Ex Parte Homiller

Board of Patent Appeals and Interferences

Mar 23, 2012

10921440 (B.P.A.I. Mar. 23, 2012)

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.
10/921,440 08/19/2004 Daniel P. Homiller 9314-83 9766
54414 7590 03/23/2012
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
FLEURANTIN, JEAN B
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
03/23/2012 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 DANIEL P. HOMILLER
____________

Appeal 2009-013075
Application 10/921,440
Technology Center 2100
____________

Before ROBERT E. NAPPI, KRISTEN L. DROESCH and
DAVID M. KOHUT, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-0013075
Application 10/921,440

2
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-30, all of the claims pending in the Application. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
Appellant’s disclosed invention relates to a method, devices and
computer program products for providing availability data. Availability data
associated with a data file stored at a first client device is provided to a
presence server. The presence server is configured to provide the availability
data to a subscriber of a presence service and to alter an availability indicator
associated with the data file on a display of a second client device associated
with the subscriber. Spec. 2, ll. 19-25; Abs.
Independent claim 1 is illustrative and is reproduced below
(punctuation and formatting added, disputed limitations in italics):
A method of providing availability data, comprising:
providing, to a presence server, availability data
associated with a data file stored at a first client device, the
presence server being configured to[:]
provide the availability data to at least one subscriber
of a presence service provided by the presence server[;] and
alter an availability indicator associated with the data
file on a display of at least one second client device
associated with the at least one subscriber.
Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bosik (2003/0179743 A1), Wohlgemuth (2003/0233537 A1) and
Agrawal (2002/0083127 A1)
1
.

1
The rejections of claims 1, 6, 12, 16-19, 22, 24 and 28-30 under
35 U.S.C. § 112, 2
nd
paragraph are withdrawn. Ans. 2-3; App. Br. 8-11.
Appeal 2009-0013075
Application 10/921,440

3
ISSUE
Did the Examiner err in finding that the combination of Bosik,
Wohlgemuth and Agrawal teach or suggest “availability data associated with
a data file” and “an availability indicator associated with the data file,” as
recited in claim 1?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments in the Appeal Brief presented in response to the Final Office
Action (“FOA”) and the arguments in the Reply Brief presented in response
to the Examiner’s Answer. Only those arguments actually made by
Appellant in the Appeal Brief and Reply Brief have been considered.
Appellant argues claims 1-30 together as a group. App. Br. 12-15. We select
independent claim 1 as representative of the group. 37 C.F.R.
§ 41.37(c)(vii). We disagree with Appellant’s conclusions and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken; and (2) the reasons set forth by the
Examiner in the Answer in response to the Appeal Brief. We highlight and
address specific findings and arguments for emphasis as follows.
Appellant argues that there is nothing in Bosik alone or Bosik and
Wohlgemuth that discloses or suggests that a data file has a presence, as
recited in claim 1. App. Br. 13. Appellant argues that the only discussion of
presence in Bosik appears to be the presence of the subscriber online and
Wohlgemuth does not provide the missing teachings. App. Br. 13.
We are unpersuaded by Appellant’s argument because it is not
commensurate in scope with the claim 1. Claim 1 does not recite a data file
that has a presence. Instead, claim 1 recites “availability data associated with
Appeal 2009-0013075
Application 10/921,440

4
a data file.” Moreover, Appellant’s arguments are misplaced because the
Examiner does not rely on Bosik or Wohlgemuth for describing availability
data associated with a data file, but instead relies on Agrawal for this
description. (Ans. 4, citing Agrawal ¶¶ 0003, 0052).
As to the Agrawal reference, Appellant similarly argues that nothing
in Agrawal discloses or suggests that a data file has a presence, for example,
available, unavailable, new, recording or updated, as recited in claim 1. App.
Br. 14; Reply Br. 2-3. Appellant directs attention to Agrawal paragraphs
0003 and 0052, cited by the Examiner and argues that the discussion of
presence in Agrawal instead appears to be the presence of the user.
Again we are unpersuaded by Appellant’s argument because it is not
commensurate in scope with the claims. We further do not narrowly
construe “availability data associated with a data file” as data indicative of
the availability of the data file, as proposed by Appellant. Instead, we
broadly and reasonably construe “availability data associated with a data
file” as including data related to the availability of users and resources (i.e.,
servers, services, applications, data files etc.) that can be stored in, or
otherwise associated with, a data file. Therefore, we are unpersuaded by
Appellant’s argument that Agrawal’s description of the availability or
presence of the user does not meet the disputed claim limitation.
Next, Appellant argues that nothing in Bosik or Agrawal discloses or
suggests indicating the status of the data file on a “buddy list” with an
availability indicator, as recited in claim 1. App. Br. 13, 15. Appellant’s
argument is not commensurate in scope with the claim language. Claim 1
does not recite indicating the status of the data file on a “buddy list”, but
instead recites “an availability indicator associated with a data file.” We do
Appeal 2009-0013075
Application 10/921,440

5
not narrowly construe “an availability indicator associated with a data file”
as an indicator of the availability of the data file, as proposed by Appellant.
Similar to our claim construction discussed above, we broadly and
reasonably construe “an availability indicator associated with a data file” as
including an indicator related to the availability of users and resources (i.e.,
servers, services, applications, data files, etc.) that can be stored in, or
otherwise associated with, a data file. Appellant’s argument directed to
Bosik alone (App. Br. 13) is misplaced because the Examiner does not rely
on Bosik for describing the disputed limitations but instead relies on
Agrawal for this description (Ans. 4, citing Agrawal ¶¶ 0003, 0052). Since
Agrawal describes: (1) activity status data which is stored at a presence
server and which can be used to determine if a user is available; and (2)
upon no response from a user, directing a status change, such as “present and
inactive” or “absent” to the members of the user’s buddy list (¶ 0052); we
are unpersuaded by Appellant’s argument that Agrawal does not meet the
disputed claim limitations.
Appellant argues for the first time in the Reply Brief that the
Examiner’s Answer provides no motivation as to why one of ordinary skill
in the art would have been motivated to combine the three references as
suggested without using Appellant’s disclosure as a roadmap. Reply Br. 2
(citing Ans. 8). Appellant’s arguments are newly presented in the Reply
Brief, but are not responsive to a new finding or position raised by the
Examiner in the Answer. Compare Ans. 8 with FOA 4. Since the arguments
in the Reply Brief could have been presented in the Appeal Brief to rebut the
rejections made in the Final Office Action, but were not, Appellant’s
arguments are waived and are not considered. Ex parte Borden, 93 USPQ2d
Appeal 2009-0013075
Application 10/921,440

6
1473, 1474 (BPAI 2010) (informative decision) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.”).
In any event, we are unpersuaded by Appellant’s arguments because
Appellant does not meaningfully address the supposed deficiencies in the
Examiner’s determination and supporting rationale, that it would have been
obvious to modify Bosik’s method in view of the teachings of Wohlgemuth
and further in view or Agrawal. See Ans. 4; FOA 6-7.
For all these reasons, we sustain the Examiner’s rejection of claims 1-
30.
DECISION
We AFFIRM the rejection of claims 1-30 under 35 U.S.C. § 103(a) as
unpatentable over Bosik, Wohlgemuth and Agrawal.
TIME PERIOD
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

ELD