Ex Parte Tseng

Patent Trial and Appeal Board

Apr 17, 2017

12917747 (P.T.A.B. Apr. 17, 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.
12/917,747 11/02/2010 Erick TSENG 079894.0176 2096
91230 7590 04/19/2017
Raker Rntts; T T P /Faeehnnk Tne
EXAMINER
2001 ROSS AVENUE TRAPANESE, WILLIAM C
SUITE 700
Dallas, TX 75201 ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
04/19/2017 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):
ptomaill @bakerbotts.com
ptomai!2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICK TSENG
Appeal 2016-006548
Application 12/917,7471
Technology Center 2100
Before THU A. DANG, JOHN P. PINKERTON, and
JOHN D. HAMANN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—3, 7, 9—16, 20, and 22—28, which are all of the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant identifies Facebook, Inc. as the real party in interest. App. Br. 2.
Appeal 2016-006548
Application 12/917,747
STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention is generally directed to
“a communications or networking system that automatically establishes a
connection to a target user in response to a user selecting an avatar
representing the target user, and establishing a connection by a
communication channel based on current context and one or more rules
configured by the target user.” Spec. 14.2
Claim 1 is representative and reproduced below (with the disputed
limitations emphasized)'.
1. A method comprising:
by a client computing device, detecting activation of an
avatar by a first user, wherein the avatar represents a second user
and the avatar is displayed in a graphical user interface of a first
application comprising a social-networking application on the
client computing device;
by the client computing device, in response to detecting
the activation, automatically sending a request to a server
computing device to select a communication channel for
connecting the first user to the second user, wherein selection of
the communication channel is based on contact information of
the second user and a current context of the second user;
by the client computing device, receiving from the server
computing device communication-channel information for the
communication channel selected for connected the first user to
the second user; and
2 Our Decision refers to the Final Office Action mailed Nov. 21, 2014
(“Final Act.”); Appellant’s Appeal Brief filed June 22, 2015 (“App. Br.”)
and Reply Brief filed June 20, 2016 (“Reply Br.”); the Examiner’s Answer
mailed Apr. 20, 2016 (“Ans.”); and the original Specification filed Nov. 2,
2010 (“Spec.”).
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Application 12/917,747
by the client computing device, in response to receiving
the communication-channel information from the server,
automatically initiating without user input a connection between
the first user of the social-networking application and the second
user, the connection initiated by a second application comprising
a communications application on the client computing device,
the communications application associated with the
communication channel selected by the server for connecting the
first user to the second user.
App. Br. 21 (Claims App’x).
Rejections on Appeal
Claims 1—3, 7, 9—16, 20, and 22—26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Madhok (US 2010/0241634 Al;
published Sept. 23, 2010), Cadiz et al. (US 2002/0186257 Al; published
Dec. 12, 2002) (“Cadiz”), Sandell et al. (US 7,599,362 B2; issued Oct. 6,
2009) (“Sandell”), Xu (US 2008/0123587 Al; published May 29, 2008), and
Horvitz (US 2002/0174199 Al; published Nov. 21, 2002).
Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Madhok, Cadiz, Sandell, Xu, Horvitz, and Robinson et al.
(US 2008/0222295 Al; published Sept. 11, 2008) (“Robinson”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Briefs and are not persuaded the Examiner erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2—15) and in the Examiner’s Answer (Ans. 2—5), and we concur with
the conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Briefs.
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Application 12/917,747
Rejection of Claims 1—3, 7, 9 16, 20, and 22—26 under § 103(a)3
Appellant contends the proposed combination of Madhok, Cadiz,
Sandell, Xu, and Horvitz does not teach or suggest the disputed limitations
of claim 1. App. Br. 14—17. In particular, Appellant argues there is no
disclosure in Madhok of ‘“by the client computing device . . .
automatically initiating without user input a connection . . . by a second
application comprising a communications application on the client
computing device, the communications application associated with the
communication channel selected by the server . . as recited in Claim 1.”
App. Br. 16; Reply Br. 2—3. Appellant argues Sandell requires the user to
select the desired communication channel and does not teach or suggest
“‘automatically initiating without user input a connection . . . by a second
application comprising a communications application ... selected by the
server.’” as recited in Appellants’ Claim 1. App. Br. 16. Appellant also
argues Horvitz indicates that the user of the device selects the
communication channel and does not teach or suggest “‘by the client
computing device, in response to receiving the communication channel
information, automatically initiating without user input a connection
between the first user and the second user by a second application
comprising a communications application on the client computing
device, the communications application associated with the communication
channel selected by the server for connecting the first user and the second
user,’ as recited in Claim 1.” App. Br. 16—17; Reply Br. 3^4. Appellant
3 We decide the rejection of claims 1—3, 7, 9—16, 20, and 22—26, which are
rejected under the first-stated ground of rejection, on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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further argues that Xu does not teach the recited claim elements. Reply Br.
4.
Appellant also argues the Examiner relies on three distinct references
with respect to the disputed limitations, and such a piecemeal rejection fails
to give credence to the combination of features recited in claim 1 and
appears to constitute impermissible hindsight. App. Br. 18—19. Appellant
further argues the combination of references is improper because (1) the
Examiner has not provided a motivation to combine the network-based
systems of Madhok and Xu with the client-based system of Sandell, (2) the
Examiner has not shown a suggestion or motivation in the references or the
knowledge in the art to combine the references, or the desirability of the
combination, and (3) incorporating Sandell’s client-based system would
change the principle of operation of Madhok and Xu. Reply Br. 5—6.
We do not find Appellant’s arguments persuasive of Examiner error.
First, we are not persuaded by Appellant’s arguments attacking Madhok,
Horvitz, and Xu individually because they fail to address the Examiner’s
specific finding, which is based on the combined teachings of Madhok,
Horvitz, and Xu.4 See Ans. 2-4. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.”). The relevant inquiry is whether
the claimed subject matter would have been obvious to those of ordinary
4 Although the Examiner also relied on Sandell in the Final Office Action
(Final Act. 5—6), in the Answer the Examiner finds “Madhok in view of
Horvitz and Xu teaches all aspects of the limitation argued by applicant.”
Ans. 4.
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skill in the art in light of the combined teachings of the references. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the Examiner finds Madhok teaches automatically initiating a
connection between the first user and second user by the communication
channel selected for connecting the first user to the second user. Ans. 2. In
that regard, the Examiner finds Madhok teaches the communication can be
dynamically initiated once the appropriate channel is determined. Id. (citing
Madhok Fig. 9, steps 904, 906, 908; 1 84). The Examiner notes “Madhok
fails to teach that the server selects the communication channel.” Ans. 3.
However, the Examiner finds Horvitz teaches “automatically initiating
without user input” a connection between the client device and the second
user based upon “the communication channel selected by the server”
because Horvitz teaches automatically connecting users based upon a server
determined communication channel without further input from the user. Id.
(citing Horvitz 199). The Examiner also notes that Madhok in view of
Horvitz fails to teach using a different application to initiate a connection
between the users. Id. However, the Examiner finds “Xu teaches that the
application of each communication channel is a unique application.” Id.
(citing Xu 131). For the reasons provided by the Examiner, we find the
preponderance of the evidence establishes that the combined teachings of
Madhok, Horvitz, and Xu teach or suggest the disputed limitations of claim
1.
Second, we are not persuaded the Examiner’s rejection of claim 1 was
improper because, as Appellant argues, a person of ordinary skill in the art
would not be motivated to make the proposed combination without the
benefit of impermissible hindsight. App. Br. 18—19; Reply Br. 5—6.
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Appellant’s argument that the Examiner has not shown a suggestion or
motivation in the references or the knowledge in the art to combine the
references, or the desirability of the combination, is not persuasive because
the Supreme Court has rejected the rigid requirement of demonstrating a
teaching, suggestion, or motivation in the references to show obviousness.
See KSR Int'l Co., v. Teleflex Co., 550 U.S. 398, 419 (2007). As our
reviewing court held:
KSR directs that an explicit teaching, suggestion, or motivation
in the references is not necessary to support a conclusion of
obviousness. 550 U.S. at 415—16. The Supreme Court has
instructed that “a court must ask whether the improvement is
more than the predictable use of prior art elements according to
their established functions,” id. at 417, and apply “an expansive
and flexible approach” to obviousness, id. at 415.
In reEthicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017).
Regarding the rationale for combining the references, the Examiner
finds Madhok, Horvitz, and Xu, as well as Sandell, all relate to selected
communication channels in electronic devices and “[e]ach reference is
combined to provide a technique taught to improve the method of selecting
communication channels as described in the patent document.” Ans. 4.
Accordingly, we find the rejection is supported by “some articulated
reasoning with some rational underpinning” to combine known elements in
the manner required by the claim. See KSR, 550 U.S. at 418. We also find
the combination of the teachings of Madhok, Horvitz, and Xu is merely a
combination of known elements that would yield no more than predictable
results. See KSR, 550 U.S. at 416 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
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Regarding Appellant’s argument that the Examiner’s rejection is
based on impermissible hindsight, it must be recognized that any judgment
on obviousness is in a sense necessarily a reconstruction based upon
hindsight reasoning. However, so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from the Appellant’s disclosure, such a reconstruction is proper. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellant has not
demonstrated the Examiner’s proffered combination of references would
have been “uniquely challenging or difficult for one of ordinary skill in the
art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Although Appellant argues
the client-based system of Sandell would change the principle of operation
of Madhok and Xu (see Reply Br. 5—6), this argument is not persuasive
because the Examiner does not rely on Sandell in the Answer. See Ans. 3^4.
In addition, Appellant has also not provided objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Furthermore, even though the
Examiner relies on the combined teachings of three references to teach or
suggest the disputed limitations of claim 1, we agree with the Examiner that
“reliance on a large number of references in a rejection does not, without
more, weigh against the obviousness of the claimed invention.” Ans. 5
(citing In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991)).
Thus, for these reasons, and because, as discussed supra, the rejection is
based on the references and what they would have taught or suggested to a
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person of ordinary skill in the art, we conclude the Examiner’s rejection is
not based on impermissible hindsight.
Accordingly, for the aforementioned reasons, and based upon a
preponderance of the evidence, we are not persuaded the Examiner erred in
(1) finding the combination of Madhok, Horvitz, and Xu teaches or suggests
the disputed limitations of claim 1 and (2) concluding that the combination
of Madhok, Horvitz, Xu, and Cadiz renders the subject matter of claim 1
obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s
rejection of claim 1, as well as independent claim 14, and dependent claims
2, 3, 7, 9-13, 15, 16, 20, 22, and 23-26.
Rejection of Claims 27 and 28 under § 103(a)
Appellant argues claims 27 and 28 are allowable because they depend
from claim 1, which Appellant argues has been shown to be allowable. App.
Br. 19. We are not persuaded by this argument, because for the reasons
stated supra, we conclude claim 1 is not allowable. Thus, we sustain the
Examiner’s rejection of claims 27 and 28.
DECISION
We affirm the Examiner’s rejections of claims 1—3, 7, 9—16, 20, and
22-28 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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