Ex Parte Heikes et al

Board of Patent Appeals and Interferences

Aug 18, 2010

10334128 (B.P.A.I. Aug. 18, 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.
10/334,128 12/31/2002 Brian Heikes 10587.0167-02000 7281
22852 7590 08/18/2010
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
DUONG, OANH L
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
08/18/2010 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 BRIAN HEIKES, JAMES A. ODELL, JUSTIN UBERTI,
ANDREW L. WICK, XIAOYAN YIN, and XIAOPENG ZHANG
____________________

Appeal 2009-011461
Application 10/334,1281
Technology Center 2400

____________________

Before ROBERT E. NAPPI, JOHN C. MARTIN, and MARC S. HOFF,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is AOL, LLC.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or 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 2009-011461
Application 10/334,128

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-50.3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to electronic messaging wherein a
sender’s chosen graphic image (“wallpaper”) is transmitted to a recipient
and rendered by a recipient in an area associated with messages received
from the sender (Spec. 4). Wallpaper selected by the sender may be made
available to a recipient by embedding and sending the wallpaper to the
recipient in a message sent by the sender such as an instant message (id.).
The wallpaper may be sent by the sender system to the recipient system,
with a message or through a separate negotiation or communication, and
may be stored locally on the recipient system (id.).
Claim 1 is exemplary of the claims on appeal:
1. A computer implemented method for enabling perception of
wallpaper in an instant messaging communications session, the method
comprising:
rendering, on an instant message recipient system, an instant
messaging application user interface for an instant messaging
communications session involving at least one instant message recipient and
an instant message sender;
designating, on an instant message sender system, a wallpaper
associated with the instant message sender for the instant messaging
communications session;
receiving, on the instant message recipient system, a message that
includes a text message and the designated wallpaper to be displayed to the
instant message recipient when perceiving the text message; and
displaying the designated wallpaper at the instant message recipient
system when displaying the text message and subsequent text messages

3 Claims 51-56 are withdrawn from consideration as being drawn to a non-
elected invention.
2
Appeal 2009-011461
Application 10/334,128

received from the instant message sender system during the instant
messaging communications session.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Smith US 2002/0178206 A1 Nov. 28, 2002
Fenton US 2003/0088789 A1 May 8, 2003
Moore US 2004/0205480 A1 Oct. 14, 2004
Ostermann US 7,035,803 B1 Apr. 25, 2006
Chuah US 7,249,139 B2 Jul. 24, 2007

Claims 1-8, 14-17, 19-31, and 37-45 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ostermann in view of Chuah.
Claims 9, 18, 32, and 46 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ostermann in view of Chuah and Smith.
Claims 10-12, 33-35, and 47-49 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ostermann in view of Chuah and
Moore.
Claims 13, 36, and 50 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ostermann in view of Chuah, Moore, and Fenton.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed July 9, 2008), the Reply Brief (“Reply Br.,” filed
December 1, 2008) and the Examiner’s Answer (“Ans.,” mailed October 1,
2008) for their respective details.
3
Appeal 2009-011461
Application 10/334,128

ISSUE
Appellants argue, and the Examiner admits, that Ostermann does not
teach an image that is displayed at an instant message recipient system when
displaying a text message and subsequent text messages received from an
instant message sender (App. Br. 6-7). Appellants further argue that
although Chuah teaches distributing an avatar to the instant messaging
system, said system displaying the avatar to the recipient of the instant
message as a representation of the user, Chuah does not indicate that its
avatars are background images upon which anything else is displayed (App.
Br. 8). Consequently, Appellants allege, it is unclear how the teachings of
Chuah associated with avatars may be applied to modify the presentation of
Ostermann’s background images (App. Br. 8).
Appellants’ contentions present us with the following issue:
Would it have been obvious to modify Ostermann’s teaching of a
background image associated with a particular message, in view of Chuah’s
teaching of associating an avatar image with all communications of a
particular user, to obtain the claimed invention?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Ostermann
1. Ostermann teaches a background image that may be designated
and inserted into a multimedia message by the sender (Fig. 6A; col. 10, ll.
28-53).

4
Appeal 2009-011461
Application 10/334,128

Chuah
2. Chuah teaches displaying an image (“avatar”) as a
representation of the user/sender, said avatar being displayed to the recipient
when displaying the current and subsequent text messages received from the
sender (col. 13, ll. 32-43).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id. at 425.
5
Appeal 2009-011461
Application 10/334,128

ANALYSIS
CLAIMS 1-8, 14-17, 19-31, AND 37-45
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by Appellants’ argument, supra, that the
combination of Ostermann and Chuah does not teach or fairly suggest the
claimed invention (App. Br. 8). We agree with the Examiner’s finding that
Ostermann teaches a background image that may be designated and inserted
into a multimedia message by the sender (Ans. 16; FF 1). We agree with the
Examiner’s finding that Chuah teaches displaying an image (“avatar”) as a
representation of the user/sender, said avatar being displayed to the recipient
when displaying the current and subsequent text messages received from the
sender (Ans. 17; FF 2).
Appellants’ argument that Chuah’s teachings associated with avatars
are not applicable to modify the presentation of Ostermann’s background
images amounts to an argument that the avatars of Chuah may not be bodily
incorporated into the message system of Ostermann. However, the test of
obviousness is not such bodily incorporation, but what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. Keller, 642 F.2d at 425. We find that the combined teachings of
the references, taken as a whole, would have suggested to those of ordinary
skill in the art that a background image (“wallpaper”) may be designated and
sent by a sender, to be displayed to an instant message recipient when
perceiving a text message. Further, an image sent by a sender may be
associated with that sender and displayed to the recipient in association with
that text message, as well as subsequent text messages, sent by that sender.
6
Appeal 2009-011461
Application 10/334,128

Appellants’ arguments that Ostermann does not teach an image
displayed at an instant message recipient system when displaying a text
message and subsequent text messages from the sender (App. Br. 6-7), and
that Chuah does not teach that its avatars are background images upon which
anything else is displayed (App. Br. 8), amount only to attacks on the
references individually, and are not persuasive to overcome a rejection based
on a combination of references. Keller, 642 F.2d at 425.
The Examiner has established that it would have been obvious to
combine Ostermann with Chuah to obtain the claimed invention. As a result,
we will sustain the Examiner’s § 103 rejection of claims 1-8, 14-17, 19-31,
and 37-45.
CLAIMS 9-13, 18, 32-36, AND 46-50
Appellants’ only argument with respect to these claims is that the
additional references the Examiner relied on to meet the dependent claim
limitations (Smith, Moore, Fenton) do not remedy the failure of Ostermann
and Chuah to describe or suggest the features of independent claims 1, 14,
19, and 37. As noted supra, however, we find that the combination of
Ostermann and Chuah teaches all the limitations of the independent claims.
Therefore, we sustain the rejection of claims 9-13, 18, 32-36, and 46-50
under § 103, for the same reasons expressed supra with respect to claims 1,
14, 19, and 37.
7
Appeal 2009-011461
Application 10/334,128

CONCLUSIONS
It would have been obvious to modify Ostermann’s teaching of a
background image associated with a particular message, in view of Chuah’s
teaching of associating an avatar image with all communications of a
particular user, to obtain the claimed invention.

ORDER
The Examiner’s rejection of claims 1-50 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)(v) (2010).

8
Appeal 2009-011461
Application 10/334,128

AFFIRMED

ELD

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
9