Ex Parte Cheah

Patent Trial and Appeal Board

Mar 26, 2018

12258302 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/258,302 10/24/2008 Chris Cheah
91230 7590 03/28/2018
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 700
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.
079894.0514 8762
EXAMINER
STITT, ERIK V
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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
Appeal2017-002070 1
Application 12/258,302
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 26-30 and 32-54. Claims 1-25 and 31 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.
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Application 12/258,302
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. i-fi-13-8; see generally Figs. 1--4. More specifically,
Appellant discloses a method for automatically updating and distributing
contact information such as profiles or electronic business cards, as well as
allowing attachment of various additional information (e.g., business website
information or Universal Resource Locator, a person's title, and business
name, etc.). Spec. i-f 10. A database stores either entity profile/profile
information (claim 46) or business entity profile/profile information (claim
26), and a networked server system receives an access request from a first
user to access an entity profile of a first entity identified by the first user;
then upon being provided a display of an authorization request and
generating an authorization response to the request, the first user is allowed
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.
13/615,062 and Appeal No. 2017-002512; 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.
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Application 12/258,302
access to the entity profile of the first entity. Claims 26, 46; see also App.
Br. 5---6, Summary of Claimed Subject Matter.
Exemplary Claims
Exemplary claims 26 and 33, with bracketed lettering (indicating
disputed limitations A, B, and C) and emphases added to disputed portions
of the claims, read as follows: 3
26. A system, comprising:
a networked server system accessible by remote user
devices via a network, the networked server system comprising
at least one processor and at least one memory; and
at least one database accessible by the networked server
system, and configured to store:
[A] a plurality of personal profiles and a plurality
of entity profiles. each personal profile associated with profile
information provided by a particular user, each entity profile
associated with profile information about a particular business
entity; and
relationship data that specifies access relationships
established between the entities and the-users;
the networked server system operable to:
receive an access request from a first user, the
access request comprising a request to access an entity profile
of a first entity identified by the first user;
[BJ provide for display to a representative of the
first entity an authorization request responsive to the access
request from the first user;
receive an authorization response from the
representative of the first entity responsive to the authorization
request, the authorization response being generated at least
3 Claim 33, argued separately, depends from claim 32, which in tum depends
from independent claim 26. Claim 32 recites "[t]he system of claim 26,
wherein the networked server system is further operable to dynamically
provide at run time multimedia content for display with an entity profile."
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in part by the representative interacting with the authorization
request; and
in response to the authorization response, allow the
first user to access the entity profile of the first entity.
33. The system of claim 32, [CJ wherein the
dynamically provided multimedia content comprises one or
more advertisements.
The Examiner's Rejections
(1) The Examiner rejected claims 26, 27, 34, 35, 37, 42, 44--46, 50,
and 52-54 under 35 U.S.C. § 103(a) as being obvious over the combination
of Robertson (US 6,269,369 Bl; issued July 31, 2001) and Halt, Jr. (US
6,816,849 Bl; issued Nov. 9, 2004). Final Act. 3-9.
(2) The Examiner rejected claims 28-30, 32, 33, 36, 43, 47, 48, and
51 under 35 U.S.C. § 103(a) as being obvious over the combination of
Robertson, Halt, Jr., and Tang (US 5,793,365; issued Aug. 11, 1998). Final
Act. 9-15.
(3) The Examiner rejected claims 38--40 under 35 U.S.C. § 103(a)
as being obvious over the combination of Robertson, Halt., Jr., and Grasso
(US 5,892,909; issued Apr. 6, 1999). Final Act. 15-16.
(4) The Examiner rejected claim 41under35 U.S.C. § 103(a) as
being obvious over the combination of Robertson, Halt, Jr., and Reed (US
5,862,325; issued Jan. 19, 1998). Final Act. 17-18.
(5) The Examiner rejected claim 49 under 35 U.S.C. § 103(a) as
being obvious over the combination of Robertson, Halt, Jr., and
Govindarajan (US 6,208,659 Bl; issued Mar. 27, 2001). Final Act. 18.
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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: 4
(1) Did the Examiner err in rejecting claims 26, 27, 34, 35, 37, 42,
44--46, 50, and 52-54 under 35 U.S.C. § 103(a) as being obvious over the
combination of Robertson and Halt, Jr. because the combination fails to
teach or suggest limitations [AJ and/or [BJ, as recited in representative
independent claim 26?
(2) Did the Examiner err in rejecting claim 33 under
35 U.S.C. § 103(a) as being obvious over the combination of Robertson,
4 With regard to the rejection over Robertson and Halt, Jr., Appellant does
not present separate arguments regarding the patentability of claims 26, 27,
34, 35, 37, 42, 44--46, 50, and 52-54, and instead relies on the arguments
presented as to claim 26 (see generally App. Br. 7-11; Reply Br. 2---6).
Independent claims 26 (system) and 46 (method) recite similar subject
matter, including storing a plurality of entity profiles and displaying an
authorization request responsive to the access request from the first user to a
representative of the first entity, as recited in limitations [A J and [BJ of
claim 26. Therefore, we select independent claim 26 as representative of the
group of claims consisting of claims 26, 27, 34, 35, 37, 42, 44--46, 50, and
52-54 rejected as being obvious over Robertson and Halt, Jr.
Because Appellant does not present separate arguments as to the
obviousness rejections of: (a) claims 28-30, 32, 36, 43, 47, 48, and 51 over
Robertson, Halt, Jr., and Tang; (b) claims 38--40 over Robertson, Halt, Jr.,
and Grasso; ( c) claim 41 over Robertson, Halt, Jr., and Reed; and ( d) claim
49 over Robertson, Halt, Jr., and Govindarajan (see App. Br. 12-13; Reply
Br. 6-8), the outcome of these rejections will fall with the outcome for
representative claim 26 from which these claims ultimately depend.
Accordingly, our analysis only addresses representative claim 26, and
dependent claim 33 separately argued (see App. Br. 12-13; Reply Br. 6-8).
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Halt, Jr., and Tang because the combination, and specifically Tang, fails to
teach or suggest limitation [CJ supra, as recited in dependent claim 33?
ANALYSIS
We have reviewed Appellant's arguments in the Briefs (App. Br.
7-14; Reply Br. 2-9), the Examiner's rejection (Final Act. 3-18), and the
Examiner's response (Ans. 2---6) to Appellant's arguments.
Obviousness Rejection of Claims 26, 27, 34, 35, 37,
42, 44-46, 50, and 52-54
With regard to representative claim 26, 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. 3-5); and (2) the reasons set forth by the
Examiner in the Examiner's Answer in response to Appellant's Appeal Brief
(see Ans. 2-5). We concur with the conclusions reached by the Examiner
with regard to the obviousness of claim 26 over Robertson and Halt, Jr. We
are not persuaded by Appellant's contentions (App. Br. 7-11; Reply Br. 2-
6) that the Examiner erred in rejecting claim 26, and we find the
combination of Robertson and Halt, Jr. teaches or suggests limitations [A J
and [BJ as recited in claim 26. We provide the following for emphasis.
Limitation [A]
With regard to limitation [AJ, we agree with the Examiner (Ans. 3--4)
that (i) Halt, Jr. (col. 4, 11. 8-10) discloses the creation of a business profile
260A, thus Halt, Jr.'s business profile is encompassed by the claimed "entity
profile associated with profile information about a particular business entity"
(Ans. 3--4); (ii) "[AJppellant's claim language does not limit the assignment
of entity profiles to non-human entities" (Ans. 4); and (iii) Halt, Jr. 's Figure
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4a shows a business profile having a corporation name which is
"information about a particular business entity," as claimed (Ans. 4). As a
result, we also agree with the Examiner's findings that Robertson, when
modified with Halt, Jr.' s business profile which supplements a personal
profile, teaches or suggests "each personal profile associated with profile
information provided by a particular user" (see Final Act. 4).
In this light, Appellant's arguments (App. Br. 7-9; Reply Br. 2-3) that
Halt, Jr., including the disclosure at column 4, lines 1-10 and Figures 4A
and 4B, fails to disclose, teach, or suggest limitation [A], including entity
profiles associated with profile information about a particular business
entity, are unpersuasive. For similar reasons, Appellant's argument (App.
Br. 7; Reply Br. 2) that the combination of Robertson and Halt, Jr. fails to
disclose "entity profiles that are each associated with profile information
about a particular business entity" is not persuasive.
Limitation [BJ
With regard to limitation [BJ, we agree with the Examiner that claim
26 recites "representative of a first entity," and not "representative of a
business entity" as argued by Appellant (see Ans. 5). We also agree with the
Examiner (Final Act. 4--5; Ans. 6) that "a representative of the first entity"
(as recited in claim 26) (i) can be a person; and (ii) is taught or suggested by
Halt, Jr. For example, in Halt, Jr.'s Figures 4A and 4C, business/entity
profile (Fig. 4A, 200; Fig. 4C 260A) shows a file (Fig. 4A, 202; Fig. 4C,
250) including fields (Fig. 4A, 204; Fig. 4C, 252) representing attributes of
the profile of a user or representative (e.g., a sales person having sales
position) of the business entity (e.g., the specific corporation). See col. 3, 1.
38---col. 4, 1. 10. As a result, we also agree with the Examiner (Ans. 5) that
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under the broadest reasonable interpretation of claim 26, "the representative
of the first entity is a particular user of a particular business profile."
In this light, Appellant's contentions (App. Br. 9--10; Reply Br. 4--5)
that (i) one of ordinary skill in the art, when reading ... claim [26], would
clearly understand that the claimed 'first entity' is 'a particular business
entity"' (Reply Br. 4); and (ii) Robertson's column 8, lines 11-19 and Figure
9 merely "disclose selectable permission levels," and thus do not disclose,
teach, or suggest limitation [BJ, are not persuasive. Furthermore,
Appellant's argument (App. Br. 9; Reply Br. 4) that the combination of
Robertson and Halt, Jr. does not disclose a representative of a business entity
is 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 'l 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 determines that it would have been
obvious "to combine Robertson with Halt[, Jr.] so that users can have a
business profile for all their business trades separate from their personal
profile [Col 4 7-9]" (Final Act. 4). The Examiner also findsthat both
Robertson and Halt, Jr. pertain to creating business/work profile information
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for a profile within a user interface, and determines it would have been
obvious to combine Halt, Jr. with Robertson because "Robertson discloses
'Work information' within the personal profile which Halt teaches can be
broken out into a separate profile" (Ans. 5). We agree.
In this light, Appellant's contention (App. Br. 10-11) that "the
Examiner has failed to provide a clear articulation of the reasons why the
proposed Robertson-Halt 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 supporta lack of motivation.
We agree with the Examiner (Final Act. 4--5; Ans. 5) that one of
ordinary skill in the art, looking at the combined teachings and suggestions
of Robertson (e.g., Figs. 5, 6, 8, 9 showing user profiles and access request
and permission forms) and Halt, Jr. (e.g., Figs 4A, 4C, business profile
200/260A), would have found the resulting system recited in claim 26
predictable, including: a database storing business entity profile/profile
information, and a networked server system receiving an access request from
a first user to access an entity profile of a first entity identified by the first
user; then upon being provided a display of an authorization request,
generating an authorization response to the request (as recited in limitations
[A] and [BJ), as well as allowing the first user to access the first entity's
profile.
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
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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
provide a sufficient basis for a reasonable expectation of success. In re
Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 2009). 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. 10-11; Reply Br. 5---6) do
not persuade us that the Examiner erred. Specifically, Appellant merely
avers that (i) the Examiner's resorts to hindsight (Reply Br. 6); and (ii) there
is no reasonable expectation of success (App. Br. 11 ), 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
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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. 3-5). Final Act. 6
(finding Robertson and Halt, Jr. are in the "analogous art of a profile
management within a user interface"); Ans. 5 ("Robertson and Halt[, Jr.] are
analogous art that disclose creating business/work profile information for a
profile within a user interface.").
Lastly, Appellant's contention (Reply Br. 6) that the Examiner offers
no proof as to how Robertson and Halt, Jr. are analogous art (that of creating
business/work profile information for a profile within a user interface) is
conclusory and unsupported. In point of fact, the Examiner aptly relies upon
(i) column 4, lines 1-10 of Halt, Jr. (describing the user interface shown in
Figure 4C) as disclosing the creation of a business profile 260A (Final Act. 4
citing Halt, Jr., col. 4, 11. 7-9); and (ii) the Abstract, columns 5 and 8, and
Figures 6, 8, and 9 of Robertson as disclosing creating personal profiles
containing information for a profile within a user interface ( e.g., Fig. 8, GUI
580; Fig. 9 GUI 600). Final Act. 3-5. 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).
In view of the foregoing, we sustain the Examiner's rejection of claim
26, as well as claims 27, 34, 35, 37, 42, 44--46, 50, and 52-54 grouped
therewith.
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Obviousness Rejection of Claim 33
With regard to dependent claim 33 rejected over Robertson, Halt, Jr.,
and Tang, Appellant argues (App. Br. 12-13; Reply Br. 6-8) that the
combination fails to disclose, teach, or suggest limitation [CJ because,
although Tang's Figure 2 and column 6, lines 14--26 may disclose icons
representing levels of activity (i.e., announcements of activity), Tang does
disclose, teach, or suggest advertisements as claimed. We agree with
Appellant.
Appellant's Specification (Fig. 23; Spec. i-fi-f 152-156) differentiates
advertisements (see Fig. 23, decision block 2310) from announcements (see
Fig. 23, decision block 2302), therefore we agree with Appellant (Reply Br.
6-8) that Tang's disclosure of an announcement of activity level is not
encompassed by the claim term "advertisements" (claim 33). In this light,
the Examiner erred in finding (Ans. 6) that Tang's "Out of the office" and/or
"Do not disturb" icons, representing an activity level of a user, shown in
Figure 2, discloses the claimed advertisements.
In view of the foregoing, we do not sustain the Examiner's
obviousness rejection of claim 33 over Robertson, Halt, Jr., and Tang.
Obviousness Rejections of Claims 28-30, 32, 36, 38-41, 43, 47-49, and 51
Based on Appellant's failure to address the Examiner's prima facie
case of obviousness as to (i) (a) claims 28-30, 32, 36, 43, 47, 48, and 51
over Robertson, Halt, Jr., and Tang; (b) claims 38--40 over Robertson, Halt,
Jr., and Grasso; (c) claim 41 over Robertson, Halt, Jr., and Reed; and
(d) claim 49 over Robertson, Halt, Jr., and Govindarajan, Appellant has
failed to show that the Examiner erred in determining that the combination
of Robertson, Halt, Jr., and any of Tang, Grasso, Reed, or Govindarajan
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teaches or suggests the subject matter recited in these claims. Accordingly,
we summarily sustain the Examiner's obviousness rejections of claims 28-
30, 32, 36, 38--41, 43, 47--49, and 51. See 37 C.F.R. § 41.37(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 26, 27, 34, 35, 37,
42, 44--46, 50, and 52-54 under 35 U.S.C. § 103(a) as being obvious over
the combination of Robertson and Halt, Jr., because (a) the combination
teaches or suggests limitations [A J and [BJ recited in representative claim
26; 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 33 under
35 U.S.C. § 103(a) as being obvious over the combination of Robertson,
Halt, Jr., and Tang, because the combination does not teach or suggest
advertisements as recited in limitation [CJ of claim 33.
(3) Appellant has not adequately shown the Examiner erred in
rejecting (a) claims 28-30, 32, 36, 43, 47, 48, and 51 over Robertson, Halt,
Jr., and Tang; (b) claims 38--40 over Robertson, Halt, Jr., and Grasso;
(c) claim 41 over Robertson, Halt, Jr., and Reed; and (d) claim 49 over
Robertson, Halt, Jr., and Govindarajan.
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DECISION
The Examiner's obviousness rejections of claims 26-30, 32, and 34--
54 are affirmed. The Examiner's obviousness rejection of claim 33 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
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