Ex Parte Goodman et al

Patent Trial and Appeal Board

Dec 15, 2014

10730227 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN D. GOODMAN, KONRAD C. LAGARDE,
EBEN P. STEWART, MICHAEL VAN DER MEULEN, and
JESSICA WU
____________________

Appeal 2012-008263
Application 10/730,227
Technology Center 2400
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and
LYNNE H. BROWNE, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Brian D. Goodman et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–10 and 30–52. Although
the Appeal Brief lists only the independent claims as the claims on appeal
(Appeal Br. 5), we understand Appellants to be appealing the rejections of
all of the rejected claims, with Appellants relying solely on the arguments
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asserted for each independent claim in contesting the rejections of its
dependent claims.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for electronic instant message conversation, the
method comprising the steps of:
receiving at a second unidentified client, a first message
to be published from a first client to subscribers including said
first client, the first message related to a topic of interest, the
first client having a first network address, the first message
including a request and being directed through a pub/sub
service, the second client being a subscriber to the service of the
pub/sub service as being willing to receive messages related to
the topic of interest and being anonymous to the first client and
said other subscribers of the pub/sub service and being
unaddressed by the first client, said anonymous subscribers
known only to said pub/sub service;
after receiving said first message at said second client,
filtering at said second client the message received from said
first client, said filtering passing messages of specific interest to
said second client such that said first message and the included
request have to pass the filtering in order for the second client
to see the request;
in the event that the message passes said filtering at said
second client, creating at the second client, a second message,
the second message comprising the first message and the first
network address, said first message in said second message
providing context to said second message and including further

1 Appellants are admonished to take care in any future appeals to list all
rejections and claims for which review is sought, in order to avoid having
rejections of claims not explicitly identified as being on appeal summarily
sustained.
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information pursuant to said specific interest in said first
message;
transmitting the second message by way of an instant
message application from the second client to the first client;
retrieving additional information related to the second
client; and
presenting the second message and the additional
information at the first client;
said second client remaining anonymous to the first client
and other subscribers after said transmission of said second
messages to the first client.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Robertson
Appelman
Kapil
US 6,209,100 B1
US 6,539,421 B1
US 6,941,345 B1
Mar. 27, 2001
Mar. 25, 2003
Sept. 6, 2005
Marks US 7,596,578 B1 Sept. 29, 2009

REJECTIONS
Claims 1–4, 10, 31, 33–37, 43–46, and 52 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Appelman, Robertson, and
Marks. Ans. 5.
Claims 6–9, 39–42, and 48–51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Appelman, Marks, and Robertson. Ans.
16.
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Claims 5, 30, 32, 38, and 47 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Appelman, Robertson, Marks, and Kapil.2 Ans.
20.
OPINION
Each of Appellants’ independent claims requires, after receiving the
message at the second client or the subscriber(s), filtering at3 the second
client or the subscriber(s) the message received such that the message and
included request have to pass the filtering in order for the second client or
the subscriber(s) to see the request. The Examiner acknowledges that
Appelman lacks this feature. Ans. 9, 14, 17. All of the Examiner’s
rejections rely in part on the Examiner’s finding that Marks teaches filtering
at said second client or said subscriber(s) the message received from the first
client such that the first message and included request have to pass the
filtering in order for the second client or subscriber(s) to see the request.
Ans. 9–10, 14, 18, 21 (citing Marks, col. 6, ll. 43–60, 64–67).
In the passage cited by the Examiner, Marks discloses a first layer of
filtering in which a question received by server 114 is “filtered either
automatically (e.g., using a computer or microprocessor) or by a human
operator . . . to eliminate non-relevant or redundant questions.” Marks, col.

2 Although Appellants do not list this rejection as one of the grounds to be
reviewed on appeal (Appeal Br. 30), we understand Appellants to be
requesting review of this rejection and to be relying, for each of the claims
subject to this rejection, on the arguments presented in contesting the
rejections of each of their independent claims.
3 Claim 48 contains the language “as each subscriber.” Appeal Br. 61,
Claims App. (emphasis added). It is not apparent whether the term “as” is a
typographical error, or whether Appellants intended this term. In any event,
the use of “as” instead of “at” imparts no dispositive difference in this
appeal.
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6, ll. 47–51. The system then routes the question to one of the experts at an
expert interface. Marks, col. 6, ll. 51–53. The expert interface presents the
expert with a “Top Level” home page from which the expert “can select a
specific question to answer, edit existing questions, or quit.” Id., ll. 61–65.
For essentially the reasons articulated by Appellants (Reply Br. 5–6),
it is not apparent how the Examiner finds that Marks teaches the feature in
question. It appears that that the Examiner is relying on the first layer of
filtering disclosed by Marks as the filtering and on the human operator who
performs this filtering as the second client or subscriber. See Ans. 9, 14
(stating that the “questions are filtered by the human operator i.e. second
client”); id.at 32 (stating that “the message is passed through filtering . . .
when the human operator filters the message and then routed to the experts”
and that “the message passed the filtering when the human operator filters
out the non-relevant questions, and forwards the relevant questions to the
experts to see/answer the question”). The Examiner’s reliance on the first
layer of filtering disclosed by Marks as the filtering and the first computer or
human operator as the second client or subscriber appears to overlook the
requirement in the claims that the filtering be such that the message and
included request must pass the filtering to be seen by the second client or
subscriber(s). This first layer of filtering in Marks appears to require that
the question be seen by the first computer or human operator, and, thus,
would not satisfy the requirement that the filtering be such that the message
and included request have to pass the filtering in order for the second client
or the subscriber(s) to see the request. Although this does not appear to be
the case, if the Examiner were relying on the first layer of filtering as the
filtering and the expert to whom questions surviving the first layer of
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filtering are routed as the second client or subscriber, then the first layer of
filtering does not satisfy the requirement that it be done at the second client
or subscriber(s). Likewise, although this also does not appear to be the case,
if the Examiner were relying on the selection by an expert of a question to
answer as the filtering, then it is not apparent how this satisfies the
requirement that the filtering be such that the message and included request
have to pass the filtering in order for the second client or the subscriber(s) to
see the request. See Ans. 31 (stating that the “expert selects a specific
question to answer, and the experts answer the question. This means that
questions are filtered with the first message including the request for the
client to see, otherwise the expert would not be able to answer the question if
he/she did not see the question.”).
Accordingly, the Examiner does not adequately explain how Marks’s
teachings are to be combined with Appelman and Robertson4 to arrive at the
subject matter of Appellants’ claims, including after receiving the message
at the second client or the subscriber(s), filtering at the second client or the
subscriber(s) the message received such that the message and included
request have to pass the filtering in order for the second client or the
subscriber(s) to see the request. Thus, we do not sustain the Examiner’s
rejections.

4 Robertson is relied upon for its teaching of subscribers or clients who are
anonymous to the first client and other subscribers, but are known to the
pub/sub service. Ans. 8, 13, 19.
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DECISION
The Examiner’s decision rejecting claims 1–4, 10, 31, 33–37, 43–46,
and 52 under 35 U.S.C. § 103(a) as being unpatentable over Appelman,
Robertson, and Marks is reversed.
The Examiner’s decision rejecting claims 6–9, 39–42, and 48–51
under 35 U.S.C. § 103(a) as being unpatentable over Appelman, Marks, and
Robertson is reversed.
The Examiner’s decision rejecting claims 5, 30, 32, 38, and 47 under
35 U.S.C. § 103(a) as being unpatentable over Appelman, Robertson, Marks,
and Kapil is reversed.
REVERSED

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