Ex Parte CURRYDownload PDFPatent Trial and Appeal BoardFeb 26, 201914702533 (P.T.A.B. Feb. 26, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/702,533 05/01/2015 BRIAN CURRY 107193 7590 02/28/2019 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. 19487.148.1.1.1 5728 EXAMINER ALGIBHAH, HAMZA N ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 02/28/2019 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 BRIAN CURRY Appeal2018-006388 Application 14/702,533 1 Technology Center 2400 Before JOSEPH L. DIXON, JAMES W. DEJMEK, and STEPHEN E. BELISLE, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. §134(a) from a Final Rejection of claims 21--40. Appellant has canceled claims 1-20. See App. Br. 24. We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b ). We reverse. 1 Appellant identifies Facebook, Inc. as the real party in interest. App. Br. 1. Appeal 2018-006388 Application 14/702,533 STATEMENT OF THE CASE Introduction Appellant's disclosed and claimed invention generally relates to joining a plurality of personal communication sessions into a joint communication session. Spec. 1: 12-28. In a disclosed embodiment, a user is engaged in a plurality personal communication sessions ( e.g., text messaging), each with a different co-user. See Spec. 9:5-24, Fig. 3. From among the co-users with whom the user is engaged in a personal communication session, the user may initiate a joint communication session with at least one of the co-users. See Spec. 9:5-24, Fig. 3. Claim 21 is illustrative of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: 21. A method comprising: monitoring a plurality of personal communications sessions associated with a user; identifying, based on the plurality communications sessions, co-users engaged communciations (sic) sessions with the user; of personal m personal receiving, from the user, a request to initiate a new joint communications session; providing to the user, in response to the request, a listing of the identified co-users engaged in personal communications sessions with the user; receiving,from the user, a selection of at least one co-user from the listing to include in the new joint communications session; sending, to the at least one co-user, an invitation to participate in the joint communications session; and 2 Appeal 2018-006388 Application 14/702,533 intitiating (sic), based on the selection of the at least one co-user from the listing, the new joint communications session between the user and the at least one co-user. The Examiner's Rejections 1. Claims 21-24, 28-31, and 35-38 stand rejected under pre-AIA 35 U.S.C. § I02(e) as being anticipated by Beadle et al. (US 2006/0212583 Al; Sept. 21, 2006) ("Beadle"). 2 Final Act. 2-5. 2. Claims 25, 26, 32, 33, 39, and 40 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Beadle and Lee et al. (US 2003/0225834 Al; Dec. 4, 2003) ("Lee"). Final Act. 5---6. 3. Claims 27 and 34 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Beadle and Herold et al. (US 7,603,413 B 1; Oct. 13, 2009 ( filed Apr. 7, 2006; claiming priority to provisional application no. 60/668,971 (filed Apr. 7, 2005))) ("Herold"). Final Act. 6-7. ANALYSIS 3 Rejection under 35 USC§ 102 Beadle is generally directed to "distributing messaging session logs to users entering an already ongoing messaging session." Beadle, Abstract. In 2 Although the Examiner's statement of rejection specifically identifies the claims as being rejected under 35 U.S.C. § I02(e), we note the rejection immediately follows the Examiner's recitation of pre-AIA 35 U.S.C. § I03(a), "which forms the basis for all obviousness rejections set forth in this Office action." Final Act. 2. 3 Throughout this Decision, we have considered the Appeal Brief, filed May 8, 2017 ("App. Br."); the Reply Brief, filed June 4, 2018 ("Reply Br."); the Examiner's Answer, mailed April 2, 2018 ("Ans."); and the Final Office 3 Appeal 2018-006388 Application 14/702,533 an exemplary scenario, Beadle describes a user wishing to join an already on-going instant messaging session between two or more other users. See Beadle ,r 6. Beadle describes logging the instant message communications between the original session participants and making the log available to the new user wishing to join the messaging session such that the joining (new) user is able to review past messages and understand the on-going context of the messaging session. Beadle ,r,r 6-7. Figure 8 of Beadle, as relied on by the Examiner (see Final Act. 2-3; 4), is illustrative of a group messaging interface and is reproduced below: r·------------------------------------------ 1 GROlif> MESSAGING INTERFACE a@ TEAM A A- AVA!l.ASlE G-AVAll.fo.llU: B - AVAILABLE C - AVAILABLE D • AVAILABLE '-~ll04 E-OFFUNE F - AVAILABLE i CURRENT SESSION JUQ SE:S$10N.&. PARTICll"ANTS - A. B, C, D STARTED: 5:10 KEYWORDS· PROJECT)( I SESSIONB PARTICIPANTS G. F, H STARTED· 4:30 KEYWORDS: TIMERS STORED LOGS fill1 SESSIONX PARTICIPANTS • A. 6, C, D TiME: 4·~s-5 07 JENKINS FllE SESSIONY PARTICIPA!~TS D, E TIME: 4:30-5:JO JENKINS FtE Fig.8 ~ ! REDUESTTO i RECOt..VENE I fil2. C"$,_,. 600 V Action, mailed October 6, 2016 ("Final Act."), from which this Appeal is taken. 4 Appeal 2018-006388 Application 14/702,533 Figure 8 of Beadle is a block diagram example of a group messaging interface. Beadle ,r,r 23, 74. Beadle describes group messaging interface (800) as "a common interface for instant messaging communications related to 'team A'." Beadle ,r 75. As shown, Team A (804) comprises seven members (A through G), six of whom are available. Beadle ,r 75, Fig. 8. Group messaging interface (800) indicates there are two on-going communication sessions (830}-Session A with participants A, B, C, and D; and Session B, with participants G, F, and H. Beadle, Fig. 8. "A user accessing group interface 800 may select to join an ongoing messaging session by selecting from among current instant messaging sessions 830 and selecting the join option depicted at reference numeral 832 by the positioning of cursor 806 or other selection input." Beadle ,r 76. After requesting to join one of the current messaging sessions, the members of the current session may be prompted to approve the joining user. Beadle ,r 76. Additionally, the members of the current messaging session may be prompted to approve distributing a log file of the communication session to the joining user. Beadle ,r 79. Appellant asserts Beadle fails to disclose, inter alia, providing a listing of identified co-users engaged in personal communication sessions with the user. App. Br. 15-16; Reply Br. 4. Appellant argues Figure 8 of Beadle merely identifies current messaging sessions that a user may try to join. App. Br. 15-16; see also Reply Br. 4 ( explaining that Figure 8 of Beadle illustrates current messaging sessions involving members of Team A, but does not illustrate, or otherwise disclose, listing co-users with whom the user is currently engaged in a personal (i.e., one-on-one) communication session). Similarly, because Beadle does not identify a list of co-users with 5 Appeal 2018-006388 Application 14/702,533 whom the user is engaged in personal communications, Appellant argues Beadle fails to disclose receiving an indication selecting such a co-user to include in a new joint communication session and, subsequently, initiating a new joint communication sessions with the selected co-user. App. Br. 17- 20; Reply Br. 3--4. In response, the Examiner finds Beadle teaches presenting a group messaging interface to user A that shows a listing of co-users (B, C, and D) with whom user A is presently engaged in personal communication sessions or was previously engaged in personal communication sessions. Ans. 4--5 (referring to Beadle, Fig. 8 (current sessions (830) and stored logs (810))). The Examiner explains that although Beadle provides the list of co-users prior to receiving a request to initiate a joint communication session, it is merely a design choice and would have been obvious to one of ordinary skill in the art to display the stored logs (810) after a user (e.g., user A) clicks on a join/request to reconvene button (Beadle, Fig. 8 (832, 822)). Ans. 4--5. The independent claims recite "identifying, ... co-users engaged in personal communication sessions with the user." Thus, the user must be carrying on personal electronic communications with the identified co-users. Once the identified co-users have been identified, independent claim 21 (and, commensurately, independent claims 28 and 35) recite: (i) providing a listing of the identified co-users to the user; (ii) receiving a selection of at least one of the identified co-users to include in a new joint communication