Ex Parte Cruz et al

Patent Trial and Appeal Board

Sep 27, 2016

11964653 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111964,653 12/26/2007 Christina M. Cruz
52021 7590 09/29/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 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.
CAM920070126US1_8150-0051 2183
EXAMINER
CHOU,ALANS
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CHRISTINAM. CRUZ, CHARLES B. PRICE, and VAN STAUB
Appeal2013-006068
Application 11/964,653
Technology Center 2400
Before JOHN A. EVANS, JOHN D. HAMANN, and ALEX S. YAP,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's
Non-Final Rejection of Claims 1, 4, 6-15, and 18-25. App. Br. 6. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.2
1 The Appeal Brief identifies International Business Machines Corporation,
as the real party in interest. App. Br. 4.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed September 10, 2012, "App. Br."), the
Examiner's Answer (mailed February 7, 2013, "Ans."), the Final Office
Action (mailed April 9, 2012, "Non-Final Act."), the Reply Brief (mailed
Apr. 3 2013, "Reply Br.") and the Specification (filed December 26, 2007,
"Spec.") for their respective details.
Appeal2013-006068
Application 11/964,653
STATEMENT OF THE CASE
The claims relate to a computer-implemented method of instant
messaging. See Abstract. Claims 1, 13, and 15 are independent. Claims 2,
3, 5, 16, and 17 are cancelled. See Claims Appendix. An understanding of
the invention can be derived from a reading of exemplary Claim 1, which is
reproduced below with some formatting added:
1. A computer-implemented method of roaming instant
messaging comprising: identifying a first instant messaging
session between a first participant and a second participant;
determining, via a processor, that the first participant is not
proximate to a home instant messaging client associated with
the first participant;
outputting a notification that the first participant is no longer
proximate to the home instant messaging client;
determining, via the processor, that the first participant is
proximate to a guest instant messaging client associated with
another instant messaging user when the first participant is
\~1ithin a region surrounding the guest instant messaging client
for a minimum amount of time;
outputting a notification that the first participant is proximate to
the guest instant messaging client;
receiving a request from the second participant to establish an
instant messaging session with the guest instant messaging
client;
indicating that the requested IM session is for the first
participant; and
establishing a second instant messaging session between an
instant messaging client of the second participant and the guest
instant messaging client.
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Appeal2013-006068
Application 11/964,653
References and Rejections
The Examiner relies upon the prior art as follows:
Zhang, et al.
Keith et al.
Rosener
Kamdar et al.
Gad wale
US 2008/0217551 Al
US 2008/0091692 A 1
US 2008/0299948 Al
US 2009/0066510 Al
US 2007 /0260730 Al
Filed Mar. 8, 2007
Filed June 8, 2007
Filed Aug. 22, 2007
Filed Sept. 11, 2007
Nov. 8, 2007
1. Claims 15, 18-21, and 25 stand rejected under 35 U.S.C. §101 as
directed to non-statutory subject matter. Final Act. 2.
2. Claims 1, 4, 6-15, and 18-25 stand are rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Gad wale, Zhang, and Keith. Final
Act. 3-12.
ANALYSIS
We have reviewed the rejections of Claims 11, 4, 6-15, and 18-25 in
light of Appellants' arguments that the Examiner erred. We have considered
in this decision only those arguments Appellants actually raised in the Brief.
Any other arguments which Appellants could have made but chose not to
make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded that Appellants identify reversible error. We provide
the following explanation to highlight and address specific arguments and
findings primarily for emphasis.
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 14--52.
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Appeal2013-006068
Application 11/964,653
CLAIMS 15, 18-21, AND 25: NON-STATUTORY SUBJECT MATTER
Claim 15 recites, inter alia, "a computer-readable storage comprising
computer-usable program code stored thereon." The Examiner finds the
Specification defines the claimed "computer-readable storage" to include
"non-tangible mediums [sic, media] such as electronic signals. Final Act.
12.
Appellants contend a person of skill in the art would differentiate a
transmission medium from a storage medium. App. Br. 17. Appellants
argue the term storage is limited to a device. Reply Br. 5 (citing McGraw-
Hill Dictionary of Scientific and Technical Terms).
Appellants original Specification defined computer-usable or
computer-readable media to include "a propagation medium." Spec. (filed
12/26/2007), i-f 13. Where computer-usable or readable media are defined to
include "a propagation medium," the media are non-statutory. See In re
Nuijten, 500 F.3d 1346 (Fed. Cir. 2007). However, Appellants amended
their Specification to delete the recitation "a propagation medium" and to
delete reference to "transmission media," to "a propagated data signal," and
to "as part of a carrier wave." See Spec. (filed 12/22/2009) (amending i-f 13
and deleting i-f 14).
As amended, Appellants' Specification limits the claimed computer-
readable storage to a tangible device. We, therefore, decline to sustain the
rejection of Claims 15, 18-21, and 25 under 35 U.S.C. §101.
CLAIMS 1, 4, 13, 15, 18, AND 19: OBVIOUSNESS OVER
GADWALE, ZHANG, AND KEITH
Instant messaging session.
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Appeal2013-006068
Application 11/964,653
The Examiner finds the combination of Gadwale and Zhang does not
teach receiving a request from a second user to establish an IM session with
the guest IM client and indicting the requested IM session is for the first
user. Final Act. 5. The Examiner finds Keith so teaches. Id. (citing Keith
iTiT 305, 317).
Appellants contend the cited passages of Keith are not directed to IM
sessions, but rather, those passages are directed to "enhanced chat rooms."
App. Br. 36. The Examiner finds Keith teaches enhanced chat rooms as
group IM sessions. Ans. 4 (citing Keith iTiT 217, 218).
Appellants reply that Keith discloses a "chat room" that is hosted by a
server. Reply Br. 7 (citing Keith, iTiT 18, 293-295, 317, 322, 335, 336, and
340. In contrast, Appellants argue they have defined an "instant messaging
client" as a client application hosted on a client device. Id. (citing Spec. iTiT 2
and 26).
Appellants' contentions are not persuasive. Appellants disclose "[t]he
communication network 130 can facilitate communications, e.g., IM
communications, between and among the various IM clients 105-120 in
cooperation with the IM server 125." Spec. iT 25. Appellants disclose an IM
session requires an IM server as well as IM clients. Keith discloses "[a] chat
room provides several conversation modes, or protocols." Keith iT 217
(citied by the Examiner). Keith discloses one such mode/protocol supported
by a chatroom is "[t]he IM (instant messaging) mode/protocol." Keith iT
220. Keith further teaches the IM mode "is best suited for one-on-one
conversations." Id. Implicit in a one-on-one conversation is the claimed
request to establish a session with the indicated party. Appellants have not
persuaded us of the distinction they allege.
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Appeal2013-006068
Application 11/964,653
Teaching away.
Appellants argue Keith teaches away from Gadwale and from the
claimed invention. App. Br. 36-37 (citing Keith i-f 34 "IM does not work
well for groups of more than a few people"). Appellants' contention is not
persuasive because Keith teaches the IM mode within the chat room "is best
suited for one-on-one conversations." Keith i-f 220.
Appellants present substantially similar argument for independent
Claims 13 and 15 and for dependent Claims 4, 18, and 19. App. Br. 40-48.
DEPENDENT CLAIMS 7 AND 19
Indicating that the first user is proximate to the guest IM client.
Claim 7 recites: "responsive to determining that the first user is
proximate to the guest instant messaging client, outputting, within the list, an
indication that the first participant is proximate to the guest instant
messaging client." The Examiner finds the combination of Gad wale, Zhang,
and Keith discloses the method of Claim 1 wherein outing a notification
comprises displaying a list of users. Final Act. 8. The Examiner finds
Gad wale teaches the claimed limitation. Id. (citing Gad wale i-f 41; Figure 4 ).
Appellants admit Gadwale notifies other users of roaming IM users,
but argue Gadwale' s notification is not in the form of an indication with in a
list of users. App. Br. 45.
The Examiner finds Gadwale teaches displaying a list of IM users.
Ans. 6. The Examiner further finds proximate users are specifically
indicated. Id. (citing Gadwale "Joe's Office" alert outputted on Figure 4).
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Appeal2013-006068
Application 11/964,653
Appellants admit the claimed list is suggested by the cited art. Reply
Br. 9. However, Appellants contend the indication of Figure 4 is not output
in a list, as claimed. Reply Br. 10.
We do not find Appellants' contention persuasive because "one
cannot show non-obviousness by attacking references individually where ...
the rejections are based on combinations of references." In re Keller, 642
F.2d 413, 426 (CCPA 1981).
DEPENDENT CLAIMS 23, 24, AND 25
Claim 23 recites "wherein outputting the notification that the first
participant is proximate to the guest instant messaging client further
comprises: indicating an identity of another user that is logged into the guest
IM client." Claims 24 and 25 recite commensurate limitations. The
Examiner finds this limitation is taught by Gadwale. Final Act. 12 (citing
Gadwale i-f 54; Figure 4).
Appellants contend the cited portions of Gadwale does not show
where the first participant is proximate to a guest IM client the notification
indicates the identity of another user that is logged into the guest IM client.
App. Br. 48--49.
The Examiner finds Gad wale discloses expressly that the body of IM
users have a wireless device to disclose their presence to another guest
computer (see page 2 section [0025]), which in this case is a guest computer
in Joe's office and is identifying the other user as Joe. Ans. 7 (citing
Gadwale i-f 25; Figure 4).
Appellants reply that Gadwale discloses the presence of an IM user to
an IM server which logs that user into an IM user presence database. Reply
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Appeal2013-006068
Application 11/964,653
Br. 11. Appellants argue, without proffer of evidence, that being logged into
the IM server is distinct from being logged into an IM client. Id.
We are not persuaded the Examiner errs. Appellants do not argue,
with evidence, that the IM client is not aware of the IM user present data
base. Nor do they provide evidence of the distinction they attempt to draw.
DEPENDENT CLAIMS 6, 8, 12, 14, AND 20-22
Dependent Claims 6, 8, 12, 14, and 20-22 were not separately argued
and thus fall with the claims from which they depend.
DECISION
The rejection of Claims 15, 18-21, and 25 under 35 U.S.C. §101 is
REVERSED.
The rejection of Claims 1, 4, 6-15, and 18-25 under 35 U.S.C. §103
is 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
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