Ex Parte CURRY

Patent Trial and Appeal Board

Feb 26, 2019

14702533 (P.T.A.B. Feb. 26, 2019)

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
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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
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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.
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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
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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
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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).
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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.
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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
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