Brian Dean. Heikes et al.

Patent Trials and Appeals Board

Aug 23, 2019

12983575 - (D) (P.T.A.B. Aug. 23, 2019)

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.
12/983,575 01/03/2011 Brian Dean Heikes 19487.143.1 1662
107193 7590 08/23/2019
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
XIAO, DI
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
08/23/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN DEAN HEIKES and JAMES A. ODELL
________________

Appeal 2018-0079051
Application 12/983,575
Technology Center 2100
_________________

Before JASON V. MORGAN, JAMES B. ARPIN, and IRVIN E. BRANCH,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) the Examiner’s final
rejection of claims 26–32, 36–41, 43–46, and 49–54, all of the pending
claims. Final Act. 2. Claims 1–25, 33, 34, 35, 42, 47, and 48 are cancelled.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 In this Decision, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
May 14, 2018) and Reply Brief (“Reply Br.,” filed August 1, 2018); the
Final Office Action (“Final Act.,” mailed October 12, 2017); the Examiner’s
Answer (“Ans.,” mailed June 1, 2018); and the originally-filed Specification
(“Spec.,” filed January 3, 2011). Rather than repeat the Examiner’s findings
and determinations and Appellants’ contentions in their entirety, we refer to
these documents.
2 Appellants assert Facebook, Inc. is the real party-in-interest. App. Br. 1.
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STATEMENT OF THE CASE
Appellants’ recited methods and computer readable media comprising
instructions for performing such methods “relate[] to regulating the
interruption of processes resulting from initiation of messaging sessions by a
remote party.” Spec. 1:6–7. In particular,
One implementation provides monitoring a user’s activity within
a first window that is visible to the user in a graphical user
interface (GUI), receiving notification of an incoming message
intended for the user, and, upon receipt of the incoming message,
opening a second window that is visible to the user in the GUI,
the second window being distinct from any other window
currently open in the GUI. When a predetermined condition is·
satisfied based upon the user’s activity being monitored in the
first window, the implementation further provides deactivating
the first window in the GUI and activating the second window to
provide the user with notification of the incoming message.
Id. at 1:27–2:7; see id., Claims 39, 43.
As noted above, claims 26–32, 36–41, 43–46, and 49–54 are pending.
Claims 26, 31, 39, and 43 are independent. App. Br. 16, 18, 21, 22 (Claims
App’x). Claims 27–30 and 49–54 depend directly or indirectly from
claim 26, claims 32 and 36–38 depend directly or indirectly from claim 31,
claims 40 and 41 depend directly from claim 39, and claims 44–46 depend
directly or indirectly from claim 43. Id. at 16–25.
Claims 31 and 43 recite computer-readable media “storing
instructions thereon that, when executed by at least one processor, cause a
computing system to” perform methods recited in claims 26 and 39,
respectively. E.g., id. at 16, 18. Therefore, we focus our analysis on the
disputed and overlapping limitations of these independent claims. See
Accenture Global Servs. GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
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1341 (Fed. Cir. 2013) (“Although CLS Bank issued as a plurality opinion, in
that case a majority of the court held that system claims that closely track
method claims and are grounded by the same meaningful limitations will
generally rise and fall together.” (citation omitted)).
Claims 26 and 39, reproduced below with disputed limitations
emphasized, are representative.
26. A method comprising:
monitoring activity of a user in an active graphical user
interface (GUI);
receiving a notification of an incoming message addressed
to the user from a sender, wherein the user and the sender are
both users of a communication system;
waiting to notify the user of the incoming message until
determining, based on the monitored activity of the user in the
active GUI, whether and when to interrupt the activity of the user
in the active GUI;
determining, by the at least one processor, that a
predetermined amount of time has elapsed since receiving the
notification of the incoming message without making a GUI
associated with the incoming message active; and
in response to determining that the predetermined amount
of time has elapsed since receiving the notification of the
incoming message without making the GUI associated with the
incoming message active, automatically providing an indication
for presentation to the sender that indicates an activity status of
the user associated with the incoming message.
App. Br. 16 (Claims App’x) (emphasis added). The emphasized limitation
appears in each of the independent claims.
39. A method, comprising:
receiving a notification of an incoming message that is
intended for a first user and that is from a second user;
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determining, using at least one processor, that a
predetermined amount of time has elapsed since receiving the
notification of the incoming message without detecting activity
of the first user in a first graphical user interface (GUI);
in response to determining that the predetermined amount
of time has elapsed since receiving the notification of the
incoming message without detecting activity of the first user in
the first GUI, automatically providing an indication for
presentation to the second user that the first user has not yet
received notification of the incoming message; and
based on a determination that the first user's activity has
satisfied a predetermined condition:
automatically causing the first GUI to transition
from being active to being inactive;
and
automatically causing a second GUI associated
with the incoming message to become active.
Id. at 21 (emphases added). Claim 43 shares the disputed limitations of
claim 39.
REFERENCES AND REJECTION
The Examiner relies upon the following references:
Name3 Number Publ’d/Issued Filed
Aravamudan US 6,301,609 B1 Oct. 9, 2001 Sep. 8, 1999
Kaminsky US 2005/0055405 A1 Mar. 10, 2005 Sep. 4, 2003
Horvitz US 7,120,865 B1 Oct. 10, 2006 Jul. 30, 1999
The Examiner rejects claims 26–32, 36–41, 43–46, and 49–54 under 35
U.S.C. § 103 as rendered obvious over the combined teachings of Horvitz,
Kaminsky, and Aravamudan. Final Act. 5–29.

3 All reference citations are to the first named inventor only.
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We review the appealed rejection for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). Unless otherwise indicated, we adopt the Examiner’s
findings in the Final Action and the Answer as our own and add any
additional findings of fact for emphasis. We address the rejection below.
ANALYSIS
Obviousness Over Horvitz, Kaminsky, and Aravamudan
1. Independent Claims 26, 31, 39, and 43
Claims 26, 31, 39, and 43 stand rejected as unpatentable over the
combined teachings of Horvitz, Kaminsky, and Aravamudan. Final Act. 6–
8, 10–13, 16–18, 20–22. For the reasons given below, we sustain the
Examiner’s rejection.
a. “Indication” Limitations
Each of the independent claims recites the step of “automatically
providing an indication for presentation to the sender that indicates an
activity status of the user associated with the incoming message.” E.g., App.
Br. 16 (Claims App’x) (Claim 26). Appellants refer to these as the
“indication” limitations. Id. at 9; Reply Br. 2.
With respect to claim 26, the Examiner determines that:
While Horvitz disclose[s] continually watching the user
work in 210, see Figure 2 (element 210); Horvitz does not
explicitly disclose monitoring activity of a user in an active
graphical user interface (GUI).
Kaminsky from [a] similar field of endeavor disclose[s]
monitoring activity of a user in an active window (for example,
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an [Instant Message (IM)] user may have enabled the “I am
away” feature (referred to equivalently herein as the “away”
feature) of his IM client, which allows other IM users monitoring
his online presence to be informed (usually by a visual cue, as
noted earlier) that this person is not currently available, see
paragraph [0012]).
Id. at 6–7. In particular, Kaminsky explains:
Senders of instant messages also have an expectation that
a response will be forthcoming rapidly, since this is the nature of
the communications, unless the recipient has configured his IM
client to indicate otherwise. For example, instant messaging
systems such as AOL Instant Messenger and Lotus Sametime
Connect allow a user to change his IM status at a point in time.
Sametime has 3 states: “I am active”, “I am away”, and “Do not
disturb me”. (A user is also allowed to specify a status message
to be displayed to other IM users when he is in any of the 3
states.)
Kaminsky ¶ 12 (emphasis added); see id. ¶¶ 13, 14 (describing using the
“away” and “[d]o not disturb” features to limit the number of IM windows);
see also id. ¶ 15 (“E-mail systems typically provide an ‘away’ feature, as
well as user-definable filtering capability. When an e-mail user configures
his e-mail client to notify message senders that he is away, this provides a
type of limited feedback to the sender, notifying him that an urgent message
will not likely be acted upon with urgency, for example.”).
The Examiner acknowledges that Horvitz and Kaminsky do not
explicitly teach
in response to determining that the predetermined amount
of time has elapsed since receiving the notification of the
incoming message without making the GUI associated with the
incoming message active, automatically providing an indication
for presentation to the sender that indicates an activity status of
the user associated with the incoming message.
Final Act. 7; see App. Br. 16 (Claims App’x) (Claim 26). However, the
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Examiner determines that the addition of the teachings of Aravamudan
supplies this limitation. Final Act. 7–8 (citing Aravamudan, 7:59–8:4). In
particular, Aravamudan explains:
If no interaction with a user interface is sensed during an activity
monitor check, then in accordance with step 264, the time from
last activity (T) is compared to a specified inactivity time limit
(LIMIT). If time T is less than or equal to LIMIT, no immediate
action is taken and the activity monitor continues to monitor for
user interaction with a user interface, in accordance with step
260. If, however, time T becomes greater than LIMIT, then in
accordance with step 266 the [client premises equipment (CPE)]
device generates an inactivity message and conveys the inactivity
message to the [Communication Services Platform (CSP)] via
the IM server. Upon receiving the inactivity message, the CSP
updates its database to indicate that the user is inactive.
Aravamudan, 7:59–8:4; see id. at 6:64–7:9, Fig. 5. Further, the Examiner
notes that
upon receiving an ‘inactivity message,’ Aravamudan’s ‘CPE
device’ ‘conveys the inactivity message’ to a [CSP]. . . . See,
[Aravamudan] col. 8 ll. 1-4; id. FIG. 6 (step 266). The ‘CSP’
send[s] the inactivity message to user (for example, the IM server
then notifies the CSP of the user’s online presence and address,
in accordance with step 236. The IM server also notifies selected
buddies to the user of the user[‘]s presence online, see
[Aravamudan] col., 7 line 14-20; col., 8 line, 26-31, 45-50, col.,
9 line 45-63 see Figure 5).
Ans. 4 (emphasis added); see Aravamudan, 10:8–15 (“That is, when the user
is online in accordance with step 336, all others who have identified the user
as a buddy are notified of the user’s presence, per step 340. The user’s real
presence is therefore advertised to others who have identified the user as a
buddy. However, when the user is off-line, all others who have identified
the user as a buddy are notified that the user is not online and is not
available.”); see also Final Act. 3 (citing Aravamudan, 8:27–31).
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Appellants contend that the Examiner fails to show that Aravamudan
teaches “automatically providing an indication for presentation to the sender
that indicates an activity status of the user associated with the incoming
message.” See App. Br. 9–10. Instead, Appellants assert that “Aravamudan
merely discloses updating a central-platform database when a user is
inactive on a client-premises-equipment (‘CPE’) device. Neither Horvitz
nor Kaminsky can cure Aravamudan’s deficient disclosure here, and the
Office Action relies on neither reference for the sender’s indication
limitations.” Id.; Reply 2–3. Further Appellants contend that “notifying
buddies of a user’s ‘presence online’ does not concern and is not ‘associated
with [an] incoming message,’ as the independent claims recite.” Reply
Br. 4.
Nevertheless, as noted above, Kaminsky teaches “[a] user is also
allowed to specify a status message to be displayed to other IM users when
he is in any of the 3 states[: ‘I am active,’ ‘I am away,’ and ‘Do not disturb
me’].” Kaminsky ¶ 12; see id. ¶ 15 (“When an e-mail user configures his e-
mail client to notify message senders that he is away, this provides a type of
limited feedback to the sender, notifying [the sender] that an urgent message
will not likely be acted upon with urgency, for example.”). As also noted
above, Aravamudan teaches “the IM server also conveys instant messages to
one or more predetermined buddies of the user to indicate the off-line status
of the user.” Aravamudan, 8:26–29; see id. at 10:2–6 (“In accordance with
step 334, a buddy who is assigned a high priority and who has at least one
piece of provisioned CPE that is online and active, will be notified via the
IM server of the user’s ‘real presence’ when the user accesses the network
via any of his provisioned CPE.” (emphases added)). Thus, Aravamudan
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teaches that “real presence” describes, not only online status, but activity.
See id. at 10:11–15.
The Examiner relies upon the combined teachings of Kaminsky and
Aravamudan, as well as those of Horvitz, to teach the “indication” limitation
of the independent claims. Ans. 3–4; see Final Act. 8. When the rejection is
based on the combined teachings of the references, Appellants may not
properly challenge these references individually. See In re Keller, 642 F.2d
413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.” (citations omitted)). On this record, we are
persuaded that the combined teachings of Horvitz, Kaminsky, and
Aravamudan teach or suggest the “indication” limitation of the independent
claims.
b. “GUI Transition” Limitations
Each of independent claims 39 and 43 recites the steps of
“automatically causing the first GUI to transition from being active to being
inactive; and automatically causing a second GUI associated with the
incoming message to become active.” E.g., App. Br. 21 (Claims App’x)
(Claim 39). Appellants refer to these as the “GUI transition” limitations. Id.
at 12; Reply Br. 6.
With respect to claim 39, the Examiner determines that
Horvitz disclose[s] a method comprising:
receiving a notification of an incoming message addressed
to the user from a second user (for example, a method first
receives a document, and assigns a measure of priority to the
document based on a document classifier. A user is then alerted
to the document, based on a predetermined or dynamically
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identified criteria, see, col., 1 line 58-65);
based on a determination that the first user’s activity has
satisfied a predetermined condition: automatically causing the
first GUI to transition from being active to being inactive (for
example, the decision as to when and how to alert users is made
by employment of a set of user-specified thresholds and
parameters defining policies on alerting. In this embodiment,
user presence can be inferred based on mouse or keyboard
activity. Thus, a user can be allowed to input distinct thresholds
on alerting for inferred states of activity and no activity. Users
can input an amount of idle activity following activity where
alerting will occur at lower criticalities. In this embodiment, if it
is determined that the user is not available based on the time that
no computer activity is seen--or on the user’s inactivity when an
attempt to alert is made--then messages are stored, and are
reported to the user in order of criticality when the user returns
to interact with the computer (or, returns to the room, given the
availability of inputs from infrared or other presence detection,
see col., 13 line 12–27); automatically causing a second GUI
associated with the incoming message to become active (for
example, The document can receive focus--that is, the window in
which the document is displayed is selected as the active
window, as opposed to the window the user was previously
working in col., 14 line 5-10 ).
Final Act. 16–17. In particular, referring to Figure 14, the Examiner asserts
Horvitz teaches that “the user may indicate that an agent or automated
assistant with speech recognition and text-to-speech rendering abilities be
activated, to alert the user to the priority and to allow the user to engage
further in a dialog about hearing or seeing more about the message.” Ans. 5.
Such alerts may be based on a predetermined priority for the incoming
document. See Horvitz, 16:1–42.
The Examiner explains:
In addition Horvitz in view of Kaminsky and in further in view
Aravamudan as whole teaches (for example, [Aravamudan’s]
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FIG. 6 is a flow diagram of an exemplary method utilized to
communicate to the Communication Services Platform (CSP) a
user’s inactivity while utilizing a client premises equipment
(CPE) device registered as online, in accordance with the
principles of the present invention. This feature may also be
implemented in the client CPE software and is utilized to
determine when the user is inactive for a predetermined period
of time, and therefore possibly away from a CPE device which
is registered as online. In step 260, the CPE device continuously
monitors for user interaction with a user interface of the CPE
device and relays changes in state with the server. Interaction
with a CPE device may be detected via several alternative
methods, such as detecting when a user is actively typing on a
keyboard, or via a motion detector associated with a mobile
device. If interaction with a user interface of the CPE device is
sensed, and the previous state was inactive, then the CPE device
generates an active message and conveys the active message to
the CSP via the Instant Message (IM) server, in accordance with
step 262, see Aravamudan col., 7 line 41-59).
Ans. 5–6 (emphasis added).
Appellants contend:
[the] cites passages demonstrating that Horvitz discloses
notifying a user of received messages after an inactivity period
on a computer and selecting a “prioritized document” as an active
window based on the priority level of the document. Neither
Kaminsky nor Aravamudan can cure Horvitz’s deficient
disclosure, and the Office Action relies on neither reference for
the GUI-transition limitations.
App. Br. 12. In particular, Appellants contend that, first, Horvitz teaches
detecting inactivity, but does not teach a GUI transitioning from active to
inactive; and, second, Horvitz teaches a window becoming active as a result
of a documents priority, not the satisfaction of a predetermined condition
related to user activity. Id. at 13; Reply Br. 6–8.
Claims 39 and 43 do not specify what condition causes the GUI to
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transition from active to inactive, or vice versa, only that the first user’s (i.e.,
the recipient’s) inactivity satisfies the condition. As noted above, Kaminsky
teaches that “the IMS may prevent the IM session from continuing (for
example, by automatically closing the IM session window).” Kaminsky
¶ 69. This may happen as the result of the occurrence of a predetermined
event. See id.; see also id. ¶ 71 (“for example by providing services
whereby IMS users can define criteria under which new IM windows should
be opened responsive to receiving an instant message from message senders
with whom an IM session is not already established; using the defined
criteria to determine, upon receiving an instant message from at least one of
the IM users, whether a new IM window should be opened”). Horvitz
teaches that “[u]sers can input an amount of idle activity following activity
where alerting will occur at lower criticalities.” Horvitz, 13:18–20
(emphasis added); see Aravamudan, 7:41–51 (“This feature may also be
implemented in the client CPE software and is utilized to determine when
the user is inactive for a predetermined period of time, and therefore
possibly away from a CPE device which is registered as online. In step 260,
the CPE device continuously monitors for user interaction with a user
interface of the CPE device and relays changes in state with the server.”).
Further, Horvitz teaches, “[i]n another embodiment, the prioritized
document is opened—that is, the document is displayed on the screen. The
document can receive focus—that is, the window in which the document is
displayed is selected as the active window, as opposed to the window the
user was previously working in.” Horvitz, 14:4–10 (emphasis added).
Horvitz teaches that, when predetermined criteria are met, an active
window may be made inactive, and an inactive window may be made active,
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and the combined teachings of Horvitz, Kaminsky, and Aravamudan teach
or suggest that such changes may result from the occurrence of a
predetermined condition related to a recipient’s activity. Thus, we are
persuaded that the combined teachings of Horvitz, Kaminsky, and
Aravamudan teach or suggest automatically transitioning a first GUI from an
active to an inactive state and automatically transitioning a second GUI from
an inactive to an active state, as recited in claims 39 and 43. See Ans. 4–6.
2. Dependent Claims 27–30, 32, 36–38, 40, 41, 44–46, and 49–54
The Examiner relies on the combined teachings of Horvitz,
Kaminsky, and Aravamudan to reject claims 27–30, 32, 36–38, 40, 41, 44–
46, and 49–54. Final Act. 8–29. Appellants challenge the rejection of these
claims based solely on their contentions with respect to the base claims,
claims 26, 31, 39, and 43. App. Br. 9; Reply Br. 4. Thus, on this record, we
sustain the Examiner’s obviousness rejection of dependent claims 27–30, 32,
36–38, 40, 41, 44–46, and 49–54 for the reasons given above with respect to
independent claims 26, 31, 39, and 43.
CONCLUSION
(1) The Examiner did not err in rejecting claims 26–32, 36–41, 43–46, and
49–54 as rendered obvious over the combined teachings of Horvitz,
Kaminsky, and Aravamudan.
(2) Thus, claims 26–32, 36–41, 43–46, and 49–54 are unpatentable.
DECISION
We affirm the Examiner’s rejection of claims 26–32, 36–41, 43–46,
and 49–54.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED