Ex Parte Brownholtz et al

Patent Trial and Appeal Board

Dec 13, 2012

10894526 (P.T.A.B. Dec. 13, 2012)

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.
10/894,526 07/19/2004 Elizabeth Brownholtz LOT920040030 (048) 5435
46321 7590 12/13/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
WHIPPLE, BRIAN P
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
12/13/2012 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 ELIZABETH BROWNHOLTZ, WERNER GEYER,
SANDRA KOGAN, MICHAEL MULLER and ERIC WILCOX
____________

Appeal 2013-001306
Application 10/894,526
Technology Center 2400
____________

Before ERIC S. FRAHM, KRISTEN L. DROESCH and
ERIC B. CHEN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2013-001306
Application 10/894,526

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STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 5, 6 and 8-11.
1
We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
BACKGROUND
Appellants’ invention relates to persistent human-to-human
conversational tools such as instant messaging, application sharing and chat
rooms. Spec. ¶¶ 0001, 0004-0006.
Independent claim 5 is illustrative and is reproduced below (disputed
limitations in italics):
5. A method for processing external events in a persistent
human-to-human conversational space, the method comprising
the steps of:
persisting a human-to-human conversational space;
posting turns in said persistent human-to-human
conversational space;
receiving notifications of external events;
responsive to receiving said notifications, converting said
notifications into said information; and,
further posting the information in said persistent human-
to-human conversational space.

Rejection
Claims 5, 6 and 8-11 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Hendriks (2003/0163525 A1).

1
Claims 1-4, 7 and 12-18 have been cancelled.

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Application 10/894,526

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ISSUE
Did the Examiner err in finding that Hendriks describes the disputed
limitations of claim 5?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and arguments in the Reply Brief presented in response to the
Answer. We disagree with Appellants’ conclusions. We highlight and
address specific findings and arguments for emphasis as follows.
The Examiner finds, referring to Figures 5B and 5C below, that
Hendriks’ annotation hyperlink 51B corresponds to the claimed notification
of an external event and the picture of a house 54c and stroke annotation
data 53c corresponds to the claimed information. Ans. 5-6.
Hendriks’ Figures 5B and 5C are reproduced below:

Figures 5B and 5C depict instant messaging system screen displays.
More specifically, the Examiner finds that an annotation hyperlink
51b is created which is a notification or alert of the external event of Bob

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entering annotation stroke data. Ans. 5, citing ¶ 49, ll. 12-18. The Examiner
further finds that a user would select the annotation link 51b and it is converted
into the data shown in Fig 5C as 53c and 54c. Id. Last, the Examiner finds that
the data 53c and 54c shown in Fig. 5C is posted to the conversational space
between Bob and Karen. Ans. 6, citing ¶ 49, ll. 12-18.
Appellants argue that there is no indication that Hendrik’s annotation
link itself is a notification. App. Br. 5; Reply Br. 2-4. Appellants further
argue that the Examiner fails to show with any evidence that a hyperlink is
known to a person with ordinary skill in the art as a notification. Reply Br.
4-5.
We are unpersuaded by Appellants’ arguments and agree with the
Examiner that the annotation hyperlink 51B which serves as an alert to the
annotation is also a notification. Hendriks depicts an annotation hyperlink
51B in Figure 5B and describes “[t]he corresponding view that a user would
see as an alert to the annotation is shown in Fig. 5B.” ¶ 49, ll. 14-16. The
Examiner’s finding that a notification includes Hendrik’s annotation
hyperlink 51B complies with the broadest reasonable interpretation applied
to claim terms during prosecution. Appellants do not direct us to objective
evidence to demonstrate that the ordinary meaning of “notification”, as
understood by one with ordinary skill in the art, would exclude a hyperlink.
Appellants also argue that the Examiner subjectively and without
evidence reasons that the link can be “clicked on” to retrieve more
information. Reply Br. 4. Appellants’ arguments are unpersuasive since
Hendriks depicts in Fig. 5C “[t]he view that a user would see after selecting
the annotation hyperlink.” ¶ 49, ll. 16-17. Hendriks further depicts in Fig 5C a
picture of a house 54C and stroke annotation data 53c encircling the picture of

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the house, which is the data or information that a user would see after selecting
(i.e., after clicking on) the annotation hyperlink 51B.
For all these reasons, we sustain the Examiner’s rejection of claims 5,
6 and 8-11 as anticipated by Hendriks.
DECISION
We AFFIRM the rejection of claims 5, 6 and 8-11 under 35 U.S.C.
§ 102(e) as anticipated by Hendriks.
TIME PERIOD
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).
AFFIRMED

ELD