Harmannus Vandermolen et al.Download PDFPatent Trials and Appeals BoardApr 10, 202012839767 - (D) (P.T.A.B. Apr. 10, 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. 12/839,767 07/20/2010 Harmannus Vandermolen 19487.234.1 8838 107193 7590 04/10/2020 Keller Jolley Preece/Facebook 1010 North 500 East Suite 210 North Salt Lake, UT 84054 EXAMINER MINA, FATIMA P ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 04/10/2020 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): docketing@kjpip.com gjolley@kjpip.com ljohnson@kjpip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARMANNUS VANDERMOLEN, CHARLES FISH, KAREN HOWE, PAUL VIDICH, and SCOTT J. LEVINE Appeal 2018-007117 Application 12/839,767 Technology Center 2100 Before JOHNNY A. KUMAR, LARRY J. HUME, and SCOTT E. BAIN Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–3, 5, 6, 10, 12–14, 16–27, and 29–35, which constitute all claims pending in the application. Claims 4, 7–9, 11, 15, and 28 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Facebook, Inc. Appeal Br. 1. Appellant also identifies related appeals for Application 13/612,839 (Appeal 2016-002495) and Application 13/836,745 (Appeal 2018-000285). Id. Appeal 2018-007117 Application 12/839,767 2 BACKGROUND The Claimed Invention Appellant’s claimed invention relates to identifying content in a document that is significant to a user. Spec. 1. In one embodiment, a “floating ‘I Like This’ button” is presented to a user, permitting the user to signify that a document contains content of interest to the user. Id. 4–5, Figs. 2, 3. When the user identifies interest in the document, such as by selecting the floating “I Like This” button, the document is analyzed to identify the topics within the document, and the user’s profile is updated based on those topics. Id. 5–6. Claims 1 and 35 are independent. Claim 1 is representative of the invention and the subject matter in dispute, and reads as follows: 1. A method comprising: maintaining a user profile associated with a user; presenting, to the user, a web page including a user selectable element selectable using a single action to indicate interest in a portion of electronic content displayed within the web page, wherein the user selectable element is separate from the portion of the electronic content within the web page; while presenting the web page including the portion of electronic content displayed within the web page, receiving a selection from the user of the user selectable element within the presented web page, the selection comprising the single action; upon receiving the selection from the user and without additional action by the user, analyzing the portion of electronic content displayed within the web page to identify one or more topics related to the portion of electronic content displayed within the web page; and updating the user profile associated with the user based on the identified one or more topics. Appeal Br. 27 (Claims Appendix) (emphases added). Appeal 2018-007117 Application 12/839,767 3 References The references relied upon by the Examiner are: Name Reference Date Gounares et al. (“Gounares”) US 6,681,370 B2 Jan. 20, 2004 Kredo et al. (“Kredo”) US 6,823,370 B1 Nov. 23, 2004 Sherry US 7,053,938 B1 May 30, 2006 Singer et al. (“Singer”) US 2002/0198859 A1 Dec. 26, 2002 Wyler US 2005/0055420 A1 Mar. 10, 2005 Achlioptas US 2005/0071479 A1 Mar. 31, 2005 Kurzweil et al. (“Kurzweil”) US 2006/0071950 A1 Apr. 6, 2006 Whitney et al. (“Whitney”) US 2006/0179051 A1 Aug. 10, 2006 Kaku et al. (“Kaku”) US 2007/0067157 A1 Mar. 22, 2007 Forstall et al. (“Forstall”) US 2007/0101297 A1 May 3, 2007 Elgazzar et al. (“Elgazzar”) US 2007/0130563 A1 June 7, 2007 The Rejections on Appeal Claims 1–3, 5, 10, 13, 14, 20–22, 25–27, 31, 33, and 35 stand rejected under pre-AIA 35 U.S.C. § 103 as being unpatentable over Singer, Wyler, and Forstall. Final Act. 4–10. Claims 6, 23, 24, and 34 stand rejected under pre-AIA 35 U.S.C. § 103 as being unpatentable over Singer, Wyler, Forstall, and Achlioptas. Final Act. 10–12. Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103 as being unpatentable over Singer, Wyler, Forstall, and Elgazzar. Final Act. 12–13. Claims 16–18 stand rejected under pre-AIA 35 U.S.C. § 103 as being unpatentable over Singer, Wyler, Forstall, and Gounares. Final Act. 13–15. Appeal 2018-007117 Application 12/839,767 4 Claim 19 stands rejected under pre-AIA 35 U.S.C. § 103 as being unpatentable over Singer, Wyler, Forstall, Gounares, Kurzweil, and Kredo. Final Act. 16–17. Claim 29 stands rejected under pre-AIA 35 U.S.C. § 103 as being unpatentable over Singer, Wyler, Forstall, and Sherry. Final Act. 17–18. Claim 30 stands rejected under pre-AIA 35 U.S.C. § 103 as being unpatentable over Singer, Wyler, Forstall, and Whitney. Final Act. 18–19. Claim 32 stands rejected under pre-AIA 35 U.S.C. § 103 as being unpatentable over Singer, Wyler, Forstall, and Kaku. Final Act. 19–20. DISCUSSION We have reviewed the Examiner’s rejections in