Ex Parte Hullfish et al

Patent Trial and Appeal Board

May 31, 2018

13620851 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/620,851 09/15/2012 Keith C. Hullfish
107193 7590 06/04/2018
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
19487.32.1.2.1 7952
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
06/04/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH C. HULLFISH, CHARLES A. CAREY,
MICHAEL R. LONGE, and JOE PARR1
Appeal 2017-011494
Application 13/620,851
Technology Center 2400
Before ROBERT E. NAPPI, DAVID M. KOHUT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.
PETTIGREW, Administrative Patent Judge.
DECISION ON APPEAL 2
This is an appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1 and 21-55, which constitute all of the claims pending in this
application. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, Facebook, Inc. is the real party in interest. App.
Br. 2.
2 Our Decision makes reference to Appellants' Reply Brief ("Reply Br.,"
filed September 11, 2017) and Appeal Brief ("App. Br.," filed May 24,
2017), and the Examiner's Answer ("Ans.," mailed July 11, 2017), and Non-
Final Office Action ("Non-Final Act.," mailed November 25, 2016).
3 Claims 2-20 were cancelled. App. Br. 2. Claims 21, 23, 24, 26, 27-31,
and 34 depend from claim 1. App. Br. 4 n. l; see Ans. 2.
Appeal 2017-011494
Application 13/ 620,851
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to a messaging system for
forwarding messages addressed to text message identifiers using instant
message identifiers associated with the text message identifiers. Spec. 2:22-
3:4.
Claim 1 is reproduced below.
1. A method comprising:
receiving, from a mobile device associated with a first user, a
first text message;
determining, using at least one processor, that the first text
message contains a text message identifier for a second user;
identifying an instant message identifier for the second user
based on the identified text message identifier for the second
user;
creating a user preference specific to the second user based on
the first text message containing the text message identifier for
the second user, wherein the user preference specific to the
second user applies to instant messages sent by the second user;
receiving, from the second user, a first instant message addressed
to the first user; and
processing the first instant message in accordance with the user
preference specific to the second user.
Rejection on Appeal
The Examiner rejected claims 1 and 21-55 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
2
Appeal 2017-011494
Application 13/ 620,851
ANALYSIS
To reject a claim as failing to comply with the written description
requirement, the Examiner has the initial burden of presenting, by a
preponderance of evidence, why a person skilled in the art would not
recognize in Appellant's disclosure a description of the invention defined by
the claims. In re Wertheim, 541 F.2d 257,263 (CCPA 1976). The factual
inquiry is whether the specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, Appellant was in
possession of the invention as now claimed. See Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991). The Specification
need not describe the claimed subject matter in haec verba to demonstrate
possession. Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352
(Fed. Cir. 2010) (en bane).
Independent Claims 1, 36, and 45
Independent claims 1, 36, and 45 recite similar limitations and are
argued together. App. Br. 13-26. We select claim 1 as representative of the
group. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that the limitation "identifying an instant message
identifier for the second user based on the identified text message identifier
for the second user," recited in claim 1, is not sufficiently described in the
originally-filed Specification to demonstrate possession, and thus claim 1
fails to comply with the written description requirement. Non-Final Act. 8-
9, 11. The Examiner contends that the Specification is directed to
processing text or SMS messages, not instant messages. Non-Final Act. 9.
We do not agree with the Examiner's position.
3
Appeal 2017-011494
Application 13/ 620,851
As correctly pointed out by Appellants, the Specification discloses
identifying an instant message identifier based on the identified text message
identifier. App. Br. 14--20; Reply Br. 2-8. Specifically, the Specification
states that "the instant message identifier associated with the telephone
number is determined through searching in a database." Spec. 3: 10-11
( emphasis added); see Reply Br. 7 ( citing Spec. 3: 10-11 ). Thus, the
Specification shows that the inventors were in possession of "identifying an
instant message identifier based on an identified text message identifier."
The Examiner also finds the following limitations of claim 1 are not
sufficiently described in the originally-filed Specification:
wherein the user preference specific to the second user applies to
instant messages sent by the second user;
receiving, from the second user, a first instant message addressed
to the first user; and
processing the first instant message in accordance with the user
preference specific to the second user.
Non-Final Act. 8-12; Ans. 10-12. Specifically, the Examiner finds the
Specification does not support a "user preference" for instant messages sent
by the second user or describe how the user preference is created. Non-Final
Act. 9. The Examiner further finds the Specification describes how to
process SMS text messages or instant messages generated from SMS text
messages sent by a user, but not instant messages "sent by the second user,"
because SMS text messages and instant messages are different. Non-Final
Act. 9-10; Ans. 10-12.
We agree with Appellants that the Specification shows that the
inventors were in possession of a user preference specific to the second user
