Ex Parte 8135801 et al

Patent Trial and Appeal Board

Oct 30, 2014

95001989 (P.T.A.B. Oct. 30, 2014)

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.
95/001,989 05/14/2012 8135801 309101-251 1095
31825 7590 10/30/2014
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FACEBOOK, INC.,
Requester,

v.

WIRELESS INK CORP.,
Patent Owner.
____________

Appeal 2014-007363
Reexamination Control 95/001,989
Patent 8,135,801 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, DENISE M. POTHIER, and
ANDREW J. DILLON, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
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Reexamination Control 95/001,989
Patent 8,135,801 B2

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Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 1–31 over various grounds. PO App. Br. 5–6.
Requester appeals the Examiner’s decision not to adopt the rejection of
claim 14 as anticipated by a specific embodiment allegedly disclosed by
Neibauer or Hill. 3PR App. Br. 5. We have jurisdiction under 35 U.S.C.
§§ 134 and 315. An oral hearing was conducted on October 1, 2014.

STATEMENT OF THE CASE
This proceeding arose from a May 14, 2012 request by Facebook, Inc.
(“Requester”) for an inter partes reexamination of claims of U.S. Patent
8,135,801 B2, titled “Method, Apparatus and System for Management of
Information Content for Enhanced Accessibility Over Wireless
Communication Networks” and issued to David Walker Harper, Jason James
Sabella, and William Henry Munch, on March 13, 2012 (“the ’801 Patent”).
The ’801 patent describes a method and system for information
content management. ’801 Patent Spec. 1:19–20.

Claim 1 reads as follows:

1. A method for managing information content in a
network-based communication system, the method comprising
the steps of:
providing a first web-based interface accessible to a first user,
the first web-based interface being configured to permit the first user
to designate a plurality of other users that will share access to content
with the first user, in accordance with accessibility rules established
by the first user; and
generating a second web-based interface wherein access to the
content via the second web-based interface is controlled in accordance
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with the accessibility rules established by the first user via the first
web-based interface;
wherein the first user mutually consents with each of the
plurality of other users to share access to the content via the second
web-based interface to the exclusion of additional users not
designated by the first user.

The cited references are as follows:

Douvikas US 6,691,158 B1 Feb. 10, 2004
Sutherland US 2002/0120757 A1 Aug. 29, 2002
Cheng US 7,574,486 B1 Aug. 11, 2009

David Fox and Troy Downing, WEB PUBLISHER’S CONSTRUCTION KIT
WITH HTML 3.2 (1996) (“Fox”).

Posting of Rich Hoeg to
http://groups.google.com/group/rec.music.makers.squeezebox/msg/bad6 . . .
entitled “Virtual Accordion Clubs from Yahoo!” (December 1, 1998) (“Club
Invite”).

Alan Neibauer, HOW TO DO EVERYTHING WITH YAHOO! (2000)
(“Neibauer”).

Brad Hill, YAHOO! FOR DUMMIES (2nd ed. 2001) (“Hill”).

Patent Owner appeals the Examiner’s rejections of claims 1–13, 15–
22, and 26–31 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement; claims 1, 3–9, 12–15, 17–19, 21,
22, 27, and 28 under 35 U.S.C. § 102(b) as anticipated by Neibauer; claims
1, 3–9, 12–15, and 17–19 under 35 U.S.C. § 102(b) as anticipated by Hill;
claims 1, 3–13, 15, 17–22, 27, 28, 30, and 31 under 35 U.S.C. § 102(b) as
anticipated by Sutherland; claims 1–9, 12, 13, 15–19, and 21–28 under 35
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U.S.C. § 103(a) as unpatentable over Neibauer; claims 11, 20, 30, and 31
under 35 U.S.C. § 103(a) as unpatentable over Hill and Douvikas; claims 20
and 29–31 under 35 U.S.C. § 103(a) as unpatentable over Neibauer and
Douvikas; claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over
Neibauer and Club Invite; claims 2, 16, 23–26, and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Sutherland and Cheng; claim 5 under 35
U.S.C. § 103(a) as unpatentable over Sutherland and Fox; and claims 10 and
12 under 35 U.S.C. § 103(a) as unpatentable over Sutherland and Neibauer.
Requester appeals the Examiner’s non-adoption of the rejection of
claim 14 under 35 U.S.C. § 102(b) as anticipated by any one of Neibauer
and Hill with respect to the so-called “Yahoo! Briefcase embodiment” (see
below).
ISSUE

Did the Examiner err in rejecting claims 1–31 and by failing to adopt
one of Requester’s proposed rejections of claim 14?

