Facebook, Inc.

Patent Trials and Appeals Board

Aug 26, 2021

2020003788 (P.T.A.B. Aug. 26, 2021)

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.
16/399,395 04/30/2019 Michael James LeBeau 079894.6465 8057
91230 7590 08/26/2021
BAKER BOTTS L.L.P./FACEBOOK INC.
1001 Page Mill Road
Building One, Suite 200
Palo Alto, CA 94304-1007
EXAMINER
WON, MICHAEL YOUNG
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
08/26/2021 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):
Cal-PTOmail@bakerbotts.com
ptomail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL JAMES LeBEAU, SAMUEL WHARTON LESSIN,
JOSEPH DAVID BARILLARI, AMIR SHIMONI, ARLENE GABRIANA
MURILLO, MATEUSZ MAREK NIEWCZAS, MANISH MODI, and
CAITLIN E. KALINOWSKI
____________

Appeal 2020–003788
Application 16/399,3951
Technology Center 2400
_______________

Before HUNG H. BUI, DAVID J. CUTITTA II, and MICHAEL J. ENGLE,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final rejection of claims 1–20, all of the pending claims.
Appeal Br. 10–14 (Claims App.). We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.2

1 “Appellant” refers to “applicant(s)” as defined in 37 C.F.R. § 1.42.
Facebook, Inc. is identified as the real party in interest. Appeal Br. 3.
2 We refer to Appellant’s Appeal Brief filed March 18, 2020 (“Appeal
Br.”); Reply Brief filed April 21, 2020 (“Reply Br.”); Examiner’s Answer
mailed April 14, 2020 (“Ans.”); Final Office Action mailed December 5,
2019 (“Final Act.”); and Specification filed April 30, 2019 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to “a social-networking system [160,
shown in Figure 3 that] may facilitate the establishment and confirmation of
a wireless communication session between a beacon [310] and a user’s client
system [130] proximate to the beacon [310] in order to enhance a user’s
experience at the beacon-holder business.” Spec. ¶ 6. Figure 3 is
reproduced below:

Figure 3 shows an example beacon 310 (or other suitable geographic-
positioning-capable devices or systems associated with a 3rd party content
provider) positioned at a location within a place of the 3rd party content
provider (for example, affixed on a wooden surface, shown in Figure 13, or
alternatively at an entrance of a 3rd party content provider’s store) and
associated with social network system 160 in order to establish and maintain
a wireless communication session between beacon 310 and any number of
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client systems, including user’s client system 130 or all nearby second users
proximate to, or within a predetermined distance of beacon 310. Spec. ¶ 58.
The social-networking system may also customize notifications
based on social-networking and session information of the user’s
social connections. For example, the notification may specify
friends of the user who are already at the restaurant (e.g., based
on session information for the friends received from a beacon
located at the restaurant).

Spec. ¶ 9 (emphasis added).
In particular embodiments, social-networking system 160 may
select one or more second users of all nearby second users which
may be referenced in a notification sent to the first user’s client
system 130. . . In particular embodiments, social networking
system 160 may select one or more second users from the second
users determined to be nearby based on session information
associated with the second users indicating that the client
systems of the second users are not in wireless communications
sessions with beacon 310 (e.g., none of the second users is
already at the third-party content provider place at which the first
user is located).

Spec. ¶ 115 (emphasis added).

Representative Claim
Claims 1, 16, and 20 are independent claims. Representative claim 1
is reproduced below with disputed limitations emphasized and bracketed
numerals added for clarity:
1. A method comprising, by one or more computing devices of an
online social network:
[1] receiving, from a beacon associated with a third-
party content provider, current session information associated
with a first user, wherein the current session information
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indicates that a first client system of the first user is in an active
wireless communication session with the beacon;
[2] identifying one or more second users, [2a] wherein
each identified second user is within a threshold geographical
distance of the beacon, and [2b] wherein session information
associated with each of the one or more second users indicates
whether or not a second client system associated with the
respective second user is in a wireless communication session
with the beacon;
[3] selecting one or more of the one or more identified
second users based on a determination that the session
information associated with the respective selected second user
indicates that the second client system associated with the
selected second user is not in a wireless communication session
with the beacon; and
[4] sending, to the first client system, a notification
referencing the selected one or more second users.

Appeal Br. 10 (Claims App.).

REJECTION AND REFERENCES
Claims 1–20 stand rejected under 35 U.S.C. § 103 as obvious over the
combined teachings of Spencer et al. (US 2012/0192258 A1; issued July 26,
2012; “Spencer”) and St. Clair (US 2014/0222912 A1; issued Aug. 7, 2014).
Final Act. 5–13.
ANALYSIS
In support of the obviousness rejection of claim 1 and similarly,
claims 16 and 20, the Examiner finds Spencer teaches most limitations of
Appellant’s claimed “method” for an “online social network,” including: [1]
“receiving, from a beacon associated with a third-party content provider,
current session information associated with a first user, wherein the current
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session information indicates that a first client system of the first user is in
an active wireless communication session with the beacon” and [2]
“identifying one or more second users, [2b] wherein session information
associated with each of the one or more second users indicates whether or
not a second client system associated with the respective second user is in a
wireless communication session with the beacon.” Final Act. 5–7 (emphasis
omitted) (citing Spencer ¶¶ 29, 30, 32, 37–38, 48, 68).
The Examiner finds Spencer does not teach, but relies on St. Clair to
teach [2a] “wherein each identified second user is within a threshold
geographical distance of the beacon”; [3] “selecting one or more of the one
or more identified second users based on a determination that . . . the second
client system associated with the selected second user is not in a wireless
communication session with the beacon”; and [4] “sending, to the first client
system, a notification referencing the selected one or more second users.”
Final Act. 7–8 (citing St. Clair ¶¶ 38, 40).
Appellant disputes the Examiner’s factual findings regarding Spencer
and St. Clair. First, Appellant contends the proposed Spencer/St. Clair
combination does not teach or suggest:
[2] identifying one or more second users, [2a] wherein each
identified second user is within a threshold geographical distance
of the beacon, and [2b] wherein session information associated
with each of the one or more second users indicates whether or
not a second client system associated with the respective second
user is in a wireless communication session with the beacon

as recited in claim 1. Appeal Br. 6–7; Reply Br. 2–4 (emphasis added).
In particular, Appellant argues “Spencer merely describes” (1) “a
social network profile may comprise information allowing others to
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recognize and interact with these users” (¶ 30), (2) “user-related data may
comprise personal data volunteered by a user upon current or previous
network access, which may be accessed from different sources” (¶ 32),
(3) “verifying a user’s social profile for access authorization” (¶ 48), and
(4) “identifying and providing user access to content deemed most relevant”
(¶ 68). Appeal Br. 6. Appellant further argues that “St. Clair [only]
describes” (1) “determining ‘a service of the social-networking system that
is relevant to the current location or velocity’” (¶ 38), (2) “providing ‘for
display a user-interface element for the service’” (¶ 38), and (3) “accessing
‘a social graph of the social-networking system for the user’s first-degree
friends having locations in proximity (e.g., within 1000 feet) to the current
location’” (¶ 40). Id. at 6−7. According to Appellant, “user-related data in
Spencer merely provides an overview of user attributes, which certainly does
not indicate whether or not a second client system associated with the
respective second user is in a wireless communication session with the
beacon.” Id. at 7 (emphasis in original). Likewise, “the ‘hotspot-related
data’ in Spencer is used in monitoring network access usages, which
indicates the amount of data sent and received” but “such usage does not
provide indication about whether or not a second client system associated
with the respective second user is in a wireless communication session
with the beacon” recited in Appellant’s claim 1. Reply Br. 4.
Second, Appellant contends St. Clair does not teach or suggest:
[3] selecting one or more of the one or more identified second
users based on a determination that the session information
associated with the respective selected second user indicates that
the second client system associated with the selected second user
is not in a wireless communication session with the beacon

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as recited in claim 1. Appeal Br. 7–8; Reply Br. 4 (emphasis added).
According to Appellant, “accessing ‘a social graph of the social-
networking system for the user’s first-degree friends having locations in
proximity (e.g., within 1000 feet) to the current location’ [as taught by St.
Clair]” is not and cannot be considered the same as Appellant’s claimed
“whether or not a second client system associated with a second user is in a
wireless communication session with the beacon” recited in claim 1. Appeal
Br. 8.
The Examiner does not respond to Appellant’s arguments sufficiently.
Instead, the Examiner takes the position that:
1. Spencer’s “hotspot” serves as Appellant’s claimed
“beacon” (Ans. 4);
2. because Spencer’s “hotspot related data is used to
‘identify’ and locate any social-networking user” and
“monitor[] network access usage by a user” “one of
ordinary skill in the art will agree” that Spencer “suggests
the claimed limitation, ‘session information associated
with each of the one or more second users indicates
whether or not a second client system associated with the
respective second user is in a wireless communication
session with the beacon’” (Ans. 5);
3. “the user [in Spencer] is inherently ‘within a threshold
geographic distance’” of Spencer’s “hotspot” (Ans. 5–6);
4. St. Clair also teaches a “threshold geographic distance”
because “St. Clair teaches determining location based on
the location of a beacon” (Ans. 6);
5. because St. Clair teaches “access a social graph . . . for one
or more concept nodes with locations in proximity (e.g.,
within one half mile) to the current location,” “one of
ordinary skill in the art will construe ‘proximity to the
current location’ as a specific geographic distance
associated with the location of the first user (i.e., current
location of the first user such as when the first user is at a
particular hotspot location)” (Ans. 7); and
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6. St. Clair’s “first user can determine a ‘user’s first-degree
friends having locations in proximity (e.g., within 1000
feet) to the current location’.” (Ans. 7).

Neither Appellants’ contentions nor the Examiner’s positions are
entirely accurate or persuasive. Obviousness is a question of law based on
underlying factual findings, In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir.
2012), including what a reference teaches, In re Beattie, 974 F.2d 1309,
1311 (Fed. Cir. 1992), and the existence of a reason to combine references,
In re Hyon, 679 F.3d 1363, 1365–66 (Fed. Cir. 2012). At the outset, we note
that Spencer teaches “a system and method . . . for providing wireless
network access to a user of a remote device at a hotspot [in the form of
network access module 1106, shown in Figures 1 and 11].” Spencer
Abstract. For example, Spencer’s Figure 11 is reproduced below:

Figure 11 shows a hotspot network access system using hotspot 1106 to
allow a user of mobile device 1102 (for example, a patron at a coffee shop)
to establish wireless communication with network 1104 (i.e., Internet).
Spencer ¶ 70. According to Spencer,
The term “hotspot” is used herein to define a public access venue,
location and/or geographical area in which a wireless access
point (WAP) provides wireless network services (e.g.
802.11a/b/g/n based or supported services, WiMax based or
supported services, and other such services) to mobile visitors
through a wireless local area network (WLAN), metropolitan
area network (MAN), wide area network (WAN), or the like,
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using, for example but not limited to, Wi-Fi technology or the
like. . . . Similarly, the term “hotspot-related data” is used herein
to define data or information associated with a given hotspot or
group of hotspots. Such [hotspot-related] data may be used in,
for example and in accordance with different embodiments of the
invention, but not limited to, monitoring network access usage
by a user (e.g. in compiling network access statistics and/or
reports identifying access usage, location, time, history,
frequency and the like), tailoring network access privileges (e.g.
access restrictions, authorizations, and the like) and/or content
(e.g. information, news, promotions, advertising, opt-in services
or programs associated with a hotspot location, area, venue,
affiliation, operator, service profile and the like), and the like.

Spencer ¶ 29. “For example, a hotspot provided at a national coffee chain
may provide free wireless access to regular patrons who identify their
loyalty to this coffee chain as part of their social profile.” Spencer ¶ 48.
We, therefore, are persuaded that (1) Appellant’s claimed “beacon”
can be broadly interpreted to encompass Spencer’s “hotspot network access
device”; (2) Spencer’s user device 1102 (for example, a patron at a coffee
shop) is able to establish wireless communication with network 1104, via
hotspot network access device 1106 shown in Figure 11, (3) other users’
mobile devices (i.e., second users or other patrons) are able to do the same
when these mobile devices come within the range of hotspot 1106 and, as
such, (4) Spencer’s hotspot network access system, shown in Figures 1 and
11, is able to:
[2] identify[] one or more second users, [2a] wherein each
identified second user is within a threshold geographical distance
of the beacon, and [2b] wherein session information associated
with each of the one or more second users indicates whether or
not a second client system associated with the respective second
user is in a wireless communication session with the beacon

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as recited in claim 1. Final Act. 5–6 (citing Spencer ¶¶ 29, 30, 32, 37–38,
48, 68); see also Spencer ¶ 70.
However, we are not persuaded that St. Clair teaches or suggests:
[3] selecting one or more of the one or more identified second
users based on a determination that the session information
associated with the respective selected second user indicates that
the second client system associated with the selected second user
is not in a wireless communication session with the beacon

as recited in claim 1. Appeal Br. 7–8; Reply Br. 4 (emphasis added). As
recited in Appellant’s claim 1, selection of one or more second users from
all second users who come within the range of a beacon is based on a
determination that “session information associated with the respective
selected second user indicates that the second client system associated with
the selected second user is not in a wireless communication session with the
beacon,” that is, “none of the second users is already at the third-party
content provider place at which the first user is located” as described on
paragraph 115 of Appellant’s Specification.
As a secondary reference, St. Clair teaches determining a current
location or velocity of a mobile device and without manual user input,
modifying a user interface (UI) of the mobile device based, in part, on the
current location or velocity. St. Clair, Abstract, ¶ 5. In addition to
determining the current location or velocity of a mobile device, St. Clair also
teaches determining a service of the social-networking system that is
relevant to the mobile device’s current location, including (1) nearby friends
or (2) places of interest in proximity to the current location. St. Clair ¶ 38.
For example, St. Clair uses a social graph to search for a user’s first-degree
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friends having locations in proximity (e.g., within 1000 feet) to the current
location of the user’s mobile device. St. Clair ¶¶ 38, 40.
However, St. Clair does not select one or more second users from all
second users who come within the range of a beacon based on whether a
mobile device of selected second user “is not in a wireless communication
session with the beacon,” recited in claim 1. Because St. Clair fails to teach
the disputed limitation, St. Clair fails to remedy the deficiencies of Spencer
to arrive at Appellant’s claim 1 and similarly, claims 16 and 20.
For these reasons, we do not sustain the Examiner’s obviousness
rejection of independent claims 1, 16, and 20 and their respective dependent
claims 2–15 and 17–19.
CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 1–20 as obvious over the combined
teachings of Spencer and St. Clair.

DECISION SUMMARY
In Summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–20 103 Spencer, St. Clair 1–20
Overall
Outcome
1–20

REVERSED