Ex Parte Maehiro

Board of Patent Appeals and Interferences

Oct 26, 2009

10106350 (B.P.A.I. Oct. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAZUTOYO MAEHIRO
____________

Appeal 2009-001347
Application 10/106,350
Technology Center 2400
____________

Decided: October 26, 2009
____________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
JOHN A. JEFFERY, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4, and 7, which are all of the remaining claims in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Invention
Appellant’s invention relates to a status notifying method, server, and
communication system. A profile server group determines whether any
request for status notification is received from the client. If there is a request
for status notification, a handle name included in the request is obtained, and
a status flag corresponding to the handle name is extracted from the hard
disk. Next, the status flag is checked. If the on-line flag is set to “ON,” the
user status is checked. If the user status is not “IN HIDING,” the user status
is notified. On the other hand, when the on-line flag is set to “OFF,” the
client with the handle name relating to the request notifies that it is offline.
Abstract.

Representative Claim
1. A status notifying method performed in a server
operating in a communication system, including a plurality of clients
and the server, for notifying a connection status of the plurality of
clients regarding connection to a communication network, at least a
selected one of the clients having multiple user names, the method
comprising:
storing in a first memory device the connection status for each
user name of the selected client and information on whether
notification of the connection status is allowed, the connection status
and information being sent from the plurality of clients;
receiving an instruction for updating the connection status from
the selected one of the plurality of clients to one of an online status
and an offline status, the selected client being associated with at least
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two user names each of which is used for connecting to the
communication network;
updating the connection status to the one of an online status and
an offline status for all of the user names associated with the selected
client that sent the update instruction;
receiving a request for notification of the connection status
from one of the plurality of clients;
determining, in response to the received request, whether the
connection status is allowed to be notified based on the information
stored in the first memory device; and
notifying the connection status stored in the first memory
device only when it is determined that the connection status is allowed
to be notified.

Prior Art
Bunney 6,446,112 B1 Sep. 3, 2002

Trillian instant messaging software, version 0.62, developed by
Cerulean Studios (released Jan. 28, 2001), and associated documents cited as
evidence of its functionalities (“Trillian”):

Archived web page Cerulean Studios - Creators of Trillian,
obtained from the Internet Archive Wayback Machine,
http://web.archive.org/web/20010202033300/http://www.trillian.cc
(Feb. 2, 2001);

Trillian 0.62 screenshots provided by the Examiner (identified
as Figures 1-3); and

Trillian - Oldversion.com web page,
http://www.oldversion.com/program.php?n=trillian.
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Examiner’s Rejections
Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bunney and Trillian.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Has Appellant shown that the combination of Bunney and Trillian
fails to teach “updating the connection status to the one of an online status
and an offline status for all of the user names associated with the selected
client that sent the update instruction” as recited in claim 1?

FINDINGS OF FACT
1. Bunney discloses a server 1 connected to clients 3 by the
Internet 2. Fig. 1; col. 5, ll. 15-17.
2. The server 1 includes a session manager 23 and a name
resolution table 6. Fig. 2.
3. The session manager 23 determines who is currently online and
available. Table 1; col. 7, ll. 27-58; col. 9, ll. 15-18.
4. A plurality of addresses can be assigned to one user. Fig. 3;
col. 9, ll. 34-47.
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5. The name resolution table 6 stores assignment information
indicating which addresses are assigned to the same user. Fig. 3; col. 9, ll.
50-56.
6. In the case that an email message is sent to one address for the
user, but the user has logged in using a different address, the server 1, using
the session manager 23 and name resolution table 6, determines that the user
is in a logged in state with another address. A notification can then be sent
to the user from the server. Col. 10, ll. 1-12.
7. The user can associate the “Do not disturb” sign for a limited
number of his identities. The user can also choose that he is completely
invisible for predefined identities among all identities assigned to him. Col.
10, ll. 13-23.

PRINCIPLES OF LAW
Claim Interpretation
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002)).

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Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17
(1966). “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Appellant contends that the different addresses discussed in Bunney
are controlled independently and that, accordingly, their online/offline
connection statuses will also be controlled independently (App. Br. 7; Reply
Br. 3-4). Appellant extends this contention to allege that Bunney “teaches
away” from simultaneously updating the status of all of a user’s addresses
(App. Br. 7-8; Reply Br. 3).
However, Appellant has failed to cite any portion of Bunney that
teaches independently controlling different addresses. Appellant has also
failed to show how independently controlling different addresses, even if
Bunney were to describe such “independent” control, would “teach away”
from simultaneously updating the status of all of a user’s addresses. Further,
claim 1 does not recite “simultaneously updating the status of all of a user’s
addresses” and Appellant has provided no evidence or persuasive arguments
for reading this limitation into the claim. Claim 1 recites “updating the
connection status to the one of an online status and an offline status for all of
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the user names associated with the selected client that sent the update
instruction.”
Bunney teaches that a plurality of identities can be assigned to one
user (FF 4), and that the user can update his online status by associating a
“do not disturb” sign for a limited number of identities (FF 7). Bunney also
teaches that the user can choose that he is completely invisible for
predefined identities among all identities assigned to him (id.).
Appellant’s contention that Bunney does not teach “simultaneously
updating the status of all of a user’s addresses” appears to be based on the
premise that updating an online status for a limited number of identities as
taught by Bunney does not and cannot include updating the online status for
all of the user’s identities. Appellant fails to provide evidence to show that
the limited number of identities that are updated as discussed in Bunney
must be less than all of the user’s identities. Logically, the total number of
identities for a user is not infinite, but is a limited number. Therefore,
“updating the connection status to the one of an online status and an offline
status for all of the user names associated with the selected client that sent
the update instruction” as recited in claim 1 does not distinguish over
updating the online status for a limited number of a user’s identities, where
the limited number is the total number of the user’s identities.
We find that a person of ordinary skill in the art at the time of
invention, understanding that a user can update his online status for
predefined identities among all identities assigned to him as taught by
Bunney, would have recognized that the limited number of predefined
identities that can be updated may include all identities. Appellant has
provided no evidence to show that using all identities as the limited number
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of predefined identities taught by Bunney “was uniquely challenging or
difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418-19).
Appellant contends that Trillian fails to teach “updating the
connection status to the one of an online status and an offline status for all of
the user names associated with the selected client that sent the update
instruction” (App. Br. 8-12; Reply Br. 4-8). Because Bunney alone teaches
the argued “updating,” we find that the combination of Bunney and Trillian
teaches “updating the connection status to the one of an online status and an
offline status for all of the user names associated with the selected client that
sent the update instruction.” We consider Trillian to be merely cumulative
in its teachings in the rejection applied against instant claim 1.
Appellant contends that a person of ordinary skill in the art would
have had no reason to combine the teachings of Bunney and Trillian (App.
Br. 14-15; Reply Br. 6-8) to achieve “updating the connection status to the
one of an online status and an offline status for all of the user names
associated with the selected client that sent the update instruction” as recited
in claim 1. Because Bunney alone teaches the “updating,” we find this
argument unpersuasive.
Appellant alleges that each of independent claims 4 and 7 recites
updating the connection status to the one of an online status and an offline
status for all of the user names associated with the selected client that sent
the update instruction (App. Br. 11-14). Appellant alleges error in the
rejections, however, by repeating the argument, submitted in response to the
rejection of claim 1, that the references do not teach the “updating” step. To
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the extent that Appellant’s remarks might be considered to rise to the level
of separate arguments for patentability (cf. 37 C.F.R. § 41.37(c)(1)(vii)),
Appellant has not explained why one of ordinary skill in the art at the time
of invention, in view of Bunney, would be unable to update the connection
status for all of the user names associated with the selected client. We are
therefore not persuaded of error in the § 103 rejection.

CONCLUSION OF LAW
Appellant has not shown that the combination of Bunney and Trillian
fails to teach “updating the connection status to the one of an online status
and an offline status for all of the user names associated with the selected
client that sent the update instruction” as recited in claim 1.

DECISION
The rejection of claims 1, 4, and 7 under 35 U.S.C. § 103(a) as being
unpatentable over Bunney and Trillian 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

msc

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON VA 20191