Brian D. Heikes et al.

Patent Trials and Appeals Board

Aug 2, 2019

14226492 - (D) (P.T.A.B. Aug. 2, 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.
14/226,492 03/26/2014 Brian D. Heikes 14917.2355USC2/337285.12 1045
27488 7590 08/02/2019
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
DUONG, OANH
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
USPTO27488@merchantgould.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN D. HEIKES, JAMES A. ODELL, JUSTIN UBERTI,
ANDREW L. WICK, XIAOYAN YIN, and XIAOPENG ZHANG
____________

Appeal 2018-005931
Application 14/226,492
Technology Center 2400
____________

Before DENISE M. POTHIER, LINZY T. MCCARTNEY, and
SCOTT E. BAIN, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1,2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 41–64. Claims 1–40 have been canceled. Appeal Br.
24–29 (Claims App’x).
We affirm.

1 Throughout this Opinion, we refer to the Final Action (“Final Act.”)
mailed January 11, 2017, the Appeal Brief (“Appeal Br.”) filed April 12,
2017, the Examiner’s Answer (“Ans.”) mailed August 11, 2017, and the
Reply Brief (“Reply Br.”) filed October 11, 2017.
2 Appellants identify the real party in interest as Microsoft Technology
Licensing, LLC. Appeal Br. 3.
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Invention
Appellants’ invention concerns a “personalization of instant
messaging communications for an instant message sender.” Spec. 1:13–14.
Personalization occurs by rendering personalization items (e.g., 707, 709,
712, 714) for both an instant message (IM) recipient (e.g., “SurfinDiane”)
and IM sender (e.g., “ChattingChuck”). Id. at 18:3–13, Fig. 7. “The
personalization item may include a graphic, such as an icon, a sound,
wallpaper . . ., an animation sequence, a video segment, and a customized
binary object . . . .” Id. at 2:22–25. An IM system can detect a recipient’s
presence state or state change (e.g., active/inactive or ability/inability to
receive IMs) (id. at 22:23–28) and can notify an IM sender of the IM
recipient’s presence state or state change (e.g., send a sound). Id. at 23:3–9.
Independent claim 41 reads as follows:
41. A computer-implemented method comprising:
receiving selection of an intended instant message
recipient from a plurality of potential instant message
recipients;
identifying a first personalization item associated with
the intended instant message recipient, the first personalization
item being specific to a presence state of the intended instant
message recipient; and
causing to be rendered, in a user interface of an instant
messaging application associated with an instant message
sender:
the first personalization item;
a second personalization item of the instant
message sender; and
instant message text exchanged between the
intended instant message recipient and the instant
message sender;
wherein causing to be rendered includes causing the first
personalization item, the second personalization item, and the
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instant message text to be rendered within a separate display
area, without causing to be rendered, in the separate display
area, names of other potential instant message recipients in the
plurality of instant message recipients;
and wherein causing the first personalization item to be
rendered comprises causing the first personalization item to be
rendered in response to activating the user interface.

Appeal Br. 24 (Claims App’x).

THE NONSTATUTORY OBVIOUSNESS-TYPE
DOUBLE PATENTING REJECTION
Claims 41–64 were rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1–107
of U.S. Patent No. 7,689,649. Final Act. 3–4. On February 20, 2017, an
electronic terminal disclaimer, listing U.S. Patent No. 7,689,649, was filed
and approved. The Examiner does not explicitly indicate in the Examiner’s
Answer that this rejection has been withdrawn but discusses only the
obviousness rejection based on the prior art. Ans. 2–16. Also, the Manual
of Patent Examining Procedure (“MPEP”) § 804.02(II) (9th ed., Rev.
08.2017, January 2018) states “[a] rejection based on a nonstatutory type of
double patenting can be avoided by filing a terminal disclaimer in the
application or proceeding in which the rejection is made.” MPEP
§ 804.02(II) (citing In re Vogel, 422 F.2d 438 (CCPA 1970)). Accordingly,
on this record, we interpret the rejection as withdrawn.

