Ex Parte Cheah

Patent Trial and Appeal Board

Jun 12, 2018

13615062 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/615,062 09/13/2012 Chris Cheah
91230 7590 06/14/2018
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
079894.1151 9586
EXAMINER
STITT, ERIK V
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
06/14/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS CHEAH
Appeal2017-002512 1
Application 13/615,062
Technology Center 2100
Before ERIC S. FRAHM, KRISTEN L. DROESCH, and
JOHN D. HAMANN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE2
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 25, 26, 28-35, and 37--43. Claims 1-24, 27, and 36 have been
1 Appellant identifies Facebook, Inc. as the real party in interest. App. Br. 2.
2 We note that the instant application on appeal is related to twelve other
applications also on appeal, all having the same inventive entity (Chris
Cheah) and assignee (Facebook, Inc.). The related applications are as
follows: U.S. Patent Application No. 12/258,299 and Appeal No. 2016-
006539 decided Feb. 23, 2017 (affirmed-in-part); U.S. Patent Application
No. 13/609,041 and Appeal No. 2017-002678 decided August 17, 2017
(affirmed-in-part); U.S. Patent Application No. 14/599,216 and Appeal No.
2017-002157 decided January 16, 2018 (affirmed); U.S. Patent Application
Appeal2017-002512
Application 13/615,062
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-
PART.
Disclosed Field of Invention
Appellant discloses a method and system for controlled distribution of
information, such as electronic business cards or contact information, over a
network. Spec. ,r,r 3-8; Abst.; see generally Figs. 1-3. More specifically,
Appellant discloses and claims a method ( claim 1 ), software operable to
perform the method ( claim 34 ), and a system ( claim 40) for receiving
(i) group categorizations created by a first user of an information
management and distribution system; and (ii) user-selectable settings of each
of the group categorizations indicating information of the first user that may
be exchanged with a plurality of second users assigned by the first user to
No. 12/268,981 and Appeal No. 2017-008051 decided January 29, 2018
(affirmed); U.S. Patent Application No. 12/258,295 and Appeal No. 2017-
002384 decided Feb. 22, 2018 (affirmed); U.S. Patent Application No.
12/258,302 and Appeal No. 2017-002070 decided March 28, 2018
(affirmed-in-part); U.S. Patent Application No. 13/618,881 and Appeal No.
2017-002456; U.S. Patent Application No. 13/612,619 and Appeal No.
2017-002455; U.S. Patent Application No. 13/612,606 and Appeal No.
2017-002088; U.S. Patent Application No. 11/840,968 and Appeal No.
2017-009638; U.S. Patent Application No. 13/610,560 and Appeal No.
2017-008097; and U.S. Patent Application No. 13/612,584 and Appeal No.
2017-008113.
2
Appeal2017-002512
Application 13/615,062
particular group categorizations. Spec. Fig. 18J; ,r,r 88, 90; claims 25, 34,
and 40.
Exemplary Claims
Exemplary claims 25 and 30, with bracketed lettering (indicating
disputed limitations A, B, and C) and emphases added to disputed portions
of the claims, read as follows:
25. A method comprising:
receiving, by one or more processors associated with an
information management and distribution system, two or more
group categorizations created by a first user of the information
management and distribution system, the information
management and distribution system being configured to
exchange information between the first user and a plurality of
second users;
receiving, by the one or more processors, information
associated with the first user;
[A] receiving from the first user. by the one or more
processors, a designation of which one of the two or more
group categorizations should be assigned to each of the second
users;
[BJ receiving. by the one or more processors from the
first user, user-selectable settings o(each o(the two or more
group categorizations created by the first user. the user-
selectable settings of each particular group categorization
indicating which portions of the received information of the
first user may be exchanged with second users who have been
assigned by the first user to the particular group
categorization; and
sending, by the one or more processors, portions of the
received information to the second users according to the user-
3
Appeal2017-002512
Application 13/615,062
selectable settings of the group categorizations from the first
user.
30. The method of Claim 25, further comprising:
[CJ presenting an interface for a user to manage group
categorizations.
The Examiner's Rejections
(1) The Examiner rejected claims 25, 26, 28-30, 32-35, and 37--43
under 35 U.S.C. § I03(a) as being obvious over the combination of
Robertson (US 6,269,369 Bl; issued July 31, 2001) and Govindarajan (US
6,006,234; issued Dec. 21, 1999). Final Act. 4--9.
