Ex Parte Oschmann

Patent Trial and Appeal Board

Mar 17, 2017

11732798 (P.T.A.B. Mar. 17, 2017)

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.
11/732,798 04/04/2007 Michael Oschmann TER-P060397 3588
24131 7590 03/21/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
ROBINSON, MARSHON L
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
03/21/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL OSCHMANN
Appeal 2015-0003681
Application 11/732,7982
Technology Center 2100
Before JEAN R. HOMERE, LINZY T. MCCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Rejection of claims 30-61, which constitute all of the
claims pending in this appeal. Claims 1—29 have been canceled. Claims
App’x. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 An oral hearing was held in this appeal on March 8, 2017.
2 Appellant identifies the real party in interest as Mueller Marken GmbH &
Co. App. Br. 2.
Appeal 2015-000368
Application 11/732,798
Appellant’s application describes a method and system for
automatically verifying in real-time messenger contact data (i.e. an address
within an instant messaging (IM) system) entered by a user into an on-line
form (13) located on an external computer system (10). Abstract; Spec. 2:5—
3:7, Fig. 1. In particular, upon receiving the user-entered messenger contact
data, a computer unit (2) identifies the user contact data, as well as the IM
system associated therewith to automatically send to the user a confirmation
message URL upon which the user subsequently clicks to verify the
messenger contact data. Spec. 15:20-16:9.3
Illustrative Claim
Independent claim 30 is illustrative, and reads as follows:
30. A method for automatically verifying messenger contact
data, the method which comprises:
receiving, in a computer unit, messenger contact data
containing an address within a specific instant messaging
system entered by a user into an online form outside of an
instant messaging system, via a data link;
after receiving the messenger contact data, identifying the
specific instant messaging system associated with the received
messenger contact data and using the received messenger
contact data to automatically send a message containing
confirmation information to the user, from the computer unit
signed in as a subscriber of the identified particular instant
messaging system associated with the messenger contact data;
registering a user input in line with the confirmation information; and
subsequently verifying the messenger contact data.
3 Certified English Translation of Specification filed June 1, 2007.
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Application 11/732,798
Prior Art Relied Upon
Bansal et al. US 2003/0120593 Al June 26, 2003
US 2003/0129969 Al July 10, 2003
US 2004/0168055 Al Aug. 26, 2004
US 2004/0249893 Al Dec. 9, 2004
US 2007 /0005692 Al Jan. 4, 2007
US 2007 /0156836 Al July 5, 2007
Rucinski
Lord et al.
Leeds
Gist et al.
Kelso et al
Rejections on Appeal
Claims 30-33, 35, 36, 38-48, 50, 51, and 53—61 stand rejected under
35 U.S.C. § 103(a) (pre-AIA) as being unpatentable over the combination of
Kelso, Lord, Leeds, and Rucinski. Non-Final. Act. 2—9.
Claims 34-49 stand rejected under 35 U.S.C. § 103(a) (pre-AIA) as
being unpatentable over the combination of Kelso, Lord, Leeds, Rucinski,
and Gist. Non-Final. Act. 9—10.
Claims 37 and 52 stand rejected under 35 U.S.C. § 103(a) (pre-AIA)
as being unpatentable over the combination of Kelso, Lord, Leeds, Rucinski,
and Bansal. Non-Final. Act. 10.
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 5—25, and the Reply Brief, pages 2—1A
4 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed April 11, 2014), the Reply Brief (filed
October 1, 2014), and the Answer (mailed August 1, 2014) for their
respective details. We have considered in this Decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
ANALYSIS
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Application 11/732,798
Regarding the rejection of claim 30, Appellant argues that Kelso,
Lord, Leeds, and Rucinski are not properly combined to teach or suggest:
1) that the received messenger contact data be entered by the user in
an online form outside of an instant messaging system and contain an
address within a specific instant messaging system; 2) subsequently,
identifying the specific instant messaging system associated with the
receiving the messenger contact data; and 3) using the received
messenger contact data to automatically send a message containing
confirmation information to the user from the computer unit signed in
as a subscriber of the identified particular instant messaging system
associated with the messenger contact data.
App. Br. 7.
First, Appellant argues that Kelso does not teach or suggest “verifying
messenger contact data,” but, rather, Kelso teaches using an existing IM
session to perform identity authentication. App. Br. 10—16, Reply Br. 3^4.
This argument is not persuasive because the Examiner relies on Lord for this
teaching. In particular, the Examiner finds that Lord discloses an enrollment
form outside an IM system (Non-Final Act. 3), wherein the form is
maintained at a webpage as an on-line form into which the user enters his
screen name and password for authentication purpose, thereby verifying the
messenger contact data entered by the user. Ans. 4 (citing Lord 108,
120—145, fig. 2). We agree with the Examiner.
Appellant acknowledges that Lord discloses a system wherein a
regular AIM user can upgrade his account to a secure AIM by entering his
screen name/password, and providing payment in an enrollment webpage
associated with the IM system. App. Br. 18 (citing Lord 1108). However,
Appellant argues that the user-entered information is not messenger contact
data (containing an address within the IM system) entered into a form