THE OBVIOUSNESS REJECTION BASED ON PRIOR ART
Claims 41–63 are rejected under 35 U.S.C. § 103 as unpatentable over
Duarte (US 2003/0030670 A1, published Feb. 13, 2003), Doss (US
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2003/0193558 A1, Oct. 16, 2003), Matsliach (US 6,879,994 B1, issued Apr.
12, 2005), and Haimberg (US 2003/0210265 A1, published Nov. 13, 2003).
Final Act. 4–10. Regarding independent claim 41, the Examiner finds that
Duarte teaches many of its elements. Final Act. 4–5. The Examiner turns to
Doss in combination with Duarte to teach the “identifying a first
personalization item associated with the intended instant message recipient”
and “causing to be rendered” the first personalization item within a display
steps. Id. at 5 (citing Doss ¶¶ 46, 82, 86, claim 2). The Examiner turns to
Matsliach in combination with Duarte to teach the “second personalization
item” feature in claim 41. Id. at 6 (citing Matsliach 9:30–38). Lastly, the
Examiner relies on Haimburg in combination with Duarte to teach rendering
the first personalization item “in response to activating the user interface”
feature in claim 41. Id. (citing Haimburg ¶ 31, Abstract).
Appellants (1) argue independent claim 41 (Appeal Br. 13–21), (2)
indicate claims 53–63 are allowable “for at least the same or similar reasons
as set forth above with respect to claim 41” (id. at 21), and (3) state claims
that depend from claims 41, 53, and 57 “are allowable for at least the same
or similar reasons” (id. at 22). For purposes of this Opinion, we select claim
41 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The arguments
presented for claim 41 center on the following issues.

ISSUES
Under § 103, has the Examiner erred in rejecting claim 41 by
determining that Duarte, Doss, Matsliach, and Haimburg collectively would
have taught or suggested:
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[(I)] causing to be rendered includes causing the first
personalization item, the second personalization item, and the
instant message text to be rendered within a separate display
area, without causing to be rendered, in the separate display
area, names of other potential instant message recipients in the
plurality of instant message recipients

and

(II) “wherein causing the first personalization item to be rendered
comprises causing the first personalization item to be rendered in response to
activating the user interface”?

ANALYSIS
Based on the record before us, we find no error in the rejection.
I.
Appellants contend that none of the cited references disclose the
limitation
causing to be rendered includes causing the first personalization
item, the second personalization item, and the instant message
text to be rendered within a separate display area, without
causing to be rendered, in the separate display area, names of
other potential instant message recipients in the plurality of
instant message recipients

as claim 41 recites. Appeal Br. 14. Appellants specifically argue (1) Duarte
only teaches an instant message text rendered in a separate display without
the other potential recipients’ names to be displayed (id. at 14–16), (2) Doss
fails to disclose a user interface (UI) (id. at 16), and (3) both Doss and
Matsliach fail to disclose rendering in the UI the first personalization item,
the second personalization item, and the IM text in a separate display area
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without rendering the “names of other potential instant message recipients”
as claim 41 recites (id. at 16–17).
Some of Appellants’ arguments attack Duarte, Doss, and Matsliach
individually (see Appeal Br. 16–17) without considering what the references
collectively teach as proposed. Final Act. 4–6 (proposing to combine the
references’ teachings); see Ans. 11–13 (same). One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Moreover, although the Examiner addresses
specific elements within claim 41 when addressing Duarte, Doss, and
Matsliach (see Final Act. 4–6), the rejection proposes to combine their
teachings (see id.) and provides reasons with some rational underpinning for
their proposed combination. See id. at 5 (citing Doss ¶ 10 and proposing to
modify Duarte to include a first personalization item as recited to provide a
more enjoyable and productive way for users to communicate), 6 (citing
Matsliach 9:30–38 and proposing additionally to incorporate a second
personalization item into Duarte’s IM session window to allow participants
to be more easily identified).
Thus, we disagree that the Examiner fails to consider claim 41’s
elements collectively or that Duarte’s teachings are irrelevant to claim 41.
See Appeal Br. 16 (stating “the Office Action’s deconstruction of claim
elements to fit the references” and “Duarte may disclose that text of an
instant message may be displayed in an area without the names of other
potential instant message recipients is simply irrelevant.”). Moreover,
although Appellants discuss Doss’s and Matsliach’s Abstracts (see id. at 16–
17), Appellants do not address the Examiner’s specific findings relating to
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Doss and Matsliach. See Final Act. 5–6 (citing Doss ¶¶ 46, 82, 86, claim 2;
Matsliach 9:30–38).
Appellants additionally contend Duarte, Doss, and Matsliach do not
make obvious the three separately recited elements (i.e., the first
personalization item, the second personalization item, and the IM text) “in a
single, separate display area.” Id. at 17; Reply Br. 2. We find, however, that
Doss suggests two of the three above-noted elements (e.g., a first
personalization item and IM text) are rendered in a single IM application’s
UI. For example, Doss discusses an IMS (IM system) environment that
includes enhanced automated greetings/responses (e.g., music, sound, video,
image, or icons) to allow an IM sender to receive contextual information
(e.g., (e.g., a first personalization item) associated with the intended IM
recipient. Doss ¶¶ 2, 7, 34. As another example, Doss teaches returning to a
sender an icon (e.g., a stop sign) representing the intended recipient who is
currently not available (e.g., a presence state) and a text message. Id. ¶ 46.
Doss further describes another example where IM users are chatting (e.g.,
through a UI), and a participant chooses to suspend a chat by clicking on an
icon indicative of the desired message (e.g., a stop sign) to be sent to his chat
partner. Id. ¶ 49. In this latter example, Doss at least suggests rendering in
an IM application’s UI associated with an IM sender (e.g., the chat partner)
both a first personalization item (e.g., a stop sign) associated with an
intended IM recipient (e.g., the participant who suspended the chat) and any
IM texts exchanged between the recipient and sender. See id.; see Ans. 11–
12 (citing Doss ¶¶ 4–5, 46–49) (discussing a user (a) initiating an IM session
and (b) clicking on an icon to send a desired message to chat partner).
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Appellants even further argue the combination “would have been
unlikely given the disclosures of Duarte, Doss and Matsliach” (Appeal Br.
17), and the Examiner “is using impermissible hindsight” (id. at 18). See
Reply Br. 3. More specifically, Appellants assert Duarte teaches the UI
containing the recipient-state information is in Figure 1—not Figure 1A.
Appeal Br. 18 (citing Duarte ¶ 3, Figs. 1–1A). Based on Duarte’s Figure 1,
Appellants contend that any “alleged presence-specific personalization
item(s) from Doss and Matsliach” would be “added to the IM Friend List” in
Duarte’s Figure 1, not Figure 1A as the Examiner proposes. Id.
We are not persuaded. Granted, Duarte’s Figure 1 includes a window
that names other potential IM recipients and includes a first personalization
item specific to an intended IM recipient’s presence state. Duarte ¶ 3
(discussing indicators 110, 112 provide an indication that a user is available
to participate in an IM session); see Spec. 22:24–28 (including the ability to
receive IM as a presence state). Even so, Doss teaches a reason with some
rational underpinning for also including this presence-type personalization
item information in Duarte’s Figure 1A as well as an IM application’s UI
associated with an IM sender. As previously explained and as proposed
(Final Act. 5), Doss teaches including the recited “first personalization item”
in an IM sender’s UI so that a participant can indicate to a chat partner to
suspend a chat in specific situations, thereby providing a more enjoyable and
productive way for people to communicate. Doss ¶¶ 10, 49, cited in both
Final Act. 5 and Ans. 12. Matsliach similarly teaches including an IM
sender’s personalization item, which is the last of the three separately recited
elements noted by Appellants (Appeal Br. 17), for similar reasons. See
Matsliach 9:30–38, cited in both Final Act. 6 and Ans. 12. Thus, contrary to
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Appellants’ assertion (see Appeal Br. 18), the combined teachings of Duarte,
Doss, and Matsliach suggest adding the personalization items recited in
claim 41 to both Duarte Figure 1 and Figure 1A. See Ans. 13–14.
Accordingly, we disagree that the Examiner uses impermissible
hindsight to justify arriving at the conclusion that the above disputed
elements recited in claim 41 are obvious over Duarte, Doss, and Matsliach,
and Haimburg collectively.
II.
Appellants next contend none of the cited references disclose the
limitation “wherein causing the first personalization item to be rendered
comprises causing the first personalization item to be rendered in response to
activating the user interface” in claim 41. Appeal Br. 18; Reply Br. 3–4.
Appellants particularly argue neither Haimberg nor any cited reference
teaches this recitation because the references do not suggest rendering a
personalization item specific to an intended IM recipient’s presence state in
response to activating the UI as recited. Id. at 18–19 (citing Haimburg
¶¶ 27–29, 31, Fig. 4), 20–21. Appellants further contend Doss and
Matsliach teach away from the proposed combination. Id. at 19–20 (citing
Doss ¶¶ 46–47 and Matsliach 9:30–38); Reply Br. 4–5.
We are not persuaded. First, Appellants’ Specification states (a)
personalization items 707 and 709 “may be made available to the IM sender
upon activating UI 700” (Spec. 18:14–15, Fig. 7) and (b) “general actionable
item 620 is configured to enable activation of an IM application and
associated Instant Message (IM) user interface (UI) 670” (id. at 17:24–26,
Fig. 6). As such, the disputed “in response to activating the user interface”
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recitation construed in light of the Specification includes clicking an action
item or a button that activates the IM application.
Second, as explained by the Examiner, Duarte teaches a user can
select to initiate an IM session within an IM session window (e.g., Duarte
¶ 12, Fig. 1A), suggesting activating an IM’s application UI. Ans. 11–12
(citing Duarte ¶¶ 4–5). Also, Doss discloses an IM system which provides
to a user a visual greeting/icon of another IM participant’s presence state
(e.g., the recited first personalization item), including providing real-time
awareness of which participants are logged on (Doss ¶ 7) or receiving a
greeting before actually sending a message (id. ¶ 47). Both these
approaches suggests to one skilled in the art techniques for rendering a first
personalization item upon activating an IM’s application UI so as to provide
real-time information to users. See id. ¶¶ 7, 47. We, thus, disagree Doss
teaches away from the proposed combination as asserted. Appeal Br. 19–20.
Third, Matsliach is cited for a limited purpose to teach rendering a
second personalization item related to the IM sender—not the disputed first
personalization item. See Final Act. 6 (citing Matsliach 9:30–38).
Appellants’ argument concerning Matsliach (Appeal Br. 20), thus, does not
address the purpose for which Matsliach was cited.
Given the above teachings from Duarte and Doss and what they
collective suggest, we determine Haimburg is cumulative. Nonetheless,
Haimburg also teaches a known technique for activating different UI
through multiple tabs (e.g., 400, 405, 410, 415, and 420) corresponding to
different chat sessions. Haimburg ¶ 37, Fig. 4, cited in Ans. 14–15; see id.
¶ 31, Fig. 2. Each tab in Haimburg has an icon representing a chat
participant and to change the focus to another chat participant represented by
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tabs 400 through 420, “one need only select the corresponding tab.” Id. ¶
39, Fig. 4; id. ¶ 38. An ordinary understanding of a “user interface” includes
“command-line interfaces, menu-driven interfaces, and graphical user
interface.”3 Thus, each tab in Haimburg is akin to a menu-drive interface,
and upon selecting a different tab, Haimburg suggests activating a different
UI. See id. ¶¶ 37–39, Fig. 4. Although Haimburg discusses the user can
carry out multiple chats “through a single messaging window” in Figure 4
(Haimburg ¶ 37), Haimburg suggests Figure 4’s tabs activate different UIs
given the above-stated ordinary meaning of “user interface.”
Also, when combining Haimburg’s teaching with Duarte/Doss UI,
which teaches rendering a first personalization item within a UI as
previously discussed, the combination would have predictably yielded
“causing the first personalization item to be rendered comprises causing the
first personalization item to be rendered in response to activating the user
interface” as claim 41 recites. We, therefore, disagree with Appellants that
the proposed combination is divorced from claim 41’s elements or that the
proposed combination fails to teach or suggest rendering a personalization
item in response to activating a UI. See Appeal Br. 18–19, 20–21; Reply
Br. 3.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 41 and claims 42–63, which are not
argued separately.

3 User Interface, THE MICROSOFT COMPUTER DICTIONARY 544 (5th ed.
2002) (defs. 1a, 1b).
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THE REMAINING OBVIOUSNESS REJECTION
Independent claim 64 is rejected under 35 U.S.C. § 103 as
unpatentable over Duarte, Doss, and Haimburg. Final Act. 10–12.
Appellants do not argue this rejection separately, stating claim 64 is
allowable “for at least the same or similar reasons as set forth above with
respect to claim 41.” Appeal Br. 21. Claim 64 differs in scope from claim
41, failing to recite a second personalization item or causing the first
personalization item to be rendered in response to activating a user interface.
Compare Appeal Br. 24 (Claims App’x), with id. at 29 (Claims App’x). As
such, Appellants’ arguments concerning these features and Matsliach do not
address to this rejection. In any event, we are not persuaded by Appellants’
arguments for the above reasons and sustain this rejection.

DECISION
We affirm the Examiner’s rejection of claims 41–64 under 35 U.S.C.
§ 103.
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