Thorben Christopher. Primke et al.

Patent Trials and Appeals Board

Jan 10, 2020

15289711 - (D) (P.T.A.B. Jan. 10, 2020)

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.
15/289,711 10/10/2016 Thorben Christopher Primke 079894.4301 1069
40334 7590 01/10/2020
Jordan IP Law, LLC
12501 Prosperity Drive
Suite 401
Silver Spring, MD 20904
EXAMINER
ROSTAMI, MOHAMMAD S
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THORBEN CHRISTOPHER PRIMKE, BARTON ANDREW
KILEY, TAYLOR DANCY ROGALSKI, CHRISTINE MORCK RODE,
and ANDREW JAMES LYONS
Appeal 2018-009035
Application 15/289,711
Technology Center 2100
BEFORE JAMES R. HUGHES, DAVID C. MCKONE,
and NORMAN H. BEAMER, Administrative Patent Judges.
MCKONE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–21.2 The Examiner indicates

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Facebook, Inc.
Appeal Br. 3.
2 The Final Action rejects claims 1–21. Final Act. 1–2. However, Appellant
indicates in the claims appendix that claim 2 is cancelled.
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that claim 18 would be allowable if rewritten in independent form. Final
Act. 24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention is directed to a social-networking system that generates
structured queries including references to social-graph elements. Spec. ¶ 7.
When performing a search query via a query interface sent to a client (e.g., a
query-initiation page), a user may select query elements (e.g., icons and
menu selections) to apply particular filters to the search query. Id. ¶ 9.
Icons, for example, may be used to select a particular domain to search (e.g.,
places, people, photos, posts, pages, applications, events, and locations).
Id. ¶¶ 9, 58. The Specification terms such elements “query-domain
elements.” Id. ¶ 9. “Each query-domain element may be activatable (e.g.,
the user may tap, click, etc.) to generate a search query of the query-domain
corresponding to that query-domain element.” Id. ¶ 59.
After selecting a domain, the user may select one or more query-filter
elements to apply to the search query. Id. ¶ 9. For example, if the user
selects the query-domain “people,” the user may select from a variety of
filter options, such as location (e.g., San Francisco), friends (e.g., “Friends of
Friends”), school (e.g., Stanford University), work (e.g., employer, position),
education (e.g., degree type), gender, relationship status, and a variety of
other filters and sub-filters. Id. ¶¶ 9, 58. The Specification lists various
example filters for other query-domains, such as photos, posts, pages,
groups, and events. Id. ¶ 58.
The social-networking system identifies, responsive to the query, a set
of objects matching an object-type corresponding to the selected query-
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domain element. Id. ¶ 60. The social-networking system then sends a first
search-results page to the client. Id. ¶ 61. The search results page can
include additional query-filter elements. Id. For example, “from the first
search-results page, the user may select one or more query-filter elements,
and [the] social-networking system . . . may respond by modifying the
search query to apply the newly selected filters.” Id. ¶ 63. The social-
networking system then identifies, in response to the second search query, a
second set of objects matching the first object-type and the selected query
filters and sub-filters. Id.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising, by one or more computing
devices:
sending, to a client system of a first user, a query-
initiation interface responsive to a selection of a query field by
the first user, the query-initiation interface comprising a
plurality of query-domain elements corresponding to a plurality
of query-domains, respectively, each query-domain
corresponding to a particular object-type of a plurality of
object-types, wherein each query-domain element is activatable
to generate a search query comprising a selection of the
associated query-domain, and wherein each query-domain
comprises a set of query-filters applicable to that query-domain;
receiving, from the client system of the first user, a first
search query comprising a selection of a first query-domain of
the plurality of query-domains, the first query-domain
corresponding to a first object-type of the plurality of object-
types and comprising a first set of query-filters applicable to the
first query-domain;
identifying, responsive to the first search query, a first set
of objects of a plurality of objects matching the first object-
type;
sending, to the client system for display to the first user, a
first search-results interface responsive to the first search query,
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the first search-results interface comprising references to one or
more of the identified objects from the first set of objects and
one or more query-filter elements corresponding to one or more
query-filters, respectively, from the first set of query-filters
applicable to the first query-domain, wherein each query-filter
element is activatable to apply the associated query-filter to the
identified objects; and
receiving, from the client system of the first user, a
second search query comprising a selection of one or more of
the query-filters in response to the first user activating the
corresponding query-filter elements.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wable US 2011/0137902 A1 June 9, 2011
Govani US 2013/0054631 A1 Feb. 28, 2013
Adams US 2014/0006977 A1 Jan. 2, 2014
Nair US 2010/0125563 A1 May 20, 2010
Pantel US 2012/0317088 A1 Dec. 13, 2012

REJECTIONS
Claims 1 and 3–21 are rejected on the ground of nonstatutory double
patenting over U.S. Patent No. 9,507,876. Final Act. 4.
Claims 1, 3–13, and 19–21 are rejected under 35 U.S.C. § 103 as
unpatentable over Wable, Govani, and Adams. Id. at 5–19.
Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over
Wable, Govani, Adams, and Nair. Id. at 20–21.
Claims 15–17 are rejected under 35 U.S.C. § 103 as unpatentable over
Wable, Govani, Adams, Nair, and Pantel. Id. at 21–24.
Claim 18 is objected to as being dependent upon a rejected base
claim. Id. at 24.
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OPINION
Nonstatutory Double Patenting Rejection
The Examiner rejects claims 1 and 3–21 on the ground of nonstatutory
double patenting as being unpatentable over claims of U.S. Patent No.
9,507,876 B2. Final Act. 4.
Appellant does not challenge this rejection. Rather, Appellant
indicates in the Appeal Brief that “Appellant is willing to file a terminal
disclaimer to obviate this rejection if the Examiner indicates that Claims 1
and 3–21 of this Application are otherwise allowable in their current form.”
Appeal Br. 6. The Examiner has not indicated that claims 1 and 3–21 are
allowable. Nevertheless, Appellant indicates in the Reply Brief that
“[a]lthough Appellant does not necessarily agree with the Examiner,
Appellant has attached a Terminal Disclaimer to obviate this rejection.”
Reply 2.
We affirm the Examiner’s nonstatutory double patenting rejection
because Appellant has not contested the merits thereof. We leave it to the
Examiner to consider Appellant’s Terminal Disclaimer in the first instance.

Obviousness Rejection over Wable, Govani, and Adams
Overview of Wable
Wable describes a social networking system that receives a query
associated with a user and provides a combined result set comprising
matching objects stored by the social networking system. Wable, Abstract.
An object store stores metadata (e.g., names, images, tags) associated with
objects. Id. ¶ 22. Those objects may have different types, such as media
item objects and user objects. Id. The objects in the object store are
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represented by a “social graph” comprising information about the
relationships between or among the objects. Id. ¶ 23.
The social networking system includes a query processing module,
with which the user provides a textual query through a user interface.
Id. ¶ 28. The query processing module includes sub-modules that identify
objects according to different search algorithms; an aggregation sub-module
that combines the results from the various sub-modules; and filtering and
ordering sub-modules that modify and/or reorder the contents of the results.
Id. ¶ 29. The sub-modules can include a second-order connections search
sub-module (searches with reference to a connection index), a history search
sub-module (identifies objects stored in the history of the searching user),
and a global importance search sub-module (identifies objects considered to
be of global importance). Id. ¶¶ 32–34. The filtering sub-module can filter
the combined result set based on an affinity measure (e.g., physical
distance), a similarity measure (e.g., comparing a user profile to objects),
and keywords. Id. ¶¶ 37–39.

Overview of Govani
Govani describes a technique for suggesting a list of search queries
associated with a portion of a search query received from a user.
Govani ¶¶ 3, 11–12. According to Govani, “[a] suggested search query that
is associated with a set of social network data may be ranked higher in the
list of suggested search queries than a suggested search query that is not
associated with social network data.” Id. ¶ 46. In another embodiment, the
technique facilitates adding “like” data to the search suggestions. Id. ¶ 13.
A first suggested search query and a set of “like” data can be provided to a
search engine page simultaneously with the list of suggested search queries.
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Id. In one example, a display “is configured to display the friend set of
‘like’ data differently than the set of ‘like’ data originating from [a] plurality
of different social networking sites so that the user can better distinguish
between the two.” Id. ¶ 45.

