Ex Parte Galli et al

Board of Patent Appeals and Interferences

Mar 8, 2010

10392664 (B.P.A.I. Mar. 8, 2010)

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 2009-001461
Application 10/392,6641
Technology Center 2400
____________

Decided: March 9, 2010
____________

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

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 19, 2003. The real party in interest is International
Business Machines Corporation.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-23, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
Appellants invented a system, method, and computer readable
medium for providing a messaging system whereby a user’s presence and
on-line status in a chat session are not broadcast to the chat or instant
messaging participants until the user chooses to allow or enable such
broadcast. (Spec. 24, Abstract.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 1-23. Claims 1, 12, and 23 are
independent claims. 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, after logging on to said chat application, to
input information at a user terminal and said information is caused to
be immediately displayed on display devices of other individuals
participating in said chat application, said method comprising:
providing a selection menu to said user prior to said
logging on to said chat application; and
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enabling said user to make a selection from said menu to
disable predetermined functions of said other individuals with respect
to information input by said user after logging on to said chat
application.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Mayer US 2002/0178163 A1 Nov. 28, 2002
Turner US 2003/0018725 A1 Jan. 23, 2003
Gusler US 2003/0233410 A1 Dec. 18, 2003
Leonard US 6,721,784 B1 Apr. 13, 2004

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1-4, 6, 8-15, 17, and 19-23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Leonard in view of Turner;
(2) Claims 5 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leonard in view of Turner and further in view of Mayer;
and
(3) Claims 7 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leonard in view of Turner and further in view of Gusler.
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II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Leonard
1. Leonard discloses that “[a]n electronic mail system and method
enables the originator of a message sent by electronic mail to select a date,
time, or event . . . and/or to include processing and handling limitations.”
(Abstract.)
2. In Leonard, “[a]s shown in FIG. 3, the method . . . begins with the
composition of an electronic mail message by the originator of the message,
and designation of an expiration date and other handling or processing
limitations.” (Col. 17, ll. 45-50.)

Turner
3. Turner discloses that “[o]nce a user has logged in, business rules
may be used to determine which other user are available to communicate
with the first user in the instant messaging system.” (¶ [0017].)

III. PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
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obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). Therefore, we look to Appellants’ Brief to show error in
the proffered prima facie case.

IV. ANALYSIS
Common Feature In All Claims
Our representative claim, claim 1, recites, inter alia, “providing a
selection menu to said user prior to said logging on to said chat application;
and enabling . . . selection from said menu.” Independent claims 12 and 23
recite similar limitations. Thus, the scope of each of the independent claims
includes using a selection menu prior to logging onto a chat application.

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).
Appellants contend that “Leonard does not disclose or even mention
chat applications and the email messages of Leonard are not caused to be
immediately displayed on display devices of other individuals participating
in a chat application.” (App. Br. 12.) Appellants further contend that
“Turner does not disclose or even suggest enabling a user to pre-determine
publication criteria prior to logging on to a chat session as is clearly set
forth in the independent claims.” (App. Br. 13.)
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The Examiner found:
The input of information after logging on to a chat application
and the information being immediately displayed are properties
of a chat application and would be imported by the combination
of Leonard and Turner, thus providing for predetermination of
the functions of other individuals with respect to information
input by the user after logging on to the application.
(Ans. 5.) The Examiner further found that “the combination of Leonard’s
selective functional disablement feature and the chat application of Turner
would have been obvious to one of ordinary skill in the art at the time of the
invention.” (Ans. 17.)
Issue: Have Appellants shown that the Examiner erred in finding that
the combination of Leonard and Turner discloses providing a selection menu
to said user prior to said logging on to said chat application?
In essence, Appellants contend that the combination of cited
references, i.e., Leonard and Turner, do not disclose a selection menu being
used prior to logging on to a chat application (App. Br. 13). We agree.
While Leonard discloses enabling the originator of a message to
attach processing and handling limitations to a message (FF 1-2), the
Examiner has not shown that Leonard allows such features prior to logging
on to the e-mail application. For example, Leonard specifically states that
the process begins with composition of the electronic message (FF 2 and
Fig. 3, step 100). It goes to follow that if the originator is composing the
message, the originator must already be logged onto the e-mail application.
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In addition, the Examiner reference to Turner only details functions
preformed after the user has logged on to the chat application (FF 3). The
Examiner appears to suggest that “providing for predetermination of the
functions of other individuals” is an inherent feature of chat application.
(Ans. 5.) We disagree.
When relying upon an apparent theory of inherency, the Examiner
must provide a basis in fact and/or technical reasoning to reasonably support
the Examiner's determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. Ex parte Levy,
17 USPQ2d 1461, 1463-64 (BPAI 1990). Here, the Examiner has not
established that the combination of Leonard and Turner discloses providing
a selection menu to the user prior to logging on to the chat application that
enables the user to make a selection from the menu to disable predetermined
functions, or that such a feature necessarily flows from any chat application.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown that the Examiner erred in finding that
the combination of Leonard and Turner renders independent claims 1, 12,
and 23 unpatentable.
Thus, Appellants have persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 1. Therefore, we reverse
the Examiner’s § 103 rejection of independent claim 1 and of claims 2-23,
which stand therewith.
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V. CONCLUSIONS
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-23 under 35 U.S.C. § 103(a).

VI. DECISION
In view of the foregoing discussion, we reverse the Examiner’s
rejection of claims 1-23 under 35 U.S.C. § 103(a).

REVERSED

rwk

Robert V. Wilder
4235 Kingsburg Drive
Round Rock, TX 78681