Ex Parte SolieDownload PDFPatent Trial and Appeal BoardApr 29, 201310733667 (P.T.A.B. Apr. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/733,667 12/11/2003 Kevin Solie LOT920030050US1 (020) 8861 46321 7590 04/29/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 EXAMINER NOORISTANY, SULAIMAN ART UNIT PAPER NUMBER 2478 MAIL DATE DELIVERY MODE 04/29/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEVIN SOLIE ____________ Appeal 2010-009093 Application 10/733,667 1 Technology Center 2400 ____________ Before MARC S. HOFF, BRUCE R. WINSOR, and JEREMY J. CURCURI, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1 and 3-7. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is IBM Corporation. 2 Claims 2 and 8-21 have been cancelled. Appeal 2010-009093 Application 10/733,667 2 STATEMENT OF THE CASE Appellant’s invention is a method and system for allowing on-line users to have access to instant message notifications and text regardless of which on-line computing device they are logged into. The method includes identifying an instant message session between two or more users, determining which client device for each user is active, and delivering text of the instant message session to the active client devices for the two or more users (Spec. ¶¶ [0008], [0009]). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for creating instant message awareness in a communications network for a plurality of a user’s on-line client devices, the method comprising: identifying an instant message session between two or more users; determining which client devices for each said user is active; joining the active client devices of the users to the instant message session; retrieving the text of the instant message session from the users’ previously active clients, wherein the users’ previously active client is separate from the users’ currently active clients; and transferring the text of the instant message session to the users’ active clients. REFERENCES Moran US 2004/0068567 A1 Apr. 8, 2004 Guedalia US 7,043,538 B2 May 9, 2006 REJECTIONS Claims 1 and 3-7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Guedalia in view of Moran. Appeal 2010-009093 Application 10/733,667 3 ISSUES Appellant argues that Guedalia does not teach retrieving the text of the instant message session from a users’ previously active client, separate from the users’ currently active clients (App. Br. 9-10). The Examiner finds that Moran, rather than Guedalia, teaches the claimed separate-ness (Ans. 10-11). Appellant further argues that Guedalia fails to teach retrieving the text of an instant message session from a users’ previously active client (App. Br. 11). The Examiner finds that Moran teaches the claimed text retrieval (Ans. 11-12). Appellants’ arguments and the Examiner’s findings present us with the following issues: 1. Does the combination of Guedalia and Moran teach or fairly suggest retrieving the text of an instant message session from the users’ previously active clients, wherein the users’ previously active client is separate from the users’ currently active clients? 2. Does the combination of Guedalia and Moran teach or fairly suggest retrieving the text of an instant message session from the users’ previously active clients? PRINCIPLES OF LAW Section 103(a) 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.’ Appeal 2010-009093 Application 10/733,667 4 KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) ANALYSIS We select claim 1 as representative of this group of claims, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). Appellant’s argument that Guedalia does not teach retrieving text from a previously active client, which is separate from the users’ currently active clients (App. Br. 9-10), is not persuasive. We agree with the Examiner’s finding that Moran, rather than Guedalia, teaches this limitation (Ans. 10). Moran teaches that the user may “selectively transfer the computer session to another device, such as his wireless device, through activation of a triggering signal. . . . [T]he context of the computer session is determined as it is being performed on the land-line device . . . . The computer session is then transferred to the wireless device by launching a new computer session on the wireless device and transferring the context of the computer session . . . to the new computer session on the wireless device” (¶ [0007]). Appeal 2010-009093 Application 10/733,667 5 Appellant’s further argument that Guedalia fails to teach “retrieving the text of the instant message session from the users’ previously active clients” (App. Br. 10-11) is similarly unpersuasive to show Examiner error. We agree with the Examiner, who finds that Moran, rather than Guedalia, teaches this limitation (Ans. 14-15). Moran teaches that “[i]n one embodiment, the ongoing dialog of a chat session may be maintained in database 40 in a separate table . . . in message log table 44. Optionally, the context may be obtained via a daemon or background service 45 running on the user’s computer . . . which passes the information to messaging data center 24 in response to the user requesting that the session be transferred . . . . When convenient, the user will initiate an action to complete the transfer of chat session (sic) to the user’s Internet-enabled wireless device” (¶¶ [0028], [0029]). We find that the combination of Guedalia and Moran teaches all the limitations of the claimed invention. Thus, we will sustain the Examiner’s § 103 rejection of claims 1 and 3-7 as being unpatentable over Guedalia in view of Moran. CONCLUSION 1. The combination of Guedalia and Moran teaches retrieving the text of an instant message session from the users’ previously active clients, wherein the users’ previously active client is separate from the users’ currently active clients. 2. The combination of Guedalia and Moran teach or fairly suggest retrieving the text of an instant message session from the users’ previously active clients. Appeal 2010-009093 Application 10/733,667 6 DECISION The Examiner’s decision rejecting claims 1 and 3-7 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 kis Copy with citationCopy as parenthetical citation