Ex Parte Callanan et al

Patent Trial and Appeal Board

Jun 18, 2013

11832429 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SEAN CALLANAN, AL CHAKRA, SONYA PURCELL, and
HUGH SMYTH
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Appeal 2011-001234
Application 11/832,429
Technology Center 2400
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Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 11-20 and 22-31 (App. Br. 4). Claims 1-10 and 21 were cancelled
(id.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 11 follows:
11. A system, comprising:

an organizational hierarchy; and

a chat client comprising at least one chat alert profile, wherein
each chat alert profile specifies an alert action to be implemented in
conjunction with delivery of a chat request and a corresponding
hierarchical level of the organizational hierarchy, wherein the chat
client receives the chat request from a requester for a receiver, obtains
a requestor's level in the organizational hierarchy, determines if the
hierarchical level specified in any chat alert profile matches the
requestor's level, and issues an alert to the receiver according to the
alert action specified in the matching chat alert profile in response to a
determination that the hierarchical level specified in the chat alert
profile matches the requestor's level.

The Rejections
Claims 11, 12, 14, 15, 20, 22, 23, and 25-27 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Kirkland (U.S. Pat. Pub. No.
2005/0149622) in view of Cheung (U.S. Pat. Pub. No. 2006/0259565 A1)
(Ans. 4-8).
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Claims 13 and 24 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Kirkland in view of Cheung and McMahan (U.S. Pat. Pub.
No. 2006/0036688 A1) (Ans. 9).
Claims 16, 17, 19, 28, 29, and 31 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Kirkland in view of Cheung and Horvitz
(U.S. Pat. Pub. No. 2004/0254998 A1) (Ans. 9-12).
Claims 18 and 30 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Kirkland in view of Cheung, Horvitz, and Werndorfer
(U.S. Pat. Pub. No. 2004/0017396 A1) (Ans. 12-13).

FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
(Ans. 3, et seq.).

ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Would Kirkland have taught away from Cheung’s technique of
blocking messages based on a sender’s identity and would Cheung have
rendered Kirkland’s system unsatisfactory for its intended purpose?

ANALYSIS
Appellants contend that the Examiner erred in rejecting claims 11, 12,
14, 15, 20, 22, 23, and 25-27 as obvious over the combination of Kirkland
and Cheung because the Examiner’s “articulated reasoning lacks a rational
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underpinning because Kirkland explicitly teaches away from the type of
implementation taught in Cheung” (App. Br. 10). Appellants also contend
that “the proposed combination of Kirkland and Cheung is improper and
lacks a rational underpinning because the proposed combination would
render the system of Kirkland unsatisfactory for its intended purpose” (id. at
18). In support of their contentions, Appellants argue that Kirkland
“discourages blocking messages based on a particular sender” (id. at 11).
The Examiner concluded, however, that “it would have been obvious
to one of ordinary skill in the art at the time of the invention, to modify the
system of Kirkland to include the use of alert profile settings from Cheung,
the motivation be for better system efficiency” (Ans. 5). We agree with the
Examiner’s conclusions and underlying findings of fact.
We note that the Examiner did not suggest that Cheung’s teaching of
blocking messages based on a sender’s identity should be bodily
incorporated into Kirkland’s structure (see Ans. 5). Rather, the Examiner
reasoned that one of ordinary skill in the art, upon reading Cheung, would
have been motivated to include alert profile settings in Kirkland’s system to
improve its efficiency (id.).
We find no error in the Examiner’s conclusion that including alert
profile settings as taught by Cheung would not render Kirkland’s system
unsatisfactory for its intended purpose and that Kirkland does not teach
away for alert profile settings (see id.). Accordingly, we find no error in the
Examiner’s obviousness rejection of claims 11, 12, 14, 15, 20, 22, 23, and
25-27.
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We also find that Appellants did not show error in the Examiner’s
obviousness rejection of the remaining claims on appeal (i.e., claims 13, 16-
19, 24, and 28-31) because Appellants did not set forth any separate or
different patentability arguments for those claims (see App. Br. 14-15).

DECISION
We affirm the Examiner’s decision rejecting claims 11-20 and 22-31
as being unpatentable under 35 U.S.C. § 103(a).
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

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