10767785 (P.T.A.B. Jan. 22, 2013)

Ex Parte Werner

Patent Trial and Appeal BoardJan 22, 2013

10767785 (P.T.A.B. Jan. 22, 2013)

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. 10/767,785 01/29/2004 Carl Edward Werner 2003-0210 5857 83658 7590 01/22/2013 AT & T Legal Department - WS Attn: Patent Docketing Room 2A-207 One AT & T Way Bedminster, NJ 07921 EXAMINER WON, MICHAEL YOUNG ART UNIT PAPER NUMBER 2449 MAIL DATE DELIVERY MODE 01/22/2013 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 CARL EDWARD WERNER ____________ Appeal 2010-008037 Application 10/767,785 Technology Center 2400 ____________ Before ALLEN R. MACDONALD, KRISTEN L. DROESCH and JUSTIN BUSCH, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008037 Application 10/767,785 2 STATEMENT OF THE CASE The Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection of claims 1, 3-6 and 8-11.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The Appellant’s invention relates to instant messaging (IM), particularly the use of IM to quickly and efficiently transmit updates to a group of computer users. Spec. ¶¶ 0001; Abs. Independent claim 1 is illustrative and is reproduced below (disputed limitations in italics): An arrangement for transmitting updates/alerts over a data network to a plurality of data network system users, the arrangement comprising: a website update/alert administrator, coupled to the data network, for receiving update or alert messages from said network, said website update/alert administrator including a database of instant messaging (IM) groups, each group including a set of members from the plurality of data network system users, a target listing of various IM groups to associate sets of IM groups with different types of updates and alerts, a transmission element for sending an automated IM to each member of each targeted IM group, the automated IM including the update/alert information; and a listing of email addresses for each member of each IM group, wherein an email version of an update/alert is sent if a member is not involved in the IM session at the time the automated IM is sent. 1 Claims 2 and 7 have been cancelled. Appeal 2010-008037 Application 10/767,785 3 Rejections Claims 1, 3, 5, 6, 8, 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being obvious over Wang (U.S. 2002/0198946 A1) and Aravamudan (U.S. 6,301,609 B1). Claims 4 and 9 stand rejected under 35 U.S.C. § 103(a) as being obvious over Wang, Aravamudan and Dalal (U.S. 2002/0065894 A1). ISSUES Did the Examiner err in finding that the combination of Wang and Aravamudan teaches or suggests “a website update/alert administrator including . . . a target listing of various IM groups,” as recited in claim 1? Did the Examiner err in finding that the combination of Wang, Aravamudan and Dalal teaches or suggests “the automated IM includes a trailer portion,” as recited in dependent claims 4 and 9? ANALYSIS We have reviewed the Examiner’s rejection in light of the Appellant’s arguments in the Appeal Brief presented in response to the Final Office Action. We disagree with the Appellant’s conclusions. We highlight and address specific findings and arguments for emphasis as follows. Claims 1, 3, 5, 6, 8, 10 and 11 The Appellant argues claims 1, 3, 5, 6, 8, 10 and 11 together as a group. We choose claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(vii). We are unpersuaded by Appellant’s arguments as they are not commensurate in scope with the claim language. Br. 3-5. Claim 1 does not recite how the target listing of various IM groups are formed, defined, identified, created or retrieved. Appeal 2010-008037 Application 10/767,785 4 Moreover, the Appellant attempts to distinguish the website update/alert administrator being the entity that includes a target listing of various IM groups from Wang’s user-driven definition of a preferred delivery mode, and Aravamudan’s grouping initiated at the user level. Br. 4- 5. However, we note that Appellant’s Specification also discloses that a user may play the role of administrator. See Spec. ¶ 0016 (“[I]t is to be understood that the various end users in an IM session may play of the role of ‘administrator’ as well, sending the alert/update to other members of the group.”). For all these reasons, we sustain the rejection of claims 1, 3, 5, 6, 8, 10 and 11 as obvious over Wang and Aravamudan. Claims 4 and 9 We are unpersuaded by the Appellant’s additional arguments addressing the limitations of claim 4 and 9. Br. 5. We decline to narrowly interpret the claim term “trailer” such that it would be limited to a portion of a message from a message transmitter. Instead, the broadest reasonable interpretation applies to the term “trailer” such that it is not limited by whether it is sent by a transmitter or received by a receiver. The Appellant further does not direct us to objective evidence to demonstrate that the Examiner’s construction of the term “trailer” is unreasonably broad. For these reasons, in addition to those reasons addressing claims 1, 3, 5, 6, 8, 10 and 11, we sustain the Examiner’s rejection of claims 4 and 9 as obvious over Wang, Aravamudan and Dalal. Appeal 2010-008037 Application 10/767,785 5 In the Event of Further Prosecution We have decided the appeal before us. In the event of further prosecution, we leave it to the Examiner to determine whether the “arrangement” recited in claim 1, and those claims dependent therefrom, encompasses non-statutory subject matter. See U.S. Patent & Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at 2, available at http://www.uspto.gov/patents/law/comments/2009-08-25_interim_101_ instructions.pdf. In particular, we note that: 1) the Appellant’s Specification discloses that various end users in an IM session (i.e., human beings) may play of the role of “administrator”; 2) the claimed “database of IM groups”, “target listing of various IM groups”, and “listing of email addresses” are mere collections of data; and 3) the “transmission element” may be broadly construed in light of the Appellant’s Specification as encompassing transitory, propagating signals. DECISION We AFFIRM the rejection of claims 1, 3, 5, 6, 8, 10 and 11 under 35 U.S.C. § 103(a) as being obvious over Wang and Aravamudan. We AFFIRM the rejection of claims 4 and 9 under 35 U.S.C. § 103(a) as being obvious over Wang, Aravamudan and Dalal. TIME PERIOD 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). Appeal 2010-008037 Application 10/767,785 6 AFFIRMED msc