Ex Parte Hullfish et al

Patent Trial and Appeal BoardMay 31, 2018

13620851 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/620,851 09/15/2012 Keith C. Hullfish 107193 7590 06/04/2018 Keller Jolley Preece/Facebook 1010 North 500 East Suite 210 North Salt Lake, UT 84054 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 19487.32.1.2.1 7952 EXAMINER BIAGINI, CHRISTOPHER D ART UNIT PAPER NUMBER 2445 NOTIFICATION DATE DELIVERY MODE 06/04/2018 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): docketing@kjpip.com gjolley@kjpip.com tmeid@kjpip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH C. HULLFISH, CHARLES A. CAREY, MICHAEL R. LONGE, and JOE PARR1 Appeal 2017-011494 Application 13/620,851 Technology Center 2400 Before ROBERT E. NAPPI, DAVID M. KOHUT, and LYNNE E. PETTIGREW, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. DECISION ON APPEAL 2 This is an appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1 and 21-55, which constitute all of the claims pending in this application. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 According to Appellants, Facebook, Inc. is the real party in interest. App. Br. 2. 2 Our Decision makes reference to Appellants' Reply Brief ("Reply Br.," filed September 11, 2017) and Appeal Brief ("App. Br.," filed May 24, 2017), and the Examiner's Answer ("Ans.," mailed July 11, 2017), and Non- Final Office Action ("Non-Final Act.," mailed November 25, 2016). 3 Claims 2-20 were cancelled. App. Br. 2. Claims 21, 23, 24, 26, 27-31, and 34 depend from claim 1. App. Br. 4 n. l; see Ans. 2. Appeal 2017-011494 Application 13/ 620,851 STATEMENT OF THE CASE Introduction Appellants' invention is directed to a messaging system for forwarding messages addressed to text message identifiers using instant message identifiers associated with the text message identifiers. Spec. 2:22- 3:4. Claim 1 is reproduced below. 1. A method comprising: receiving, from a mobile device associated with a first user, a first text message; determining, using at least one processor, that the first text message contains a text message identifier for a second user; identifying an instant message identifier for the second user based on the identified text message identifier for the second user; creating a user preference specific to the second user based on the first text message containing the text message identifier for the second user, wherein the user preference specific to the second user applies to instant messages sent by the second user; receiving, from the second user, a first instant message addressed to the first user; and processing the first instant message in accordance with the user preference specific to the second user. Rejection on Appeal The Examiner rejected claims 1 and 21-55 under 35 U.S.C. Â§ 112, first paragraph as failing to comply with the written description requirement. 2 Appeal 2017-011494 Application 13/ 620,851 ANALYSIS To reject a claim as failing to comply with the written description requirement, the Examiner has the initial burden of presenting, by a preponderance of evidence, why a person skilled in the art would not recognize in Appellant's disclosure a description of the invention defined by the claims. In re Wertheim, 541 F.2d 257,263 (CCPA 1976). The factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Appellant was in possession of the invention as now claimed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991). The Specification need not describe the claimed subject matter in haec verba to demonstrate possession. Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane). Independent Claims 1, 36, and 45 Independent claims 1, 36, and 45 recite similar limitations and are argued together. App. Br. 13-26. We select claim 1 as representative of the group. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds that the limitation "identifying an instant message identifier for the second user based on the identified text message identifier for the second user," recited in claim 1, is not sufficiently described in the originally-filed Specification to demonstrate possession, and thus claim 1 fails to comply with the written description requirement. Non-Final Act. 8- 9, 11. The Examiner contends that the Specification is directed to processing text or SMS messages, not instant messages. Non-Final Act. 9. We do not agree with the Examiner's position. 3 Appeal 2017-011494 Application 13/ 620,851 As correctly pointed out by Appellants, the Specification discloses identifying an instant message identifier based on the identified text message identifier. App. Br. 14--20; Reply Br. 2-8. Specifically, the Specification states that "the instant message identifier associated with the telephone number is determined through searching in a database." Spec. 3: 10-11 ( emphasis added); see Reply Br. 7 ( citing Spec. 3: 10-11 ). Thus, the Specification shows that the inventors were in possession of "identifying an instant message identifier based on an identified text message identifier." The Examiner also finds the following limitations of claim 1 are not sufficiently described in the originally-filed Specification: wherein the user preference specific to the second user applies to instant messages sent by the second user; receiving, from the second user, a first instant message addressed to the first user; and processing the first instant message in accordance with the user preference specific to the second user. Non-Final Act. 8-12; Ans. 10-12. Specifically, the Examiner finds the Specification does not support a "user preference" for instant messages sent by the second user or describe how the user preference is created. Non-Final Act. 9. The Examiner further finds the Specification describes how to process SMS text messages or instant messages generated from SMS text messages sent by a user, but not instant messages "sent by the second user," because SMS text messages and instant messages are different. Non-Final Act. 9-10; Ans. 10-12. We agree with Appellants that the Specification shows