Boogoo Intellectual Property LLC et al.

Patent Trials and Appeals Board

Apr 21, 2021

2020000012 (P.T.A.B. Apr. 21, 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.
14/878,177 10/08/2015 Jiazheng Shi 2015-07 7623
142779 7590 04/21/2021
Jin Law Firm
P. O. Box 1937
Union City, CA 94587-6937
EXAMINER
HUANG, CHEN-LIANG
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
04/21/2021 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):
jigang.jin@jfuslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIAZHENG SHI

Appeal 2020-000012
Application 14/878,177
Technology Center 2400

Before JEAN R. HOMERE, JAMES B. ARPIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1–9 and 12–17, all of the claims pending.2
Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We refer to the Specification filed Oct. 8, 2015 (“Spec.”); the Final Office
Action, mailed Nov. 15, 2018 (“Final Act.”); the Appeal Brief, filed June 14,
2019 (“Appeal Br.”); and the Examiner’s Answer, mailed July 30, 2019
(“Ans.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Boogoo Intellectual Property LLC Inc. and Jiazheng Shi
as the real parties in interest. Appeal Br. 2.
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II. CLAIMED SUBJECT MATTER
The claimed subject matter relates to a method and system for
providing read receipts for instant messages (IM) communicated between
mobile devices. Spec. ¶¶ 2, 5. Figure 7, reproduced and discussed below, is
useful for understanding the claimed subject matter:

Figure 7 above illustrates two user devices exchanging IMs. Id. ¶ 80.

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In particular, a user’s mobile device displays a dummy message upon
receiving an IM from a remote user, and subsequently replaces the dummy
message with the IM upon further receiving the user action on the dummy
message. Id. ¶¶ 68–72. The user’s mobile device then sends to the remote
user a confirmation signal indicating that the IM has been read. Id. ¶ 72.
Claims 1 and 12 are independent. Claim 1, reproduced below with
disputed limitations emphasized, is illustrative:
1. A method implemented on a mobile device for providing
read receipts for instant messages communicated in an instant
messaging system, the method comprising:
receiving an instant message via the instant messaging system
from a remote user;
displaying a dummy message on a display of the mobile device;
receiving a user action on the dummy message from a local user of the
mobile device;
upon receiving the user action, replacing the dummy message
with the instant message on the display; and
sending a confirmation signal to the remote user via the instant
messaging system to indicate that the local user has read the message.
Appeal Br. 8 (Claims App.) (emphasis added).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Sakagami US 2005/0057689 A1 Mar. 17, 2005
Skelly US 2007/0299923A1 Dec. 27, 2007
Boss US 2007/0064899 A1 Mar. 22, 2007
Moore US 2010/0123724A1 May 20, 2010
Cross US 2011/0078251A1 Mar. 31, 2011

3 All reference citations are to the first named inventor only.
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Name Reference Date
Stuntebeck US 2014/0208095 A1 July 24, 2014
Patel US 2017/0237600A1 Aug. 17, 2017
Park US 2017/0269800A1 Sept. 21, 2017
IV. REJECTIONS
The Examiner rejects claims 1–9 and 12–17 as follows:
Claims 1, 4, and 12 stand rejected as obvious under 35 U.S.C. § 103
over the combination of Cross, Stuntebeck, and Patel. Final Act. 4–8.
Claims 2 and 3 stand rejected as obvious under 35 U.S.C. § 103 over
the combination of Cross, Stuntebeck, Patel, and Snyder. Id. at 8–9.
Claim 5 stands rejected as obvious under 35 U.S.C. § 103 over the
combination of Cross, Stuntebeck, Patel, and Skelly. Id. at 9–10.
Claim 6 stands rejected as obvious under 35 U.S.C. § 103 over the
combination of Cross, Stuntebeck, Patel, and Sakagami. Id. at 10–12.
Claim 7 stands rejected as obvious under 35 U.S.C. § 103 over the
combination of Cross, Stuntebeck, Patel, and Park. Id. at 12–13.
Claims 8 and 13 stand rejected as obvious under 35 U.S.C. § 103 over
the combination of Cross, Stuntebeck, Patel, and Moore. Id. at 13–14.
Claim 9 stands rejected as obvious under 35 U.S.C. § 103 over the
combination of Cross, Stuntebeck, Patel, and Boss. Id. at 14–15.
Claim 14 and 16 stand rejected as obvious under 35 U.S.C. § 103 over
the combination of Cross, Stuntebeck, Patel, Moore, and Boss. Id. at 15–16.
Claim 15 stands rejected as obvious under 35 U.S.C. § 103 over the
combination of Cross, Stuntebeck, Patel, Moore, Boss, and Snyder. Id. at 15.
Claim 17 stands rejected as obvious under 35 U.S.C. § 103 over the
combination of Cross, Stuntebeck, Patel, Moore, Boss, and Sakagami. Id.
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V. ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 4–13.4 We are not persuaded by Appellant’s
contentions. Except as otherwise indicated herein below, we adopt as our
own the findings set forth in the Final Action, and the Examiner’s Answer in
response to Appellant’s Appeal Brief. Final Act. 2–17; Ans. 3–7. However,
we highlight and address specific arguments and findings for emphasis as
follows.
Appellant argues that the Examiner errs in finding that the
combination of Cross, Stuntebeck, and Patel teaches or suggests the
following limitations:
displaying a dummy message on a display of the mobile device;
receiving a user action on the dummy message from a local user of the
mobile device; upon receiving the user action, replacing the dummy
message with the instant message on the display; and sending a
confirmation signal to the remote user via the instant messaging
system to indicate that the local user has read the message,
as recited in independent claim 1. Appeal Br. 5. In particular, Appellant
argues that Stuntebeck’s disclosure of obscuring or redacting a message for
security reasons until a user enters a passcode or other authentication to
remove the insecure state does not teach a user action on the dummy
message. Id. ¶¶ 63, 64. Rather, they are actions on a keypad where the user
can enter a passcode or other credentials. Id. 5–6. Further, Appellant argues
that although Patel discloses the general idea of delivering read receipts to
confirm a sender’s message was delivered and read, Patel does not teach a

