Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardMay 23, 201613188521 (P.T.A.B. May. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/188,521 07/22/2011 89133 7590 05/25/2016 RIDOUT & MAYBEE LLP 250 UNIVERSITY A VENUE 5THFLOOR TORONTO, ON MSH 3E5 CANADA FIRST NAMED INVENTOR Henry Yao-Tsu CHEN 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. 42783-4373 8363 EXAMINER JOSHI, SURAJ M ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): ipinfo@ridoutmaybee.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRY YAO-TSU CHEN and THOMAS JAN STOVICEK1 Appeal2014-007018 Application 13/188,521 Technology Center 2400 Before CARLA M. KRIVAK, BRUCE R. WINSOR, and AMBER L. HAGY, Administrative Patent Judges. HAGY, 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 1---6, 8-13, 16-19, 21, 22, and 24-30, which are all pending claims.2 We have jurisdiction over these claims under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify Research in Motion Limited as the real party in interest. (App. Br. 3.) 2 Claims 7, 14, 15, 20, and 23 were canceled in an amendment dated Apr. 25, 2013. Appeal2014-007018 Application 13/188,521 Introduction According to Appellants, the invention "relates generally to systems and methods relating to messaging services, and more particularly to systems and methods of posting messages to different messaging services." (Spec. ii 2.) Exemplary Claim Claim 1, reproduced below with the disputed limitations italicized, is exemplary of the claimed subject matter: 1. A method of providing message content data pertaining to a pre-existing message thread to a plurality of electronic messaging services, the method comprising: identifYing, from information associated with the pre- existing message thread, at least one messaging service associated with the pre-existing message thread; identifYing, from received instructions to post new message content. at least one additional electronic messaging service not associated with the pre-existing message thread; generating, for each of the identified electronic messaging services, a corresponding instruction data set, each instruction data set executable by at least one processor associated with the corresponding electronic messaging service to cause the new message content to be posted on the corresponding electronic messaging service; and providing a generated instruction data set to at least one processor associated with each of the identified electronic . . messagmg services. Appeal2014-007018 Application 13/188,521 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Jania et al. ("Jania") Stein Lew et al. ("Lew") US 7,509,382 Bl US 2011/0055332 Al US 2011/0238766 Al REJECTIONS Mar. 24, 2009 Mar. 3, 2011 Sept. 29, 2011 Claims 1---6, 8, 12-13, 16-19, 21, 22, and 24 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Jania. (Final Act. 3-9.) Claims 9-11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jania and Stein. (Final Act. 9-11.) Claims 25-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jania and Lew. (Final Act. 11-14.) ISSUES 1. Whether the Examiner erred in finding Jania teaches "identifying, from information associated with the pre-existing message thread, at least one messaging service associated with the pre-existing message thread; [and] identifying, from received instructions to post new message content, at least one additional electronic messaging service not associated with the pre-existing message thread," as recited in independent claim 1. 2. Whether the Examiner erred in finding the cited teachings of Lew are prior art as against claims 25-30. Appeal2014-007018 Application 13/188,521 ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments the Examiner has erred. We disagree with Appellants' conclusions and we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 3- 14) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief. (Ans. 2-15.) We concur with the conclusions reached by the Examiner, and we highlight the following for emphasis. 3 A. Claims 1-6, 8-13, 16--19, 21, 22, and 24: The Examiner Did Not Err in Finding Jania Teaches All Limitations of Claim 1 Appellants argue the Examiner erred in finding Jania teaches the limitation "identifying ... at least one messaging service associated with the pre-existing message thread," because "nothing in Jania teaches any active step of such an identification .... In other words, the email server in Jania does not and is not required to identifY itself as a messaging service associated with the email message." (App. Br. 12 (emphases added).) Appellants' argument is unpersuasive of error, first, because it is not commensurate with the scope of the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). Appellants have not, and cannot, point to any limitation in claim 1 that requires a messaging service to "identify itself' with a message thread. 