        NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                 ______________________

               IN RE: FACEBOOK, INC.,
                        Appellant
                 ______________________

                       2017-2524
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/715,636.
                  ______________________

                Decided: August 14, 2018
                 ______________________

   JASON R. GERMAN, Baker Botts LLP, Palo Alto, CA,
argued for appellant.

   MEREDITH HOPE SCHOENFELD, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for appellee Andrei Iancu. Also represented
by THOMAS W. KRAUSE, MAI-TRANG DUC DANG, JOSEPH
MATAL.
                ______________________

      Before PROST, Chief Judge, MOORE and STOLL,
                     Circuit Judges.
PROST, Chief Judge.
    This is an appeal from a final rejection of a patent ap-
plication concerning a method for arranging images
2                                       IN RE: FACEBOOK, INC.




contiguously in an array. The U.S. Patent and Trade-
mark Office Patent Trial and Appeals Board affirmed a
patent examiner’s rejection for obviousness and anticipa-
tion. The applicant appeals. Because the Board’s reading
of the relevant prior art reference cannot be supported by
substantial evidence, we reverse and remand.
                       BACKGROUND
    Appellant Facebook, Inc., filed U.S. Patent Applica-
tion No. 13/715,636, titled “Rendering Contiguous Image
Elements.” The application discloses rendering an array
of contiguous images elements for use, for example, in
displaying a series of images on a social-networking
profile. According to an embodiment, the images could be
one of two sizes, small or large, with large images sized to
be a two-dimensional multiple of the size of small images.
The algorithm of the ’636 application determines the
arrangement of the image elements, and it adjusts the
placement “so as to preserve the contiguous layout,” and
it can further adjust in response to user actions such as
resizing or resequencing images, while continuing “to
ensure an array of contiguous image elements.” J.A. 14.
    Claim 1 of the ’636 patent recites: 1
    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


    1   The Board treated Claim 1 as representative. Fa-
cebook acknowledges that the rejected claims rise and fall
with the rejection of independent claims 1, 10, and 15. Its
arguments also pertain to all three of those independent
claims. Accordingly, this opinion discusses only claim 1.
IN RE: FACEBOOK, INC.                                     3



      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 re-
      sponse to an instruction to adjust the position
      or size of a first image element, a second posi-
      tion in the array for at least one second image
      element, the second position determined
      based on a rule requiring the image ele-
      ments to be contiguous such that each avail-
      able image position between the first image
      element in the sequence and the last image el-
      ement in the sequence is occupied by an image
      element; and
      by the computing device, providing information
      to render the array of contiguous image ele-
      ments.
J.A. 8 (emphasis added).
    A patent examiner rejected several claims of the ’636
application as anticipated and the remaining claims as
obvious, and the Board affirmed. The examiner and the
Board relied in part on a patent application filed by
Perrodin, which disclosed a method for arranging media
content in a digital journal.
    Perrodin disclosed an algorithm for placing images on
a grid, described as follows:
    For example, as the first image is a three by three
    image, the application places the first image
    across three cells in both directions (i.e., width
    and height). The application then marks those
    cells as being used or allocated. The application
    then places the second image on the fourth cell of
    the first row. This is followed by the third image
    on the fifth cell of the first row. The application
    then places a fourth image (which is a two by two
4                                      IN RE: FACEBOOK, INC.




    image) on the last two cells of the first and second
    rows. The remaining images are then distributed
    across each available cell in the grid.
J.A. 115 ¶ 126.
    Perrodin further explained that after a user moves an
image within the grid, “[t]he application [can] also re-
flow[] several of the remaining images across the journal.”
J.A. 118 ¶ 168. Perrodin depicted this “reflowing” in
Figure 19.




J.A. 68. (Figure 18 also depicted the same embodiment,
using actual images, rather than labeled boxes.) Figure
19 depicted the effect of a user moving a 2x2 image,
labeled 1104 from the fourth position in the grid to the
first. With that rearrangement, Perrodin’s algorithm first
placed image 1104 so as to occupy the first two spaces
horizontally as well as the two spaces beneath those.
IN RE: FACEBOOK, INC.                                    5



Perrodin placed the next images so as to fill each of the
next grid spaces, filling them horizontally first, then
moving to the next row. The result is that 1x1 images
1107 and 1108 fill in the two grid spaces beneath 1104.
     The Board adopted the examiner’s conclusion that
the foregoing disclosures of Perrodin satisfied the “rule
requiring the image elements to be contiguous” limitation
of the ’636 patent. J.A. 6. The Board thus affirmed the
examiner’s rejections. J.A. 7.
   Facebook appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(a).
                        DISCUSSION
     The sole question on appeal is whether Perrodin dis-
closed “a rule requiring the image elements to be contigu-
ous 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. 2 It did not.
     Nothing about Perrodin’s algorithm required contigui-
ty. 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. For example,
the Board’s analysis failed to consider what Perrodin
would have done if image 1103 in Figure 19 were 2x2.
Perrodin’s algorithm could not guarantee contiguity.
    This shortcoming is made plain in Perrodin’s Figure
17, below, which showed the effect of re-sizing image 1103
to be 2x2, while maintaining the same sequence:



    2   Both sides agree that the anticipation and obvi-
ousness rejections rise and fall together. Appellant’s Br.
4, 26; Appellee’s Br. 1 n.1.
6                                       IN RE: FACEBOOK, INC.




J.A. 66.
    Of course, the claims recite a rule requiring contiguity
in response to an instruction to adjust the position or size,
but the same lack of contiguity would result from Perro-
din if image 1103 had already been 2x2 and placed in
some other arrangement, and the user simply rearranged
the images to arrive at the second sequence depicted.
     Because Perrodin’s algorithm did not require contigui-
ty 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.
            REVERSED AND REMANDED
