Ex Parte Kraft et al

Patent Trial and Appeal BoardMar 31, 2017

11259733 (P.T.A.B. Mar. 31, 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. 11/259,733 10/26/2005 Christian Kraft 042933/407167 3227 10949 7590 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER WYCHE, MYRON ART UNIT PAPER NUMBER 2644 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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): u sptomail @ alston .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN KRAFT and PETER NIELSEN Appeal 2016-000549 Application 11/259,733 Technology Center 2600 Before JAMES R. HUGHES, LARRY J. HUME, and TERRENCE W. McMILLIN, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 21—38. Claims 1—20 have been canceled. Final Act. 1; App. Br. 20.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We refer to Appellants’ Specification (“Spec.”) filed Oct. 26, 2005; Appeal Brief (“App. Br.”) filed Feb. 18, 2015; and Reply Brief (“Reply. Br.”) filed Oct. 12, 2015. We also refer to the Examiner’s Answer (“Ans.”) mailed Aug. 14, 2015, and Non-Final Office Action (Non-Final Rejection) (“Non- Final Act.”) mailed June 18, 2014. Appeal 2016-000549 Application 11/259,733 Appellants ’ Invention The invention at issue on appeal concerns messaging apparatuses, computer program products, and methods for displaying messages on a display, including allowing or preventing display of a received message dependent on a sender. Spec. 1, 5—19; Abstract. Illustrative Claim Independent claim 21, reproduced below, with the key disputed limitations emphasized, further illustrates the invention: 21. A method comprising: causing display of a first received message from a first sender; receiving input for a reply message; causing display of the input; receiving indication of a second received message during the display of the input; in an instance in which the second received message is from the first sender, as determined by a processor, causing display of an indication of the second received message; and in an instance in which the second received message is not from the first sender, as determined by a processor, preventing display of the second received message and continuing to cause display of the input. Rejections on Appeal 1. The Examiner rejects claims 21, 22, 26—28, 32—34, and 3 8 under 35 U.S.C. § 103(a) as being unpatentable over Sanjeeva et al. (US 2007/0033255 Al, published Feb. 8, 2007 (filed Aug. 3, 2005)) (“Sanjeeva”), Horsfall et al. (US 7,269,793 B2, issued Sept. 11, 2007 (filed 2 Appeal 2016-000549 Application 11/259,733 Oct. 18, 2002)) (“Horsfall”), and St. Pierre (US 6,874,012 Bl, issued Mar. 29, 2005). 2. The Examiner rejects claims 23, 24, 29, 30, 35, and 36 under 35 U.S.C. § 103(a) as being unpatentable over Sanjeeva, Horsfall, St. Pierre, and Batra et al. (US 2005/0160451 Al, published July 21, 2005). 3. The Examiner rejects claims 25, 31, and 37 under 35 U.S.C. § 103(a) as being unpatentable over Sanjeeva, Horsfall, St. Pierre, and Kraft (US 7,328,031 B2, issued Feb. 5, 2008 (filed Dec. 21, 2004)).2 ISSUE Based upon our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, the dispositive issue before us follows: Did the Examiner err in concluding the combination of Sanjeeva, Horsfall, and St. Pierre collectively would have taught or suggested “in an instance in which the second received message is not from the first sender, as determined by a processor, preventing display of the second received message and continuing to cause display of the input” within the meaning of Appellants’ claim 21 and the commensurate limitations of claims 27 and 33? ANALYSIS The Examiner rejects independent claim 21 in view of Sanjeeva, Horsfall, and St. Pierre. See Non-Final Act. 2-A\ Ans. 2—8. Appellants contend Sanjeeva, Horsfall, and St. Pierre do not teach the disputed features 2 The Examiner includes claim 26 in the statement of the rejection. Claim 26 is actually rejected under the first ground of rejection. We amend the statement of the rejection for clarity and consistency of the record. 3 Appeal 2016-000549 Application 11/259,733 of claim 21. App. Br. 7—11; Reply Br. 1—3. Specifically, Appellants contend St. Pierre does not teach or suggest preventing display of a second received message when the second received message is not from a sender of a first received message: St. Pierre fails to teach or suggest,. .. “preventing display of the second received message and continuing to cause display of the input.” Furthermore, ... St. Pierre only discusses prioritization of messages relative to each other, and does not suggest that in an instance a second message is received that is not from the sender of a first message, preventing display of that second message, as required in the independent claims. App. Br. 8. We agree with Appellants that the Examiner-cited portions of St. Pierre (see Non-Final Act 3—\\ Ans. 2—6 (citing St. Pierre, 5:55—6:13; 6:19— 23; Fig. 5C)) do not fairly teach or suggest preventing display of a second received message when the second received message is not from a sender of a first received message (to which an input for a reply message is currently displayed) and instead continuing to cause display of the input for a reply message. App. Br. 7—11; Reply Br. 1—3; St. Pierre, Fig. 5C. St. Pierre merely describes displaying the current (default) state — in the context of claim 21, the requested “input for a reply message” recited in claim 21 — until a registered network device (the device having the highest priority) has a message waiting (queued). The display device displays a message — here, again, the requested “input for a reply message” — for a predetermined period of time, no matter the identity of the network device (sender). See St. Pierre, 5:55—6:13; 6:19-23; Fig. 5C. That is, St. Pierre describes displaying all messages for a requisite time period to prevent “prematurely overwrit[ing]” the currently displayed message (Abstract), there is no 4 Appeal 2016-000549 Application 11/259,733 disclosure of allowing some but not other messages to be displayed or overwrite the currently displayed message. St. Pierre does not discriminate between senders or network devices. Therefore, St. Pierre does not describe preventing the display of a particular message — that is, the second received message recited in Appellants’ claim 21. Further, in preventing the display of all messages (except the currently displayed message) St. Pierre conflicts with the Examiner’s cited teachings of Sanjeeva and Horsfall. See Non- Final Act 3^4. Consequently, we are constrained by the record before us to find that the Examiner erred in concluding that Sanjeeva, Horsfall, and St. Pierre teach the disputed limitations of Appellants’ claim 21. Independent claims 27 and 33 include limitations of commensurate scope. Dependent claims 22, 26, 28, 32, 34, and 38, depend on claims 21, 27 and 33, respectively. We are also constrained by the record before us to find that the Examiner erred in concluding that: Sanjeeva, Horsfall, St. Pierre, and Batra teach the disputed limitations of Appellants’ claims 23, 24, 29, 30, 35, and 36; and Sanjeeva, Horsfall, St. Pierre, and Kraft teach the disputed limitations of Appellants’ claims 25, 31, and 37, for the same reasons as claim 21 {supra). Accordingly, we reverse the Examiner’s obviousness rejections of claims 21-38. CONCLUSION Appellants have shown the Examiner erred in rejecting claims 21—38 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 21—38. 5 Appeal 2016-000549 Application 11/259,733 REVERSED 6