session; and (iii) initiating a new joint communication session with the user and the at least one identified and selected co-user. See claim 21. When construing claim terminology during prosecution before the Office, claims are to be given their broadest reasonable interpretation 6 Appeal 2018-006388 Application 14/702,533 consistent with the Specification, reading claim language in light of the Specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, the broadest reasonable interpretation differs from the broadest possible interpretation. In re Smith Int'!, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is "an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is 'consistent with the specification."' Smith, 871 F.3d at 1382-83 (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). Additionally, we are mindful that limitations are not to be read into the claims from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We agree with Appellant (see Reply Br. 3--4) that the Examiner conflates a personal communications session with a joint communications session as presented in Figure 8 of Beadle. Consistent with the Specification, a personal communications session is a communication session between two participants (e.g., a user and a co-user) whereas a joint communications session is a communication session of at least three participants (e.g., a user and two co-users). Contrary to the Examiner's findings, Figure 8 of Beadle does not illustrate a plurality of personal communications sessions between a user and a plurality of co-users. Compare Beadle, Fig. 8, with Spec., Fig. 3. Rather, Figure 8 of Beadle illustrates two current joint communications (830) (Sessions A and B) and two stored joint communications (810) (Sessions X and Y). 7 Appeal 2018-006388 Application 14/702,533 Further, to support a conclusion that a claim is directed to obvious subject matter, i.e., that a feature is an obvious matter of design choice, an Examiner must present a "convincing line of reasoning" as to why one of ordinary skill in the art would have found the claimed feature to have been obvious. Exparte Clapp, 227 USPQ 972,973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned "convincing line of reasoning." Clapp, 227 USPQ at 973. Here, the Examiner has not provided any convincing line of reasoning why it would have been an obvious matter of "design choice" to display the stored logs of Beadle in response to a join or reconvene request. Notwithstanding the Examiner's conclusion that it would have been an obvious design choice to provide a list of identified co-users in response to a joint communication initiation request, Beadle, as relied on by the Examiner, does not disclose identifying co-users engaged in personal communications sessions with the user. See supra. Because we find it dispositive that Beadle, as relied on by the Examiner, does not disclose (or suggest) identifying co-users engaged in personal communications sessions with the user, as recited in independent claim 21 (and commensurately recited in independent claims 28 and 35), we need not address other issues raised by Appellant's arguments. 8 Appeal 2018-006388 Application 14/702,533 For the reasons discussed supra, we do not sustain the Examiner's rejection of independent claim 21. For similar reasons, we do not sustain the Examiner's rejection of independent claims 28 and 35, which recite commensurate limitations. Further, we do not sustain the Examiner's rejection of claims 22-24, 29-31, and 36-38, which depend directly or indirectly therefrom. Rejections under 35 US.C. § 103 The Examiner rejects dependent claims 25-27, 32-34, 39, and 40 under pre-AIA 35 U.S.C. § 103(a). Final Act. 5-7. The Examiner does not rely on the additional references (Lee or Herold) to remedy the deficiency of Beadle to identify co-users engaged in personal communication sessions with the user as set forth in the base independent claims. Accordingly, we do not sustain the Examiner rejections of claims 25-27, 32-34, 39, and 40 under pre-AIA 35 U.S.C. § 103(a). DECISION We reverse the Examiner's decision rejecting claims 21-24, 28-31, and 35-38 under pre-AIA 35 U.S.C. § 102(e). We reverse the Examiner's decision rejecting claims 25-27, 32-34, 39, and 40 under pre-AIA 35 U.S.C. § 103(a). REVERSED 9 Copy with citationCopy as parenthetical citation