Harmannus Vandermolen et al.

Patent Trials and Appeals Board

Apr 10, 2020

12839767 - (D) (P.T.A.B. Apr. 10, 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.
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
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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
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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
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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
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(“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.
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Application 12/839,767
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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
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Application 12/839,767
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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
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Application 12/839,767
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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