Ex Parte Guthrie et alDownload PDFPatent Trial and Appeal BoardNov 20, 201210944440 (P.T.A.B. Nov. 20, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/944,440 09/17/2004 Paul D. Guthrie 101217.00041 3233 33649 7590 11/20/2012 Mr. Christopher John Rourk Jackson Walker LLP 901 Main Street, Suite 6000 DALLAS, TX 75202 EXAMINER ZHANG, SHIRLEY X ART UNIT PAPER NUMBER 2442 MAIL DATE DELIVERY MODE 11/20/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PAUL D. GUTHRIE, ANDREW L. DALE, MICHAEL TOLSON, and CHRISTOPHER L. BUCHANAN ____________________ Appeal 2010-003363 Application 10/944,440 Technology Center 2400 ____________________ Before: MAHSHID D. SAADAT, DAVID M. KOHUT, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003363 Application 10/944,440 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to relationship-managed communication channels. Users are able to control who, when and what computer-assisted communication channels others are permitted to use for communicating with the user. Users are further provided with options to specify additional instructions regarding the routing and management of communications initiated with them. (Claim 1). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for managing computer-assisted communications between users, such that users control who is permitted to communicate with them, what computer-assisted communication channels others are permitted to use for communicating with them, and when others are permitted to communicate with them, and users are further provided with options to specify additional instructions regarding the routing and management of communications that come to them, the method comprising: establishing, at the request of a first user, a communication relationship between the first user and a second user, including receiving from the first user identifying information about at least one computer-assisted communication channel that the first user permits the second user to use for communicating with the first user, receiving from the first user information about time periods during which the first user limits the second user's permission to use the at least one identified communication channel, and receiving additional instructions that the first user gives the relationship- managed communications system for managing the second user's ability to communicate with the first user, such as Appeal 2010-003363 Application 10/944,440 3 instructing the communications system to re-route incoming communications from one channel to another channel under specifically defined conditions; securely storing contact information that allows for accessing the at least one computer-assisted communication channel for communicating with the first user; informing the second user about the communication relationship with the second user; receiving a request from the second user to communicate with the first user using a first communication channel; determining whether the second user is currently permitted to communicate with the first user using the first communication channel and determining whether any additional instructions from the first user apply to the communication; and if the second user is currently permitted to communicate with the first user, initiating use of a communications channel with first user on behalf of the second user in accordance with the additional instructions from the first user, wherein the second user need not possess the contact information that allows for initiating use of the communication channel. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Horvitz ‘1301 Horvitz ‘6962 Horvitz ‘8953 US 7,243,130 B2 US 7,251,696 B1 US 7,330,895 B1 Jul. 10, 2007 (filed Mar. 16, 2001) Jul. 31, 2007 (filed Oct. 28, 2002) Feb. 12, 2008 (filed Oct. 28, 2002) 1 Cited in the record below as Horvitz. 2 Cited in the record below as Horvitz-2. 3 Cited in the record below as Horvitz-3. Appeal 2010-003363 Application 10/944,440 4 REJECTIONS4 The Examiner made the following rejections: Claims 1-13, 15, 17 and 19-23 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Horvitz '696. Ans. 3. Claims 14 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Horvitz '696 and Horvitz '895. Ans. 3. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Horvitz '696 and Horvitz '130. Ans. 3. Issues Did the Examiner err in rejecting claims 1-13, 15, 17 and 19-23 under 35 U.S.C. § 102(e) as being anticipated by Horvitz '696? Did the Examiner err in rejecting claims 14 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Horvitz '696 and Horvitz '895? Did the Examiner err in rejecting claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Horvitz '696 and Horvitz '130? Analysis We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions with regard to the contentions discussed below and adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner 4 Claims 7, 8, 10, 12 and 15 are not separately argued and, therefore, stand or fall with their respective base claims 3 and 11 and are not otherwise addressed herein. Appeal 2010-003363 Application 10/944,440 5 in the Examiner’s Answer in response to Appellants’ Appeal. We concur with the conclusions reached by the Examiner and highlight the following arguments for emphasis. Claims 1-13, 15, 17 and 19-23 rejected under 35 U.S.C. § 102(e) as being anticipated by Horvitz '696 1. Claim 1: a. Appellants contend that Horvitz '696 does not disclose informing the second user about the communication relationship with the second user as recited by claim 1. App. Br. 13. We disagree. See Ans. 27 citing to Horvitz ‘696 col. 9, ll. 33-39 (information concerning an override is presented to sender 210 and/or receiver 220.) Appellants further contend that the Examiner committed error by inaccurately paraphrasing the portion of Horvitz ‘696 forming the basis of the rejection. Reply Br. 5. We disagree. The Examiner’s characterization of the cited portion of the Horvitz ‘696 disclosure at col. 18, ll. 21-25 (see id) by omission of alternatives not relevant to the claim language including the alternative of manual identification of communication channels did not mischaracterize the teachings of the portion of the reference relied upon in the rejection. As the omitted text was not needed to support the Examiner’s position and did not undermine the Examiner’s reliance on Horvitz ‘696 for the asserted disclosure or otherwise contradict the Examiner’s position with regard to the disclosure, omission of the text was appropriate. Appeal 2010-003363 Application 10/944,440 6 b. Appellants further contend that Horvitz ‘696 does not disclose “receiving a request from the second user to communicate with the first user using a first communication channel.” App. Br. 14. We disagree. According to Appellants, the cited portion of Horvitz ‘696 discloses that the user who establishes the relationship with the other party (i.e., Horvitz’s sender by selecting the “best communications available” option) is the same user that requests the establishment of the communication channel rather than the party being contacted establishing the relationship (i.e., the first user recited by claim 1.) App. Br. 14. However, the Examiner relies on this portion of Horvitz ‘696 only for disclosing that the sender 110 may request establishment of a communication channel with receiver 120, the communication relationship having been previously established by the first user. See Ans. 9 citing to Horvitz ‘696 Fig. 14 and col. 26, ll. 64-67. Thus, although Horvitz ‘696 may additionally provide for sender instructions, such instructions are not exclusive nor do they defeat receiver specified relationships taught by Horvitz ‘696. Therefore, we are not persuaded that the Examiner erred in concluding that Horvitz ‘696 discloses “receiving a request form the second user to communicate with the first user using a first communication channel.” Furthermore, Appellants have not provided persuasive evidence in support of their contention that the Examiner’s claim construction is improper, having incorrectly mapped the first and second users of claim 1 to the receiver or contactee of Horvitz and the second user to the sender or contactor. Therefore, we sustain the rejection of claim 1. Appeal 2010-003363 Application 10/944,440 7 2. Claim 2: a. Appellants contend that Horvitz ‘696’s “best telephone means” is not a computer-assisted communication channel. App. Br. 14. We again disagree for the reasons presented by the Examiner. See Ans. 28 (telephone channels may include cellular, satellite and Internet telephony which we agree would be understood by one of ordinary skill to constitute computer-assisted communications channels.) b. Appellants further contend that Horvitz ‘696 fails to disclose a “communications module further configured to determine, based on the relationship-related data from the first user with respect to the second user, whether the second user is permitted to communicate with the first user using the requested computer- assisted communications channel.” App. Br. 15. Appellants again argue that the Examiner’s application of Horvitz ‘696 is flawed because of a mismatch between the actions of sender 110 and receiver 120 as disclosed by Horvitz ‘696 in comparison to the actions attributable to the first and second users of claim 2. We disagree, Appellants having failed to provide us with persuasive argument or evidence of any conflict of action or omission. We further agree with the Examiner that, to the extent that Appellants cites significant amounts of claim language without specifying corresponding failures of the prior art to disclose such limitations, such arguments are not persuasive of error. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii) (2007). By the same token, a statement which merely alleges that a claim recites patentable features without even Appeal 2010-003363 Application 10/944,440 8 identifying those features will not be considered an argument for separate patentability. Therefore, we sustain the rejection of claim 2. 3. Claim 3: Appellants contend that the preference data of Horvitz ‘696 is not equivalent to and therefore does not disclose “storing information about the relationship” and “accessing the stored relationship information to determine if the requested communications channel is among the set of allowed communications channels.” App. Br. 15. We disagree. While Appellants argue that no relationship is established that defines the usable communication channels, we construe the disputed term relationship broadly to include the preference data disclosed by Horvitz ‘696. We further agree with the Examiner that Horvitz ‘696 discloses “storing information about the relationship” and “accessing the stored relationship information to determine if the requested communications channel is among the set of allowed communications channels” for the reasons set forth by the Examiner. See Ans. 13-14 and 30. Therefore, we sustain the rejection of claim 3. 4. Claim 4: Appellants contend that the preference data of Horvitz ‘696 is general (to all attempting to contact a particular party) and not specific to a relationship between first and second users. App. Br. 16. We disagree. As pointed out by the Examiner, Horvitz’s preference information is disclosed as including the identity of the contactors (i.e., senders) of the data. Ans. 30. Therefore, we agree with the Examiner (Ans. 30) that the preference data can be specific to a particular sender/receiver relationship. Furthermore, claim 4 does not require that there be plural first users or that there be multiple unique Appeal 2010-003363 Application 10/944,440 9 relationships established. Therefore, to the extent Appellants assert that a general relationship between the claimed first and second users is different than a specific relationship, Appellants’ arguments are not commensurate with the scope of the claim and are not persuasive of error. Therefore, we sustain the rejection of claim 4. 5. Claim 5: Appellants contend that the preference data of Horvitz ‘696 is not information received from the second user that comprises instructions to use the substitute communications channel. App. Br. 16. We disagree because, as explained by the Examiner, the ranked channels disclosed by Horvitz ‘696 are equivalent to the claimed allowed and substitute channels. Ans. 31. We also agree with the Examiner (Ans. 31) that Appellants’ arguments based on a requirement that relationships cannot be overridden are not commensurate with the scope of claim 5 and are therefore not persuasive of error. Therefore, we sustain the rejection of claim 5. 6. Claim 6: Appellants contend that the preference data of Horvitz ‘696 is not relationship information for a first user and a second user that can be stored and used to determine if a communications channel can be used. App. Br. 17. Other than this bare assertion, Appellants provide no persuasive evidence contradicting the Examiner’s application of Horvitz ‘696 indicative of error. See Ans. 15-16. Therefore, we sustain the rejection of claim 6. 7. Claim 9: Appellants contend that Horvitz ‘696’s disclosure that a contactee may want no interruptions during a certain time period is not equivalent to the set of communications channels being empty. App. Br. 17. We again disagree since setting a preference that inhibits communication channel allocation and/or use results in the set of Appeal 2010-003363 Application 10/944,440 10 communications channels being empty. Thus, we are again not persuaded of error. Any additional capabilities taught by Horvitz ‘696 including the argued override capability are irrelevant to the issue of anticipation there being no negative limitation restricting any such additional capabilities. Therefore, we sustain the rejection of claim 9. 8. Claim 11: Appellants contend that “[t]he preference data of Horvitz [‘696] does not define anything about the relationship between a first user and a second user until a communication is attempted, and then the preference data is only used by an override analyzer to determine whether the preference data should be overridden.” App. Br. 17-18. The Examiner responds by pointing out Appellants’ characterization of Horvitz is inaccurate and that the reference discloses alternative uses of the preference data including by the channel manager. Ans. 33. Appellants’ Reply Brief does not refute this finding by the Examiner which we otherwise find to be reasonable. Therefore, absent persuasive evidence to the contrary, we find no error and sustain the rejection of claim 11. 9. Claims 13 and 17: Appellants contend that “[n]othing in Horvitz [‘696] discloses that a contactee's preferences is based at least in part on information supplied by another contactee or a contactor” and “[n]othing in Horvitz [‘696] discloses that a contactee's preferences is based at least in part on a role supplied by another contactee or a contactor.” App. Br. 18. Appellants do not provide any details other than this naked assertion that the disputed limitations are not found in Horvitz ‘696. We are therefore not persuaded of error. A general allegation that the art does not teach any of the claim limitations is no more than merely pointing out the claim limitations. A statement Appeal 2010-003363 Application 10/944,440 11 which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii). Therefore we sustain the rejection of claims 13 and 17. 10. Claim 19: Appellants contend that the Examiner’s reference to the rejection of claims 2 and 11 fails to adequately address the basis for the rejection of subject claim 19. App. Br. 19. Appellants additionally contend that Horvitz ‘696 fails to disclose the storing information about the relationship between first and second users or a messaging module configured to access permissions repository storing information about relationships between a first user and a second user. App. Br. 19. The Examiner responds by detailing the basis of the rejection without reference to any other claims (Ans. 34-35.) We find the Examiner’s explanation and conclusion to be reasonable and noting that Appellants do not maintain that the expanded explanation is now inadequate in their Reply Brief we find no error. In connection with the disputed step of storing information about the relationship between first and second users, the Examiner finds that Horvitz ‘696’s preference data defines a relationship between users and therefore discloses the disputed claim language, citing to Horvitz ‘696 at col. 11, ll. 20-25. Ans. 35-36. We find the Examiner’s position to be reasonable and, absent persuasive evidence to the contrary, agree with the Examiner that the disputed claim elements are disclosed by Horvitz ‘696. Therefore, we sustain the rejection of claim 19. 11. Claim 20: Appellants contend that the Examiner apparently mistakenly addresses claim 19 rather than claim 20 in explaining the rejection of the latter such that there is no clear basis for the rejection Appeal 2010-003363 Application 10/944,440 12 and that, in any case, Horvitz ‘696 fails to disclose a relationship- related data from the first user defining communications permissions that the first user allows to the second user or the storage of the relationship-related data. App. Br. 19-20. The Examiner responds that the rejection contained a typographical error and provides a correction therefor such that the rationale underpinning the rejection of claim 6 (not claim 2) is relied upon for the rejection of claim 20. Ans. 37. In connection with the asserted failure of Horvitz ‘696 to disclose storing relationship-related data, the Examiner responds that, since the receiver can specify a set of channels for communication with a preferred party, the preference data defines a relationship between the sender and receiver as claimed. Ans. 37-38. We agree, finding the Examiner’s conclusion (Ans. 38) to be reasonable and, absent persuasive evidence to the contrary, sustain the rejection of claim 20. 12. Claim 21: Appellants contend that Horvitz ‘696 fails to disclose relationship-related data from the second user that indicates that the first user is not allowed to communicate with the second user. The Examiner responds that, since Horvitz ‘696 discloses specifying channels allowed for use by preferred parties, it follows that non- preferred parties are not allowed to communicate with the receiver. Ans. 39. We find the Examiner’s analysis and conclusion to be reasonable and, absent persuasive evidence to the contrary, sustain the rejection of claim 21. 13. Claim 22: Appellants contend that “[t]he contactee data store of Horvitz [‘696] …only stores information for individual contactees, not information about communications channels that a first user is Appeal 2010-003363 Application 10/944,440 13 allowed to use to communicate with a second user.” App. Br. 20. The Examiner finds that the contactee data store includes these limitations. Ans. 20. Since the contactee data store stores contactee preferences which include a set of communications channels that the first user is allowed to use to communicate with the second user (see Ans. 13 addressing citing to Horvitz ‘696 col 26, ll. 64-76 and col. 27, ll. 1-3), we are not persuaded that the disputed claim limitation is absent from the reference. Appellants further contend that Horvitz ‘696 fails to disclose other elements of claim 22, which contentions the Examiner fully addresses. Ans. 39. Finding the Examiner’s reasoning and conclusion to be reasonable and, absent persuasive evidence to the contrary, we sustain the rejection of claim 22. 14. Claim 23: Appellants contend error in that “the Examiner has failed to comply with the procedure set forth in M.P.E.P. 2181.” App. Br. 21. However, Appellants are silent as to why, when properly construed under 35 U.S.C. §112 ¶6, the Examiner erred in finding the corresponding structure of claim 23 disclosed by Horvitz ‘696. Instead, for each means-plus-function limitation recited in independent claim 23, the Examiner satisfied the burden of establishing a prima facie case of anticipation, the Examiner referring to the rationale addressing corresponding method claim 3. (Ans. 21 and 39-40). In response, Appellants make a blanket statement that the Examiner “…has failed to show that Horvitz ‘696 anticipates claim 23.” (App. Br. 22-23). However, Appellants have not explained