Ex Parte Zuckerberg et al

Patent Trial and Appeal Board

Apr 26, 2017

13117617 (P.T.A.B. Apr. 26, 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.
13/117,617 05/27/2011 Mark Zuckerberg 079894.0309 8000
91230 7590 04/28/2017
Raker Rntts; T T P /Faeehnnk Tne
EXAMINER
2001 ROSS AVENUE OSMAN, RAMY M
SUITE 700
Dallas, TX 75201 ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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 MARK ZUCKERBERG,
AARON SITTIG, and SCOTT MARLETTE
Appeal 2017-005694
Application 13/117,617
Technology Center 2400
Before JUSTIN BUSCH, SCOTT E. BAIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, 4—14, and 16—23. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Facebook, Inc. Br. 3.
Appeal 2017-005694
Application 13/117,617
STATEMENT OF THE CASE
The Invention
According to the Specification, the “invention relates generally to
internet digital content, and more particularly to systems and methods for
tagging digital media.” Spec. 12.2 The Specification explains that the
“method includes selecting a digital media and selecting [a] region within
the digital media” and may “further include associating a person or entity
with the selected region and sending a notification of the association [to] the
person or entity or a different person or entity.” Abstract.
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows, with italics indicating the
limitations at issue in claim 1:
1. A method comprising:
by a computing device, presenting to a first user of a
social-networking system a graphical user interface comprising
an item of digital media;
by the computing device, receiving a first input from the
first user selecting a bounded two-dimensional region of the
item of digital media;
by the computing device, receiving a second input from
the first user indicating a tag for the item of digital media
corresponding to the bounded two-dimensional region, the tag
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed May 27, 2011; “Final Act.” for the Final Office Action,
mailed November 28, 2014; “Adv. Act.” for the Advisory Action, mailed
February 12, 2015; “Br.” for the Appeal Brief, filed December 8, 2015;
“Ans.” for the Examiner’s Answer, mailed June 27, 2016; and “Resp. to
Notification” for the Response to Notification of Non-Compliant Appeal
Brief, filed March 13, 2017.
2
Appeal 2017-005694
Application 13/117,617
comprising a link associated with a second user of the social­
networking system; and
by the computing device, sending a notification of the tag
being associated with the item of digital media to the second
user, the notification including advertising selected based on
characteristics of a user profile of the second user.
Resp. to Notification 2.
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Malik et al.
(“Malik”)
Lunt et al.
(“Lunt”)
Tunguz-Zawislak et al.
(“Tunguz-Zawislak”)
Leebow
US 2004/0078448 Al
US 2005/0235062 Al
US 2008/0004959 Al
US 2008/0077595 Al
Apr. 22, 2004
Oct. 20, 2005
Jan. 3, 2008
Mar. 27, 2008
Ben Shneiderman & Hyunmo Kang, Direct Annotation: A Drag-and-Drop
Strategy for Labeling Photos, Proceedings of the IEEE International
Conference on Information Visualization 88-95 (2000)
(“Shneiderman”)
Risto Sarvas et al., MobShare: Controlled and Immediate Sharing of
Mobile Images, Proceedings of the 12th Annual ACM International
Conference on Multimedia 724—31 (2004) (“Sarvas”)
3
Appeal 2017-005694
Application 13/117,617
The Rejections on AppeaP
Claims 1, 2, 4, 7—11, 13, 14, 16, and 19-21 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Leebow and Shneiderman. Final
Act. 3—6; Ans. 2—5.
Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Leebow, Shneiderman, and Sarvas. Final Act. 7;
Ans. 5—6.
Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Leebow, Shneiderman, and Malik. Final Act. 7—8; Ans. 6.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Leebow, Shneiderman, and Lunt. Final Act. 8; Ans. 6—7.
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Leebow, Shneiderman, and Tunguz-Zawislak. Final
Act. 8—9; Ans. 7—8.
ANALYSIS
We have reviewed the rejections of claims 1, 2, 4—14, and 16—23 in
light of Appellants’ arguments that the Examiner erred. For the reasons
explained below, we disagree with Appellants’ assertions regarding error by
the Examiner. We adopt the Examiner’s findings in the Final Office Action
(Final Act. 2—8), Advisory Action (Adv. Act. 2), and Answer (Ans. 3—10)
insofar as they are not inconsistent with the analysis that follows. We add
the following to address and emphasize specific findings and arguments.
3 Although the Final Office Action included additional rejections under
35 U.S.C. § 103(a) as well as rejections under 35 U.S.C. § 112 12, the
Examiner has withdrawn those rejections. Ans. 8—9.
4
Appeal 2017-005694
Application 13/117,617
The Rejection of Claims 1, 2, 4, 7—11, 13,
14, 16, and 19—21 Under 35 U.S.C. § 103(a)
Independent Claim 1
Appellants argue that the Examiner erred in rejecting independent
claim 1 because Leebow and Shneiderman fail to disclose or suggest
“sending a notification of the tag being associated with the item of digital
media to the second user, the notification including advertising selected
based on characteristics of a user profile of the second user,” as recited in
claim 1. Br. 9—10. Appellants admit that Shneiderman discloses a database
schema for a photo library that includes a People table storing information
about people who appear in the photos. Id. at 10. But Appellants assert that
Shneiderman “fails to disclose or suggest a ‘notification including
advertising,’ let alone ‘advertising selected based on characteristics of a user
profile of the second user.’” Id. Appellants similarly assert that Leebow
“fails to disclose or suggest at least a ‘notification including advertising
selected based on characteristics of a user profile of the second user,’ as set
forth in independent Claim 1.” Id. According to Appellants, Leebow’s
“notification is an invitation to sign up for the website or a notification that
a picture was taggedr that lacks advertising. Id.
Appellants’ assertions do not persuade us of Examiner error because
