Ex Parte Morris

Patent Trial and Appeal Board

May 30, 2013

10900558 (P.T.A.B. May. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT P. MORRIS
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Appeal 2010-012142
Application 10/900,558
Technology Center 2400
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Before MARC S. HOFF, KRISTEN L. DROESCH, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 44-48 and 50-59. Claims 1-43 and 49 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellant’s invention generally relates to an instant messaging service
in which a user initiates a communication, a status of a recipient is obtained,
and prior to establishing communication, the user is allowed to alter the form
of communication based upon the recipient’s status. See generally Abstract;
Spec. ¶¶ 022-029. Claim 44 is illustrative:
44. A method for utilizing presence information with a device
comprising:
responsive to a communication to a recipient being
initiated by a user of the device and prior to establishing
communication with the recipient:
obtaining identification information for the
recipient from the user via a user interface;
obtaining status information for the recipient
corresponding to the identification information from a
presence service; and
presenting the status information via the device.

THE REJECTIONS
1. Claims 44, 45, 48, 52, and 53 stand rejected under 35 U.S.C.
§ 102(a) as anticipated by Liscano (US 7,412,522 B2; filed Aug. 1, 2003;
issued Aug. 12, 2008). Ans. 3-5.1
2. Claims 46, 47, 50, 51, 54, and 55 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Liscano and Smith (US 6,799,196 B1; filed
Jan. 21, 2000; issued Sep. 28, 2004). Ans. 5-7.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed Mar. 11,
2010 (“App. Br.”); and (2) the Examiner’s Answer mailed Jun. 10, 2010
(“Ans.”).
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3. Claims 56-59 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Liscano and what is well-known in the art. Ans. 7-8.

THE ANTICIPATION REJECTION OVER LISCANO
The Examiner finds that Liscano discloses every recited element of
representative claim 44. Ans. 4.
Appellant argues that Liscano does not disclose the “obtaining” steps
because (1) Liscano’s status information is received prior to initiating a
communication and not “responsive to a communication to a recipient being
initiated by a user;” (2) Liscano’s status information in the notify event does
not “correspond[] to the identification information” obtained from the user
via the user interface; (3) Liscano’s identification information and status
information is not for the recipient (presence server); and (4) Liscano’s
“identification information” is not obtained from a user via a user interface.
App. Br. 11-14.

ISSUES
Under § 102, has the Examiner erred in rejecting claim 44 by finding
that Liscano discloses:
(1) “responsive to a communication to a recipient being initiated by a
user . . . obtaining identification information for the recipient from the user
via a user interface”?
(2) “responsive to a communication to a recipient being initiated by a
user . . . obtaining status information for the recipient corresponding to the
identification information”?

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ANALYSIS
On this record, we find no error in the Examiner’s anticipation
rejection of representative claim 44.
Appellant’s argument that Liscano’s status information is received
prior to initiating a communication and not “responsive to (after) initiating
the communication by the user” is unpersuasive. App. Br. 12. Appellant
erroneously maps the recited “communication to a recipient being initiated
by a user” to a communication in Liscano that occurs after a notify event.
However, the Examiner maps the recited “communication to a recipient
being initiated by a user,” to Liscano’s disclosure of a user initiating a
subscription request. Ans. 4, 8-11; Liscano col. 4, ll. 24-35. As the
Examiner points out, the service presence information received in the notify
message is received responsive to (after) the initiation of the subscription
request. Id. Because Liscano discloses that the recited “status information
for the recipient” (i.e., service presence information for a presentity) is
responsive to (after) “a communication to a recipient being initiated by a
user of the device” (i.e., initiation of a subscription request) by a user, we are
not persuaded of error in the Examiner’s finding.
Appellant’s argument that Liscano’s status information in the notify
event does not “correspond[] to the identification information” obtained
from the user via the user interface is also unpersuasive. App. Br. 12-13.
Like the previous argument, this argument is based in part on a
misinterpretation of the Examiner’s mapping of Liscano to the claim
limitations. As explained above, Liscano’s “notify event” is responsive to a
user initiating a communication. In addition, Appellant appears to argue that
the status information is not responsive to “identification information”
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obtained from the user via the user interface. However, as the Examiner
explained, when requesting to subscribe to another user’s availability, a user
(“watcher”) provides “identification information” for another user
(“presentity”) in the form of an email address (e.g.,
presentity@domain.com). Ans. 4, 8-9; Liscano col. 4, ll. 24-46. As further
explained by the Examiner, if the watcher receives a positive reply, the
watcher then receives service presence information regarding the presentity.
Ans. 4, 9; Liscano col. 4, ll. 48-60. Because Liscano discloses that the
recited “status information for the recipient” (i.e., service presence
information for a presentity) corresponds to “the identification information”
(i.e., presentity’s email address) obtained from the user (watcher), we are not
persuaded of error in the Examiner’s finding.
Appellant’s argument that Liscano’s identification information and
status information is not for the recipient because the presence server is the
recipient is also unpersuasive. App. Br. 13-14. The Examiner relies on the
presentity, not the presence server, as the recited “recipient.” Ans. 4, 12-13.
Appellant’s assertion that Liscano’s presence server should be the recited
“recipient” because it receives the subscription request is not persuasive. As
the Examiner points out, the communication to the recipient (presentity) is
initiated with a subscription request from a user (watcher). Ans. 4, 12-13.
Assuming that a positive reply is received, communication between the
watcher and presentity may ensue. Ans. 4; see also Liscano col. 6, ll. 36-43.
Although Appellant correctly points out that the presence server receives the
subscription request, we agree with the Examiner that the subscription
request is nevertheless the initiation of a communication between a watcher
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(user) and presentity (recipient). Therefore, we are not persuaded of error in
the Examiner’s finding that Liscano’s presentity is the recited “recipient.”
Finally, Appellant’s argument that Liscano’s “identification
information” is not obtained from a user via a user interface is also
unpersuasive. App. Br. 14. Appellant erroneously argues that the “watcher”
in Liscano is a device. As the Examiner points out, the watcher in Liscano is
a user, not a device. Ans. 11-12. The Examiner further points out that the
watcher is a user who issues a request to view another user’s availability by
providing identification information (i.e., an email address) for that user.
Ans. 11-12; see also Liscano col. 4, ll. 24-26. We agree with the Examiner
that Liscano’s disclosure implies that the user provides such information via
the user interface (presence client 28) disclosed in Liscano. Ans. 11-12; see
also Liscano col. 3, ll. 45-52. Because Liscano discloses receiving
identification information (i.e., an email address) for a recipient
(“presentity”) from a user (“watcher”) via a user interface (presence client
28), we are not persuaded of error in the Examiner’s finding that Liscano
discloses “obtaining identification information for the recipient from the user
via a user interface.” (Emphasis added.)
We therefore sustain the Examiner’s rejection of (1) independent
claim 44; (2) independent claims 48 and 52 which recite commensurate
limitations; and (3) dependent claims 45 and 53 not separately argued with
particularity.
THE OBVIOUSNESS REJECTION OVER LISCANO AND SMITH
We also sustain the Examiner’s obviousness rejections of claims 46,
47, 50, 51, 54, and 55. Ans. 6-7, 13. Appellant refers to the arguments
made in connection with claim 44, and alleges that Smith does not cure the
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deficiencies of Liscano. App. Br. 14-15. We are not persuaded by these
arguments, however, for the reasons previously discussed.
THE OBVIOUSNESS REJECTION OVER LISCANO
We also sustain the Examiner’s obviousness rejections of claims
56-59. Ans. 7-8; 13-15. Appellant refers to the arguments made in
connection with claim 44, alleges that the features which the Examiner
purports would be well known in the art were not well known, and further
alleges that even if they were well known, they would not cure the
deficiencies of Liscano. App. Br. 15. We are not persuaded by these
arguments, however, for the reasons previously discussed.

CONCLUSION
The Examiner (1) did not err in rejecting claims 44, 45, 48, 52, and 53
under § 102; (2) did not err in rejecting claims 46, 47, 50, 51, and 54-59
under § 103.

ORDER
The Examiner’s decision rejecting claims 44-48 and 50-59 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)(1)(iv).

AFFIRMED

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