Ex Parte Kogan et al

Patent Trial and Appeal Board

Feb 27, 2013

11612154 (P.T.A.B. Feb. 27, 2013)

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.
11/612,154 12/18/2006 Sandra L. Kogan CAM920060140US1 (162) 5665
46321 7590 02/27/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
NGUYEN, LE V
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
02/27/2013 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 SANDRA L. KOGAN, ERIC M. WILCOX, and
CHARLES R. HILL
____________

Appeal 2011-000156
Application 11/612,154
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants describe the present invention as follows:
In one embodiment of the invention, a method for real-time
monitor integration of activity thread snippets in an activity-
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centric collaborative computing environment can be provided.
The method can include collecting real-time metrics for an
activity object in an activity thread, changing characteristics of
a control element within an enterprise dashboard view
according to the collected real-time metrics, and inserting into
the control element a portion of the activity thread.
Abstract.
Claim 1 is illustrative:
1. A method for real-time monitor integration of activity
thread snippets in an activity-centric collaborative computing
environment, the method comprising:
collecting real-time metrics for an activity object in an
activity thread;
changing characteristics of a control element within an
enterprise dashboard view according to the collected real-time
metrics; and,
inserting into the control element a portion of the activity
thread.
The Examiner relies on the following references as evidence of
unpatentability:
Wynn US 2004/0261013 A1 Dec. 23, 2004
Bjoernsen US 2004/0174392 A1 Sep. 09, 2004
Barksdale US 2002/0154176 Al Oct. 24, 2002
REJECTIONS
The Examiner rejected claims 1, 4, 6-10, and 13 under 35 U.S.C.
§ 103 as unpatentable over Bjoernsen and Wynn. Ans. 3-6.1

1 Throughout this opinion, we refer to the Appeal Brief filed April 5, 2010
(“App. Br.”) and the Examiner’s Answer mailed June 24, 2010 (“Ans.”).
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The Examiner rejected claims 2, 3, 5, 11, 12, and 14 under § 103 as
unpatentable over Bjoernsen, Wynn, and Barksdale. Ans. 6-8.

ANALYSIS
All claims stand or fall with independent claim 1. App. Br., p. 8-9.
The only issue before us is whether the Examiner has adequately addressed
the “object” and “thread” of claim 1.2 Appellants argue:
Appellants [amendment] attacked Examiner’s prima facie case
of obviousness on the basis that Examiner misconstrued critical
claim terms “activity thread” and “activity object” by
comparing those terms to cited portions of Bjoernen. The law
requires Examiner to perform a claim construction of critical
claim terms before comparing the critical claim terms to
portions of the cited art. Examiner failed to do so in
contravention of the law and the directives of the Examination
Guidelines of M.P.E.P. 2141 and, as a result, established a
defective claim construction by implication resulting in the
necessity of the instant appeal.
App. Br., p. 8. And Appellants likewise argue:
Examiner continues to fail to establish a claim
construction of the critical claim terms “activity object” and
“activity thread”. In Examiner’s remarks of the Final Office
Action, Examiner again fails to expressly construe “activity
object” and “activity thread” and instead, by comparing the
same to paragraph [0093] of Bjoernsen, establishes an implicit
claim construction of “activity object” is an “instant messaging

2 We note that some subject matter of claim 1 is immaterial to the issue of
patentability, particularly insofar as limiting only the invention’s
informational content and/or intended use. The immaterial subject matter
includes the emphasized language of “activity thread,” “activity-centric
collaborative computing,” “control element,” and “enterprise dashboard
view.”
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session” and an “activity thread” is a “conversation thread” that
not only fails under M.P.E.P. 2111, but also directly conflicts
with Examiner’s implicit claim construction set forth on page 2
of the Final Office Action in comparing the first limitation of
claim 1 to paragraphs [0076] and [0077] of Bjoernsen.
Id.
Appellants incorrectly contend that an examiner must expressly
construe all claim limitations raised by an applicant. Contrary to that
contention, which Appellants incorrectly posit to be supported by MPEP §§
2111 and 2141, the Examiner’s burden is to provide sufficient information to
address a rejection. As explained by the Federal Circuit:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant … [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132. That section “is violated when a rejection is
so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citation omitted). The
above burden may be met by clearly conveying how the claimed elements
are read on the prior art’s features, such that an applicant can respond with
arguments as to why the claim scope does not encompass those features.
Cf., id. (“The examiner clearly conveyed his understanding that Jung’s well-
charge-level controller was broad enough to encompass Kalnitsky’s
‘controller 340,’ and the specific column and line cites to the prior art
reference would have put any reasonable applicant on notice of the
examiner’s rejection.”). It is simply not, on the other hand, the Examiner’s
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burden “[t]o avoid future dispute” by providing a “claim construction plainly
in the form of ‘Activity Thread means …’ and ‘Activity Object means …’,”
as requested by Appellants. App. Br., p. 8.
In the Final Office action, the Examiner clearly read the claimed
“object” and “thread” on Bjoernsen’s instant messages as follows:
Bjoernsen et al. teaches activity object in an activity associated
with particular users and activity thread snippet of the activity
objects (fig. 14; par [0093]; e.g., a user selects a contact, Elvira
Morgan, as a collaboration participant for an instant messaging
session wherein the conversation threads are displayed in an
instant messaging window).
Final Rej., p. 7. Given the above statement and their express understanding
that the claimed “object” can be an instant message (Spec., ¶ 22), Appellants
should have understood that: the claimed “object” is read on an instant
message of Bjoernsen’s collaboration session and the claimed “thread” is
read on a collection of such messages, particularly as displayed by
Bjoernsen’s instant message window.3 In the Answer, the Examiner has
again explained this reading of the claimed “object” and “thread” on
Bjoernsen, stating:

3 We acknowledge that the Examiner conveyed a more expansive
interpretation of “object,” particularly stating that the claimed “object” may
be read on shared documents of a collaboration session. However, that
interpretation was reasonable in light of Appellants’ statement that “activity
objects can include … documents.” Spec. ¶ 22. Moreover, the
interpretation’s inclusion of documents did not excuse Appellants from
addressing the merits of also reading the claimed “object” and “thread” on
instant messages of Bjoernsen’s collaboration session, as was clearly
conveyed.
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In accordance with the Microsoft Computer Dictionary
(5th Edition, 2002) and knowledge known to one of ordinary
skills in the art, the definition of a thread is, in electronic mail
and Internet newsgroups, a series of messages and replies
related to a specific topic. Bjoernsen teaches collaboration
services that includes chat collaboration over an intranet with
colleagues, virtual meetings in a web browser window and
instant messaging or collaboration session with a co-worker, for
example, in the financial department to share tasks/activities to
clarify legal issues regarding a sales order or to route a
document that is edited during a session to various participants
of the meeting (figs. 12-14; par [0050], [0076], [0086], [0089]-
[0094]). Bjoernsen further provides information collected from
a session to various users such as by a collaboration report 222
at an appropriate point during or after the session ….
Therefore, Bjoernsen’s thread regarding such activities is
consistent with the definition of a thread and, moreover,
appellant’s definition that an activity object can include tasks,
messages, chats, documents, instant messages and postings in
par [0024; sic (should be ¶ 22)] of the published instant
application.
Ans., pp. 8-9 (emphasis added). As Appellants have not filed a Reply Brief,
we presume they now understand the rejection as presented above.4
For the foregoing reasons, we sustain the obviousness rejection of
claim 1 over Bjoernsen and Wynn. As Appellants do not present separate
arguments for remaining claims 2-14, we also sustain the obviousness
rejections of: claims 1, 4, 6-10, and 13 over Bjoernsen and Wynn and of
claims 2, 3, 5, 11, 12, and 14 over Bjoernsen, Wynn, and Barksdale.

4 The prosecution record shows that the Appellants and Examiner did not
conduct an interview. In our view, an interview would have been the ideal
method of avoiding the appealed issue. See MPEP § 713.09 (“Normally,
one interview after final rejection is permitted…. Such an interview may be
granted if the examiner is convinced that disposal or clarification for appeal
may be accomplished with only nominal further consideration.”).
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ORDER
The Examiner’s decision rejecting claims 1-14 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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