Ex Parte CHEN-QUEE et al

Patent Trial and Appeal Board

Mar 17, 2016

13026577 (P.T.A.B. Mar. 17, 2016)

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.
13/026,577 02/14/2011 Mark CHEN-QUEE YOR920100402US1 5146
59144 7590 03/18/2016
CAHN & SAMUELS, LLP
1100 17th STREET, NW
SUITE 401
WASHINGTON, DC 20036
EXAMINER
PATEL, RONAK
ART UNIT PAPER NUMBER
2458
MAIL DATE DELIVERY MODE
03/18/2016 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
____________

Ex parte MARK CHEN-QUEE, JOHN W. ECKHART,
and HEATHER A. SMITH
____________

Appeal 2014-001785
Application 13/026,577
Technology Center 2400
____________

Before JAMES R. HUGHES, JOHN A. EVANS, and
MATTHEW J. McNEILL, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–25. (App. Br. 3.)1 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We refer to Appellants’ Specification (“Spec.”) filed Feb. 14, 2011 and
Appeal Brief (“App. Br.”) filed July 12, 2013. We also refer to the
Examiner’s Answer (“Ans.”) mailed Sept. 11, 2013, and Final Office Action
(Final Rejection) (“Final Act.”) mailed Feb. 13, 2013.
Appeal 2014-001785
Application 13/026,577

2

Appellants’ Invention
The invention at issue on appeal concerns systems, computer program
products, and methods for controlling access to content in a social
networking website. The method categorizes user profile content of a first
user into first and second content categories, where the first category
includes content created prior to establishing a connection to a second user
and the second category includes content created after establishing contact
with the second user. The method restricts access by the second user to the
first content category of the first users’ profile. (Spec. ¶¶ 1, 3–5; Abstract.)
Illustrative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method for controlling access to content in a social
networking website, said method including:
establishing a connection between a first user and a
second user on the social networking website, the social
networking website including profile pages of the first user;
categorizing content on the profile pages of the first user
into a first content category and a second content category,
the first content category including content created
before the connection between the first user and the second
user was established, and
the second content category including content created
after the connection between the first user and the second user
was established; and
restricting access by the second user to the first content
category.

Appeal 2014-001785
Application 13/026,577

3

Rejections on Appeal
1. The Examiner rejects claims 1–4, 9, 10, 15–18, 23, and 24
under 35 U.S.C. § 102(b) as anticipated by Hull et al. (US 2005/0171799
A1; Aug. 4, 2005).
2. The Examiner rejects claims 5, 11, 19, and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over Hull and Gaedcke (US 2009/0144139
A1; June 4, 2009).
3. The Examiner rejects claims 6, 12, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Hull, Gaedcke, and Reddy (US
2011/0078437 A1; Mar. 31, 2011).
4. The Examiner rejects claims 7, 13, and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Hull, Gaedcke, and Blaxland et al. (US
2009/0313295 A1; Dec. 17, 2009).
5. The Examiner rejects claims 8, 14, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Hull, Gaedcke, and Roman (US
2012/0042013 A1; Feb. 16, 2012).

ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that Hull discloses
categorizing content on the profile pages of the first user
into a first content category and a second content category,
the first content category including content created before
the connection between the first user and the second user was
established, and
Appeal 2014-001785
Application 13/026,577

4

. . .
restricting access by the second user to the first content
category
(hereinafter “disputed limitations”) within the meaning of Appellants’ claim
1 and the commensurate limitations of claims 9, 15, and 23?

ANALYSIS
The Examiner provides the same basis for rejecting each of the
independent claims—claims 1, 9, 15, and 23 (Final Act. 6–12; Ans. 2–4)—
and rejects representative claim 1 under 35 U.S.C. § 102(b) as being
anticipated Hull. (Final Act. 6–7.) Appellants contend that Hull does not
disclose the disputed features of representative claim 1. (App. Br. 7–10.)
Specifically, Appellants contend, inter alia, that
nothing within Hull discloses customizing a view of the social
network user’s profile based on when the connection between the
user and a second user was established. Nothing within Hull
mentions temporal or chronological categorization of “social
network information” (which the Office action asserts discloses
the “content” of the claimed invention)
(Br. 8.)
We agree with Appellants that Hull does not disclose the recited
“categorizing content . . . into a first content category . . . [where] the first
content category includ[es] content created before the connection between
the first user and the second user was established” (claim 1) (i.e.,
chronological categorization). We agree with the Examiner that Hull
discloses social network contact seeding and customized categorization of
user profile information based on relationships and characteristics of
established contacts (Ans. 2–4 (citing Hull ¶¶ 15, 26–28, 42) — i.e.,
Appeal 2014-001785
Application 13/026,577

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“categorizing content on profile pages between users . . . [into a] first
content category and a second content category where first content [category
is] created before connection” (Ans. 2). Hull also discloses restricting
access to particular categories of profile information. (Ans. 2–3 (citing Hull
¶¶ 15, 24, 27, 42.) We do not agree, however, that the cited portions of Hull
explicitly describe categorizing information based on a chronological
characteristic or restricting access based thereon. We agree with Appellants
that Hull does not disclose such chronological categorization. (See Br. 7–
10.)
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding Hull discloses the disputed limitations of
Appellants’ claim 1. Independent claims 9, 15, and 23 include limitations of
commensurate scope. Claims 2–4, 10, 16–18, and 24 depend on claims 1, 9,
15, and 23, respectively. Accordingly, we reverse the Examiner’s
anticipation rejection of claims 1–4, 9, 10, 15–18, 23, and 24.
With respect to the obviousness rejections of dependent claims 5–8,
12–14, 19–22, and 25, rejected as obvious over Hull as well as Gaedcke,
Reddy, Baxland, and/or Roman, we reverse the Examiner’s obviousness
rejections for the same reasons set forth with respect to claim 1 (supra). The
Examiner does not assert, and we do not find, that the additional prior art
references remedy the deficiencies of Hull.
Accordingly, we agree with Appellants that the Examiner erred, as the
analysis in the Examiner’s rejection is not sufficient to show that Hull
discloses or teaches the recited features of claims 1–25.

Appeal 2014-001785
Application 13/026,577

6

CONCLUSIONS
Appellants have shown that the Examiner erred in rejecting claims
1–4, 9, 10, 15–18, 23, and 24 under 35 U.S.C. § 102(b).
Appellants have shown that the Examiner erred in rejecting claims
5–8, 12–14, 19–22, and 25 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejections of claims 1–25.

REVERSED