10715205 (P.T.A.B. Jan. 27, 2015)

Ex Parte Green et al

Patent Trial and Appeal BoardJan 27, 2015

10715205 (P.T.A.B. Jan. 27, 2015)

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. 10/715,205 11/18/2003 Mitchell Chapin Green 10587.0176-00000 2248 100692 7590 01/27/2015 AOL Inc./Finnegan 901 New York Ave., NW Washington, DC 20001 EXAMINER SALOMON, PHENUEL S ART UNIT PAPER NUMBER 2171 MAIL DATE DELIVERY MODE 01/27/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MITCHELL CHAPIN GREEN, ROGER CHICKERING, and DAVID GANG ____________ Appeal 2012-009230 Application 10/715,205 Technology Center 2100 ____________ Before CARL W. WHITEHEAD JR., JOHNNY A. KUMAR, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 7, 8, 14, 16, 20, 21, 38, 41-43, 55-57, 60, 61, 63-67, 70-76, and 82-93. We have jurisdiction under 35 U.S.C. § 6(b). We affirm- in-part. In reaching the decision, we have considered only the arguments Appellants actually raised. Arguments Appellants did not make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2012-009230 Application 10/715,205 2 STATEMENT OF THE CASE The present invention relates to electronic communications. See generally Spec. 1. Claim 1 is exemplary: 1. A computer-readable storage medium having embodied thereon a computer program, the computer program including instructions that, when executed, cause a computer to: display, to a user of an instant messaging system, a graphical user interface of an instant messaging service, the graphical user interface comprising a window that includes a contacts list listing identifiers corresponding to multiple co-users of the instant messaging service, the contacts list being configured to make online presence information for the co-users perceivable to the user and to enable the user to initiate communication sessions with the co-users; receive a notification from an e-mail client when an email message is received from a first one of the co-users; determine, in response to the notification, a number of unread e-mail messages sent by the first one of the co-users to the user that remain unread by the user; conditioned on the number of unread e-mail messages being greater than zero, display, within the window that includes the contacts list and in association with the identifier corresponding to the first co-user, a first graphical element that indicates that one or more unread e-mail messages have been sent by the first co-user to the user and remain unread by the user, wherein the first graphical element is automatically displayed in response to the notification and independent of a selection of the identifier by the user; enable the user to select the first graphical element; receive a selection of the first graphical element by the user; and in response to the selection of the first graphical element by the user, display to the user the number of unread e-mail messages sent by the first co-user to the user that remain unread by the user. Appeal 2012-009230 Application 10/715,205 3 THE REJECTIONS Claims 1, 14, 16, 20, 41, 55-57, 60-61, 63-64, 72-73 and 82 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tang (US 6,791,583 B2; issued Sep. 14, 2004 ), Yach (US 7,295,836; issued Nov. 13, 2007 ), and Imamura (US 2002/0091774 A1; published Jul. 11, 2002 ). Claims 7-8, 21, and 42 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tang, Yach, Imamura, and Widger (US 2005/0117733 A1; published Jun. 2, 2005). Claims 38, 43, 65 and 66 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tang, Yach, Imamura, and Lee (US2003/0233265 A1; published Dec. 18, 2003 ). Claims 67, 70-71, 74-76,83-89,90,91 and 93 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tang, Yach, Imamura, and Nielsen (US 6,108,688; issued Aug. 22, 2000 ). Claim 92 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Tang, Yach, Imamura, Nielsen, and Widger. ISSUE Under 35 U.S.C. § 103, has the Examiner erred by finding Yach teaches “determine . . . a number of unread e-mail messages sent by the first one of the co-users.” as recited in claim 1?1 ANALYSIS Claims 1, 7, 8, 14, 16, 20, 21, 38, 41-43, 55-57, 60, 61, 63-67, 70-75, and 82-88, 91-93 1 Other issues are discussed in the Analysis section. Appeal 2012-009230 Application 10/715,205 4 On this record, we find the Examiner erred in rejecting claim 1. We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellants’ arguments. We concur with Appellants’ conclusion that the Examiner erred in finding Yach teaches “determine . . . a number of unread e-mail messages sent by the first one of the co-users,” as recited in independent claim 1. The Examiner finds Yach teaches “In Figure 15a . . . using bold type to emphasize communication events which have not yet been attended to by the user.” Ans. 40 (citing Yach 26:15-19). The Examiner then cites Fig. 15b (an alternative embodiment) for displaying co-user name Person Y. See Ans. 41. The Examiner also finds: whenever the user receives emails from a co-user not only the unread emails are displayed in bold characters but also shown an indication of the number of unread emails as evidenced by fig. 15a summary event 1722 and the identification of the co- user who sent the message as evidenced by fig. 15b summary event 1722. Also in case that there aren't any unread e-mails, there will not be any indication of unread messages. Ans. 41 (emphasis added). But summary event 1722 indicates the number of emails from all co- users (Yach, Fig. 15a), not the first one of the co-users, as required by claim 1. Further, Yach’s Figs. 15a and 15b belong to two separate embodiments. Yach 26:58-60. Accordingly, we are constrained by the record to not sustain the Examiner’s rejection of claim 1, and claims 7, 8, 14, 16, 20, 21, 38, 41-43, 55-57, 60, 61, 63-67, 70-75, and 82-88, 91-93 for similar reasons. 2 2 Each of independent claims 1, 67, 72 (and corresponding dependent claims) recites “[a] computer-readable storage medium.” If prosecution Appeal 2012-009230 Application 10/715,205 5 Claims 76, 89, and 90 Appellants rely on the arguments regarding claim 1, and do not separately argue claims 76, 89, and 90. See App. Br. 20-25.3 Unlike claim 1, Appellants fail to demonstrate each of claims 76, 89, and 90 recites the “determine . . . a number of unread e-mail messages sent by the first one of the co-users” claim limitation or a claim limitation that is substantively the same.4 See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). For the remaining arguments advanced by Appellants, we disagree with Appellants’ arguments (App. Br. 19-26; Reply Br. 2-4; except for the arguments discussed above with respect to claim 1), and agree with and adopt the Examiner’s findings and conclusions on pages 5-8 and 40-45 of the Answer as our own (except for the findings and conclusions discussed reopens, we recommend the Examiner consider whether such claims are unpatentable under 35 U.S.C. § 101. 3 Appellants mention “these and other independent claims” regarding whether it is proper to combine the references, which we will discuss below. 4 Appellants also contend because Yach fails teach the “determ[ining]” claim limitation, it also fails to teach “display . . . a first graphical element that indicates that one or more unread e-mail messages have been sent by the first co-user to the user,” is “conditioned on the number of unread e-mail messages being greater than zero,” as recited in claim 1. See App. Br. 22. The argument is similarly unpersuasive here because Appellants fail to demonstrate each of claims 76, 89, and 90 recites the “conditioned” claim limitation. Appeal 2012-009230 Application 10/715,205 6 above with respect to claim 1). Therefore, we limit our discussion to the following points for emphasis. First, Appellants assert “Imamura fails to teach determining or displaying a graphical element indicating receipt of unread messages received by a particular co-user. Accordingly, no part of Imamura discloses displaying, ‘within the window that includes the contacts list,’ any ‘graphical element that indicates that one or more unread e-mail messages have been sent by the co-user to the user,’ as recited by Appellants’ claims.” App. Br. 23; see also Reply Br. 3. Appellants’ argument is unpersuasive because the Examiner relies on Tang, Yach, and Imamura collectively to teach the claim, Appellants cannot attack references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner relies on Imamura to teach “within the window that includes the contacts list” (Ans. 7, 41-42), and Appellants do not dispute that finding.5 Second, Appellants contend one skilled in the art would not have combined Tang, Yach, Imamura, and Nielsen, because Yach, Imamura, and Nielsen are not directed to instant messaging systems. See App. Br. 23-24; Reply Br. 3-4. Appellants’ contention is unpersuasive because under KSR, “[w]hen 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.” KSR Int’l Co. v. Teleflex Inc., 5 The Examiner also relies on Imamura to teach other undisputed claim elements. See Ans. 7-8. Appeal 2012-009230 Application 10/715,205 7 550 U.S. 398, 417 (2007) (emphasis added).6 Further, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 419. In any event, the Examiner has provided articulated reasoning with a rational underpinning as to why one skilled in the art would have found it obvious to combine the teachings of Tang, Yach, Imamura, and Nielsen (Ans. 6-45). Combining the Yach, Imamura, and Nielsen techniques with Tang’s teachings would have predictably used prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. Accordingly, we sustain the Examiner’s rejection of claims 76, 89, and 90. DECISION The Examiner’s decision rejecting claims 1, 7, 8, 14, 16, 20, 21, 38, 41-43, 55-57, 60, 61, 63-67, 70-75, and 82-88, 91-93 is reversed. The Examiner’s decision rejecting claims 76, 89, and 90 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)(1)(iv). AFFIRMED-IN-PART lv 6 While not relied on for our analysis, we note Appellants define the relevant field too narrowly (instant messaging systems) (App. Br. 24). In contrast, the Specification states “[t]his disclosure generally relates to electronic communications.” Spec. 1. Therefore, this invention, Tang, Yach, Imamura, and Nielsen are all in the same field—electronic communications. See Abstracts of Tang, Yach, Imamura, and Nielsen.