3 Only those arguments made by Appellants have been considered in this decision. Arguments Appellants did not make in the briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). Appeal2014-007018 Application 13/188,521 Appellants' argument is also unpersuasive because, as the Examiner correctly finds, Jania does teach "identifying at least one messaging service"-an email server system-associated with the pre-existing email thread: Jania teaches a system where a user can designate a composed message for deflection, regardless of this decision, the client application will send out the message (which could be a reply to an existing message, thus part of a pre-existing thread) for delivery through email server system 102. In order to send this message out, the system must identify the email server system 102 associated with the thread. (Ans. 14 (citing Jania 9:54--10:8) (emphasis added).) We agree the Examiner's findings are supported by the cited disclosure and are reasonably construed within the scope of claim 1. To the extent Appellants suggest email is not a "messaging service," such argument is inconsistent with Appellants' Specification, which describes "email" as one of several examples of "messaging services" that may be used to engage in "conversations," or "message 'threads,"' between communication devices. (Spec. iT 99.) Appellants further argue the Examiner's findings depend on an "inconsistent interpretation" of claim 1 because, according to Appellants, the Examiner associates the "forum service" as both "associated with the pre- existing thread" and "not associated with the pre-existing thread." (App. Br. 13.) We disagree with Appellants' characterization of the Examiner's findings. As stated in the Final Action, the Examiner finds Jania's "e-mail messaging service used in existing email thread is a messaging service already associated with the preexisting thread," and further finds Jania's "selected forum messaging service is an electronic messaging service not yet Appeal2014-007018 Application 13/188,521 associated with the pre-existing message thread." (Final Act. 3--4 (citing Jania 9:54--10:30) (emphases added); see also Ans. 13-14.) We agree the Examiner's findings are supported by the cited disclosure. For the foregoing reasons, we are not persuaded of error in the Examiner's 35 U.S.C. § 102(b) rejection of claim 1 as anticipated by Jania. We, therefore, sustain this rejection, as well as the rejection of claims 2---6, 8-13, 16-19, 21, 22, and 24, which are not argued separately from claim 1. 4 (App. Br. 11-14.) B. Claims 25-30: The Examiner Did Not Err in Finding the Cited Teachings of Lew Are Prior Art With regard to dependent claims 25-30, which stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Jania and Lew, Appellants argue the Examiner erred in applying Lew as prior art. (App. Br. 15-16.) In particular, Appellants argue Lew is not prior art because it was filed on May 19, 2011, which is after the priority date for Appellants' application (July 23, 2010). (App. Br. 15.) The Examiner points out, however, Lew claims priority to a provisional application filed May 19, 2010, which pre-dates Appellants' claimed priority date. (Ans. 15.) The Examiner also finds the subject matter taught in the cited sections of the Lew 2011 application is also taught in the Lew 2010 provisional application: The cited sections of Lew deal with a web client application which provides a user a single integrated interface where the user 4 Although dependent claims 9-11 stand rejected under 35 U.S.C. § 103(a), instead of under § 102(b ), Appellants do not present separate substantive arguments for claims 9-11, but instead reference the arguments presented for independent claim 1. (App. Br. 14.) Appeal2014-007018 Application 13/188,521 can send "SMS/MMS/EMS messages, tweets (integrated with Twitter), chat (for which the system supports MSN or AIM or Yahoo or GoogleTalk or Facebook or other similar IM service as the chat client), or status, for example Facebook Status" [Lew i-f 40] .... Furthermore, provision[al] application 61/346,133, which Lew claims priority from, states on page 6 of its specification, "wherein the subscriber can view or SMS/MMS/EMS messages, tweets (integrated with Twitter), chat (for which the system supports MSN or AIM or Yahoo or GoogleTalk or Facebook or other similar IM service as the chat client), or Statuses on Facebook." Therefore, it is clear that excerpts cited by Lew are prior art, and [Appellants'] arguments are not persuasive. (Ans. 15.) Appellants do not offer any rebuttal to these findings. Appellants also do not make any substantive argument against the Examiner's findings regarding the combined teachings of Jania and Lew. (Final Act. 11-14.) For the foregoing reasons, we are not persuaded of error in the Examiner's 35 U.S.C. § 103(a) rejection of claims 25-30 and we, therefore, sustain this rejection. DECISION For the above reasons, the Examiner's rejections of claims 1---6, 8-13, 16---19, 21, 22, and 24--30 are 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)(l )(iv). AFFIRMED Copy with citationCopy as parenthetical citation