Ex Parte Jaquinta

Patent Trial and Appeal Board

May 30, 2014

11314555 (P.T.A.B. May. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPH M. JAQUINTA
____________________

Appeal 2011-012117
Application 11/314,555
Technology Center 2400
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012117
Application 11/314,555

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3, 4, 6, 7, 9, 11, 13, 14, 16, 18, 19, and 21-27. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

The claims are directed to an e-mail protocol for instant message.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1 A method for communicating a message, the method
comprising:
composing a message as an instant message using an
instant message client, the composing including adding an
additional field in a thread of the message included in a header
of the message, the additional field including a unique instant
messaging (IM) identifier, wherein the unique IM identifier
indicates that the message is an instant message, was composed
using the instant message client, and is to be displayed as an
instant message at a recipient; and
transmitting the message using an e-mail protocol.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Szeto
Ye
Giacobbe
US 2004/0215721 A1
US 2005/0009541 A1
US 2005/0138002 A1
Oct. 28, 2004
Jan. 13, 2005
Jun. 23, 2005

REJECTIONS
Claims 1, 3, 4, 6, 7, 9, 11, 13, 14, 16, 18, 19, and 21-27 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Szeto and Ye. Ans. 3.
Appeal 2011-012117
Application 11/314,555

3
Claims 21-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szeto and Ye in view of Giacobbe. Ans. 11.

OPINION
The Examiner found that Ye cured a deficiency in Szeto in that it
teaches a message header including a unique instant message (IM) identifier
that indicates it was composed using the instant message client. Ans. 4
(citing Ye paras. [0026] and [0037]). The portion of Ye relied upon by the
Examiner does not disclose any identifier in a header in a message that
suggests how or where the message was composed, as required by each of
the independent claims involved in this appeal. Rather, as Appellant
correctly points out (App. Br. 9), the cited portion of Ye describes an
identifier indicative of the communication type needed to communicate with
the recipient. Thus, the Examiner incorrectly found that Ye would cure all of
the deficiencies of Szeto and the Examiner has failed to established that the
claimed subject matter would have been obvious. The Examiner did not rely
upon Giacobbe for these teachings in any of the rejections.

DECISION
The Examiner’s rejection of claims 1, 3, 4, 6, 7, 9, 11, 13, 14, 16, 18,
19, and 21-27 is REVERSED.

REVERSED

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