Ex Parte FletcherDownload PDFPatent Trial and Appeal BoardFeb 28, 201713618988 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 13/618,988 09/14/2012 George Fletcher 19487.140.1.1 4962 107193 7590 03/02/2017 Keller Jolley Preece/Facebook 1010 North 500 East Suite 210 North Salt Lake, UT 84054 EXAMINER TANG, KAREN C ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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): docketing@kjpip.com gj olley @ kj pip. com tkusitor@kjpip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE FLETCHER Appeal 2016-004315 Application 13/618,98s1 Technology Center 2400 Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and JAMES W. DEJMEK, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1 and 28-47. Claims 2—27 have been canceled. App. Br. 16. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 1 Appellant identifies Facebook, Inc. as the real party in interest. App. Br. 2. Appeal 2016-004315 Application 13/618,988 THE INVENTION Appellant’s invention is directed to “Enabling Identification of Online Identities Between Different Messaging Services.” Spec. 1, Title. Independent claim 1, reproduced below, is illustrative: 1. A method comprising: registering an initial user of a first communication service with a second communication service; receiving a list of contacts associated with the initial user; identifying, using at least one processor, a user identity contained in the received list of contacts that corresponds to a subsequent user; receiving a request for the initial user to receive a notification when the subsequent user registers with the second communication service; identifying a registration by the subsequent user with the second communication service subsequent to registering the initial user with the second communication service; and in response to identifying the registration of the subsequent user with the second communication service, and based on the request, providing, to the initial user, a notification that the subsequent user has registered with the second communication service. THE REJECTION Claims 1 and 28-47 are rejected under 35 U.S.C. § 103(a) as being obvious over Malik et al. (US 2009/0043903 Al; published Feb. 12, 2009) (“Malik”), Daniell et al. (US 2004/0186896 Al; published Sept. 23, 2004) (“Daniell”), Musil et al. (US 7,525,951 B2; published Apr. 28, 2009) (“Musil”), Arora et al. (US 2004/0064568 Al; published Apr. 1, 2004) 2 Appeal 2016-004315 Application 13/618,988 (“Arora”), and Hansen et al. (US 2004/0224769 Al; published Nov. 11, 2004) (“Hansen”). Final Act. 2—7. ANALYSIS Claim 1 recites, in pertinent part, “identifying a registration by the subsequent user with the second communication service subsequent to registering the initial user with the second communication service.” The Examiner finds Malik teaches, inter alia, registering a user of an old Internet Service Provider (ISP) with a new ISP. Final Act. 2 (citing Malik | 63); see also Ans. 7—8 (citing Malik ]f]f 44, 50). The Examiner finds Daniell teaches, inter alia, “registering the subsequent user with the second communication service.” Final Act. 3 (citing Daniell 74, 93). In particular, the Examiner finds Daniell teaches a subsequent user from an initial user’s contact list registers with an email service when the subsequent user enters the email service. Ans. 8 (citing Daniell 175); see also Final Act. 3 (citing Daniell 74, 75, 89, 93, 135). The Examiner further finds Daniell teaches a subsequent user from an initial user’s invitation registers with an IM communication session when the subsequent user enters the IM communication session. Ans. 9 (citing Daniell 1107). Appellant argues Daniell does not describe “a chronological relationship between the registration of different users with a communication service.” App. Br. 9. Specifically, Appellant concludes Daniell does not teach or suggest identifying a second user registration subsequent to an initial user registration. App. Br. 9. We agree with Appellant. Daniell is generally directed to “integrating instant messaging (IM) services and email services.” Daniell, Abstract. 3 Appeal 2016-004315 Application 13/618,988 According to Daniell, a user enters an email service and selects an email message for display on a read window. Daniell 1 72. Additionally, Daniell discloses the read window extracts an email address from the selected email message and requests IM Internet presence information for the user’s contacts associated with the extracted email address. Daniell 1 73. Daniell further discloses, upon receiving IM Internet presence information for the user’s contact, the read window “subsequently displays the IM Internet presence information next to its respective email address.” Daniell 175. For example, Daniell teaches using different icons next to the contact person’s name to indicate the status of the contact’s IM Internet presence (e.g., a smiley face may indicate the user’s IM Internet presence has been detected). See Daniell Tflf 89—90, Fig. 10. However, the Examiner has not sufficiently explained how such disclosure teaches or suggests a temporal relationship between when the user registered with the email service and when the user’s contact registered with the email service. Thus, we agree with Appellant’s conclusion Daniell does not teach or suggest identifying a second user registration subsequent to an initial user registration. Similarly, the Examiner has not identified where in Malik is there a teaching or suggesting of identifying a second user registration subsequent to an initial user registration. See Ans. 7—8. In view of the above discussion and on the record before us, we find the Examiner erred in rejecting independent claims 1,38, and 45 and, thus, for the same reason, all dependent claims therefrom. Appellant raises additional issues in the Briefs. We are persuaded of error with regard to the identified issue discussed supra, which is dispositive as to the rejection of all claims. We, therefore, do not reach the additional issues. 4 Appeal 2016-004315 Application 13/618,988 DECISION We reverse the Examiner’s decision to reject claims 1 and 28-47. REVERSED 5 Copy with citationCopy as parenthetical citation