Ex Parte Peters

Patent Trial and Appeal Board

Jan 22, 2018

13613856 (P.T.A.B. Jan. 22, 2018)

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.
13/613,856 09/13/2012 Mark E. Peters RSW920040174US2 8367
138366 7590
LEE LAW, PLLC
IBM ENDICOTT IP
P.O. BOX 189
PITTSBORO, NC 27312
EXAMINER
NGUYEN, MINH CHAU
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
01/24/2018 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):
docketing @ leelawpllc .com
docketing_archive @ leelawpllc .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK E. PETERS
Appeal 2017-008469
Application 13/613,8561
Technology Center 2400
Before ROBERT E. NAPPI, CATHERINE SHIANG, and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—24, which constitute the only claims pending.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to managing received messages when a
computer is in a slide presentation mode. Abstract; Spec. H 2, 3, 6, and 11.
1 The real party in interest is identified as International Business Machines
Corporation. App. Br. 3.
Appeal 2017-008469
Application 13/613,856
Claim 1, reproduced below, is exemplary of the subject matter on appeal
(emphasis added):
1. A method, comprising:
determining, via a processor, whether a computer is in a
slide presentation mode;
automatically selecting a configured designee alert mode
in response to determining that the computer is in the slide
presentation mode;
receiving message data through a communications
medium; and
transferring the message data to an alternate designated
recipient according to the automatically selected designee alert
mode when the computer is in the slide presentation mode.
THE REJECTIONS
Claims 1—24 are rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims 1—20 of U.S. Patent
No. 8,346,871. Final Act. 3-5.
Claims 1, 2, 9, 10, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Horvitz (US 2004/0254998 Al; pub. December 16,
2004) in view of Dias et al. (US 2005/0097470 Al; pub. May 5, 2005)
(“Dias”). Final Act. 5—7.
Claims 8, 16, and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horvitz, Dias, and Whitten, II (US 6,993,564 B2; iss.
January 31, 2006) (“Whitten”). Final Act. 7—8.
Claims 3, 4, 7, 11, 12, 15, 19, 20, and 23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Horvitz, Dias, and Malik et al. (US
2004/0078441 Al; pub. April 22, 2004) (“Malik”). Final Act. 9-11.
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Claims 5, 6, 13, 14, 21, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Horvitz, Dias, Malik, and Whitten. Final Act.
11-13.
ANALYSIS
The double patenting rejection
In the obviousness-type double patenting rejection, the Examiner
finds although the conflicting claims are not identical, the claims of the
current application are merely obvious variations of the claims of U.S.
Patent No. 8,346,871 (“’871 patenf”). Final Act. 3—5. The Examiner
presents a claim chart setting forth claim 9 of the current application and
claim 1 of the ’871 patent and determines claim 9 is merely a broader
version of patent claim 1. Id. The Examiner concludes it would have been
obvious to broaden patent claim 1 because omitting the added limitations is
an obvious variation and similar reasoning applies to the rejection of the
remaining application claims. Id.
Appellant argues the Examiner errs because the issue is not ripe for
consideration as the patent claims are not allowed and Appellant reserves the
right to file a Terminal Disclaimer. App. Br. 18 (citing 37 C.F.R
§ 1.321(c)).
The Answer states “the examiner cannot find this argument or premise
persuasive because the argument does not point out any errors in the double
patenting rejection, for example, specifically pointing out how the language
of the examined claims patentably distinguishes them from the patent claims
of the U.S. Patent No. 8,346,871.”2 Ans. 2.
2 We note this patent is currently identified as US 8,346,871 B2; issued
January 1, 2013.
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Application 13/613,856
We agree with the Examiner. Appellant presents no argument and,
therefore, we pro forma sustain the obviousness-type double patenting
rejection of claims 1—24.
The § 103(a) rejections
Appellant argues the Examiner errs in interpreting the claim language
and the cited references and thereby fails to show where all elements of the
claims are disclosed. App. Br. 10-54; Reply Br. 2—9.