(2) The Examiner rejected claim 31 under 35 U.S.C. § I03(a) as
being obvious over the combination of Robertson, Govindarajan, and
Rasansky. 3 Final Act. 9-10.
Claims at Issue
With regard to the rejection over Robertson and Govindarajan,
Appellant does not present separate arguments regarding the patentability of
claims 25, 26, 28, 29, 32-35, and 37--43, and instead relies on the arguments
presented as to claim 25 (see generally App. Br. 8-13; Reply Br. 2-6).
3 The Examiner rejects claim 31 over the base combination of Robertson and
Govindarajan "in further view of Rasanskly et al. ("Rasansky", 6 960, 406)"
(Final Act. 9). The Examiner relies on the Abstract, Figure 14, and column
2 of Rasansky as disclosing a profile user interface with a password control
setting to access a user's calendar (Final Act. 9-10). However, USPN
6,960,406 was issued to Ovshinsky et al., has only 3 figures, and concerns
fuel cells and batteries having an electrode including fluorinated carbon.
Because Appellant does not dispute the rejection of claim 31, and as a result
the merits of Rasansky are not in dispute, we summarily sustain the
Examiner's rejection of claim 31 and leave it to the Examiner to correct this
issue in the event of further prosecution.
4
Appeal2017-002512
Application 13/615,062
Independent claims 34 (computer-readable storage media including software
to perform the method) and 40 ( system with memory and processors to
perform the method) recite similar subject matter, including receiving
(i) group categorizations created by a first user of an information
management and distribution system; and (ii) user-selectable settings of each
of the group categorizations indicating information of the first user that may
be exchanged with a plurality of second users assigned by the first user to
particular group categorizations, as recited in limitations [ A J and [BJ of
claim 25. We select independent claim 25 as representative of the group of
claims consisting of claims 25, 26, 28, 29, 32-35, and 37--43 rejected as
being obvious over Robertson and Govindarajan.
Because Appellant does not present separate arguments as to the
obviousness rejections of claim 31 over Robertson, Govindarajan, and
Rasansky (see App. Br. 8-13; Reply Br. 2---6), the outcome of these
rejections stand or fall with the outcome for representative claim 25 from
which claim 31 ultimately depends.
Accordingly, only claims 25 and 30 are at issue, and our analysis
addresses representative claim 25, and dependent claim 30 separately argued
by Appellant (see App. Br. 14--15; Reply Br. 6-7).
Issues on Appeal
Based on Appellant's arguments in the Briefs (App. Br. 7-14; Reply
Br. 2-9), the following principal issues are presented on Appeal:
(1) Did the Examiner err in rejecting claims 25, 26, 28, 29, 32-35,
and 37--43 under 35 U.S.C. § 103(a) as being obvious over Robertson and
Govindarajan because the combination fails to teach or suggest limitations
[AJ and/or [BJ, as recited in representative independent claim 25?
5
Appeal2017-002512
Application 13/615,062
(2) Did the Examiner err in rejecting claim 30 under
35 U.S.C. § 103(a) as being obvious over the combination of Robertson and
Govindarajan, because Robertson fails to teach or suggest limitation [CJ
supra, including a user interface for managing group categorizations, as
recited in dependent claim 3 O?
ANALYSIS
We have reviewed Appellant's arguments in the Briefs (App. Br.
8-16; Reply Br. 2-8), the Examiner's rejection (Final Act. 4--10), and the
Examiner's response (Ans. 3-7) to Appellant's arguments.
Obviousness Rejection of Claims 25, 26, 28, 29, 32-35, and 37--43
With regard to representative claim 25, we adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 4--6); and (2) the reasons set forth by the
Examiner in the Examiner's Answer in response to Appellant's Appeal Brief
(see Ans. 3---6). We concur with the conclusions reached by the Examiner
with regard to the obviousness of claim 25 over Robertson and
Govindarajan. We are not persuaded by Appellant's contentions (App. Br.
8-13; Reply Br. 2---6) that the Examiner erred in rejecting claim 25, and we
find the combination of Robertson and Govindarajan teaches or suggests
limitations [AJ and [BJ as recited in claim 25. We provide the following
discussion/analysis for emphasis.
Limitation [Al
Limitation [ A J recites in pertinent part, "receiving from the first user,
by the one or more processors, a designation of which one of the two or
more group categorizations should be assigned to each of the second users."
6
Appeal2017-002512
Application 13/615,062
With regard to limitation [A], we agree with the Examiner (Final Act.
