Ex Parte Chaar et al

Patent Trial and Appeal BoardApr 27, 2016

12056737 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/056,737 03/27/2008 48062 7590 04/29/2016 RYAN, MASON & LEWIS, LLP 1175 Post Road East 2nd Floor Westport, CT 06880 FIRST NAMED INVENTOR Jarir Kamel Chaar 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. YOR920050001 US2 1081 EXAMINER WU, TSUNG YIN ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 04/29/2016 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): ctoffice@rml-law.com kmm@rml-law.com mjc@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JARIR KAMEL CHAAR, NEAL MARTIN KELLER, CLIFFORD ALAN PICKOVER, and ROBERT W. WISNIEWSKI1 Appeal2014-003181 Application 12/056,737 Technology Center 2400 Before BRUCE R. WINSOR, NABEEL U. KHAN, and MICHAEL M. BARRY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-20, all the pending claims of the application. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 1. 2 In this Opinion, we refer to the Appeal Brief ("App. Br.," filed Sept. 16, 2013), the Examiner's Answer ("Ans.," mailed Nov. 14, 2013), the Reply Brief ("Reply Br.," filed Jan. 14, 2014), the Final Office Action ("Final Act.," mailed Apr. 16, 2013), and the original Specification ("Spec.," filed March 27, 2008). Appeal2014-003181 Application 12/056,737 CLAIMED INVENTION Appellants state "[t]he present invention relates ... to improved techniques for managing and distinguishing instant messaging sessions and instant messaging session threads." Spec. 1. Claim 1 is illustrative: 1. A method of managing instant messaging communication over a computer network, comprising the steps of: organizing one or more instant messaging session windows in an instant messaging session manager of a first user; attributing multiple distinguishing instant messaging session characteristics associated with an instant messaging session conducted with each of one or more separate users, selected by the first user, to each of the respective one or more separate users, each separate user associated with a respective one of the one or more instant messaging session windows displayed to the first user, and wherein said session characteristics for each respective instant messaging session comprise: a color of the respective instant messaging session window; intensity of the color of the respective instant messaging session window; an audio clip associated with the respective separate user to be played at one or more first-user-designated times during the respective instant messaging session; a visual object identifying the respective separate user in a message display area of the respective instant messaging session window; and a name identifying the respective instant messaging session; and projecting to the first user via the instant messaging session manager of the first user, the multiple distinguishing instant messaging session characteristics associated with an instant messaging session conducted with a particular separate user during an instant messaging session with the particular separate user; wherein the one or more distinguishing characteristics increase a likelihood of identification of the one or more instant messaging session windows. 2 Appeal2014-003181 Application 12/056,737 App. Br. 17 (Claims App'x). REJECTIONS Claims 1, 3---6, 8, 11, 13-16, 18, and 20 stand rejected under 35 U.S.C. Â§ 102(e) as anticipated by Weaver et al. (US 2005/0108329 Al; May 19, 2005) ("Weaver"). Final Act. 5-10. Claims 2, 12, 17, and 19 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over Weaver and McCarthy et al. (US 7,328,242 Bl; Feb. 5, 2008) ("McCarthy"). Final Act. 10-12. Claim 7 stands rejected under 35 U.S.C. Â§ 103(a) as obvious over Weaver and Maddalozzo, Jr. et al. (US 6,445,400 Bl; Sept. 3, 2002) ("Maddalozzo"). Final Act. 12-13. Claims 9 and 10 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over Weaver and Sorotzkin (US 2003/0005058 Al; Jan. 2, 2003) ("Sorotzkin"). Final Act. 13-14. ANALYSIS Claim 1 Appellants argue the Examiner errs in rejecting claim 1 because "[t]he cited portions of Weaver teach a sender selecting 'self-expression items' to be attributed to himself or herself-that is, the sender," which Appellants contend does not disclose "attributing multiple distinguishing instant message session characteristics ... to each of the respective one or more separate users" as required by claim 1. App. Br. 9-10. The Examiner answers by finding "Weaver discloses that the sending user's selected IM characteristics, which are assigned to recipient users, are viewed by the sender user, and these characteristics provide the sender user 3 Appeal2014-003181 Application 12/056,737 the ability to distinguish between each IM session being conducted with one or more IM recipients." Ans. at 18; see also Final Act. 5. In reply, Appellants point out that the actual teaching of Weaver is distinct from the noted claim aspect because "attributing multiple distinguishing instant messaging session characteristics[], selected by the first user, to each of the respective one or more separate users" teaches a first user selecting characteristics to be attributed to a separate user. And as clearly noted above, the cited portions of Weaver teach a sender selecting "self-expression items" to be attributed to himself or herself -- that is, the sender, as well as IM recipient characteristics that are "chosen by the IM recipient." Reply Br. 4 (brackets in original). We find Appellants' arguments unpersuasive because, Appellants' selective editing of the claim language notwithstanding, the claim recites that the "one or more separate users" are "selected by the first user" but does not recite that the "attributing" is performed by the first user. Compare Reply Br. 4 with claim 1. Nor does the claim recite that the "session characteristics" are selected by the first user. Id. We further find Appellants' argument unpersuasive in view of the ordinary meaning of "attributing." We construe attributing, as used in claim 1, in view of Appellants' Specification, as encompassing its ordinary, broad meaning of "designating" (see, e.g., ~1~Irifl-El::_W_~J2_~!~I~--~--[,;_QJJ_~_gj_gJ_~ __ D.i~1iQJJ_9:ry __ 7-_~ ___ (J_Q_th ed. 1999) (vt def. 2.c.)). Under this broad but reasonable interpretation, a sending user's designation of characteristics for a display window that corresponds to a recipient user (as in Weaver) is encompassed by attributing those characteristics to the recipient user. Appellants also argue the Examiner errs in finding Weaver teaches attributing an "intensity of color" to an instant messaging session window. 4 Appeal2014-003181 Application 12/056,737 App. Br. 11-12.3 Appellants argue that the Examiner's "vague and unspecified reference" to a "windows based UI environment" does not satisfy the requirement for inherency and, regardless, Weaver shows all of the windows illustrated in Figure 1 (relied upon by the Examiner) as the same color. Id. The Examiner answers that one of ordinary skill knows "that in the windows environment by Microsoft, such as Windows NT, Windows 2000, [etc.] it is inherent that the 'current' window being acted upon by a user is highlighted and the other windows will be a base or different intensity of color." Ans. 21. 4 The Examiner also reasons that "the instant claim does not require that each session have a different color, or a different intensity of color," rather it requires "'one or more distinguishing characteristics increase a likelihood of identification' [so that] only one of the distinguishing characteristics ever need to actually be different in each session window." Id. The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254--55 (CCPA 1977); see also Crown Operations Int'!, LTD v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner meets this "burden of production by 'adequately explain[ing] the shortcomings it 3 The Examiner's pre-appeal Advisory Action finds that Weaver's windows- based system discloses this requirement because "[i]n a windows based UI environment, it is inherent that the 'current' window being acted upon by a user is highlighted and the other windows will be a base or different intensity of color." Adv. Act. 4. 4 Weaver ,-r 65 discloses the sender's computer may use various Windowsâ„¢ operating systems, including Windowsâ„¢ NT and Windowsâ„¢ 2000. 5 Appeal2014-003181 Application 12/056,737 perceives so that the applicant is properly notified and able to respond.'" Jn re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)). The burden of proof then shifts to the applicant "to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on." Best, 562 F.2d at 1254-55; In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency). Appellants do not persuasively rebut the Examiner's findings and reasons for how Weaver discloses the color and color intensity requirements of claim 1. We thus sustain its rejection, along with the rejection of claims 16 and 20, which Appellants argue together with claim 1 (App. Br. 12). Claim 4 Appellants argue the Examiner errs in rejecting claim 4 because \Ve aver "merely teaches 'selecting one or more self-expression items,"' which does not disclose claim 4' s "displaying a menu of distinguishing characteristics" requirement. App. Br. 12-13 (contending Weaver has "no disclosure or mention of displaying a menu or collection of self-expression items from which the IM sender is selecting"). The Examiner answers by pointing to Weaver's Figures 11-13 and finding they explicitly disclose various menus for selecting and assigning the self-expression items. Ans. 22-25. 5 We agree with the Examiner, and accordingly sustain the rejection of claim 4. 5 As discussed supra, Weaver's "self-expression items" correspond to the claimed session characteristics. 6 Appeal2014-003181 Application 12/056,737 Claim 8 Appellants argue the Examiner errs in rejecting claim 8 because Weaver provides "no disclosure or mention of attributing a unique 'size' to text" as claimed. App. Br. 13 (referring to Weaver i-f 88). The Examiner answers that Weaver's Figure 11 (which Weaver i-f 88 discusses) "specifically illustrates a size selection for the IM text." We agree with the Examiner, and accordingly sustain the rejection of claim 8. Claim 13 Appellants argue the Examiner errs in rejecting claim 13 because Weaver "merely teaches 'selecting one or more self-expression items,"' which does not disclose claim 13 's "displaying a menu of thread characteristics" requirement. App. Br. 14. The Examiner answers by finding that "[i]n Weaver, when selecting the personality characteristics for recipient users, these selections will also be utilized by the system of Weaver for each of the recipient users in chat rooms. Accordingly, each menu of distinguishing characteristics for each recipient user is also a menu of thread characteristics." Ans. 27 (citing Weaveri-f 122). The Examiner also notes Appellants' Specification describes "[ t ]he terms 'thread' or 'topic,' as used herein are interchangeable, and describe a logical continuation of communication. It is possible, to have more than one thread of communication in a session window between two users. In a multiple user or chat session, many threads of communication are common." Spec. 4, 11. 10-14. We agree with the Examiner that Weaver's IM sessions, such as in chat rooms, constitute threads, consistent with use of that term in Appellants' Specification and Claims. 7 Appeal2014-003181 Application 12/056,737 Appellants provide no persuasive rebuttal to the Examiner's findings in the rejection of claim 13. We accordingly sustain the rejection. Remaining Claims Appellants provide no substantive arguments for separate patentability of claims 2, 3, 5, 6, 7, 9-12, 14, 15, and 17-19. See App. Br. 12-15. Accordingly, we sustain the Examiner's rejection of those claims. See 37 C.F.R. Â§ 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011) (sustaining requirement for appellant to make separate substantive arguments for separate review on appeal of individual claims). DECISION For the above reasons, we affirm Examiner's rejection of claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8