applying to instant messages sent by the second user where the second user
4
Appeal 2017-011494
Application 13/ 620,851
can send a first instant message to a first user, and where the first instant
message is processed in accordance with the second user's preference. App.
Br. 20-26. Specifically, the Specification discloses that it is a preference of
the second user whether to receive-and thus send-instant messages at the
instant message identifier set up with the user profile. See Spec. 9:22-25
("[T]he SMS server proceeds to determine whether the recipient desires to
forward the SMS message as an instant message 310 to the IM service
address by checking against the user preference profile."). Once the second
user has specified the preference to communicate via instant messages (i.e.,
user preference) via the user profile (i.e., how the user preference is created),
the second user may send instant messages to the first user in response to the
messages received at the instant messaging service from the first user. See
Spec. 10: 16-23 ("[T]he IM user can also respond to the sender of the SMS
message, which is forwarded to the SMS user as an SMS message, using an
IM forwarding to the SMS service 314. . . . When the IM receiver responds
to the sender of the SMS message by an IM message, the server
automatically converts the IM message into an SMS message for delivery to
the sender."). Based on the second user's preference to communicate via the
instant messaging service, the second user's instant message to the first user
will be received and processed accordingly (i.e., converted from an instant
message to an SMS message for delivery to the first user). Contrary to the
Examiner's finding that the Specification describes instant messages
generated from SMS text messages but not instant messages sent by users,
the Specification shows the second user may send an instant message in
response to the generated instant message received from the first user via the
instant message program. See Non-Final Act. 9-10; Ans. 10-12;
5
Appeal 2017-011494
Application 13/ 620,851
Spec. 10: 16-23. Additionally, portions of the Specification on pages 6, 7, 9,
and 10, as well as Figures 2, 3, and 6, show that an SMS server and a
dynamic message control server-along with routing logic for the
messages-act as an intermediary between the first user and the second user.
See Spec. 6:19--7:1, 7:23-27, 9:22-25, 10:5-7, 10:16-23, 18:10-20; Figs. 2,
3, 6. As such, the servers will use the routing logic to process the electronic
messages between the users as indicated by the second user's preferences
(e.g., to use IM service or not) stored with the user profile.
Accordingly, we do not sustain the Examiner's rejection under
35 U.S.C. § 112 of independent claim 1, as well as independent claims 36
and 45. Dependent claims 21, 23-26, 29, 30, 32, 33, 37, 40, 41, 44, 47-50,
and 53-55 depend from one of claims 1, 36, and 45, and are not argued
separately. See App. Br. 26-27. Accordingly, we do not sustain the
Examiner's rejection of claims 1, 21, 23-26, 29, 30, 32, 33, 36, 37, 40, 41,
44, 45, 47-50, and 53-55.
Dependent Claim 22
Dependent claims 22, 3 8, and 46 recite similar limitations and are
argued together. App. Br. 26-27. We select claim 22 as representative of
the group. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that the
limitation "wherein identifying the instant message identifier ... comprises
identifying, on a user profile database that the telephone number is
associated with the instant message identifier," recited in claim 22, is not
described in the originally-filed Specification. Non-Final Act. 11. The
Examiner finds the Specification does not describe using the "user profile
database" to look up an instant message identifier based on the
corresponding text message identifier. Id.
6
Appeal 2017-011494
Application 13/ 620,851
As discussed above, we agree with Appellants that the Specification
shows that the inventors were in possession of identifying an instant
message identifier based on an identified text message identifier. See App.
Br. 14--20. Further, as Appellants correctly point out, the Specification
explains how text message identifiers are identified, i.e., through the user
profile database. App. Br. 15 (citing Spec. 9:1-5 ("[T]he user profile
database of the dynamic message control server associates the screen name
'JaneSmithl' with the mobile device number 650.555.1212.")).
Accordingly, we do not sustain the Examiner's rejection of claims 22,
38, and 46.
Dependent Claims 27, 28, 31, 34, 35, 42, 43, 51, and 52
Dependent claims 27, 28, 31, 34, 35, 42, 43, 51, and 52 recite
limitations regarding the processing of the claimed first instant message and
are argued together. App. Br. 26-27. With regard to dependent claims 27,
28, 31, 34, 35, 42, 43, 51, and 52, the Examiner finds that the limitations
regarding various operations performed on the "first instant message" are
not supported because they are mentioned in the Specification only in
connection with received SMS messages, not received instant messages.
Non-Final Act. 11-12; Ans. 13.
We agree with Appellants that the Specification shows that the
inventors were in possession of the various claim limitations regarding the
processing of the claimed first instant message. See App. Br. 26-27.
Specifically, the Specification discloses that the claimed methods and
instructions as required in dependent claims 2 7, 2 8, 3 1, 3 4, 3 5, 4 2, 4 3, 51,
and 52 may be used with different types of electronic messages, including
text messages and instant messages. See Spec. 3: 5-24, 18: 10-20.
7
Appeal 2017-011494
Application 13/ 620,851
CONCLUSION
On the record before us, Appellants have persuaded us that the
Examiner erred in rejecting claims 1 and 21-55 under § 112, first paragraph
as failing to comply with the written description requirement.
DECISION
The Examiner's rejection of claims 1 and 21-55 is reversed.
REVERSED
8