4---6; Ans. 3--4) that (i) Robertson (Fig. 8, group items 580-6 and 580-8; col.
2, 11. 58---61; col. 7, 11. 51-56; see also col. 7, 1. 5) discloses receiving a
designation of one of two or more group categorizations to assign to a user,
e.g., GUI 580 allows a user to designate a group category 580-6 of school
attended; and (ii) Govindarajan (col. 5, 11. 8-11; col. 7, 11. 5-9, 22-33)
discloses allowing users to create and establish (i.e., manage) memberships
for logical groups according to the user's needs so as to set permission
policies. As a result, we also agree with the Examiner's determination that
Robertson, when modified with Govindarajan's logical group management,
teaches or suggests "receiving from the first user ... a designation of which
one of the two or more group categorizations should be assigned to each of
the second users," as recited in claim 25.
Appellant's arguments presented as to each individual reference (see
App. Br. 8-10; Reply Br. 2-3) are not persuasive inasmuch as the Examiner
relies on a properly made combination of Robertson and Govindarajan to
support the conclusion of obviousness of the subject matter of independent
claim 25. Appellant has not rebutted or otherwise shown the Examiner's
explanation of the combination of the collective teachings and suggestions
of the applied references (see Final Act. 4---6; Ans. 2-3) made in response to
the Appellant's arguments in the Appeal Brief (regarding the references
individually or in pairs) to be in error. Appellant's Reply Brief does not
persuade us otherwise.
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
7
Appeal2017-002512
Application 13/615,062
(finding one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references).
In this light, Appellant's arguments as to representative independent claim
25 (App. Br. 8-10; Reply Br. 2-3) concerning the individual shortcomings
in the teachings of Robertson and Govindarajan are not persuasive, and,
therefore, are not persuasive of the non-obviousness of the claimed invention
set forth in representative independent claim 25.
In view of the foregoing, Appellant's contentions (App. Br. 8-10;
Reply Br. 2-3) that the combination of Robertson and Govindarajan does
not disclose limitation [ A J are conclusory and not persuasive.
Limitation [BJ
Limitation [BJ recites in pertinent part, "receiving, by the one or more
processors from the first user, user-selectable settings of each of the two or
more group categorizations created by the first user, the user-
selectable settings of each particular group categorization indicating which
portions of the received information of the first user may be exchanged with
second users who have been assigned by the first user to the particular group
categorization."
With regard to limitation [BJ, we agree with the Examiner (Final Act.
5-6; Ans. 4--5) that (i) Robertson (Fig. 9) discloses assigning permissions to
a user, e.g., whether work or personal information is shared with a particular
user; and (ii) Govindarajan (col. 7, 11. 5-9; see also col. 7, 11. 22-33)
discloses allowing users to group users based on similar permissions access,
i.e., setting group level permissions. Specifically, Govindarajan describes an
example ( col. 7, 11. 22-33) where a CEO of a company can establish a group
G 1 for data the CEO can access (i.e., a permission level and group), and
8
Appeal2017-002512
Application 13/615,062
other logical groups G2---G5 for permission levels for vice presidents,
managers, engineers, and receptionists. As a result, we also agree with the
Examiner's determination that Robertson, when modified with
Govindarajan's logical group and permission management, teaches or
suggests limitation [BJ as recited in claim 25, including "receiving ... from
the first user, user-selectable settings of each of the two or more group
categorizations created by the first user," where "the user-selectable settings
of each particular group categorization indicat[ e] which portions of the
received information of the first user may be exchanged with second users
who have been assigned by the first user to the particular group
categorization."
Appellant's arguments presented as to each individual reference (see
App. Br. 10-12; Reply Br. 3-5) are not persuasive inasmuch as the
Examiner relies on a properly made combination of Robertson and
Govindarajan to support the conclusion of obviousness of the subject matter
of independent claim 25. Appellant has not rebutted or otherwise shown the
Examiner's explanation of the combination of the collective teachings and
suggestions of the applied references (see Final Act. 4---6; Ans. 4--5) made in
response to the Appellant's arguments in the Appeal Brief (regarding the
references individually or in pairs) to be in error. Appellant's Reply Brief
does not persuade us otherwise.
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(finding one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references).
9
Appeal2017-002512
Application 13/615,062
In this light, Appellant's arguments as to representative independent claim
25 (App. Br. 10-12; Reply Br. 3-5) concerning the individual shortcomings
in the teachings of Robertson and Govindarajan are not persuasive, and,
therefore, are not persuasive of the non-obviousness of the claimed invention
set forth in representative independent claim 25.
In view of the foregoing, Appellant's contentions (App. Br. 10-12;
Reply Br. 3-5) that the combination of Robertson and Govindarajan does
not disclose limitation [BJ are conclusory and not persuasive.
Motivation and Reasonable Expectation of Success
A sufficient rationale to support a conclusion that a claim would have
been obvious is where all the claimed elements were known in the prior art
and one skilled in the art would have combined the elements as claimed by
known methods with no change in their respective functions, and the
combination would have yielded nothing more than predictable results to
one of ordinary skill in the art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 538,
416 (2007). Such understandings about reasons to combine or
countervailing reasons not to combine could come from the knowledge,
skill, and creativity of the ordinarily skilled artisan. KSR, 550 U.S. at 418.
In the instant case, the Examiner finds that both Robertson and
Govindarajan pertain to permission assignment on a user interface (Final
Act. 4; Ans. 6), and determines it would have been obvious to combine
Govindarajan with Robertson "so that users in Robertson can assign the
permissions to multiple users at once" as taught be Govindarajan (Final Act.
5 citing Govindarajan, col. 7, 11. 5-9). The Examiner also determines that it
would have been obvious to modify Robertson's individual permission
assignment method/system with Govindarajan's group level permission
10
Appeal2017-002512
Application 13/615,062
assignment technique/apparatus in order to simplify permission setting (Ans.
6). We agree.
In this light, Appellant's contentions (App. Br. 12-13; Reply Br. 6)
that the Examiner has failed to articulate the reasons why the proposed
combination of Robertson and Govindarajan would have been obvious to
one of skill in the art are not persuasive. And, notably, Appellant does not
respond with any evidence to support a lack of either motivation or
reasonable expectation of success.
We agree with the Examiner (Final Act. 4--7; Ans. 6) that one of
ordinary skill in the art, looking at the combined teachings and suggestions
of Robertson ( e.g., Figs. 7-9 showing user profiles and access request and
permission forms) and Govindarajan (e.g., col. 5, 11. 8-11 and col. 7, 11. 5-9
describing creating and establishing logical groups to enforce permission
policies), would have found the resulting method recited in claim 25
predictable, including receiving: (i) group categorizations created by a first
user of an information management and distribution system; and (ii) user-
selectable settings of each of the group categorizations indicating
information of the first user that may be exchanged with a plurality of
second users assigned by the first user to particular group categorizations, as
recited in limitations [A] and [BJ.
Where there is a reason to modify or combine the prior art to achieve
the claimed invention, the claims may be rejected as prima facie obvious
provided there is also a reasonable expectation of success. In re Merck &
Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986); Amgen Inc. v. F. Hoffman-La
Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir. 2009) ("An obviousness
determination requires that a skilled artisan would have perceived a
11
Appeal2017-002512
Application 13/615,062
reasonable expectation of success in making the invention in light of the
prior art.").
The "reasonable expectation of success" requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention, and does not look to whether one would reasonably expect the
prior art references to operate as those references intended once combined.
Instead, there must be a motivation to combine accompanied by a reasonable
expectation of achieving what is claimed. The teachings of the prior art can
provide a sufficient basis for a reasonable expectation of success. In re
Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986). In the case before us,
the Examiner has met this burden in making findings about the teachings of
the individual references as they relate to the claimed subject matter.
In addition, evidence showing there was no reasonable expectation of
success may support a conclusion of nonobviousness. In re Rinehart, 531
F.2d 1048 (CCPA 1976). In the instant case, Appellant has not provided any
evidence or reasoning showing there was no reasonable expectation of
success. Appellant's contentions (see App. Br. 12-13; Reply Br. 5-6) do
not persuade us that the Examiner erred. Specifically, Appellant merely
avers that (i) the Examiner's resorts to hindsight (App. Br. 12; Reply Br. 6);
and (ii) there is no reasonable expectation of success (App. Br. 12-13),
without providing any reasoning, and such naked assertions, without any
evidence, are not persuasive. It is well settled that mere attorney arguments
and conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
( attorney argument is not evidence).
12
Appeal2017-002512
Application 13/615,062
Moreover, the Examiner makes specific findings as to why a person of
ordinary skill in the art would have a reasonable expectation of success,
based on the teachings of the references (see Final Act. 4--7). Final Act. 6
(finding Robertson and Govindarajan are in the analogous art of assigning
permissions to users on a user interface); Ans. 6 ("Robertson and
Govindarajan are analogous arts of permission assignment on a user
interface.").