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Application 11/732,798
outside the IM system, to be verified. Id. Further, Appellant argues that
because the AIM user is already verified within the IM system, there is no
need for the entered information to be further verified. Id. We are not
persuaded.
Appellant attacks the prior art references individually even though the
Examiner relies on the combination of Kelso, Lord, Leeds, and Rucinski as
teaching or suggesting the disputed features. Non-Final Act. 2-4; Ans. 2—3.
In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)) (“The test for obviousness is what the
combined teachings of the references would have suggested to those having
ordinary skill in the art.”).
Moreover, as correctly noted by the Examiner, Lord’s disclosure of
redirecting the regular user of the AIM system to an enrollment webpage
containing an on-line form into which the user enters his screen
name/password for authentication before the user can sign up for upgraded
S/AIM service teaches or suggests the “online form outside of an instant
messaging system,” recited in claim 30. Lord 1108. Likewise, we agree
with the Examiner that the user inputting screen name/password information
in the enrollment form in Lord teaches the user entering messenger contact
data, which can be construed, broadly but reasonably, to include “messenger
contact data containing an address within a specific instant messaging
system entered by a user,” as claim 30 requires. See Spec. 2:7—12. That is,
one of ordinary skill in the art would readily appreciate that, within the
disclosed IM system, the user would reachable via the entered screen name.
Furthermore, with regard to the “verifying” step recited in claim 30, we do
not agree with Appellant that the user-entered information need not be
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Application 11/732,798
verified in Lord. App. Br. 19. Lord explicitly teaches that the user, as part
of the upgrade to the S/AIM service, goes to an enrollment web page and
“authenticate[s] using his screen name and password.” [Lord 1108]. Thus,
because one of ordinary skill would readily appreciate that the disclosed user
authentication process entails checking the login information provided by
the user to ensure its accuracy and validity, it teaches verifying the
messenger contact data entered by the user.
Second, Appellant argues that neither Lord nor Kelso teaches or
suggests identifying a specific IM system because they are both tied to a
single IM system. App. Br. 19. This argument is unavailing because it is
not commensurate with the scope of the claim. In other words, because the
plain language of claim 30 does not require that the “the specific instant
messaging system” recited in the “identifying” step be a different IM system
than the “specific instant messaging system” recited in the “receiving” step,
the claim requires only a single IM system, which is taught by Lord’s
disclosed AIM system.
Third, Appellant argues that Rucinski does not teach or suggest
identifying the specific IM associated with the received messenger contact
data. App. Br. 21 (citing Rucinski 140). This argument is not persuasive.
Although Appellant quotes the cited portion of Rucinski relied upon by the
Examiner, Appellant has not analyzed the cited teaching by comparing and
contrasting it with the disputed limitation. As correctly noted by the
Examiner, Rucinski teaches that the IM system is identified from an instant
messaging service message. Ans. 4 (citing Ruccinski 140). Likewise, we
are not persuaded by Appellant’s naked allegation that Leeds does not teach
or suggest using the receiver messenger data to send a confirmation
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Application 11/732,798
message. App. Br. 21—22. Appellant utterly fails to particularly rebut the
specific findings made by the Examiner regarding the disputed limitation.
See Non-Final Act. 3 (citing Leeds Tflf 24, 26).
Fourth, Appellant argues that: (1) there is insufficient rationale for
proposed combination of references; (2) Kelso and Lord teach away from
performing such an identification; and (3) the proposed combination of the
references is an attempt to derive Appellant’s claims through impermissible
hindsight reconstruction. App. Br. 21—22. We are not persuaded. We note
Appellants have not provided any legal or technical analysis to support these
assertions. Nor has Appellant attempted to address the proposed rationale to
combine the references as proffered by the Examiner. See Non-Final Act.
3^4. Such a response to the Examiner’s findings and ultimate conclusion of
obviousness is insufficient to persuade us of Examiner error, as mere
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); Ex parte Belinne, No. 2009-004693, slip op. at 7—8 (BPAI
Aug. 10, 2009) (informative); see also In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”); 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.”)
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Application 11/732,798
For these reasons, we are not persuaded of error in the Examiner’s
rejection of claim 30 over the combination of Kelso, Lord, Leeds, and
Rucinski. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claim 30, as well as the 35 U.S.C. § 103(a) rejection
of independent claims 45 and 60, which Appellant argues are patentable for
similar reasons. App. Br. 23. Because Appellant does not make separate
arguments for the patentability of dependent claims 31—44, 46—59, and 61,
we sustain the 35 U.S.C. § 103(a) rejection of those claims as well. See id.',
37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the above reasons, we affirm the Examiner’s obviousness
rejections of claims 30—61.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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