Ex Parte Wang et al

Patent Trial and Appeal Board

Aug 8, 2016

12259254 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/259,254 10/27/2008
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
08/10/2016
FIRST NAMED INVENTOR
James Wang
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.
26295-14655 1645
EXAMINER
GREENE, JOSEPH L
ART UNIT PAPER NUMBER
2452
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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 JAMES WANG, AKHIL WABLE, and
SOLEIO CUERVO
Appeal 2015-001855
Application 12/259,254
Technology Center 2400
Before ALLEN R. MacDONALD, JON M. JURGOV AN, and
MICHAEL M. BARRY, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-7, 10-16, 19, 25, and 35--46. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
Appeal2015-001855
Application 12/259,254
CLAIMED INVENTION
The claims are directed to sharing digital content on a social
network. (Spec. Title.) Claim 1, reproduced below with a dispositive
limitation emphasized, is illustrative of the claimed subject matter:
1. A computer implemented method comprising:
for each of a plurality of users of a social networking
system, maintaining a user account and a set of connections to
other users of the social networking system;
receiving a sharing request for sharing content from a web
page, the sharing request initiated by a sharing user via a sharing
control outside of the social networking system and received by
the social networking system;
responsive to initiation of the sharing request via the
sharing control, providing an inteiface to the sharing user
enabling the sharing user to provide sharing parameters, the
interface served to the sharing user by a server of the social
networking system;
receiving via the interface a request and one or more
sharing parameters for communicating the content from the web
page to one or more other users of the social networking system;
and
transmitting a communication containing at least a portion
of the content to one or more other users with whom the sharing
user has established a connection using one or more
communication channels of the social networking system subject
to the one or more sharing parameters.
(App. Br. 13 (Claims App'x).)
REJECTIONS
Claims 1-5, 7, 10-14, 16, 19, 25, 35, 37, 38, 41, 43, and 44 stand
rejected under 35 U.S.C. § 103(a) based on Rothschild (US 2007/0168463
Al, July 19, 2007), Faris (US 2009/0043754 Al, Feb. 12, 2009) and
Svendsen (US 2003/0063770 Al, Apr. 3, 2003). (Final Act. 2-7.)
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Appeal2015-001855
Application 12/259,254
Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) based on
Rothschild, Faris, Svendsen, and Tam (US 2006/0259957 Al, Nov. 16,
2006). (Final Act. 8-9.)
Claims 36, 39, 42, and 45 stand rejected under 35 U.S.C. § 103(a)
based on Rothschild, Faris, Svendsen, and Kanazawa (US
2008/0313256 Al, Dec. 18, 2008). (Final Act. 9-10.)
Claims 40 and 46 stand rejected under 35 U.S.C. § 103(a) based on
Rothschild, Faris, and Official Notice. (Final Act. 10-11.)
ANALYSIS
Claims 1 and 10
Arguments Concerning Piecemeal Treatment of Claimed Element and
Deficiencies of Combined References
Appellants argue the Examiner errs in the rejection because the cited
references do not disclose the claimed limitation "responsive to initiation of
the sharing request via the sharing control, providing an interface to the
sharing user enabling the sharing user to provide sharing parameters, the
interface served to the sharing user by a server of the social network
system." (App. Br. 6-7.) Specifically, Appellants argue the Examiner
improperly dissects this limitation and does not properly consider that
providing of the interface in response to initiation of the sharing request is a
unitary requirement. (Id.) Appellants contend the rejection amounts to a
piecemeal attack on the claimed element.
Appellants further contend Faris and Svendsen fail to teach or suggest
the claimed feature of providing an interface to enable provision of sharing
parameters in response to initiation of a sharing request via a sharing
control. (App. Br. 7-9 citing Faris i-fi-16, 36 and Svendsen i147, claim 31.)
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Appeal2015-001855
Application 12/259,254
Faris teaches porting of a word page, including one or more page modules,
to a website when a user selects a "bang" control. (Faris i-fi-136, 37.)
Svendsen teaches that presentation logic composes a user interface for user
interaction with a peer site. (Svendsen i147.) Svendsen's presentation logic
provides templates and presentation resources (e.g., icons, graphics) used by
peer nodes in composing user interface elements. (Id.) The presentation
logic adapts the presentation based on capabilities of the requesting device
and user preferences. (Id.)
We agree with Appellants' argument that the Examiner's analysis
improperly dissects the claimed recitation that the interface enabling the user
to provide sharing parameters is provided responsive to initiation of the
sharing request. Appellants also persuade us that neither Faris nor
Svendsen, nor their combination, teaches or suggests this claimed recitation.
The Examiner states the sharing request equates to user selection of a "bang"
control in Faris. (Ans. 11-13.) However, selection of Faris' "bang" control
results in porting a word page to a website, but does not result in
responsively providing an interface enabling a user to enter sharing
parameters. In Svendsen, the presentation logic adapts the presentation
based on user preferences, but those preferences are specified before, not in
response to, composing the user interface. (Svendsen i147.) Svendsen's use
of preset user preferences thus neither teaches nor suggests providing an
interface to enable entry of sharing parameters in response to a sharing
request. Thus, we do not sustain the Examiner's rejection of claims 1 and
10.
Remaining Claims
The remaining claims depend from independent claims 1 or 10.
Accordingly, we do not sustain the rejection of the dependent claims for the
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Appeal2015-001855
Application 12/259,254
reasons stated with respect to claims 1 and 10. In the interests of economy
and expediency, we do not reach Appellants' remaining arguments
concerning dependent claims 3, 12, and 25.
CONCLUSION
An obviousness rejection under§ 103(a) requires that "there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)
(internal quotations omitted)). On this record, we find the Examiner's
reasoning and underpinning inadequate to support the conclusion of
obviousness for the above stated reasons.
DECISION
We reverse the Examiner's rejections of claims 1-7, 10-16, 19, 25,
and 35--46 under 35 U.S.C. § 103(a).
REVERSED
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