Fremlin, John Torres. et al.

Patent Trials and Appeals Board

Oct 23, 2019

13799581 - (D) (P.T.A.B. Oct. 23, 2019)

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.
13/799,581 03/13/2013 John Torres Fremlin 079894.1641 8093
91230 7590 10/23/2019
BAKER BOTTS L.L.P./FACEBOOK INC.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201
EXAMINER
NGANKAM, PATRICK F
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
10/23/2019 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):
judy.wan@bakerbotts.com
ptomail1@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN TORRES FREMLIN, VLADIMIR FRIDMAN,
LEX ARQUETTE, and ERBIL KARAMAN
____________________

Appeal 2019-000202
Application 13/799,581
Technology Center 2400
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claims 1–3, 5–11, and 13–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed March 13, 2013; “Final Act.” for the Final Office Action,
mailed December 6, 2017; “Appeal Br.” for Appellant’s Appeal Brief, filed
June 25, 2018; “Ans.” for Examiner’s Answer, mailed September 14, 2018;
and “Reply Br.” for Appellant’s Reply Brief, filed October 8, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
Facebook, Inc. Appeal Br. 3.
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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to a
social-networking system. Spec. ¶¶ 5–7. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method comprising, by one or more server
computing devices:
providing for presentation in a graphical user interface
(GUI) of a client computing device, an identification of a first
user;
receiving real-time video of the first user from the client
computing device;
identifying a plurality of second users having a
relationship to the first user based at least in part on a social
graph, wherein:
the social graph comprises a plurality of nodes and edges
connecting the nodes;
at least one node in the graph corresponds to the first
user; and
at least one node in the graph corresponds to one of the
second users;
selecting, for presentation in the GUI on the client
computing device, one or more of the identified second users
having an associated video based at least in part on a social-
graph proximity score of the at least one node corresponding to
the first user to the least one node corresponding to identified
second users, wherein the social-graph proximity score is based
on determining a plurality of the nodes are connected to each
other by an edge; and
providing for presentation in the GUI on the client
computing device presence information comprising the video of
the first user and the video of one or more of the selected
second users, wherein:
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the providing of the video of one or more of the
selected users is based on the social-graph proximity score
between the node corresponding to the first user and the node
corresponding to a respective one of the second users and a
frequency of interaction between the first user and the
respective one of the second users;
the presence information indicates a temporal,
spatial, modal, or social accessibility or availability of the first
user; and
the GUI provides the presence information of the
first user and one or more of the selected second users as it is
captured in real-time.
Appeal Br. 18 (Claims App.) (emphasis added).
THE REJECTIONS
R1. Claims 1–3, 6–11, and 14–19 stand rejected under pre-AIA 35
U.S.C. § 103(a) as obvious over Liu (US 2014/0036027 A1, published
Feb. 6, 2014), Garcia (US 2012/0278395 A1, published Nov. 1, 2012), and
Chew (US 2014/0019882 A1, published Jan. 16, 2014). Final Act. 3–26.
R2. Claims 5, 13, and 20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Liu, Garcia, Chew, and Reddy (US 2013/0061296
A1, published Mar. 7, 2013). Final Act. 26–27.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
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We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection R1 of Claims 1–3, 6–11, and 14–19
Appellant argues claims 1–3, 6–11, and 14–19 together as a group.
See Appeal Br. 11–16. Therefore, consistent with the provisions of
37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to claim 1. Independent
claims 9 and 17 and dependent claims 2, 3, 6–8, 10, 11, 14–16, 18, and 19
stand or fall with claim 1.
Motivation to Combine
Appellant contends that the rejection fails to establish a prima facie
case of obviousness. Appeal Br. 13–16; Reply Br. 3–4. We disagree.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). An Examiner’s rejection establishes a
prima facie case when it provides notice of the reasons for the rejection, and
the rejection is deficient when it “is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). If this initial
burden is met, the burden of coming forward with evidence or argument
shifts to Appellant. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745
F.2d at 1472. Obviousness is then determined on the basis of the evidence
as a whole and the relative persuasiveness of the arguments. Id.
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Appellant argues that the Examiner failed to make a prima facie case
“because the Examiner has failed to provide a clear articulation of the
reasons why the proposed Liu-Garcia-Chew combination would have been
obvious to one of skill in the art.” Appeal Br. 13 (emphasis omitted).
Appellant contends that the Examiner’s statements are “conclusory” and fail
to articulate two findings that, according to Appellant, are required for a
prima facie case—“a finding that there was [a] reasonable expectation of
success” and “a finding that there was some teaching, suggestion, or
motivation . . . to modify the reference or to combine reference teachings.”
Id. at 13–15 (citing MPEP § 2143(G) (Rev. 6, Sept. 2007)). Appellant
alleges that the Examiner “does not advance an obviousness rationale,” but
rather simply asserts that one of ordinary skill would have been motivated to
make the proposed combination. Reply Br. 3–4.
Appellant’s arguments do not persuade us of error. First, we disagree
that an examiner, to make a prima facie case, is always required to articulate
an express finding that “there was [a] reasonable expectation of success.”
Appeal Br. 14 (citing MPEP § 2143(G)). Instead, “[t]he key to supporting
any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s)
why the claimed invention would have been obvious.” MPEP § 2143
(requiring “a reasoned explanation as to why the invention as claimed would
have been obvious”); accord In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring rational underpinning to support obviousness conclusion), cited
with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Second, we reject Appellant’s arguments that the Examiner failed to
articulate a rationale and failed to provide a sufficient motivation to combine
the references. The Examiner made findings regarding the disclosure of
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each reference, found that a person of ordinary skill in the art would have
been motivated to combine those teachings, and provided an explanation for
why an ordinary artisan would have done so in a manner that renders claim 1
obvious. Final Act. 3–10; Ans. 14–17. The Examiner’s findings and
rationale are sufficient to make a prima facie case, and we are not persuaded
by Appellant’s argument to the contrary.
Moreover, Appellant does not present argument or evidence to
persuade us that the proposed combination would not have been obvious.
Consequently, Appellant has not shown error in the Examiner’s findings or
ultimate conclusion as to obviousness. See In re Oetiker, 977 F.2d at 1445
(If an examiner presents a prima facie case, “the burden of coming forward
with evidence or argument shifts to the applicant.”).
The Frequency Limitation
Claim 1 recites: “the providing of the video of one or more of the
selected users is based on the social-graph proximity score between the node
corresponding to the first user and the node corresponding to a respective
one of the second users and a frequency of interaction between the first user
and the respective one of the second users.” Appeal Br. 18 (Claims App.)
(emphasis added) (italicized text referred to herein as the “frequency
limitation”). Appellant alleges that the Examiner failed to establish that the
proposed combination teaches or suggests the frequency limitation. Appeal
Br. 12–13; Reply Br. 2.
The Examiner pointed to Garcia for this limitation. Final Act. 7.
Specifically, the Examiner found that Garcia’s user profile identifies a user’s
first degree contacts, and Garcia retrieves a list of other users who are within
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a pre-determined social proximity (e.g., first degree contacts, or first and
second degree contacts). Id. (citing Garcia ¶¶ 11, 22). The Examiner
explained that the frequency limitation is taught or suggested by Garcia:
Although Garcia does not explicitly discuss “frequency of
interaction”, it would be apparent to one of ordinary skill in the
art, based on the disclosure of Garcia, that first degree friends
refers to those [the] user is likely to interact with the most
and/or has the strongest connections to (see “connections” in
¶0011). Accordingly, the limitation is taught.
Id. (emphasis omitted).
Appellant argues the Examiner fails to establish that the frequency
limitation is taught or suggested by the references. Appeal Br. 12–13. In
particular, Appellant contends that the rejection “equate[s]” the first degree
friends with the frequency limitation, which “conflat[es] the concept of
degree of separation with ‘frequency of interaction.’” Id. at 12 (emphasis
omitted). Appellant further submits that “degree of separation . . . by itself
does not necessarily provide information of the frequency of interaction”
because the latter is also based on several different factors. Id. at 12–13.
In response, the Examiner clarifies that Garcia’s disclosure of degree
of separation, combined with other aspects of Garcia, suggests the frequency
limitation. Ans. 12–14. Specifically, the Examiner finds, “Garcia addresses
the problem of determining [the] likelihood that a user will interact with
another user based on the strength of their connections . . . and/or the degree
of separation” between the user and another user. Id. at 13 (citing Garcia
¶¶ 11, 13). The Examiner further concludes that the broadest reasonable
interpretation of “frequency of interaction”3 includes a likelihood of

3 The Examiner also expresses concern regarding the clarity of this phrase
and its support in the Specification. Ans. 12–13. However, the Final Office
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interaction. Id. The Examiner finds that it would have been obvious for
Garcia to select contacts to present to the first user based on the frequency of
interaction between the users. Id. at 13–14; see id. at 15–16 (explaining that
it would have been obvious to display individuals with “a stronger affinity or
connection . . . before . . . those users with whom the first user has a lower
frequency of interaction”). In reply, Appellant reiterates the argument from
the Appeal Brief and argues that the Examiner “fails to provide any analysis
or rationale linking” the findings regarding Garcia to the frequency
limitation, without otherwise addressing the Answer’s findings and
conclusions. Reply Br. 2.
First, we determine the Examiner, in the Final Office Action and the
Answer, sufficiently establishes that the references teach or suggest the
frequency limitation. Specifically, the Examiner finds: (1) Garcia discloses
social proximity, (2) there is a correlation between social proximity and
frequency of interaction, (3) Garcia “model[s] the relationships among
groups of individuals . . . ranging from casual acquaintances and close
familial bonds,” (4) Garcia “addresses the problem of determining likelihood
that a user with interact with another user based on the strength of their
connection[],” and (5) Garcia ranks individuals based on their spatial and
temporal proximity to the user. Final Act. 7 (citing Garcia ¶¶ 11, 13, 22,
29); Ans. 12–13 (quoting Garcia ¶ 13). The Examiner also concludes that

