Ex Parte Holz et al

Board of Patent Appeals and Interferences

Aug 1, 2011

10649778 (B.P.A.I. Aug. 1, 2011)

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.
10/649,778 08/28/2003 Stefan Holz 2177.1003 5851
21171 7590 08/01/2011
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
SING, SIMON P
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
08/01/2011 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 STEFAN HOLZ, JANE LIU, and DAVE WINIKOFF
_____________

Appeal 2009-009073
Application 10/649,778
Technology Center 2600
____________

Before ALLEN R. MacDONALD, ELENI MANTIS MERCADER,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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Appeal 2009-009073
Application 10/649,778

3
messages directed to the user are monitored (step 102) (id.). If a call or
message has been received, the activated availability status will be
determined by querying a database allocated to the call/message
management controller described below (step 103) (id.).
After having determined the activated availability status, a filter rule
is applied to the incoming call or message in accordance with the activated
availability status (step 104) (Spec. ¶ [0019]). A call/message handling
action associated with the activated availability status is executed (step 105)
(Spec. ¶ [0020]). For example, a call or message is forwarded to another
pre-defined recipient (id.).
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A method of managing incoming calls and/or messages in a
communications system comprising the steps of:
upon receipt of a call and/or message checking if a pre-defined
availability status allocated to a predetermined recipient of the call and/or
message is activated;
upon activation of a pre-defined availability status applying a pre-
defined filter rule to the call and/or message in accordance with the activated
availability status; and
executing a call and/or message handling action associated with the
activated availability status;
wherein the availability status is selectable for activation by the
predetermined recipient of the call and/or message.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Tiliks US 2003/0076941 A1 Apr. 24, 2003
Khakoo US 2003/0135569 A1 Jul. 17, 2003
Appeal 2009-009073
Application 10/649,778

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The following rejections are before us for review:
1. The Examiner rejected claims 1, 3, 4, 6, 7, 9, and 10 under 35
U.S.C. § 102(e) as anticipated by Khakoo.
2. The Examiner rejected claims 5 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Khakoo in view of Tiliks.

ISSUES
1. Did the Examiner err in determining that Khakoo teaches the
limitation of “wherein the availability status is selectable for activation by
the predetermined recipient of the call and/or message” as recited in claim 1
and similarly recited in claims 9 and 10?
2. Did the Examiner articulate reasoning with some rational
underpinning to support the legal conclusion of obviousness in combining
Khakoo in view of Tiliks under 35 U.S.C. § 103(a) in the rejection of claims
5 and 8?

FINDINGS OF FACT
The following Findings of Fact are supported by a preponderance of
the evidence:
1. Khakoo teaches:
[t]he instant message delivery server 100 updates the
presence and device address entries based on the automatic
detection of the presence of the user or by a process of manual
registration by the user, in any known manner. Thus, the
instant message delivery server 100 is always able to determine
whether a user is available.
(¶ [0021]).
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Application 10/649,778

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2. Khakoo teaches: “As shown in FIG. 1, the instant message delivery
server 100 maintains a presence database 200, discussed below in
conjunction with FIG. 2, to record information for each user in the
community, including the availability of each user to receive instant
messages.” (¶ [0018]).
3. Khakoo teaches that Figure 2 is a sample table from the exemplary
presence database 200 of Figure 1. Figure 2 indicates user A’s “availability”
status (presence status 240) such as “ONLINE . . . AWAY.” (See ¶ [0020];
Fig. 2).
4. Khakoo teaches that after an instant message is received, the
instant message delivery server 100 performs a test during step 310 to
determine if the recipient is available. If during step 310 the user is
determined as available, then the instant message delivery process 300
delivers the message according to steps 310, 315 to 350 as shown in Figure 3
and according to the information in the presence database 200 (Fig. 2). If
the step 310 test determines that the user is unavailable, then the instant
message delivery process 300 delivers the message according to steps 310,
360 to 370 as shown in Figure 3 and according to the information in the
presence database 200 (Fig. 2). (See Figs. 2-3; ¶¶ [0022] –[0024]).

PRINCIPLES OF LAW
The Supreme Court stated that “‘[r]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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Application 10/649,778

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Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR explains:
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill. Sakraida [v. AG Pro, Inc., 425 U.S. 273 (1976),]
and Anderson’s-Black Rock[, Inc. v. Pavement Salvage Co., 396
U.S. 57 (1969),] are illustrative—a court must ask whether the
improvement is more than the predictable use of prior art
elements according to their established functions.
Id. at 417.

ANALYSIS
1. Does Khakoo teach the limitation of “wherein the availability
status is selectable for activation by the predetermined recipient of the call
and/or message” as recited in claim 1 and similarly recited in claims 9 and
10?
Appellants argue (App. Br. 6-12) that Khakoo does not disclose an
availability status that is “selectable for activation by the predetermined
recipient of the call and/or message” as recited in independent claim 1.
Appellants contend (App. Br. 6) inter alia that in contrast, Khakoo’s
messages are delivered to one or more intended recipients based on their
presence, preferences, or location. Appellants further argue (App. Br. 6-7)
that in Khakoo the user has no control over the information maintained in
the database and Khakoo’s message delivery server performs a test to
determine if the recipient is available. Appellants argue (App. Br. 10; Reply
Br. 4) that in Khakoo, manual registration by the user updates the presence
and device address entries, not the user’s presence status.
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We do not agree with Appellants’ arguments. We agree with the
Examiner’s findings and reasoning (Ans. 3-4, 8) that in Khakoo a user can
manually register his/her presence or availability status at least as “online”
(available status) or “away” (unavailable status) in the presence database (FF
3). When the user’s status is determined as being “away” by the instant
message delivery server 100, an unavailable status (of the user) is activated
whereby messages are delivered based on this status (FF 1, 2, 4). When the
user’s status is determined as being “online” (present), an available status is
activated whereby messages are delivered based on this status (FF 1, 2, 4).
Therefore, Khakoo teaches that an availability status (available or
unavailable) is selectable by a user for activation which status is identified
by the instant message delivery server 100.
Appellants argue (App. Br. 10; Reply Br. 3-4) that Khakoo’s
“presence” is different from the claimed “availability status” because “a user
can be present at a device, but unavailable to receive a call or a message.”
Appellants contend (App. Br. 10) that in Khakoo, “if the user is determined
to be present, then the user is available.” However, Appellants’ argument is
not commensurate with the scope of the claim. We agree with the Examiner
(Ans. 5; FF 3) that Khakoo’s presence statuses, either present (available
status) or away (unavailable status), reads on claim 1’s “availability status”
because if the user is away, the user is unavailable, and if the user is present,
then the user is available.
Thus, we will sustain the Examiner’s rejection of independent claim 1
and claims 9 and 10 that recite similar limitations. We will also sustain the
rejection of claims 3, 4, 6, and 7, which fall with claim 1 as no additional
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arguments of patentability were presented with respect to these claims. See
In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

2. Did the Examiner articulate reasoning with some rational
underpinning to support the legal conclusion of obviousness in combining
Khakoo in view of Tiliks under 35 U.S.C. § 103(a) in the rejection of claims
5 and 8?
Appellants argue (App. Br. 26) that the combination is improper
because the Examiner has pointed to no evidence, either in the references or
the general knowledge of the prior art, of a suggestion or motivation to
combine the references in the proposed manner. Appellants argue (id.) that
the Examiner used hindsight to make the combination.
We are not persuaded by Appellants’ arguments. We agree with the
Examiner’s rationale (Ans. 7) that it would have been obvious to modify
Khakoo by routing the messages to a destination associated with an entry in
a personal scheduler as taught by Tiliks for the predictable result that the
message recipient could easily change their schedule and rules for receiving
messages and/or calls (id.). See KSR, 550 U.S. at 417. We find that the
Examiner’s reasoning has sufficient rational underpinning to support the
legal conclusion of obviousness. See id. at 418.

CONCLUSIONS
1. The Examiner did not err in determining that Khakoo teaches the
limitation of “wherein the availability status is selectable for activation by
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Application 10/649,778

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the predetermined recipient of the call and/or message” as recited in claim 1
and similarly recited in claims 9 and 10.1
2. The Examiner articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness in combining
Khakoo in view of Tiliks under 35 U.S.C. § 103(a) in the rejection of claims
5 and 8.

ORDER
The decision of the Examiner to reject claims 1 and 3-10 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

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1 We have decided the appeal before us. However, should there be further
prosecution of these claims, the Examiner’s attention is directed to recently
issued guidance from the Director as follows below in the citations to the
Federal Register and Official Gazette.
Should there be further prosecution with respect to claims 9 and 10,
the Examiner’s attention is directed to Aristocrat Techs. Austl. Pty Ltd. v.
Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), and 76 Fed. Reg. 7162,
7167-68 at Part 1(III)(C)(1-3).
Should there be further prosecution with respect to claim 10, the
Examiner’s attention is directed to In re Nuijten, 500 F.3d 1346 (Fed. Cir.
2007), and Subject Matter Eligibility of Computer Readable Media, 1351
OFFICIAL GAZ. U.S. PAT. & TRADEMARK OFF. 212 (Feb. 23, 2010).