Ex Parte Klug et al

Board of Patent Appeals and Interferences

May 30, 2012

10570005 (B.P.A.I. May. 30, 2012)

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

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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

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