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
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(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

35 U.S.C. 112, first paragraph – Written Description – Patent Owner’s
Appeal

Claims 1, 17, and 20, as amended, recite “wherein the first user
mutually consents with each of the plurality of other users to share access to
the content via the second web-based interface to the exclusion of additional
users not designated by the first user.” Claim 16 recites “access to content at
the second web site . . . is restricted to the first user and a plurality of other
users designated by the first user that have mutually consented with the first
user to share said content at the second web site.”
The Examiner finds that “[t]he ’801 specification does not support the
added limitation: ‘wherein the first user mutually consents with each of the
plurality of other users to share access to the content via the second web-
based interface to the exclusion of additional users not designated by the
first user.’” RAN 11, 14.
Patent Owner argues that “the limitations at issue are extensively
described and supported [at] column 6, lines 7–26, column 7, lines 19–32,
column 11, lines 3–52, column 16, lines 45–54 and FIGS. 2, 3, 11, 22, 24f
and 24g” of the ’801 patent and that “specific portions [that] are cited . . . are
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not exhaustive of the detailed support for the [disputed] limitations.” PO
App. Br. 7. Upon review, the ‘801 Patent’s Specification discloses that a
“registered user may be permitted to elect to share his or her . . . information,
or other types of user information, with other users” in which “an email
message is sent to . . . [registered] individuals” through which those
individuals “will be given the option of accepting or declining the
information sharing proposal.” The ’801 Patent Spec., 11:26–28, 33–37. In
other words, the ’801 Patent’s Specification discloses a first user mutually
consenting with each of the plurality of other users (via an email through
which the other users may “consent” to access by opting to accept “the
information sharing proposal”) to share access to the content via the second
web-based interface to the exclusion of additional users not designated by
the first user.
The Examiner and Requester focus on the language of “to the
exclusion of additional users not designated by the first user” found in
claims 1, 17, and 20. RAN 9–10, 13–14. In particular, given the disclosure
of the’801 patent, we find that if the intent of the discussion in column 11 of
the ’801 patent was to share content with all users, including those who are
not proposed by the first user for sharing information, then why would the
software bother sending email messages to invited users to accept or deny
the information in the first instance. We find that this disclosure reasonably
conveys to an ordinarily skilled artisan that the inventor had possession of
the phrase, “to the exclusion of additional users not designated by the first
user” at the time of the invention.
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The Examiner erred in rejecting claims 1–13, 15–22, and 26–31 under
35 U.S.C. 112, first paragraph, as failing to comply with the written
description requirement.

