Foote, Steven et al.

Patent Trials and Appeals Board

Dec 17, 2019

14292627 - (D) (P.T.A.B. Dec. 17, 2019)

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.
14/292,627 05/30/2014 Steven Foote 3080.339US1 1733
45839 7590 12/17/2019
Schwegman Lundberg & Woessner / LinkedIn/Microsoft
PO BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
HO, RUAY L
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN FOOTE, PRAYRIT JAIN,
JIMMY HONLAM CHAN, and SCOTT BLACKBURN
Appeal 2019-000320
Application 14/292,627
Technology Center 2100

Before ERIC S. FRAHM, KRISTEN L. DROESCH, and
MICHAEL T. CYGAN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Microsoft
Technology Licensing LLC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to interleaving web-based primary and private
conversations. See Spec. ¶ 1; Abstract. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A processor-implemented method, the processor a
component of a server, comprising:
establishing, with the processor, a primary conversation
among a primary group of users;
receiving, with the processor, a command from at least
one of the primary group of users to establish a private group
including some but not all users of the primary group of users;
establishing, with the processor, the private conversation
among the private group; and
causing, with the processor, a user interface to display the
private conversation only to the private group, the private
conversation being interleaved on the user interface with the
primary conversation.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
McCann et al. US 2009/0327972 A1 Dec. 31, 2009
Patil et al. US 2013/0246525 A1 Sept. 19, 2013
Alam US 2014/0122626 A1 May 1, 2014
REJECTIONS
Claims 1–6, 8–16, 18–26, and 28–30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Patil et al. (“Patil”) and Alam. Non-
Final Act. 5–9.
Claims 7, 17, and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patil, Alam, and McCann et al. (“McCann”). Non-Final
Act. 9.
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OPINION
Rejections of Claims 1, 2, 4, 5, 7, 9–12, 14, 15, 17, 19–22,
24, 25, 27, 29, and 30
Appellant disputes the Examiner’s findings that the combination of
Patil and Alam teach or suggest “causing . . . a user interface to display the
private conversation only to the private group, the private conversation being
interleaved on the user interface with the primary conversation,” as recited
in claim 1. Appeal Br. 16; see id. at 12–16; Reply Br. 3. Appellant argues
independent claims 1, 11, and 21 together as a group. See Appeal Br. 16.
Consequently, we choose claim 1 as representative of the group. 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
The Examiner finds that Patil teaches establishing a primary
conversation among a primary group of users and receiving a command
from at least one of the primary group of users to establish a private group
including some but not all users of the primary group, as required by
claim 1, based on Patil’s disclosure that a public conversation can be
converted to a private conversation with some or all of the existing
participants through the use of “instant groups” where the list of participants
in the public conversation is identified for creating the group of participants
to be invited to the private conversation. See Non-Final Act. 5 (quoting Patil
¶ 11). The Examiner also finds that Patil teaches establishing the private
conversation among the private group and causing a user interface to display
the private conversation only to the private group, as required by claim 1,
based on Patil’s disclosure that “instant groups” on a social network can be
utilized to quickly and easily transition from a public conversation to a
private conversation. See id. at 5–6 (quoting Patil ¶ 12).
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The Examiner acknowledges that Patil does not explicitly teach that
the private conversation is interleaved on the user interface with the primary
conversation, as required by claim 1. See Non-Final Act. 6. To address this
limitation, the Examiner directs attention to Alam’s teachings that messages
from multiple messaging services (e.g., Social Networking Services (SNS)
Facebook, Gtalk, WhatsApp) are displayed in a single thread to aid the user
in searching and understanding the conversation with the other party. See id.
(citing Alam ¶ 115, Figs. 8A–B); see also Alam ¶¶ 102–103; Figs. 6A, 7B
(disclosing a screen with a normal view showing message exchanges
between the same party and first, second, and third users pushed from
Facebook, Gtalk, and WhatsApp services, where the messages include
displays of the corresponding icons for Facebook, Gtalk, and WhatsApp
services). The Examiner concludes that it would have been obvious to one
with ordinary skill in the art at the time of the invention to incorporate
Alam’s feature of displaying messages from multiple messaging services in
a single thread with Patil’s teachings of a public conversation and a private
conversation, to enhance Patil’s function of displaying messages from
different providers (e.g., non-private communication application, private
communication application). See Non-Final Act. 6.
Appellant argues that the Patil discloses moving a public conversation
in a non-private communication application to a private communication tool
with some or all of the original participants, but does not teach “that separate
