Ex Parte Heikes et al

Patent Trial and Appeal BoardSep 17, 2012

11019538 (P.T.A.B. Sep. 17, 2012)

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. 11/019,538 12/23/2004 Brian D. Heikes 10587.0263-00000 7870 100692 7590 09/17/2012 AOL Inc./Finnegan 901 New York Ave., NW Washington, DC 20001 EXAMINER NGUYEN, MINH CHAU ART UNIT PAPER NUMBER 2442 MAIL DATE DELIVERY MODE 09/17/2012 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 BRIAN D. HEIKES, JAMES A. ODELL, ANDREW L. WICK, and DEBORAH R. YUROW _____________ Appeal 2010-004543 Application 11/019,538 Technology Center 2400 ______________ Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and DAVID M. KOHUT, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004543 Application 11/019,538 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 13, 17, 18, 20 and 22. We reverse. INVENTION The invention is directed to a method of providing offline messages via instant massager. The method allows a user to set custom offline messages on a per buddy or per group basis. See pages 1 and 2 of Appellants’ Specification. Claims 13 is representative of the invention and reproduced below: 13. A method for providing away messages to buddies of an instant messaging program user, the method comprising: providing an interface that displays a representation of a buddy group and a representation of a buddy included in the buddy group, wherein the representation of the buddy group and the representation of the buddy are displayed in a manner that indicates the buddy is included in the buddy group; enabling the user to set a global away message using the interface; enabling the user to set a group away message for the buddy group using the interface; enabling the user to set a personal away message for the buddy using the interface; sending one or more of the global away message, the group away message, and the personal away message to the buddy in response to the buddy attempting to communicate with the user through the instant messaging program when the user is offline; and enabling the user to append the personal away message to one or both of the global away message and the group away message using the interface. Appeal 2010-004543 Application 11/019,538 3 REFERNCE Digate US 2004/0161090 Aug. 19, 2004 REJECTION AT ISSUE The Examiner has rejected claims 13, 17, 18, 20 and 22 under 35 U.S.C. § 102(e) as anticipated by Digate. Answer 4-6.1 ISSUE Appellants argue on pages 3 and 4 of the Brief2 that the Examiner’s rejection of independent claim 13 is in error. These arguments present us with the issue: did the Examiner error in finding Digate teaches enabling the user to append a personal away message to one or both of the global away message or the group away message? ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to the Appellants’ arguments. We concur with Appellants’ conclusion, that the Examiner erred in finding Digate teaches enabling the user to append a personal away message to one or both of the global away message or the group away message. The Examiner in response to Appellants’ arguments finds that 1 Throughout this opinion we refer to the Examiner’s Answer mailed on February 6, 2009. 2 Throughout this opinion we refer to Appellants’ Appeal Brief dated November 17, 2008 and Reply Brief dated April 6, 2009. Appeal 2010-004543 Application 11/019,538 4 Digate teaches this feature in Figure 2 and paragraph 39. Answer 7. Further, the Examiner states that the “examiner is interpreting configuring or adding information or messages in the availability filter to be ‘appending personal away message to global or group away message.’” Answer 7. We disagree. While Digate’s paragraph 39 discusses notifications and messages to others when a user is logged off and that presence of users is made known to all users, some users (on a user-by-user basis, group basis or global basis), we do not find a disclosure of appending one message with another as recited in independent claim 13. Accordingly, we will not sustain the Examiner’s rejection of independent claim 13 or the claims which depend thereupon. ORDER The decision of the Examiner to reject claims 13, 17, 18, 20 and 22 is reversed. REVERSED tj