Wayne Kao

Patent Trials and Appeals Board

Jan 29, 2020

14551179 - (D) (P.T.A.B. Jan. 29, 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.
14/551,179 11/24/2014 Wayne Kao 079894.2292 3531
91230 7590 01/29/2020
BAKER BOTTS L.L.P./FACEBOOK INC.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201
EXAMINER
STANLEY, JEREMY L
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
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 WAYNE KAO

Appeal 2019-001778
Application 14/551,179
Technology Center 2100

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Wayne Kao, appeals from
the Examiner’s decision rejecting claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to “location-based services” (Spec. ¶ 1) and
“Check-in Additions.” Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (formatting and emphases added to contested prior-art limitations):
1. A method comprising:
by a computing device, generating a notification for a
first user, the notification comprising a description of a check-
in by a second user, the check-in comprising an identification
that the second user is, was, or will be at a place, the first and
second users being users of a social networking system
comprising a plurality of nodes and a plurality of edges
connecting the nodes, at least one node corresponding to the
first user, at least one node corresponding to the second user;
by a computing device, determining whether to generate
in association with the notification an interactive element that
when activated associates the first user with the check-in;
by the computing device, when the interactive element is
not to be generated, providing the notification for display to the
first user; and
by a computing device, when the interactive element is to
be generated, generating the interactive element and providing
the interactive element for display to the first user in association
with the notification.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
July 12, 2018); Reply Brief (“Reply Br.,” filed Dec. 31, 2018); Examiner’s
Answer (“Ans.,” mailed Oct. 30, 2018); Final Office Action (“Final Act.,”
mailed Nov. 13, 2017); and the original Specification (“Spec.,” filed
Nov. 24, 2014).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Curtis et al. (“Curtis”) US 2012/0124176 A1 May 17, 2012
Liu et al. (“Liu”) US 2013/0332525 A1 Dec. 12, 2013
Akutagawa et al. (“Akutagawa”) US 2015/0248651 A1 Sept. 3, 2015
Fasen et al. (“Fasen”) US 2015/0347979 A1 Dec. 3, 2015
Chan et al. (“Chan”) US 2017/0286556 A1 Oct. 5, 2017
Rejections on Appeal3
R1. Claims 1–7, 10, 11, 14–17, 19, and 20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Liu, Fasen,
and Chan. Final Act. 14.
R2. Claims 8, 9, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Liu, Fasen, Chan, and Curtis.
Final Act. 31.
R3. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Liu, Fasen, Chan, and Akutagawa.
Final Act. 39.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 8–11) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
Rejection R1 of claims 1–7, 10, 11, 14–17, 19, and 20 on the basis of

3 The Examiner has withdrawn his rejection under 35 U.S.C. § 101.
Ans. 3–4.
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representative claim 1. Appellant argues independent claims 1, 19, and 20
together (Appeal Br. 8) and does not separately argue any of the dependent
claims. Therefore, we group these independent claims 19 and 20, and also
dependent claims 2–7, 10, 11, and 14–17, together with claim 1. We address
remaining dependent claims 8, 9, 12, 13, and 18 rejected under obviousness
Rejections R2 and R3, not-separately argued, infra.4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. 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).
We disagree with Appellant’s arguments with respect to claim 1 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.

4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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1. § 103(a) Rejection R1 of Claims 1–7, 10, 11, 14–17, 19, and 20
Issue 1
Appellant argues (Appeal Br. 8–13; Reply Br. 1–9) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Liu, Fasen, and Chan is in error. These contentions present
us with the following issues (emphasis added):
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests “determining whether to generate in association with the
notification an interactive element that when activated associates the first
user with the check-in,” as recited in claim 1?
(b) Did the Examiner err in finding the cited prior art combination
teaches or suggests “[w]hen the interactive element is not to be generated,
providing the notification for display to the first user,” as recited in claim 1?
(c) Did the Examiner err in combining Liu, Fasen, and Chan in the
manner suggested because, allegedly, the Examiner did not provide an
articulated reason or proper motivation to combine the references?
Analysis
Issue (a): “generate . . . an interactive element” is taught or suggested
The Examiner finds Liu teaches or suggests an interactive element
that, when activated, associates the first user with the second user and the
event. Final Act. 16–17 (citing Liu, Fig. 5, steps 508–510, 512, 518 ¶¶ 50–
51). Liu discloses:
For example, if the first user responds to the user suggestion by
accepting the suggestion (e.g., clicking on an “invite” button
provided with the user suggestion), then the suggested user may
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receive a message from the social networking system indicating
to the suggested user that the first user has invited the suggested
user to the event and prompting whether the suggested user
would like to accept the invitation.
Liu ¶ 50.
In another aspect, after step 512, the user suggestion may be
first communicated to the suggested user (518). The user
suggestion communicated to the suggested user may also
identify the first user and the event. For example, the suggested
user may receive a message indicating that the first user is
planning on attending the event, and prompting the suggested
user whether the suggested user would like to ask the first user
if the suggested user may attend the event with the first
user. . . . If the suggested user accepts the user suggestion, the
user suggestion is also communicated to the first user (520). For
example, the first user receives a message indicating that the
second user would like to attend the event together with the first
user and prompting whether the first user would also like to
attend the event with the suggested user.
Liu ¶ 51.
The Examiner finds Liu’s “first user” and “suggested user” teach or at
least suggest the “first user” and “second user” as recited in claim 1. Final
Act. 15; Fig. 5, Liu ¶ 51. Liu’s first user attending the event teaches or at
least suggests “a check-in by a second user” as recited in claim 1. Id., Liu
¶ 51.
Appellant argues the Examiner does not identify what in Chan can be
considered to be a “check-in by the second user.” Appeal Br. 11. Appellant
further argues “the Examiner does not explain how Chan’s action item 240
can be considered to be ‘an interactive element that when activated
associates the first user with the [second user’s] check-in,’ as the
independent claims require.” Id.
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We are not persuaded by Appellant’s arguments because Appellant is
arguing the references separately. The Examiner cites Liu, not Chan, for
teaching the disputed limitations “check-in by the second user” and “an
interactive element that when activated associates the first user with the
[second user’s] check-in.” Final Act. 15–20; Ans. 9.
Moreover, the Examiner finds Liu’s “invite” and “accept” buttons
providing the user with suggested event attendance teaches the recited
“interactive element.” Final Act. 16–17. In contrast, the Examiner only
cites Chan for teaching or suggesting a particular claim limitation, i.e.,
“when the interactive element is not to be generated, providing the
notification for display to the first user,” and is not relied on for “a check-in
by the second user.” Ans. 12.
The Examiner also cites Fasen for teaching or suggesting an
“interactive element” that, when activated, associates the first user with the
check-in. Final Act. 18–19; Ans. 10. Specifically, the Examiner finds
Fasen’s user adding an event to a calendar by clicking on a link associated
with the event teaches or at least suggests the “interactive element”
limitation. Id.
We are not persuaded of error in the Examiner’s findings and legal
conclusion because Appellant is arguing the references separately. As the
rejection is for obviousness, we rely upon what the teachings of the cited
references considered in combination would have suggested to a person of
ordinary skill in the art. “[O]ne cannot show non-obviousness by attacking
references individually where . . . the rejections are based on combinations
of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Nor is the
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test for obviousness whether a secondary reference’s features can be bodily
incorporated into the structure of the primary reference. See Keller, 642
F.2d at 425.
Issue (b): Conditional “providing the notification for display”
limitation is taught or suggested
Appellant also argues:
[T]he Examiner does not identify any reference that discloses
the features of “when the interactive element is not to be
generated, providing the notification for display to the first
user.” The Examiner does not identify any reference that
discloses determining the claimed interactive element should
not be generated and providing the claimed notification in
response.
Appeal Br. 11–12. We disagree with Appellant’s allegation.
We disagree because the Examiner cites Chan for teaching or
suggesting this disputed limitation:,
Chan is . . . cited in the Office Action as teaching . . . “when the
interactive element is not to be generated, providing the
notification for display to the first user,” and is not relied on
specifically for “a check-in by the second user,” “an interactive
element that which activated associates the first user with the
second user’s check-in” as these limitations are already cited as
being taught by Liu and Fasen.
Ans. 12 (citing Final Act. 12).
As a matter of claim construction, Appellant’s Specification describes
that a notification of a check-in may be performed in an open-ended variety
of possible methods and manners of notifications. Ans. 7–8, citing Spec.
¶¶ 39, 52, 74, and 76.
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We are not persuaded by Appellant’s arguments because Chan’s user
not checking in to a flight-event at a particular airport/terminal, and the
resulting displayed notification, teaches or at least suggests the disputed
limitation “when the interactive element is not to be generated, providing the
notification for display to the first user.” Ans. 14. In agreement with the
Examiner, we find Chan’s determination of whether or not to generate an
interactive element, and Chan’s providing the notification for display to the
first user teaches or at least suggests this disputed limitation. Ans. 15, citing
Chan, Figs. 2A and 2B, ¶¶ 67–68.
As found by the Examiner, we find the combination of Liu’s and
Fasen’s interactive elements and notifications to the users, together with
Chan’s teaching of when to not generate an interactive element (i.e., when a
traveler has not checked in), would not have been “uniquely challenging or
difficult for one of ordinary skill in the art.” See Leapfrog Ent. Inc. v.
Fisher-Price Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Accordingly, we find the prior art combination teaches or suggests the
disputed limitations of claim 1.
Issue (c): The Examiner provided proper motivation to combine
Appellant further argues the Examiner has not provided proper
reasoning for combining Liu, Fasen, and Chan:
Rather than explaining how the cited portions of the references
would actually be combined together to achieve all the claimed
features, and the motivation for making that specific
combination, the Examiner merely asserts that one would
“incorporate” the teachings with each other because of benefits
each reference attributes to its separate teaching. That is not
sufficient to make a prima facie case of obviousness.
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Appeal Br. 12–13.
We are not persuaded by Appellant’s argument because the Examiner
has articulated a lengthy and detailed reasoning for combining the cited
references in the manner suggested, quoted below for completeness:
[I]t would have been obvious to one of ordinary skill in the art
at the time the invention was filed having the teachings of Liu,
Fasen, and Chan in front of him to have modified the teachings
of Liu (directed to a social network-based system and method
for providing suggested users, based on predefined criteria, for
attending an event together with a first user who has indicated
that he or she is attending an event and communicating the
suggestion to the users), to incorporate the teachings of Fasen
(directed to social calendar event sharing) to include the
capability, when a user selects an interactive element provided
with a check-in (such as an indication that a different user is
attending, or will attend, an event associated with the different
user’s calendar), to store the user selection and user’s identity
as feedback data (e.g. acceptance or other indication that the
user will attend the event, has subscribed to the event, or has
viewed the event details) associated with the check-in, and to
further incorporate the teachings of Chan (directed to
determining display prominence and attributes of search results
including data records specific to a user, such as a pending
flight and associated check-in button, based on triggering
rules), to include the capability to determine whether to display
the check-in information (e.g. an association with a specific
airline, or air plane with a flight event having a specific time
and place) with a user-selectable button for checking in to the
flight event, or without the button, based on triggering rules,
such as a time threshold. One of ordinary skill would have been
motivated to perform such a modification in order to provide a
system which can help an event organizer with event
preparation and provide feedback regarding whether events are
promoted/marketed appropriately as described in Fasen (e.g.
paragraph 0047), in order to address known difficulties in the
art associated with sharing and disseminating information about
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an event while maintaining control over the event as described
in Fasen (e.g. paragraph 0002; difficulty obtaining feedback
when an event is disseminated via a one-way channel,
limitations to specific people when using a two-way channel,
difficulty obtaining feedback/maintaining control over event
invitations sent via email), by providing systems and techniques
that maintain a connection between those who view an event
and the organizer event regardless of calendar service (e.g.
paragraph 0004), and provide platform-independent feedback
(e.g. paragraph 0005), in order to determine a user’s intent and
provide user-specific search results to the user as described in
Chan (e.g. paragraph 0008), and in order to sub.
Final Act. 21–22.
Thus, based on this detailed explanation, we conclude the Examiner
has, in fact, provided an articulated reasoning with a rational underpinning
for combining the cited references as required.5
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations 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 1–7, 10, 11, 14–17, 19, and 20,
which fall therewith. See Claim Grouping, supra.

5 The relevant inquiry is whether the Examiner has set forth “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007).
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3. § 103 Rejections R2 and R3 of Claims 8, 9, 12, 13, and 18
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claims 8, 9, 12, 13, and Rejection R3 of
claim 18 under § 103, we sustain the Examiner’s rejections of these claims.
Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–10) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
through R3 of claims 1–20 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.

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DECISION SUMMARY
Claims
Rejected
35
U.S.C. §
Basis /
References
Affirmed Reversed
1–7, 10, 11,
14–17, 19, 20
103 Obviousness
Liu, Fasen, Chan
1–7, 10, 11,
14–17, 19, 20

8, 9, 12, 13 103 Obviousness
Liu, Fasen, Chan,
Curtis
8, 9, 12, 13
18 103 Obviousness
Liu, Fasen, Chan,
Akutagawa
18
Overall
Outcome
1–20
FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED