Ex Parte Klug et alDownload PDFBoard of Patent Appeals and InterferencesMay 30, 201210570005 (B.P.A.I. May. 30, 2012) Copy Citation 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. 10/570,005 02/28/2006 Karl Klug 2003P13143WOUS 3274 22116 7590 05/31/2012 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER JAKOVAC, RYAN J ART UNIT PAPER NUMBER 2445 MAIL DATE DELIVERY MODE 05/31/2012 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 KARL KLUG, THOMAS LEDERER, and HARALD MULLER ____________________ Appeal 2010-009462 Application No. 10/570,0051 Technology Center 2400 ____________________ Before MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 7-9 and 11-25.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is Siemens Enterprise Communications GmbH and its related U. S. company Siemens Enterprise Communications, Inc. 2 Claims 1-6 and 10 have been cancelled (App. Br. 1). Appeal No. 2010-009462 Application No. 10/570,005 2 Appellants’ invention concerns a method for provision of presence data, allocated to a user of a communication service, to other users of that communication service, in which the user is able to authorize a second user to change their presence information (Spec. 1). Claim 7 is exemplary of the claims on appeal: 7. A method for provision of presence information allocated to a user of a communication service, comprising: receiving a presence state of a user registered to use a communication service by a server; storing the presence state; providing to a first user the registered user presence state; and making available to the registered user a presence state of a second user, wherein the first and second users are based on an activated service profile for the registered user, and wherein the registered user is enabled to update his/her own presence information, including an absence state, and only when enabled by the registered user, an authorized user is additionally enabled to change the presence information, including the absence state, for the registered user. The Examiner relies upon the following prior art in rejecting the claims on appeal: Thompson US 2002/0078150 A1 June 20, 2002 Beauchamp US 2008/0046510 A1 Feb. 21, 2008 Ohno US 2003/0229687 A1 Dec. 11, 2003 Appeal No. 2010-009462 Application No. 10/570,005 3 Claims 7-9 and 11-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thompson in view of Ohno and Beauchamp. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed January 6, 2010), the Reply Brief (“Reply Br.,” filed June 1, 2010), and the Examiner’s Answer (“Ans.,” mailed March 31, 2010) for their respective details. ISSUES Appellants argue that none of the references, Ohno being specifically addressed, teach or suggest enabling one user of a communication system to authorize another user of that system to change the presence information of that user (App. Br. 9). Appellants further argue that there is no motivation to combine Ohno with Thompson because Thompson’s purpose of “for each client to define his/her own communication preferences” teaches away from Ohno’s purpose “to remove control by each client, and give it to an administrator” (App. Br. 9). Appellants’ contentions present us with the following issues: 1. Does Ohno teach or fairly suggest that, only when enabled by the registered user, an authorized user is enabled to change the presence information for the registered user? 2. Did the Examiner properly combine Thompson with Ohno and Beauchamp to achieve the claimed invention? FINDINGS OF FACT Ohno 1. Ohno teaches that “[a] certain user agent B may register and update all or a portion of the presence information on another user agent A” Appeal No. 2010-009462 Application No. 10/570,005 4 (¶ [0015]). 2. Ohno teaches that presence information “contains the restricted presence information ‘game score,’ the regular presence information ‘remarks,’ and ‘enabled configurant ID” (¶ [0017]). 3. Ohno further teaches judging whether a second client is an enabled configurant of a first client’s presence information, and if so, allowing the updating of the first client’s restricted presence information (¶ [0016]). PRINCIPLES OF LAW Our reviewing court has held that “[a] reference may be said to teach away when a person of ordinary skill, upon examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Para-Ordnance Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). ANALYSIS We select claim 7 as representative of this group of claims, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). We are not persuaded by Appellants’ argument that Ohno does not teach enabling a registered user of a communication system to authorize another user of the system to change the registered user’s presence information (App. Br. 9). We agree with the Examiner’s finding that Ohno teaches that an “enabled configurant” is permitted to configure restricted presence information (Ans. 16; FF 3). Ohno teaches that such an enabled configurant “may register and update all or a portion of the presence Appeal No. 2010-009462 Application No. 10/570,005 5 information on another user agent” (FF 1). Ohno teaches that presence information for a given user agent “contains the restricted presence information ‘game score,’ the regular presence information ‘remarks,’ and ‘enabled configurant ID’” (FF 2). Appellants’ contention that authorization for user B to update user A’s presence information “did not come from user A but rather is a requirement of the system” (App. Br. 9) is unsupported by evidence from within Ohno, and we find no such support. We find, instead, that Ohno teaches a system in which users are individually authorized to configure another user’s restricted presence information. We are also unpersuaded by Appellants’ further argument that Ohno teaches away from Thompson because of Ohno’s supposed purpose “to remove control by each client, and give it to an administrator” (App. Br. 9). We agree with the Examiner that Ohno distinguishes between restricted and unrestricted presence information (Ans. 16), and that modifying Thompson in view of Ohno would allow a client to update his own communication preferences but also update another client’s presence information (Ans. 17). Thus, we conclude that the skilled artisan would not have been discouraged from modifying Thompson in view of Ohno, but that the combination would have added functions to the Thompson system. We therefore conclude that the Examiner did not err in rejecting claims 7-9 and 11-25 under § 103 as being unpatentable over Thompson in view of Ohno and Beauchamp. We will sustain the Examiner’s rejection. Appeal No. 2010-009462 Application No. 10/570,005 6 CONCLUSIONS 1. Ohno teaches that, only when enabled by the registered user, an authorized user is enabled to change the presence information for the registered user. 2. The Examiner properly combined Thompson with Ohno and Beauchamp to achieve the claimed invention. ORDER The Examiner’s rejection of claims 7-9 and 11-25 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 llw Copy with citationCopy as parenthetical citation