Ex Parte Klug et al

Patent Trial and Appeal Board

Feb 27, 2014

10570008 (P.T.A.B. Feb. 27, 2014)

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.
10/570,008 02/28/2006 Karl Klug 2003P13144WOUS 5305
22116 7590 02/28/2014
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
BELANI, KISHIN G
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
02/28/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KARL KLUG, THOMAS LEDERER, and
HARALD MULLER
____________________

Appeal 2011-013431
Application 10/570,008
Technology Center 2400
____________________

Before JOSEPH L. DIXON, JEFFREY S. SMITH, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-013431
Application 10/570,008

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 20–31, all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 1–19 are cancelled. An oral hearing was
conducted on this appeal on February 18, 2014.
We affirm.
Illustrative Claim
Appellants’ invention relates to updating presence information
assigned to a user of a communication service. Spec. 1:3–4.
Claim 20, reproduced below, is illustrative of the claimed subject
matter:
20. A method for updating presence information assigned to
a first user of a substantially realtime communications service,
comprising:
a terminal sending information to a server identifying a
presence status of the first user registered to use a
communication server, the server having non-transitory
memory that has a control program stored thereon that is
processed by the server;
the server storing the sent information in non-transitory
computer readable medium;
the server providing the information to a terminal of a
defined user;
a terminal of the first user sending proxy information to
the server authorizing a third user as a proxy on behalf of the
first user in connection with the presence information of the
first user;
a terminal of the proxy sending information to the server
updating the presence information of the first user; and
the server providing the updating by the proxy of the
presence information of the first user to the defined user.
Appeal 2011-013431
Application 10/570,008

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Rejections
The Examiner rejected:
Claims 20–22, 24–26, and 28–31 under 35 U.S.C. § 103(a) as
unpatentable over Wullert (US 2002/0097856 A1), Shaffer (US
2005/0047582 A1), and Zmudzinski (US 2007/0271384 A1) (Ans. 6–21);
and
Claims 23 and 27 under 35 U.S.C. § 103(a) as unpatentable over
Wullert, Shaffer, Zmudzinski, and Mathis (US 2003/0119540 A1) (Ans. 21–
22).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (“App. Br.” filed May 5, 2011) and Reply
Brief (“Reply Br.” filed Aug. 11, 2011). We refer to the Briefs and the
Answer (“Ans.” mailed June 29, 2011) for the respective positions of
Appellants and the Examiner.
Appellants’ arguments raise the dispositive issue of whether the
Examiner erred in maintaining Shaffer as prior art.
Appellants filed the instant application on February 28, 2006.
Appellants assert the instant application is entitled to claim priority to a
German application, filed on August 29, 2003. Shaffer has a priority date of
August 25, 2003, as its US filing date. The Examiner cited Shaffer in
rejecting all claims on appeal. Ans. 6–22.
During prosecution, Appellants submitted a declaration under 37 CFR
§ 1.131 attempting to “swearing behind” Shaffer. App. Br. Evidence Appx.
On December 12, 2010, the Examiner issued a Final Rejection stating the
Appeal 2011-013431
Application 10/570,008

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“affidavit [sic, declaration]. . . has been considered but is ineffective to
overcome the Shaffer . . . reference” thereby closing prosecution. Final Rej.
2. The Examiner found the inventors’ declarations ineffective because, inter
alia, the proffered evidence supporting the declarations was submitted in
German and did not include a certified English translation. Id. Appellants
responded on February 7, 2011, after the Final Rejection was mailed and
prosecution had closed. See “LETTER” (Feb. 7, 2011).
Appellants argue “the Examiner has provided no rationale for why the
declarations and supporting evidence provided in those declarations should
be ignored” and “has provided no rationale whatsoever to distrust the
statements made by the inventors in their declaration or the inventors’
characterization and description of the documents included in their
declarations.” App. Br. 11. Appellants assert “[t]he facts established by the
declarations of the inventors and documents discussed and included in the
declarations shows that Shaffer . . . is not prior art.” Id. See also App. Br.
11–15; Reply Br. 1–6.
Appellants have not persuaded us the Examiner ignored the evidence
or distrusted the inventors’ statements. We are not persuaded Appellants
established during prosecution a factual record for antedating the Shaffer
reference sufficient to show the Examiner erred for finding otherwise. The
Examiner, for example, found the evidence of record at the time prosecution
ended was “insufficient to establish diligence from a date prior to [Shaffer]
to either a constructive reduction to practice or an actual reduction to
practice” because, there being no English text of the application, “the
examiner is unable to determine the exact date of either a constructive
reduction to practice or an actual reduction to practice.” Final Rej. 4. We
Appeal 2011-013431
Application 10/570,008

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do not find the Examiner has "ignored" the evidence or that this explanation
was unreasonable.
Accordingly, because Appellants have not set forth substantive
arguments for patentability over the prior art references and the Examiner
did not err in finding Appellants’ declaration under 37 CFR § 1.131
insufficient to overcome Shaffer as prior art, we sustain the Examiner’s
rejection of all pending claims.

CONCLUSIONS
On the record before us, we conclude:
The Examiner has not erred in rejecting claims 20–22, 24–26, and 28–
31 under 35 U.S.C. § 103(a) as unpatentable over Wullert, Shaffer, and
Zmudzinski; and
The Examiner has not erred in rejecting claims 23 and 27 under 35
U.S.C. § 103(a) as unpatentable over Wullert, Shaffer, Zmudzinski, and
Mathis.

DECISION
For the above reasons, the Examiner’s rejection of claims 20–31 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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