Action does not include a rejection under 35 U.S.C. § 112. Accordingly, we
have not considered, and do not decide, whether Appellant has satisfied the
definiteness, written description, and/or enablement requirements of § 112.
Cf. Manual of Patent Examining Procedure § 1213.02 (9th Ed., Rev.
08.2017, Jan. 2018) (no inference should be drawn when the Board elects
not to issue a new ground of rejection under 37 C.F.R. § 41.50(b)).
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“frequency of interaction,” under the broadest reasonable interpretation,
encompasses a likelihood of interaction between particular users. Ans. 13.
Moreover, the Examiner explains that modifying Garcia to rank individuals
by the frequency of their interaction with the user would be obvious to
improve the relevance of results. Id. at 15–16. As a result, the Examiner
concludes that the frequency limitation is obvious in light of Garcia. Id. at
13–14.
Appellant fails to present sufficient argument or evidence to
demonstrate that the disputed limitation would not have been obvious to a
person of ordinary skill in the art. See Hyatt v. Dudas, 492 F.3d 1365, 1370
(Fed. Cir. 2007) (If the Examiner “adequately explain[s]” the rejection, “the
burden shifts to the applicant to rebut the prima facie case with evidence
and/or argument.”). Appellant’s primary argument is that the Examiner fails
to sufficiently establish that the frequency limitation would have been
obvious in light of the references; however, as explained above, we disagree.
Appellant also contends the Examiner “conflat[es] the concept of
degree of separation with ‘frequency of interaction,’” and Appellant argues
that the former “does not necessarily” dictate the latter. Appeal Br. 12–13
(emphasis omitted); Reply Br. 2. Although we agree with Appellant that
social proximity and frequency of interaction are different concepts, we are
not persuaded that the Examiner equated or conflated these concepts.
Rather, the Examiner found that there is a correlation between social
proximity and frequency of interaction, and we are not persuaded of error in
this finding. Then, the Examiner properly used this finding, among others,
to articulate a rationale explaining why the frequency limitation would have
been obvious.
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Appellant does not otherwise allege error in the Examiner’s factual
findings, claim construction, or obviousness rationale. See Reply Br. 2 (no
response to additional factual findings and claim construction provided in
the Answer). For example, Appellant identifies no errors or inaccuracies in
the Examiner’s factual findings or rationale, does not contend the
Examiner’s proposals are beyond the level of skill of one of ordinary skill in
the art, and does not submit that the combination of references would yield
undesirable, unpredictable, or unexpected results. Consequently, Appellant
has not shown error in the Examiner’s findings or ultimate conclusion as to
obviousness. See In re Oetiker, 977 F.2d at 1445 (If an examiner presents a
prima facie case, “the burden of coming forward with evidence or argument
shifts to the applicant.”).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1 and grouped claims 2, 3, 6–11, and 14–19, which fall
therewith.
Obviousness Rejection R2 of Claims 5, 13, and 20
The Examiner rejects claims 5, 13, and 20 over a combination of Liu,
Garcia, Chew, and Reddy. Final Act. 26–27.
Claims 5, 13, and 20 depend from independent claims 1, 9, and 17,
respectively. For these dependent claims, Appellant relies on the same
arguments made with respect to claim 1. See Appeal Br. 11, 16. These
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arguments, however, are not persuasive for the reasons discussed above.
Consequently, Appellant’s arguments do not show error in the Examiner’s
factual findings and the conclusion of obviousness of claims 5, 13, and 20.
CONCLUSION
We sustain the Examiner’s rejection of claims 1–3, 6–11, and 14–19
under pre-AIA 35 U.S.C. § 103(a) as obvious over Liu, Garcia, and Chew.
We also sustain the Examiner’s rejection of claims 5, 13, and 20 under pre-
AIA 35 U.S.C. § 103(a) as obvious over Liu, Garcia, Chew, and Reddy.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 6–11,
14–19
103(a) Liu, Garcia, Chew 1–3, 6–11,
14–19

5, 13, 20 103(a) Liu, Garcia, Chew,
Reddy
5, 13, 20
Overall
Outcome
1–3, 5–11,
13–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED