Ex Parte McMahan et alDownload PDFPatent Trial and Appeal BoardJun 20, 201310710913 (P.T.A.B. Jun. 20, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PAUL MCMAHAN, ROBERT LEAH, PATRICK R. GUIDO, and KENT FILLMORE HAYES JR. ____________________ Appeal 2011-001914 Application 10/710,913 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001914 Application 10/710,913 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 2, 5-16, 20, 21, 40, 43, 44, 46, 47, and 50-56. (App. Br. 2; Ans. 2). Claims 3, 4, 17-19, and 22-39 have been canceled. (Id.) The Examiner objected to claims 41, 42, 45, 48, 49, 53, and 55 as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. (Non-final rejection September 30, 2009, page 2). The Examiner then instituted a new ground of rejection for claims 52-56. (Ans. 3-4). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION Appellants’ claimed invention is generally related to “communications and more particularly to a method and system for managing interrupts in an instant messaging application, text messaging or similar communications application or functionality.” (Spec. ¶ [0001].) Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A computer implemented method for managing interrupts in an instant messaging application, comprising: receiving an interrupt request from an interrupting contact during an ongoing instant messaging conversation between at least two contacts each using a communications device, wherein the interrupt request is received by the communications device of at least one of the at least two contacts; Appeal 2011-001914 Application 10/710,913 3 determining at least one of whether the interrupting contact has an interrupt priority ranking associated with the interrupting contact in a contacts list of the communications device receiving the interrupt request that is higher than, or at least as high as, an interrupt priority ranking of each of the at least two contacts participating in the ongoing instant messaging conversation and whether an interrupting conversation has a higher priority compared to a priority of the ongoing instant messaging conversation set by at least one of the at least two contacts participating in the ongoing instant messaging conversation in their communications device; and interrupting the ongoing instant messaging conversation in response to a predetermined one of the interrupt priority ranking of the interrupting contact being higher than, or at least as high as, the interrupt priority ranking of each of the at least two contacts participating in the ongoing instant messaging conversation and the interrupting conversation having a higher interrupt priority ranking compared to the interrupt priority ranking of the ongoing instant messaging conversation. REFERENCES Brewer US 5,611,040 Mar. 11, 1997 Savage, III US Pat. Pub. 2001/0009014 A1 July 19, 2001 Suorsa US Pat. Pub. 2002/0156831 A1 Oct. 24, 2002 Brown US Pat. Pub. 2003/0055908 A1 Mar. 20, 2003 Brandenberg US Pat. Pub. 2003/0063072 A1 Apr. 3, 2003 Erb US Pat. Pub. 2004/0142703 A1 July 22, 2004 Kirkland US Pat. Pub. 2005/0149622 A1 July 7, 2005 Horvitz ’082 US Pat. Pub. 2005/0084082 A1 Apr. 21, 2005 Horvitz ’014 US Pat. Pub. 2005/0132014 A1 June 16, 2005 Asokan US Pat. Pub. 2005/0220079 A1 Oct. 6, 2005 Balasuriya US Pat. Pub. 2005/0245240 A1 Nov. 3, 2005 Appeal 2011-001914 Application 10/710,913 4 REJECTIONS Claims 52-56 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (Ans. 4-5.) Claims 1, 5, 10, 16, 40, 43, 44, 46, 47, 51, and 52 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brandenberg, Erb, Brown, and Horvitz ’014. (Ans. 5-16.) Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Brandenberg, Erb, Brown, Horvitz ’014, and Kirkland. (Ans. 16-17.) Claims 6, 7, and 20, stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brandenberg, Erb, Brown, Horvitz ’014, and Brewer. (Ans. 17-20.) Claims 8 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brandenberg, Erb, Brown, Horvitz ’014, and Asokan. (Ans. 20-22.) Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Brandenberg, Erb, Brown, Horvitz ’014, and Balasuriya. (Ans. 22-23.) Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brandenberg, Erb, Brown, Horvitz ’014, and Horvitz ’082. (Ans. 23-25.) Claims 13, 14, and 50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brandenberg, Erb, Brown, Horvitz ’014, and Savage. (Ans. 25-27.) Appeal 2011-001914 Application 10/710,913 5 Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Brandenberg, Erb, Brown, Horvitz ’014, and Suorsa. (Ans. 27-29.) ANALYSIS 35 U.S.C. §101 The Examiner maintains the broadest reasonable interpretation of the claimed "computer readable storage medium" is a transitory propagating signal. (Ans. 5). We agree with the Examiner. Appellants contend that the "storage medium" does not equate to a "transitory signal." Appellants further contend the computer readable storage medium defines a structural and functional interrelationship between the computer usable program code and the physical storage medium. (Reply Br. 3-4). We disagree with Appellants and further note Appellants' Specification clearly indicates the scope of the claimed invention covers a program printed on paper (Spec. ¶ [0043]) and also communication "signals" which may be "downloaded" ("any medium that may contain, store, communicate or transport the program for use by or in connection with a system" and "The computer-usable or readable medium could also be paper or another suitable medium upon which the program may be printed.") (Spec. ¶¶ [0040] and [0043]). Therefore, we sustain the rejection of representative independent claim 52 and claims 53-56 which have not been argued separately. Appeal 2011-001914 Application 10/710,913 6 35 U.S.C. §103 With respect to representative independent claim 1, Appellants repeat the language of the claim, repeat portions of the prior art references, and conclude none of the cited documents teach or suggest the features of independent claim 1 with respect to determining “whether the interrupting contact has an interrupt priority ranking…." (App. Br. 5-9). We find the Examiner’s motivation to combine the teachings of these references is supported by an articulated reasoning with some rational underpinning justifying the Examiner’s obviousness conclusion. (Ans. 6-15; 29-32). We agree with the Examiner and adopt the Examiner's line of reasoning as our own. (Id.). Therefore, we find Appellants' argument to be unpersuasive of error in the Examiner's ultimate conclusion of obviousness, and we sustain the rejection of independent claim 1. With respect to dependent claims 5 and 10, Appellants rely upon the arguments advanced with respect to independent claim 1. Appellants similarly rely upon the arguments advanced with respect to independent claim 1 for independent claims 16, 40, 47, and 52. Since we find Appellants' argument to be unpersuasive of error in the Examiner's conclusion of obviousness of independent claim 1, we find Appellants’ argument unpersuasive with respect to independent claims 16, 40, 47, and 52. In the absence of separate arguments with respect to claims subject to the same rejection, those claims stand or fall with the claim for which an argument was made. See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii). With respect to claims 43, 44, 46, and 51, Appellants rely on the arguments advanced with respect to their respective dependent claims which Appeal 2011-001914 Application 10/710,913 7 Appellants previously relied upon with respect to independent claim 1. (App. Br. 8-9). Therefore, claims 5, 10, 16, 40, 43, 44, 46, 47, 51, and 52 all fall with representative claim 1. With respect to dependent claims 2, 6, 7-9, 11-15, 20, 21, and 50, we note the Examiner has not expressly addressed Appellants’ arguments to dependent claims (grouped as follows by Appellants: (1) 2; (2) 6, 7, and 20; (3) 9; (4) 11 and 12; (5) 13, 14, and 50; and (6) 15). (App. Br. 9-15). From our review of the Examiner's statement of the rejections for these dependent claims, we find the Examiner has set forth sufficient factual findings with rational underpinnings for the combination. Furthermore, Appellants’ arguments generally follow a pattern of: (1) reciting the claim limitations, (2) stating a general teaching of the prior art, and (3) merely alleging a general assertion that the claimed invention is "patently distinguishable" or "patentably distinct" over the prior art references. We find these general assertions are not substantive arguments for patentability which show error in the Examiner’s legal conclusion of obviousness. Merely reciting the language of the claim is insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf . Here, we Appeal 2011-001914 Application 10/710,913 8 find Appellants’ arguments conclusory in nature and fail to address the thrust of the Examiner’s obviousness rejections. On this record, we find Appellants have failed to present substantive arguments and supporting evidence persuasive of Examiner error. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). CONCLUSION The Examiner did not err in rejecting claims 52-56 under 35 U.S.C. § 101. The Examiner did not err in rejecting claims 1, 2, 5-16, 20-21, 40,43, 44, 46, 47, 50-52, 54, and 56 under 35 U.S.C.§ 103. DECISION The Examiner’s decision rejecting claims 52-56 under 35 U.S.C. § 101 is affirmed. The Examiner’s decision rejecting claims 1, 2, 5-16, 20- 21, 40, 43, 44, 46, 47, 50-52, 54, and 56 under 35 U.S.C. § 103is 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 tkl Copy with citationCopy as parenthetical citation