Ex Parte Requena

Board of Patent Appeals and Interferences

Jun 21, 2010

10023456 (B.P.A.I. Jun. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JOSE COSTA REQUENA
_____________

Appeal 2009-006487
Application 10/023,456
Technology Center 2400
______________

Decided: June 21, 2010
_______________

Before, ROBERT E. NAPPI, MARC S. HOFF, and
DEBRA K. STEPHENS, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006487
Application 10/023,456

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 17-21.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
The invention is directed to a system and method of sharing content
between an inviting user and an invited user. The system and method uses
an application layer control protocol to communicate a presence query from
a presence server to the central server. The central server then determines
whether the content should be stored, refused, or sent to the user. See Spec:
1-7. Claim 17 is representative of the invention and reproduced below:
17. System, comprising:
a central server, responsive to an invitation message from an
inviting user to exchange content with an invited user, for
providing a presence query; and
a presence server, responsive to said presence query, for
providing presence information relating to a registered user,
wherein said central server is responsive to said presence
information relating to said invited user registered at said
presence server, for use in deciding whether said content is sent
to said invited user, stored or refused, wherein said presence
query and invitation message are communicated according to an
application layer control protocol and wherein said presence
information relating to said registered user pertains to a spatial
location of said registered user.

1 Claims 1-16 and 22-25 were cancelled in response to an
Restriction/Election Requirement, mailed March 7, 2005.
2
Appeal 2009-006487
Application 10/023,456

REFERENCES
Dalal US 2002/0065894 A1 May 30, 2002
(filed Nov. 30, 2000)

Armstrong US 6,807,423 B1 Oct. 19, 2004
(filed Dec. 14, 1999)

REJECTIONS AT ISSUE
Claims 17-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dalal in view of Armstrong.

ISSUES
Rejection of claims 17-21 under 35 U.S.C. § 103(a) as being unpatentable
over Dalal in view of Armstrong
Claims 17 and 21
Appellant argues on page s 4-6 of the Appeal Brief and pages 2-3 of
the Reply Brief that the Examiner’s rejection of claim 17 is in error.
Appellant argues that Dalal in view of Armstrong does not disclose
“deciding whether content is sent to an invited user, stored, or refused” as
disclosed in independent claim 17. App. Br. 4; Reply Br. 2. Appellant
additionally argues that dependent claim 21 is in error for the same reasons
as the claim from which it depends, independent claim 17. App. Br. 6.
Thus, Appellant’s contention with respect to claims 17 and 21
presents us with the issue: Did the Examiner err in finding that Dalal in view
of Armstrong discloses deciding whether content is sent to an invited user,
stored, or refused?
3
Appeal 2009-006487
Application 10/023,456

Claims 18-20
Appellant argues on pages 6 of the Appeal Brief that the Examiner’s
rejection of dependent claims 18-20 is in error for the same reasons as
independent claim 17. Appellant additionally argues on pages 6-8 of the
Appeal Brief and pages 3-5 of the Reply Brief that the portion of the Dalal
reference used to reject claim 18 is not found in the provisional application.
App. Br. 7. Appellant, therefore, argues that the Dalal reference does not
properly antedate claim 18. App. Br. 7; Reply Br. 4.
Thus, Appellant’s contention with respect to claim 18, and claims 19-
20 which ultimately depend upon claim 18, presents us with the issue: Did
the Examiner err in finding that the provisional application of Dalal contains
the claim limitations found in claim 18?

FINDINGS OF FACT (FF)
Armstrong
1. Armstrong discloses a personal communications portal (PCP) that
provides information about a watched party. The watched party sets
rules that define how the watched party may be contacted, by whom,
and at what times. Col. 4, ll. 24-25 and col. 5, ll. 23-34.
2. When the watched party sets a rule that refuses an instant message
after a particular time, the request to send an instant message is
refused by the PCP. Additionally, the refused messages may be
buffered (i.e., stored) until the watched party is available. Col. 7, ll.
11-17.
4
Appeal 2009-006487
Application 10/023,456

3. The PCP may also be configured to send communications and emails
to a watched party even when the watched party is not available. Col.
7, ll. 20-26.

ANALYSIS
Rejection of claims 17-21 under 35 U.S.C. § 103(a) as being unpatentable
over Dalal in view of Armstrong
Claims 17 and 21
Appellant’s contentions have not persuaded us of error in the
Examiner’s rejection of claims 17 and 21. Independent claim 17 recites
“wherein said central server is responsive to said presence information
relating to said invited user registered at said presence server, for use in
deciding whether said content is sent to said invited user, stored or refused.”
Appellant argues that neither Dalal nor Armstrong discloses a central server
that decides whether content is sent to an invited user, stored or refused.
App. Br. 4; Reply Br. 2. Appellant argues that Armstrong teaches
monitoring the presence of users, determining whether the watched party is
available, and deciding what mode of communication is used. App. Br. 5;
Reply Br. 2. While we agree with Appellant on these contentions, the
Examiner has identified other portions of Armstrong that disclose the
claimed limitations. Ans. 4-5. For instance, Armstrong discloses deciding
when to send content by allowing a PCP to send a message to the user even
if the user is not currently available. FF 1, 3. In addition, Armstrong
discloses deciding whether to store the content by allowing the PCP to
buffer (i.e., store) the messages until the user becomes available. FF 1, 2.
Finally, Armstrong discloses deciding whether to refuse the content by
allowing the PCP to refuse a request to send content after a predetermined
5
Appeal 2009-006487
Application 10/023,456

time, according to rules set by the user. FF 1, 2. Therefore, Appellant’s
arguments are not found to be persuasive and we sustain the Examiner’s
rejection of claim 17 and claim 20 that depends upon claim 17.
Claims 18-20
Appellant’s contentions have persuaded us of error in the Examiner’s
rejection of claims 18-20. Appellant argues that the teachings of Dalal relied
upon by the Examiner to reject claim 18 and claims 19-20 that depend upon
claim 18, does not contain adequate support in the provisional application to
warrant the earlier filing date. App. Br. 6-7; Reply Br. 3. The Examiner
finds that, according to MPEP § 2145, Appellant must provide an affidavit
or declaration as evidence that the invention date preceded the date of the
reference. Ans. 10. While we agree that affidavits and declarations are
required in that circumstance, the Examiner misses the point of Appellant’s
argument. Appellant is arguing that the provisional filing date of December
3, 1999 is not sufficient because the information used in the non-provisional
reference was not adequately supported in the provisional application
60/168,881. App. Br. 6-7. Since the Examiner has not addressed this issue,
the Examiner has not provided sufficient evidence to show that the portion
of Dalal relied upon to reject claim 18 is prior art. As a result, we will not
sustain the Examiner’s rejection of claims 18-20.

CONCLUSION
The Examiner did not err in finding that Dalal in view of Armstrong
discloses deciding whether content is sent to an invited user, stored, or
refused.
6
Appeal 2009-006487
Application 10/023,456

The Examiner erred in finding that the provisional application of
Dalal contains the claim limitations found in claim 18.

SUMMARY
The Examiner’s decision to reject claims 17 and 21 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s decision to reject claims 18-20 under 35 U.S.C.
§ 103(a) is reversed.
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).
7
Appeal 2009-006487
Application 10/023,456

AFFIRMED-IN-PART

ELD

WARE, FRESSOLA, VAN DER SLUYS, & ADOLPHSON, LLP
BUILDING FIVE, BRADFORD GREEN
755 MAIN STREET
P.O. BOX 224
MONROE, CT 06468
8