Ex Parte South et al

Patent Trial and Appeal Board

Aug 2, 2016

12841285 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/841,285 07/22/2010
96355 7590 08/04/2016
NIXON & VANDERHYE, P,C /Vonage
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Michael South
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.
JCE-5524-13 1731
EXAMINER
CHU, WUTCHUNG
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SOUTH and JOHN ERICKSON
Appeal2015-003984 1
Application 12/841,285
Technology Center 2400
Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 "Appeals are pending in the following co-owned patent applications that
are directed to related subject matter: Application Serial No. 12/822,970;
Application Serial No. 12/841,258; Application Serial No. 12/841,250;
Application Serial No. 12/841,290; Application Serial No. 12/856,140; and
Application Serial No. 13/244,898." App. Br. 3.
Appeal2015-003984
Application 12/841,285
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 8-12, and 16-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claims
Exemplary claims 1, 3, and 19 under appeal read as follows (emphasis
and formatting added):
1. A method of processing communication requests
based on handling instructions in an Internet Protocol (IP)
environment, comprising:
receiving a communication request that includes a user
group identifier, wherein the communication request is an
incoming SMS or MMS message;
obtaining communication handling instructions for the
user group based on the user group identifier, wherein the
communication handling instructions indicate which members
of the group should receive the communication; and
attempting to terminate the S~v1S or ~vHv1S message to the
communication devices of all members of the group that should
receive the SMS or MMS message using the obtained
communication device handling instructions.
3. The method of claim 1, wherein the communication
handling instructions are time of day dependent, and wherein
the attempting step is also based on the time of day at the
locations of each of the communication devices of those
members of the group that should receive the communication.
19. The method of claim 1, wherein the attempting step
comprises attempting to terminate the SMS or MMS message to
the communication devices of fewer than all of the members of
the group when the obtained communication device handling
instructions indicate that not all members of the group should
receive the SMS or MMS message.
2
Appeal2015-003984
Application 12/841,285
Rejections
The Examiner rejected claims 1, 8, 9, and 16-21under35 U.S.C.
§ 102(b) as being anticipated by Aaltonen et al. (US 7,930,355 B2; Apr. 19,
2011).2
The Examiner rejected claims 2, 4, 10, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Aaltonen and Yaker
(US 2002/0026344 Al; Feb. 28, 2002).3
The Examiner rejected claims 3 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over various combinations of Aaltonen, Yaker, and
Tofighbakhsh et al. (US 2011/0142221 Al; June 16, 2011).4
Appellants' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
Aaltonen is not directed to systems and methods for delivering
copies of SMS or MMS messages. Instead, Aaltonen is directed
to a system \'l1hich is used to invite people to participate in a
group instant messaging session. The group instant messaging
session would typically be carried out using an instant
messaging system that is completely separate from the
2 Separate patentability is not argued for claims 8, 9, 16-18, 20, and 21.
Particularly as to claim 16, merely reciting the language of a particular claim
and asserting the cited prior art reference does not teach or suggest the claim
limitation, without more, fails to constitute an argument on the merits. See
37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011 ). Except for our ultimate decision, this rejection of these claims is not
discussed further herein.
3 Separate patentability is not argued for claims 4, 10, and 12. Except for our
ultimate decision, this rejection of these claims is not discussed further
herein.
4 Separate patentability is not argued for claim 11. Except for our ultimate
decision, this rejection of this claim is not discussed further herein.
3
Appeal2015-003984
Application 12/841,285
invitation system described in Aaltonen. Thus, Aaltonen is not
even directed to an instant messaging system, let alone a
system used to deliver SMS or MMS messages.
App. Br. 9, emphasis added.
[T]he invitation messages sent to the members of a group, as
illustrated in Figure 4, are not copies of the original SMS
message M 1 that the inviting party sent to the distribution
server S 1. In fact, the W AP invitation messages have a very
different content than the original SMS message M 1 that the
inviting party sent to the distribution server.
App. Br. 11, emphasis added.
2. Further, Appellants also contend that the Examiner erred in
rejecting claim 1 under 3 5 U.S. C. § 102 (b) because:
[T]he SMS message Ml is actually addressed to the network
server S 1, not to a group identifier. To the extent a group
identifier is even present in the message Ml, it is located in the
body of the message, and it is not used to direct the SMS
message to the network server S 1. See Aaltonen at column 5,
lines 9-11.
App. Br. 10.
3. Additionally, Appellants also contend that the Examiner erred in
rejecting claim 1 under 3 5 U.S. C. § 102 (b) because:
It is important to note that profile data for the group, and profile
data for individual members of the group, is not being used to
determine which members of the group should receive an
invitation, but rather to identify a specific group instant
messaging session that all members of the group will be invited
to join.
App. Br. 10.
Aaltonen never sends W AP invitation messages to only
selected members of a group. Aaltonen always sends such
W AP invitation messages to all members of the group.
4
Appeal2015-003984
Application 12/841,285
App. Br. 12.
4. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
The outgoing message generator 205 then generates invitation
messages which are sent to all members of the identified group.
These invitation messages are not sent as SMS or MMS
messages, but rather as Wireless Application Protocol (W AP)
messages. See Aaltonen at column 5, lines 29-40.
App. Br. 10.
In addition, Aaltonen's system does not attempt to
terminate or deliver copies of the same SMS or MMS message
that it received from an inviting party to the invited parties.
Instead, as explained above, Aaltonen's system receives a SMS
message Ml from an inviting party. Aaltonen's system then
uses information in that SMS message Ml to generate and send
a plurality of completely different W AP invitation messages to
all members of an identified group to invite them to join a
group communication session.
5. Appellants contend that the Examiner erred in rejecting claim 19
under 35 U.S.C. § 102(b) because:
Aaltonen fails to disclose attempting to terminate SMS or MMS
messages. Also, the W AP messages that are delivered by
Aaltonen are sent to all members of the group. Thus, Aaltonen
also fails to disclose or suggest attempting to terminate the
SMS or MMS message to the communication devices of fewer
than all of the members of a group when communication device
handling instructions indicate that not all members of the group
should receive an SMS or MMS message.
App. Br. 13-14.
5
Appeal2015-003984
Application 12/841,285
6. Appellants contend that the Examiner erred in rejecting claim 2
under 35 U.S.C. § 102(b) because:
Yaker is directed to significantly different technology than
Aaltonen. Yaker is directed to methods for delivering a "page."
A "page" is a very short message that typically includes only a
telephone number which a recipient is to call upon receipt of
the page. Page messages are received by a dedicated wireless
receiver (a pager), as opposed to a telephony device which is
used to conduct telephone calls. Page messages are not
delivered over telephony networks. Instead, page messages are
delivered over a dedicated wireless transmission system that is
separate from cellular telephony systems.
App. Br. 14, emphasis added.
Yaker is not directed to systems or methods for
delivering SMS or MMS messages to multiple members of a
group based on communication handling instructions for the
group.
App. Br. 15.
7. 1A .. ppellants contend that the Examiner erred in rejecting claim 3
under 35 U.S.C. § 102(b) because:
[T]he only locational aspect of paragraph 28 of Tofighbakhsh
relates to determining who is presently in proximity to a party
wishing to send invitations to join a conference call.
Tofighbakhsh does not even mention anything about checking
the time of day at the location where a user's communications
device is located. Also, Tofighbakhsh's method of generating a
list of people to invite to participate in a conference call does
not take any time of day considerations into account when
generating that list.
App. Br. 16, emphasis added.
6
Appeal2015-003984
Application 12/841,285
Issues on Appeal
Did the Examiner err in rejecting claims 1 and 19 as being
anticipated?
Did the Examiner err in rejecting claims 2 and 3 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants' conclusions. Except as noted below, we adopt as
our own ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner's Answer in response to Appellants' Appeal Brief. We
concur with the conclusions reached by the Examiner. We highlight the
following points.
As to Appellants' above contention 1, we disagree. We agree with the
Examiner's reasoning at page 2 of the Answer. Further, Appellants'
arguments directed to an "instant" messaging claim requirement overlook
that claim 1 is not so limited. Rather, claim 1 is directed to SMS and MMS
messages. As the Examiner correctly points out, SMS messaging is taught
in Aaltonen.
As to Appellants' point that Aaltonen does not deliver "copies" of
messages, we again point out that claim 1 is not so limited. Rather, it merely
requires that the message be received. This does not preclude all or merely
part of the message being received. As cited by the Examiner (Final Act. 2),
Aaltonen explicitly states that "[t]he SMS message conveniently identifies
7
Appeal2015-003984
Application 12/841,285
the group and can contain a line of text or image that the member wants to
pass on for discussion." Col. 2, 11. 51-54.
As to Appellants' above contention 2, we disagree. Appellants argue
how the messages are "addressed." We again point out that claim 1 is not so
limited. Rather, it merely requires that the request include a user group
identifier. Instructions are then obtained for that user group identifier. We
agree with the Examiner that this is shown in Aaltonen at column 4, lines
29--42.
As to Appellants' above contention 3, we disagree. Contrary to
Appellants' argument, we conclude an artisan would understand Aaltonen at
column 6, lines 3-5, to be directed to selected members of Group G.
Further, contrary to Appellants' argument, we conclude an artisan would
understand Aaltonen at column 7, lines 10-11, to be directed to not just
outgoing W AP messages (as argued), but also outgoing SMS messages.
As to Appellants' above contention 4, we disagree for the reasons
discussed above as to contentions 1-3.
As to Appellants' above contention 5, we disagree for the reasons
discussed above as to contention 3.
As to Appellants' above contention 6, we disagree. Appellants argue
that Yaker does not teach or suggest either "delivered over telephony
networks" or "delivering SMS or MMS messages." App. Br. 14--15.
However, Examiner did not cite Yaker for these limitations. Rather, the
Examiner cited Aaltonen. Final Act. 2--4 and 7. The Examiner relied on
Yaker to teach "a communication request is received based on at least one
associated scheduler with their individual schedules indicating availability
for example, times of a day, days of a week." Final Act. 7.
8
Appeal2015-003984
Application 12/841,285
We conclude that Appellants' argument ignores the actual reasoning
of the Examiner's rejections. Instead, Appellants attack the Yaker reference
singly for lacking teachings that the Examiner relied on a combination of
references to show. It is well established that one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA
1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). The effect of
Appellants' argument is to raise and then knock down a straw man rejection
of claim 2 that was never made by the Examiner in that the Examiner did not
rely solely on Yaker as argued. In other words, Appellants argue Examiner
findings that were never made. This form of argument is inherently
unpersuasive to show Examiner error. Our reviewing court requires that
references must be read, not in isolation, but for what they fairly teach in
combination with the prior art as a whole. Merck, 800 F.2d at 1097 (Fed.
Cir. 1986).
As to Appellants' point that "Yaker is directed to significantly
different technology than Aaltonen." App. Br. 14. We disagree. Contrary to
Appellants' argument, we find that Yaker is analogous art.
"Two separate tests define the scope of analogous 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." In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004). "A reference is reasonably
pertinent if ... it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's
attention in considering his problem." [In re Clay, 966 F.2d
656, 659 (Fed.Cir.1992).] "If a reference disclosure has the
same purpose as the claimed invention, the reference relates to
9
Appeal2015-003984
Application 12/841,285
the same problem, and that fact supports use of that reference in
an obviousness rejection." Id. Whether a prior art reference is
"analogous" is a question of fact. Id. at 658.
Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011 ). Appellants over focus on the particular end use ("SMS messaging"
i-f 43) of their invention and overlook their own Specification's discussion of
the invention.
The call handing preferences for a group could also be
dependant [sic] on the time of day and/or the day of the week.
i-f 73. Based on this discussion, we find that Appellants' field of endeavor
for claim 2 is call handling based on time of day. That Yaker is within this
field of endeavor as shown by Yaker' s Abstract. Even if we were to
conclude otherwise as to the field of endeavor, we separately conclude the
Yaker reference is still reasonably pertinent to the particular problem with
which the inventor is involved.
As to Appellants' above contention 7, we disagree. Again,
Appellants' argument ignores the actual reasoning of the Examiner's
rejections. Instead, Appellants attack the Tofighbakhsh reference singly for
lacking teachings that the Examiner relied on a combination of references to
show. Appellants argue that Tofighbakhsh does not teach or suggest
"checking the time of day at the location." App. Br. 16. However, Examiner
did not cite Tofighbakhsh for the "time of day" limitation. Rather, the
Examiner relied on Yaker to teach "a communication request is received
based on at least one associated scheduler with their individual schedules
indicating availability for example, times of a day, days of a week." Final
Act. 7. The Examiner relied on Tofighbakhsh to teach a "list of entities
base[d] on the speaker's location." Final Act. 10. To the extent that
10
Appeal2015-003984
Application 12/841,285
Appellants are arguing location and time of day are unrelated parameters, we
disagree as an artisan would recognize that every location inherently has a
corresponding time of day.
CONCLUSIONS
( 1) The Examiner did not err in rejecting claims 1, 8, 9, and 16-21 as
being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 2--4 and 10-12 as
being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1--4, 8-12, and 16-21 are not patentable.
DECISION
The Examiner's rejection of claims 1, 8, 9, and 16-21 as being
anticipated under 35 U.S.C. § 102(b) is affirmed.
The Examiner's rejections of claims 2--4 and 10-12 as being
unpatentable under 35 U.S.C. § 103(a) are 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
11