Ex Parte Ozugur et al

Patent Trial and Appeal Board

Sep 12, 2013

11463928 (P.T.A.B. Sep. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TIMUCIN OZUGUR and
JACK JACHNER
__________

Appeal 2011-006943
Application 11/463,928
Technology Center 2100
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
DEMETRA J. MILLS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
The following claims are representative.
1. A communications device associated with a presentity, comprising:
a presence user client communicatively coupled to a presence system
via a communication network to receive presence information associated
with said presentity, said presence information including a respective
presentity presence state indicating a respective availability of said
presentity as provided by said presence system to each contact on a contact
list of said presentity, in which at least one said contact is a watcher of said
presentity; and
a display coupled to said presence user client for displaying to said
presentity said contact list of said presentity and, adjacent to each said
contact in said contact list, a respective representation of said respective
presentity presence state as seen by said respective contact on said contact
list.

3. The device of Claim 2, wherein said graphical user interface displays on
said display a respective contact presentity presence icon for each said
contact on said contact list, each said respective contact presentity presence
icon visually indicating said respective presentity presence state provided to
said respective contact on said contact list.

4. The device of Claim 3, wherein said graphical user interface further
displays on said display a respective menu associated with each said contact
presentity presence icon, each said menu including a list of available
presentity presence states that can be provided to said respective contact
associated with said respective contact presentity presence icon, and
wherein said graphical user interface further enables said user to select a
select one of said presentity presence states from said respective menu for
each said contact in said contact list.

17. A method for representing a presence state of a presentity
as provided to each contact on a contact list thereof, comprising the steps of:
providing a contact list including one or more contacts who are
watchers of a presentity associated with a presence system;
displaying to said presentity said contact list of said presentity, and
adjacent to each contact in said contact list, a respective representation of a
respective presentity presence state as seen by said respective contact on said
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contact list, each said presentity presence state being maintained by said
presence system and indicating an availability of said presentity as provided
by said presence system to said respective contact on said contact list;
enabling said presentity to change said respective presentity presence
state provided to each said contact on said contact list from said contact list;
and
updating an appearance of said representation of said presentity
presence state for each said contact on said contact list whose associated
presentity presence state is changed by said presentity.

Cited References

Lyle et al., (hereinafter Lyle 370) US 2006/0031370 A1, Feb. 9, 2006
Daniell et al., US 6,976,092 B1, Dec. 13, 2005
Lyle et al., (hereinafter Lyle 133) US 2006/0005133 A1, Jan. 5, 2006
Weaver et al., US 2004/0148346 A1, Jul. 29, 2004
Grounds of Rejection
Claims 1-2, 7, 9-13, 15 and 16 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lyle 370 in view of Daniell.
Claims 3, 8, and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lyle 370 in view of Daniell and Lyle 133.
Claims 4-6 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Lyle 370 in view of Daniell, Lyle 133 and Weaver.
Claims 17-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weaver in view of Daniell.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
13. The following fact is highlighted.
1. Figure 12 of the Specification is reproduced below.
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Figure 12 shows a contact list, with the users presence [1100]
(presentity) indicated for each contact on the list, to the right of the
contact.

Discussion
ISSUE
The Examiner concludes that Lyle teaches each element claimed
except, “Lyle does not specifically mention a contact list and does not
explicitly disclose presentity presence state for each said contact on said
contact list.” (Ans. 4.) “However, in the same field of endeavor, Daniell
discloses user interface showing a contact list screen with the user's buddies
status.” (id.) Thus, the Examiner concludes that
it would have been obvious to one having ordinary skill
in the art at the time the invention was made to include presence
state in Lyle. One would have been motivated to do so in order
to permit user to consolidate all their contacts in a single
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interface, thereby simplifying user interactions (col. 7, lines 20-
22).

