Ex Parte McCarty

Board of Patent Appeals and Interferences

May 17, 2010

10347095 (B.P.A.I. May. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD JAMES MCCARTY
____________

Appeal 2009-0059391
Application 10/347,095
Technology Center 2400
____________

Decided: May 17, 2010
____________

Before JOHN A. JEFFERY, JOSEPH L. DIXON, and JEAN R. HOMERE,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-48. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

1 This appeal is related to an appeal in another application, Ser. No.
10/347,087 (Appeal No. 2009-005908). App. Br. 3; Ans. 2.
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STATEMENT OF THE CASE
Appellant’s invention publishes privacy codes in connection with an
instant messaging system. The privacy codes are needed by a recipient
system before delivering the instant message. See generally Abstract.
Claim 1 is illustrative with key disputed limitations emphasized:
1. A method of communication comprising:

receiving a request message to establish an instant messaging
connection between a recipient system and a sender system; and

obtaining a privacy code from the sender system before
establishing the requested instant messaging connection, wherein the
privacy code is associated with a single user.

The Examiner relies on the following as evidence of unpatentability:
Waite US 6,434,600 B2 Aug. 13, 2002
Turner US 2003/0018725 A1 Jan. 23, 2003
(filed Oct. 26, 2001)
Chang US 2004/0103153 A1 May 27, 2004
(filed Nov. 21, 2002)
Lee US 6,973,571 B2 Dec. 6, 2005
(filed July 3, 2001)

THE REJECTIONS
1. The Examiner rejected claims 1, 3, 4, 6, 8, 9, 11, 13, 14, 16-18, 20-22,
24-29, 31-33, 35-40, 42-44, and 46-48 under 35 U.S.C. § 103(a) as
unpatentable over Waite and Turner. Ans. 3-8.2
2. The Examiner rejected claims 2, 7, 12, 19, 30, and 41 under 35 U.S.C.
§ 103(a) as unpatentable over Waite, Turner, and Lee. Ans. 8-10.

2 Throughout this opinion, we refer to the Appeal Brief filed January 21,
2008 and the Examiner’s Answer mailed February 22, 2008.
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3. The Examiner rejected claims 5 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Waite, Turner, Lee, and Chang. Ans. 10-11.
4. The Examiner rejected claims 15, 23, 34, and 45 under 35 U.S.C.
§ 103(a) as unpatentable over Waite, Turner, and Chang. Ans. 11-13.

CLAIM GROUPING
Appellant argues the following claim groupings separately regarding
the first obviousness rejection: (1) claims 1, 6, 11, 16, 27, and 38 (along
with claims 3, 4, 6, 8, 9, 11, 13, 14, 16, 27, and 38 which were not separately
argued); (2) claims 17, 28, and 39; (3) claims 18, 29, and 40; (4) claims 25,
36, and 47. See Br. 12-26. Accordingly, we treat each group separately, and
select claims 1 and 17 as representative of groups (1) and (2), respectively.
See 37 C.F.R. § 41.37(c)(1)(vii).
We also select claims 2, 5, and 15 as representative for the claim
groups corresponding to the second, third, and fourth obviousness rejections,
respectively.

THE OBVIOUSNESS REJECTION OVER WAITE AND TURNER
Regarding representative claim 1, the Examiner finds that Waite
discloses every recited step except for an instant message connection, and
cites Turner for this feature in concluding claim 1 would have been obvious.
Ans. 3-5. In reaching this conclusion, the Examiner notes that Waite’s
“delivering mail server” (which the Examiner equates to the recited “sender
system”) sends a receiving mail code to the “receiving mail server” (i.e., the
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“recipient system”) before delivering email. Ans. 14. The Examiner adds
that the delivering mail server generates a receiving mail server code that is
sent to the receiving mail server to facilitate mail delivery. Ans. 15.
Appellant argues that since Waite’s delivering mail server never has
access to the mail server code, the code cannot be obtained from the sender
system as claimed, let alone obtaining the code before establishing a
requested instant messaging connection. Br. 13-15. Appellant adds that not
only does Turner fail to cure these deficiencies, but there is no reason to
combine the references as proposed. Br. 16-17. Moreover, Appellant
contends, the Examiner’s proposed combination would change Waite’s
principle of operation of securely delivering electronic mail. Br. 18.
According to Appellant, the above-noted deficiency of Waite allegedly
teaches away from the claimed invention. Br. 19.
Regarding representative claim 17, Appellant argues that since
Waite’s receiving mail server does not send the mail server code to the
delivering mail server, Waite fails to teach or suggest sending a second
instant message requesting a privacy code from the recipient to the sender
system as claimed. Br. 23-24.
Regarding representative claim 18, Appellant argues that since
Waite’s server code is not contained within a message, the prior art fails to
teach or suggest accepting the first instant message if the third instant
message sent from the sender system contains a valid privacy code.
Br. 24-25.
Regarding claim 25, Appellant argues that Waite does not teach or
suggest activating privacy functionality in accordance with temporal
parameters. Br. 25. In this regard, Appellant contends that Waite does not
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condition the use or activation of the mail server code on any parameters, let
alone temporal parameters as claimed. Id.
The issues before us, then, are as follows:

ISSUES
(1) Under § 103, has the Examiner erred by finding that Waite and
Turner collectively would have taught or suggested:
(a) obtaining a privacy code from a sender system before establishing
a requested instant messaging connection, where the code is associated with
a single user as recited in claim 1?
(b) sending a second instant message requesting a privacy code from
the recipient system to the sender system before delivering the first instant
message as recited in claim 17?
(c) accepting the first instant message if the third instant message sent
from the sender system contains a valid privacy code as recited in claim 18?
(d) activating privacy functionality in accordance with temporal
parameters as recited in claim 25?

(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

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FINDINGS OF FACT (FF)
1. Waite’s system securely delivers electronic mail (“email”) to email
servers having dynamic IP addresses. Figures 2 and 3 detail how mail is
sent from a “delivering mail server” 103 to a “receiving mail server” 101.
Waite, Abstract; col. 1, ll. 6-12; col. 8, l. 57 – col. 10, l. 24; Figs. 2-3.
2. To this end, a “receiving mail server” 101 registers (1) a dynamic
IP address, and (2) a “receiving mail server code” with a “dynamic name
server” 102. Then, the receiving mail server requests mail delivery for a
domain name from the delivering mail server which, in turn, transmits a
request to a “private name server” 104 for the name of the appropriate mail
server. The private name server then transmits the record linking the domain
name and the receiving mail server code to the delivering mail server which,
in turn, sends a request to the private name server for the dynamic IP address
corresponding to the code. The private name server then sends this request
to the dynamic name server. The dynamic name server then extracts and
sends a record including the receiving mail server’s dynamic IP address to
the private name server which, in turn, sends this record to the delivering
mail server. Waite, col. 8, l. 57 – col. 10, l. 24; Figs. 2-3 (Steps ST1-ST8).
3. After this process, delivering mail server 103 delivers email to the
receiving mail server 101. Waite, col. 10, ll. 15-17; Fig. 2-3 (Step ST9).
4. The receiving mail server 101 or delivering mail server 103 can
generate the receiving mail server code. Moreover, the receiving mail server
code can be (1) generated by a program executing on an ISP machine, and
(2) downloaded to the receiving mail server 101 the first time that the
receiving mail server connects to the ISP (e.g., during setup). Waite, col. 10,
ll. 42-50.
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5. Once the receiving mail server code is generated, it is preferably
stored by the receiving mail server 101. Waite, col. 10, ll. 59-63.
6. Multiple domain names can be linked with the same receiving mail
server code. Waite, col. 9, ll. 56-57.
7. After establishing an SMTP connection with an SMTP mail server,
a user may enter the command “TURN smallbiz.com.” The delivering mail
server then delivers all mail intended for “smallbiz.com” to the user’s IP
address without extracting the MX record from a DNS server to determine
whether the user is a mail server authorized to receive mail for
smallbiz.com.” Waite, col. 12, ll. 20-27.
8. According to Appellant’s Specification, “a user interacts with a
system such that the system performs actions on behalf of a user, and the
terms ‘user’ and ‘system’ can sometimes be interchanged in a well-known
manner . . . .” Spec. 13:18-21.
9. Turner discloses an instant messaging (IM) environment to
establish hosted application sharing sessions between a hosted application
user and other users in the IM environment. Turner, Abstract.
10. To this end, security features can be used in Turner including
encrypting the application sharing parameters that passed between IM
clients, and (2) an opaque way of exposing the application sharing
parameters to the IM clients such that users do not see the actual commands,
accounts, and passwords used to establish the session. Turner, ¶ 0046.
11. Turner’s IM environment is a network-based platform that
delivers text chat and other information in real time, thus enabling users to
conveniently and efficiently collaborate with each other. Turner, ¶¶ 0017,
0037.
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12. Turner’s Figure 7 shows an exemplary sales process embodiment
such that if a sales person has permission to share the hosted application of a
prospect, the IM software may send a request to the prospect to retrieve the
application sharing parameters. The prospect’s IM client can (1) encrypt the
application sharing parameters needed to establish a session, and (2) transmit
them through the IM system to the sales person. When the sales person’s IM
software receives the information, it may begin a background process of
determining if the sales person can connect to the hosted application server.
Turner, ¶ 0064; Fig. 7 (steps 718, 720).

PRINCIPLES OF LAW
“‘Comprising’ is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.” Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (citation omitted).
To be patentable under § 103, an improvement must be more than the
predictable use of prior art elements according to their established functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
If the Examiner’s proposed modification renders the prior art
unsatisfactory for its intended purpose, the Examiner has failed to make a
prima facie case of obviousness. See In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984).

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ANALYSIS
Claims 1, 3, 4, 6, 8, 9, 11, 13, 14, 16, 27, and 38
We will sustain the Examiner’s rejection of representative claim 1
which calls for, in pertinent part, obtaining a privacy code from a sender
system before establishing a requested instant messaging connection.
In reaching this conclusion, we agree with the Examiner (Ans. 10, 12)
that (1) Waite’s “receiving mail server” 101 corresponds to the recited
“recipient system,” and (2) Waite’s “delivering mail server” 103
corresponds to the recited “sender system.” This mapping is amply
supported by Waite since, as these labels suggest, Waite’s delivering mail
server delivers email to the receiving mail server. FF 1, 3.
And Waite’s receiving mail server obtains a privacy code from the
delivering mail server before email is sent to the receiving mail server. This
privacy code (i.e., Waite’s “receiving mail server code”) can be (1) initially
generated by the delivering mail server, (2) sent to the receiving mail server
during setup, and (3) stored. FF 4-5. The receiving mail server then
registers this code along with a dynamic IP address with the dynamic name
server 102. FF 2. Ultimately, this code is used by the private name server
104 and delivering mail server to determine the receiving server’s dynamic
IP address before sending the email. Id.
The key point in this process is that the receiving mail server code is
(1) initially generated by a sender system (i.e., the delivering mail server),
and (2) sent to the receiving mail server before it registers the code. See FF
2, 4; emphasis added. The Examiner’s point in this regard (Ans. 15, 17) is
well taken. Since this initially-received code is needed to determine the
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dynamic IP address, it is therefore obtained by the recipient system (i.e., the
receiving mail server) before it receives an email from the sender system
(i.e., the delivering mail server). See FF 1-4.
That Waite’s private name server 104 needs this code before any
email is received is of no consequence here, for the Examiner did not equate
the private name server with the “recipient system.” See Ans. 14. Rather,
the Examiner equates Waite’s receiving mail server to the “recipient
system.” Id. And as we noted above, the receiving mail server needs the
code before email is delivered. See FF 1-5.
Furthermore, Waite’s server code is associated with at least a single
user as claimed. Leaving aside the fact that the preamble of claim 1 uses the
open-ended term “comprising” which does not preclude additional unrecited
elements (including additional privacy code associations), see Genentech,
112 F.3d at 501, we agree with the Examiner (Ans. 11) that while Waite
indicates that multiple domain names can be linked with the same receiving
mail server code, they do not have to be. See FF 6. Waite’s permissive
word choice here is telling: had Waite intended that multiple domain names
must be linked with the same code, the reference would have surely
indicated as much. But it did not. See id.
In any event, as the Examiner indicates (Ans. 15), Waite discusses an
association between a particular domain name (“smallbiz.com”) and a user.
FF 7. Not only does Waite refer the user in the singular in this discussion,
but Waite even determines whether the user is an authorized mail server for
that domain name. Id. Indeed, this correspondence between a user and an
element of the system (e.g., a server) fully comports with Appellant’s own
usage of the term in the Specification. See FF 8 (noting that “user” and
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“system” are interchangeable terms). Therefore, even assuming, without
deciding, that a domain name is not a “user,” a domain name nonetheless
identifies a mail server which is not only associated with a user as noted
above, but also can actually be a “user” in Waite’s parlance. See FF 7.
Based on these collective teachings, skilled artisans would have therefore
recognized that the privacy code in Waite would have been associated with
at least a single user as claimed.
Nor are we persuaded that the Examiner’s reliance on Turner is
erroneous. The Examiner relied on Turner merely to show that instant
messaging (IM) was a well-known technique of exchanging messages
between users in real time, and that employing such a technique in Waite’s
email-based system would have been obvious. See Ans. 4, 5, 16-17. We see
no error in this reasoning, particularly since Turner touts the fact that the
disclosed network-based IM platform enables convenient and efficient real-
time collaboration between users. FF 11. Enhancing Waite’s email-based
system with such real-time IM capabilities is tantamount to the predictable
use of prior art elements according to their established functions—an
obvious improvement. See KSR, 550 U.S. at 417.
We are also not persuaded that the references teach away from such
an enhancement, particularly since both references pertain to sending
messages over a network as the Examiner indicates. See Ans. 16-17; see
also FF 1, 11. Nor are we persuaded that this enhancement would change
Waite’s principle of operation as Appellant contends (Br. 18) since, as the
Examiner indicates (Ans. 16), instant messaging is fundamentally a faster
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form of electronic messaging as compared to email, and we see no reason
why skilled artisans could not incorporate instant messaging features in
Waite’s system as the Examiner proposes.
To the extent that implementing this instant messaging enhancement
(e.g., as an adjunct or replacement for email) would somehow render
Waite’s system unsatisfactory for its intended purpose, see Gordon, 733
F.2d at 902, is a consequence that simply has not been proven on this record.
That is, apart from mere assertions, Appellant has simply not provided
sufficient evidence on this record to show that this instant messaging
enhancement would render Waite unsatisfactory for its intended purpose.
See Br. 18-19.
And even assuming, without deciding, that Waite and Turner each
provide “complete solutions” to their respective problems as Appellant
asserts (Br. 20-21), that fact hardly negates their combination to arrive at the
claimed invention as the Examiner proposes. That is, despite these alleged
“complete solutions,” enhancing Waite’s email-based system with real-time
IM capabilities as the Examiner proposes is nevertheless tantamount to the
predictable use of prior art elements according to their established
functions—an obvious improvement. See KSR, 550 U.S. at 417. We
therefore find the Examiner’s reason to combine the teachings of the cited
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 3, 4, 6, 8, 9, 11, 13, 14, 16, 27, and 38
which fall with claim 1.

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Claims 17, 28, and 39
We will also sustain the Examiner’s rejection of claim 17 which calls
for sending a second instant message requesting a privacy code from the
recipient system to the sender system before delivering the first instant
message.
As the Examiner indicates (Ans. 19), the receiving mail server will
not receive mail unless it has the receiving mail server code. See FF 1-5.
As we indicated previously, this code is (1) initially generated by a sender
system (i.e., the delivering mail server), and (2) sent to the receiving mail
server before it registers the code. See FF 2, 4. Notably, the code can be
downloaded to the receiving mail server when the receiving mail server code
connects to the system (e.g., during setup). FF 4. Upon receipt, the
receiving mail server code stores the code. See FF 5.
Based on this functionality, ordinarily skilled artisans would have
understood that triggering downloading the code to Waite’s receiving mail
server responsive to its initial connection during setup could have been
achieved via an automatic request for the code sent to the delivering mail
server. See FF 4. We reach this conclusion emphasizing that (1) the
delivering mail server can generate the code, and (2) the code can be
downloaded to the receiving mail server. Id. And since we find that instant
messaging would have been an obvious improvement to Waite’s system in
view of Turner as noted above, Appellant has identified no reason why such
an initial code request could not have been sent from the receiving mail
server to the delivering mail server via instant messaging as claimed.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 17, and claims 28 and 39 which fall with claim 17.
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Claims 18-23, 29-34, and 40-45
We will not, however, sustain the Examiner’s rejection of claim 18
calling for accepting the first instant message if the third instant message
sent from the sender system contains a valid privacy code.
The Examiner’s relies on Turner for teaching sending a privacy code
via an instant message. Ans. 20. As the Examiner indicates, Turner’s
application sharing parameters are “opaquely sent” via encryption to avoid
exposure of the actual commands, accounts, and passwords used to establish
the session. FF 10. And Turner notes that, in the context of an example
involving a session between a seller and a prospect, this encryption and
transmission through the IM system can be achieved via the prospects’ IM
client. FF 12. Notably, the seller’s IM software receives this information to
determine whether the seller can connect to the hosted application server.
Id.
The clear import of this discussion is that application sharing
parameters can be sent securely via the very form of communication
supported by the communications infrastructure in Turner—namely instant
messages. See FF 10-12. Although we can see utilizing such IM techniques
to send the privacy code from the sender system (i.e., the delivering mail
server) to the recipient system (i.e., the receiving mail server) in the
Waite/Turner system as the Examiner proposes, we nonetheless fail to see
where a third distinct instant message is sent from the sender system to the
recipient system that forms the basis for acceptance of the first instant
message, namely basing acceptance of the first instant message on the
validity of the privacy code as claimed.
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To the extent that the Examiner is relying on another server as
constituting the recited “recipient system” that receives the third instant
message is unclear on this record, particularly since the Examiner has clearly
mapped the “recipient system” to the receiving mail server as noted above.
See, e.g., Ans. 14.
We are therefore persuaded that the Examiner erred in rejecting
representative claim 18, and claims 29 and 40 which recite commensurate
limitations. For similar reasons, we will also not sustain (1) claims 19-23;
(2) claims 30-34; and (3) claims 41-45 which depend from claims 18, 29,
and 40, respectively.

Claims 25, 36, and 47
We will also not sustain the Examiner’s rejection of claim 25 which
calls for activating privacy functionality in accordance with temporal
parameters. Although the Examiner cites Turner’s “opaquely” sending
application sharing parameters via instant messaging (Ans. 20; FF 10), the
Examiner does not explain how or why this functionality activates privacy
functionality in accordance with temporal parameters as claimed. This
omission is particularly problematic in view of the privacy functionality
determination recited in claim 24 from which claim 25 depends. That is, the
Examiner has simply not shown that these parameters pertain to any
temporal or time-based aspect, let alone that they form the basis for
activating privacy functionality as claimed.
We are therefore persuaded that the Examiner erred in rejecting claim
25, and claims 36 and 47 which recite commensurate limitations.

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THE OBVIOUSNESS REJECTION OVER WAITE, TURNER, AND LEE
Regarding representative claim 2, the Examiner finds that Waite and
Turner disclose all of the recited subject matter except for managing the
code with a policy engine, but cites Lee for teaching this feature in
concluding the claim would have been obvious. Ans. 7-8.
Appellant argues that Lee does not cure the previously-noted
deficiencies of Waite and Turner regarding claim 1, and adds that the
Examiner’s stated reason to combine the references is insufficient since
there is no evidence that the references suggest a need to validate code
quicker. Br. 26-28.
The issues before us, then, are as follows:

ISSUES
(1) Under § 103, has the Examiner erred by finding that Waite,
Turner, and Lee collectively would have taught or suggested determining
validity of a privacy code with reference to a privacy policy via a policy
engine as recited in claim 2?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

FINDINGS OF FACT
13. Lee’s policy engine 610 determines the validity of an electronic
signature contained in a validation request. Lee, col. 7, ll. 29-53; Fig. 10.

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14. Following processing by the policy decision activity of policy
engine 610, the validation response is transmitted to a secure
communications function 1105 for transmission to a customer service engine
402 via internet 507. Lee, col. 21, ll. 29-34; col. 22, ll. 20-28; Figs. 11-12.

ANALYSIS
We will sustain the Examiner’s rejection of claim 2. First,
Appellant’s arguments regarding Lee’s failure to cure the deficiencies of
Waite and Turner regarding claim 1 (Br. 26-27) are not germane to the
reason why the Examiner cited Lee, namely for the limitations of claim 2 not
claim 1. See Ans. 21. As we indicated previously, we find that Waite and
Turner amply teach the limitations of claim 1.
Nor are we persuaded that the Examiner erred in combining Lee with
these references to arrive at the invention of claim 2, particularly in view of
Lee’s policy engine’s involvement in validating electronic signatures and
transmitting validation responses. See FF 13-14.
Based on these teachings, we see no reason why such a policy engine
could not have been utilized in Waite/Turner system as the Examiner
proposes, particularly since the references at least fundamentally pertain to
secure network-based systems. See FF 1-3, 9-14. Such an enhancement is
tantamount to the predictable use of prior art elements according to their
established functions—an obvious improvement. KSR, 550 U.S. at 417. We
therefore find the Examiner’s reason to combine the teachings of the cited
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
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We are therefore not persuaded that the Examiner erred in rejecting
representative claim 2, and claims 7, 12, 19, 30, and 41 which fall with claim
2.

THE OBVIOUSNESS REJECTION OVER WAITE, TURNER, LEE AND CHANG
Regarding representative claim 5, the Examiner finds that Waite,
Turner, and Lee disclose every recited feature except for forwarding the
instant message to an email address. Ans. 11. The Examiner, however, cites
Chang for teaching this feature in concluding the claim would have been
obvious. Id.
Appellant argues that Chang does not cure the previously-noted
deficiencies regarding claim 1, and adds that the Examiner’s stated reason to
combine the references is insufficient since, among other things, forwarding
a message to an email address in Waite would be redundant. Br. 28-31.
The issues before us, then, are as follows:

ISSUES
(1) Under § 103, has the Examiner erred by finding that Waite,
Turner, Lee, and Chang collectively would have taught or suggested
selecting at least one of the delivery options recited in claim 5?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

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FINDINGS OF FACT
15. Chang’s system monitors and controls network or network
appliance activity via instant messaging software. In this system, the smart
network appliance (SNA) 90 acts as an instant messaging client. Chang,
Abstract, ¶ 0055; Fig. 1.
16. The SNA may have a server that can forward instant messages
sent by the SNA to the controlling users using any communication means,
including IM and electronic mail. Chang, ¶ 0062.

ANALYSIS
We begin by noting that representative claim 5 recites selecting a
delivery option from a group of three alternative options, namely (1)
forwarding the instant message to an email address; (2) placing the instant
message in a message queue; or (3) immediately presenting the instant
message on a display at the recipient system. As alternatives, only one of
these delivery options need be taught or suggested by the prior art to render
the claim unpatentable.
Since the Examiner found that Waite, Turner, and Lee collectively
taught or suggested two of these delivery options, namely options (2) and (3)
(Ans. 11), the Examiner’s reliance on Chang for option (1) is therefore
cumulative. Nevertheless, we find no error in the Examiner’s position.
First, Appellant does not dispute that Chang teaches the forwarding
feature of option (1), but rather argues that Chang fails to cure the
deficiencies of the other cited references regarding the limitations of claim 1.
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See Br. 29-30. The Examiner, however, did not rely on Chang for those
features, but rather for the first recited delivery option of claim 5. See Ans.
11, 22. Appellant’s argument is therefore inapposite.
Second, Chang teaches that instant messages can be forwarded from a
client using not only instant messaging, but also email. FF 15-16.
Therefore, we find no reason why such a technique would not have been
used in the Waite/Turner/Lee system, particularly if instant messaging was
used as an adjunct to email in that system as we noted previously. As the
Examiner indicates (Ans. 22), forwarding instant messages to email
addresses would ensure that users receive the message even if they are
unavailable to receive instant messages. This reasoning has a rational basis
in our view, particularly since instant messages facilitate real-time
communication, whereas email messages can be received at other times. See
FF 1, 11.
We therefore find that forwarding instant messages to email addresses
is tantamount to the predictable use of prior art elements according to their
established functions—an obvious improvement. KSR, 550 U.S. at 417. We
therefore find the Examiner’s reason to combine the teachings of the cited
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 5, and claim 10 which falls with claim 5.

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THE OBVIOUSNESS REJECTION OVER WAITE, TURNER, AND CHANG
For similar reasons, we will also sustain the Examiner’s rejection of
representative claim 15 (Ans. 11-13) which recites limitations similar to
those recited in claim 5. We also sustain the Examiner’s rejection of claims
23, 34, and 45 which fall with claim 15.

CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1-17, 24,
26-28, 35, 37-39, 46, and 48, but erred in rejecting claims 18-23, 25, 29-34,
36, 40-45, and 47.

ORDER
The Examiner’s decision rejecting claims 1-48 is affirmed-in-part.
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-IN-PART

pgc

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