According to Appellants, in claim 1:
Appellant claims two distinct modes of the computer itself: the
claimed slide presentation mode; and the claimed configured
designee alert mode. Appellant further claims the processor
itself determining whether the computer is in a slide presentation
mode and the processor itself by antecedent basis automatically
selecting a configured designee alert mode in response to (the
processor itself) determining that the computer is in the slide
presentation mode ....
App. Br. 10.
Appellant argues Horvitz does not teach determining by a processor
whether a computer is in a slide presentation mode but merely teaches “a
calendar can be examined to enable users to specify uninterruptible
meetings (e.g., presentations, video conference, phone meetings that should
not be interrupted).” App. Br. 10-14 (citing Horvitz 179); id. at 14 for
quote. According to Appellant, this is different from “determining, by a
processor, whether a computer is in a ‘slide’ presentation ‘mode’” and there
is no disclosure of a processor making this determination. Id. at 14.
Appellant further argues Horvitz’ disclosure of a user’s calendar does not
teach the claimed “automated selection of a configured designee mode (of a
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computer by antecedent basis) responsive to determining that the computer
is in the slide presentation mode.” Id. at 15 (citing Horvitz 1112).
Appellant argues Horvitz’ notification platform that makes decisions
when, where, and how to notify the user (recipient of the original message)
does not teach the claimed “transferring the message data to an alternate
designated recipient according to the automatically selected designee alert
mode when the computer is in the slide presentation mode.” Id. at 16 (citing
Horvitz 1113).
Appellant argues “transferring the message data to an alternate
designated recipient according to the automatically selected designee alert
mode when the computer is in the slide presentation mode” as defined in the
Specification requires the recipient to be a person, not a device. Id. at 29
(citing Spec. H 19 (“The term ‘recipient,’ as used herein, refers to any user
of the IM program.”), 29).
Appellant argues Dias teaches properties of content, such as a web
presentation, but does not teach the “claimed slide presentation mode of a
computer itself.” Id. at 16—17 (citing Dias 37, 38).
The Examiner finds Horvitz teaches user-specified contexts in which
the recipient is considered “unavailable” and one of these contexts is based
on “Desktop state,” which includes things such as whether the user is
“Active in Powerpoint display mode.” Ans. 3 (citing Horvitz || 30-37). “In
these situations, users can specify, for example: ... I am busy in one of the
following state examples: ... Desktop state (Active in PowerPoint display
mode ...).” Id. at 3^4 (emphasis omitted). The Examiner finds Horvitz’s
system subsequently determines when a user is in one of their specified
contexts. Id. at 4 (citing Horvitz 170).
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The Examiner finds:
Horvitz’s disclosure of a user’s computer determining it is active
in a PowerPoint display state teaches the above-argued
limitation. To relieve any ambiguity concerning the terminology
used in Horvitz, the examiner cited Dias as evidence that
Powerpoint does, in fact, make slide presentations. The examiner
finds that Dias teaches Powerpoint presentations comprising
slide presentations (Dias: [0002]) and being in “presentation
mode” (Dias: [0018] “a presentation mode (i.e., whether the
presentation is a live or/and on-demand presentation''’]).
Therefore, the examiner finds that the combination of Horvitz
and Dias render obvious the above argued-claim limitation and
applicant’s arguments to this regard are ultimately unpersuasive.
Id.
Regarding the limitation “automatically selecting a configured
designee alert mode in response to determining that the computer is in the
slide presentation mode,” the Examiner finds:
[T]he entire point of Horvitz is to perform specialized processing
of notifications when the user is in “unavailable” contexts. The
user controls preferences that dictate unavailable contexts and
also how notifications should be forwarded or processed under
those circumstances. The computer then applies these settings to
control message processing. Horvitz teaches his notification
platform “can be adapted to receive the prioritized messages and
make decisions regarding when, where, and how to notify the
user. ” Horvitz further elaborates that this could be changes to
communication modality, the target recipient device to use, or
reformatting the message to a different communication format
(instant message to an email) (Horvitz: [0113]; abstract). Thus
the examiner finds Horvitz clearly teaches the above-argued
limitation when he teaches automatically selecting a designee
alert mode (i.e., how to alert a recipient) based on the
determination the computer is in an unavailable context such as
being in a presentation mode. Appellant’s arguments to this
regard are therefore unpersuasive.
Id. at 4—5.
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Regarding the limitation “transferring the message data to an alternate
designated recipient according to the automatically selected designee alert
mode when the computer is in the slide presentation mode,” the Examiner
finds:
Horvitz teaches dynamic notification means and methods for
how to “best” notify the user given the user’s context state. Thus
Horvitz clearly decides how to transfer the message data to a
recipient according to the automatically selected designee alert
mode when the computer is in slide presentation mode (Horvitz:
[0113]; [0128]). The examiner finds that Horvitz also teaches
actually transferring the notification to a recipient after deciding
how to (Horvitz: [0145]). With respect to the recipient being an
“alternate designated recipient” and not the original intended
recipient, Horvitz teaches the use of delegates and proxies as
recipients. [“The sources generate notifications intended for the
user and/or other entity . ... Notification sources are defined
generally herein as that which generates events, which can be
referred to as notifications and alerts, intended to alert a user, or
a proxy for the user ...”] (Horvitz: [0118]). Accordingly, the
examiner finds that Horvitz and Dias teach or suggest
transmitting alternative message formats and communications to
alternate or proxy users after determining the best alert mode for
notification, and determining the original target recipient is in an
unavailable context. Thus the examiner finds that Horvitz and
Dias render obvious the above-argued limitation and that
Appellant’s arguments regarding the above-argued limitation are
unpersuasive.
Id. at 5—6 (emphasis omitted).
In the Reply Brief, Appellant argues Horvitz teaches the use of focus
information in which a determination of which application is in focus and no
teaching of how a person of ordinary skill in the art may even cause a
processor to determine if a computer is actually in a presentation mode of
operation. Reply Br. 3—5.
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We are not persuaded by Appellant’s arguments and agree, instead,
with the Examiner’s findings and claim interpretation regarding the
combination of Horvitz and Dias. Appellant presents no persuasive
arguments the Examiner’s findings and claim interpretation are
unreasonable, overbroad, or inconsistent with the Specification. Claim
terms in a patent application are given the broadest reasonable interpretation
consistent with the Specification, as understood by one of ordinary skill in
the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Our reviewing
court states that “the words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWHCorp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted).
Appellant’s proffered claim 1 interpretation, “the processor itself
determining whether the computer is in a slide presentation mode and the
processor itself by antecedent basis automatically selecting a configured
designee alert mode in response to (the processor itself) determining that the
computer is in the slide presentation mode,” is not commensurate with the
plain and ordinary meaning of the claim and Appellant provides no
persuasive argument that the Specification limits the Examiner’s
interpretation. Additionally, even assuming Appellant’s claim
interpretation, the broad teachings of Horvitz and Dias employ processor
capability, which can be single processor or multiple processors. See, e.g.,
Horvitz || 53, 146, 154; Figures 13, 14.
We disagree with Appellant’s asserted claim interpretation that
“recipient” must be a person, not a device, and that the Specification defines
the term. Moreover, even assuming Appellant’s proposed interpretation, we
agree with the Examiner findings that Horvitz teaches a recipient as a user of
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a device. See our discussion, supra, regarding the limitation “transferring
the message data to an alternate designated recipient according to the
automatically selected designee alert mode when the computer is in the slide
presentation mode.”
Appellant argues the references individually while the rejection is
based on the combination of the teachings of Horvitz and Dias. In re Keller,
642 F.2d 413, 426 (CCPA 1981) (“[0]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.” (citations omitted)); In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant argues an unreasonably narrow teaching of the cited
references and an overly demanding standard of obviousness.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
Keller, 642 F.2d at 425.
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
“[Sjome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” . .. [Hjowever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
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The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420-21.
Based upon the teachings of the references and the fact that each
claimed element is well-known in the art, we agree with the Examiner
because the combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 415-16.
On this record, Appellant does not present sufficient or persuasive
evidence that the combination of the cited references was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419-21).
Nor has Appellant provided objective evidence of secondary considerations,
which our reviewing court guides “operates as a beneficial check on
hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725
F.3d 1341, 1352 (Fed. Cir. 2013).
In view of the above, we sustain the rejection of claim 1, and
independent claims 9 and 17 which are argued together with claim 1.
Regarding the dependent claims, Appellant relies on arguments
considered, supra, and presents additional arguments. App. Br. 32—52. As
discussed below, we are not persuaded by Appellant’s arguments, and agree,
instead, with the findings and claim interpretation of the Examiner. We
highlight and address specific arguments as follows.
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Regarding dependent claims 2, 10, and 18, which recite “comprises
receiving the message data from a caller and further comprising sending a
busy signal to the caller,” Appellant argues Horvitz describes receiver-
defined policies that operate to perform conditional processing if the
recipient of the incoming instant message is unavailable. App. Br. 33—34
(citing Horvitz || 29, 42-48). According to Appellant, Horvitz’ teaching is
limited to responding by instant messaging to an incoming
instant message with an email or an instant message. This cited
subject matter fails to factually disclose sending a busy signal to
the caller. An automated instant message response as cited is
factually different from a busy signal according to the plain
meaning of the claim language.
Id. at 34.
The Examiner finds Horvitz teaches various customized automated
responses and “that Horvitz’s feature of receiving a call from the caller and
then replying with an automated custom response indicating the recipient is
busy, arrives at the above argued claim limitation of ‘sending a busy signal
to the caller.’” Ans. 6—7 (citing Horvitz || 52, 56, 100).
We agree with the Examiner’s findings and, therefore, we sustain the
rejection of claims 2, 10, and 18.
Regarding the rejection of claims 8, 16, and 24, which recite
“prompting the alternate designated recipient to accept the message data
from a caller and displaying the message data on an output device only when
the alternate designated recipient responds affirmatively to the prompt,”
Appellant argues the Examiner errs because Whitten’s teaching of status
possibilities is different from what it is claimed and does not disclose a
prompt of any sort to any individual. App. Br. 37 (citing Whitten 3:5—17).
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The Examiner finds Horvitz’s feature of sending the notification
message to be displayed on the cell phone that makes the cell phone of the
user vibrating or ringing is considered as the user accepts the notification
message to be displayed. Ans. 8—9 (citing Horvitz || 63—66, 78). The
Examiner finds Horvitz also discloses “the alternate designated recipient,” as
discussed, supra.
We agree with the Examiner and sustain the rejection of claims 8, 16,
and 24. Additionally, we note the Examiner’s findings are reasonable and
not addressed in the Reply Brief.
Regarding the rejection of dependent claims 3,11, and 19, which
recite “receiving the message data from a caller and further comprising
displaying only the caller’s identification on an output device,” Appellant
argues the Malik instant message “IM” chat window is not limited to
displaying only the instant message sender’s identification on an output
device. App. Br. 40 (citing Malik 194, Fig. 18).
The Examiner interprets the phrase “computer that displays only a
caller’s identification on an output device” within this context as “displaying
caller’s identification without displaying message data.” Ans. 9. The
Examiner finds Horvitz displays notifications and Malik displays only caller
identification and allows the user to ignore or continue the conversation. Id.
at 9-10 (citing Horvitz 178; Malik 194, Fig. 18).
We agree with the Examiner and sustain the rejection of claims 3,11,
and 19.
Regarding the rejection of dependent claims 4, 12, and 20, which
recite “receiving the message data from a caller and further comprising:
determining a priority caller list; and displaying the caller’s identification on
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an output device only when the caller is in the priority caller list,” Appellant
argues
sending a notification to a recipient of an instant message does
not disclose any priority list, and is different from displaying the
caller's identification on an output device only when the caller is
in the priority caller list (there is no disclosure of a priority caller
list in the cited evidence).
App. Br. 43 (citing Malik 194; Fig. 18).
The Examiner finds Horvitz teaches receiving messages from a
whitelist or selected sender subset, which is considered approved senders or
a priority caller list. Ans. 10 (citing Horvitz || 46, 58, 98). We agree with
the Examiner and sustain the rejection of claims 4, 12, and 20.
Regarding the rejection of dependent claims 7, 15, and 23, which
recite “prompting a caller to transfer the message data to the alternate
designated recipient; and where transferring the message data to the alternate
designated recipient comprises transferring the message data to the alternate
designated recipient only when the caller responds affirmatively to the
prompt,” Appellant argues the Examiner errs in applying Malik. App. Br.
45—47. According to Appellant, Malik’s typing notification message is
generated prior to opening of the IM chat window and
[a]s such, the “contact” cannot be an entity from which message
data has been received through a communications medium at a
computer that is contemporaneously in two distinct modes of
operation: a slide presentation mode, and an automatically
selected configured designee alert mode. The disclosed IM chat
window is not even opened yet when the typing notification
message is generated.
Id. at 46. Appellant further argues “[bjecause no prompt is disclosed to be
generated to the caller, there is no disclosure of the claimed prompting a
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‘caller to transfer the message data to the alternate designated recipient,’ as
required by the claims.” Id.
The Examiner finds Horvitz teaches “transferring the message data to
the alternate designated recipient,” as discussed supra, and giving the sender
(caller) options by asking the caller to hold on and then leave the message to
the receiver. Ans. 12—13 (citing Horvitz H 51, 100). We agree with the
Examiner and sustain the rejection of claims 7, 15, and 23.
Regarding the rejection of dependent claims 5, 13, and 21, which
recite “blocking the message data when the caller is not in the priority caller
list,” Appellant argues Whitten teaches a list of all allowed messaged
senders and does not disclose any prioritization among senders. App. Br.
48-49 (citing Whitten Fig. 2, element 201).
The Examiner finds Horvitz teaches receiving the message from the
sender (caller) and determining whether the caller is from the
selected/approved sender group which is considered as the priority sender
list based on the sender’s identity (which might be included in the message).
Ans. 13 (citing Horvitz || 46, 50, 98). The Examiner finds Whitten teaches
blocking messages depending on whether the transmitter is on the contact
list of the recipient. Id. at 14 (citing Whitten 1:21—24, 36-47). We agree
with the Examiner and sustain the rejection of claims 5, 13, and 21.
Regarding the rejection of dependent claims 6, 14, and 22, which
recite “sending a busy signal to the caller when the caller is not in the
priority caller list,” Appellant argues Whitten’s
mere disclosure of allowing a user to generate contact lists and
sub-lists is different from and does not disclose sending a busy
signal to a caller, and is different from and does not disclose
sending a busy signal to a caller when the caller is not in the
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priority caller list. There is no priority caller list disclosed within
the Whitten reference as cited.
App. Br. 51—52 (citing Whitten Abstract, 3:5—17).
The Examiner finds Whitten teaches indicating a busy status, which is
considered as a busy signal when the recipient wants to block the receipt of
messages from a transmitter not on the contact list. Ans. 14—15 (citing
Whitten 1:21—47). We agree with the Examiner and sustain the rejection of
claims 6, 14, and 22.
DECISION
We affirm the Examiner’s decision rejecting claims 1—24 for
obviousness-type double patenting.
We affirm the Examiner’s decision rejecting claims3 1—24 under
35U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
3 Independent claim 17 recites: “A computer program product encoded in a
computer-readable storage medium . . . .” In the event of further prosecution
of this claim, inquiry may be needed to determine whether the claimed
medium encompasses transitory media, which is not patent eligible. See Ex
parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential); see also
In reNuijten, 500 F.3d 1346, 1356—57 (Fed. Cir. 2007); and U.S. Patent &
Trademark Office, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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