Ex Parte Bailey et al

Patent Trial and Appeal Board

Jun 4, 2014

11459694 (P.T.A.B. Jun. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BYRON LEWIS BAILEY,
RICHARD DEAN DETTINGER, ZACHARY ADAM GARBOW,
GREGORY RICHARD HINTERMEISTER, ROBERT DOUGLAS HOLT,
JASON ALLAN NIKOLAI, and KEVIN GLYNN PATERSON
____________________

Appeal 2012-002298
Application 11/459,694
Technology Center 2400
____________________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 5, 7-14, and 22-31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.1

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
April 29, 2011) and Reply Brief (“Reply Br.,” filed September 6, 2011), and
the Examiner’s Answer (“Ans.,” mailed July 6, 2011).
Appeal 2012-002298
Application 11/459,694

2
THE CLAIMED INVENTION
Appellants’ claimed invention “relates to digital communication
systems, and in particular, to systems for managing the flow of instant
messages over a computer network” (Spec. 1, ll. 8-10).
Claim 5, reproduced below, is illustrative of the subject matter on
appeal:
5. A method for selectively filtering instant messages,
comprising:
receiving an instant message via a network interface;
communicating the received message to an instant
messaging client,
in response to receiving the message, the instant
messaging client:
calculating a priority score for the instant message;
selectively displaying the instant message in a
conversation window on a display based at least in part
on the calculated priority score;
dynamically updating the priority score; and
selectively hiding the conversation window based
at least in part on the updated priority score.

THE REJECTIONS
The following rejections are before us for review:
Claims 5, 7, 25, and 28-31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kirkland (US 2005/0149622 A1, pub. July 7, 2005) and
Kaminsky (US 2005/0055405 A1, pub. Mar. 10, 2005).
Claims 8-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kirkland, Kaminsky, and deCarmo (US 2004/0010808 A1,
pub. Jan. 15, 2004).
Appeal 2012-002298
Application 11/459,694

3
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kirkland, Kaminsky, and McCarty (US 2004/0143632 A1, pub. July 22,
2004).
Claims 22-24 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kirkland, Kaminsky, and Berger (US 2006/0080354 A1, pub. Apr.13,
2006).
Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kirkland and Kaminsky.
Claims 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kirkland, Kaminsky, and Beam (US 2005/0246646 A1, pub. Nov. 3, 2005).

ANALYSIS
Appellants argue the pending claims together. We select claim 5 as
representative. The remaining claims stand or fall with claim 5. 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 5 under 35 U.S.C. § 103(a) because neither Kirkland
nor Kaminsky discloses or suggests “dynamically updating the priority
score,” as recited in claim 5 (App. Br. 9-12 and Reply Br. 2-3). Instead, we
agree with the Examiner that Kirkland teaches this feature (Ans. 6 and
26-27, citing Kirkland, ¶¶ 58 and 59).
Kirkland discloses an instant message system, and describes that when
an instant message is sent to a user, the receiving instant messaging client
analyzes the message to determine its thread content (Kirkland, ¶ 10). The
instant messaging client determines the priority level of the message based
Appeal 2012-002298
Application 11/459,694

4
on the thread content, and accepts and displays the message to the recipient
if the priority level is above a predetermined threshold (id.).
Kirkland describes at ¶ 59, cited by the Examiner, that, in some
circumstances, a filtered participant, having some authority or rights to
override the user’s instant messaging settings, may conduct a messaging
session with the user, despite the messaging filters set by the user. In other
words, a sender, whose message has been blocked based on its priority level,
may be able to override the thread content analysis. Kirkland describes that
the authority to override settings may be predicated on the establishment of
an organizational hierarchy, e.g., a family relationship hierarchy or a friend
relationship hierarchy, or alternatively, on an external source, such as a
corporate telephone directory2 (see, e.g., Kirkland, ¶¶ 36, 37, 59, and 60).
We agree with the Examiner that overriding the user’s message
settings, i.e., the calculated priority level based on thread content, as
disclosed in Kirkland, constitutes “updating the priority score,” under a
broad, but reasonable, interpretation (see Ans. 6 and 26-27).
Appellants argue that the claimed invention requires two rounds of
message analysis and responsive action whereas Kirkland teaches only one
round of analysis and response:
The claimed invention[ ] . . . require[s] a second round of
analysis and responsive action on a particular message.
Claim 5, for example, recites both: (i) “calculating a priority
score” and then “selectively displaying the instant message . . .

2 Kirkland describes that a corporate telephone directory has inherent
properties regarding organizational structure, such as employee and
employer relationship, manager and subordinate, and hierarchical
relationship, or any combination of these user-defined hierarchies
(Kirkland, ¶ 36).
Appeal 2012-002298
Application 11/459,694

5
based at least in part on the calculated priority score;” and
(ii) “dynamically updating the priority score” and “selectively
hiding [the currently displayed instant message] based at least
in part on the updated priority score.” The cited sections in
Kirkland only teach one round of analysis and response. That
is, Kirkland analyzes a message and then either selectively
displays a message or selectively delay[s] it. It does not later
re-analyze a message to “dynamically update[ ]” its “priority
score,” as required by the claims.

App. Br. 10-11. In fact, Kirkland discloses the same two-round message
analysis and response recited in the claims.
Kirkland describes that when an instant message is received, the
receiving instant messaging client analyzes the message to determine its
thread content and, therefore, its priority level (Kirkland, ¶ 10). The
message then is “selectively displayed,” i.e., displayed or not, in a “first
round analysis and response,” depending on whether the priority level of the
message is above a predetermined threshold (id.).
Kirkland describes, e.g., at ¶ 59, that a filtered participant, whose
message has been blocked, may have authority to override the block, i.e., to
update the priority level, and conduct a messaging session with the user,
despite the messaging filters set by the user. In that situation, the
participant’s message, which initially was blocked in the first round analysis
and response, is selectively hidden, i.e., displayed or not, in a “second round
analysis and response,” based on the updated priority score.
Appellants have not established that the Examiner erred in rejecting
claim 5 under 35 U.S.C. § 103(a); therefore, we sustain the Examiner’s
rejection. We also sustain the Examiner’s rejection of claims 7-14 and
22-31, which stand or fall with claim 5.
Appeal 2012-002298
Application 11/459,694

6

DECISION
The Examiner’s rejections of claims 5, 7-14, and 22-31 under
35 U.S.C. § 103(a) are affirmed.
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
llw