Ex Parte Brownholtz et al

Patent Trial and Appeal BoardDec 13, 2012

10894526 (P.T.A.B. Dec. 13, 2012)

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. 10/894,526 07/19/2004 Elizabeth Brownholtz LOT920040030 (048) 5435 46321 7590 12/13/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER WHIPPLE, BRIAN P ART UNIT PAPER NUMBER 2448 MAIL DATE DELIVERY MODE 12/13/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ELIZABETH BROWNHOLTZ, WERNER GEYER, SANDRA KOGAN, MICHAEL MULLER and ERIC WILCOX ____________ Appeal 2013-001306 Application 10/894,526 Technology Center 2400 ____________ Before ERIC S. FRAHM, KRISTEN L. DROESCH and ERIC B. CHEN, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-001306 Application 10/894,526 2 STATEMENT OF THE CASE Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 5, 6 and 8-11. 1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND Appellants’ invention relates to persistent human-to-human conversational tools such as instant messaging, application sharing and chat rooms. Spec. ¶¶ 0001, 0004-0006. Independent claim 5 is illustrative and is reproduced below (disputed limitations in italics): 5. A method for processing external events in a persistent human-to-human conversational space, the method comprising the steps of: persisting a human-to-human conversational space; posting turns in said persistent human-to-human conversational space; receiving notifications of external events; responsive to receiving said notifications, converting said notifications into said information; and, further posting the information in said persistent human- to-human conversational space. Rejection Claims 5, 6 and 8-11 stand rejected under 35 U.S.C. § 102(e) as anticipated by Hendriks (2003/0163525 A1). 1 Claims 1-4, 7 and 12-18 have been cancelled. Appeal 2013-001306 Application 10/894,526 3 ISSUE Did the Examiner err in finding that Hendriks describes the disputed limitations of claim 5? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments in the Appeal Brief presented in response to the Final Office Action and arguments in the Reply Brief presented in response to the Answer. We disagree with Appellants’ conclusions. We highlight and address specific findings and arguments for emphasis as follows. The Examiner finds, referring to Figures 5B and 5C below, that Hendriks’ annotation hyperlink 51B corresponds to the claimed notification of an external event and the picture of a house 54c and stroke annotation data 53c corresponds to the claimed information. Ans. 5-6. Hendriks’ Figures 5B and 5C are reproduced below: Figures 5B and 5C depict instant messaging system screen displays. More specifically, the Examiner finds that an annotation hyperlink 51b is created which is a notification or alert of the external event of Bob Appeal 2013-001306 Application 10/894,526 4 entering annotation stroke data. Ans. 5, citing ¶ 49, ll. 12-18. The Examiner further finds that a user would select the annotation link 51b and it is converted into the data shown in Fig 5C as 53c and 54c. Id. Last, the Examiner finds that the data 53c and 54c shown in Fig. 5C is posted to the conversational space between Bob and Karen. Ans. 6, citing ¶ 49, ll. 12-18. Appellants argue that there is no indication that Hendrik’s annotation link itself is a notification. App. Br. 5; Reply Br. 2-4. Appellants further argue that the Examiner fails to show with any evidence that a hyperlink is known to a person with ordinary skill in the art as a notification. Reply Br. 4-5. We are unpersuaded by Appellants’ arguments and agree with the Examiner that the annotation hyperlink 51B which serves as an alert to the annotation is also a notification. Hendriks depicts an annotation hyperlink 51B in Figure 5B and describes “[t]he corresponding view that a user would see as an alert to the annotation is shown in Fig. 5B.” ¶ 49, ll. 14-16. The Examiner’s finding that a notification includes Hendrik’s annotation hyperlink 51B complies with the broadest reasonable interpretation applied to claim terms during prosecution. Appellants do not direct us to objective evidence to demonstrate that the ordinary meaning of “notification”, as understood by one with ordinary skill in the art, would exclude a hyperlink. Appellants also argue that the Examiner subjectively and without evidence reasons that the link can be “clicked on” to retrieve more information. Reply Br. 4. Appellants’ arguments are unpersuasive since Hendriks depicts in Fig. 5C “[t]he view that a user would see after selecting the annotation hyperlink.” ¶ 49, ll. 16-17. Hendriks further depicts in Fig 5C a picture of a house 54C and stroke annotation data 53c encircling the picture of Appeal 2013-001306 Application 10/894,526 5 the house, which is the data or information that a user would see after selecting (i.e., after clicking on) the annotation hyperlink 51B. For all these reasons, we sustain the Examiner’s rejection of claims 5, 6 and 8-11 as anticipated by Hendriks. DECISION We AFFIRM the rejection of claims 5, 6 and 8-11 under 35 U.S.C. § 102(e) as anticipated by Hendriks. TIME PERIOD 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 ELD