light of Appellant’s arguments presented in this appeal. Arguments which Appellant could have made but did not make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). For the reasons explained below, we are persuaded of error on the record before us. Claims 1 and 35 Appellant argues the Examiner erred in finding the prior art teaches or suggests “upon receiving the selection from the user [of the user selectable element indicating interest] and without additional action by the user, analyzing the portion of electronic content displayed within the web page to identify one or more topics related to the portion of electronic content displayed within the web page,” as recited in claim 1. Appeal Br. 14–15; Reply Br. 2–3. Specifically, Appellant argues the Examiner relies on Singer for this limitation, but that Singer only teaches or suggests analyzing a web page in advance of any user action, such as to determine potential URLs Appeal 2018-007117 Application 12/839,767 5 (“hot links”) that could be associated with text in the page, irrespective of any user action. Reply Br. 2–3. Appellant argues that this predetermined analysis in Singer is not “upon receiving” any selection from the user, as recited in claim 1. Id. We agree. As Appellant argues, the Examiner relies on Singer as teaching or suggesting the disputed limitation. Specifically, the Examiner cites Figure 3 of Singer, reproduced below. Figure 3 is an illustration of a web page including text from a press release. Singer ¶ 25. The web page includes “anchor candidate 30a” (illustrated as the text “IBM”), and associated “dialog box 42.” Singer ¶¶ 35–36. Dialog box 42 is a presentation of one or more topics for “association” with the anchor candidate, shown in Figure 3 to be two URLs (“hot links 40”) that may correspond to IBM. Id. Appeal 2018-007117 Application 12/839,767 6 As the Examiner finds, Figure 3 (as well as Figure 2, which is similar) illustrates that some “analysis” of the text within the document (which could be a web page) has occurred. Ans. 3–4. Namely, certain “anchor candidates” have been identified and are “highlighted in accordance with rules” associated with the web page, such as the highlighting of “trademarks or words used for hot links.” Singer ¶¶ 35–36. These findings, however, do not demonstrate a teaching or suggestion of the disputed claim limitation. Specifically, as Appellant argues, the Examiner identifies no teaching or suggestion of “analyzing . . . content displayed within the web page” that occurs “upon receiving the selection from the user [indicating interest],” as recited in claim 1. (Emphasis added). In the foregoing embodiment of Singer, the anchor candidates and potential hot links already have been determined prior to any user action that is described. Singer also discloses that the user may “make a selection” of a hot link among those shown in Figure 3 (item 40, i.e., “www.ibm.com” or “w3.ibm.com”), but the Examiner does not explain (and we do not discern) how that selection of a hot link results in “analyzing [any] electronic content” within the web page to identify topics, as recited in claim 1. Although the Examiner’s rejection also cites Forstall and Wyler, the Examiner does not rely on either of those references (alone or in combination with Singer) as teaching any elements in the disputed limitation. Accordingly, for the foregoing reasons, we are persuaded of error regarding the obviousness rejection of claim 1. For the same reasons, we are persuaded of error regarding the same rejection of independent claim 35, which includes limitations commensurate in scope with the disputed Appeal 2018-007117 Application 12/839,767 7 limitation of claim 1. We, therefore, do not sustain the obviousness rejection of claims 1 and 35. Remaining Claims Remaining claims 2, 3, 5, 6, 10, 12–14, 16–27, and 29–34 are dependent, and there is no evidence of record that the additional references cure the deficiencies described above regarding independent claims 1 and 35. Accordingly, for the same reasons as discussed above, we are persuaded of error as to the obviousness rejections of claims 2, 3, 5, 6, 10, 12–14, 16–27, and 29–34, and we do not sustain the rejections of those claims. SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5, 10, 13, 14, 20– 22, 25–27, 31, 33, 35 103 Singer, Wyler, Forstall 1–3, 5, 10, 13, 14, 20– 22, 25–27, 31, 33, 35 6, 23, 24, 34 103 Singer, Wyler, Forstall, Achlioptas 6, 23, 24, 34 12 103 Singer, Wyler, Forstall, Elgazzar 12 16–18 103 Singer, Wyler, Forstall, Gounares 16–18 19 103 Singer, Wyler, Forstall, Gounares, Kurzweil, Kredo 19 29 103 Singer, Wyler, Forstall, Sherry 29 30 103 Singer, Wyler, Forstall, Whitney 30 Appeal 2018-007117 Application 12/839,767 8 32 103 Singer, Wyler, Forstall, Kaku 32 Overall Outcome 1–3, 5, 6, 10, 12–14, 16–27, 29– 35 DECISION We reverse the Examiner’s decision rejecting claims 1–3, 5, 6, 10, 12–14, 16–27, and 29–35. REVERSED Copy with citationCopy as parenthetical citation