Overview of Adams
Adams describes various techniques for linking multiple social media
networks in an integrated social media platform. Adams ¶ 3. The Examiner
points, in particular, to the Examples of Figures 19 and 47. Final Act. 9–10
(citing Adams, Fig. 47, ¶ 131); Ans. 3–4 (citing Adams ¶¶ 95, 131, Fig. 47).
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Figure 47 is reproduced below:

Figure 47 is a drawing of dashboard search results page 3200. Adams ¶¶ 45,
131.
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Search navigation bar 3206 includes search box 3208. Id. ¶ 131. A
user enters a name into search box 3208 to search for profiles matching the
name. Id. Search results list 3220 displays a list of all profiles/users
matching the search criteria. Id. “Get-to-Know” frame 3210 allows the user
to obtain additional information about a selected profile/user. Id.
Relationship frame 3212 allows a user to filter the search results by limiting
them to profiles having a specific type of relationship with the user; location
frame 3214 limits the search results by location; application frame 3216
limits the search results to a specific social media network; and additional
limitations frame 3218 allows the user to select additional filters for the
search results. Id.

Analysis
The Examiner finds that Wable’s description of a social networking
system storing objects, such as “user objects, application objects, event
objects, group objects, web page objects, location objects, hub/page objects,
and/or any of a variety of types of objects that may be tracked or maintained
by the social networking system”; providing a user a single search interface
obtaining objects in the social networking system; and sending the user a
message corresponding to a user object of a search result set teaches
“receiving, from the client system of the first user, a first search query
comprising a selection of a first query-domain of the plurality of query-
domains, the first query-domain corresponding to a first object-type of the
plurality of object-types and comprising a first set of query-filters applicable
to the first query-domain,” as recited in claim 1. Final Act. 5–6 (quoting
Wable ¶ 6). The Examiner quotes paragraph 6 of Wable and cites
paragraphs 8–10 and 22–23 without additional explanation. Id. at 6.
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As to “identifying, responsive to the first search query, a first set of
objects of a plurality of objects matching the first object-type,” as recited in
claim 1, the Examiner cites to Wable’s description of combining objects of
different types that match the user’s query; providing the user with a single
search interface; and “perform[ing] a prefix search in which the search
matches objects with name tokens, such as a first or last name associated
with a user object, for which the query is a prefix.” Id. at 6 (quoting Wable
¶ 9). The Examiner further cites to paragraphs 23, 33–35, and 47–41 of
Wable, without additional explanation. Id. As to
sending, to the client system for display to the first user, a first
search-results interface responsive to the first search query, the
first search-results interface comprising references to one or
more of the identified objects from the first set of objects and
one or more query-filter elements corresponding to one or more
query-filters, respectively, from the first set of query-filters
applicable to the first query-domain, wherein each query-filter
element is activatable to apply the associated query-filter to the
identified objects,
as recited in claim 1, the Examiner points to Wable’s description that
the objects of the combined result set are filtered, ordered,
and/or grouped based at least in part on known relationships of
the user providing the query with the objects—such as a
friendship relationship with a user object, a number of friends
in common with a user object, prior uses of an application
object, membership of an event object, and the like—or a
measure of an affinity of the user for the object, such as a
geographic distance between locations associated with the user
and the object, a graph distance in the social graph between the
user and the object, and a similarity measure between the user
and the object.
Id. at 7 (quoting Wable ¶ 8). The Examiner also cites to paragraphs 9, 10,
23, 30, 34, 46, 50, and 51 of Wable, without further explanation. Id.
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The Examiner, however, concedes that Wable does not teach
“receiving, from the client system of the first user, a second search query
comprising a selection of one or more of the query-filters in response to the
first user activating the corresponding query-filter elements,” as recited in
claim 1. Final Act. 7–8. The Examiner cites Govani for this teaching. In
particular, the Examiner quotes, without explanation, from Govani’s
description of inclusion of “like” information along with search results in
paragraph 3. Id. at 8 (quoting Govani ¶ 3). The Examiner further cites to
paragraphs 7–9 and 11–14 of Govani, but does not explain their relevance.
Id. The Examiner finds that “[t]he motivation to combine is apparent in the
Wable’s reference, because there is a need for a system for improving search
strategies and results.” Id. at 9.
The Examiner also concedes that Wable and Govani do not teach
sending, to a client system of a first user, a query-initiation
interface responsive to a selection of a query field by the first
user, the query-initiation interface comprising a plurality of
query-domain elements corresponding to a plurality of query-
domains, respectively, each query-domain corresponding to a
particular object-type of a plurality of object-types, wherein
each query-domain element is activatable to generate a search
query comprising a selection of the associated query-domain,
and wherein each query-domain comprises a set of query-filters
applicable to that query-domain,
as recited in claim 1 (hereinafter, the “sending” limitation). The Examiner
cites to Figure 47 of Adams, and its corresponding description, for a
teaching of the “sending” limitation. Final Act. 9–10 (citing Adams ¶ 131).
The Examiner does not explain in detail which features of Figure 47
correspond to which aspects of the claim language.
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The Examiner finds that it would have been obvious
to combine the teachings of the cited references because
Adams’ system would have allowed Wable and [Govani’s] to
facilitate sending, to a client system of a first user, a query-
initiation interface responsive to a selection of a query field by
the first user, the query-initiation interface comprising a
plurality of query-domain elements corresponding to a plurality
of query-domains, respectively, each query-domain
corresponding to a particular object-type of a plurality of
object-types, wherein each query-domain element is activatable
to generate a search query comprising a selection of the
associated query-domain, and wherein each query-domain
comprises a set of query-filters applicable to that query-domain;
and comprising a first set of query-filters applicable to the first
query-domain.
Final Act. 10–11. According to the Examiner, “[t]he motivation to combine
is apparent in the Wable and [Govani’s] reference, because it improves the
value of any social interaction to a single social network or platform.”
Id. at 11.
Appellant argues that the Examiner has not explained adequately how
the “sending” limitation of claim 1 is taught by the combination of Wable,
Govani, and Adams. Appeal Br. 9–10. Specifically, Appellant argues that
“it is not clear how ‘the combination’ of cited references could possibly
teach this limitation, and the Examiner does not explain what specific
elements of Wable or Govani are being combined with the cited portions of
Adams to arrive at this limitation.” Id. According to Appellant, “the
Examiner’s failure to explain how the combination of cited references
teaches this limitation is, by itself, sufficient to reverse the outstanding
rejection.” Reply Br. 5. Appellant argues that the Examiner’s finding that
“Adams’ system would have allowed Wable and [Govani’s] to facilitate” the
“sending” limitation “amounts to nothing more than the Examiner resorting
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to hindsight based on the Appellant’s disclosure, which is entirely
impermissible.” Appeal Br. 10 (quoting Final Act. 10); accord Reply Br. 5.
Appellant contends that the Examiner’s analysis is too conclusory to
establish obviousness. Appeal Br. 11; Reply Br. 5.
In response, the Examiner observes that “any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning” and concludes that “so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from the applicant’s disclosure, such a reconstruction is proper.” Ans. 5–6
(citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)). The Examiner
further observes that “obviousness may be established by combining or
modifying the teachings of the prior art to produce the claimed invention
where there is some teaching, suggestion, or motivation to do so found either
in the references themselves or in the knowledge generally available to one
of ordinary skill in the art.” Id. at 6 (citing In re Fine, 837 F.2d 1071
(Fed. Cir. 1988); In re Jones, 958 F.2d 347 (Fed. Cir. 1992); KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398 (2007)). According to the Examiner, “[i]n this
case, all three prior art, are in the same field of endeavor.” Id. Nevertheless,
the Examiner makes no additional findings, and instead refers to the
statement of motivation to combine provided in the Final Action. Id.
We agree with Appellant that the Examiner has not explained
adequately how Wable, Govani, and Adams would have been combined or
why a skilled artisan would have done so. Throughout the rejection, the
Examiner quotes from and cites to large portions of Wable, Govani, and
Adams to find the individual limitations of claim 1, but provides no
accompanying explanation identifying with specificity which aspects of
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those references correspond to which aspects of the claim. Final Act. 5–10.
For example, for Adams, the Examiner identifies Figure 47 and its
accompanying description (¶ 131), but does not explain which aspects of
Figure 47 correspond to the various recitations in the “sending” limitation.
Id. at 9–10. Nor does the Examiner explain how the various aspects of
Figure 47 would have been combined with the cited teachings of Wable and
Govani, as Appellant points out (Appeal Br. 9–10; Reply Br. 4–5). In the
Answer, the Examiner additionally quotes from ¶ 95 of Adams, again
without accompanying explanation. Ans. 3. Paragraph 95 describes the
Dropbox interaction process shown in Figure 19 of Adams. However, this is
a different embodiment, and the Examiner has not explained how the
description in ¶ 95 relates to the embodiment shown in Adams’ Figure 47.
Thus, the Examiner has not explained adequately how a skilled artisan
would have combined Wable, Govani, and Adams.
The Examiner’s findings as to why a skilled artisan would have
combined Adams’s teachings with those of Wable and Govani are also
deficient. The Examiner states, in conclusory fashion, that a skilled artisan
would have combined the teachings of Wable, Govani, and Adams because
it would have allowed Wable and Govani to have the features of the
“sending” limitation. Final Act. 10–11. However, “‘conclusory statements’
alone are insufficient and, instead, the finding must be supported by a
‘reasoned explanation.’” In re Nuvasive, Inc., 842 F.3d 1376, 1383
(Fed. Cir. 2016) (quoting In re Sang Su Lee, 277 F.3d 1338, 1342, 1345
(Fed. Cir. 2002)). “To facilitate review, this analysis should be made
explicit.” KSR 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
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The Examiner further finds that “[t]he motivation to combine is
apparent in the Wable and [Govani’s] reference, because it improves the
value of any social interaction to a single social network or platform.” Final
Act. 11. The Examiner, however, does not identify the teachings in Wable
and Gonavi that provide this motivation or provide a reasoned explanation as
to how the teachings of Adams provides an improvement to social
interactions. According to the Federal Circuit, “‘[t]he factual inquiry
whether to combine references must be thorough and searching.’” Lee, 277
F.3d at 1343 (quoting McGinley v. Franklin Sports, Inc., 262 F.3d 1339,
1351–52 (Fed. Cir. 2001)); accord Nuvasive, 843 F.3d at 1381–82. Cf. In re
Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“When the Board does not
explain the motivation, or the suggestion or teaching, that would have led
the skilled artisan at the time of the invention to the claimed combination as
a whole, we infer that the Board used hindsight to conclude that the
invention was obvious.”). The Examiner’s findings and reasoning do not
meet this standard because they are conclusory and lacking in specificity.
Thus, the Examiner has not provided adequate reasons to combine Wable,
Govani, and Adams.
The Examiner rejects independent claims 19 and 20 together with
claim 1. Final Act. 5. The rejection of claims 19 and 20 is deficient for the
same reasons given for claim 1.
Claims 3–13 and 21 depend, directly or indirectly, from claim 1. As
to these dependent claims, the Examiner does not make any findings that
remedy the deficiencies noted above for claim 1. Final Act. 11–19.
For the above reasons, the Examiner’s rejection of claims 1, 3–13, and
19–21 as obvious over Wable, Govani, and Adams is reversed.

