Ex Parte Salmi et alDownload PDFPatent Trial and Appeal BoardSep 19, 201310099902 (P.T.A.B. Sep. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTI SALMI, HANS JACOB JESPERSEN, and JESPER AAEN ____________ Appeal 2011-004141 Application 10/099,902 Technology Center 2400 ____________ Before CARL W.WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 5, 7, 8, 17, 19, 21-23, 25-27, 29-43, and 45-61. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-004141 Application 10/099,902 2 STATEMENT OF THE CASE Appellants’ invention is directed to a method and system for managing presence information as a standalone service. See Specification 95, Abstract. Claim 22 is illustrative, with emphasis added to the key disputed limitations, reproduced below: 22. A method comprising: receiving a subscribe presence primitive from a client of requesting user for subscribing presence information of a requested user, determining if a subscription to said presence information of the requested user has been preauthorized by the requested user, if the subscription has not been pre-authorized, requesting an authorization and receiving an authorize presence primitive from the requested user, and if the subscription has been authorized or pre-authorized, providing a presence primitive including presence information of the requested user to the requesting user according to the subscription, wherein said subscription is valid for a period of time in which one or more presence primitives including requested presence information of the requested user are pushed to said client of said requesting user, particularly after receiving an update presence primitive including one or more presence attribute values to be updated from said requested user, wherein the presence primitive comprises one or more information elements including a presence information element, said presence information element comprises one or more presence attributes, the values of the attributes indicating presence status of the requested user or a client of the requested user at the time the presence information is provided, said presence attributes are classifiable in Appeal 2011-004141 Application 10/099,902 3 anyone or more of the following: client reachability, user availability, user personal status, user or client location, and client capabilities, and wherein said values of the presence attributes have associated space and time information useable by a presence server to modify said presence attribute values or related presence attribute values in processing said presence primitive. The Examiner relies on the following as evidence of unpatentability: Desai US 6,820,204 B1 Nov. 16, 2004 (Filed Mar. 31, 2000) Eftis US 7,171,473 B1 Jan. 30, 2007 (Filed Nov. 9, 2000) Aravamudan US 6,301,609 B1 Oct. 9, 2001 Tornabene US 2002/0023132 A1 Feb. 21, 2002 THE REJECTIONS 1. The Examiner rejected claims 22 and 42 under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. Ans. 5-6.1 2. The Examiner rejected claims 5, 7, 8, 17, 19, 21-23, 25-27, 29-43, and 45-61 under 35 U.S.C. §103(a) as unpatentable over Desai, Eftis, and Aravamudan. Ans. 6-17. 3. The Examiner rejected claims 5, 7, 8, 17, 19, 21-23, 25-27, 29-43, and 45-61 under 35 U.S.C. §103(a) as unpatentable over Desai and Tornabene. Ans. 18-29. 1 Throughout this opinion, we refer to the Appeal Brief filed July 16, 2010; the Examiner’s Answer mailed October 15, 2010; and the Reply Brief filed December 15, 2010. Appeal 2011-004141 Application 10/099,902 4 ISSUES Based upon our review of the record, the arguments proffered by Appellants and the findings of the Examiner, we find the following issues to be dispositive of the claims on appeal: 1. Under § 112, does the Examiner err in rejecting claims 22 and 42 by finding that Appellants’ original specification does not provide adequate written description to convey to those skilled in the art that the inventors had possession of the claimed subject matter as of the filing date of the present application? 2. Under § 103, does the Examiner err in rejecting claims 5, 7, 8, 17, 19, 21-23, 25-27, 29-43, and 45-61 by finding that the cited references, collectively, show or suggest the transmission of “one or more presence primitives” to the client of a requesting user? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (App. Br. 6-12) and the Reply Brief (Reply Br. 2-6) that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 5-29), and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 30-44). We highlight and amplify certain teachings and suggestions of the references as follows. With respect to the rejection of independent claims 22 and 42, Appellants argue the Examiner erred by finding that the present Specification fails to provide an adequate written for “requested presence Appeal 2011-004141 Application 10/099,902 5 information of the requested user are pushed to said client.” App. Br. 6. Appellants acknowledge that the term “pushed” is not employed in their specification but urge that the Specification recites, at page 31, that an authorization sequence may be done “autonomously.” App. Br. 7. With regard to the “autonomous” transmission, we find that Appellants’ Specification describes the “authorization sequence” and not the presence information set forth in the claims. Appellants point out that their Specification, at lines 28-30 of page 31, recites that presence information is provided “initially and always” which Appellants urge is suggestive of information which is either “pushed” or “pulled” to the client. App. Br. 7-8. “[C]ompliance with the written description requirement is a question of fact.” Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (citing Vas- Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Appellants’ argument that their Specification could support either the “pushing” or “pulling” of presence information is not sufficient. “[I]t is ‘not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device.’” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). See also Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (“[W]e have repeatedly stated that actual ‘possession’ or reduction to practice outside of the specification is not enough. Rather, . . . it is the specification itself that must demonstrate possession.”). “A description which renders obvious the invention for which Appeal 2011-004141 Application 10/099,902 6 an earlier filing date is sought is not sufficient.” Lockwood, 107 F.3d at 1572. Consequently, we find the Examiner did not err in rejecting independent claims 22 and 42 under § 112, first paragraph, as lacking an adequate written description. With respect to the various rejections under § 103, Appellants argue that Desai, Eftis, Aravamudan, and Tornabene, whether considered individually, or collectively, fail to show or suggest the transmission of “one or more presence primitives.” App. Br. 8-11. The Examiner finds that “presence primitives” is any information relating to the status of a user/client and points out that Eftis clearly shows “on-line presence information” which is captured by the Session Manager Server and provided to another user/client. Ans. 32. We find the Examiner’s position persuasive. The provision of presence information regarding one user to another user is clearly demonstrated by at least the Eftis reference. Appellants also argue that Tornabene is not a viable reference, urging that the provisional application upon which Tornabene relies for priority fails to provide sufficient support to permit that reference to be utilized as prior art. App. Br. 11. We decline to address this argument in view of the disclosure of Eftis regarding presence information that we note above and our finding that Appellants’ Specification does not support the claimed feature of presence information which is “pushed” to the client. We therefore find that the Examiner does not err in the rejection of claims 5, 7, 8, 17, 19, 21-23, 25-27, 29-43, and 45-61. Appeal 2011-004141 Application 10/099,902 7 CONCLUSION The Examiner does not err in rejecting claims 22 and 42 under § 112 and claims 5, 7, 8, 17, 19, 21-23, 25-27, 29-43, and 45-61 under § 103. ORDER The Examiner’s decision rejecting claims 5, 7, 8, 17, 19, 21-23, 25-27, 29-43, and 45-61 is affirmed. 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). AFFIRMED llw Copy with citationCopy as parenthetical citation