Ex Parte Braam et al

Patent Trials and Appeals Board

Jan 23, 2019

14862521 - (D) (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/862,521 09/23/2015 Carl A. Braam
112978 7590 01/25/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920070127US2_8150-0572 6752
EXAMINER
NGUYEN, THAI
ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
01/25/2019 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL A. BRAAM and DAVID M. OGLE
Appeal2017-010073 1
Application 14/862,521 2
Technology Center 2400
Before MICHAEL W. KIM, NINA L. MEDLOCK, and
SCOTT C. MOORE, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 21--40. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
March 17, 2017) and Reply Brief ("Reply Br.," filed July 24, 2017), and the
Examiner's Answer ("Ans.," mailed May 26, 2017) and Final Office Action
("Final Act.," mailed October 17, 2016).
2 Appellants identify IBM Corporation as the real party in interest. App.
Br. 1.
Appeal2017-010073
Application 14/862,521
CLAIMED INVENTION
Appellants' claimed invention "relate[s] to instant messaging systems
and, more particularly, to monitoring the usage of instant messaging
applications" (Spec. ,r 1 ).
Claims 21, 28, and 35, reproduced below, are the independent claims
on appeal, and representative of the claimed subject matter:
21. A computer-implemented method, comprising:
selecting a participant in an instant messaging sess10n
between a plurality of participants;
weighting an identified attribute of the instant messaging
sess10n;
weighting an identified attribute of the selected
participant; and
determining, based upon the weighted attributes of the
instant messaging session and the selected participant, an instant
messaging usage metric for the selected participant.
28. A computer hardware system, comprising:
at least one hardware processor configured to initiate the
following executable operations:
selecting a participant in an instant messaging
session between a plurality of participants;
weighting an identified attribute of the instant
. .
messagmg sess10n;
weighting an identified attribute of the selected
participant; and
determining, based upon the weighted attributes of
the instant messaging session and the selected participant,
an instant messaging usage metric for the selected
participant.
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Application 14/862,521
35. A computer program product, comprising:
a computer storage device having stored therein computer
usable program code, the computer usable program code, which
when executed by a computer hardware system, causes the
computer hardware system to perform:
selecting a participant in an instant messaging
session between a plurality of participants;
weighting an identified attribute of the instant
. .
messagmg sess10n;
weighting an identified attribute of the selected
participant; and
determining, based upon the weighted attributes of
the instant messaging session and the selected participant,
an instant messaging usage metric for the selected
participant.
REJECTI0NS 3
Claim 28 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellants regard as the invention.
Claims 21, 28, and 35 are rejected under 35 U.S.C. § 112, second
paragraph, as incomplete for omitting essential steps.
Claims 21-25, 27-32, and 34--39 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Morris et al (US 2002/0046243 Al, pub.
Apr. 18, 2002) ("Morris") and Kirkland et al. (US 2005/0149622 Al,
pub. July 7, 2005) ("Kirkland").
3 The Final Office Action includes a provisional rejection of claims 21--40
on the ground of non-statutory obviousness-type double patenting as
unpatentable over claims 1, 2, 6-9 of U.S. Patent No. 9,177,295 in view of
Morris and Kirkland (Final Act. 7-8), and indicates that a timely filed
terminal disclaimer may be used to overcome the provisional rejection (id.
at 7). Appellants filed a Terminal Disclaimer on March 24, 2017. We
understand that this rejection is not the subject of the present appeal.
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Application 14/862,521
Claims 26, 33, and 40 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Morris, Kirkland, and Williams (US 2004/0228277 Al,
pub. Nov. 18, 2004).
ANALYSIS
Section 112, Second Paragraph
Independent Claim 28
In rejecting claim 28 under 35 U.S.C. § 112, second paragraph, the
Examiner takes the position that claim 28 is indefinite because (1) the claim
comprises only one element, i.e., a processor, and, therefore, "lacks
sufficient structures to perform the plurality of functions"; and (2) "one
element claim cannot rely on 112 6th paragraph or 112(±) to incorporate the
structure from the specification"; therefore, "the BRI of this claim element
extends to all ways of processing, those known and unknown to the inventor,
and amounts to pure functional claiming without boundaries" (Final Act. 3-
4 ).
The difficulty with the Examiner's analysis is that the Examiner
seemingly confuses the indefiniteness requirement of 35 U.S.C. § 112,
second paragraph, with the enablement requirement of§ 112, first
paragraph, which is a separate requirement. Therefore, we do not sustain the
Examiner's rejection of claim 28 under 35 U.S.C. § 112, second paragraph. 4
4 In the event of further prosecution, the Examiner may wish to consider
whether it is appropriate to enter a rejection of claim 28 under 35 U.S.C.
§ 112, first paragraph, as a single means claim, which is non-enabling for the
scope of the claim. See Manual of Patent Examining Procedure ("MPEP")
§ 2164.08(a). See also In re Hyatt, 708 F.2d 712, 714-15 (Fed. Cir. 1983)
(A single means claim which covered every conceivable means for
achieving the stated purpose was held non-enabling for the scope of the
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Application 14/862,521
Independent Claims 21, 28, and 35
In rejecting claims 21, 28, and 35 under 35 U.S.C. § 112, second
paragraph, as indefinite, the Examiner takes the position that the claims are
incomplete (Final Act. 6). More particularly, the Examiner asserts that the
claims omit certain essential steps, namely, "determining/identifying a
weighting for each participant in the instant messaging session relative to the
selected participant's position"; "determining/identifying a relative position
of each participant in the context of the IM session"; and "determining the
usage metric based on the weighting of each participant" (Final Act. 6
(citing Manual of Patent Examining Procedure ("MPEP") § 2172.01))-
steps that the Examiner maintains are needed because "the IM usage metric
[cannot] be adequately determined without knowing who each of the
participants in the IM session is and their relative position" (id.).
MPEP § 2172.01 states that "essential matter may include missing
elements ... described by applicant(s) as necessary to practice the invention
... [ and] a claim which fails to interrelate essential elements of the invention
as defined by applicant(s) in the specification may be rejected" under
35 U.S.C. § 112, second paragraph, as indefinite. Id. (emphasis added).
MPEP § 2172.01 also references MPEP § 2164.08(c), which states that
"[b ]road language in the disclosure, including the abstract, omitting an
allegedly critical feature, tends to rebut the argument of criticality."
The Examiner points to paragraphs 3 6 and 40 of Appellants'
Specification as indicating the essential features (Ans. 12). Yet, we find no
clear disclosure in those paragraphs that describes or defines the "omitted"
claim because the specification disclosed at most only those means known to
the inventor).
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Application 14/862,521
steps as essential to the claimed invention. It also is significant here that
paragraph 5 of the Specification, as well as the Abstract, includes broad
language that omits the allegedly critical steps. See MPEP § 2164.08( c)
("Broad language in the disclosure, including the abstract, omitting an
allegedly critical feature, tends to rebut the argument of criticality.").
We are persuaded that the Examiner erred in rejecting claims 21, 28,
and 35 under 35 U.S.C. § 112, second paragraph. Therefore, we do not
sustain the Examiner's rejection.
Obviousness
Independent Claim 21 and Dependent Claims 22-25, and 27
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 21 under 35 U.S.C. § 103(a) because Kirkland,
on which the Examiner relies, does not disclose or suggest "weighting an
identified attribute of the instant messaging session," as recited in claim 21
(App. Br. 14--17).
Kirkland is directed to a method, apparatus, and computer instructions
for filtering and prioritizing instant messaging threaded conversations in an
instant messaging system based on thread content, and discloses that the
instant messaging client analyzes an incoming message to determine the
thread subject (Kirkland Abstract). Based on the thread subject analysis, the
client determines the priority level associated with the incoming message;
the message is then delivered and displayed to the recipient according to the
priority level (id.). Kirkland discloses, in paragraphs 49-53 cited by the
Examiner, that the priority level may be manually set by the message sender
or recipient (id. ,r 49). For example, Kirkland describes that a typical user
currently working on business project, who also is expecting a message (i.e.,
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Application 14/862,521
a draft patent application) from the legal department, may configure his IM
client to unconditionally accept messages regarding the project (priority 1 ),
accept messages from the legal department but place them in a secondary
window (priority 2), and queue personal messages (priority 3) for later
delivery (id. ,r,r 50-52). The system, thus, filters the threaded conversations,
and displays them to the user according to content priority (id. ,r 53).
The Examiner takes the position that the priority scheme disclosed in
Kirkland, including the ability to change a priority level based on the relative
importance of a sender or message, amounts to "weighting" an attribute, as
called for in claim 21, notwithstanding that Kirkland does not use that term
explicitly (see Final Act. 3--4; see also Ans. 13-16). We, however, agree
with Appellants that setting a priority level is not the same as weighting an
attribute, which is generally understood to involve emphasizing the
contribution of some aspects of a phenomenon (or of a set of data) to a final
effect or result, by giving those aspects more weight in the analysis (App.
Br. 15-16). Kirkland plainly discloses changing a priority level. But,
Kirkland does not disclose or suggesting "weighting" the priority level, as
that term is generally understood.
For example, in the hypothetical equation X = (A *Y) + (B*Z),
Y and Z represent the underlying attributes and A and B
represent the weighting. If A= 1.0 and B = 1.1, then attribute Z
is being weighted more heavily in the analysis. Kirkland,
however, merely describes changing Z, the underlying attribute
- not weighting the attribute, as claimed.
Id. at 16.
Moreover, even accepting the Examiner's position that the priority
scheme, as disclosed in Kirkland, amounts to "weighting an attribute of the
instant messaging session," as called for in claim 21, we fail to see, and the
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Examiner does not adequately explain, why a person of ordinary skill in the
art would have had an apparent reason to modify the Morris system to
incorporate the Kirkland priority scheme, i.e., to determine an instant
messaging usage metric for a selected participant, as disclosed in Morris,
based on the combination of the weighted attributes of the instant messaging
session and the selected participant, as called for in claim 21. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (holding that a prima facie
case of obviousness requires showing that one of ordinary skill in the art
would have had both an apparent reason to modify the prior art and
predictability or a reasonable expectation of success in doing so).
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 21 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the rejection of dependent claims 22-25 and 27. Cf In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if
the independent claims from which they depend are nonobvious").
Independent Claims 28 and 35 and Dependent Claims 29-32, 34, and 36-39
Independent claims 28 and 35 include language substantially similar
to the language of claim 21, and stand rejected based on the same rationale
applied with respect to claim 21 (Final Act. 10-11 ). Therefore, we do not
sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent
claims 28 and 35, and claims 29-32, 34, and 36-39, which depend
therefrom, for the same reasons set forth with respect to claim 21.
Dependent Claims 26, 33, and 40
Claims 26, 33, and 40 depend from independent claims 21, 28, and
35, respectively. The Examiner's rejection of these dependent claims based
on Williams, in combination with Morris and Kirkland, does not cure the
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deficiency in the Examiner's rejection of independent claims 21, 28, and 35.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of dependent claims 26, 33, and 40 for the same reasons set forth
above with respect to the independent claims.
DECISION
The Examiner's rejections of claims 21, 28, and 35 under 35 U.S.C.
§ 112, second paragraph, are reversed.
The Examiner's rejections of claims 21--40 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
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