UNITED STATES PATENT AND TRADEMARK OFFICE

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1 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,097 08/22/ FABO-015/00US /12/2015 Gutride Safier LLP 100 Pine Street, Suite 1250 San Francisco, CA EXAMINER CRAVER, CHARLES R ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/12/2015 PAPER 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. PTOL-90A (Rev. 04/07)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FACEBOOK, INC., SALESFORCE.COM, INC., ORACLE CORPORATION, ROCKMELT, INC., CMI MARKETING, INC., MEEBO, INC. (A WHOLLY OWNED SUBSIDIARY OF GOOGLE INC.), CONDUIT USA, INC., GLAM MEDIA, INC., and NING, INC. Requester, Respondent, and Cross-Appellant v. REAL TIME SOCIAL INVENTIONS LLC Patent Owner, Appellant, and Cross-Respondent Appeal Technology Center 3900 Before STEPHEN C. SIU, DENISE M. POTHIER, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL

3 BACKGROUND Facebook, Inc., Salesforce.com, Inc., Oracle Corporation, Rockmelt, Inc., CMI Marketing, Inc., Meebo, Inc. (a wholly owned subsidiary of Google Inc.), Conduit USA, Inc., Glam Media, Inc., and Ning, Inc. (collectively Requester ) filed a Request for Inter Partes Reexamination ( Request ) of United States Patent 7,853,881 (hereinafter the 881 patent ) 1 on August 22, The 881 patent includes claims During reexamination, the Examiner rejected original claims 1 25 and rejected new claims 26 45, which Patent Owner added by amendment. See PO Resp. to Non-Final Office Actn., Feb. 19, Patent Owner, Real Time Social Interactions LLC ( Patent Owner ), appealed (Notice of Appeal, Dec. 27, 2013) under 35 U.S.C. 134 and 315 the Examiner s decision to reject claims 1 45 (PO App. Br. 9 28). 2 Patent Owner also filed on March 7, 2014, an amendment under 37 C.F.R (b), canceling claims 1 9, 11 27, and The Examiner entered the amendment. Ans. 1 (indicating. under Status of Amendment After Action Closing Prosecution. that the amendment filed March 7, 2014 has been entered). Claims 10 and 28 remain pending. 1 The 881 patent issued to Assal, et al., on December 14, 2010, from Application 11/825,021, claiming priority to provisional applications 60/818,672 filed July 3, 2006 and 60/836,273 filed August 8, Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed Nov. 27, 2013 ( RAN ); (2) Patent Owner s Appeal Brief filed Mar. 7, 2014 ( PO App. Br. ); (3) Requester s Respondent Brief filed Apr. 7, 2014 ( TPR Resp. Br. ); (4) the Examiner s Answer mailed July 9, 2014 ( Ans. ) (incorporating the RAN by reference); and (5) Patent Owner s Rebuttal Brief filed Aug. 11, 2014 ( PO Reb. Br. ). 2

4 Requester filed a Notice of Cross- Appeal of the Examiner s decision to withdraw and/or not maintain numerous proposed rejections. Notice of Cross-Appeal, Jan. 10, Subsequent to the Notice of Cross-Appeal, Requester did not file an appeal brief within the time limits set forth in 37 C.F.R (a), resulting in dismissal of Requester s cross-appeal. We have jurisdiction under 35 U.S.C. 134 and 315. We affirm the Examiner s decision to reject claims 10 and 28. RELATED PROCEEDINGS We are informed of eight pending litigation matters and a reissue application (Application No. 13/715,386) involving the 881 patent. PO App. Br. 4; accord TPR Resp. Br. 1 STATEMENT OF THE INVENTION The 881 patent describes a multi-user online real-time network in which users access content associated with a plurality of social networks related by common communities of interest. See generally 881 patent, Abstract. Amended claims 10 and 28 are illustrative: A method of interacting in real-time with online users accessible through a computer network, comprising: accessing by a first user a first real-time social network comprising a community of members having a specific predetermined common interest, the first real-time social 3 Patent Owner proposed amendments rewriting claims 10 and 28 into independent form (see Amendment Under 37 C.F.R (b), filed Mar. 7, 2014), which amendments the Examiner entered (Ans.). 3

5 network being within an interactor zone that includes one or a logical collection of related real-time social networks, the first user accessing the first real-time social network using an interactor client application that allows the first user to communicate in real-time with other online users who are members of said first or another one of said real-time social networks; displaying in real-time to the first user identities of other users who are online at the time and who are members of the first or another one of said real-time social networks within said interactor zone and who choose to be identifiable; and enabling using the interactor client application real-time interaction by the first user with said selected ones of said other online users; wherein said interactor client application comprises one of code or a URL reference to code that is inserted into a content page by the interaction server. 28. A method of interacting in real-time with online users accessible through a computer network, comprising: accessing by a first user a first real-time social network comprising a community of members having a specific predetermined common interest, the first real-time social network being within an interactor zone that includes one or a logical collection of related real-time social networks, the first user accessing the first real-time social network using an interactor client application that allows the first user to communicate in real-time with other online users who are members of said first or another one of said real-time social networks; displaying in real-time to the first user identities of other users who are online at the time and who are members of the first or another one of said real-time social networks within said interactor zone and who choose to be identifiable; and enabling using the interactor client application real-time interaction by the first user with said selected ones of said other online users, 4

6 further comprising determining whether voice communication with one of said other online users is enabled, and providing voice communication access information of said one of said other online users if said voice communication capability is enabled. MAIN REJECTIONS AND PROPOSED REJECTIONS Patent Owner Appeals the Examiner rejecting the claims as follows: 1) Claim 10 under 35 U.S.C. 102(b) as anticipated by Gold (U.S. Patent Publication No. 2005/ A1, published May 12, 2005); 2) Claim 10 under 35 U.S.C. 102(b) as anticipated by MacNaughton (U.S. Patent No. 5,796,393, filed August 18, 1998); 3) Claim 10 under 35 U.S.C. 103(a) as obvious over Bauer (U.S. Patent Publication No. 2002/ A1, published June 27, 2002) and Gold; 4) Claim 10 under 35 U.S. C. 103(a) as obvious over Inala (U.S. Patent No. 6,442,590 B1, filed August 27, 2002) and Gold; description; 5) Claim 28 under 35 U.S.C. 112, 2, for lack of written 6) Claim 28 under 35 U.S.C. 102(b) as anticipated by Gold; 7) Claim 28 under 35 U.S.C. 102(e) as anticipated by Manion (U.S. Patent Publication No. 2006/ A1, published October 26, 2006); 8) Claim 28 under 35 U.S.C. 102(e) as anticipated by Harvey (U.S. Patent No. 6,519,629 B2, published February 11, 2003); and Gold. 9) Claim 28 under 35 U.S.C. 103(a) as obvious over Bauer and 5

7 REJECTION OF CLAIM 10 OVER INALA AND GOLD Patent Owner argues that rejections of claim 10 over Gold are erroneous at least because Gold does not disclose an interaction server inserting code or a URL reference to code into a content page of an interactor client application. PO App. Br We frame the issue with respect to the obvious rejection of claim 10 over Gold and Inala (rejection 4) as follows: Did the Examiner err by finding that, under 35 U.S.C. 103, it would have been obvious to one of ordinary skill in the art in view of the combined teachings of Inala and Gold for an interactor client application to have code or a URL reference to code inserted into a content page by an interaction server? We are unpersuaded of error. Gold depicts a URL reference to code embedded in HTML code for a web page (i.e., a content page ). Gold, Fig. 36. Patent Owner argues this code is not the claimed code or URL reference to code because it is not inserted by an interaction server but is instead inserted by the web site owner (i.e., licensee). PO App. Br We find this argument unavailing because, as the Examiner finds, the set up, management and usage functions of the instant system may be served directly from the licensor web server 401 to licensee web site 402. ACP 4 at 57 (quoting Gold, 0116). In other words, while the licensee may be manipulating the setup user interface (e.g., Gold, Figs ), because Gold discloses that the insertion of the URL reference to code... into a content page (Fig. 36) is performed on the licensor web server (i.e., the interaction server), an 4 Action Closing Prosecution, entered October 4,

8 interaction server is performing the insertion. This meets the disputed limitation in claim 10. Patent Owner s further assertion that Gold teaches away from the licensor adding code (PO App. Br. 15 (quoting Gold 117 ( Preferably, no code is added to any page of the licensee s web site.... (emphasis omitted)))) is unavailing, because Gold expressly teaches the licensor server inserting the code as discussed above. In view of the foregoing, we are unpersuaded of error in the Examiner s rejection of claim 10 as obvious over Inala and Gold (rejection 4). REJECTION OF CLAIM 28 OVER BAUER AND GOLD Patent Owner argues the rejections of claim 28 over Gold because Gold allegedly does not disclose user-specific settings that allow users to specify criteria for determining their availability to other users. PO App. Br. 23. Patent Owner states that Gold discloses an Allow Voice Meetings checkbox that enables all users in a particular online community to call any other user who is online and users of Gold s system can only tell whether another user is online or offline. Id. at (bolding and emphasis in original). Patent Owner asserts that Gold s relatively simplistic communications system is entirely different from, and does not anticipate, the more sophisticated system required by claim 28. Id. at 24. We analyze the Examiner s rejection of claim 28 over Bauer and Gold (rejection 9), framing the issue as follows: Did the Examiner err by finding that, under 35 U.S.C. 103, it would have been obvious to one of ordinary skill in the art in view of the combined teachings of Bauer and Gold to determine 7

9 whether voice communication with one of said other online users is enabled and provide voice communication access information of said one of said other online users if said voice communication capability is enabled? We are unpersuaded of error for at least the reasons stated by Requester. TPR Resp. Br To the extent Patent Owner s arguments are premised on the claim requiring user-specific settings (PO App. Br. 23), we are unpersuaded of error because the claim does not require user-specific settings. Although claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004). We also find that Gold s Allow Voice Meetings checkbox (Gold Fig. 11) at least suggests the claimed determining whether voice communication with one of said other online users is enabled (i.e., if the checkbox is checked, voice communication is enabled). And we further find that the associated Voice Meeting URL Location and Voice Meeting Server IP blanks (Gold Fig. 11) at least suggest the claimed providing voice communication access information of said one of said other online users if said voice communication capability is enabled (i.e., if voice communication is requested, the information is provided to thereby initiate communication). Accordingly, we are unpersuaded of error in the Examiner s determination that claim 28 is obvious over Bauer and Gold (rejection 9). 8

10 WRITTEN DESCRIPTION REJECTION Claim 28 is rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. RAN 5 6. Patent Owner does not argue this rejection. We therefore summarily sustain the rejection. Cf. Manual of Patent Examining Procedure (MPEP) , 9th ed., March 2014 ( If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it.... ) CONCLUSIONS We are unpersuaded of error in the Examiner s decision to reject: 1) claim 10 under 35 U.S. C. 103(a) as obvious over Inala and Gold (rejection 4); 2) claim 28 under 35 U.S.C. 103(a) as obvious over Bauer and Gold (rejection 9); and 3) claim 28 under 35 U.S.C. 112, first paragraph. In view of our decision that all claims on appeal stand properly rejected, it is unnecessary to reach the remaining issues. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional rejections). DECISION Based on the record before us, we sustain the Examiner s decision to reject claims 10 and 28. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R See 37 C.F.R

11 In the event neither party files a request for rehearing within the time provided in 37 C.F.R , and this decision becomes final and appealable under 37 C.F.R , a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R and AFFIRMED peb 10

12 Patent Owner: GUTRIDE SAFIER LLP 100 Pine Street, Suite 1250 San Francisco, CA Third Party Requester: COOLEY LLP ATTN: PATENT GROUP 1299 Pennsylvania Avenue, NW, Suite 700 Suite 1100 Washington, DC