Ex Parte Samn

Board of Patent Appeals and Interferences

Sep 22, 2011

10392768 (B.P.A.I. Sep. 22, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/392,768 03/19/2003 Jonathan Samn AUS920030152US1 8832
30449 7590 09/22/2011
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
NGUYEN, VAN KIM T
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
09/22/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JONATHAN SAMN
____________________

Appeal 2010-000675
Application 10/392,768
Technology Center 2400
____________________

Before KEVIN F. TURNER, STEPHEN C. SIU, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-7, 11-14, and 18-20.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention is directed to a real-time message transfer
system and, in particular, to a method and system for relaying real-time
messages having different formats between multiple, non-connected
messaging servers from a central relaying point. (Spec. 1, ll. 5-8.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for transferring real-time messages between
multiple computing devices during a chat-room session when at
least one of the computing devices connected during the chat-
room session is not connected directly to a server device
hosting the chat-room session comprising:
a plurality of computing terminal devices through which
users can access a chat-room session;
a computing network for transmitting messages to and
from said computing terminal devices;
at least two server computing devices for connecting said
computer terminal devices to said network, each of said
computing terminal devices being connected to one of the
server computing devices; and
a central computing terminal device having direct access
to all server computing devices for the purposes of connecting a
computing terminal device seeking access to a chat-room
session hosted on a server computing device to which the

1 Appellant presents arguments with respect to claims 10 and 17 in the
Appeal Brief (App. Br. 7); however, those claims have been cancelled by the
Appellant (See Ans. 3).
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computer terminal device seeking the access is not connected to
the chat-room host server.
(Appeal Brief, Claims Appendix2 9.)

THE REJECTIONS
The Examiner rejected claims 1, 3-7, 11-14, and 18-20 under 35
U.S.C. § 103(a) as unpatentable over Eaton et al. (US 6,983,370 B2, issued
January 3, 2006) in view of Wen et al. (US 7,181,492 B2, issued February
20, 2007). (Examiner’s Answer entered July 27, 2009, “Ans.” 4-8.)
The Examiner also rejected claims 1, 3-7, and 14 as indefinite under
35 U.S.C. § 112, second paragraph. (Ans. 4.) As noted by the Examiner,
Appellant did not present this rejection for review in the Appeal Brief (Ans.
3).3 As a result, Appellant has waived any arguments rebutting this
rejection. Accordingly, we summarily affirm the Examiner’s rejection of
claims 1, 3-7, and 14 as indefinite under 35 U.S.C. § 112, second paragraph.
See 37 C.F.R. § 41.37(c)(1)(vii) (arguments not made are considered
waived); MPEP § 1205.02 (“If a ground of rejection stated by the examiner

2 Appeal Brief filed October 28, 2008, as amended by subsequent filings on
January 12, 2009, and April 21, 2009, hereinafter “App. Br.” and Claims
App’x, respectively.
3 Appellant presents arguments regarding this rejection for the first time in
the Reply Brief filed September 25, 2009 (hereinafter “Rep. Br.”), however,
as discussed infra, these arguments will not be considered. We additionally
note that the Examiner’s mere indication that Appellant had not responded to
the rejection under 35 U.S.C. § 112, second paragraph as well as the
restatement of the rejection in the Examiner’s Answer does not “open the
door” for Appellant to present new arguments in the Reply Brief. (Rep. Br.
2.) The Examiner does not present any new position in the Examiner’s
Answer relative to the Final Rejection. (Final Rejection, 2-3; Ans. 4.)
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is not addressed in the appellant’s brief, that ground of rejection will be
summarily sustained by the Board.”).

ISSUES
The Examiner found that Eaton discloses all of the limitations of
claim 1, except that Eaton does not explicitly teach a computer terminal
device seeking access that is not connected to the chat room host server.
(Ans. 5.) The Examiner found that Wen discloses the limitation missing in
Eaton because Wen teaches transferring a customer to a chat session with a
different agent on a different server. (Ans. 6.) The Examiner determined
that it would have been obvious to one of ordinary skill in the art at the time
the invention to apply Wen’s method of transferring chat sessions between
servers to Eaton’s system, motivated by the need to provide a more user-
friendly chat system to customers, to make internet chat more efficient, and
because it “it is highly desirable to provide customers with a tool to redirect
existing or potentially new chat sessions to another server.” (Ans. 6, 10.)
Appellant argues, inter alia, that the LAN server in Figure 104 of
Eaton only transfers data and does not function as a basic user terminal as
does Appellant’s central computing device. (App. Br. 5-6.) Appellant also
contends that Wen does not teach the claimed invention because the chat
sessions in Wen are one-to-one chat sessions where once a hand-off or
transfer occurs, “the agent initiating the transfer is out of the loop,” whereas
the central terminal device recited in the claims remains part of the
communication. (App. Br. 6-7.) As a result of these alleged deficiencies,

4 Although Appellant refers to LAN server 266 in the Appeal Brief, as the
Examiner notes, Appellant appears to be referring to item 172 of Figure 10.
(Ans. 3.)
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Appellant contends that there is “no suggestion or teaching to modify Eaton
with Wen to produce Applicant’s invention,” and thus, the Examiner has not
established a prima facie case. (App. Br. 7.)
Therefore, the dispositive issues on appeal are:
(1) Whether the Examiner erred in finding that the messaging server
of Eaton discloses the central computing terminal device recited in
the claims?
(2) Whether the Examiner erred in determining that Eaton in view of
Wen renders obvious “a central computing terminal device” as
recited in claim 1?

PRINCIPLES OF LAW
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court explained that “Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.”’ KSR, 550 U.S. at 406.
The KSR Court explained, “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars its patentability.” Id. at
417.
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ANALYSIS
At the outset, we note that Appellant has offered many new arguments
for the first time in the reply brief. “The reply brief is not an opportunity to
make arguments … that could have been made in the principal brief on
appeal to rebut the Examiner’s rejections, but were not.” Ex Parte Borden,
93 U.S.P.Q.2d 1473, 1474 (B.P.A.I. 2010) (informative). “[A]rguments that
could be made in the reply brief, but are not, are waived,” and thus, we will
not consider these arguments. Id.

Issue One
We are not persuaded by Appellant’s argument that Eaton does not
disclose a central computing device that also serves as a basic user terminal.
Claim 1 only recites that the central computing terminal device has direct
access “for the purposes of connecting a computing terminal device seeking
access to a chat-session….” Thus, claim 1 does not recite that the central
computing terminal device serves as a basic user terminal. In addition,
Appellant’s Specification provides no specific definition of a central
computing terminal device that would require such device to serve as a basic
user terminal. Therefore, we agree with the Examiner that claim 1 does not
require that the central computing terminal device functions as a basic user
terminal. (See Ans. 8-9.) Thus, Appellant’s arguments are not
commensurate in scope with Appellant’s claims. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from the
outset because … they are not based on limitations appearing in the claims
….”).
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Issue Two
Similarly, we are not persuaded by Appellant’s argument that the
Examiner erred in relying on Eaton in view of Wen because the agent
initiating the transfer in Wen does not remain part of the communication
after the transfer has been made. (App. Br. 6.) Appellant’s argument again
relies on limitations that are not present in the claims. As discussed supra,
Appellant’s claim 1 only requires that the central computing terminal device
have access for the purpose of connecting a computing terminal device, but
does not require that the central computing terminal device remain part of
the communication. Thus, Appellant’s arguments regarding “remaining
connected” are not commensurate in scope with Appellant’s claims. See
Self, 671 F.2d at 1348.
For the reasons discussed supra, we also are not persuaded by
Appellant’s argument that one of ordinary skill in the art would not have
combined Eaton and Wen to arrive at Appellant’s invention. Appellant has
failed to direct us to any persuasive argument or evidence identifying any
error in the Examiner’s factual findings or rationale.

CONCLUSIONS
The Examiner did not err in finding that the messaging server of
Eaton discloses the central computing terminal device recited in the claims.
The Examiner did not err in determining that Eaton in view of Wen
renders obvious “a central computing terminal device” as recited in claim 1.
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DECISION
We affirm the Examiner’s rejection of claims 1, 3-7, 11-14, and 18-20
under 35 U.S.C. § 103(a) as unpatentable over Eaton in view of Wen.
We summarily affirm the Examiner’s rejection of claims 1, 3-7, and
14 as indefinite under 35 U.S.C. § 112, second paragraph.
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)(1).

AFFIRMED

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