4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are forfeited. See
37 C.F.R. § 41.37(c)(1)(iv) (2017).
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specific method for implementing the delivery/read receipts. Id. at 6 (citing
Patel ¶ 162).
Appellant’s arguments are not persuasive of reversible Examiner error
because they are tantamount to an individual attack against Cross,
Stuntebeck and Patel, as opposed to addressing the combined teachings of
cited references, as relied upon by the Examiner in the rejection of claim 1.
One cannot show non-obviousness by attacking the references or the
embodiments thereof individually where the rejections are based on the
combined teachings of the references and/or embodiments. In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see In re Keller, 642 F.2d 413,
426 (CCPA 1981).
As a preliminary matter, we note that the Specification illustrates the
displayed dummy message as a redacted message, which can be replaced by
any action (e.g., a click, a tap, a swipe) of the message recipient to read the
message. Spec. ¶ 70; cf. Appeal Br. 9 (Claims App.) (Claim 8 limits the
broader recitation of “user action” in claim 1 to a “tap” or “swipe.”). The
Examiner relies upon Stuntebeck’s disclosure of a user device displaying a
redacted message received from another user device, and replacing the
redacted message with the content of the message upon the user entering a
security code to complement Cross’s system for exchanging IMs between
remote users of mobile devices. Final Act. 4–5 (citing Cross ¶ 2, Stuntebeck
¶¶ 63, 64). The Examiner further relies upon Patel to teach a user device
sending to a message sender a read receipt to confirm the user has read the
message. Id. at 6 (citing Patel ¶ 162).5 Because the user’s input of a

5 “The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
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password on a keypad constitutes a user action on the message on as broadly
recited in the claim, we agree with the Examiner that cited portions of
Stuntebeck teach the requisite action to replace the dummy message with the
content of the received IM. Ans. 5–6. Further, we find the Examiner’s
proposed combination of the cited teachings Cross, Stuntebeck, and Patel is
no more than a simple arrangement of old elements with each performing
the same function it had been known to perform, yielding no more than what
one would expect from such an arrangement. See KSR, 550 U.S. at 416.
Therefore, the ordinarily skilled artisan, being “a person of ordinary
creativity, not an automaton,” would have been able to fit the teachings of
the cited references together like pieces of a puzzle to predictably result in a
system for providing read message receipt to a sender upon a recipient has
performed an action on a keypad to replace a displayed dummy message
with the content of an IM, which the user subsequently reads. Id. at 420–21,
Ans. 5.
Because Appellant does not demonstrate that the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” we agree with the Examiner that the
proposed modification would have been within the purview of the ordinarily
skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Consequently, we

reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” Keller,
642 F.2d 413, 425. “The obviousness analysis cannot be confined by [the]
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of . . . the explicit content of issued
patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
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are satisfied that, on this record, the Examiner has established by a
preponderance of the evidence that the combination of Cross, Stuntebeck,
and Patel teaches or suggests the disputed claim limitations. Because we are
not persuaded of Examiner error, we sustain the Examiner’s rejection of
claim 1 as obvious over the combination of Cross, Stuntebeck, and Patel.
Regarding the rejection of claims 2–9 and 12–17, Appellant does not
present separate patentability arguments or reiterates substantially the same
arguments as those previously discussed for the patentability of claim 1
above. Appeal Br. 7. As such, claims 2–9 and 12–17 fall therewith. See 37
C.F.R. § 41.37(c)(1)(iv).
VI. CONCLUSION
For the above reasons, we affirm the Examiner’s rejections of claims
1–9 and 12–17.
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VII. DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 12 103 Cross, Stuntebeck, Patel 1, 4, 12
2, 3 103 Cross, Stuntebeck, Patel, Snyder 2, 3
5 103 Cross, Stuntebeck, Patel, Skelly 5
6 103 Cross, Stuntebeck, Patel, Sakagami 6
7 103 Cross, Stuntebeck, Patel, Park 7
8, 13 103 Cross, Stuntebeck, Patel, Moore 8, 13
9 103 Cross, Stuntebeck, Patel, Boss 9
14, 16 103 Cross, Stuntebeck, Patel, Moore, Boss 14, 16
15 103
Cross, Stuntebeck,
Patel, Moore, Boss,
Snyder
15
17 103
Cross, Stuntebeck,
Patel, Moore, Boss,
Sakagami
17
Overall
Outcome
1–9, 12–
17

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED