Brian D. Heikes et al.Download PDFPatent Trials and Appeals BoardAug 2, 201914226492 - (D) (P.T.A.B. Aug. 2, 2019) Copy Citation 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. Appeal 2018-005931 Application 14/226,492 2 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 Appeal 2018-005931 Application 14/226,492 3 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 Appeal 2018-005931 Application 14/226,492 4 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: Appeal 2018-005931 Application 14/226,492 5 [(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 Appeal 2018-005931 Application 14/226,492 6 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 Appeal 2018-005931 Application 14/226,492 7 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). Appeal 2018-005931 Application 14/226,492 8 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 Appeal 2018-005931 Application 14/226,492 9 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” Appeal 2018-005931 Application 14/226,492 10 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 Appeal 2018-005931 Application 14/226,492 11 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). Appeal 2018-005931 Application 14/226,492 12 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 Copy with citationCopy as parenthetical citation