Ex Parte Stremel et al

Patent Trial and Appeal Board

Nov 30, 2017

11701566 (P.T.A.B. Nov. 30, 2017)

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.
11/701,566 02/02/2007 Jed Stremel 26295-14134 6637
87851 7590 12/04/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center DAYE, CHELCIE L
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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 JED STREMEL, TS RAMAKRISHNAN,
and MARK SLEE
Appeal 2017-007289
Application 11/701,566
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 14—16, 20-22, 25—30, and 33—41, which are all of the pending
claims.1 Claims 1—13, 17—19, 23, 24, 31, 32, 42, and 43 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 In a prior Decision (Appeal Number 2013-002223, decided April 20, 2015,
herein “Decision”), we affirmed the Examiner’s rejections of claims 14—16,
20, 21, 23, 25, 34-40, and 42 under 35 U.S.C. § 103(a) over Oijer, Wilkins,
and Robertson; and claims 22, 26—31, 33, and 41 under 35 U.S.C. § 103(a)
over Oijer, Wilkins, Robertson, and Achlioptas.
Appeal 2017-007289
Application 11/701,566
A. INVENTION
According to Appellants, the claimed invention relates to
automatically populating an electronic contact file with contact content and
expression content (Spec. 116).
B. REPRESENTATIVE CLAIM
Claim 14 is exemplary:
14. A method for automatically populating a contact file, the
method comprising:
storing, in a contact file on a device, contact information
about a plurality of contacts;
receiving into the device an identifier used by a social
network database to identify a contact;
automatically checking, within the stored contact
information in the contact file on the device storing contact
information about a plurality of contacts, for contact content
associated with the received identifier;
responsive to the device determining that the contact file
on the device does not contain the contact content for the
contact associated with the identifier, sending a request
for the contact content for the contact to a social network
database storing the contact content for the contact at a web-
based server, the request comprising the identifier used by the
social network database to identify the contact;
receiving at the device from the social network database
the requested contact content for the contact, subject to one or
more privacy settings for the contact in a social network
associated with the social network database that govern access
to the contact content by someone other than the contact;
storing the contact content in the contact file on the
device; and
displaying some or all of the contact content on a display
of the device.
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C. REJECTION
Claims 14—16, 20-22, 25—30, and 33—41 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Oijer (US 2007/0259654 Al,
issued Nov. 8, 2007), and Hull (US 2005/0171799, published Aug. 4, 2005).
II. ISSUES
The principal issues before us are whether the Examiner erred in
finding the combination of Oijer and Huh teaches or suggests “responsive to
the device determining that the contact file on the device does not contain
the contact information for the contact. . . sending a request for the contact
content for the contact to a social network database storing the contact
content for the contact at a web-based server,” the request comprising “the
identifier used by the social network database to identify the contact;” and
“receiving at the device from the social network database the requested
contact content for the contact” (claim 14).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Oijer
1. Oijer discloses populating a contacts list with information,
wherein a message is automatically generated requesting that the contact
provide a picture in response and receiving and storing the picture in the
communication device (Abst.). A messaging program and/or picture wizard
determines whether the party associated with a communication device is not
included in the contacts list and automatically generates a request for picture
message and prompt the user of the communication device if he/she would
like to add the party to the contacts list (1 67).
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Hull
2. Hull relates to seeding a user’s contacts for their online social
network comprising a plurality of network devices (Abst.). In Hull, each
network device comprises a profile store that is configured to maintain and
store information associated with a portal subscriber and/or a corresponding
social network user (| 39), wherein the profile store also stores and
maintains criteria associated with how profile information may be viewed by
another social network user (| 40). A social network server determines
whether a user has requested seeding of their online social network contact
list or whether the user has recently registered and has not yet populated
their contact list, and then seeds the user’s online social network contact list
using portal profile information flflf 51—53).
IV. ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend “Oijer does not send a request for the contact
content ‘to a social network database,’ as claimed” but instead discloses
“sending a message to a user requesting a picture to ‘allow the user to
provide the picture of his/her choice’” (App. Br. 7, citing Oijer at | 59).
Appellants then contend “Hull seeds a user’s contact list within a social
network,” and thus, “Hull does not disclose a device sending (nor social
network receiving) a request for the contact content of a contact associated
with a social networking system identifier included in the request, to be
sent outside of the social network” (id.). That is, “Hull describes a user
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requesting for their contact list — within their social network —to be seeded,
and Hull’s system identifies the seed contacts based on the user’s portal
profile information” {id., citing Hull at || 52—53).
Appellants then contend “[t]he Examiner does not show where the
cited references disclose the contact content being received from a social
network database” {id. at 8). According to Appellants, “Oijer discloses
receiving contact pictures from a communication device associated with a
contact in a contact list” while Hull merely disclose “recommending a set
of seed contacts that the user may wish to invite to join their social network,
but does not disclose ‘receiving at a device from the social network
database, the requested contact content’” {id. at 8—9).
We have considered all of Appellants’ arguments and evidence
presented. However, we are not persuaded by Appellants’ contentions
regarding the Examiner’s rejections of the claims. On this record before us,
we agree the Examiner’s conclusion that the claims would have been
obvious over the combined teachings of Oijer and Hull.
As a preliminary matter of claim construction, we give the claims
their broadest reasonable interpretation consistent with the Specification.
See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). While we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Although Appellants contend “Hull seeds a user’s contact list within
a social network” the claims do not preclude a contact list within a social
network (App. Br. 7; claim 14). As the Examiner correctly notes, “the
features upon which applicant relies (i.e., request to be sent outside of the
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social network) are not recited in the rejected claim(s)” (Ans. 8). In
particular, claim 14 merely requires “sending a request for the contact
content for the contact to a social network database” and “receiving at the
device from the social network database the requested contact content for the
contact.” That is, in claim 14, the request is sent to and the requested
content is received from a social network database, but nothing in the claim
requires that the social network database is “outside of’ the social network
(App. Br. 7).
We also agree with the Examiner’s finding Oijer teaches “sending a
request for contact content between two different devices across a network”
(Ans. 8; FF 1). As set forth in our previous Decision, we find no error with
the Examiner’s reliance on Oijer for teaching or suggesting “responsive to
the device determining that the contact file on the device does not contain
the contact information for the contact. . . requesting the contact
information” (Decision 7; FF 1).
Further, we agree with the Examiner’s reliance on Hull “for explicitly
teaching the use of an identifier used by a social network database and the
social network database storing the contact at a web-based server” (Ans. 8;
FF 2). In particular, we agree with the Examiner’s finding “Hull’s invention
is for seeding online social network contacts to a user, wherein the system
includes a network and social network server” for communicating the
information (id.). As the Examiner finds, in Hull, “a request can be made to
seed the online social network contact list by using the profile information,”
wherein we agree the Examiner’s conclusion that such profile information
“corresponds to the claimed identifier, for requesting the contact” (id.).
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As we noted in our previous Decision, the Supreme Court has
determined the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. (Decision 8, citing
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Here, we conclude it would have been obvious to a person of ordinary
skill in the art to combine Oijer's teaching and suggestion of requesting
contact information responsive determining that the contact file does not
contain particular contact information (FF 1), in view of Hull’s teaching and
suggestion of seeding (requesting) a web-based, social network server for
contact content using an identifier (FF 2). The skilled artisan would “be able
to fit the teachings of multiple patents together like pieces of a puzzle” since
the skilled artisan is “a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 420—21. We find that the combination of the references is
no more than a simple arrangement of old elements, with each performing
the same function it had been known to perform, yielding no more than one
would expect from such an arrangement. Id. at 417.
Thus, we find no error with the Examiner’s reliance on Oijer in view
of Hull for teaching and suggesting “responsive to the device determining
that the contact file on the device does not contain the contact information
for the contact. . . sending a request for the contact content for the contact to
a social network database storing the contact content for the contact at a
web-based server,” the request comprising “the identifier used by the social
network database to identify the contact” (claim 14).
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We are also not persuaded by Appellants’ contentions that the cited
references do not disclose “the contact content being received from a social
network database” because “Oijer discloses receiving contact pictures from a
communication device associated with a contact in a contact list” while Hull
merely disclose “recommending a set of contact that the user may wish to
invite to join their social network” (App. Br. 8—9, emphasis omitted). The
test for obviousness is what the combined teachings would have suggested to
one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
Here, the Examiner relies on Oijer for teaching and suggesting
“receiving at the device the requested contact content for the contact,
wherein a response/reply message is composed and sent with the contact
information” (Ans. 8; FF1). Further, the Examiner relies on Hull for
teaching and suggesting “that the requested content came from the social
network database” (id.; FF 2). On this record, we are unpersuaded the
Examiner erred in finding the combination of Oijer and Hull at least would
have suggested “receiving at the device from the social network database the
requested contact content for the contact” as recited in claim 14.
Accordingly, we find no error with the Examiner’s rejection of
claim 14 over Oijer, and Hull.
As for independent claims 22, 30, and 41, Appellants merely
contend “Oijer does not disclose contact content that includes ‘information
about the contact’s connection in a social network’” and “Hull also does not
disclose sending this information to a device requesting contact content”
(App. Br. 9). However, Appellants are similarly arguing the references
separately when the rejection is over the combination of the references,
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Application 11/701,566
wherein the test for obviousness is what the combined teachings would have
suggested to one of ordinary skill in the art. See In re Merck, 800 F.2d at
1097.
Here, we find no error with the Examiner’s reliance on Hull and not
Oijer for teaching or suggesting “a category store for classification of the
user’s relationship with other users of the social network such as family
members” (Ans. 9). In view of the Examiner’s reliance on Oijer for teaching
and suggesting “receiving at the device the requested contact content”
(Ans. 8; FF1), we are unpersuaded he Examiner erred in also rejecting
independent claims 22, 30 and 41 over Oijer and Hull.
Appellants provide no substantive arguments for independent
claims 26 and 36 and the dependent claims separate from those of claim 14
(App. Br. 10), and thus, we also affirm the rejection of independent
claims 26 and 36 and the dependent claims over Oijer, and Hull. See 37
C.F.R. § 41.37(c) (l)(iv).
DECISION
We affirm the Examiner’s rejections of claims 14—16, 20—22, 25—30,
and 33—41 under 35 U.S.C. § 103(a).
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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