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Obviousness Rejection over Wable, Govani, Adams, and Nair
Claim 14 depends from claim 1. The Examiner rejects claim 14 as
obvious over Wable, Govani, Adams, and, additionally, Nair. Final Act. 20–
21. As to claim 14, the Examiner does not make any findings that remedy
the deficiencies noted above for claim 1. Id. Thus, the Examiner’s rejection
of claim 14 as obvious over Wable, Govani, Adams, and Nair is reversed for
the same reasons as given above for claim 1.

Obviousness Rejection over Wable, Govani, Adams, Nair, and Pantel
Claims 15–17 depend from claim 14, which depends from claim 1.
The Examiner rejects claims 15–17 as obvious over Wable, Govani, Adams,
Nair, and, additionally, Pantel. Final Act. 21–24. As to claims 15–17, the
Examiner does not make any findings that remedy the deficiencies noted
above for claim 1. Id. Thus, the Examiner’s rejection of claims 15–17 as
obvious over Wable, Govani, Adams, Nair, and Pantel is reversed for the
same reasons as given above for claim 1.
CONCLUSION
The Examiner’s nonstatutory double patenting rejection is affirmed
and the Examiner’s obviousness rejections are reversed.
More specifically,
The Examiner’s rejection of claims 1 and 3–21 on the ground of
nonstatutory double patenting over U.S. Patent No. 9,507,876 is affirmed.
The Examiner’s rejection of claims 1, 3–13 and 19–21 under
35 U.S.C. § 103 as unpatentable over Wable, Govani, and Adams is
reversed.
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The Examiner’s rejection of claim 14 under 35 U.S.C. § 103 as
unpatentable over Wable, Govani, Adams, and Nair is reversed.
The Examiner’s rejection of claims 15–17 under 35 U.S.C. § 103 as
unpatentable over Wable, Govani, Adams, Nair, and Pantel is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–21 Nonstatutory double
patenting
1, 3–21
1, 3–13, 19–
21
103 Wable, Govani, Adams 1, 3–13,
19–21
14 103 Wable, Govani,
Adams, Nair
14
15–17 103 Wable, Govani,
Adams, Nair, Pantel
15–17
Overall
Outcome
1, 3–21

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED