Ex Parte Lu

Patent Trial and Appeal Board

Jan 9, 2014

11561880 (P.T.A.B. Jan. 9, 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.
11/561,880 11/20/2006 Larry L. Lu 10587.0436-00000 8251
100692 7590 01/10/2014
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
VOSTAL, ONDREJ C
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
01/10/2014 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 LARRY L. LU
____________________

Appeal 2011-001704
Application 11/561,880
Technology Center 2400
____________________

Before JASON V. MORGAN, JUSTIN BUSCH, and IRVIN E. BRANCH,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001704
Application 11/561,880

2
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-48. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction
According to Appellant, the invention relates to “using an online
identity to access one or more interoperable presence-based services.” Spec
1:7-8.

STATEMENT OF THE CASE
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
enabling access to a first instant messaging service using
an online identity that is associated with a second instant
messaging service;
accessing a profile that indicates at least one other instant
messaging service is to be provided with presence information
regarding the use of the online identity to access the first instant
messaging service; and
providing the other instant messaging service with the
presence information regarding the use of the online identity to
access the first instant messaging service.

References
Iyer US 7,450,531 B2 Nov. 11, 2008
Maes
Paseman
US 2005/0009517 A1
US 2005/0216550 A1
Jan. 13, 2005
Sept. 29, 2005
Appeal 2011-001704
Application 11/561,880

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Rejections
Claims 25-34 and 40 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans.
1
4-6.
Claims 1-36 and 40-48 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Paseman and Maes. Ans. 6-27.
Claims 37-39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Paseman, Maes, and Iyer. Ans. 27-30.

ANALYSIS
Appellant argues the combination of Paseman and Maes does not
teach or suggest “enabling access to a first instant messaging service using
an online identity that is associated with a second instant messaging
service,” as recited in independent claim 1 and commensurately recited in
independent claims 25 and 35. App. Br. 11-12.
2
Appellant further argues
there is no motivation to combine Paseman and Maes. App. Br. 12-14.
Appellant argues dependent claims 2, 3, 26, and 27 separately, asserting that
the limitations related to sending and receiving publication rules are not
taught by the combination of Paseman and Maes. App. Br. 14-15. In
response to the Examiner’s new ground of rejection under 35 U.S.C.
§ 101(Ans. 4-6), Appellant argues claims 25-34 and 40 are directed to

1
All references in this Opinion to the Examiner’s Answer (“Ans.”) refer to
the Supplemental Examiner’s Answer mailed on October 8, 2010.
2
Appellant also argues the Examiner’s shift in position as to what the
references are relied upon to teach “is improper at this stage of the
prosecution process” and “request[s] reconsideration and reopening of []
prosecution.” App. Br. 10-11. We note that, to the extent Appellant is
arguing the Examiner’s position constitutes a new ground of rejection, this is
a petitionable matter and not an issue properly addressed on appeal. MPEP
§§ 706.07(c) and 1002.02(c).
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Application 11/561,880

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statutory subject matter because the preamble recites a “computer-usable
medium storing a computer program . . . .” Reply 2-3 (emphasis added).
Therefore, the issues before us are: (1) Did the Examiner err in finding
claims 25-34 and 40 are directed to non-statutory subject matter?; (2) Did
the Examiner err in combining Paseman and Maes or finding that such a
combination teaches “enabling access to a first instant messaging service
using an online identity that is associated with a second instant messaging
service,” as recited in claim 1?; and (3) Did the Examiner err in finding the
combination of Paseman and Maes teaches or suggests the limitations in
claims 2, 3, 26, and 27?

Rejection of Claims 25-34 and 40 under 35 U.S.C. § 101
The Examiner entered a new ground of rejection, finding claims 25-34
and 40 unpatentable as directed to non-statutory subject matter under 35
U.S.C. § 101. Ans. 4-6. The Examiner finds Appellant’s Specification is
silent regarding whether the recited “computer-usable medium storing a
computer program” is limited to non-transitory media and that, “[w]hen the
broadest reasonable interpretation of a claim covers a signal per se, the claim
must be rejected” as directed to non-statutory matter. Ans. 5.
Appellant argues the recitation of the word storing in the preamble of
claim 25 differentiates claim 25 from signal claims because “transitory
propagating signals cannot store a computer program due to their transitory
nature. Reply 2.
We agree with the Examiner. Absent explicit limitation to non-
transitory media (or explicit exclusion of transitory media) in a claim or
specification, a claim directed to a “computer-usable medium storing a
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computer program” encompasses transitory media and is therefore not
patent-eligible subject matter under 35 U.S.C. § 101. See Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential-in-part)
(“those of ordinary skill in the art would understand the claim term
‘machine-readable storage medium’ would include signals per se.”).
Therefore, we sustain the rejection of claims 24-34 and 40 under 35 U.S.C.
§ 101.

Claim 1 Rejected under 35 U.S.C. § 103(a) and the Combination of
Paseman and Maes
Appellant argues the Examiner has mischaracterized Maes as teaching
instant messaging services and that the Examiner’s findings are therefore
faulty. Reply 4. Appellant also asserts “Maes explicitly discloses either
using a single identity that is not associated with any wireless networks or
using the identity associated with the first wireless network that is being
accessed.” App. Br. 11 (emphasis omitted). Appellant additionally argues
Paseman does not teach multiple instant messaging services. App. Br. 12.
The Examiner finds the combination of Paseman and Maes teaches
the limitations of claim 1. Ans. 7-8, 32, 33-34. In particular, the Examiner
finds Paseman teaches everything in claim 1 except “enabling access to a
first instant messaging service using an online identity that is associated with
a second instant messaging service.” Id. The Examiner finds Paseman
teaches at least two messaging services. Ans. 32, 34. The Examiner relies
on Maes for its teaching of enabling roaming between services and finds
Maes’ “‘enable roaming’ is similar to enable access.” Ans. 7. The
Examiner finds it would have been obvious to combine Maes’ teaching of
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roaming from one network to another with Paseman’s teaching of
integrating multiple social networks, thus resulting in seamless access
among the various social networks of Paseman. Ans. 8.
To the extent Appellant argues that Maes does not teach multiple
instant messaging services or that Paseman does not teach enabling access
between two instant messaging services, the Examiner finds Appellant’s
arguments improperly focus on a single reference when the rejection is
based on a combination of references.
We agree with the Examiner that Paseman teaches at least two instant
messaging services and integrating various social networks, including instant
messaging. We disagree with Appellant’s contention that Maes does not
teach using an identity associated with one network to access a second
network. Paragraph 40 of Maes, referred to by both Appellant and the
Examiner, describes a scenario where a user of a first network may have a
username that is not available in a second network. Maes then explains a
few alternatives in how the system may use the user ID of the first network
to enable access using the second network, one of which is “storing a table
for each registered user that tracks various identities of the user as known to
different networks the user may access the Internet with.” Maes ¶ 40.
Therefore, we also agree with the Examiner that Maes teaches enabling
access to one network using the identity from another network.
Neither are we persuaded by Appellant’s argument that the Examiner
has mischaracterized Maes’ teachings. The Examinercorrectly finds Maes
teaches enabling access for one network using an identity from a second
network and that the combination of Maes and Paseman (which teaches
integrating social network and IM systems) teaches or suggests enabling
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access to one IM service using the identity from a second IM service. Ans.
32.
The Examiner has pointed to sufficient teachings in the combination
of Paseman and Maes to support a finding of obviousness and has provided a
motivation with a rational underpinning. Ans. 8. Appellant has not
presented sufficient evidence to persuade us of error in the Examiner’s
findings and we therefore sustain the rejection of claim 1. The rejection of
independent claims 25 and 35, not argued separately, are therefore sustained
for the same reasons.

Claims 2, 3, 26, and 27 Rejected under 35 U.S.C. § 103(a)
Claims 2, 3, 26, and 27 are directed to sending requests for
publication rules from one IM service to another IM service and receiving
the rules at the requesting IM service from the other IM service. We note
that these claims merely recite sending a request for data and receiving the
requested data without including recitations that functionally tie the data to
any other step in the claims.
We need not give patentable weight to descriptive material absent a
new and unobvious functional relationship between the descriptive material
and the substrate. See In re Lowry, 32 F.3d 1579, 1582-1583 (Fed. Cir.
1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); see also Ex parte
Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff'd, 191 Fed.Appx.
959 (Fed. Cir. 2006) (summary affirmance). Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious. In re Ngai, 367 F.3d at 1339.
Therefore, because the Examiner’s findings support a teaching of
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sending a request for data from a first IM service to a second IM service and
receiving data at the first IM service from the second IM service, we sustain
the Examiner’s obviousness rejection of claims 2, 3, 26, and 27.

Claims 4-24, 28-34, and 36-48 Rejected under 35 U.S.C. § 103(a)
Appellant does not present separate argument for dependent claims 4-
24, 28-34, 36, and 40-48 under 35 U.S.C. § 103(a). Regarding claims 37-39,
Appellant merely argues the claims are not obvious due to their dependency
on claim 1. App. Br. 15. Therefore, for the same reasons as discussed
above with respect to the independent claims, we sustain the rejection of
dependent claims 4-24, 28-34, and 36-48.

DECISION
For the above reasons, the Examiner’s decision to reject claims 1-48
under 35 U.S.C. § 103(a) and the Examiner’s decision to reject claims 25-34
and 40 under 35 U.S.C. § 101 are 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

kis