Ex Parte Callanan et al

Patent Trial and Appeal Board

Sep 29, 2016

13425716 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/425,716 03/21/2012
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
10/03/2016
FIRST NAMED INVENTOR
Sean Callanan
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.
RSW920100037US2 5300
EXAMINER
FAN, HUA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN CALLANAN, RUTHIE D. LYLE, PATRICK
JOSEPH O'SULLIVAN, FRED RAGUILLAT, and
CAROL SUE ZIMMET
Appeal2015-005393 1
Application 13/425,7162
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
SCOTT B. HOWARD, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-8, 10-16, and 18-20. Claims 9 and 17 are indicated
as being objected to by the Examiner, but otherwise allowable. 3 Final
Act. 12. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 This Appeal is related to co-pending appl. ser. no. 12/857,705; Appeal No.
2015-004416, for which a Decision remains pending.
2 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 2.
3 It appears the Examiner may have overlooked outstanding OTDP
Rejection R2 of claims 9 and 17, addressed herein.
Appeal2015-005393
Application 13/425,716
STATEMENT OF THE CASE4
The Invention
Appellants' disclosed and claimed invention "relate to ascertaining an
online location of a person. More particularly, the present specification
relates to locating a person online using an internet service search engine."
Spec. ,-r 2.
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method of online location sharing through an
internet service search engine, the method comprising:
receiving in a server a query from a first user, said query
identifying a second user;
querying a plurality of internet services with said server
over a network for real-time information relevant to said
second user, the plurality of internet services comprising a
number of applications whose functionality is provided over an
internet; and
providing a consolidated view of responses received from
said plurality of internet services to said first user with said
server, said server being authorized by said second user to
receive all information relevant to said second user contained
in said responses;
in which said consolidated view of responses indicates an
online location of said second user as defined by access of a
4 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 7, 2014); Reply Brief ("Reply Br.," filed Apr. 13, 2015); Examiner's
Answer ("Ans.," mailed Feb. 26, 2015); Final Office Action ("Final Act.,"
mailed July 9, 2014); and the original Specification ("Spec.," filed
Mar. 21, 2012).
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Application 13/425,716
number of said plurality of internet services by said second
user, the online location comprising one of the plurality of
internet services most recently known to have been interacted
with by said second user.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Bushmitch et al. US 2007/0286181 Al Dec. 13, 2007
("Bushmitch")
Callanan et al. US Appl. Ser. No. Filed Aug. 17, 2010
("Callanan '705") 12/857,705
Shi et al. ("Shi") US 2011/0238840 Al Sept. 29, 2011
Appelman et al. US 8,132,110 Bl Mar. 6, 2012
("Appelman")
Maria Danninger et al., The Connector Service-Predicting
Availability in Mobile Contexts, MLMI 2006, LNCS 4299, pp.
129-141, 2006 (hereinafter "Danninger").
Dario Bottazzi et al., Context-Aware Middleware Solutions for
Anytime and Anywhere Emergency Assistance to Elderly People,
IEEE Communications Magazine, Apr. 2006, pp. 82-90
(hereinafter "Bottazzi").
Rejections on Appeal
RI. Claim 1 stands provisionally rejected over claim 23 of co-
pending application serial number 12/857,7055 under the judicially created
doctrine of obviousness-type double patenting (OTDP). Ans. 3--4.
5 See n. I, supra.
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Application 13/425,716
R2. Claims 2-18 stand provisionally rejected over claim 19 of co-
pending application serial number 12/857,705 under the judicially created
doctrine of OTDP. Ans.4.
R3. Claims 1, 6---8, and 10 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Appelman. Id.
R4. Claims 3-5 and 11 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Appelman and Danninger. Ans. 7.
R5. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Appelman in view of the Examiner's taking
of Official Notice. Ans. 8.
R6. Claims 2, 8, 13, 15, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Appelman and
Bushmitch. Ans. 9.
R7. Claims 14 and 20 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Appelman, Bushmitch, and
Danninger. Ans. 10.
R8. Claim 12 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Appelman and Bottazzi. Id.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
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We agree with particular arguments advanced by Appellants with
respect to claim 1 for the specific reasons discussed below. We highlight
and address specific findings and arguments regarding claims 1 and 13 for
emphasis as follows.
1. § 102 Rejection R3 of Claims 1 and 6-8
Issue 1
Appellants argue (App. Br. 12-16; Reply Br. 6-10) the Examiner's
Rejection R3 of claims 1, 6-8, and 10 under 35 U.S.C. § 102(e) as being
anticipated by Appelman is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art discloses a "method
of online location sharing through an internet service search engine" that
includes, inter alia, the limitation of "querying a plurality of internet
services with said server over a network for real-time information relevant to
said second user," wherein" said server [is] authorized by said second user
to receive all information relevant to said second user contained in said
responses," as recited in claim 1?
Analysis
Appellants contend, "Appelman fails to teach or suggest, 'querying a
plurality of internet services with said server over a network for real-time
information relevant to said second user.'" App. Br. 12. In support of this
contention, Appellants point out "Appelman merely teaches identifying
whom, within the same instant messaging system, currently has an 'active
account' such as 'e.g., online, offline, away, busy, or not IM capable.'" Id.
(citing Appelman col. 10, 1. 62 through col. 11, 1. 19).
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We agree with Appellants that Appelmanfails to disclose "a plurality
