Ex Parte Lyle et al

Patent Trial and Appeal Board

Feb 26, 2013

11110231 (P.T.A.B. Feb. 26, 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.
11/110,231 04/20/2005 Ruthie D. Lyle LOT920050027US1 (096) 1693
46321 7590 02/26/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
TRAN, JIMMY H
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
02/26/2013 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 RUTHIE D. LYLE and ARTHUR R. FRANCIS
_____________

Appeal 2010-009274
Application 11/110,231
Technology Center 2400
______________

Before ROBERT E. NAPPI, LYNNE E. PETTIGREW, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

ROBERT E. NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009274
Application 11/110,231

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This is a decision on appeal1 under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 15.
We affirm.

INVENTION
The invention is directed a method of collecting and rendering
statistics in a collaborative session. See Specification paras. [0006-0010].
Claim 1 is representative of the invention and reproduced below:
1. A method for utilizing group statistics for a group participating in a
collaborative session, the method comprising the steps of:
collecting group statistics for a grouped set of participants designated
to participate in a collaborative session provided by a human-to-human
collaborative tool executing in a computing system, the group statistics
comprising a percentage of the participants in the set having a particular
status; and,
rendering said group statistics in a user interface in association with a
hierarchical listing of participants in said collaborative session.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 3 through 10, and 12 through 15
under 35 U.S.C. § 103(a) as unpatentable over Engstrom (US 2004/0172481
A1) and Dresden (US 2005/0177613 A1). Answer 3-8.2
The Examiner has rejected claims 2 and 11 under 35 U.S.C. § 103(a)
as unpatentable over Engstrom, Dresden, and Salmi (US 2003/0037103 A1).
Answer 8-9.

1 The Real Party in Interest is International Business Machines Corp.
Appeal 2010-009274
Application 11/110,231

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ISSUES
Appellants argue on pages 4 through 9 of the Appeal Brief that the
Examiner’s rejections under 35 U.S.C. § 103(a) are in error.3 These
arguments present us with the following issues:
a) Did the Examiner provide a reasoned rationale as to why the
skilled artisan would combine Engstrom and Dresden?
b) Did the Examiner err in finding that the combined references teach
collecting statistics in a collaborative session provided by a
human-to-human collaborative tool as claimed?
c) Did the Examiner err in determining that Engstrom and Dresden
are in the same field of endeavor?

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We disagree with Appellants’ conclusions with respect to each
of the three issues raised.
With respect to the first issue, the Examiner has responded providing
a well-reasoned rationale. Answer 9-10. The Examiner finds that Engstrom
aggregates presence information (both physical and virtual presence) and
displays a portion of the statistics. Answer 10. Further, the Examiner finds
that Dresden’s teachings relate to gathering statistics on internet user

2 Throughout this opinion we refer to the Examiner’s Answer mailed on
March 18, 2010.
3 Throughout this opinion we refer to Appellants’ Appeal Brief filed
December 9, 2009.
Appeal 2010-009274
Application 11/110,231

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behavior and includes a teaching directed to presenting one type of statistic,
percentage of users. Answer 10. Based upon these findings the Examiner
concludes that the skilled artisan would use the percentage of users in
Engstrom’s system as it will expand upon the statistics already displayed by
Engstrom. Answer 10. We concur with the Examiner as the findings are
supported by the teachings of the disclosures and the combination merely
represents the use of known methods of presenting statistics of users. Thus,
Appellants’ arguments directed to the first issue (Brief 4-6) have not
persuaded us of error in the Examiner’s rejections.
With respect to the second issue, Appellants’ arguments center on
Engstrom’s mobile devices not being a human-to-human collaborative tool.
Brief 6-7. We are not persuaded of error by this argument for two reasons.
Initially, we note the limitation directed to the human-to-human tool is
identifying the type of data being collected and the claim recites no function
being performed based upon this data. Thus, the limitation is merely
defining non-functional descriptive material which will not define the
invention over the prior art.4 Further, the Examiner has shown that
Engstrom’s mobile device provides a human-to human collaborative tool as
it is used to participate in chat rooms and to communicate with others.
Answer 11. Appellants’ Specification identifies that chat rooms are an
example of a human-to-human collaborative tool. Specification para.

4 The Examiner 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 Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); Ex parte Curry,
84 USPQ2d 1272 (BPAI 2005).
Appeal 2010-009274
Application 11/110,231

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[0004]. Thus, Appellants’ arguments directed to the second issue have not
persuaded us of error in the Examiner’s rejections.
With respect to the third issue, Appellants argue that Engstrom and
Dresden are published in two different subclasses of patent class 709 and
therefore, are in different field of endeavors. Brief 8-9. The Examiner in
response provides an explanation of the classification of the two patent
publications and finds that they are from the same field of endeavor, remote
data accessing. Answer 12. We concur, and further note that, as discussed
above with respect to the first issue, both publications are not only
concerned with remote data accessing but also gathering and presenting
statistics concerning the data accessing. Thus, Appellants’ arguments
directed to the third issue have not persuaded us of error in the Examiner’s
rejections.
As Appellants’ arguments directed to the three issues raised in the
Appeal Brief have not persuaded us of error in the Examiner’s rejections, we
sustain the Examiner’s rejections under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner to reject claims 1 through 15 is
affirmed.

AFFIRMED

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