Ex Parte Schultz et alDownload PDFPatent Trial and Appeal BoardSep 26, 201612275319 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/275,319 11/21/2008 25537 7590 09/28/2016 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 FIRST NAMED INVENTOR Paul T. Schultz 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. 20080235 1868 EXAMINER TILLERY, RASHAWNN ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ExpartePAUL T. SCHULTZ, ROBERT A. SARTIN!, and MARTIN W. MCKEE Appeal2014-008486 Application 12/275,319 Technology Center 2100 Before: THU A. DANG, ELENI MANTIS MERCADER, and SCOTT B. HOWARD, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-008486 Application 12/275,319 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of claims 1-10, 12-19 and 21-23. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. THE INVENTION The claimed invention is directed to user interface configured to provide audio, video or haptic output in response to received communications. The device may also include logic to identify information associated with an availability status of a user of the device and provide an audio, video or haptic output via the user interface based on the information associated with the availability status of the user of the device. Abstract. Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. A device; compnsmg: a communication interface configured to receive communications from a first party and transmit communications from a user of the device to the first party; a display configured to display the communications received from the first party and the communications transmitted from the user, the communications between the user and the first party corresponding to a messagmg sess10n; an input device; and logic configured to: receive input from the user via the input device to add a second party to the messaging session, the input comprising one of a single 2 Appeal2014-008486 Application 12/275,319 keyboard input, a single keypad input, an icon selection or audio input from the user of the device, and add the second party to the messaging session based on the received input, and wherein the input device is further configured to: receive input from the user to limit the transmission of a first communication in the messaging session to only a designated one of the first party or second party, the input comprising a voice command, a keypad input or a keyboard input, and wherein the logic is further configured to: forward the first communication for transmission via the communication interface to the designated one of the first party or second party and not the other of the first party or second party, and forward additional communications in the messaging session to both the first party and the second party. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Blanchard Becker Wattenberg Forstall Gupta Gruen Deeds Klinghult Schmidt Shahoian US 6,408,191 Bl US 6,981,223 B2 US 7,917,867 B2 US 7,975,242 B2 US 8,171,080 B2 US 2005/0160372 Al US 2006/0179114 Al US 2008/0085743 Al US 2008/0242271 Al US 2009/0160770 Al 3 June 18, 2002 Dec. 27, 2005 Mar. 29, 2011 July 5, 2011 May 1, 2012 July 21, 2005 Aug. 10, 2006 Apr. 10, 2008 Oct. 2, 2008 June 25, 2009 Appeal2014-008486 Application 12/275,319 REJECTIONS The Examiner made the following rejections: Claims 7, 9, and 14 stand rejected under 35 U.S.C § 102(b) as being anticipated by Becker. Claims 1, 2, 4, and 21 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Schmidt and Becker. Claim 5 stands rejected under 35 U.S.C § 103(a) as being unpatentable over Schmidt in view of Becker and further in view of Shahoian. Claims 3 and 6 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Schmidt in view of Becker and further in view of Klinghult. Claim 8 stands rejected under 35 U.S.C § 103(a) as being unpatentable over Becker in view of Forstall. Claim 10 stands rejected under 35 U.S.C § 103(a) as being unpatentable over Becker in view of Wattenberg. Claims 12 and 13 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Becker in view of Gruen. Claims 15, 16, 18, and 19 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Becker in view of Gupta in further view of Deeds. Claim 17 stands rejected under 35 U.S.C § 103(a) as being unpatentable over Becker in view of Gupta in further view of Wattenberg. 4 Appeal2014-008486 Application 12/275,319 Claims 22 and 23 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Schmidt in view of Becker and further in view of Blanchard. ISSUES The pivotal issues are whether the Examiner erred in finding that 1. Becker discloses the limitations of: forward the first communication for transmission via the communication interface to the designated one of the first party or second party and not the other of the first party or second party, and forward additional communications in the messaging session to both the first party and the second party as recited in claim 7; 2. the combination of Schmidt and Becker teaches the limitation of: "provide one or more outputs in one of the groups of potential outputs via the user interface based on the determined availability status of the user of the device" as recited in claim 1; and 3. adequate motivation was articulated for combining the various references. ANALYSIS We adopt the Examiner's findings in the Answer and Final Action and we add the following primarily for emphasis. Claims rejected under 35 U.S.C § 102(b) Appellants argue that Becker at best discloses a participant may be ejected from a chat session (App. Br. 13). Appellants assert that Becker may 5 Appeal2014-008486 Application 12/275,319 disclose that a conference session may include various controls including participant removal, but Becker does not disclose a user interface configured to receive input from the user to limit the transmission of a first communication in the messaging session to only a designated one of the first party or second party, forward the first communication for transmission via the communication interface to the designated one of the first party or second party and not the other of the first party or second party, and forward additional communications in the messaging session to both the first party and the second party as recited in claim 7 (App, Br. 13-14). Appellants argue that the removed participant will not be forwarded additional communications in the messaging session, as required by claim 7 (App. Br. 14). We do not agree with Appellants' argument. The Examiner, broadly but reasonably, interprets the disputed limitation consistent with the Specification. The Examiner finds, and we agree, that Appellants' Specification describes two examples for restricting a particular message from another party or parties (i.e., "Paul may type in '@Marty' followed by a message" or "Paul may type in '-Bob', followed by a message" (see paras. 71 and 72). Similarly, Becker discloses adding any number of participants to a conference session and removing a particular participant from the conference session to limit the transmission of a message to the particular participant (col. 7, 11. 4 7-57 where participant ejection/removal from a conference session is disclosed; also see col. 10, 11. 1-41 where it is disclosed that pals can be added to a conference by a mouse click or accessing a button) (Ans. 3). We further agree with the Examiner's finding that the claim language does not expressly recite that the transmitted 6 Appeal2014-008486 Application 12/275,319 communication and the symbol to limit the designated party are simultaneously operated (Ans. 3). Accordingly, we affirm the Examiner's rejection of claim 7 and for the same reasons the Examiner's rejection of claims 9 and 14. Claims 1, 2, 4, and 21 rejected under 35 U.S.C § 103(a) Appellants argue that Schmidt discloses providing various attributes based on the user's location, but does not disclose or suggest logic configured to provide one or more outputs in one of the groups of potential outputs via the user interface based on the determined availability status of the user of the device, as required by claim 1 (App. Br. 17-18). We do not agree with Appellants' argument. The Examiner finds, and we agree, that Schmidt discloses adapting a user interface of a user device based on the location of the device or segment of time (see paras. 9-12 and 53-56; Ans. 5, Final Act. 7). We agree with the Examiner's finding that Schmidt teaches adapting a user interface of a user device based on the location of the device or segment of time (see paras. 9-12 and 53-56). In particular, for example, if the user is at a movie theater the ringtone is adopted to a silent profile whereas if the user is at home the ringtone is adapted to an upbeat song played back at high volume (see para. 58). The Examiner further finds, and we agree, that to the extent that location may not completely correlate with the user's availability, Becker expressly teaches determining the user's availability based on certain types of user presence (i.e., activity), such as "idle" presence of the user's device if inactivity is determined for a prolonged period of time or "available" presence if the user is actively using the computer (see col. 9, 11. 29-42). 7 Appeal2014-008486 Application 12/275,319 Appellants attack the teachings of the references separately by arguing that Schmidt does not determine availability status and Becker does not determine outputs based on availability (App. Br. 17-18). "[O]ne cannot show non-obviousness by attacking references individually where ... the rejections are based on combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981). As stated supra, Schmidt teaches different outputs based on availability and Becker teaches specific types of determined availability based on the user's activity. Appellants argue that there is no adequate motivation to combine the references but do not state why the articulated Examiner's motivation is inadequate (App. Br. 18-19). We do not agree because the Examiner's motivation provides a rational underpinning to support the legal conclusion of obviousness stating that one skilled in the art at the time of the invention would include Becker's teachings in the modified Schmidt's user interface to provide a more user-friendly interface that quickly alerts users as to the availability of friends thereby saving user time while reducing clutter (Ans. 6). Appellants further argue that the two references are unrelated to one another because, other than the fact that both inventions may involve mobile devices, one skilled in the art would not have combined their features because they are directed to solving different problems (App. Br. 19). We do not agree with Appellants' argument. Two separate tests define the scope of analogous prior art: ( 1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. 8 Appeal2014-008486 Application 12/275,319 In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). At the instant case, both references pertain to solving the problem of determining user availability and further more they are both from the same field of endeavor as they relate to functions that may involve mobile devices. With respect to combining the actual features of the devices, we are not persuaded because "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference ... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." Keller, 642 F.2d at 425; see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). Appellants repeat similar arguments with respect to the combinability and findings of the additional references (App. Br. 20-35). We do not agree with Appellants' arguments regarding combinability for similar reasons as stated above and adopt the Examiner's specific findings as to the particular teachings and rationales in the Answer and Final action without having to repeat them herein (Ans. 6-11; Final Act. 10-22). Accordingly, we affirm the Examiner's rejections of claims 1-6, 8, 10, 12, 13, 15-19, and 21-23. 9 Appeal2014-008486 Application 12/275,319 CONCLUSIONS The Examiner did not err in finding that 1. Becker discloses the limitations of: forward the first communication for transmission via the communication interface to the designated one of the first party or second party and not the other of the first party or second party, and forward additional communications in the messaging session to both the first party and the second party as recited in claim 7; 2. the combination of Schmidt and Becker teaches the limitation of: "provide one or more outputs in one of the groups of potential outputs via the user interface based on the determined availability status of the user of the device" as recited in claim 1; and 3. adequate motivation was articulated for combining the various references. DECISION For the above reasons, the Examiner's rejection of claims 1-10, 12- 19, and 21-23 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)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation