Ex Parte Appelman et alDownload PDFPatent Trials and Appeals BoardJun 24, 201913616734 - (D) (P.T.A.B. Jun. 24, 2019) Copy Citation 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; 2 Appeal2018-005020 Application 13/616,734 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) 3 Appeal2018-005020 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.) 4 Appeal2018-005020 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 5 Appeal2018-005020 Application 13/616,734 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: 6 Appeal2018-005020 Application 13/616,734 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 7 Appeal2018-005020 Application 13/616,734 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 8 Appeal2018-005020 Application 13/616,734 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 9 Appeal2018-005020 Application 13/616,734 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). 10 Appeal2018-005020 Application 13/616,734 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) 11 Appeal2018-005020 Application 13/616,734 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 12 Copy with citationCopy as parenthetical citation