Lastly, Appellant's contention (Reply Br. 6) that the Examiner offers
no proof as to how Robertson and Govindarajan are analogous art (that of
assigning permissions to users on a user interface) is conclusory and
unsupported.
In point of fact, the Examiner aptly relies upon (i) column 5, lines 8-
11 and column 7, lines 5-9 and 22-33 of Govindarajan (describing the
creation and establishment of membership of logical groups according to a
user's needs and/or to enforce a permission policy) as disclosing the
creation/assignment of multiple permissions in a single action (Final Act. 4--
5 and Ans. 3-5 citing Govindarajan, col. 5, 11. 8-11 and col. 7, 11. 5-9, 22-
33); and (ii) column 2, lines 58-61 (describing group associations created by
a user) and Figures 7 (showing categories of groups, 560-14 and 560-20), 8
(e.g., group item 580-6), and 9 (showing permission assignments) of
Robertson as disclosing group categorizations (e.g., col. 7, 11. 4--5, "the data
fields High School 560-14 and College 560-20 represent categories of
groups"). Final Act. 4--6; Ans. 3-5.
In view of the foregoing, we sustain the Examiner's rejection of claim
25, as well as claims 26, 28, 29, 32-35, and 37--43 grouped therewith.
13
Appeal2017-002512
Application 13/615,062
Obviousness Rejection of Claim 30
With regard to dependent claim 30 rejected over Robertson and
Govindarajan, the Examiner relies upon Robertson's user registration form
560 shown in Figure 7 as disclosing the recited interface for managing group
categorizations (see Final Act. 6; Ans. 6-7). The Examiner finds that
Robertson discloses allowing a user to set the high school group item 560-14
or college group item 560-20 affiliations (Ans. 6 citing Robertson col. 7, 11.
1-5).
Appellant argues (App. Br. 14--15; Reply Br. 6-7) that the
combination fails to disclose, teach, or suggest limitation [CJ because,
although Robertson's Figure 7 may disclose a graphical user interface that
allows members to enter information about themselves, Robertson does not
disclose, teach, or suggest managing group organizations as claimed. We
agree with Appellant.
Specifically, although Robertson allows a user to input group
categories in areas 560-14 and 560-20 of registration form 560 (see Fig. 7),
Robertson does not teach or suggest managing the group categorizations
after having been input. See generally col. 6, 1. 58---col. 7, 1. 27 describing
Figure 7. Therefore, Appellant has shown that the Examiner's rejection,
relying on Robertson as teaching "presenting an interface for a user to
manage group categorizations" ( claim 3 0 ( emphasis added)), is in error.
In view of the foregoing, we do not sustain the Examiner's
obviousness rejection of claim 30 over Robertson and Govindarajan.
Obviousness Rejection of Claim 31
Based on Appellant's failure to address the Examiner's prima facie
case of obviousness as to claim 31 over the combination of Robertson,
14
Appeal2017-002512
Application 13/615,062
Govindarajan, and Rasansky, Appellant has failed to show that the Examiner
erred in determining that the combination of Robertson, Govindarajan, and
Rasansky teaches or suggests the subject matter recited in claim 31.
Accordingly, we summarily sustain the Examiner's obviousness rejection of
claim 31. See 37 C.F.R. § 4I.37(c)(l)(iv) (requiring a statement in the briefs
as to each ground of rejection presented by Appellant for review and stating
that arguments not presented in the briefs will be refused consideration).
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 25, 26, 28, 29, 32-
35, and 37--43 under 35 U.S.C. § 103(a) as being obvious over the
combination of Robertson and Govindarajan, because (a) the combination
teaches or suggests limitations [ A J and [BJ recited in representative claim
25; and (b) there is sufficient motivation to combine as well as a reasonable
expectation of success in achieving the claimed subject matter.
(2) The Examiner erred in rejecting claim 30 under
35 U.S.C. § 103(a) as being obvious over the combination of Robertson and
Govindarajan, because Robertson does not teach or suggest presenting a user
interface for managing group categorizations, as recited in limitation [CJ of
claim 30.
(3) The Examiner did not errin rejecting claim 31 over Robertson,
Govindarajan, and Rasansky.
15
Appeal2017-002512
Application 13/615,062
DECISION
The Examiner's obviousness rejections of claims 25, 26, 28, 29, 31-
35, and 37--43 are affirmed. The Examiner's obviousness rejection of claim
3 0 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
16