Ex Parte Fiatal et al

Patent Trial and Appeal Board

Sep 29, 2017

11701590 (P.T.A.B. Sep. 29, 2017)

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.”
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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).
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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
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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.
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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).
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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).
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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
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