of internet services," or the querying thereof. Id. at 13. We find the
contested step or act of" querying a plurality of internet services with said
server ... the plurality of internet services comprising a number of
applications whose functionality is provided over an internet" is not
expressly or inherently described, under § 102, by the single instant
messaging (IM) system of Appelman (col. 10, last paragraph, col. 11, first
paragraph), as found by the Examiner. (Final Act. 6). 6, 7
6 Our reviewing court guides, under § 102, the prior art reference "must not
only disclose all elements of the claim within the four comers of the
document, but must also disclose those elements arranged as in the claim."
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(citation and internal quotation marks omitted). "Thus, it is not enough that
the prior art reference discloses part of the claimed invention, which an
ordinary artisan might supplement to make the whole, or that it includes
multiple, distinct teachings that the artisan might somehoi,v combine to
achieve the claimed invention." Id. at 1371. (Emphasis added).
7 However, our reviewing court also guides that, under § 103: "Combining
two embodiments disclosed adjacent to each other in a prior art patent does
not require a leap of inventiveness." Boston Scientific Scimed, Inc. v. Cordis
Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Because a rejection under§ 103
is not before us on appeal, we do not reach and express no opinion as to
whether claim 1 might be obvious over additional teachings and suggestions
of the Appelman reference, considered alone, or considered in combination
with one or more additional references. (See e.g., Appelman, col. 3,
11. 50-55: "Although online presence is discussed below primarily with
respect to IM applications, other implementations are contemplated for
providing similar online presence functionality in platforms and online
applications such as chat applications or e-mail applications."). In the event
of further prosecution of this application, we leave such consideration to the
Examiner. Although the Board is authorized to reject claims under 37
C.F .R. § 41.50(b ), no inference should be drawn when the Board elects not
to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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Therefore, based upon the findings above, on this record, and for
essentially the same reasons argued by Appellants, we are persuaded of at
least one error in the Examiner's reliance on the disclosure of the cited prior
art to disclose the disputed limitation of claim 1, such that we find error in
the Examiner's resulting finding of anticipation. Therefore, we do not
sustain the Examiner's anticipation rejection of independent claim 1, and
variously rejected dependent claims 2-12 and 19 which depend therefrom.
2. § 103 Rejection R6 of Claims 13, 15, 16, and 18
Issue 2
Appellants argue (App. Br. 21-22; Reply Br. 13-14) the Examiner's
rejection of independent claim 13 under 35 U.S.C. § 103(a) as being obvious
over the combination of Appelman and Bushmitch is in error. These
contentions present us with the same issue presented with respect to Issue 1,
claim 1, supra.
Analysis
For the same reasons discussed above with respect to claim 1, i.e.,
Appelman does not teach or suggest "querying a plurality of internet
services with said server," we also find the Examiner erred in the
obviousness rejection of claim 13.
Therefore, based upon the findings above, on this record, and for
essentially the same reasons argued by Appellants, we are persuaded of at
least one error in the Examiner's reliance on the teachings and suggestions of
the cited prior art combination to teach or suggest the disputed limitations of
claim 13, such that we find error in the Examiner's resulting legal conclusion
of obviousness. Therefore, we do not sustain the Examiner's obviousness
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Application I3/425,7 I6
rejection of independent claim I3, and dependent claims I5, I6, and I8,
rejected on the same basis, and depending therefrom. We also cannot
sustain the obviousness rejection of claims I 4 and 20, which also depend
from claim I 3.
3. § I03 Rejections R4, R5, R7, and R8 of Claims 3-5, I I, I2, I4, 20
In light of our reversal of the rejections of independent claims I
and I3, supra, we also reverse obviousness Rejections R4, R5, R7, and R8
under§ I03 of claims 3-5, I I, I2, I4, and 20, which variously and
ultimately depend from claims I and I 3. On this record, the Examiner has
not shown how the additionally cited secondary references overcome the
aforementioned deficiencies with Appleman, as discussed above regarding
claim I.
4. OTDP Rejections RI and R2 of Claims I-I8
When all other rejections on appeal have been reversed, and the only
remaining rejections are provisional non-statutory OTDP rejections, it is
premature to address the provisional rejections. Ex Parte Moncla, 95
USPQ2d I 884, I 885 (BP AI 20 I 0) (precedential).
Here, the various art rejections of claims I-8, IO-I6, and I8-20,
under 35 U.S.C. §§ I02(e) and I03(a) have been reversed. The only
remaining rejections are the provisional non-statutory OTDP Rejections RI
and R2 of claims I-I8.
Therefore, we conclude that we need not reach the provisional OTDP
rejections of claims I-I8 to decide this appeal, following the precedential
guidance of Moncla, 95 USPQ2d at I885.
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CONCLUSIONS
(1) The Examiner erred with respect to anticipation Rejection R3 of
claims 1and6-8 under 35 U.S.C. § 102(e) over the cited prior art of record,
and we do not sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejections R4
through R8 of claims 2-5, 8, 11-16, and 18-20 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we do not sustain the
rejections.
(3) Because all other rejections on appeal have been reversed, we
find it premature to address the provisional OTDP Rejections RI and R2 of
claims 1-18.
DECISION
We reverse the Examiner's decision rejecting claims 1-8, 10-16,
and 18-20.
We do not reach the Examiner's provisional rejection of claims 1-18
on the ground of nonstatutory obviousness-type double-patenting.
REVERSED
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