they address the references individually. Where a rejection rests on a
combination of references, an appellant cannot establish nonobviousness by
attacking the references individually. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). “[T]he test for combining references is not
what the individual references themselves suggest but rather what the
combination of disclosures taken as a whole would suggest to one of
5
Appeal 2017-005694
Application 13/117,617
ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971); see In re Keller, 642 F.2d413, 425 (CCPA 1981).
Here, the Examiner finds that Leebow teaches a notification including
advertising selected based on characteristics of a user profile of the second
user. Ans. 4 (citing Leebow 145, Fig. 5); see Adv. Act. 2 (citing Leebow
145). As the Examiner correctly explains, “claims are given their broadest
reasonable interpretation” consistent with the specification. Ans. 10; see In
re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). The Examiner reasons that
the Specification’s description of “advertising” is “quite broad” and “hardly
provides any sort of limiting definition.” Ans. 10. That description appears
below:
Examples of advertising include, but are not limited to, a
depiction of a product, a depiction of a logo, a display of a
trademark, an inducement to buy a product, an inducement to
buy a service, an inducement to invest, an offer for sale, a
product description, trade promotion, a survey, a political
message, an opinion, a public service announcement, news, a
religious message, educational information, a coupon,
entertainment, a file of data, an article; a book, a picture, travel
information, and the like.
Spec. 139. As the Examiner notes, the phrase “and the like” at the end
“effectively leaves the definition open-ended” and not limited to any
particular type of advertising. Ans. 10.
The Examiner finds that the “Welcome Message” in Leebow Figure 5
constitutes a notification including advertising. Ans. 11; see Adv. Act. 2.
That message states:
Hi [First Name],
6
Appeal 2017-005694
Application 13/117,617
[Name of user] has FreezeFriended you in a group picture on
FreezeCrowd. Join [Name of user] and his FreezeFriends on
FreezeCrowd, the cool new social networking site for the
college audience where you can create your own profile, share
photos, join groups, chat, and more.
If you’d like to FreezeFriend [Name of user], please register for
a FreezeCrowd account by clicking the link below:
Leebow Fig. 5. Because the “Welcome Message” characterizes the
FreezeCrowd website as “the cool new social networking site for the college
audience where you can create your own profile, share photos, join groups,
chat, and more,” the message includes a product or service description that
constitutes “advertising” according to the Specification. Consistent with
this, claim 23 indicates that “advertising” includes “promotional content” for
a “social-networking system.” Resp. to Notification 5.
Further, Leebow explains that the “Welcome Message” is sent to each
person “identified in the group picture . . . [and] enables them to sign up for
the [FreezeCrowd] website and asks them to confirm their presence in the
group picture.” Leebow 145; see Br. 10. Leebow also explains that each
person identified in the group picture “who is not already a registered
member of the website can be invited to” join the FreezeCrowd website.
Leebow 145. Leebow distinguishes between nonmembers and members.
See id. ^fl[ 45, 49. Because the “Welcome Message” is sent to nonmembers
rather than members, Leebow teaches or suggests a notification including
advertising selected based on the characteristic of whether a tagged person is
a nonmember or member. See id. ^fl[ 45, 49, Fig. 5; see also Ans. 11.
In addition, the Examiner reasons that the “claimed ‘user profile’ is
broadly interpreted to be the collection of attributes.” Final Act. 5. The
Examiner finds that Shneiderman discloses user profiles for people who
7
Appeal 2017-005694
Application 13/117,617
appear in photos, i.e., the People table in the database schema for the photo
library. Adv. Act. 2; see Final Act. 5—6. For instance, Shneiderman
explains that the People table may include first name, last name, and
“personal information such as e-mail address . . . homepage address,
occupation and so on.” Shneiderman 5.
Accordingly, the combination of disclosures in Leebow and
Shneiderman teaches or suggests “sending a notification of the tag being
associated with the item of digital media to the second user, the notification
including advertising selected based on characteristics of a user profile of the
second user,” as recited in claim 1. Because Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Leebow and Shneiderman, we sustain the rejection of claim 1.
Independent Claim 13 and Dependent
Claims 2,4,7-11,14,16, and 19-21
Appellants do not make any separate patentability arguments for
independent claim 13 or dependent claims 2, 4, 7—11, 14,16, and 19-21.
Br. 7—11, 14. Because Appellants do not argue the claims separately, we
sustain the rejection of claims 2,4, 7—11,13,14,16, and 19-21 for the same
reasons as claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Rejections of Claims 5, 6, 12, 17,
18, 22, and 23 Under 35 U.S.C. § 103(a)
Appellants do not make any separate patentability arguments for
dependent claims 5, 6, 12, 17, 18, 22, and 23. Br. 7—11, 14. Although
Appellants assert that “Sarvas, Malik, and Lunl, taken alone or in
combination, also fail to disclose or suggest the . . . subject matter missing
from Shneiderman, Leebow, and Tungiizf Appellants do not attempt to
distinguish any dependent claims from the asserted teachings of Sarvas,
8
Appeal 2017-005694
Application 13/117,617
Malik, or Lunt. Id. at 11. Because Appellants do not argue the claims
separately, we sustain the rejections of claims 5, 6, 12, 17, 18, 22, and 23 for
the same reasons as claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 4—14, and
16-23.
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.
§ 1.136(a)(l)(iv).
AFFIRMED
9