Ex Parte Boss et al

Board of Patent Appeals and Interferences

Aug 6, 2010

10356100 (B.P.A.I. Aug. 6, 2010)

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.
10/356,100 01/31/2003 Gregory J. Boss YOR920020359US1 3268
48103 7590 08/09/2010
SAMUEL A. KASSATLY LAW OFFICE
20690 VIEW OAKS WAY
SAN JOSE, CA 95120
EXAMINER
ANYA, CHARLES E
ART UNIT PAPER NUMBER
2194
MAIL DATE DELIVERY MODE
08/09/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GREGORY J. BOSS and KEVIN C. MCCONNELL
____________________

Appeal 2009-003974
Application 10/356,100
Technology Center 2100
____________________

Before: THU A. DANG, CAROLYN D. THOMAS, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-003974
Application 10/356,100

2
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1, 3-15, 17-21, 23-35, 37-41 and 43-50. Claims 2, 16,
22, 36, and 42 have been canceled. (Br. 2). We have jurisdiction under
35 U.S.C. § 6(b) (2008).
We AFFIRM.
Introduction
According to Appellants, the invention is a system and method for
filtering instant messages by context (Abstract). The contexts can be a work
or interest profile or a predetermined work profile (Abstract).

STATEMENT OF THE CASE

Exemplary Claim(s)
Claim 1 is an exemplary claim and is reproduced below:
1. A processor-implemented messaging method for filtering
an instant message by context, comprising:

creating a context profile for a recipient of the instant
message;

selectively displaying at least a part of the recipient’s
context profile to a sender of the instant message;

receiving a sender's selection of a context for the instant
message based on the displayed recipient's context profile;

filtering the instant message based on the context of the
instant message, by comparing the context of the instant
message with the recipient's context profile, in order to
determine if the instant message meets current context criteria
set by the recipient context profile:

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wherein if the instant message meets the current context
criteria, transmitting the instant message to the recipient;

wherein if the instant message does not meet the current
context criteria, storing the instant message for a predetermined
period of time;

at the end of the predetermined period of time,
determining whether the current context criteria have changed;
and

if the current context criteria have changed, refiltering the
stored instant message based on the context of the instant
message.

Prior Art
Horvitz
Roskind
US 2002/0087649 A1
US 2003/0065721 A1
Jul. 4, 2002
Apr. 3, 2003

Rejections
Claims 1, 3-15, 17-21, 23-35, 37-41 and 43-50 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Horvitz and Roskind (Ans. 4).

GROUPING OF CLAIMS

Appellants argue claims 1, 3-15, 17-21, 23-35, 37-41 and 43-50
(independent claims 21 and 41 included) as a group on the basis of claim 1
(App. Br. 8-18). We select independent claim 1 as the representative claim.
We will, therefore, treat claims 3-15, 17-21, 23-35, 37-41 and 43-50 as
standing or falling with representative claim 1.

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We accept Appellants’ grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
35 U.S.C. § 103(a): claims 1, 3-15, 17-21, 23-35, 37-41 and 43-50
Appellants assert their invention is not obvious over Horvitz and
Roskind because the Horvitz reference does not teach “selectively displaying
at least a part of the recipient’s context profile to a sender of the instant
message and receiving a sender’s selection of a context for the instant
message based on the displayed recipient’s context profile” (App. Br. 12-
18). Moreover, according to Appellants, since Horvitz does not allow a
sender to access the recipient’s context profile or to select the context of the
instant message, Horvitz cannot teach “comparing the context of the instant
message with the recipient’s context profile, in order to determine if the
instant message meets current context criteria set by the recipient context
profile” (App. Br. 13-14).
Appellants then contend that Roskind does not disclose “filtering the
instant message based on the context of the instant message, by comparing
the context of the instant message with the recipient’s context profile, in
order to determine if the instant message meets current context criteria set by
the recipient context profile” (App. Br. 14-15). Based on these contentions,
Appellants assert Horvitz and Roskind are not properly combined (App. Br.
13-15).

The Examiner relies on Horvitz, not Roskind, as teaching a
filtering/comparing step since the context information (bounded deferral
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policies) of the user could be used to determine when or where to notify the
user of a message (Ans. 10). The Examiner then relies on Roskind, not
Horvitz, as teaching the “selectively displaying” limitation. The Examiner
then finds both Horvitz and Roskind are directed to instant messaging (IM)
and incorporating the teaching of Roskind into the system of Horvitz would
improve the system by allowing the sender and recipient to interact while
extending the functionality of IM by passively personalizing the buddy list
of the sender and recipient (Ans. 5 and 11).

Issue: Has the Examiner erred in combining the references of Horvitz
and Roskind?

FINDINGS OF FACT (FF)
Horvitz
(1) Horvitz teaches a method and system for reducing disruption
costs associated with notifying a user of messages, automated assistance,
and/or alerts. A notification platform employs bounded-deferral policies.
Messages of varying degrees of assigned and/or context-driven priority are
sent to users with a deferral policy guided by the priority and determined
states of the users. Users can define available free states according to such
inputs as a calendar and time of day. The priority of the message can dictate
whether delivery of messages are delayed or immediately forwarded and
variations based on time, location, and such. (Abstract).
(2) A context monitor monitors states of a user or system that are
likely to be available. A bounding system classifies a notification and/or
message to the user in accordance with a predefined protocol and the likely
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available states. Based upon the likely available states and the classification,
users are notified immediately, or notification is deferred until later based on
criteria. (pg. 3, [0050]).
(3) Information from monitored context sources monitored within
a context monitor 40 enable notification decision making within the
notification agent 28 in accordance with the bounded deferral policies. The
context sources can include calendars, location information, time, acoustical
and keyboard activities, as well as a plurality of other context sources. (pg.
3, [0053]).
(4) “A notification system 10 includes notifications from one or
more sources 12-16 which can be labeled and/or assigned a value (or
substantially any range of urgency values) by an automated source, by the
author of a communication, and/or by a user-specified notification profile 20
(e.g., that examines attributes of a message and/or a message class).” A user
can interface with a notification preferences user interface 22 to adjust or
configure the notification profile 20 and configure an urgency or priority
value associated with the sources 12-16. (pg. 3, [0052]).

ANALYSIS
Appellants’ arguments focus on the individual differences between the
limitations of claim 1 and the Horvitz and Roskind references. It is
apparent, however, from the Examiner’s line of reasoning in the Final
Rejection, that the basis for the obviousness rejection is the combination of
Horvitz and Roskind. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
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references. In re Keller, 642 F. 2d 413, 425 (CCPA 1981); In re Merck &
Co., Inc., 800 F. 2d 1091, 1096 (Fed. Cir. 1986).
In other words, while Appellant contends that Horvitz lacks a
teaching, such feature is taught by Roskind for the reasons set forth by the
Examiner. Similarly, while Appellants contend that Roskind lacks a
teaching, this teaching is clearly provided by Horvitz.
As to Appellants’ arguments that Horvitz cannot teach filtering the
context of the instant message with a profile to determine if the instant
message meets criteria when Horvitz does not teach the “selectively
displaying….” and “receiving…” limitations, we disagree. We agree with
the Examiner that Horvitz teaches filtering the context of the instant message
with a profile to determine if the instant message meets criteria despite the
Examiner’s reliance on Roskind for teaching the “selectively displaying…”
and “receiving…” limitations (Ans. 11).
More specifically, we find Horvitz teaches monitoring messages such
as an IM, to minimize disruption to a user (FF 1). We further find Horvitz
teaches that a user defines a user-specified notification profile 20 and a
bounded deferral policy is used (FF 2, FF 3, and FF 4). The notification
agent receives notifications from a source and directs the notification to a
client in accordance with the bounded deferral policy (FF 3 and FF 4). Since
the IM is checked to determine if the message meets the bounded deferral
policies, we find Horvitz teaches the claimed filtering based on a context of
the instant message by comparing the context of the IM with the recipient’s
context profile to determine if the IM meets the current context criteria set
by the recipient context profile.
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Appellants additionally argue elements not recited in the claims (i.e.,
that the context of the instant message is selected by the sender) (App. Br.
13-14).
We do not find merit in Appellants’ arguments that one of ordinary
skill in the art at the time of the invention would not have been motivated to
combine the references because neither Roskind nor Horvitz provides a
teaching or suggestion to modify the other system. Our court in KSR “have
set forth an expansive and flexible approach” in determining whether a
patented invention was obvious at the time it was made. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 415, and not the “[r]igid preventative rules that
deny factfinders recourse to common sense”. Id. at 421. In particular, the
Court emphasized the role of “common sense” finding rigid preventative
rules “are neither necessary under our case law nor consistent with it.” Id.
See also Philip W. Wyers v Master Lock Company (Fed Cir, 2009-1412,
7/22/2010). Here the Examiner has articulated a reasoning for the
combination with a rational underpinning (Ans. 5 and 12). Appellants have
not provided us any persuasive arguments or evidence that shows error in
the Examiner’s reasoning. Moreover, Appellants have not presented us with
any arguments or evidence that the prior art does not disclose the elements
recited.
Therefore, Appellants have failed to persuade us of error in the
Examiner’s finding that the combination of Horvitz and Roskind teach or
suggest the invention as recited in claim 1 and the Examiner’s conclusion
that Horvitz and Roskind are properly combinable. Claims 3-15, 17-21, 23-
35, 37-41 and 43-50 fall therewith since they were not separately argued, but
instead argued on the basis of claim 1.
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DECISION
The Examiner’s rejection of claims 1, 3-15, 17-20, 23-35, 37-40, 43-
48 and 50 under 35 U.S.C. § 103(a) as being obvious over Horvitz and
Roskind is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

Vsh

SAMUEL A. KASSATLY LAW OFFICE
20690 VIEW OAKS WAY
SAN JOSE, CA 95120