A claimed rule feature may not be anticipated and/or rendered obvious merely because the rule is satisfied by chance in a reference
| August 29, 2018
In re Facebook
August 14, 2018
Before Prost, Moore, Stoll. Opinion by Prost.
Summary
The CAFC reversed and remanded a PTAB decision, which had affirmed an Examiner’s anticipation and obviousness rejection of a patent application for a method of arranging images contiguously in an array. The CAFC held that anticipation of Applicants’ claimed rule is not established by an example in a cited reference, which just happens to satisfy Applicants’ claimed rule, since said rule is not satisfied all of the time in the cited reference.
Details
Facebook, Inc. (hereinafter “Facebook”) filed U.S. Patent Application No. 13/715,636 (hereinafter ‘636), which is directed towards a method of rendering continuous image elements. The images are displayed as a series of images on a profile on a social network, such as Facebook. When a user moves or adjust one of the images, the algorithm of the ‘636 application will respond by resizing or resequencing the images so as to maintain a contiguous layout of images. Claim 1, which is representative of the application, recites:
1. A method comprising:
by a computing device, determining a sequence of image elements;
by the computing device, determining, for each image element in the sequence, a first position in an array of contiguous image elements, the first position being based on a size of the image element, an order of the image element in the sequence, and dimensions of the array;
by a computing device, determining, in response to an instruction to adjust the position or size of a first image element, a second position in the array for at least one second image element, the second position determined based on a rule requiring the image elements to be contiguous such that each available image position between the first image element in the sequence and the last image element in the sequence is occupied by an image element; and
by the computing device, providing information to render the array of contiguous image elements.
I.d. at 3.
Perrodin discloses an algorithm for placing images on a grid, wherein said grid can be adjusted by a user. Further, Perrodin discloses that after a users moves or adjust the placement of an image within the grid, there is a “reflow” of the remaining images across the grid. Perrodin depicted this “reflowing” in Figure 19.” Id. at 4.
Id. at 4.
As depicted in the first illustration of Figure 19, images 1101-1110 are arranged in a grid. The first image, 1101, is a 3×3 image and is placed across three cells in both the width and height direction. The next image, 1102, is a 1×1 image and is placed in the fourth position of the first row. The third image, 1103, is a 1×1 image and is placed in the fifth position of the first row. The next image, 1104 is a 2×2 image and is placed in the six and seventh position of the first row and also occupies two cells in the height direction. Once the first row is complete, the next image, image 1105, becomes the first image of the second row. The remaining images, images 1106-1110, will then occupy the remaining cells in the second and third rows.
In the second illustration of Figure 19, the user has moved image 1104, a 2×2 image, to the first position of the first row, thereby causing a “reflow” or rearrangement of the images. Upon moving 1104 to the first position, the algorithm moved the 1101 to the next available position, the third position of the first row. This continues until all of the images are placed within the grid, with the first row being completed first, followed by the second row and then the third row.
The Examiner rejected several claims as anticipated and rejected the remaining claims as obvious in view of the disclosure in the Perrodin patent application. The Examiner and the Board held that this disclosure of “Perrodin satisfied the ‘rule requiring the image elements to be contiguous’ limitation of the ‘636 patent.” Id. at 5. In the PTAB decision, the Board held that the “set of rules for rearranging images sequentially in Perrodin is functionally the same as the claimed ‘rule requiring the image elements to be contiguous’ because the images are contiguously reflowed in the layout in the next available grid cell, in the same manner as appellants’ method.” Patent Board Decision, page 5. Facebook appealed this decision.
The CAFC determined that the “sole question on appeal is whether Perrodin disclosed ‘a rule requiring the image elements to be contiguous such that each available image position between the first image element in the sequence and the last image element in the sequence is occupied by an image element’ within the meaning of the claims.” Id. at 5. The CAFC determined that it did not. The CAFC noted that while Figure 19 illustrated that each cell of the grid was occupied, thereby achieving continuity, this did not mean that the algorithm of Perrodin required contiguity for all images, which is a feature of claim 1 of the ‘636 patent application.
Nothing about Perrodin’s algorithm required contiguity. It is true that the example depicted in Figures 18 and 19 happened to result in contiguity. But that cannot represent a general rule that would demand contiguity for all images, as required by the claims here.
Id. at 5. The CAFC cited Figure 17 of Perrodin to further establish that the algorithm of Perrodin does not require continuity after an image is moved to a second position. “This shortcoming is made plain in Perrodin’s Figure 17, below, which showed the effect of re-sizing image 1103 to be 2×2, while maintaining the same sequence:
Herein, the blank cells in the second image of Figure 17, which is representative the grid after user adjustment, clearly illustrate that the algorithm of Perrodin does not demand contiguity. It is noted that claim 1 of ‘636 recites a rule of contiguity when the position or size of an image is adjusted. The CAFC stated that Perrodin does not demand continuity in response to an adjustment of position or size of an image, it just merely happens by chance in some situations, as illustrated in Figures 17 and 19.
Because Perrodin’s algorithm did not require contiguity in response to resizing or rearranging in all cases, but rather left open the possibility that cells would be left unfilled, Perrodin could not have disclosed the “rule requiring the image elements to be contiguous” of the claims of the ’636 application, so we reverse the Board’s anticipation and obviousness determinations. We remand for further action as appropriate. Accordingly, the case is reversed and remanded.
Id. at t 6.
Takeaway
- When writing a claim, ensure that a claimed “rule requiring” feature is clearly recited.
- A claimed rule feature may not be anticipated by a reference that happens to satisfy said rule in some circumstances, but not others.
- The Board’s holding of “functionally the same” is not the standard for establishing anticipation of a claimed rule feature.
