Ex Parte Karunamuni et al

Patent Trial and Appeal BoardJun 20, 2017

13471372 (P.T.A.B. Jun. 20, 2017)

United States Patent and Trademark Office 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. 13/471,372 05/14/2012 Chanaka G. Karunamuni 106842057800 1713 (P12613US1) 69753 7590 06/22/2017 APPLE c/o MORRISON & FOERSTER LLP LA 707 Wilshire Boulevard Los Angeles, CA 90017 EXAMINER CALDERON IV, ALVARO R ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 06/22/2017 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): EOfficeL A @ mofo. com PatentDocket @ mofo. com pair_mofo @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHANAKA G. KARUNAMUNI and RICHARD R. DELLINGER Appeal 2016-000993 Application 13/471,372 Technology Center 2100 Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and MELISSA A. HAAPALA, Administrative Patent Judges. HAAPALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 4—7, 11—14, and 18—21. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on June 15, 2017.1 We reverse. 1 A transcript of the oral hearing will be forthcoming. Appeal 2016-000993 Application 13/471,372 INVENTION Appellants’ invention relates generally to electronic messaging. Spec. 11. Claim 4 is exemplary of the subject matter on appeal: 4. A method comprising: displaying a graphical user interface (GUI) presenting a conversation view on a display of a sending device; receiving input; displaying the input in the GUI; transmitting a most recent message including the input to one or more recipient devices in communication with the sending device; displaying a delivery receipt including a delivery time in the GUI when the most recent message is delivered to at least one recipient device; and replacing the delivery receipt with a read receipt in the GUI, including replacing the delivery time with a read time, when the most recent message is read on the at least one recipient device and not displaying read receipts for any other messages in the conversation, wherein the method is performed by one or more hardware processors. REJECTIONS ON APPEAL Claims 4, 6, 7, 11, 13, 14, 18, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being obvious over Clarke (US 2012/0231770 Al; published Sept. 13, 2012) and Josh Constine, FacebookMessenger Apps Get More Life-Like, Now Show if Someone’s Read your Message (May 4, 2012), http://techcrunch.com/2012/05/04/facebook-messenger-read-receipts (“Constine”). Final Act. 2—5. 2 Appeal 2016-000993 Application 13/471,372 Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as being obvious over Clarke, Constine, and Chen (US 2009/0089716 Al; Apr. 2, 2009). Final Act. 5—6. ISSUE Appellants’ contentions present us with the following dispositive issue: Did the Examiner err in finding the combination of Clarke and Constine teaches or suggests replacing [in the GUI] the delivery time with a read time, as recited in independent claims 4,11, and 18?2 ANALYSIS Independent claims 4,11, and 18 recite “replacing [in the GUI] the delivery time with a read time.” The Examiner relies on Clarke to teach this limitation. Final Act. 3^4 (citing Clarke Figs. 2B-2C, 8A-8E, || 82, 83, 97— 100); see also Ans. 5—12. In particular, the Examiner finds that Clarke “shows how said timestamps are defined as part of a message’s additional identifying information, which is dynamically updated every time a change in message status is detected.” Ans. 5 (citing Clarke 45, 73, 76, 100) (footnote omitted). The Examiner further finds that given that Clarke illustrates only a single timestamp is displayed for both the “delivered” and the already-updated “read” messages, it necessarily follows that each respective message timestamp display is updated to reflect the newly received status of the message. Ans. 12 (citing Clarke Figs. 8C-8E, 1100). Appellants argue that although Clarke illustrates displaying a time next to each message, Clarke is silent as to what this time represents with 2 We do not reach the additional contentions presented by Appellants because the identified issue is dispositive of the appeal. 3 Appeal 2016-000993 Application 13/471,372 respect to the message. App. Br. 8; see also App. Br. 10. Thus, Appellants argue the Examiner’s assertion that time is a read time or delivery time is an impermissible inference because the time could instead be a sent time or time of message creation. App. Br. 8—9. Appellants further argue that there is no indication from the illustrations in the figures or the cited paragraphs that any of the displayed times are ever replaced with another time. App. Br. 9; see also Reply Br. 3. We agree with Appellants that the Examiner has not established Clarke teaches the disputed limitation. Although Clarke illustrates a time associated with a message (see e.g., Clarke Figs. 8C, 8D), the paragraphs describing these figures are silent as to what the illustrated time represents. See Clarke || 97—99. And although Clarke describes replacing a message icon with the most recent status update (e.g., replacing an indication a message has been delivered with a “message read” icon) (see Clarke Figs. 2A-2D, || 57, 59), the cited paragraphs of Clarke do not describe replacing a delivery time with a read time. See Clarke Figs. 2A-2D, || 57, 59, 100. Furthermore, we agree with Appellants that the disputed limitation is not necessarily present in Clarke. The concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the “natural result” of the combination of prior elements. PAR Pharm, Inc. v. TWIPharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. Because there are multiple possibilities of what the time illustrated in Figs. 8A-8D represent (e.g., message creation time, message delivery time) and because the time does not necessarily have to be replaced 4 Appeal 2016-000993 Application 13/471,372 when the icon is updated, we determine the Examiner does not establish Clarke inherently teaches the replacing limitation. We are constrained by the record to concur with Appellants’ argument that the Examiner has not established Clarke teaches or suggests “replacing the delivery time with a read time,” as recited in independent claims 4, 11, and 18. Nor does the Examiner find Constine teaches this limitation. Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejection of claims 4, 11, and 18, and their dependent claims 6, 7, 13, 14, 20, and 21. The Examiner does not rely on the additional reference of record (Chen) to teach or suggest replacing the delivery time with a read time. See Final Act. 5—6. Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejection of claims 5, 12, and 19. DECISION We reverse the Examiner’s decision to reject claims 4—7, 11—14, and 18-21. REVERSED 5