LENOVO Enterprise Solutions (Singapore) PTE. LTD.

Patent Trials and Appeals Board

Dec 29, 2021

2020006126 (P.T.A.B. Dec. 29, 2021)

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.
15/240,616 08/18/2016 GARY D. CUDAK XRPS920160066-US-NP 8876
61755 7590 12/29/2021
Kunzler Bean & Adamson - Lenovo
50 W. Broadway
10th Floor
Salt Lake City, UT 84101
EXAMINER
SALAD, ABDULLAHI ELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
12/29/2021 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):
docket@kba.law
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARY D. CUDAK, SRIHARI V. ANGALURI,
AJAY DHOLAKIA, JARROD B. JOHNSON,
and BRYAN L. YOUNG

Appeal 2020-006126
Application 15/240,616
Technology Center 2400
____________

Before RICHARD M. LEBOVITZ, ST. JOHN COURTENAY, III, and
JUSTIN BUSCH, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected 1–20 under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Lenovo
Enterprise Solutions (Singapore) Pte. Ltd. Appeal Br. 2.
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Application 15/240,616

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STATEMENT OF THE CASE
The Examiner rejected claim 1–20 in the Final Office Action as
follows:
1. Claim 1–3, 5–13, and 15–20 under 35 U.S.C. § 103 as obvious in
view of Huang et al. (US 2014/0171024 A1, published June 19, 2014)
(“Huang”) and Appelman (US 2015/0373515 A1, published Dec. 24, 2015)
(“Appelman”). Final Act. 3.
2. Claims 4 and 14 are rejected under 35 U.S.C. § 1032 as obvious in
view of Huang, Appelman, and Knauerhase (US 2007/0299927 A1,
published Dec. 27, 2007) (“Knauerhase”). Final Act. 7.
There are three independent claims on appeal. Claims 1, 11, and 20.
Claim 1 is an apparatus claim;3 claim 10 is a method claim; claim 20 is
program product claim. Claims 1 and 11 are representative. The claims are
reproduced below and are annotated with bracket numbers for reference to
the claim limitations.

2 The Examiner cited 35 U.S.C. § 102 as the basis for the rejection.
However, this was an error because the rejection was based on obviousness
under § 103.
3 Although we addressed claim 1 as if the generator and modules are
configured to perform the recited functions, we note that such language or
other structural language is not recited in the claims; only functional
language is recited in the claim. In the event of further prosecution, we leave
it to the Examiner to determine whether Appellant’s Specification (including
the drawings) describes sufficient structure corresponding to limitations 1–5
of claim 1 for performing the recited functions for the claim to be definite.
See Williamson v. Citrix Online LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015).
Although the Board is authorized to reject claims under 37 C.F.R. §
41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.

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1. An apparatus comprising:
[1] a message generator on a sender device that generates a
message for transmission to a recipient device;
[2] a status module on the sender device that determines, via
directly querying the recipient device, whether the
recipient device for the message is available or
unavailable to receive the message from the sender
device that generated the message;
[3] a message module on the sender device that sends the
message to an intermediate device for storage until the
recipient device is available to retrieve the message from
the intermediate device in response to determining that
the recipient device is unavailable to receive the message
from the sender device at a time when the message is
being transmitted from the sender device to the recipient
device; and
[4] a notification module on the sender device that sends a
notification to the recipient device that the message
generated by the sender device is available for retrieval
from the intermediate device in response to the message
module sending the message to the intermediate device,
[5] wherein the sender device, the intermediate device, and the
recipient device are different devices, and
[6] wherein the message generator, the status module, the
message module and the notification module comprise
one or more of hardware circuits, a programmable
hardware device and a processor executing code.

11. A method comprising:
[1] generating, at a sender device, a message for transmission to
a recipient device;
[2] determining, at the sender device, that the recipient device
for the message is available or unavailable to receive the
message from the sender device that generated the
message, [2a] wherein the sender device directly queries
the recipient device to determine if the recipient device is
available to receive the message;
[3] sending, from the sender device, the message generated by
the sender device to an intermediate device for storage
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until the recipient device is available to retrieve the
message from the intermediate device in response to
determining that the recipient device is unavailable to
receive the message from the sender device at a time
when the message is being transmitted from the sender
device to the recipient device; and
[4] sending, from the sender device, a notification to the
recipient device that the message is available for retrieval
from the intermediate device in response to sending the
message to the intermediate device,
[5] wherein the sender device, the intermediate device, and the
recipient device are different devices.

Appeal Br. 11–12, 14 (Claims App.).

OBVIOUSNESS BASED ON HUANG AND APPELMAN
Claim 1
Claim 1 is directed to an apparatus that comprises four components
that we have numbered [1]–[4]: [1] message generator, [2] status module,
[3] message module; and [4] notification module. The [1] message generator
generates a message on a sender device for transmission to a recipient
device. The [2] status module on the sender device determines whether the
recipient device is available or unavailable to receive the message from the
sender device. The [3] message module on the sender device, in response to
determining that the recipient device is unavailable, sends the message from
the sender device to an intermediate device. The [4] notification module on
the sender device, in response to the message module on the sender device
sending the message to the intermediate device, sends a notification to the
recipient device that the message is available for retrieval from the
intermediate device.
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Each of components [1]–[4] of claim 1 are comprised of [6] “one or
more of hardware circuits, a programmable hardware device and a processor
executing code.” We interpret each of the recited components comprising
“one or more of hardware circuits, a programmable hardware device and a
processor executing code” as being capable of performing the recited
functions of the modules and generator, without additional modification.
The claim also requires that [5] the sender device, the intermediate
device, and the recipient device are different devices.
The Examiner found that Huang describes all four components of the
apparatus of claim 1. Final Act. 3–4. The Examiner found, however, that
Huang does not disclose that [2] a status module on the sender device
determines whether the sender device is available or unavailable. Id. at 4.
The Examiner also found that Huang does not disclose that [5] the message
module and the notification module are located on a sender device which is
different from the intermediate device. Id. at 4. To address these differences
between Huang and claim 1, the Examiner cited Appelman, which the
Examiner found describes the function of component [2] in which the
message module and notification module are located on a sender device. Id.
The Examiner determined it would have been obvious for one of ordinary
skill in the art, prior to the effective date of the application, to apply
Appelman to Huang “such that client sender’s client application 106a is
configured to read the recipient user’s presence status in order to detect
whether the recipient is currently available to receive IM messages.” Id. at 5.
The Examiner further cited Knauerhase, for dependent claims 4 and
14, as disclosing a status module that “determines that the recipient device is
unavailable to receive the message in response to determining that a network
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connection to the intermediate device is faster than a network connection to
the recipient device.” Final Act. 7.
Appellant argues that Appelman does not disclose that [4] the
notification module is located on the sender device that is different from the
intermediate device as required by limitation [5] of claim 1. Appeal Br. 6.
Appellant also argues that neither Huang nor Appelman “teach a notification
module in the sender device that sends a notification to the recipient device
that the message generated by the sender device is available for retrieval
from the intermediate device.” Id. at 6, 7. Appellant contends that Huang
discloses “sending a notification from the intermediate device,” and not from
the sender device as required by limitation [4] of claim 1. Id. at 6. Appellant
further contends that Appelman “does not teach sending any type of message
to an unavailable recipient device, but instead teaches rerouting the instant
message to a mobile device of the recipient or associated with the recipient.”
Id. at 7.
We begin the discussion with Huang. The Examiner found that the
notification module [4] is described by Huang at paragraphs 35–36. Final
Act. 4; Ans. 4. Huang discloses that “the user of mobile device 202 initiating
a request (S1) for message server 210 to send a message from mobile device
202 to the user and intended recipient of the message at mobile device 204.”
Huang ¶ 33. Huang further discloses that the “message server 210 sends a
notification message (S2), e.g., in the form of an SMS message with
instructions for mobile device 204 to retrieve the secured message.” Id. ¶ 35.
The message server 210 is described by Huang as “temporarily” storing the
message and performing “an initial determination of whether or not mobile
device 204 is available on the mobile communication network prior to
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sending the notification message before sending the notification message to
mobile device 204.” Id. ¶ 36.
Limitation [4] of claim 1 requires that the notification module is on
the sender device and that the sender device sends the notification to the
recipient device. In Huang, as indicated above, the “notification message” is
sent to the mobile device 204, the intended recipient of the message, by the
“message server 210,” and not by the sender device as required by limitation
[4] of claim 1. The [4] notification module of claim 1 is on the sender
device, not the intermediate device as it is on Huang (the “message server
210” of Huang) and the notification message is sent by the intermediate
device in Huang and not the sender device as required by claim 1.
In the Answer, the Examiner additionally cites paragraphs 54 and 56
of Huang for disclosing a notification module on a sender device that sends
the notification to the recipient device that the message is available. Ans. 5.
The only disclosure of a notification message is in paragraph 55 in which the
message server “sends a notification to the originating mobile device or
message sender” and in paragraph 56 where the “mobile device of the
intended recipient in this example may take similar steps to retrieve the
secured message, as described above with respect to processes 200 and 300
of FIGS. 2 and 3, respectively.” Paragraph 55 has a notification sent by a
server. Paragraph 56 refers to processes 200 and 300 of Figs. 2 and 3. Figure
2 is the same process disclosed in paragraphs 35 and 36 where the
notification is sent by the server. The process in Figure 3 also involves
sending a notification from the server.4

4 “Similar to the mobile-to-mobile secured messaging example of FIG. 2,
described above, message server 310 sends a port directed SMS notification
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The Examiner also cited Appelman for claim limitation [4] of claim 1.
The Examiner found that the [3] message module and [4] notification
module are also described in Appelman, citing 602 and 625, respectively.
Final Act. 4.
Appelman describes interface 600B on the sender device which
“displays availability information 625 for the intended recipient.” Appelman
¶ 102. The availability information 625 is described in Appelman as
displaying that the intended recipient is offline, idle, or away from the client
system. Id. Appelman explains: “Availability information 625 also may
provide notification that the intended recipient is offline and has enabled
recipient-initiated mobile forwarding where a text message based on the
instant message is to be sent to a mobile telephone number identified by the
intended recipient.” Id. Element 625, which the Examiner found is the
[4] notification module on the sender device, receives a notification about
the status of the intended recipient, but it is not described to have the
function recited in claim 1 “that sends a notification to the recipient device
that the message generated by the sender device is available for retrieval
from the intermediate device in response to the message module sending the
message to the intermediate device.” Rather element 625 displays the status
of the recipient, but is not described as sending a notification to the recipient
device.

(at S3) to mobile device 304 via the mobile communication network, in
response to receiving the secured message request initiated by the message
sender (or third-party application 302 in this example). The notification
message includes, for example, instructions for mobile device 304 to retrieve
the secured message through the mobile communication network.” Huang
¶ 47.
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The Examiner further cites system 110 of Figure 1 and “instant
messaging application 107A or 107B of FIG. 1 (the source device)(see fig. 9
and 0126)” of Appelman. Ans. 5–6. Figure 1 of Appelman shows an instant
messaging provider system 110 and instant messaging applications 107A
and 107B. Appelman ¶ 45; Fig. 1. The figure does not show a notification
module and the Examiner did not explain nor identify disclosure in
Appelman which describes a notification module on 110, 107A, or 107B.
Figure 9 of Appelman, also cited by the Examiner, shows “process
900 for forwarding an instant message, based on an intended recipient being
known to the sender, to a mobile telephone device capable of receiving,
processing, displaying and transmitting text messages.” Appelman ¶ 126.
The Examiner did not identify what disclosure in Figure 9 and its
accompanying description meets claim limitation [4]. In reviewing the
description, we find that Appelman discloses that the “instant message
system sends a communication based on the instant message to the mobile
telephone number associated with the recipient (step 940).” Id. ¶ 132. While
this message could serve as the notification message of claim limitation [4],
the Examiner did not establish, as argued by Appellant, that Appelman
further discloses or suggests that the notification message is sent “in
response to the message module sending the message to the intermediate
device” as additionally required by limitation [4] of claim 1. See Appeal Br.
7.
The Examiner has the initial burden of presenting a prima facie cases
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The
Examiner did not identify a description or suggestion of the functionality of
the claimed [4] notification module. As indicated above, Huang discloses
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that the server sends a notification to the recipient that the message is
available in response to receiving a request from the sender to send the
message. Huang ¶ 35. The Examiner did not explain why it would have been
obvious to one of ordinary skill in the art to provide the sender device with
the notification functionality of sending the notification “in response to the
message module sending the message to the intermediate device.” In
contrast, in Huang, the server sends the notification after receiving the
message from the sender device. Because the functionality of [4] the
notification module on the sender device is absent from the cited references,
and it was not adequately explained Huang would be modified by Appelman
to meet the claim limitation, we reverse the rejection of claim 1.
Claim 20 is directed to a program product including the same
functionality as limitation [4] of claim 1. We reverse claim 20 as well.
Knauerhase is not relied upon by the Examiner for the notification
module and therefore does not make up for deficiencies in Huang and
Appelman
We reverse dependent claims 2–10, which incorporate all the
limitations of claim 1, for same reasons as for claim 1.

