Ex Parte Appelman et al

Patent Trials and Appeals Board

Jun 24, 2019

13616734 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/616,734 09/14/2012 Barry Appelman
107193 7590 06/26/2019
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
19487.295.1.1.3 3510
EXAMINER
NICHOLAS, WENDY K
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY APPELMAN, ROY BEN-YOSEPH,
BRIAN HEIKES, and VALERIE KUCHAREWSKI
Appeal2018-005020
Application 13/616,734
Technology Center 2100
Before JOSEPH L. DIXON, JEAN R. HOMERE, and THU A. DANG,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-005020
Application 13/616,734
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
47 and 49-85. App. Br. 1. Claims 1--46 and 48 have been canceled. Claims
App'x. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants' claimed subject matter is directed to menu choices based
on device presence state. (Amended title). Claim 4 7, reproduced below, is
illustrative of the claimed subject matter:
4 7. A method comprising:
providing a display of at least a portion of a list of
contacts for a user of a first communication system;
receiving an indication of a selection of a first contact
on the list, the first contact having a first identifier;
utilizing the first identifier of the first contact to identify
a usemame of the first contact on a second communication
system with real time messaging capability;
utilizing the usemame of the first contact on the second
communication system with real time messaging capability to
determine, by at least one processor, that the first contact is
online on the second communication system with real time
messaging capability;
based on the determination that the first contact is
online on the second communication system with real time
messaging capability, configuring a first menu of options for
presentation to the user;
receiving an indication of a selection of a second contact
on the list, the second contact having a second identifier;
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determining, by the at least one processor and based on
the second identifier, that the second contact is not online on
the second communication system with real time messaging
capability; and
based on the determination, utilizing the second
identifier, that the second contact is not online on the second
communication system with real time messaging capability,
configuring a second menu of options for presentation to the
user, wherein the first menu of options differs from the second
menu of options.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tang et al. US 6,349,327 Bl
Mitsuoka et al. US 6,671,508 Bl
Stimmel US 6,678,719 Bl
Appelman US 8,122,363 Bl
Appelman '3 63 (priority document)
Appelman et al. US 8,132,110 Bl
Appelman ' 110 (priority document)
Feb. 19,2002
Dec. 30, 2003
Jan. 13,2004
Feb.21,2012
Mar. 06, 2012
Haverstock provisional patent application serial number 60/13 7,513, filed
6/2/1999 1
1 Haverstock is an unpublished provisional application No. 60/137,513,
filed on June 2, 1999 ( non patent literature citation, filed July 21, 201 7) and
is a priority document to Shafrir et al. US 7,100,116 B 1 issued Aug. 29,
2006, and Shafrir et al. US 7,143,356 Bl issued Nov. 28, 2006. Therefore,
the rejection is actually over either of the patents relying upon the claim of
priority. (See also Appellants' nonpatent literature citation, dated April 27,
2018, office action in patent application 15/237,883 applying Shafrir et al.
US 7,100, 116 B 1; Appellants' nonpatent literature citation, dated May 4,
2017, office action in patent application number 13/616,630 applying Shafrir
et al. US 7,100,116 Bl)
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Application 13/616,734
REJECTIONS
The Examiner made the following rejections:
Claims 47, 49-51, 54--57, 59, 60, 62-71, 74--79, 81, 82, 84, and 85
stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Stimmel
in view of Haverstock.
Claims 52, 53, 72, 73 and 80 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable Stimmel and Haverstock in further view of Tang.
Claims 58, 61 and 83 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable Stimmel and Haverstock in further view of Mitsuoka.
ANALYSIS 2
With respect to the obviousness rejection, Appellants have not
disputed the Examiner's reliance upon the Haverstock provisional
application as valid prior art. (App. Br. 8). Appellants set forth separate
arguments for patentability of independent claim 4 7 and nominally set forth
2 We note that the Examiner should consider additional aspects of this
application in any further prosecution on the merits. First, we note that the
dependent claims 50, 51, 55, 70, 71, 75, and 81 contain antecedent basis
issues because there is only one "user" which selects a first or second
"contact", but the claim recites "first user" and "second user" which should
refer to "contact" rather than "user."
The Examiner should also consider evaluating the claim of priority
with regards to the original filing or the continuation-in-part filing which
added aspects regarding the graphical user interface. Also, the Examiner
should consider evaluating whether there is a written description support for
the "video call" and dependent claims of 60 and 61 where the CIP filing
(Appelman et al. US 8,132,110 Bl, issued Mar. 6, 2012), includes "share
video 755, and start a webcam 760" and "initiate a phone call 815," but are
not expressly found in the original filing (Appelman et al. US 8,122,363 Bl,
issued Feb. 21, 2012.)
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Application 13/616,734
separate arguments for patentability of dependent claims 55 and 75. (App.
Br. 8, 12-13). We select independent claim 47 as the representative claim
for the group and address Appellants' arguments thereto. 37 C.F.R.
§ 4I.37(c)(l)(iv) (2017). Arguments which Appellants could have made but
did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claim 47
With respect to representative claim 4 7, Appellants contend that the
prior art fails to teach all the elements of independent claim 4 7 and
specifically contends the Stimmel and Haverstock references fail to teach the
claimed "utilizing the first identifier of the first contact to identify a
usemame of the first contact on a second communication system with real-
time messaging capability; [ and] utilizing the usemame of the first contact
on the second communication system with real time messaging capability to
determine, by at least one processor, that the first contact is online on the
second communication system with real time messaging capability." (App.
Br. 10).
Appellants further contend that the Stimmel reference relies upon
direct user input of status to determine user status; Stimmel does not
describe, teach, or suggest utilizing a first identifier of a first contact to
identify a usemame of the first contact on a second communication system
with real-time messaging capability; and Stimmel does not describe, teach,
or suggest utilizing a first identifier of a first contact to identify a usemame
of the first contact on a second communication system with real-time
messaging capability. (App. Br. 10).
Furthermore, Appellants contend that the Haverstock reference also
fails to teach these limitations because the Haverstock reference teaches
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utilizing a known user indicator to directly identify a user's status. (App. Br.
11 ). Appellants further contend that utilizing a user identifier to directly
determine a user status is fundamentally different than the limitations recited
in the independent claims and the Haverstock does not teach utilizing the
usemame of the first contact on the second communication system
(identified by the first identifier) to determine that the first contact is online
on the second communication system with real time messaging capability.
(App. Br. 11; Reply Br. 3). Appellants also contend that utilizing a single
user identifier as taught by the Haverstock reference to directly determine a
user status is fundamentally different than utilizing a first identifier of the
first contact of a first communication system to identify a usemame of the
first contact on a second communication system with real-time messaging
capability. (App. Br. 11 ).
Additionally, Appellants argue that the Haverstock reference teaches
that the proposed solution to this problem is to directly utilize a user
indicator to identify and present a network user's status in an electronic
document. (Reply Br. 3). Appellants further contend that:
this JAVA script directly provides status notifications based on
a login name. It does not teach utilizing a first identifier of a first
contact to identify a usemame of the first contact on a second
communication system with real-time messaging capability. It
also does not teach utilizing the usemame of the first contact on
the second communication system (identified by the first
identifier) to determine that the first contact is online on the
second communication system with real time messaging
capability.
(Reply Br. 4).
Appellants identify in the Summary of the Claimed Subject Matter
section of the Appeal Brief that the "utilizing" step regarding the first
identifier is supported by:
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the host system 110 listing includes e-mail addresses of
subscribers and non-subscribers of the communications system
100. The host system 110 strips the domain (e.g., @aol.com)
from the e-mail address of a subscriber (contact) with a
recognized domain to obtain the subscriber's IM screen name
(step 497). This step facilitates the reverse look-up process.
The host system 110 determines the instant messaging capability
of each of the email addresses and/or screen names (step 499).
For example, the host system may check to see whether a screen
name is associated with an active account having IM capability
and, if so, obtain the online presence state of the screen name.
(App. Br. 2 citing Spec. 16:1-9; Fig. 4).
We conclude the language of independent claim 4 7 is not claimed in
the same specific manner and is broader than the specific implementation of
the disclosed process.
We agree with the Examiner and that the Stimmel reference evidences
a motivation for:
a method and system for facilitating interaction within
communities of workers in the most natural setting possible. The
needed system must provide each connected employee with the
instant ability to achieve contact including effective face-to-face
contact and tools that provide the instant feedback expected in
communication.
(Stimmel 1 :44--50). The Stimmel reference further discloses and suggests a
tracking or mapping of users through the use of account name or user names
across multiple networks as evidenced by the Figure 2 and the discussion of
connection to users connected to the Internet:
On the desktop there are typically several windows including
user list window 32. User list window 32 provides a visual
mechanism for informing the user of the status of the other users
or workers connected to Internet 16. User list window 32
includes user information blocks 34. User information
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blocks 34 are each associated with a respective user. Each user
information block 34 includes the name and status of the
associated user.
(Stimmel 2:30-38). We are not persuaded by Appellants' arguments, which
merely repeat the language of the claims and generally contend that both the
Stimmel reference and the Haverstock reference do not teach the claimed
date "utilizing" step.
Although Appellants are correct that the references teach broad uses
of the status information and setting of the status by the user, we agree with
the Examiner that it would have been readily apparent to one of ordinary
skill in the art at the time of the invention that one of the disclosed identifiers
may be a variation of "user's name, a number associated with the user's
name, or a variation of one or both." (See Haverstock 1: 18-22).
Additionally, we find that if a number associated with the
user/contact's name were used, then the user's name or other system
information would have been necessary for the system to locate the
appropriate user/contact information to determine the appropriate
user/contact status. Therefore, there would have been some translation from
one identifier to a user/contact name or username between the plural
networks or systems. We further find the Stimmel reference discloses and
suggests real-time activity between users through the Internet. ("An Internet
browser translates signals from Internet 16 into pictures and text so that
users 28, 30 can see them." (Stimmel 1: 1-3). "Users 28, 30 may also use
Internet 16 to communicate with one another such as by using electronic
mail ( email), instant messaging, Internet telephony, video conferencing, and
the like. Because of the continuous connectivity provided by network 10 to
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Internet 16 the users are, in effect, continuously connected to one another."
(Stimmel 3: 14--20).)
Figure 1 of the Haverstock reference discloses identifying a contact by
a determining module 12 that is used to determine a user indicator that is to
be linked where a "user indicator may be, for example, the network user's
name, an employee identification number, a combination of the two, or
various other forms. Once a user indicator is determined, identification
presenting module 14 may be used to present the user indicator within an
electronic document within the system."
(Haverstock 7: 10-13). (See generally Ans. 3-5). As a result, both the
Stimmel and Haverstock references teach a mapping of a user ID for the user
and the select contacts across multiple networks and the Internet so as to
provide message routing for communication and determination of status and
continual status updates over time.
Therefore, Appellants' general argument that the Stimmel and
Haverstock references provide a direct identification of contacts and that the
references individually do not expressly teach the claim to "utilizing" step to
be unpersuasive of the Examiner's factual findings or conclusion of
obviousness of independent claim 4 7 and independent claims 66 and 78 not
separately argued.
Claims 55 and 75
With respect to the dependent claims 55 and 75, Appellants relied
upon the arguments advanced with respect to representative independent
claim 47, and Appellants specifically identify claims 55 and 75, but
Appellants merely recite the language of the claims and generally contend
that "Stimmel and Haverstock also do not teach utilizing an e-mail address of
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a first contact to identify an instant message usemame corresponding to the
first contact and then utilizing the instant message usemame to determine
that the first user [ sic contact] is online, as more particularly recited in the
dependent claims." (App. Br. 12; see also Reply Br. 4--5).
We remind Appellants that merely reciting the language of the claim
is insufficient to show error in the Examiner's rejection. See 37 C.F.R.
§ 4I.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.").
Merely alleging that the references fail to support an obviousness rejection is
insufficient to persuade us of Examiner error. Attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex
parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009)
(informative), available at
http://www. uspto. gov /web/ offices/ dcom/bpai/its/f d09004693. pdf.
Accordingly, Appellants' does not persuasively show error in the
Examiner's factual findings or conclusion of obviousness with respect to the
dependent claims 55 and 75.
Additionally, the Examiner relies upon the use of the JAVA applet
and the "Login Name, equated to instant message usemame that is used to
check status." (Final Act. 11; see also Ans. 3-5). We further note that the
Haverstock reference discloses a communication medium regarding a
"different communication mediums, including chat, e-mail, telephone,
audio-visual, pager, application sharing, whiteboard presentations, mobile
phone and many others." (Haverstock 4:6-8) (emphasis added).
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Appellants again recite the language of dependent claim 55 regarding
various "users," but we note that this should be "contacts" rather than
"users," as discussed above.
As a result, we agree with the Examiner that any of the corresponding
usemame and user/contact identifiers may be used depending on the skilled
artisan's desired implementation. As a result, we agree with the Examiner
that the Haverstock reference teaches and suggests use of a user Login Name
or other identification in a link, which provides status information for a
specific contact. We further find that depending on the specific contact
identifiers and communication modes implemented, the identifiers and
usemame simply vary depending on the choices of the skilled artisan.
Appellants merely claim the process of using two different identifiers or
usemames for tracking a specific contact, which we find is taught and
suggested by the proposed combination of references. Consequently,
Appellants' general argument is unpersuasive of error in the Examiner's
factual findings or conclusion of obviousness of dependent claims 55 and
75.
Dependent claims
Appellants do not set forth separate arguments for the patentability of
49-54, 56-65, 67-74, 76, 77, and 89-85. (App. Br. 13). As a result, these
claims will fall with their corresponding parent claims.
CONCLUSION
The Examiner did not err in rejecting claims 47 and 49-85 based upon
obviousness under 35 U.S.C. § 103(a)
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DECISION
For the above reasons, we sustain the Examiner's obviousness
rejections of claims 47 and 49-85.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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