that the inventors were in possession of a user preference specific to the second user applying to instant messages sent by the second user where the second user 4 Appeal 2017-011494 Application 13/ 620,851 can send a first instant message to a first user, and where the first instant message is processed in accordance with the second user's preference. App. Br. 20-26. Specifically, the Specification discloses that it is a preference of the second user whether to receive-and thus send-instant messages at the instant message identifier set up with the user profile. See Spec. 9:22-25 ("[T]he SMS server proceeds to determine whether the recipient desires to forward the SMS message as an instant message 310 to the IM service address by checking against the user preference profile."). Once the second user has specified the preference to communicate via instant messages (i.e., user preference) via the user profile (i.e., how the user preference is created), the second user may send instant messages to the first user in response to the messages received at the instant messaging service from the first user. See Spec. 10: 16-23 ("[T]he IM user can also respond to the sender of the SMS message, which is forwarded to the SMS user as an SMS message, using an IM forwarding to the SMS service 314. . . . When the IM receiver responds to the sender of the SMS message by an IM message, the server automatically converts the IM message into an SMS message for delivery to the sender."). Based on the second user's preference to communicate via the instant messaging service, the second user's instant message to the first user will be received and processed accordingly (i.e., converted from an instant message to an SMS message for delivery to the first user). Contrary to the Examiner's finding that the Specification describes instant messages generated from SMS text messages but not instant messages sent by users, the Specification shows the second user may send an instant message in response to the generated instant message received from the first user via the instant message program. See Non-Final Act. 9-10; Ans. 10-12; 5 Appeal 2017-011494 Application 13/ 620,851 Spec. 10: 16-23. Additionally, portions of the Specification on pages 6, 7, 9, and 10, as well as Figures 2, 3, and 6, show that an SMS server and a dynamic message control server-along with routing logic for the messages-act as an intermediary between the first user and the second user. See Spec. 6:19--7:1, 7:23-27, 9:22-25, 10:5-7, 10:16-23, 18:10-20; Figs. 2, 3, 6. As such, the servers will use the routing logic to process the electronic messages between the users as indicated by the second user's preferences (e.g., to use IM service or not) stored with the user profile. Accordingly, we do not sustain the Examiner's rejection under 35 U.S.C. Â§ 112 of independent claim 1, as well as independent claims 36 and 45. Dependent claims 21, 23-26, 29, 30, 32, 33, 37, 40, 41, 44, 47-50, and 53-55 depend from one of claims 1, 36, and 45, and are not argued separately. See App. Br. 26-27. Accordingly, we do not sustain the Examiner's rejection of claims 1, 21, 23-26, 29, 30, 32, 33, 36, 37, 40, 41, 44, 45, 47-50, and 53-55. Dependent Claim 22 Dependent claims 22, 3 8, and 46 recite similar limitations and are argued together. App. Br. 26-27. We select claim 22 as representative of the group. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds that the limitation "wherein identifying the instant message identifier ... comprises identifying, on a user profile database that the telephone number is associated with the instant message identifier," recited in claim 22, is not described in the originally-filed Specification. Non-Final Act. 11. The Examiner finds the Specification does not describe using the "user profile database" to look up an instant message identifier based on the corresponding text message identifier. Id. 6 Appeal 2017-011494 Application 13/ 620,851 As discussed above, we agree with Appellants that the Specification shows that the inventors were in possession of identifying an instant message identifier based on an identified text message identifier. See App. Br. 14--20. Further, as Appellants correctly point out, the Specification explains how text message identifiers are identified, i.e., through the user profile database. App. Br. 15 (citing Spec. 9:1-5 ("[T]he user profile database of the dynamic message control server associates the screen name 'JaneSmithl' with the mobile device number 650.555.1212.")). Accordingly, we do not sustain the Examiner's rejection of claims 22, 38, and 46. Dependent Claims 27, 28, 31, 34, 35, 42, 43, 51, and 52 Dependent claims 27, 28, 31, 34, 35, 42, 43, 51, and 52 recite limitations regarding the processing of the claimed first instant message and are argued together. App. Br. 26-27. With regard to dependent claims 27, 28, 31, 34, 35, 42, 43, 51, and 52, the Examiner finds that the limitations regarding various operations performed on the "first instant message" are not supported because they are mentioned in the Specification only in connection with received SMS messages, not received instant messages. Non-Final Act. 11-12; Ans. 13. We agree with Appellants that the Specification shows that the inventors were in possession of the various claim limitations regarding the processing of the claimed first instant message. See App. Br. 26-27. Specifically, the Specification discloses that the claimed methods and instructions as required in dependent claims 2 7, 2 8, 3 1, 3 4, 3 5, 4 2, 4 3, 51, and 52 may be used with different types of electronic messages, including text messages and instant messages. See Spec. 3: 5-24, 18: 10-20. 7 Appeal 2017-011494 Application 13/ 620,851 CONCLUSION On the record before us, Appellants have persuaded us that the Examiner erred in rejecting claims 1 and 21-55 under Â§ 112, first paragraph as failing to comply with the written description requirement. DECISION The Examiner's rejection of claims 1 and 21-55 is reversed. REVERSED 8