Claim 11
Claim 11 is a method claim. The steps in the claim perform similar
functions to those recited in claim 1. However, there is a difference between
the two claims. Step [2] of claim 11 comprises “[2] determining, at the
sender device, that the recipient device for the message is available or
unavailable to receive the message from the sender device that generated the
message” (emphasis added). Step [3] of the claim is sending a message from
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the sender device to an intermediate device for storage “until the recipient
device is available to retrieve the message from the intermediate device in
response to determining that the recipient device is unavailable to receive
the message” (emphasis added). Step [3] of the claim only takes place upon
determining that the recipient device is unavailable. If it is determined in
step [2] of the claim that the device is available, then step [3] of claim is not
performed. Subsequent step [4] of claim 11 comprises sending a notification
to the recipient device that the message is available from retrieval from the
intermediate device. Because the message is sent to the intermediate device
only when the recipient is unavailable as determined in step [2], step [4] is
not performed when the recipient is determined to be available.5 Thus, claim

5 Schulhauser et al, 2016 WL 6277792 (Patent Tr. & App. Bd.), at *9
(holding “The Examiner did not need to present evidence of the obviousness
of the remaining method steps of the claim that are not required to be
performed under a broadest reasonable interpretation of the claim”); see also
Ex parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4–5 (BPAI
Jan. 27, 2011); Applera Corp. v. Illumina, Inc., 375 Fed. App’x. 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court’s interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration
Forum, Inc., 243 Fed. App’x. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”). Schulhauser is binding authority on all Administrative Patent
Judges at the Board under SOP2, and under the Director’s statutory authority
to provide “policy direction and management supervision for the Office.”
35 U.S.C. § 3(a)(2)(A). We note the limited holding of Schulhauser applies
only to two specific categories of claims: method claims and means-plus-
function claims, and each category is treated differently.

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11 only requires [1] generating a message and [2] determining by the sender
device that the recipient device is available.
Appellant did not argue that steps [1] and [2] are not suggested by the
combination of Huang and Appelman. The rejection of claim 11 is therefore
affirmed. Claims 12–16, 18, and 19, which depend from claim 11, were not
argued separately and fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv).

Claim 17
Appellant separately argues claim 17. Appeal Br. 9. Claim 17 depends
from claim 11, and further comprises “periodically sending the notification
to the recipient device at predetermined intervals while the message is
available to access from the intermediate device.” Claim 11, as explained
above, only requires that it be determined that a device is available. The
notifications are not sent when it is determined that the device is available.
Thus, claim 17 is not accomplished when the device is available.

CONCLUSION

The Examiner’s decision to reject claims 1–20 is affirmed in part.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–13,
15–20
103 Huang, Appelman 11–13, 15–
19
1–3, 5–10,
20
4, 14 103 Huang, Appelman,
Knauerhase
14 4
Overall
Outcome
11–19 1–10, 20

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TIME PERIOD FOR RESPONSE
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) (2019).

AFFIRMED IN PART