Ex Parte Horvitz

Board of Patent Appeals and Interferences

Mar 7, 2007

09881502 (B.P.A.I. Mar. 7, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC J. HORVITZ
____________

Appeal 2007-0149
Application 09/881,502
Technology Center 2100
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Decided: March 7, 2007
____________

Before JAMES D. THOMAS, MAHSHID D. SAADAT, and
JEAN R. HOMERE, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-20, which are all of the claims
pending in this application.
We affirm.
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BACKGROUND
Appellant’s invention is directed to a system and method for reducing
the disruption costs associated with notifying a user of messages and/or
alerts. According to Appellant, a user may be notified presently based on
the likely available states of the user or the notification can be deferred until
a more convenient time for the user (Specification 7). An understanding of
the invention can be derived from a reading of exemplary independent claim
1, which is reproduced as follows:
1. A notification system, comprising:

a monitor that monitors likely available states of an entity; and

a bounding system that classifies a notification to the entity
according to a predefined protocol and the likely available states, the
bounding system facilitating deferral of the notification based at least
in part on the notification classification.

The Examiner relies on the following reference in rejecting the
claims:
Aravamudan US 6,301,609 Oct. 9, 2001

Claims 1-20 stand rejected under 35 U.S.C. § 102(e) as being
unpatentable over Aravamudan.
Rather than reiterate the opposing arguments, reference is made to the
briefs and answer for the respective positions of Appellant and the
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Examiner. Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the brief have not been considered (37 CFR
§ 41.37(c)(1)(vii)).
OPINION
Appellant argues that Aravamudan relates to use of instant messaging
wherein communications from a low priority buddy are directed to the user’s
proxy, whether the user is online or offline (Br. 5). Appellant concludes that
instead of facilitating deferral of the notification, low priority
communications are redirected to a proxy that is always available (id.). The
Examiner’s response to Appellant’s argument is focused on whether
determining the classification of a message in Aravamudan is the same as
the claimed notification classification which controls deferral of the
notification (Answer 7). Thus, the question before this panel is whether
Aravamudan’s handling of notification is deferral or redirection of the
notification.
A rejection for anticipation requires that the four corners of a single
prior art document describe every element of the claimed invention, either
expressly or inherently, such that a person of ordinary skill in the art could
practice the invention without undue experimentation. See Atlas Powder
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Co. v. IRECO, Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir.
1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994).
Reviewing Aravamudan shows that the portions of the reference
relied on by the Examiner does disclose determination of the importance of
communications received by the user based on set rules or personalized
criteria (col. 8, ll. 32-43). We note Appellant’s admission that this portion of
the reference teaches classifying notifications (Reply Br. 2). However,
Appellant maintains that the classified messages are communicated directly
to a user by Communication Services Platform (CSP) when the user is
online or directly to a user’s proxy when the user is offline (Reply Br. 2-3).
The Examiner’s response (Answer 7) further points to alternative disposition
of important events based on rules established by the user (Aravamudan, col.
9, ll. 35-40).
While we agree with Appellant’s assessment of the user’s proxy as an
alternative recipient of the messages when the user is offline (Aravamudan,
col. 8, ll. 56-60), we find that, as pointed out by the Examiner (Answer 7),
the user may establish alternate rules for disposing important event.
Aravamudan describes an example of such alternate disposition which
allows the CSP to hold important events in abeyance as a pending event until
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the user is once again registered as online (col. 9, ll. 3-9). The pending
events are further checked upon receiving notification of the user’s online
status (col. 7, ll. 21-26).
Therefore, although the messages, instead of deferral, may be
redirected to the user’s proxy when the user is offline, Aravamudan provides
for alternate rules that would direct the CSP to hold the important events in
abeyance or defer them to another time when the user is online again. Based
on our findings above, we agree with the Examiner that Aravamudan teaches
the recited features and prima facie anticipates the claimed subject matter in
the independent claim 1 and dependent claims 2-20, argued together with
their base claim. Accordingly, the 35 U.S.C. § 102 rejection of claims 1-20
is sustained.

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CONCLUSION
In view of the foregoing, the decision of the Examiner rejecting
claims 1-20 under 35 U.S.C. § 102 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

kis

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