Ex Parte Forlenza et alDownload PDFPatent Trial and Appeal BoardJun 20, 201611257453 (P.T.A.B. Jun. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111257,453 10/24/2005 37945 7590 06/22/2016 DUKEW. YEE YEE AND AS SOCIA TES, P.C. P.O. BOX 802333 DALLAS, TX 75380 FIRST NAMED INVENTOR Randolph M. Forlenza 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. AUS920050590US 1 9576 EXAMINER TANG, KAREN C ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 06/22/2016 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): ptonotifs@yeeiplaw.com mgamez@yeeiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RANDOLPH M. FORLENZA, JOHN P. KAEMMERER, RAGHURAMAN KAL YANARAMAN, and COURTNEY J. SPOONER Appeal2014-009607 Application 11/257 ,453 Technology Center 2400 Before JEFFREYS. SivIITH, JOIH-.J F. HORVATH, and KEVIN C. TROCK, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-009607 Application 11/257 ,453 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims 1, 3, 4, and 19--22. The Examiner has objected to claim 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Representative Claim 1. A method for configuring an instant messaging program, the method comprising: based on responses to invitations to chat, a computer identifying a plurality of sessions that are open; the computer displaying a plurality of buttons correspond to the plurality of chat sessions; a computer receiving a selection of a first chat session of the plurality of chat sessions responsive to selection of a first button of the plurality of buttons, the first button corresponding to the first chat session; responsive to user input for configuring a manner in which the first chat session displays text messages, the computer determining a setting for the manner of displaying text messages of the first chat session and a finite duration of time for using the setting to override another, more global setting for the manner of displaying the text messages of the first chat session and other chat sessions; and responsive to receipt of a request, during the duration of time, to implement the other global setting, the computer not implementing the other global setting and instead, maintaining the determined setting. 2 Appeal 2014-009607 Application 11/257 ,453 Canfield Matthews Fish Prior Art US 2004/0056893 Al US 2006/0107231 Al US 2013/0066997 Al Examiner's Rejections Mar. 25, 2004 May 18, 2006 Mar. 14, 2013 Claims 1, 3, 4, and 19--22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Canfield, Fish, and Matthews. ANALYSIS We adopt the findings of fact made by the Examiner in the Final Action and Examiner's Answer as our own. We concur with the conclusions reached by the Examiner for the reasons given in the Examiner's Answer. We highlight the following for emphasis. Claim 1 recites "determining a setting for the manner of displaying text messages of the first chat session and a finite duration of time for using the setting to override another, more global setting." Appellants contend Canfield does not teach "determining ... a finite duration of time" as recited in claim 1. App. Br. 8; Reply Br. 4--5. However, the Examiner relies on Fish to teach determining the finite duration of time. Ans. 4. Appellants do not persuasively rebut the Examiner's finding. Appellants contend Fish does not teach "determining a setting for the manner of displaying text messages ... to override another, more global setting" as recited in claim 1. App. Br. 11-12; Reply Br. 6. However, the Examiner relies on Canfield to teach overriding the global setting for the 3 Appeal 2014-009607 Application 11/257 ,453 manner of displaying text messages. Ans. 3--4. Appellants do not persuasively rebut the Examiner's finding. Appellants contend Canfield and Fish do not teach not using the global setting during the duration of time. App. Br. 12; Reply Br. 6. However, the Examiner1 relies on Matthews to teach not using the global setting during the duration of time. Ans. 4. Appellants do not persuasively rebut the Examiner's finding. Appellants contend Matthews does not teach overriding a global setting for displaying text messages for a duration of time. App. Br. 13; Reply Br. 7-8. However, the Examiner relies on the combination of Canfield and Fish to teach overriding a global setting for displaying text messages for a duration of time (Ans. 3-5), which Appellants do not persuasively rebut as highlighted above. Appellants contend the Examiner did not provide an explicit analysis of the reasons to combine the references. App. Br. 14--18. We disagree for the reasons given by the Examiner on pages 8 and 9 of the Answer. Cumulative to the Examiner's findings, we highlight the "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. 1 On page 6 of the Examiner's Answer, the Examiner asks several questions implying that "responsive to receipt of request, during the duration of time, to implement the other global setting, the computer not implementing the other global setting and instead, maintaining the determined setting" as recited in claim 1 does not find written description or enablement support in Appellants' Specification as originally filed. However, since the Examiner did not enter any rejections to claim 1 under 35 U.S.C. § 112, we decline to address the Examiner's questions. In the event of further prosecution, the Examiner should consider whether this limitation finds written description and enablement support in Appellants' Specification as originally filed. 4 Appeal 2014-009607 Application 11/257 ,453 T'elej7ex, Inc., 550 U.S. 398, 416 (2007). Determining the font setting of an instant message as taught by paragraph 49 of Canfield, then applying the determined setting for a duration of time as taught by paragraph 88 of Fish, does no more than yield the predictable result of "during the duration of time, ... not implementing the global setting and instead, maintaining the determined setting" within the meaning of claim 1. We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants do not present arguments for separate patentability of claims 3, 4, and 19- 22, which fall with claim 1. DECISION The rejection of claims 1, 3, 4, and 19-22 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). See 37 C.F.R. § 41.50(f). AFFIRMED 5 Copy with citationCopy as parenthetical citation