Ex Parte Fiatal et alDownload PDFPatent Trial and Appeal BoardSep 29, 201711701590 (P.T.A.B. Sep. 29, 2017) Copy Citation 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. 11/701,590 02/02/2007 Trevor Fiatal 455/018/1 UTIL 3663 118194 7590 10/03/2017 NK Patent Law- Seven Networks 4917 Waters Edge Drive Suite 275 Raleigh, NC 27606 EXAMINER MAI, KEVIN S ART UNIT PAPER NUMBER 2456 NOTIFICATION DATE DELIVERY MODE 10/03/2017 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): u sptomail @ nkpatentlaw .com abackholm @ seven, com eofficeaction @ appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TREVOR FIATAL, ATIF HUSSEIN, and JASON GUESMAN Appeal 2016-003952 Application 11/701,590 Technology Center 2400 Before CARLA M. KRIVAK, MICHAEL M. BARRY, and MICHAEL J. ENGLE, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1,2, 10, 21, 22, 27, and 29-43, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-003952 Application 11/701,590 STATEMENT OF THE CASE Appellants’ invention is directed to “group messaging in the context of mobile devices such as cellular telephones, smart phones, personal data assistants (PDAs), wireless electronic mail devices, and the like” (Spec. 12). Independent claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A method for group messaging, the method comprising: receiving a message from a user of a user device; executing instructions stored in memory, wherein execution of the instructions by a processor, at least: searches a contacts database in memory of the user device, wherein the search results include contact information for one or more recipients; detect,1 for a recipient, ability of the recipient to communicate and be contacted via various communication media accessed via a first mobile device of the recipient; for the various communication media through which the recipient is able to communicate and be contacted, identify a communication medium that is being used by the recipient to communicate, by detecting activity or lack of activity of the recipient using a given communication medium via the first mobile device; select the communication medium among the various communication media that is being used by the recipient, for communicating the message from the user to the recipient, the communication medium that is being used is detected based at least in part on the activity or lack of activity of the recipient using the given communication medium; and 1 In the event of further prosecution, Appellants may wish to amend to make the verb forms consistent between (1) the singular “searches”; (2) the plural “detect,” “identify,” and “select”; and (3) the participle “sending.” 2 Appeal 2016-003952 Application 11/701,590 sending the message to the recipient through the selected communication medium which is accessed via the first mobile device by the recipient. REFERENCES and REJECTIONS The Examiner rejected claims 1, 10, 21, 22, 27, and 29-43 under 35 U.S.C. § 112, first paragraph. The Examiner rejected claims 2, 10, 33, and 37-42 under 35 U.S.C. §112, second paragraph.2 The Examiner rejected claims 1, 2, 10, and 29-43 under 35 U.S.C. § 103(a) based upon the teachings of Torvinen (US 2005/0210104 Al) and Appelman (US 2004/0172454 Al). The Examiner rejected claim 21 under 35 U.S.C. § 103(a) based upon the teachings of Torvinen, Appelman, and Kucharewski (US 2004/0199582 Al). The Examiner rejected claim 22 under 35 U.S.C. § 103(a) based upon the teachings of Torvinen, Appelman, Kucharewski, and Henderson (US 7,587,482 B2). The Examiner rejected claim 27 under 35 U.S.C. § 103(a) based upon the teachings of Torvinen, Appelman, Kucharewski, and Yabe (US 2005/0188038 Al). 2 The Examiner withdrew the rejection of claim 10 under 35 U.S.C. § 112, second paragraph (Ans. 3). 3 Appeal 2016-003952 Application 11/701,590 ANALYSIS Rejection under 35 U.S.C. § 112, first paragraph The Examiner states there is no support in the Specification for the limitations a) “identity a communication medium that is being used by the recipient to communicate, by detecting activity or lack of activity of the recipient using a given communication medium via the first mobile device,” b) “select the communication medium among the various communication media that is being used by the recipient,” and c) sending a message “through the selected communication medium which is accessed via the first mobile device,” recited in claim 1 (Final Act. 6—7). We disagree the Specification fails to support these limitations. To satisfy the written description requirement, the disclosure must convey with reasonable clarity to skilled artisans that Appellants were in possession of the claimed invention as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991). The disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue. However, one skilled in the art, reading the original Specification, must immediately discern the limitation at issue in the claims, which is a factual inquiry. We have reviewed the claims and paragraphs 3, 7, 30-33, and 44 of the Specification that Appellants cited in support of the contested limitations (Br. 4, 8). Particularly, we agree with Appellants there is written description support of their invention in at least paragraphs 30-34 (e.g., “information concerning lack of activity on a given communication medium” (| 33) and “[t]he user may be notified of the lack of activity and be given various 4 Appeal 2016-003952 Application 11/701,590 options concerning other communication media. The determination to use an alternative medium may also occur automatically” (134)). Rejection under 35 U.S.C. § 112, second paragraph The Examiner states a) claim 2 “discusses Tack of activity on the selected communication medium ... resend the message’ however it is unclear how this would occur given that the entire purpose of independent claim 1 is to have found the medium that is being used. If the medium was selected according to currently being used [sic], it is unclear how it is determined that the selected medium is no longer being used and to then resend the message,” b) claim 40 “discusses ‘a first mobile device’ however it is unclear which entity owns the first mobile device,” and c) the “term ‘likelihood’ in claims 37-39 is a relative term which renders the claim indefinite” and “the specification does not provide a standard for ascertaining the requisite degree” (Final Act. 8—9). Prior to issuance, the test for definiteness under 35 U.S.C. § 112, second paragraph, is whether the “language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014); Exparte McAward, No. 2015-006416, 2017 WF 3669566, at *12 (PTAB Aug. 25, 2017) (precedential). “At the same time, this requirement is not a demand for unreasonable precision” and “how much clarity is required necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.” Packard, 751 F.3d at 1313. We are persuaded by Appellants’ arguments (Br. 9-11) and agree the claims are not indefinite. 5 Appeal 2016-003952 Application 11/701,590 Rejection under 35 U.S.C. §103 Appellants contend the Examiner erred in finding Torvinen and Appelman teach or suggest identifying a communication medium by detecting activity or lack of activity of the recipient using a given communication medium, as recited in claims 1, 43 (Br. 12), and 21 (Br. 15). Appellants also argue that “activity” in Torvinen refers “to the user’s current activity as a person . . . rather than activity of the recipient using a particular communication medium” (Br. 13). Further, Appellants assert Appelman teaches a system where a single notification is followed “by additional notifications, in an order defined by user preference” and therefore does not cure Torvinen’s deficiency (id.). The Examiner finds, and we agree, Torvinen and Appelman teach and suggest identifying a communication medium by detecting presence and activity (Ans. 9). Contrary to Appellants’ contentions, Torvinen’s paragraph 60 discloses availability “such as: ‘in the office’, but ‘having a meeting’; or ‘in the office’, but ‘on the phone’; or ‘out of the office’, but otherwise ‘available for virtual meeting via video conference’” (id.). Therefore, “Torvinen considers presence in addition to activity on a communication medium” (id.). Additionally, Appelman teaches a message enhancement server uses presence information to determine if a user is online, and if so, uses activity information such as “whether the user 305 has engaged in no online activity for a predetermined period of time” to decide whether the message should be delivered via an “online delivery mechanism” (Appelman 173; Fig. 9). Thus, we agree with the Examiner’s finding that Appelman also considers presence in addition to activity in identifying a communication medium (see also 151; Ans. 10). 6 Appeal 2016-003952 Application 11/701,590 Accordingly, Appellants’ arguments are unpersuasive of Examiner error in the rejection of claims 1,21, and 43 For claims 10 and 40, Appellants also contend Torvinen discloses “each member of a group receives a message in accordance with their individual presence information,” which includes an indication of a user’s current activity (Br. 14); however “presence” as used in Torvinen indicates “a user’s availability and willingness to communicate, not an indication that the device is on or not” (Br. 14—15). Appellants argue Appelman fails to cure the deficiencies of Torvinen. We note that the rejection was premised on obviousness, not anticipation or inherency. See, e.g., Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 727 (Fed. Cir. 2002) (“obviousness does not require the prior art to reach expressly each limitation exactly”). The Examiner has identified Appelman’s disclosures of determining “whether the user 305 is online” (| 73) and “whether wireless notification is available for the user 305 (e.g., through notification to a mobile phone, a PDA, a pager)” (175). In view of the teachings of Appelman and Torvinen, Appellants have not persuaded us the Examiner erred in finding the combined teachings render obvious the determination based on whether the respective device (and notably multiple devices) is turned on, as recited. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (the relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of the references). 7 Appeal 2016-003952 Application 11/701,590 In light of the above, we sustain the Examiner’s rejection of independent claims 1, 10, 21, 40, and 43, and claims 2, 22, 27, 29—39, and 42, argued for their dependency therefrom. DECISION The Examiner’s decision rejecting claims 1, 10, 21, 22, 27, and 29-43 under 35 U.S.C. § 112, first paragraph is reversed. The Examiner’s decision rejecting claims 2, 33, and 37—42 under 35 U.S.C. § 112, second paragraph is reversed. The Examiner’s decision rejecting claims 1, 2, 10, 21, 22, 27, and 29— 43 under 35 U.S.C. § 103 is 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)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation