Ex Parte Galli et al

Board of Patent Appeals and Interferences

Aug 26, 2010

10392766 (B.P.A.I. Aug. 26, 2010)

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.
10/392,766 03/19/2003 Doreen Lynn Galli AUS920030068US1 8858
7590 08/27/2010
Robert V. Wilder
Attorney at Law
4235 Kingsburg Drive
Round Rock, TX 78681
EXAMINER
WHIPPLE, BRIAN P
ART UNIT PAPER NUMBER
2452
MAIL DATE DELIVERY MODE
08/27/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DOREEN LYNN GALLI, RICK ALLEN HAMILTON II,
and JAMES WESLEY SEAMAN
____________________

Appeal 2009-005914
Application 10/392,766
Technology Center 2400
____________________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-15, and 17-27. Claims 4 and 16 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

According to Appellants, the invention relates to “enabling improved
processing functionality within instant messaging systems” (Spec. 1, ll. 17-
19).

Claim 1 is illustrative:
1. A method for providing enhanced user participation in a chat
application, said chat application being selectively operable
wherein a user is enabled to input information at a user terminal
and said information is caused to be displayed on display
devices of other individuals, said chat application being
operable for broadcasting a log-on notice to said other
individuals when said user logs-on to said chat application, said
method comprising:

providing a selection means to said user by which said user is
enabled to make a first selection from user’s reflective buddy
list to prevent a broadcast of said log-on notice to all of said
other individuals upon logging-on to said chat application, said
reflective buddy list including individuals who have added said
user to said individuals’ buddy list; and

enabling said user to log-on to said chat application, said chat
application being responsive to said first selection for
preventing a broadcast of said log-on notice to all of said other
individuals upon log-on to said chat application by said user.

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Rejection
Claims 1-3, 5-15, and 17-27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Treadwell (U.S. Publication No. 2004/0015610
A1) in view of Mayer (U.S. Publication No. 2002/0178163 A1).

GROUPING OF CLAIMS

Appellants argue claims 1-3, 5-15, and 17-27 as a group on the basis
of independent claims 1, 13, and 25-27 (App. Br. 16). We select
independent claim 1 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii). We will, therefore, treat claims 2, 3, 5-15, and 17-27 as
standing or falling with the representative claim 1.

FINDINGS OF FACT (FF)
Treadwell Reference
1. Treadwell discloses: “If User A is ‘online’, then all of the other users,
regardless of their visibility status, can see that User A is online. If User A’s
visibility is set to ‘invisible’, then only the Users who are on User A’s
visible list will see that he/she is logged-on.” (Treadwell 8, ¶ [0089]).

Mayer Reference
2a. Mayer discloses:

Preferably the user has the ability to know how many people
have him/her in their contactee lists. . . . Another possible
variation is that the client program or the server or both can also
keep a list of all the people that added the user to their contactee
lists, so that the user can for example send messages that can be
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automatically distributed to all of them, and/or request to view
the list of people that have him/her on their lists (preferably at
least their names and e-mails and/or IM ids). So preferably the
server and/or the client program keep for each user also a
‘reverse’ contactee-list, which lists all the other users who
added him/her to their list and haven’t deleted him/her yet.

(Mayer 5, ¶ [0064]).

2b. Mayer discloses: “When searching for new people, the current
instant messaging networks typically allow users to search mainly by name
or by e-mail and some of them also by interests . . . .” (Mayer, Abstract).

PRINCIPLES OF LAW
Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). If the
Examiner’s burden is met, the burden then shifts to the Appellants to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (citations omitted).
Discussing the question of obviousness of a patent that claims a
combination of known elements, the Supreme Court explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
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has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). If the claimed
subject matter cannot be fairly characterized as involving the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement, a holding
of obviousness can be based on a showing that “there was an apparent
reason to combine the known elements in the fashion claimed.” Id. at 418.
Such a showing requires that:
some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal
quotation marks omitted).

ANALYSIS
Issue 1a: Did the Examiner err in finding that the prior art teaches or
suggests “providing a selection means to said user by which said user is
enabled to make a first selection from user’s reflective buddy list to prevent
a broadcast of said log-on notice to all of said other individuals upon
logging-on to said chat application, said reflective buddy list including
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individuals who have added said user to said individuals’ buddy list,” as set
forth in claim 1?

Appellants argue that Treadwell does not disclose or suggest a
reflective buddy list (App. Br. 17). Further, Appellants argue Mayer does
not disclose, teach or suggest “any means for preventing a broadcast of a
log-on notice to chat participants upon logging-on to a chat application”
(App. Br. 17).
The Examiner acknowledges Treadwell does not disclose that its
buddy list is a reflective buddy list, but finds that Mayer discloses a
reflective buddy list that includes individuals who have added the user to
said individual’s buddy list (Ans. 5-6). Further, the Examiner finds “Mayer
does not need to disclose, teach or even suggest any means for preventing a
broadcast of a log-on notice to chat participants upon logging-on to a chat
application, as Treadwell already teaches this feature” (Ans. 17).
Treadwell discloses an online User A having a visible list and an
invisible list (FF 1). In other words, when online User A sets his visibility
status to “invisible” then only the Users who are on User’s A visible list will
see that User A is logged on. Thus, we find it would have been obvious to
one of ordinary skill in the art that when User A selects who is on User’s A
visibility list, User A is effectively preventing a broadcast of said log-on
notice to all of said other individuals upon logging-on to said chat
application.
Furthermore, we find that User A’s visible list is consistent with the
claimed buddy list and it would have been obvious to a skilled artisan that
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User A’s ability to select who is/is not on this visible list (i.e., buddy list)
corresponds to the selection means whereby User A is enabled to make a
first selection from the user’s reflective buddy list (i.e., visible list) to
prevent a broadcast of said log-on notice to all of said other individuals upon
logging-on to said chat application.
While the Examiner acknowledges that Treadwell fails to disclose a
reflective buddy list, the Examiner found that Mayer teaches such a
reflective buddy list (Ans. 17). We agree.
While Appellants’ Specification fails to provide an explicit definition
for the term “reflective buddy list,” claim 1 recites that “said reflective
buddy list includes individuals who have added said user to said individuals’
buddy list.” Mayer discloses that a user has the ability to know how many
people have him/her in their contactee lists (FF 2a). Mayer also discloses
that:
the client program or the server . . . can also keep a list of all the
people that added the user to their contactee lists, so that the user can
. . . send messages that can be automatically distributed to all of them,
and/or request to view the list of people that have him/her on their
lists (FF 2a).

Thus, we find it would have been obvious to one of ordinary skill in
the art that the claimed “reflective buddy list” is consistent with Mayer’s list
because both includes individuals who have added said user to said
individuals’ list.
The Examiner correctly notes that it is the combination of Mayer and
Treadwell that discloses the claimed invention and “[o]ne cannot attack prior
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art references individually to argue against a rejection based on a
combination” (Ans. 17). We agree.
The test for obviousness is what the combined teachings of the
references would have suggested to the artisan. Accordingly, one can not
show nonobviousness by attacking references individually where the
rejection is based on a combination of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Thus, we agree with the Examiner that
the combination of Treadwell and Mayer teaches the features of the argued
limitation.
Accordingly, we find that Appellants have failed to show that the
Examiner erred in finding that the prior art teaches or suggests “providing a
selection means to said user by which said user is enabled to make a first
selection from user’s reflective buddy list to prevent a broadcast of said log-
on notice to all of said other individuals upon logging-on to said chat
application, said reflective buddy list including individuals who have added
said user to said individuals’ buddy list,” as set forth in claim 1.

Issue 1b: Did the Examiner err in combining Treadwell and Mayer?

Appellants argue “to incorporate an enablement of preventing
broadcast of log-on notice to all participants would be directly against the
express teachings and objectives of Mayer whose stated objective is to notify
all in order to find and contact a date” (App. Br. 17). Furthermore,
Appellants contend “[t]hey are different applications that function
differently and accomplish different results in different ways” and “[a]ny
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combination of Treadwell and Mayer would be incompatible and clearly not
even suggested by either reference” (App. Br 18).
In analyzing whether it would have been obvious to one of ordinary
skill in the art to make a modification or combination, there does not have to
be an express teaching, suggestion, or motivation (TSM) in a publication or
issued patent. KSR, 550 U.S. at 419 (“The obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents.”).
The Examiner finds that it would have been a benefit in any instant
messaging environment, including Treadwell’s, as a user would have been
able to see all other users that have an interest in the user (Ans. 18). As
such, the Examiner’s articulated reasoning that Mayer’s teachings would
have provided a benefit to Treadwell’s instant messaging environment is
sufficient to show a reason to combine.
We note that “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR,
550 U.S. at 417. Accordingly, we find that the Examiner did not err
in combining the Treadwell and Mayer references.
Thus, we affirm the Examiner’s § 103(a) rejection of claim 1,
and claims 2, 3, 5-15, and 17-27 which fall therewith.

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DECISION
We affirm the Examiner’s rejection of claims 1-3, 5-15, and 17-27
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

llw
Robert V. Wilder
Attorney at Law
4235 Kingsburg Drive
Round Rock, TX 78681