Anticipation Rejection Based on Neibauer – Patent Owner’s Appeal

Representative claim 14 recites a first web-based interface being
configured to permit the first user to designate a plurality of other users that
will share access to content with the first user, in accordance with
accessibility rules established by the first user and a second web-based
interface that is controlled in accordance with the accessibility rules
established by the first user via the first web-based interface.
Patent Owner argues that Neibauer fails to disclose “that access to
content via a second web-based interface is controlled in accordance with
the accessibility rules established by the first user” because “[u]pon joining
the given club [in Neibauer], such additional members can obtain access to
content associated with the club without mutual consent of other club
members, including club founders.” PO App. Br. 11–12. We are not
persuaded by Patent Owner’s arguments for at least the reasons set forth by
Requester. 3PR Resp. Br. 6–13.
For example, Neibauer discloses an “unlisted club” that “is private.”
Neibauer, Chapter 21, p. 473. The “unlisted club” is one in which “members
who were invited to join may join the club and be able to access it” and “is
ideal for sharing private information.” Id. In other words, Neibauer
discloses a plurality of other users (i.e., member invited to join the club by a
“first” user) that have exclusive access to content (i.e., invited members are
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able to access the data content) relative to users not in the group (i.e., users
who are not invited to join the club do not have access to the data content).
Patent Owner argues that Neibauer fails to disclose “a group of
members that relative to users not in the group have exclusive access to
content” because “any club member . . . can invite numerous additional
members.” PO App. Br. 13. As previously discussed, Neibauer discloses an
“unlisted club” in which “members who were invited to join may join the
club and be able to access it.” Neibauer, Chapter 21, p. 473. Given this
disclosure, if members who are invited to join the club may access the club
content, then those users who were not invited to join the club cannot access
the club content. Patent Owner does not explain sufficiently a difference
between Neibauer and the claim requirement of a plurality of other users that
“have exclusive access to said content” “relative to users not in said group.”
In both cases, a selected group of users is granted access to content while
another (not selected) group of users is not granted access to the content.
Even assuming that Patent Owner’s contention that Neibauer discloses
that “any club member . . . can invite numerous additional members” (PO
Resp. Br. 9) is true, Patent Owner does not demonstrate sufficiently that
claim 14, for example, requires this feature. We note that claim 14, for
example, does not require that the plurality of other users are not permitted
to “invite numerous additional members.” (Id.)
Patent Owner argues that Neibauer discloses “scenario 2” in which
“User A founds an unlisted club, and invites user B to join the unlisted club.
User B accepts the invitation,” which allegedly differs from the claim
limitation of controlling a second interface in accordance with accessibility
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rules established by the first user via the first web-based interface because
“user A has no ability to prevent user B from inviting other users to the
club.” PO App. Br. 13. We disagree with Patent Owner for at least the
reasons set forth by Requester. 3PR Resp. Br. 7. For example, claim 14
recites a second web-based interface controlled in accordance with the
accessibility rules established by the first user. Claim 14 does not recite that
the user must have the ability to prevent other users from inviting other users
to the club. Therefore, we are not persuaded that Neibauer’s alleged
disclosure of user A having no ability to prevent user B from inviting other
users, even if true, is relevant to whether Neibauer discloses (or suggests)
the claimed invention.
Patent Owner provides similar arguments for claims 1 and 17 (PO
App. Br. 14) and does not provide additional arguments in support of claims
3–9, 12, 13, 15, 18, 19, 21, 22, 27, and 28. The Examiner did not err in
rejecting claims 1, 3–9, 12–15, 17–19, 21, 22, 27, and 28 as anticipated by
Neibauer.

