Facebook, Inc.

Patent Trials and Appeals Board

Nov 25, 2020

2019004472 (P.T.A.B. Nov. 25, 2020)

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.
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Application 14/561,766

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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
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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:
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[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.
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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
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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
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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.
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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
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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
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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
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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.
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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