Ex Parte Appelman et alDownload PDFPatent Trial and Appeal BoardAug 27, 201311015476 (P.T.A.B. Aug. 27, 2013) Copy Citation 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. 11/015,476 12/20/2004 Barry Appelman 00008-0031-01000 7353 114629 7590 08/27/2013 BOOKOFF McAndrews, PLLC 2401 Pennsylvania Avenue, NW, Suite 450 Washington, DC 20037 EXAMINER PAPPAS, PETER ART UNIT PAPER NUMBER 2444 MAIL DATE DELIVERY MODE 08/27/2013 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) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BARRY APPELMAN and EDMUND J. FISH ____________ Appeal 2011-002559 Application 11/015,476 Technology Center 2400 ____________ Before KRISTEN L. DROESCH, JOHN A. EVANS, and GEORGIANNA W. BRADEN, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002559 Application 11/015,476 2 STATEMENT OF THE CASE The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1-26, and 31.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. BACKGROUND The Appellants’ disclosed invention relates to method for announcing new users of an electronic communications system. The method includes receiving an indication of a new user of an electronic communications system. The new user has an identifier for the electronic communications system. Existing users of the electronic communications system that are known to the new user are identified. The identified existing users are sent a message notifying the identified existing users of the identifier of the new user. The identified existing users may be enabled to add the identifier of the new user to participant lists used by the identified existing users. The new user may be enabled to add identifiers of the identified existing users to a participant list of the electronic communications system used by the new user. Abs.; see also Spec. 2-4. Claim 1 is illustrative and reproduced below (disputed limitations in italics): 1. A computer-implemented method for announcing new users of an electronic communications system, the method comprising: receiving an indication of a new user of an electronic communications system; accessing, from a computer memory storage system, contact information that is maintained on behalf of the new user and that includes contact information for other users; 1 Claims 27-30 have been cancelled. Appeal 2011-002559 Application 11/015,476 3 based on the accessed contact information, identifying multiple users who are known by the new user; as a consequence of identifying the users who are known by the new user, comparing the users identified as being known by the new user to data maintained on behalf of the electronic communications system that includes information about existing users of the electronic communications system who previously registered with the electronic communications system; based on results of comparing the users identified as being known by the new user to the data maintained on behalf of the electronic communications system that includes information about existing users of the electronic communications system who previously registered with the electronic communications system, determining that at least some of the users identified as being known by the new user are existing users of the electronic communications system who previously registered with the electronic communications system; and as a consequence of determining that at least some of the users identified as being known by the new user are existing users of the electronic communications system, sending, to at least one of the users who was identified as being known by the new user and who was determined to be an existing user of the electronic communications system, a message notifying the at least one user who was identified as being known by the new user and who was determined to be an existing user of the electronic communications system that the new user also is a user of the electronic communications system. Rejections Claims 1-6, 17-26 and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lake (US 2005/0080859 A1, Apr. 14, 2005) and Daniell (US 2004/0054736 A1, Mar. 18, 2004). Ans. 3. Appeal 2011-002559 Application 11/015,476 4 Claims 7-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lake, Danielle and Brezin (US 2002/0178161 A1, Nov. 28, 2002). Ans. 6. ISSUE Did the Examiner err in finding that the combination of Daniell and Lake teaches or suggests “comparing the users identified as being known by the new user to data maintained on behalf of the electronic communications system that includes information about existing users of the electronic communications system who previously registered with the electronic communications system; based on the results of comparing . . . , determining that at least some of the users identified as being known by the new user are existing users of the electronic communications system who previously registered with the electronic communications system; and as a consequence of determining . . . ,” as recited in independent claims 1, 25 and 26? ANALYSIS We have reviewed the Examiner’s rejections in light of the Appellants’ arguments in the Appeal Brief presented in response to the Final Office Action and the Reply Brief presented in response to the Answer. We agree with the Appellants’ arguments and highlight and address specific findings and arguments as follows. We agree with the Appellants’ arguments that, contrary to the Examiner’s findings (Ans. 3-4 (citing Lake ¶¶ 0006, 0010-0012)), Lake does not teach or suggest comparing the users identified as being known by the new user to data maintained on behalf of the electronic communications system that includes information about existing users of the electronic communications system who previously registered with the electronic Appeal 2011-002559 Application 11/015,476 5 communications system. App. Br. 13-14. We agree with the Appellants that Lake instead describes a system that populates a user’s instant messaging list with contact information for co-users who are listed as meeting attendees in a calendar entry in the user’s electronic calendar, and teaches that the contact information for co-users that is included in the calendar entries is the same contact information included in the instant messaging lists. App. Br. 13-14 (citing Lake ¶¶ 0010, 0038-0043). We also agree with the Appellants’ arguments that, contrary to the Examiner’s findings (Ans. 4 (citing Daniell ¶ 0135); see also Ans. 13 (citing Daniell ¶¶ 0009, 0074)), Daniell does not teach or suggest based on the results of the comparing, determining that at least some of the users identified as being known by the new user are existing users of the electronic communication system who previously registered with the electronic communications system. App. Br. 14-15, Reply Br. 2. We agree with the Appellants that Daniell instead describes a system including an address book database that correlates different types of contact information for an individual - for example, one or more e-mail addresses, one or more IM addresses, one or more telephone numbers, and/or one or more fax numbers for the individual - with a single contact identifier for the individual, allowing a user to look up one type of contact information for the individual based on another type of contact information for the individual. App. Br. 14- 15; Reply Br. 2 (citing Daniell ¶¶ 0101-0107, 0135). For these reasons, we are constrained to reverse the rejection of claims 1-6, 17-26 and 31 as obvious over Lake and Daniell. Since claims 7-16 depend from claim 1, and as applied by the Examiner Brezin does not Appeal 2011-002559 Application 11/015,476 6 remedy the deficiencies of Lake and Daniell, we also reverse the rejection of claims 7-16 as obvious over Lake, Daniell and Brezin. DECISION We REVERSE the rejections of claims 1-26 and 31 under 35 U.S.C. § 103(a) as being unpatentable over the prior art. REVERSED msc Copy with citationCopy as parenthetical citation