Ex Parte GriffinDownload PDFPatent Trial and Appeal BoardDec 19, 201613177791 (P.T.A.B. Dec. 19, 2016) 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. 13/177,791 07/07/2011 Jason Tyler Griffin 34056-US-CNT (4214-65511) 7159 82313 7590 12/21/2016 Conley Rose - BlackBerry Files Attn: J. Robert Brown 5601 Granite Parkway, Suite 500 Plano, TX 75024 EXAMINER MURRAY, DANIEL C ART UNIT PAPER NUMBER 2443 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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): ConleyRoseReporting@dfw.conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON TYLER GRIFFIN Appeal 2014-009143 Application 13/177,791 Technology Center 2400 Before ERIC S. FRAHM, JEFFREY A. STEPHENS, and NATHAN A. ENGELS, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-009143 Application 13/177,791 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of a final rejection of claims 1—3, 6—16, and 18—22. Claims 4, 5, 17, and 20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. We have reviewed Appellant’s arguments in the Appeal Brief (App. Br. 7—13) and the Reply Brief (Reply Br. 2—A) that the Examiner’s rejections (see Final Act. 2—18; Ans. 4—19) of (i) claims 1, 3, 7, 9, 10, and 20-22 under 35 U.S.C. § 103(a) as being unpatentable over Keohane (US 2008/0104177 Al; published May 1, 2008) and Bruce (US 2009/0077183 Al; published Mar. 19, 2009); (ii) claims 2, 6, and 8 as being unpatentable over Keohane, Bruce, and Kaminsky (US 2007/0288580 Al; published Dec. 13, 2007); (iii) claims 11—16 as being unpatentable over Keohane and Bloomer, Jr. (US 2009/0198783 Al; published Aug. 6, 2009); (iv) claim 18 as being unpatentable over DellaFera (US 2012/0297000 Al; published Nov. 22, 2012) and Bruce; and (v) claim 19 as being unpatentable over DellaFera, Bruce, and Cruz (US 2009/0172105 Al; published July 2, 2009), are in error, and the Examiner’s response to Appellant’s arguments in the Appeal Brief (Ans. 19—24). The Examiner relies on Bruce as teaching or suggesting the automatic push limitation of independent claim 1 (Ans. 4—5), and on Keohane as teaching or suggesting the push limitation of independent claim 11 (Ans. 14). Although we agree with the Examiner (Ans. 4—5 and 20) that Bruce teaches or suggests notifying participants of an e-meeting that another person is out of the office (see Bruce Abs.; Figs. 2-4; 133), the Examiner has not articulated with rational underpinning how or why one of ordinary skill in the art at the time of Appellant’s invention would have understood 2 Appeal 2014-009143 Application 13/177,791 either Bruce or Keohane to “push” the notifications as recited in independent claims 1 and 11. Instead, we find that Bruce discloses pulling the out of office notification, as Appellant contends (App. Br. 7—8 and 10-11; Reply Br. 2—3). We find the Examiner’s explanations (see Ans. 5 and 20) that Bruce (133; Fig. 3) teaches or suggests the disputed “push(ing)” features of independent claims 1 and 11 are conclusory. In addition, the Examiner’s determination (Ans. 14) that Keohane discloses “pushing” out of office messages as recited in independent claim 11 is similarly unfounded. First, the Examiner finds (Ans. 4 (discussing claim 1)) that Keohane fails to teach or suggest the automatic pushing feature of claim 1. Second, Keohane’s out of office message 305 shown in Figure 3 is activated by a user but the out of office message is not pushed by the server in response to the server’s receipt of notification that an out of office utility has been enabled (134.) Instead, Keohane teaches that the out of office message is not generated by a server until the server receives a first email from a sender to the out of office user such that the out of office message is generated in response to an e-mail from a sender (|| 30 and 31), not in response to the server’s receipt of the notification. In other words, Keohane describes a “pull” and does not describe a “pushing, by the server . . . such that the out-of-office messages are not in reply to prior messages received from the contacts” as required by claim 11. Based on the foregoing, we concur with Appellant’s assertions (see App. Br. 7—8 and 10-11; Reply Br. 2—3) that the cited portions of Keohane, Bruce, or Bloomer, Jr. do not teach or suggest the “push(ing)” limitations of claims 1 and 11. 3 Appeal 2014-009143 Application 13/177,791 With regard to claim 8 separately argued (App. Br. 9; Reply Br. 2), we also agree with Appellant that Kaminsky’s paragraph 52 (cited by the Examiner at pages 12—13 of the Answer as teaching that a displayed name of a contact is unselectable) merely “discloses an address book list of IM contacts that indicates which contacts are online, with no suggestion that any of the contacts are ‘unselectable by the user’ as claimed” (App. Br. 9) (emphasis added). And, paragraph 41 of Kaminsky (newly cited by the Examiner at page 12 of the Answer) only describes dynamic criteria for establishing a policy for displaying contact names and/or arriving instant messages (IMs) (i.e., Kaminsky only discloses selectable names), and is silent as to the displayed name being “unselectable” as set forth in claim 8. Lastly, we agree with Appellant’s argument (App. Br. 13) that neither DellaFera nor Bruce teach or suggest triggering an out of office message based on a location of a communication device as recited in remaining independent claim 18. The Examiner relies on DellaFera (H 31 and 43; Fig. 4) for teaching the location determination (Ans. 24). Although DellaFera discloses allowing a user to control and/or enable an out of office feature (see 131; Fig. 4, step 104), DellaFera is silent as to doing so based on a location of a communication device as a trigger. Accordingly, we do not sustain the Examiner’s obviousness rejections of independent claims 1,11, and 18, as well as corresponding dependent claims 2, 3, 6, 7—10, 12—16, and 19—22 depending respectively therefrom. 4 Appeal 2014-009143 Application 13/177,791 CONCLUSION The Examiner erred in rejecting independent claims 1,11, and 18, as well as claims 2, 3, 6—10, 12—16, and 19-22 depending respectively therefrom.1 DECISION We reverse the Examiner’s rejections of claims 1—3, 6—16, and 18—22. REVERSED 1 When a dependent claim and the independent claim it incorporates are not separately argued, precedent guides that absent some effort at distinction, the claims rise or fall together. See Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1350 (Fed. Cir. 1984) (en banc). Therefore, we do not sustain the rejections of dependent claims 2, 3, 6, 7, 9, 10, 12—16, and 19-22 for the same reasons as provided for claims 1,11, and 18 from which these claims respectively depend. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[Djependent claims are nonobvious if the independent claims from which they depend are nonobvious . . . .”); see also In re Nielson, 816 F.2d 1567, 1569, 1572 (Fed. Cir. 1987) (dependent claims, not argued separately, fall with the independent claims, even though the dependent claims were rejected based on additional (or different) references.). 5 Copy with citationCopy as parenthetical citation