Ex Parte Haldar

Board of Patent Appeals and Interferences

Aug 11, 2010

10349644 (B.P.A.I. Aug. 11, 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.
10/349,644 01/23/2003 Debashis Haldar 2087 1815
28005 7590 08/12/2010
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EXAMINER
NGUYEN, THUONG
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
08/12/2010 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 DEBASHIS HALDAR
____________

Appeal 2009-000909
Application 10/349,644
Technology Center 2400
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

BLANKENSHIP, 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.
Appeal 2009-000909
Application 10/349,644

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-6 and 8-33, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Representative Claim
3. A method of sorting instant messages for delivery,
comprising:

receiving a first instant message and a second instant
message, the first and second messages being addressed to
different recipients;

determining a first priority weight of the first instant
message and a second priority weight of the second instant
message;

inserting the first instant message in a message queue;
and

inserting the second instant message in the message
queue, wherein the second instant message is inserted in front
of the first instant message in the message queue if the second
priority weight is higher than the first priority weight.

Examiner’s Rejections
Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bell (US 2003/0131064 A1) and Roskind (US
2003/0065721 A1).
Appeal 2009-000909
Application 10/349,644

3
Claims 2, 4-6, and 8-33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bell, Roskind, and Sorber (US 6,018,515).

DISCUSSION
Instant claim 3 recites receiving a first instant message and a second
instant message, determining respective priority weights of the messages,
and inserting the messages in a message queue according to the weights.
The claim further recites “the first and second messages being addressed to
different recipients.” Claim 1 recites similar subject matter, except that the
messages are selected and sent according to the determined weights of the
messages.
The Examiner has determined, implicitly, that the recitation about the
addresses being to “different” recipients limits the scope of the subject
matter (i.e., is a limitation). According to the rejection, Bell teaches all of
the subject matter of claim 3 except for the messages being addressed to
different recipients. The rejection turns to Roskind (¶¶ [0079], [0091],
[0115], and [0118]) to supply the teaching not in Bell.
Bell describes designating priority levels to instant message (IM)
conversations in a message queue status display such that higher priority
messages are active and displayed on the user’s device. Bell ¶ [0019]. All
the messages are thus addressed to the same recipient. Roskind describes an
ordering of IM contacts from received messages, again addressed to the
same recipient. See Roskind ¶ [0101].
We have considered all of the disclosure of Roskind that the rejection
deems to teach first and second messages being addressed to different
Appeal 2009-000909
Application 10/349,644

4
recipients. Paragraphs [0079], [0091], [0115], and [0118] of Roskind do
disclose messages addressed to different recipients. However, we agree with
Appellant that the rejection fails to show that either of Bell and Roskind, or
their combination, teaches the sorting of instant messages that are addressed
to different recipients, as claimed.
Roskind as applied appears to teach little more than that instant
messages are addressed to intended recipients, which is indisputable and not
surprising. However, the references (and the rejection) fail to provide a
persuasive reason why one of ordinary skill in the art, having no knowledge
of Appellant’s invention, would have combined the teachings provided by
the applied prior art and arrived at the subject matter of the claims. In a
rejection on obviousness grounds, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
We therefore cannot sustain the § 103(a) rejection of claims 1 and 3
over Bell and Roskind. All the other independent claims on appeal (5, 12,
14, 16, 20, 22, 24, 29, and 33) contain limitations similar to claim 1 or 3, and
each contains language concerning the first and second messages being
addressed to different recipients for which the rejection of claims 1 and 3
fails. Because the addition of Sorber to Bell and Roskind does not remedy
the basic deficiency in the rejection, we cannot sustain the § 103(a) rejection
of the claims 2, 4-6, and 8-33.

Appeal 2009-000909
Application 10/349,644

5
DECISION
The rejection of claims 1 and 3 under 35 U.S.C. § 103(a) as being
unpatentable over Bell and Roskind is reversed.
The rejection of claims 2, 4-6, and 8-33 under 35 U.S.C. § 103(a) as
being unpatentable over Bell, Roskind, and Sorber is reversed.

REVERSED

msc

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