Ex Parte Walter

Patent Trial and Appeal Board

Jan 27, 2014

11352642 (P.T.A.B. Jan. 27, 2014)

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.
11/352,642 02/13/2006 Edward Walter 7785-97 (PD2095) 5078
92384 7590 01/28/2014
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
VIANA DI PRISCO, GERMAN
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
01/28/2014 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 EDWARD WALTER
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Appeal 2011-005950
Application 11/352,642
Technology Center 2600
____________________

Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4, 6, 8–18, and 22–26. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 3, 5, 7, and 19–21 are canceled.
We affirm.
Illustrative Claim
Appellant’s disclosure relates to monitoring presence information of
communication devices of an end user, and, in response to a request from a
remote user to access the presence information, synthesizing the presence
information in accordance with a privacy policy that determines a degree of
disclosure permitted for the remote user. Abstract.
Claim 1 is illustrative of the claimed subject matter:
l. A presence services system (PSS), comprising:
a controller that manages operations of a communications
interface, wherein the controller is programmed to:
monitor presence information of one or more
communication devices of an end user operating in a
communications system, the presence information being
obtained when the one or more communication devices
authenticate with the communication system;
store a group of privacy policies associated with the end
user, each policy of the group of privacy policies having a
different degree of permitted disclosure of presence
information, each policy being defined only by an entity other
than the end user;
determine a location of the end user;
select an applicable policy from the group of privacy
policies based on the determined location;
receive a request from a remote user to access the
presence information; and
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synthesize the presence information in accordance with
the selected applicable policy that determines a degree of
disclosure permitted for the remote user, wherein the presence
information comprises network activities monitored within the
communication system for each of the communication devices,
and wherein the controller is programmed to determine from
the activities monitored a probability for each of the
communication devices that a connection will be established.

Rejections
The Examiner rejected:
Claims 1, 4, 6, 8–12, 14–18, and 22–26 under 35 U.S.C. § 103(a) as
unpatentable over Boyer (US 2005/0068167 A1), Zmolek
(US 2003/0154293 A1), and Christensen (US 2005/0187781 A1). Ans. 3–
12.
Claims 2 and 13 under 35 U.S.C. § 103(a) as unpatentable over Boyer,
Zmolek, Christensen, and Karlsson (US 2007/0087731 A1). Ans. 12.

ISSUES
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (“App. Br.” filed Dec. 15, 2010) and Reply
Brief (“Reply Br.” Feb. 14, 2011). We refer to the Briefs and the Answer
(“Ans.” mailed Jan. 21, 2011) for the respective positions of Appellant and
the Examiner.
Appellant’s arguments raise the following issues:
1) Does Boyer teach away from “each policy being defined only
by an entity other than the end user” as in claim 1?
2) Did the Examiner err in finding that the combination of Boyer,
Zmolek, and Christensen teaches or suggests “indicating to the requestor a
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preferred device among the target group devices based on activities in which
one or more of the target devices are engaged” as recited in claim 23?

ANALYSIS
35 U.S.C. § 103 Rejection of Claim 1 over Boyer, Zmolek, and Christensen
Appellant does not dispute the combination of references teaches or
suggests all limitations of claim 1. Rather, Appellant challenges the
motivation to combine the references because Boyer’s preference for and
use of user-specified policies teaches away from the claim 1 limitation of
“each policy being defined only by an entity other than the end user,”
thereby negating Boyer being properly combined with Christensen and
Zmolek to render claim 1 obvious. App. Br. 6–11; Reply Br. 2–7.
If a prior art reference discloses a different solution to a similar
problem, it does not teach away from the claimed subject matter unless the
prior art reference also criticizes, discredits or otherwise discourages the
solution claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
However, “[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will mandate a
finding of nonobviousness. Likewise, a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006).
From the passages cited by Appellant (App. Br. 6–11, (citing Boyer
¶¶ 5, 6, 8, 20, 21, 27, 28, and Fig. 2)); Reply Br. 2–7 (citing Boyer ¶ 6, 8, 21,
27, 37, 38, 43, and 44), we note Boyer’s statement that “[i]t is important in
an enterprise setting, for example, to allow users to specify who (other users
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and groups) is permitted to receive their presence data.” Boyer ¶ 37. The
Examiner relies on Christensen’s enterprise environment teaching for
policies “defined only by an entity other than the end user.” Ans. 6 (citing
Christensen ¶¶ 54, 55). The Examiner finds “Boyer’s invention will work
the same, and its structure will not be affected, regardless of who defines the
presence disclosure policies.” Ans. 13. Appellant argues to the contrary that
Boyer’s system would not work the same with the suggested
modification because Boyer’s system utilizes a number of
features that are based on “user-specified rules”, such as the
access control list which lets a user indicate who they will allow
to watch them and the transmission of the presence information
in accordance with the “user-specified rules.”

Reply Br. 6–7 (citing Boyer ¶¶ 27, 37, and 38).
We do not find Boyer “criticize[s], discredit[s] or otherwise
discourage[s]” (see Fulton, 391 F.3d at 1201) policies “defined only by an
entity other than the end user.” Boyer’s preference for user-defined settings
in an enterprise environment is not a teaching away of non-user-defined
settings generally. Nor are we persuaded that the Examiner erred combining
Boyer with Christensen, even though the teaching from Christensen the
Examiner relies on, relates specifically to an enterprise environment. Ans.
6. Appellant’s invention is not limited to an enterprise environment.
Further, we agree with the Examiner (Ans. 13) and are unpersuaded by
Appellant’s arguments to the contrary (Reply Br. 6–7) that “Boyer’s
invention will work the same, and its structure will not be affected,
regardless of who defines the presence disclosure policies.” Appellant’s
arguments are not supported by persuasive evidence that the Examiner’s
finding is clearly erroneous.
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Accordingly, on the record before us, we do not find that Boyer
teaches away from “each policy being defined only by an entity other than
the end user,” nor that the Examiner otherwise erred in concluding that claim
1 is obvious. We sustain the Examiner’s rejection of claim 1. We also
sustain the rejection of claims 4, 6, 8–9, and 26, which depend therefrom and
are not separately argued. We also sustain the Examiner’s rejections of
claims 2 and 13 and of claims10–12, 14–18, and 22, which Appellant argues
on the same grounds as claim 1. App. Br. 11, 13; Reply Br. 7.

35 U.S.C. § 103 Rejection of Claims 23–25 over Boyer, Zmolek, and
Christensen
Appellant argues the Examiner erred in rejecting claims 23–25
because “the probability output in Zmolek is different from the claimed
feature of indicating a preferred device based on the activities in which the
target devices are engaged.” App. Br. 11. The Examiner cites Zmolek,
paragraphs 17–23, finding that Zmolek’s “first communication device,
preferred because of a higher degree or availability[,] can be engaged in live
voice communication, and the second communication device can be engaged
in a chat session.” Ans. 11. The Examiner also finds “Zmolek’s invention
can output a fractional probability, or multi-tiered likelihood classification,
regarding a user's presence and availability at a specific address for a
communication device or system.” Id. at 14 (citing Zmolek, ¶ 35).
Appellant further argues in the Reply Brief that “[t]he Examiner is
attempting to combine these claimed features into a single feature described
in Zmolek where an output of fractional probability is provided for a user’s
presence and availability at a specific address for a communication
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device/system.” Reply Br. 7–8. This argument, however, does not persuade
us of error because it does not specify what in the Examiner’s findings of
fact is erroneous. Nor are we persuaded by Appellant’s additional
arguments (id. at 8–9) that the combination of Boyer, Zmolek, and
Christensen does not teach, or at least suggest, claim 23. Accordingly, on
the record before us, we are not persuaded the Examiner’s rejection is
erroneous. We therefore sustain the Examiner’s rejection of claim 23, and
of claims 24 and 25, argued therewith.
CONCLUSIONS
On the record before us, the Examiner: 1) has not erred in rejecting
claims 1, 4, 6, 8–12, 14–18, and 22–26 under 35 U.S.C. § 103(a) as
unpatentable over Boyer, Zmolek, and Christensen; and 2) has not erred in
rejecting claims 2 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Boyer, Zmolek, and Christensen, and Karlsson.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 4, 6, 8–
18, and 22–26 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

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