(Ans. 5.)
Appellants argue that
Appellant has not claimed that the presence state of the
“contact” is what is displayed. Rather, Appellant[s] claims that
the presence state of the “presentity” (as would be seen by that
contact) is displayed. This is not the same thing. A contact is
not a presentity, as is defined in the claims. The claims actually
differentiate between the terms “contact” and “presentity.” For
example, the claims recite that “said contact is a watcher of said
presentity.” Therefore, the “contact” is not the “presentity”
itself. In addition, the claims recite that a contact is “on a
contact list of said presentity,” which again reinforces
Appellant[s]' position that a “contact” is not the “presentity,” as
defined in the claims.

(App. Br. 12.)

Appellants argue that
Daniell, a single representation of the presentity presence
state as seen by all contacts in the contact list is displayed to the
presentity at the top of the contact list, as shown in Figure 4B
(i.e., the white button at top with the phrase “I am available”
next to it). By contrast, the present invention specifically
claims that “adjacent to each said contact in said contact list” is
displayed “a respective representation of said respective
presentity presence state as seen by said respective contact.”
Thus, in the present invention, plural representations of the
presentity presence state are displayed, not a single
representation, as in Daniell.

(App. Br. 12-13.)

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The dispositive issue with respect to all rejections is: Does the cited
prior art teach a presentity “adjacent to each said contact in said contact list,”
as claimed?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

ANALYSIS
We do not find that the Examiner has provided evidence to support a
prima facie case of obviousness.
Claim interpretation
We begin with claim interpretation. During ex parte prosecution,
claims are to be given their broadest reasonable interpretation consistent
with the description of the invention in the specification. See In re Zletz, 893
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F.2d 319, 321 (Fed. Cir. 1989). See SuperGuideCorp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by explanations contained in
the written description, it is important not to import into the claim limitations
that are not part of the claim. For example, a particular embodiment in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”
Thus, the Examiner must be mindful both of the requirement that
“[d]uring patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow” In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989), and the admonition that limitations are not to be read from the
specification into the claims. This can be a difficult balancing act.
However, as our reviewing court has instructed, “the line between
construing terms and importing limitations can be discerned with reasonable
certainty and predictability if the court's focus remains on understanding
how a person of ordinary skill in the art would understand the claim terms.”
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
The court, in Phillips, also explained that claims can be misinterpreted
by relying too much on both general and technical dictionaries, because
dictionaries seek to inform the reader of the range of meanings acquired by
terms. The court stressed that “a general-usage dictionary cannot overcome
art-specific evidence of the meaning of a claim term.” 415 F.3d at 1322,
internal quotes and citation omitted. Thus, the supporting disclosure, the
role of which is to inform the reader specifically of what has been invented,
is potentially the most reliable guide to claim interpretation.
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We interpret the phrase “adjacent to each said contact in said contact
list” in claim 1 to mean that plural representations of the presentity presence
state are displayed. We reach this conclusion, by not only interpreting the
ordinary meaning of the term “list,” but also its context usage in the
Specification as would be understood by one of ordinary skill in the art. The
term list means, “A series of names, words, or other items written, printed,
or imagined one after the other.” 1 This is consistent with its usage in the
Specification, Fig 12, which displays multiple presentity presence state icons
[1100] adjacent to plural contacts on a contact list. Therefore, as we balance
the requisite claim interpretation principles and interpret the claims, we
conclude that the claims require that plural representations of the presentity
(user) presence state are displayed.
We therefore agree with Appellants that Daniell discloses a single
presence indication of the user to all contacts (Fig. 4B), and do not find that
the Examiner has provided sufficient evidence in the prior art to support “a
display coupled to said presence user client for displaying to said presentity
said contact list of said presentity and, adjacent to each said contact in said
contact list, a respective representation of said respective presentity presence
state as seen by said respective contact on said contact list.
The obviousness rejections are therefore, reversed.

1 www.thefreedictionary.com/list
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CONCLUSION OF LAW
The cited references do not support the Examiner’s obviousness
rejection. Each of the obviousness rejections is reversed.

REVERSED

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