Ex Parte Salmi et al

Patent Trial and Appeal Board

May 31, 2016

13534810 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/534,810 06/27/2012
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
06/02/2016
FIRST NAMED INVENTOR
Matti Salmi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P4087US01 7625
EXAMINER
NGUYEN, TRUONG
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTI SALMI and FRANK DAWSON
Appeal2014-009995
Application 13/534,810
Technology Center 2400
Before ERIC S. FRAHM, JENNIFER L. McKEOWN, and
JOHN P. PINKERTON, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to "[a] data structure defining two-level
identification allow[ing] the integration of mobile instant messaging to
Internet based instant messaging, for instance, by providing an identification
of both a user of the IM system (IM user) and an IM client used to access an
IM system (IM client)." Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows,
with disputed limitations emphasized:
Appeal2014-009995
Application 13/534,810
11. A method comprising:
assembling, in a terminal device configured to
communicate over a network, a primitive having
information elements with a structure recognizable by the
terminal device and at least one other entity configured to
communicate over the network, the assembling including
combining at least (i) a client identifying information
element identifying an instant messaging (IM) client and
(ii) a user of the IM client; and
communicating the primitive from the terminal
device to the network,
wherein the IM client is installed in the terminal
device, and implements an instant messaging service using
the primitive,
wherein the user of the IM client is a subscriber to
the instant messaging service,
wherein the information elements of the user of the
IM client includes a user name and a password,
wherein the information elements of the client
identifying information element identifying the IM client
includes an IM client name and an IM client address,
wherein the IM client name is a name of the IM
client that is used to send and receive messages to the user
of the IM client accessing via the IM client and to record
information based on IM client, and
wherein, when the user of the IM client first
accesses the instant messaging service, the IM client
determines to send to an IM server a null logon message
that includes neither the password of the user nor identifY
of the IM client, and determines to send with the null
logon a message indicating a schema implemented in the
IM client.
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Appeal2014-009995
Application 13/534,810
THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Carey et al. (US 2004/0171396 Al, publishedSept. 2,
2004), Yu et al. (US 7,058,036 Bl, published June 6, 2006), and Cottrille et
al. (US 6,076, 100, issued June 13, 2000). Final Act. 3-8. 1
ANALYSIS
Claims 1-20
Based on the record before us, we are persuaded the Examiner erred
in rejecting claims 1-20 as unpatentable over Carey, Yu, and Cottrille.
Appellants contend that none of Carey, Yu, or Cottrille teach
determining to send to an IM server a null logon message when the IM client
first accesses the instant messaging service and determining to send with the
null logon a message indicating a schema implemented in the IM client. The
Examiner relies on Cottrille as teaching this limitation. In particular, the
Examiner finds that column 16, lines 59---65 describes that "data contains
schema and includes null field in message." Final Act. 5. The Examiner
further explains that
As describe [sic] in Cottrille (col 16, lines 30-65), the
invention disclosed the method of allowing client to send
complaint message to the server. Clearly, allowing client or
member to send the complaint message to the server is indirectly
indicates the client can access Chat (or equivalent to IM) system.
Moreover, the null in the message is equivalent to the null logon
message that includes neither the password nor identity of the IM
1 Throughout this opinion, we also refer to ( 1) the Final Action, mailed
January 28, 2014 ("Final Act."); (2) the Appeal Brief filed June 27, 2014
("App. Br."); (3) the Examiner's Answer mailed July 21, 2014 ("Ans."); and
(4) the Reply Brief filed September 22, 2014 ("Reply Br.").
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Appeal2014-009995
Application 13/534,810
client. The included schema in the message equivalent to the
"schema implemented in the IM client" of the instant application.
Accordingly, the chat server will not handle the complaint until
the client sends the complaint message.
Ans. 6. According to the Examiner then, Cottrille meets the claim limitation
"wherein, when the user of the IM client first accesses the instant messaging
service, the IM client determines to send to an IM server a null logon
message that includes neither the password of the user nor the identity of the
IM client, and determines to send with the null logon a message indicating a
schema implemented in the IM client."
Notably, claim 1, as well as independent claims 9 and 17, expressly
require the null logon message to be determined to be sent "when the user of
the IM client.first accesses the instant messaging service." The Examiner
fails to address this limitation. See generally Final Act. 3-5; Ans. 4--7. The
Examiner relies on the null portion of a complaint record message that is
sent (by the complaint channel, not the monitor client or chat client) in
response to a complaint query, not when a user first accesses an instant
messaging service. See Cottrille, col. 15, 1. 10-col. 16, 1. 64; App. Br. 10.
As Appellants explain, Cottrille' s complaint record message is sent by
the complaint channel after performing a query in response to a query
message. App. Br. 10; Reply Br. 2-5. "This clearly establishes that the
complaint record message that the Examiner refers to is not directed to a
first access by a user (chat member 76/chat client 62), but is directed to the
chat server 60 handling a complaint." App. Br. 10. While Cottrille's
message may include a null portion (to identify an empty field in an SQL
table), we fail to see how this message satisfies the disputed limitation
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Appeal2014-009995
Application 13/534,810
requiring a null logon message that is sent by an IM client to an IM server
when a user first accesses an instant messaging service.
Accordingly, for the reasons discussed above, we are persuaded that
the Examiner erred in rejecting claims 1-20 as unpatentable over Carey, Yu,
and Cottrille.
CONCLUSION
The Examiner erred in rejecting claims 1-20 under§ 103.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
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