Ex Parte Cheah

Patent Trial and Appeal Board

Jun 12, 2018

13612606 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/612,606 09/12/2012 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.
079894.1146 5565
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
Appeal2017-002088 1
Application 13/612,606
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--46. Claims 1-24 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
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.
Appeal2017-002088
Application 13/612,606
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; see generally Figs. 1-3. More specifically,
Appellant discloses and claims a method (claim 25), computer-readable non-
transitory storage media including software operable to perform the method
( claim 40), and system with memory and processors to perform the method
(claim 42) for profile exchange between users including the steps of
generating a unique personal identifier of a user in response to receiving the
user's profile information and determining the user was not previously
registered, and receiving the personal identifier during user profile exchange
operations with other users. Spec. ,r,r 42, 51, 64, 106, 156; Figs. 5-8; claims
25, 40, 42.
2017-002157 decided January 16, 2018 (affirmed); U.S. Patent Application
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. 13/615,062 and Appeal No.
2017-002512; 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.
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Application 13/612,606
Exemplary Claims
Exemplary claims 25 and 27, 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:
by one or more computer servers associated with an
information management and distribution system, receiving a
request from a user for a profile page associated with the
information management and distribution system, the profile
page permitting the user to supply information about the user
that may be shared with other users of the information
management and distribution system;
by the one or more computer servers, after sending the
profile page to the user, receiving profile information for the
user that was entered into the profile page;
[A] by the one or more computer servers, in response to
receiving the profile information and determining that the user
has not previously registered with the information management
and distribution system. generating a personal identifier, the
personal identifier being a unique identifier associated with the
user;
by the one or more computer servers, storing the personal
identifier in association with the profile information for the
user;
by the one or more computer servers, sending the
personal identifier to a client device of the user in association
with a response to the request; and
[BJ by the one or more computer servers, receiving the
personal identifier during user profile exchange operations
with one or more other users of the information management
and distribution system.
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27. The method of claim 25, [CJ wherein the response
comprises information to download an application to the client
device.
The Examiner's Rejections
( 1) The Examiner rejected claims 2 5-3 2 and 3 6-4 5
under 35 U.S.C. § I03(a) as being obvious over the combination of Klug
(US 2001/0011274 Al; published Aug. 2, 2001) and Robertson (US
6,269,369 Bl; issued July 31, 2001). Final Act. 4--11.
(2) The Examiner rejected claim 34 under 35 U.S.C. § 103(a) as
being obvious over the combination of Klug, Robertson, and Dasan (US
5,761,662; issued Jun. 2, 1998). Final Act. 11-12.
(3) The Examiner rejected claims 33, 35, and 46 under 35 U.S.C.
§ I03(a) as being obvious over the combination of Klug, Robertson, and
Sonti (US 6,108,540; issued Aug. 22, 2000). Final Act. 12-13.
Claims at Issue
With regard to the rejection over Klug and Robertson, Appellant does
not present separate arguments regarding the patentability of claims 26, 28-
32, and 36-45, and instead relies on the arguments presented as to claim 25
(see generally App. Br. 8-13; Reply Br. 2---6). Independent claims 40
(computer-readable non-transitory storage media), and 42 (system with
memory and processors) recite similar subject matter, including exchaning
profiles between users including the steps of (i) generating a unique personal
identifier of a user in response to receiving the user's profile information and
determining the user was not previously registered, and (ii) receiving the
personal identifier during user profile exchange operations with other users,
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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,
28-32, and 36-45 rejected as being obvious over Klug and Robertson.
Because Appellant does not present separate arguments as to the
obviousness rejections of (a) claim 34 over Klug, Robertson, and Dasan; and
(b) claims 33, 35, and 46 over Klug, Robertson, and Sonti, the outcome of
these rejections stand or fall with the outcome for claims 25 and 42 from
which these claims ultimately depend.
Accordingly, only claims 25 and 27 are at issue in the case before us,
and our analysis addresses representative claim 25, and dependent claim 27
separately argued by Appellant (see App. Br. 13-14; Reply Br. 6-8).
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, and 28--45
under 35 U.S.C. § 103(a) as being obvious over the combination of Klug and
Robertson because the combination fails to teach or suggest limitations [ A J
and/or [BJ supra, as recited in representative independent claim 25?
(2) Did the Examiner err in rejecting claim 27 under
35 U.S.C. § 103(a) as being obvious over the combination of Klug and
Robertson because the combination fails to teach or suggest limitation [CJ
supra, as recited in dependent claim 27?
ANALYSIS
We have reviewed Appellant's arguments in the Briefs (App. Br.
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8-16; Reply Br. 2-9), the Examiner's rejection (Final Act. 4--13), and the
Examiner's response (Ans. 3-7) to Appellant's arguments.
Obviousness Rejection of Claims 25, 26, 28-32, and 36-45
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--7); 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 Klug and Robertson. 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 Klug and Robertson teaches or suggests limitations [A] and
[BJ, as recited in claim 25. We provide the following discussion/analysis for
emphasis.
Limitation [Al
Limitation [A] of claim 25 recites in pertinent part, "in response to
receiving the profile information and determining that the user has not
previously registered with the information management and distribution
system, generating a personal identifier, the personal identifier being
a unique identifier associated with the user" ( emphasis added).
With regard to limitation [A], we agree with the Examiner (Final Act.
4--7; Ans. 3--4) that (i) Klug (Fig. 6A, 624) discloses a response to a
registration information submission that includes a user ID (i.e., personal
identifier and a password (Ans. 3)); and (ii) Klug's disclosure that an
acceptance response in step 624 "may include a third party web site specific
user ID ( and optionally password) if the user was not previously registered
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at this third party web site" (i-f 39) teaches or suggests the recited
"determining that the user has not previously registered with the information
management and distribution system" (Ans. 3--4). As a result, we also agree
with the Examiner's findings (Ans. 3--4) that Robertson, when modified with
Klug's world wide web registration processing method which determines
that a user has not previously registered with the system (see ,r 39), teaches
or suggests limitation [A] (see Final Act. 4---6).
Appellant's contention (Reply Br. 2-3) that Klug's paragraph 39 only
discloses indicating that registration information has been transmitted to a
third party web site and receiving a user ID, and not generating a personal
identifier that is unique and associated with the user, is not persuasive. Klug
discloses in step 624 of Figure 6A, as described in paragraph 39, that if it is
determined that a user is not previously registered, a user ID (i.e., unique
personal identifier) and password are sent.
In this light, Appellant's arguments (App. Br. 8-10; Reply Br. 2-3)
that the combination, and specifically Klug, fails to disclose, teach, or
suggest limitation [A], including determining that the user has not
previously registered with the information management and distribution
system, are unpersuasive.
Limitation [BJ
Limitation [BJ of claim 25 recites in pertinent part, "receiving the
personal identifier during user profile exchange operations" ( emphasis
added).
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With regard to limitation [BJ, we agree with the Examiner (Ans. 5---6)
that both Robertson (col. 9, 11. 57---62) and Klug (Fig. 2, steps 220, 248)3
disclose sending a personal identifier to a server. We also agree with the
Examiner that (i) Robertson (col. 5, 11. 20-28) discloses querying Friend
Table 460 and sending the personal identifier ( e.g., Customer_ID 460-4
and/or FriendID 460-6) for each and every profile exchange operation (Final
Act. 6-7; Ans. 5---6); and (ii) Klug (i-f 28) discloses automatically sending
registration information ( e.g., user ID and password) to the website when the
user enters the information in to the distribution system (Final Act. 7).
As a result, we agree with the Examiner that the combination of Klug
and Robertson teaches or suggests sending and "receiving the personal
identifier during user profile exchange operations [ during profile exchange
operations] with one or more other users" as claimed. Appellant's
arguments to the contrary (see Reply Br. 3-5) are conclusory and do not
address how or why Klug (e.g., Fig. 2 showing receiving a personal
identifier), Robertson (e.g., col. 5, 11. 20-28 discussing Friend Table 460),
and their combination fail to teach or suggest receiving the personal
identifier during user profile exchange operations. Notably, Appellant
admits Robertson may disclose querying a friend table (App. Br. 10-11),
and Klug may disclose storing registration information for a user to access a
website (App. Br. 11 ).
In view of the foregoing, Appellant's contentions (App. Br. 10-11;
Reply Br. 3-5) that neither reference, nor their combination, disclose, teach,
or suggest limitation [BJ, are not persuasive.
3 See also Klug ,r,r 30-31 describing Figure 2, which consists of Figures 2A
and 2B.
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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. 398,
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 determines that it would have been
obvious "to combine Klug with Robertson so that users can get in contact
with other users who share the same affiliations [ figure 11 item 650-14 ]"
(Final Act. 5). The Examiner also finds that both Robertson and Klug
pertain to the analogous arts of (i) registering by entering personal
information into a user interface registration form" (Final Act. 5); and
(ii) "sharing profile information" (Ans. 6), and determines it would have
been obvious to combine Klug with Robertson because "Robertson shows
how Klug can be modified so that users can share profile information with
other users and not just websites" ( Ans. 6). We agree.
In this light, Appellant's contention (App. Br. 11-13) that the
Examiner has failed to provide a clear articulation of the reasons why the
proposed Klug-Robertson combination would have been obvious to one of
skill in the art is not persuasive. And, notably, Appellant does not respond
with any evidence to support a lack of either motivation or reasonable
expectation of success.
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We agree with the Examiner (Final Act. 4--7; Ans. 4--6) that one of
ordinary skill in the art, looking at the combined teachings and suggestions
of Robertson (e.g., Figs. 5-7, and 9 showing data/internet
architecture/structure for exchanging profile information with user profiles
and access request and permission forms) and Klug (e.g., Figs 1, 2a, 4a, 4c,
6a and ,r 39 ( determining if a user was not previously registered)), would
have found the resulting method recited in claim 25 predictable, including:
exchanging profiles between users by generating a unique personal identifier
of a user in response to receiving the user's profile information and
determining the user was not previously registered, and receiving the
personal identifier during user profile exchange operations with other users
(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., 800 F.2d 1091, 1097 (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
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
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provide a sufficient basis for a reasonable expectation of success. Merck,
800 F .2d at 1097. 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, 1054 (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. 11-13; 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),
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).
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. 5
(finding Robertson and Klug are in the "analogous art of registering by
entering personal information into a user interface registration form"); Ans.
5 ("Klug and Robertson are analogous art of sharing profile information").
Lastly, Appellant's contention (Reply Br. 6) that the Examiner offers
no proof as to how Robertson and Klug are analogous art (that of sharing
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profile information) is conclusory and unsupported. In point of fact, the
Examiner aptly relies upon (i) Figure 1 of Klug (showing an information
management for distributing registration information) (Final Act. 4 citing
Klug, Fig. I) and paragraphs 24, 28, and 39 of Klug as disclosing the
distribution (i.e., sharing) of registration information (i.e., a user profile page
including user ID and password) (Final Act. 5-7 citing Klug, Figs. 2a, 4a;
,r,r 24, 28; Abst. and Ans. 3--4 citing Klug, Fig. 6 item 624; ,r 39); and (ii) the
Abstract; column 5, lines 20-20; column 9, lines 56-62; and Figures 7, 9,
and 11 of Robertson as disclosing creating personal profiles containing
information for a profile within a user interface (e.g., Fig. 7, user interface
registration form 560; Fig. 9 GUI 600 including crossing paths notification
600-7 and personal information 600-9), where the user profile contains a
CustomerID 460-4 and FriendID 460-6 stored in a Friend Table 460. Final
Act. 5-7; Ans. 5-6. And, Robertson's profile information can include
business entity information such as (i) a customer table 400 containing
customer information fields such as an identifier 440-2, user name 440-6,
and password 440-8 (Fig. 6; col. 4, 1. 60-col. 5, 1. 19); and (ii) work
information 600-10 (Fig. 9; col. 8, 11. 50-51; col. 9, 11. 21-26). Therefore,
we find that both Klug and Robertson concern sharing of profile
information, namely, a user name/ID and a password.
In view of the foregoing, we sustain the Examiner's rejection of claim
25, as well as claims 26, 28-32, and 36--45 grouped therewith.
Obviousness Rejection of Claim 2 7
Claim 25 recites, in pertinent part, "receiving a request from a user for
a profile page" and "sending the personal identifier to a client device of the
user in association with a response to the request." Claim 27 depends from
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claim 25 and further recites, "wherein the response comprises information to
download an application to the client device." With regard to dependent
claim 27 rejected over Klug and Robertson, the Examiner relies on Klug as
disclosing a response having information to download an application (Final
Act. 7-8; Ans. 7). The Examiner determines that Klug's items 1112 and
1116 shown in Figure 11 A disclose sending an options webpage in response
to a user's registration (Ans. 7). The Examiner determines Klug discloses
limitation [CJ, including a response having "information to download an
application" as recited in claim 27, because a web page is reasonably
considered a "web application" (Ans. 7).
Appellant argues (App. Br. 13-14; Reply Br. 6-8) that the
combination fails to disclose, teach, or suggest limitation [CJ because,
although Klug's Figure 11 may disclose various web pages, Klug does not
disclose, teach, or suggest a response comprising "information to download
an application to the client device," as recited in claim 27 (Reply Br. 8).
We agree with Appellant.
Although Figure 1 lA shows steps 1112 and 1116 for receiving a
response with a page of options concerning changing of the user's
registration information and allowing the user to enter this information into
an appropriate page (see Fig. 1 lA; ,r 58), Klug is silent as to whether the
response contains "information to download an application to the client
device" as claimed (claim 27 (emphasis added)).
In view of the foregoing, we do not sustain the Examiner's
obviousness rejection of claim 27 over Klug and Robertson.
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Obviousness Rejections of Claims 33-35 and 46
Based on Appellant's failure to address the Examiner's prima facie
case of obviousness as to (i) claim 34 over the combination of Klug,
Robertson, and Dasan; and (ii) claims 33, 35, and 46 over the combination
of Klug, Robertson, and Sonti, Appellant has failed to show that the
Examiner erred in determining that the base combinations of Klug and
Robertson, and either of Dasan or Sonti teaches or suggests the subject
matter recited in claims 33-35 and 46. Accordingly, we summarily sustain
the Examiner's obviousness rejections of claims 33-35 and 46. 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, 28-32, and
36-45 under 35 U.S.C. § 103(a) as being obvious over the combination of
Klug and Robertson, because (a) the combination teaches or suggests
limitations [AJ 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 27 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Klug and Robertson,
because the combination does not teach or suggest a response containing
information to download an application, as recited in limitation [CJ of claim
27.
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(3) The Examiner did not err in rejecting (a) claim 34 over Klug,
Robertson, and Dasan; and (b) claims 33, 35, and 46 over Klug, Robertson,
and Sonti.
DECISION
The Examiner's obviousness rejections of claims 25, 26, and 28--46
are affirmed. The Examiner's obviousness rejection of claim 27 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
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