Ex Parte Morgenstern et al

Patent Trial and Appeal Board

Oct 25, 2018

13096784 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/096,784
87851 7590
Facebook/Fenwick
Silicon Valley Center
04/28/2011
801 California Street
Mountain View, CA 94041
10/29/2018
FIRST NAMED INVENTOR
Jared Morgenstern
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.
26295-17343 5271
EXAMINER
RIFKIN, BEN M
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARED MORGENSTERN and EVGENY KUZY AKOV
Appeal2017-001991
Application 13/096,784
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1, 2, 4, and 6-24. 1 Claims 3 and 5 are cancelled. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Facebook, Inc. as the real party in interest. (App.
Br. 2.)
Appeal2017-001991
Application 13/096,784
THE INVENTION
The claims are directed to matching users of a social networking
system with other users of the social networking system based on the
likelihood of both users being interested in using a social application and the
likelihood that they would want to interact with each other using the
application. (Abstract.) Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
retrieving social networking information about an inviting
user of a social networking system who uses a social
application, the social application operating on the social
networking system, that allows users of the social
networking system to interact with each other in the
social application;
scoring a set of candidate users, the candidate users having
an established relationship with the inviting user in the
social networking system but not having previously
interacted with the inviting user in the social application,
the scoring based in part on the social networking
information about the inviting user, the social networking
information describing interactions on the social
networking system between the inviting user and the
candidate users, and reflecting a likelihood that the
inviting user and the candidate user will interact with
each other in the social application;
selecting one or more users from the set of candidate users
based on the scoring; and
sending invitations to the one or more selected users to
interact with the inviting user in the social application.
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Appeal2017-001991
Application 13/096,784
REJECTIONS
The Examiner rejected claims 1, 2, 4, 9--11, 23, and 24 under
35 U.S.C. § I03(a) as being unpatentable over O'Kelley et al.
(US 2006/0121990 Al, pub. June 8, 2006), Reding et al. (US 2008/0243853
Al, pub. Oct. 2, 2008), and Webster et al. (US 2012/0225723 Al, pub. Sept.
6, 2012). (Non-Final Act. 2-8.)
The Examiner rejected claims 6-8 and 12-22 under 35 U.S.C.
§ I03(a) as being unpatentable over O'Kelley, Reding, Webster, and Hull et
al. (US 2005/0171799 Al, pub. Aug. 4, 2005). (Non-Final Act. 8-20.)
ISSUES ON APPEAL
Appellants' Appeal Brief raises the following issues: 2
First Issue: Whether the combination of O 'Kelley, Reding, and
Webster teaches or suggests the independent claim 1 limitations "the social
application operating on the social networking system" and "the scoring ...
reflecting a likelihood that the inviting user and the candidate user will
interact with each other in the social application," and whether the
combination of O 'Kelley, Reding, Webster, and Hull teaches or suggests the
commensurate limitations of independent claim 12. (App. Br. 4--8.)
Second Issue: Whether the combination of O'Kelley, Reding,
Webster, and Hull teaches or suggests the additional limitations of
dependent claim 16. (App. Br. 9--10.)
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed Feb. 19, 2016), Reply Brief (filed Nov. 29,
2016), Non-Final Action (mailed Oct. 15, 2014), and the Answer (mailed
Sept. 28, 2016) for the respective details.
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Appeal2017-001991
Application 13/096,784
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
arguments, and adopt as our own: (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Non-Final Act.
2-20); and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellants' Appeal Brief ( Ans. 16-22 ), and concur
with the conclusions reached by the Examiner.
First Issue
In finding that O 'Kelley, Reding, and Webster teach or suggest the
claim 1 limitations at issue, the Examiner relies on the disclosures in
0 'Kelley of a matchmaking service for matching online game players,
which takes into account feedback about social behavior of other players,
such as positive and negative experiences, and which uses a priority
matching system based on designated friends and recent contacts, in addition
to feedback. (Non-Final Act. 3; O'Kelley Abstract, ,r,r 7-8, 54---63.)
Appellants argue the Examiner fails to provide a clear explanation for
the rejection, and in any case O'Kelly fails to teach or suggest "predicting a
likelihood that the inviting user and the other user will interact." (App. Br.
5.) However, as the Examiner finds, and we agree:
[O'Kelley] denotes prioritizing other players for the user to play
with. This includes the use of feedback for the scoring, players
who the user has previously interacted with (recent players)
having a higher priority (i.e. a higher likelihood to interact with
the user in the game), and friends of the user having the highest
priority (i.e. an even higher likelihood of interacting with the
user in the game). All of these values are used to score the
users as potential matches for the user in the game they want to