Obviousness Rejection based on Neibauer – Patent Owner’s Appeal

Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art “for combining the Yahoo! Clubs and Yahoo!
Briefcase systems [of Neibauer]” because such a combination “would
frustrate the intended purpose and principle of operation” of both Yahoo!
Briefcase and Yahoo! Clubs. PO App. Br. 15–17. Patent Owner also argues
that it would not have been obvious to one of ordinary skill in the art to
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modify Neibauer because of “Neibauer’s utter lack of any suggestion to do
so.” PO App. Br. 19.
We are not persuaded by Patent Owner’s arguments. For example, as
the Examiner points out, Neibauer discloses that in the “Briefcase”
embodiment, users are granted access to content and “[o]nly those persons
will be able to download the files.” RAN 29 (citing Neibauer 163). Claim 1
recites that the first user mutually consents with each of the plurality of users
to share access to the content. It would have been obvious to one of
ordinary skill in the art that if a first user grants access to content for other
users, then the first user would have “consented” to the other users accessing
the content. If not, then the first user would not have granted access to the
other users in the first place. Similarly, it would have been obvious to one of
ordinary skill in the art that if the other users that are granted access by the
first user then access the content to which they have been granted access, as
disclosed by Neibauer (“Briefcase” embodiment), then the other users would
have “consented” to having access to the content. Otherwise, it would not
have made logical sense for users not having consented to having access to
the content to then access the content – a specific action to which the users
did not consent. Given that both the first user and the other users consent to
sharing access to the content, it would have been obvious to one of ordinary
skill in the art that that the first user “mutually” consents with each of the
other users to share access to the content because all parties have, in fact,
consented.
The Examiner also points out that the “Clubs” embodiment of
Neibauer further emphasizes that a first user mutually consenting with other
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users to share access to content would have been obvious to one of ordinary
skill in the art. The Examiner indicates that, in the “Clubs” embodiment of
Neibauer, a first user “invites users to join its club.” RAN 28. Patent Owner
does not demonstrate sufficiently a difference between a first user inviting
other users to join a club (i.e., “Clubs” embodiment) and a first user granting
access to other users to download (or access) content (“Briefcase”
embodiment, see discussion above). In both cases, a first user is granting
access to content to another user. In the “Briefcase” embodiment, the first
user and the other users, after having been granted access to content by the
first user, each demonstrate “consent” to the access to the content by
subsequently accessing the content. In the “Clubs” embodiment, the
“mutual consent” to access to content is made explicit by providing that the
other users may “click Yes! I Accept” to express consent. RAN 28 (citing
Neibauer, 475).
As the Examiner indicates, it would have been obvious to one of
ordinary skill in the art to have combined one known process (i.e., a process
of granting access to content for other users where mutual consent is implied
by actually accessing the content) with another known process (i.e., a similar
process in which mutual consent is explicit by asking the other users who are
granted access to the content to specify whether they actually accept access
to the data) to achieve a predictable result of a system in which a first user
grants access to content for other users where the users “mutually consent”
to the access. See, e.g., RAN 29.
Patent Owner does not provide additional arguments in support of
claims 16 or 17.
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Claim 2 recites that the first web-based interface comprises a content
management web site and the second web-based interface comprises a
mobile web site accessible independently of the content management web
site via one or more mobile device. Claims 23 and 26 recite similar features.
Patent Owner argues Neibauer “describes Yahoo! Briefcase and Yahoo!
Mobile as separate and distinct systems” and that “the Examiner has erred in
failing to show any suggestion, motivation or rationale for combining these
distinct systems.” PO App. Br. 21. We disagree with Patent Owner for at
least the reasons set forth by the Requester. 3PR Resp. Br. 13. For example,
as Requester points out, “mobile devices and mobile web sites were known
to those of ordinary skill in the art well before the filing date of the ’801
patent” and the combination of known elements performing their known
functions to achieve a predictable result would have been obvious to one of
ordinary skill in the art. Id. Patent Owner does not refute this argument
persuasively.
Patent Owner does not provide additional arguments in support of
claims 3–9, 12, 13, 15, 18, 19, 21, 22, 24, 25, 27, and 28. The Examiner did
not err in rejecting claims 1–9, 12, 13, 15–19, and 21–28 as obvious over
Neibauer.

Remaining Rejections Based on Neibauer and Other References
Patent Owner does not provide additional arguments in support of
claims 10, 11, 20, and 29–31, or additional arguments with respect to
Douvikas or Club Invite. Therefore, for the above reasons, we are not
persuaded the Examiner erred in rejecting claims 10, 11, 20, and 29–31.
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Other Rejections

Affirmance of the rejection for the above-referenced claims based on
Neibauer renders it unnecessary to reach the propriety of the Examiner’s
decision either to reject those claims on a different basis or not to adopt the
rejection of those claims on a different basis. Cf. In re Gleave, 560 F.3d
1331, 1338 (Fed. Cir. 2009). As such, we need not reach the propriety of the
rejection of those claims over Hill or Sutherland or the propriety of the
non-adoption of the rejection of those claims (e.g., claim 14) over an
alternate embodiment of Neibauer.

CONCLUSION
The Examiner erred in rejecting claims 1–13 and 15–31 under 35
U.S.C. 112, first paragraph, as failing to comply with the written description
requirement but did not err in rejecting claims 1, 3–9, 12–15, 17–19, 21, 22,
27, and 28 under 35 U.S.C. § 102(b) as anticipated by Neibauer; claims 1–9,
12, 13, 15–19, and 21–28 under 35 U.S.C. § 103(a) as unpatentable over
Neibauer; claims 20 and 29–31 under 35 U.S.C. § 103(a) as unpatentable
over Neibauer and Douvikas; and claims 10 and 11 under 35 U.S.C. § 103(a)
as unpatentable over Neibauer and Club Invite.

DECISION
We affirm the Examiner’s rejection of claims 1–31 but we reverse the
Examiner’s rejection of claims 1–13 and 15–31 under 35 U.S.C. 112, first
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paragraph, as failing to comply with the written description requirement.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

alw

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PATENT OWNER:

Ryan, Mason & Lewis, LLP
90 Forest Avenue
Locust Valley, NY 11560

Joseph B. Ryan
Ryan, Mason & Lewis, LLP
48 South Service Road
Suite 100
Melville, NY 11747

THIRD PARTY REQUESTER:

Cooley LLP
Heidi L. Keefe
ATTN: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004