging application; select, based on the ranking of the retrieved contacts, a set of the retrieved contacts for display in the face tray as the plurality of contact icons; populate the face tray with the plurality of contact icons of the selected set of the retrieved contacts for simultaneous presentation with the camera view, wherein a single user selection to a contact icon of the plurality of contact icons for a contact causes the client device to send the current view viewed by the camera to the selected contact as an image; responsive to receiving a first single user interaction from the user on a first contact icon in the face tray in the presented user interface, send a first image corresponding to the current Appeal 2019-004472 Application 14/561,766 3 view captured by the camera at a time of receiving the first single user interaction to a first user corresponding to the first contact icon in the face tray; and responsive to receiving a second single user interaction from the user on a second contact icon in the face tray in the presented user interface, send a second image corresponding to the current view captured by the camera at a time of receiving the second single user interaction to a second user corresponding to the second contact icon in the face tray. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Raju US2011/0016476 A1 Jan. 20, 2011 Lee US 2011/0225539 A1 Sept. 15, 2011 Pratt US 2012/0124059 A1 May 17, 2012 Tseng US 2012/0158751 A1 June 21, 2012 Cohen US 2016/0050289 A1 Feb. 18, 2016 filed June 26, 2012 REJECTIONS The Examiner rejected claims 1–7 and 11–24 on the following grounds: Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 3–7, 11, 12, 16– 19, 21–24 103 Pratt, Cohen, Raju 2, 15 103 Pratt, Cohen, Raju, Tseng 13, 14, 20 103 Pratt, Cohen, Raju, Lee OPINION Appellant argues the Examiner erred in finding the combination of Pratt, Cohen, and Raju teaches the following limitations recited in claim 1: Appeal 2019-004472 Application 14/561,766 4 [A] face tray, the face tray comprising a plurality of contact icons, each contact icon representing one or more contacts of the user; and a camera view configured to present a current view viewed by a camera on the client device to the user, the face tray overlaying the camera view in the user interface of the messaging application; . . . responsive to receiving a first single user interaction from the user on a first contact icon in the face tray in the presented user interface, send a first image corresponding to the current view captured by the camera at a time of receiving the first single user interaction to a first user corresponding to the first contact icon in the face tray; and responsive to receiving a second single user interaction from the user on a second contact icon in the face tray in the presented user interface, send a second image corresponding to the current view captured by the camera at a time of receiving the second single user interaction to a second user corresponding to the second contact icon in the face tray. Appeal Br. 5. Specifically, Appellant argues that the Examiner erred when combining the teachings of Cohen and Pratt. Appeal Br. 7–8. According to Appellant, the Examiner did not provide a motivation for the combination, and the combination would change the principle of operation of Cohen.2 Id.; Reply Br. 2–3. The Examiner finds that Pratt teaches selecting and displaying multiple contact icons and Cohen teaches “automatically sharing a camera view in a single interaction.” Ans. 10; see also Final Act. 2–3, 4–5. The Examiner further finds that “it would have been obvious to one of ordinary 2 In the same paragraph, Appellant also argues that Examiner improperly dissects the claim. Appeal Brief 7. We address that argument separately. Appeal 2019-004472 Application 14/561,766 5 skill in the art at the time of filing to include Cohen’s teaching of automatically sharing a camera view in a single interaction with Pratt’s product of displaying multiple contact icons in order to shared digital content with specific contacts and improve speed of delivery of content with multiple displayed contacts on the screen.” Ans. 10–11 (citing Cohen ¶ 5). Rejections based on obviousness must be supported by “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citations omitted), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Supreme Court has determined the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR, 550 U.S. at 418 (2007); id. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. In other words, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. Appellant has not persuaded us that the Examiner erred in identifying a reason why the person having ordinary skill in the art would have modified Pratt in light of Cohen’s teachings. Specifically, Cohen teaches a device Appeal 2019-004472 Application 14/561,766 6 which provides for “improved speed of delivery of digital content (e.g., near realtime upload and near real-time delivery of digital content to all relevant parties).” Cohen ¶ 5. A person having ordinary skill in the art would have used those feature to improve other messaging systems, such at Pratt. We do not find Appellant’s counter arguments persuasive. See Appeal Br. 7–8; Reply Br. 2–3. Appellant improperly focuses narrowly on the disclosure of Cohen while ignoring its broad teachings and suggestions. Our reviewing court guides that “the question under 35 USC § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807–08 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Those suggestions are, in this case, more than the narrow embodiment disclosed in Cohen. Accordingly, we agree with the Examiner that the prior art contains a known solution that have been used to improve one device and that a person of ordinary skill in the art would have recognized that it could have been used to improve other prior art devices in a predicable way. Appellant has not argued that it would have been “uniquely challenging or difficult for one of ordinary skill in the art” to make the modifications suggested by the Examiner. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor are we persuaded that Appellant has established that the proposed modification would result in a change in the principle of operation of the prior art as to make the claimed invention nonobvious. If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or Appeal 2019-004472 Application 14/561,766 7 motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). For example, our reviewing Court held that an invention was not obvious where the prior taught the device required rigidity for operation whereas the claimed invention required resiliency. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). However, as our reviewing court has also explained, the proposition set forth in Ratti is inapplicable where the modified apparatus will operate “on the same principles as before.” See Mouttet, 686 F.3d at 1332 (citing In re Umbarger, 407 F.2d 425, 430–31 (CCPA 1969)). Appellant provides no evidence in support of their argument. Id. “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover, Appellants have not persuasively shown that the modified device will be unsatisfactory for its intended purpose. Cohen teaches improved speed of delivery (Cohen ¶ 5) and the modified product retains that improved speed. Although the combination of Pratt, Cohen, and Raju would limit that improvement to a single contact as opposed to a group, we are not persuaded that results in the device operating on a different principle. Appellant also argues that the Examiner “improperly dissects the claim.” Appeal Br. 7. According to Appellant, “while a first single user interaction in the context of Cohen would send an image to the preselected contacts in a group, a second single interaction would send a second image to the same preselected contacts, in contrast to the claimed method.” Id. Appellant further argues that “[t]he claimed structure is tied to its functionality and, by dissecting the claim in this manner, the Office Action improperly disregards features of the claims.” Id. Appeal 2019-004472 Application 14/561,766 8 We are not persuaded by Appellant’s argument. Appellant’s argument presumes the features from Cohen—sending to a group—will be incorporated into Pratt without any modification. However, the test for obviousness, however, “is not whether the features of a secondary reference can be bodily incorporated into the structure of the primary reference.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Rather, the question is “whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that whether one prior art reference can be incorporated into another is “basically irrelevant.”). Appellant’s argument also improperly focuses on the references individually and does not persuasively address the teachings of the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”); Keller, 642 F.2d at 425 (“The test for obviousness is not whether . . . the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Additionally, Appellant’s argument is not supported by the language recited in the claims. During prosecution, claims must be given their broadest reasonable interpretation while reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable Appeal 2019-004472 Application 14/561,766 9 meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although the claim recites sending a first image to the first user, the claim does not preclude—and is thus broad enough to encompass—sending that image to a group of contacts that includes both the first and second users. See Appeal Br. 11–12 (Claim App’x). Similarly, although a second image must be sent to a second user, the claim does not preclude—and is thus broad enough to encompass—sending the picture to the same group of contacts. Id. Because Appellant’s argument is not commensurate with the scope of the claims, it is unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellant also argues that even if there was a motivation to combine the references, there “is an alternative interpretation of their resulting functionality.” Appeal Br. 8; see also Reply Br. 3, 4. According to Appellant, the references could be combined in a different way that would not result in the claimed invention: For example, by merely replacing the “interface 420” of Cohen with the “contact icons 405” of Pratt while leaving the “shutter button 418”. In this interpretation, one could preselect the “contact icons 405” displayed on the interface and then select the “shutter button 418” to have the image sent to those preselected contacts. In either interpretation, one or more contact are preselected and no contact icon operates as a virtual shutter button, as claimed. It is unconvincing that this particular combination of Pratt and Cohen would be obvious when there Appeal 2019-004472 Application 14/561,766 10 are multiple interpretations of what their resulting combination could be. Appeal Br. 8. We are not persuaded by Appellant’s argument. It is of no moment that there are different ways in which the teachings of the prior art could be combined. The test for obviousness does not require the proposed combination to be the only way of combining the references. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. As discussed above, the Examiner has sufficiently shown that a person having ordinary skill in the art would have modified the references according to the combination shown in the Office Action. No more is required with regard to potential alternate combinations. Appellant also argues that the combination of references in the manner suggested in the Final Action “would not result in a photo sharing application that includes a ranked number of the user’s contacts over a live view of the camera where each contact icon operates as a virtual shutter button of the camera that allows a user to send an image to a user associated with that contact icon.” Appeal Br. 9; see also Reply Br. 4. According to Appellant, the Examiner relied on improper hindsight. Appeal Br. 9–10. We are not persuaded by Appellant’s argument that the Examiner erred. The requirement for a reason to combine the reference acts as a check on the potential for the improper use of hindsight. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated Appeal 2019-004472 Application 14/561,766 11 reasoning “is especially important to guard against the dangers of hindsight bias”). In this case, the Examiner provided a sufficient reason for combining the relevant teachings of Pratt, Cohen, and Raju. See Ans. 10–11 (reason for combining Pratt and Cohen); Final Act. 5–6 (reason for adding Raju). Accordingly, the Examiner did not use impermissible hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”). Accordingly, we sustained the Examiner’s rejection of claim 1, along with the rejection of claims 2–7 and 11–24, which are not separately argued. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). CONCLUSION The Examiner’s rejection is affirmed. Appeal 2019-004472 Application 14/561,766 12 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–7, 11, 12, 16–19, 21–24 103 Pratt, Cohen, Raju 1, 3–7, 11, 12, 16–19, 21–24 2, 15 103 Pratt, Cohen, Raju, Tseng 2, 15 13, 14, 20 103 Pratt, Cohen, Raju, Lee 13, 14, 20 Overall Outcome 1–7, 11–24 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). AFFIRMED Copy with citationCopy as parenthetical citation