public and private conversations exist concurrently, to say nothing of
existing concurrently on the same platform.” Appeal Br. 14 (citing Patil
Fig. 3); see id. at 16 (same argument). Appellant further contends that Patil
does not disclose that communications over the non-private application
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would advantageously be displayed within the same application as the
private collaborative communication tool. See id. at 14.
Appellant also argues that “Alam does not show, disclose, or suggest
interleaving messages from different conversations, each conversation
having a different group of users[,] as required by claim 1.” Appeal Br. 15.
Appellant further asserts that “Alam allows a user (through a drag and drop
mechanism) to move messages received from a particular individual in one
message system (say Facebook) to a thread in a different messaging system
(say Gtalk) with the same individual, so that all messages from multiple
messaging systems with the same individual are displayed in a single
thread.” Id. at 14 (citing Alam ¶¶ 83, 112–115, Figs. 8A–B). Appellant
contends that, in Alam, “the users involved in the various messages are the
same, under the definition of ‘conversation’ established by claim 1.” Id.
at 15. Appellant asserts that “Alam at most discloses the consolidation on a
single platform of messages related to the same ‘conversation.’” Id., see id.
at 16 (same argument).
Appellant’s arguments are not persuasive of Examiner error because
they address the teachings of Patil alone and Alam alone, instead of
addressing the teachings of Patil and Alam as combined by the Examiner.
One cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,
426 (CCPA 1981). Contrary to Appellant’s arguments (see Appeal Br. 15–
16), the Examiner does not rely on Alam to teach or suggest interleaving
messages from different conversations having different groups of users, or
interleaving a public thread and a private thread. See Non-Final Act. 6. The
Examiner relies on Patil for teaching public conversations and private
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conversations using non-private and private applications, as modified by
Alam’s teachings of displaying messages from multiple messaging services
in a single thread. See id. at 5–6. In other words, as combined by the
Examiner, the messages of the public conversation/non-private application
and the messages of the private conversation/private application of Patil are
modified, in view of Alam’s teachings, to be displayed (i.e., interleaved) in a
single thread.
Moreover, Appellant’s following arguments are not commensurate in
scope with the limitations of claim 1: (1) Patil does not teach separate
public and private conversations exist concurrently, nor exist concurrently
on the same platform; and (2) Patil does not recognize that communications
over the non-private application would advantageously be displayed within
the same application as the private collaborative communication tool. See
Appeal Br. 14. Claim 1 does not recite or require: (1) concurrent private
and public conversations, and on the same platform; and (2) display of
public and private conversations within the same application.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claims 1, 11, and 21. Appellant does not separately
and substantive address the limitations of dependent claims 2, 4, 5, 7, 9, 10,
12, 14, 15, 17, 19, 20, 22, 24, 25, 27, 29, and 30. See Appeal Br. 19–20.
Accordingly, for the same reasons as independent claims 1, 11, and 21, we
are not persuaded the Examiner erred in rejecting dependent claims 2, 4, 5,
7, 9, 10, 12, 14, 15, 17, 19, 20, 22, 24, 25, 27, 29, and 30.
Rejection of Claims 3, 13, and 23
Claim 3 depends from claim 1 and further recites, “the primary
conversation is not viewable by the at least one user of the private group
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who is not a user of the primary group of users.” Appellant argues
dependent claims 3, 13, and 23 together as a group. See Appeal Br. 16–17.
As a result, we choose claim 3 as representative of the group. 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
The Examiner finds that Patil teaches or suggests the limitations of
claim 3 based on Patil’s disclosure of instant groups of users, where the
participants of the public conversation are identified for creating the group
or members to be invited to the private conversation. See Non-Final
Act. 6–7 (citing Patil ¶ 11). Appellant contends the Examiner
misapprehends the meaning of claim 3 because the cited passage and the
remaining disclosures of Patil do not show, disclose, or suggest that a
member of the private conversation also is not a member of the public
conversation. See Appeal Br. 17.
We are not persuaded that the combination of Patil and Alam do not
teach or suggest the limitations of claim 3. In addition to disclosing the
creation of the group or members to be invited to the private conversation
(see Patil ¶ 11), Patil also discloses the initial list of potential participants for
the private conversation can be modified by adding new users, thereby
extending the private discussion to someone who did not participate in the
public conversation thread (see Patil ¶¶ 43, 45, Fig. 4: 418, Fig. 5).
For these reasons we affirm the Examiner’s rejection of claims 3, 13,
and 23. To the extent that we rely on new findings not relied on by the
Examiner for teaching or suggesting the limitations of claim 3, we designate
our affirmance of the rejection of claims 3, 13, and 23 as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b).
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Rejection of Claims 6, 16, and 26
Claim 6 depends from claim 1 and further recites, “a parent message
of the primary conversation includes at least one child message from at least
one of the primary conversation and the private conversation, the child
message being positioned with respect to the parent message.” Appellant
argues dependent claims 6, 16, and 26 together as a group. See Appeal Br.
17–18. Consequently, we choose claim 6 as representative of the group.
37 C.F.R. § 41.37(c)(1)(iv) (2017).
The Examiner finds that Alam teaches or suggests the limitations of
claim 6 based on Figures 8A–B and paragraph 115 disclosing that messages
from multiple messaging services are displayed in the single thread to aid
the user in searching and understanding the conversation with the other
party. See Non-Final Act. 8; see also Alam ¶¶ 102–103; Figs. 6A, 7B
(disclosing a screen with a normal view showing message exchanges
between the same party and first, second, and third users pushed from
Facebook, Gtalk, and WhatsApp services, where the messages include
displays of the corresponding icons for Facebook, Gtalk, and WhatsApp
services). Appellant contends the broadest reasonable interpretation of a
child message, based on Appellant’s Specification, “is created, e.g., by
replying to the parent message.” See Appeal Br. 18 (citing Spec. ¶ 27).
Appellant asserts Alam merely combines messages from different platforms,
and these message are not child messages of one another even if they are
between the same users. See id. (citing Alam ¶ 102).
We are not persuaded by Appellant’s arguments because Alam
discloses in Figures 8A–8B messages that include child reply messages to a
parent message, for example, the parent message “Hi Bob?” and the child
reply message “Hi Churk,” depicted in Figure 8B. Furthermore, we note
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that Patil also discloses the limitations of claim 6, based on Patil’s disclosure
of the public primary conversation message “Has everyone seen the latest
report?” and at least the following child message from the primary
conversation: “I have, and the report is confusing. Can you explain page 5
to me?,” as depicted in Figure 3.
Therefore, we are not persuaded the Examiner erred in rejecting
dependent claims 6, 16, and 26.
Rejection of Claims 8, 18, and 28
Claim 8 depends from claim 1 and further recites, “each of the
primary and the private conversations include a plurality of messages,
wherein the messages of the private conversation include an indicia of being
part of the private conversation.” Appellant argues dependent claims 8, 18,
and 28 together as a group. See Appeal Br. 18–19. As a result, we choose
claim 8 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv) (2017).
The Examiner finds that Alam teaches or suggests the limitations of
claim 8 based on Figures 8A–B depicting messages of different providers
with different indicia. See Non-Final Act. 8; see also Alam ¶¶ 102–103;
Figs. 6A, 7B (disclosing a screen with a normal view showing message
exchanges between the same party and first, second, and third users pushed
from Facebook, Gtalk, and WhatsApp services, where the messages include
displays of the corresponding icons for Facebook, Gtalk, and WhatsApp
services). Appellant contends that different providers are not indications of
whether or not a message is primary or private. See Appeal Br. 19.
Appellant further asserts that “the icon corresponding to the different
providers only describes the provider, not who the users of a corresponding
group are.” Id.
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Appellant’s arguments do not persuade us that the Examiner erred.
As explained above addressing claim 1, as combined by the Examiner, the
messages of the public conversation/non-private application and the
messages of the private conversation/private application of Patil are
modified, in view of Alam’s teachings, to be displayed (i.e., interleaved) in a
single thread. In view of Alam’s additional teachings of including icons for
Facebook, Gtalk, and Whatsapp to indicate different service providers of
each of the messages in the single thread (see Alam ¶¶ 102–103, Figs. 6A,
7B), the combination of Patil with Alam further teaches or suggests
providing different indicia for the messages of the private
conversation/private application and for the messages of the primary
conversation/non-private application in the single thread.
For these reasons, we are not persuaded the Examiner erred in
rejecting dependent claims 8, 18, and 28.
CONCLUSION
We affirm the Examiner’s rejections of claims 1–30 under 35 U.S.C.
§ 103(a), and to the extent that we have relied on facts or reasoning not
relied on by the Examiner, we designate our affirmance of the rejection of
claims 3, 13, and 23 as a new ground of rejection pursuant to 37 C.F.R §
41.50(b).
In summary:
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed New
Ground
1–6, 8–16,
18–26,
28–30
103(a) Patil, Alam 1–6, 8–16,
18–26, and
28–30

7, 17, 27 103(a) Patil, Alam,
McCann
7, 17, and 27
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3, 13, 23 Patil, Alam 3, 13,
23
Overall
Outcome
1–30 3, 13,
23
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R. § 41.50(b)