In a non-precedential opinion, the U.S. Court of Appeals for the Federal Circuit has overturned a decision by the Patent Trial and Appeal board that upheld the rejection of one of Facebook’s patent applications. The application (U.S. Pat. App. No. 13/715,636) claims a method for displaying a set of images after reshuffling or resizing the images. The claimed method requires that the reshuffled sequence “be contiguous” – i.e., that there are no gaps in the array.
The Examiner’s claim rejection asserted a reference (Perrodin) that disclosed a system that could – but did not in all cases provide – contiguity of repositioned images. The Federal Circuit reversed the PTAB’s determination of both anticipation and obviousness on these grounds, stating “[b]ecause 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” as required in the application.
In addition, truly understanding the ways that an application is distinct over the cited art, patent attorneys and agents must hold Examiners accountable to the legal requirements underlying their rejections.
The case is In Re Facebook, Inc., No. 2017-2524 (Fed. Cir. Aug. 14, 2008). The full text of the decision is here.