Ex Parte Appelman et al

Patent Trial and Appeal Board

Feb 7, 2017

13766779 (P.T.A.B. Feb. 7, 2017)

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.
19487.34.1.1.6 7089
EXAMINER
WALSH, JOHN B
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
13/766,779 02/14/2013
107193 7590 02/09/2017
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
Barry Appelman
02/09/2017 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
gj olley @ kj pip. com
tkusitor@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY APPELMAN and MUHAMMAD MOHSIN HUSSAIN
Appeal 2016-0016771
Application 13/766,779
Technology Center 2400
Before JOHN A. EVANS, CATHERINE SHIANG,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 50-97. Claims 1—49 are cancelled. We have
jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Facebook, Inc. as the real party in interest. (App.
Br. 2.)
Appeal 2016-001677
Application 13/766,779
THE INVENTION
Appellants’ disclosed and claimed invention is directed to
reconfiguration of electronic messages to effect enhanced notifications based
on predetermined definitions. (Abstract.)
Claim 50, reproduced below, is illustrative of the claimed subject
matter:
50. A method comprising:
receiving an electronic message for an intended recipient;
identifying a type of the electronic message;
determining, based on the type of the electronic message,
whether to provide a notification of the electronic message to
the intended recipient;
upon determining that the notification is to be provided
based on the type of the electronic message, identifying
notification settings dictating one or more delivery formats for
the notification based on the type of the electronic message; and
providing, using one or more processors, the notification
of the electronic message in a first delivery format based on the
notification settings.
REJECTIONS
The Examiner rejected claims 50, 57—64, 74, 75, 77, 78, 81—87, 89,
and 90 under 35 U.S.C. § 102(e) as being anticipated by Volach (US
2003/0158902 Al, pub. Aug. 21, 2003). (Non-Final Act. 2—6.)
The Examiner rejected claims 51, 55, 65, 68, 70—73, 79, 80, and 91—
97 under 35 U.S.C. § 103(a) as being unpatentable over Volach and Swart et
al. (US 2003/0028884 Al, pub. Feb. 6, 2003). (Non-Final Act. 6-8.)
The Examiner rejected claims 52—54, 56, 66, 67, and 69 under
35 U.S.C. § 103(a) as being unpatentable over Volach, Swart, and
2
Appeal 2016-001677
Application 13/766,779
Tucciarone et al. (US 2003/0009385 Al, pub. Jan. 9, 2003). (Non-Final Act.
8-9.)
The Examiner rejected claims 76 and 88 under 35 U.S.C. § 103(a) as
being unpatentable over Volach and Tucciarone. (Non-Final Act. 9.)
ISSUE ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
dispositive issue:2
Whether the Examiner erred in finding Volach discloses the
independent claim 50 limitation, “determining, based on the type of the
electronic message, whether to provide a notification of the electronic
message to the intended recipient,” and the similar limitations recited in
independent claims 64, 74, and 86. (App. Br. 11—21.)
ANALYSIS
For the limitation at issue, the Examiner relies on the disclosure in
Volach of a “rich content delivery system” which uses information such as
“availability of the recipient(s), the device(s) they may be logged onto, and
the capabilities of the devices,” to determine the timing, destination device,
formatting, etc., of delivering electronic communications. (Non-Final Act.
2; Volach H 38, 39, 48, 53, 71, 74.)
2 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed May 26, 2015); the Reply
Brief (filed Nov. 20, 2015); the Non-Final Office Action (mailed Dec. 4,
2014) (“Non-Final Act.”); and the Examiner’s Answer (mailed Sept. 22,
2015) for the respective details.
3
Appeal 2016-001677
Application 13/766,779
Appellants argue Volach fails to disclose determining “whether” to
provide the claimed notification, but rather always provides a notification.
(App. Br. 26.) Appellants also argue there is no disclosure of a message
“type” used to determine whether and how notification is provided. {Id.)
The Examiner concludes the word “whether” in the claims can be
disregarded because:
The claim is constructed under the presumption that the
notification will be provided since the next limitation after
“determining” of the independent claims recite “upon
determining that the notification is to be provided.” Therefore
the claim appears to only cover the scenario wherein the
notification is delivered.
(Ans. 2.) We are persuaded the Examiner errs. The claims explicitly require
a determination of whether to provide a notification.
In the alternative, the Examiner finds Volach does disclose
determining whether to provide a notification, based on the disclosure in
Volach of an initial check of received communications as to “whether the
communication looks complete and correct.” (Volach Fig. 6B, 170.) The
Examiner finds:
Thus it is inherent for a networked computer system of Volach
that an incorrect/incomplete communication would not be
provided to the recipient. Thus the “type” of message can be
either a complete/correct electronic message or an
incomplete/incorrect/corrupted electronic message.
(Ans. 3.) However, Volach does not disclose what is done with an incorrect
or incomplete communication. Although one inference that may be drawn
from this passage in Volach would suggest an incorrect or incomplete
communication would not be sent, inherency requires that “the allegedly
inherent characteristic necessarily flows from the teachings of the applied
4
Appeal 2016-001677
Application 13/766,779
prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). We are
persuaded the Examiner has not demonstrated Volach inherently discloses a
determination of whether to provide a notification as required by the claims.3
As a further alternative basis for the rejection, the Examiner broadly
construes “determining . . . whether to provide” as encompassing
determining whether to provide to “a particular device” or “at a particular
time.” (Ans. 3—4.) Under such an interpretation, Volach would arguably
disclose this limitation. (E.g., Volach 138, 53.) However, we are persuaded
this is not a reasonable interpretation of the claims. Determining to send a
communication to a particular device or at a particular time is not the same
as determining whether to provide the communication at all.
Accordingly, we agree with Appellants that the Examiner does not
provide prima facie support for the rejections. “[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Therefore, on the record before us, we are
constrained to find the Examiner errs in rejecting independent claims 50, 64,
74, and 86.
CONCLUSION
For the reasons stated above, we do not sustain the anticipation
rejection of independent claims 50, 64, 74, and 86.
3 We express no opinion regarding the rejection of independent claim 50
under 35 U.S.C. § 103, because such a rejection is not before us. We leave it
to the Examiner to determine whether claim 50 is obvious over Volach alone
or in combination with additional references.
5
Appeal 2016-001677
Application 13/766,779
We also do not sustain the anticipation rejections of claims 57—63, 75,
77, 78, 81—85, 87, 89, and 90, and the obviousness rejections of claims 51,
55, 65, 68, 70—73, 79, 80, and 91—97 over Volach and Swart, of claims 52—
54, 56, 66, 67, and 69 over Volach, Swart, and Tucciarone, and of claims 76
and 88 over Volach and Tucciarone, which claims are dependent from
claims 50, 64, 74, or 86.
DECISION
We reverse the Examiner’s rejections of claims 50—97.
REVERSED
6