play. This score goes on to denote their likelihood of
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Appeal2017-001991
Application 13/096,784
interacting with the user in the game since they are interested in
interacting with these people (recent opponents, friends, etc).
Furthermore, the feedback designated by the O 'Kelley
reference further represents actions showing likelihood of
interaction in the game such as willingness to cooperate,
language, sportsmanship, etc .... As well as the player[']s
interest in interacting with the other users such as whether or
not you would want to play with that player. . . . [T]his meets
the broadest reasonable interpretation of the claims ....
(Ans. 16-17.)
Appellants further argue "O 'Kelley does not need or use a score
predicting an interaction because its users actually do interact once
matchmaking is complete." (App. Br. 6.) However, we agree with the
Examiner that, "[ s ]imply because O 'Kelley allows the system to match make
does not prevent it from predicting a likelihood that users will interact on a
social application." (Ans. 18.) We agree with the Examiner that the fact
that users are selected for an "Affiliates List," and thereby matched for a
game session is not inconsistent with a teaching or suggestion of scoring for
likelihood of interaction. (Ans. 18; O'Kelley ,r 8, 61.) Moreover, the
Examiner relies on Reding for the "inviting" aspect of the claim limitation at
issue, and therefore the combination of O 'Kelley with Reding fully supports
the Examiner's finding of a teaching or suggestion of the subject matter of
this limitation. (Non-Final Act. 4; Reding ,r 17.) In that respect, Appellants'
argument is unpersuasive because it focuses on O 'Kelley alone, whereas the
Examiner's rejection is based on a combination of references. In re Keller,
642 F.2d 413, 425 (CCP A 1981) ("the test is what the combined teachings of
[those] references would have suggested to those of ordinary skill in the
art").
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Appeal2017-001991
Application 13/096,784
Appellants also argue O'Kelley does not disclose the required
"scoring," but rather uses a priority approach for matchmaking of players.
(App. Br. 6.) As the Examiner finds, despite the fact that O'Kelly does not
explicitly use the word "score," the priority approach disclosed meets the
broadest reasonable interpretation of that requirement. ( Ans. 18-19.) There
is no requirement in an obviousness analysis for the prior art to "contain a
description of the subject matter of the appealed claim in ipsissimis verbis."
In re May, 574 F.2d 1082, 1090 (CCPA 1978) (emphasis added).
Finally, Appellants argue O 'Kelly does not teach a "social application
operating on the social networking system," as required by the claims,
because "[ t ]he social matchmaking system disclosed in O 'Kelley ... plays
an auxiliary role to the gameplay experience; it is not a platform on which
the game operates." (App. Br. 7-8.) However, we agree with the Examiner
that, under the broadest reasonable interpretation of this claim limitation, the
"social matching" system described in O 'Kelley at least teaches or suggests
this limitation. (Ans. 20-21; O'Kelly Title, ,r,r 1, 7, 39, 54, 56, 61.)
Therefore, we sustain the obviousness rejection of independent
claim 1. The Examiner also relies on the above described disclosures of
0 'Kelley as teaching or suggesting the commensurate limitations of
independent claim 12 at issue. (Non-Final Act. 12-13.) Appellants make
the same arguments for claim 12 as for claim 1. (App. Br. 4--9.) Therefore,
we also sustain the obviousness rejection of independent claim 12.
Second Issue
Claim 16 depends from claim 12 and adds the limitation, "wherein the
prediction is made based on at least one of the likelihood that the inviting
user will request an invitation to one or more of the selected users and the
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Application 13/096,784
likelihood that each of a number of the identified selected users will accept
an invitation from the inviting user to use the social application." (App.
Br. 14.) In rejecting these claims, the Examiner relies on the priority
matching disclosure of O 'Kelley discussed above, together with the
invitation disclosures of Reding and Hull. (Non-Final Act. 12-14, 17-18;
Ans. 21-22; Reding ,r 17; Hull ,r 14.)
Appellants' argument is directed to the disclosures of O 'Kelley alone.
(App. Br. 9-10.) This argument is unpersuasive given the reliance of the
Examiner on the combination of O 'Kelley, Reding, and Hull as teaching or
suggesting the subject matter of this claim limitation. In re Keller, 642 F .2d
at 425.
Therefore, we sustain the obviousness rejection of claim 16.
CONCLUSION
For the reasons discussed above, we sustain the Examiner's
obviousness rejections of claim 1 over O'Kelley, Reding, and Webster, and
of independent claim 12 and dependent claim 16 over O 'Kelley, Reding,
Webster, and Hull.
In addition, we sustain the obviousness rejections of claims 2, 4, 9-11,
23, and 24 over O'Kelley, Reding, and Webster, and of claims 6-8, 13-15,
and 17-22 over O'Kelley, Reding, Webster, and Hull, which rejections are
not argued separately with particularity.
DECISION
The Examiner's rejection of claims 1, 2, 4, and 6-24 is affirmed.
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Appeal2017-001991
Application 13/096,784
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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