Ex Parte Tseng

Patent Trial and Appeal Board

Oct 30, 2017

13156219 (P.T.A.B. Oct. 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.
13/156,219 06/08/2011 Erick Tseng 079894.0288 4565
91230 7590 11/01/2017
Raker Rntts; T T P /Faeehnnk Tne
EXAMINER
2001 ROSS AVENUE PHAM, KHANH B
SUITE 700
Dallas, TX 75201 ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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 2017-002312
Application 13/156,2191
Technology Center 2100
Before JEREMY J. CURCURI, KEVIN C. TROCK, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 5, 6, 8, 9, 12, 13, 15, and 27—37. 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. 3.
Appeal 2017-002312
Application 13/156,219
STATEMENT OF THE CASE
The Invention
According to the Appellant, the invention “generally relates to
presenting search results identified for search queries.” Spec. 1 5.
Exemplary independent claim 1 is reproduced below with relevant
portions emphasized. The emphasized portion is referred to herein as the
“if-then-else” steps.
1. A method comprising, by a client device of a user of an
online social network:
receiving one or more characters of a search query
inputted by the user into a text-entry box, the user being
associated with a first node of a social graph of the online social
network;
compiling, responsive to receiving the search query, a first
set of search results associated with one or more second nodes of
the social graph, wherein the first set of search results are
received from information stored on the client device, and
wherein each of the search results of the first set of search results
corresponds to a second node of the one or more second nodes
that is within a threshold degree of separation from the first node
of the user;
providing for display to the user a list of the first set of
search results adjacent to the text-entry box; and
if there is a positive determination that additional results
are needed based on receiving no user interaction with respect
to any search results of the first set of search results, then:
sending, to the online social network, a request to
execute the search query;
receiving, from the online social network, a second
set of search results associated with one or more third
nodes of the social graph, the second set of search results
being different from the first set of search results; and
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providing for display to the user a list of the second
set of search results adjacent to the text-entry box;
else not sending a request to the online social network to
execute the search query.
References and Rejections
1. Claims 1, 2, 5, 6, 8, 9, 12, 13, 15, and 28—37 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Zimmet (US 2009/0043844
Al; Feb. 12, 2009), Garg (US 8,316,037 Bl; Nov. 20, 2012) and Song (US
2011/0078184 Al; Mar. 31, 2011). Final Act. 2-9.
2. Claim 27 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Zimmet, Song, and Burke (US 2008/0065617 Al; Mar.
13,2008). Final Act. 10.
ANALYSIS
Whether the References Teach the If-Then-Else Steps
Appellant contends the Examiner erred by treating the if-then-else
steps of claim 1 as “separate and independent claim features” rather than as
linked together. App. Br. 9. Appellant argues “the Examiner is
[improperly] picking one reference (Garg) as allegedly disclosing the ‘if’
portion of the claim feature and another reference (Song) as allegedly
disclosing the ‘then’ portion and the ‘else’ portion of the claim feature.”
App. Br. 9-10. More specifically, Appellant argues “Garg’s step of
determining that when search results interaction data shows . . . there are no
user clicks of the search results, leads only to the follow-up step of
performing remedial search operations, and not to a step of requesting an
online social network to execute the search query.” App. Br. 10. And
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Song’s determination that when the option of “Find in SNS site’ is not
selected, the system only searches the contact list/phone book . . . and not
the social-networking website is not predicated on a determination of
whether or not there are any user clicks of the search results.”
We are unpersuaded by Appellant’s argument. Initially, we note
Appellant does not point to, nor are we aware of, any case law supporting
the argument that a set of logical steps, such as the claimed if-then-else
steps, cannot be taught by a combination of references rather than a single
reference alone. Instead, Appellant’s ultimate argument is that Garg does
not teach searching an online social network, and that Song does not teach
searching the online social network based on a determination that additional
search results are needed. See App. Br. 10. These arguments are
unpersuasive, however, because they attack the references separately and fail
to consider the Examiner’s rejection as a whole. In re Keller, 642 F.2d 413,
426 (CCPA 1981) (“[0]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.” (citation omitted)). The Examiner relies upon
Song, not Garg, for conducting a search of an online social network (Final
Act. 4—5), and the Examiner relies upon Garg, not Song, for determining
whether additional search results are needed (Final Act. 3—4).
Appellant’s arguments in the Reply brief are unpersuasive for the
same reason. For example, Appellant argues “Garg fails to disclose a
number of claim elements, including at least the claimed location from
which search results are being retrieved (e.g., locally stored on the client
device or from the online social network) based on the specific step of a
search conducted.” Reply Br. 4. The Examiner, however, relies on Zimmet,
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not Garg, as teaching “a first set of search results are received from
information stored on the client device.” Final Act. 3. Appellant also argues
the Examiner erred because “Garg fails to teach that the second set of search
results is retrieved from a different source” than the first set of search
results. Reply Br. 5. But the Examiner relies on Song, not Garg, for this
teaching. Final Act. 4—5 (citing Song || 103—107 (Song teaches searching
an online social network when the “Find in SNS site” option has been set,
otherwise the search is conducted on the contact list or phone book)).
Whether the Examiner Provided a Proper Reason to Combine References
Appellant also argues “the Examiner has failed to establish a prima
facie case of obviousness[,] because the Examiner has failed to provide a
clear articulation of the reasons why the proposed Zimmet-Garg-Song
combination would have been obvious to one of skill in the art.” App. Br.
13. For example, Appellant contends the Examiner erred by not articulating
“a finding that there was [a] reasonable expectation of success” (App. Br.
12) , by not articulating “some teaching, suggestion, or motivation ... to
modify the reference or to combine [the] reference teachings” (App. Br. 12—
13) , and by providing a reason to combine references that “has no relation to
the limitations of Claim 1.” (App. Br. 13).
To support a finding of obviousness the Examiner must provide
“articulated reasoning with some rational underpinning” for combining
known elements in the manner required by the claim. KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
977 (Fed. Cir. 2006)). “The obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
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content of issued patents.” Id. at 419. The Examiner finds one of ordinary
skill in the art would combine Zimmet and Garg “so that ‘user feedback can
be received that can be used to improve the quality of search results in the
future,’” Final Act. 4 (citing Garg 2:48—57). The Examiner further finds one
of ordinary skill would combine Song with Zimmet and Garg to “provide
interlinking the information of contact list in the mobile device terminal with
information obtained from the SNS sites for easy search of the contact
person from both the contact list and the SNS site by entering a common
search query.” Final Act. 5 (citing Song | 6). The Examiner bolsters this
reasoning by pointing out that all three references are from the same field of
endeavor, that each reference teaches known aspects of the claims and that
combining their teachings would yield predictable results. Ans. 7. Contrary
to Appellant’s contention, by providing the aforementioned reasoning we
find that the Examiner has articulated a reason with rational underpinning
for combining the teaching of the prior art references.
As to Appellant’s argument that the Examiner has not articulated a
finding of reasonable expectation of success, we are unpersuaded. The
Examiner findings indicate that Zimmet, Garg, and Song disclose elements
with known functionality in the field of queries and search results. The
Examiner’s findings also indicate that these elements would perform the
same function in combination as they would separately and that their
combination would yield predictable results. See Final Act. 4—5; Ans. 7
(summarizing the functions relied upon from the three references and noting
that their combination would yield predictable results). Such a finding
indicates that one of ordinary skill would have a reasonable expectation of
success when combining the teachings of the references. Appellant does not
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provide any reasoning or evidence that the results would not have been
predictable, or other evidence rebutting the Examiner’s findings. Similarly,
Appellant does not provide reasoning or evidence that combining the
teachings of Zimmet, Garg, and Song would have been beyond the skill of
the ordinary artisan.
We also disagree with the Appellant’s argument that the Examiner’s
reason to combine the references is improper because it “has no relation to
the limitations of Claim 1.” App. Br. 13. As the Examiner explained, the
reason to combine involves improving the quality of search results and
linking the information on the client device with information on a social
network (see Final Act. 4—5), both of which are related to the goals of
Appellant’s invention. See Spec. 14 (“There are continuous efforts to
improve the quality of the search results generated by the search tools”);
Spec. H28—29 (Describing conducting a search on a client device, for
example in the contacts stored on the user’s smartphone, and conducting the
search on a social-networking site). Further, the reason to combine need to
not stem from the claimed invention itself, so long as it is based on
knowledge in the art as a whole. See KSR, 550 U.S. at 420 (“The question is
not whether the combination was obvious to the patentee but whether the
combination was obvious to a person with ordinary skill in the art. Under
the correct analysis, any need or problem known in the field of endeavor at
the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.”)
Whether Song Changes the Principle of Operation of Zimmet-Garg
Appellant argues “combining Song with the Zimmet-Garg
combination would impermissibly change the principle of operation of the
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configuration of the Zimmet-Garg combination” because the Zimmet-Garg
combination does not take additional steps such as requesting an online
social network to execute a search query and modifying the combination to
include such a step would “unnecessarily complicate the configuration of the
Zimmet-Garg combination.” App. Br. 14.
We are unpersuaded by Appellant’s argument. The Zimmet-Garg
combination already allows for additional steps to take place when it is
determined that additional results are needed. See Ans. 4 (citing Garg 2:25—
35 (describing that remedial search operations are performed if the user does
not interact with the first set of search results)). The Examiner’s
combination modifies these steps to include requesting an online social
network to execute a search query, as taught in Song. In other words, the
principle operation of Zimmet-Garg is not changed, rather a step already
taken by Zimmet-Garg is modified by the teachings of Song.
CONCLUSION
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 1. Appellant does not present any additional arguments for separate
patentability of any remaining pending claims. See App. Br. 15.
Accordingly, we sustain the Examiner’s rejection of these claims.
DECISION
The Examiner’s rejection of claims 1, 2, 5, 6, 8, 9, 12, 13, 15, and 27—
37 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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