why the portions of Horvitz ‘696 relied upon by the Examiner in the Final Rejection fail to describe a structure that is equivalent to the structure invoked by the means-plus-function limitations recited in claim 23. Appeal 2010-003363 Application 10/944,440 14 Since Appellants did not make a bona fide effort to explain why the Examiner's explicit fact finding was in error, we find that the weight of the evidence favors the Examiner's position and conclude that Appellants have not shown reversible error in the Examiner's anticipation rejection of the means-plus-function limitation recited in claim 23. Therefore, we sustain the rejection of claim 23. Claims 14 and 16 rejected under 35 U.S.C. § 103(a) as being unpatentable over Horvitz '696 and Horvitz '895 15. Claim 14: Appellants contend that “[n]othing in either Horvitz [‘696] or Horvitz [‘895] discloses a portion of the information in the communications permissions repository is contact information pertaining to the second user that is not accessible by the first user.” App. Br. 23. The Examiner responds that Horvitz ‘895 discloses applying security measures to limit access by contactors (i.e., the first user) to contactee information (Ans. 41) to, as disclosed by the Horvitz ‘895 at col. 18, ll. 49-51, protect the privacy of the contactee. The Examiner further takes the position one skilled in the art would understand contactee data to include contact information. Ans. 41. Appellants fail to challenge the Examiner’s position in their Reply Brief. Therefore, absent persuasive evidence to the contrary, we find the Examiner’s analysis and conclusion reasonable and sustain the rejection of claim 14. 16. Claim 16: Appellants contend that “nothing in Horvitz [‘696] or Horvitz [‘895] suggests that the one or more security parameters can be configured to include limiting information that is provided to Appeal 2010-003363 Application 10/944,440 15 unknown or untrusted contactees relating to the contactor, much less that the contactor of Horvitz [‘696] or Horvitz [‘895] can provide instructions specifying portions of the identity data of the contactor that the system is not permitted to make available to the contactee.” Ans. 24. The Examiner responds that Appellants have incorrectly equated the “first user” to the “contactee” rather than to the “contactor” as applied by the Examiner and the “second user” to the “contactor” rather than the “contactee.” Ans. 42. Thus, Appellants’ arguments do not address and are not applicable to the outstanding rejection and are therefore not persuasive of error. We, therefore, sustain the rejection of claim 16. Claim 18 rejected under 35 U.S.C. § 103(a) as being unpatentable over Horvitz '696 and Horvitz '130 17. Claim 18: a. Appellants contend that “neither Horvitz [‘696] or Horvitz [‘130] use the terms ‘event’ or ‘matrix,’ and based on the plain meaning of the claim terms, it is simply not possible for a reference that does not use those terms to disclose an ‘event matrix.’” App. Br. 24. The Examiner responds that Horvitz ‘130 uses the term events in describing notifications and alerts provided by notification sources. Ans. 42. Furthermore, we note that Appellants’ specification does not define the term “event matrix” other than to describe its function of defining relationship-related events about which a user has requested notification. Spec. 9. Thus, consistent with Appellants’ disclosure, any device that performs such Appeal 2010-003363 Application 10/944,440 16 function including the device defined by claim 18 is considered to be an event matrix whether or not so named. Thus, we disagree with Appellants’ premise that the applied art is deficient merely because it may use different terminology. b. Appellants further contend that “the notification sink and notification manager of Horvitz [‘130] do not store information about one or more requests from the first user to receive notification when a defined event associated with the second user occurs.” App. Br. 24. The Examiner responds that Horvitz ‘130 discloses “that the notification sink stores information about how a user desires to receive a notification,” citing to col. 12, ll. 1-21 and that notification can be generated by on information about people, etc., citing to col. 6, ll. 61-67. See Ans. 42-43. We agree with the Examiner and find that the Horvitz ‘130 teaches or suggests the limitations of claim 18. Therefore, we sustain the rejection of claim 18. CONCLUSIONS The Examiner did not err in rejecting claims 1-13, 15, 17 and 19-23 under 35 U.S.C. § 102(e) as being anticipated by Horvitz '696 The Examiner did not err in rejecting claims 14 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Horvitz '696 and Horvitz '895. The Examiner did not err in rejecting claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Horvitz '696 and Horvitz '130. DECISION The decision of the Examiner to reject claims 1-23 is affirmed. Appeal 2010-003363 Application 10/944,440 17 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2011). AFFIRMED tj Copy with citationCopy as parenthetical citation