Ex Parte Haynes et al

Patent Trial and Appeal BoardMar 10, 2015

12140570 (P.T.A.B. Mar. 10, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS R. HAYNES and LIN SUN ____________ Appeal 2012-008017 Application 12/140,570 Technology Center 2400 ____________ Before CARLA M. KRIVAK, JEFFREY S. SMITH, and BETH Z. SHAW, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing under 37 C.F.R. 47.52(a)(1) (“Request”) for reconsideration of our Decision on Appeal mailed December 31, 2014 (“Decision”). We reconsider our decision in light of Appellants’ Request for Rehearing, but we decline to change the decision. We have considered and reviewed each of Appellants’ arguments in the Request. We find Appellants’ arguments unpersuasive for the reasons given in our previous Decision. Appellants have not presented any additional persuasive reasoning in the Request to support their position that Roskind does not describe how a sender can specify if and when an instant message is to be sent to the recipient. Request 4. In the Decision, we found that the Examiner rejects claims 5, 9, and Appeal 2012-008017 Application 12/140,570 2 13 based on “the combination of Lyle, Holt, Roskind, and Forlenza.” Decision 5. We concluded the Examiner did not err, and adopted the Examiner’s findings and conclusions, while limiting our discussion to points of emphasis. Id. The Examiner finds Lyle and Roskind both teach that a sender can specify if and when an instant message is to be sent to the recipient (Ans. 13–16). As we stated at page 6 of the Decision: the Examiner finds . . . [Lyle’s] sender can determine if the message should be sent “now” through email or instant message, or queued until a time when recipient establishes another session. Therefore when a recipient is unavailable, a sender is prompted with information that the recipient is unavailable and the sender had the option of if to send the instant message and when to send the instant message. (Decision 6, citing Ans. 14). Thus, Lyle’s sender can specify the instant message is to be sent now, or later, i.e., “when an instant message is to be sent to the recipient,” (emphasis added) as recited in claim 5. We also noted the Examiner additionally finds, how a sender in Roskind also can specify if and when an instant message is to be sent to the recipient (Decision 6, citing Ans.13-16, citing Roskind, Figures 5A-5D, ¶¶ 53, 63-79). In the Request, Appellant now argues Roskind does not describe how a sender can specify if and when an instant message is to be sent to the recipient because ¶ 52 of Roskind describes that a messaging component, not the sender, specifies when the message is forwarded (see Request, 3-4). However, Appellant does not allege any alleged deficiencies in Lyle or in our findings with respect to Lyle. Further, although Appellant points to ¶ 52 of Roskind in the Request, ¶ 52 refers to Figure 3 of Roskind, which shows a system for “handling instant messages when a user is away/offline” Appeal 2012-008017 Application 12/140,570 3 (See Roskind, ¶¶ 52, 17, Fig. 3). Appellant does not explain how the other cited paragraphs (¶¶ 63-79) of Roskind fail to teach or suggest the claimed limitations. Roskind’s ¶¶ 63–79 describe Figures 5A-5D of Roskind, which “are illustrations showing an instant messaging window with various exemplary interactions between a user and a buddy’s electronic assistant” (Roskind, ¶ 19) (emphasis added). Thus, for the above reasons, Appellant has not persuaded us of error in our decision. Accordingly, we decline to change our prior Decision. CONCLUSION For the aforementioned reasons, Appellants’ contentions have not persuaded us of error in our Decision. Accordingly, while we have granted the Request for Rehearing to the extent that we have reconsidered our decision, that request is denied with respect to making any changes therein. 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). REHEARING DENIED mls