Ex Parte Lee et al

Patent Trial and Appeal Board

Mar 30, 2016

11783452 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111783,452 04/10/2007
23373 7590 04/01/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Sang-Kwon Lee
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.
Ql00590 8290
EXAMINER
TANG, KAREN C
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANG-KWON LEE and HYOK-SUNG CHOI
Appeal2014-003917
Application 11/783,452
Technology Center 2400
Before JOSEPH L. DIXON, LINZY T. McCARTNEY, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-3 and 8-20. We heard oral argument from Appellants on March 23, 2016.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-003917
Application 11/783,452
STATEMENT OF THE CASE
The present application concerns "a system and method of sharing
contents using a messenger program." Abstract. Claim 1 illustrates the
claimed subject matter:
1. A system for sharing contents using an instant messenger
program, the system comprising:
a processor comprising a memory executing modules, the
modules comprising;
an account generation module which registers a consumer
electronic (CE) device on the basis of device information
transmitted from the CE device to generate an instant messenger
account;
a buddy setting module which sets a buddy relationship
using a messenger client on the basis of the instant messenger
account registered in a messenger server;
a storage module which stores the device information, the
instant messenger account, and the buddy relationship; and
a communication module which provides the instant
messenger account registered in the messenger server to the CE
device,
wherein the buddy relationship is set to share contents
among CE devices having the buddy relationship.
REJECTIONS
Claims 1-3, 11-14, and 16-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hullfish (US 2009/0016499 Al; Jan. 15,
2009), Gang (WO 2004/046874 A2; June 3, 2004), and Henderson (US
7 ,308,261 B2; Dec. 11, 2007). Ans. 2.
Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hullfish and Henderson. Id.
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Application 11/783,452
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hullfish, Henderson, and Iino (US 8,032,631 B2; Oct. 4, 2011 ). Final
Act. 8. 1
ANALYSIS
We have reviewed the Examiner's rejections and the evidence of
record in light of Appellants' arguments. We disagree with Appellants that
the Examiner erred. We adopt the reasoning, findings, and conclusions set
forth by the Examiner in the Final Action and the Answer. We address
Appellants' arguments below. 2
Claim 1
"Account Generation Module"
Claim 1 recites "an account generation module which registers a
consumer electronic (CE) device on the basis of device information
transmitted from the CE device to generate an instant messenger account."
App. Br. 16. Appellants contend that Hullfish discloses "registering address
1 The Answer states that claim 15 stands rejected under 35 U.S.C. § 103(a)
over Hullfish, Gang, and Henderson. Ans. 2. However, the only rejection in
either the Answer or the Final Rejection that addresses claim 15 states that
the claim stands rejected under 35 U.S.C. § 103(a) over Hullfish, Henderson,
and Iino. Final Act. 8. We therefore understand that claim 15 stands
rejected over Hullfish, Henderson, and Iino.
2 Appellants raised a number of new arguments during oral argument.
Appellants waived these new arguments because Appellants failed to show
good cause for the untimely presentation of these arguments. See Ex parte
Borden, 93 USPQ2d 1473, 1476 (BPAI 2010) (informative) ("When new
issues have been raised by the Appellant but not addressed by the Examiner,
the Board, unless good cause is shown, will not consider those new issues.").
Cf 37 C.F.R. § 41.41(b)(2) (explaining that the Board will not consider
arguments raised for the first time in a reply brief unless an appellant has
shown good cause); Accordingly, we address only the arguments Appellants
made in their briefs.
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Application 11/783,452
information (i.e., mobile phone number, IM name) when setting up a
profile," not registering a consumer electronic device as required by claim 1.
Reply Br. 5. Appellants assert that even if Henderson discloses registering a
consumer electronic device, the Examiner's combination of Hullfish and
Henderson would not result in the claimed invention. Id. at 5. According to
Appellants, this is because "Hullfish relates to setting up a user profile and
associating a user's IM name with the user's mobile phone number while
Henderson relates to registering a device to manage an IM session and/or
other communication session." Id.
We find Appellants' arguments unpersuasive. The Examiner found-
and Appellants do not dispute-that Henderson establishes the recited
"account generation module" was well known to those of ordinary skill in
the art. See Ans. 4 (citing Henderson 9:40-52, Fig. 5); see also Henderson
8:38-52 (explaining that a Registration Manager can "register a mobile
device to be useable for managing an IM session"), 11:34--12:26 (describing
the method for managing mobile device registration shown in Figure 5).
And Appellants' assertion that the Examiner's combination of Hullfish and
Henderson would not result in the claimed invention lacks adequate
supporting evidence or reasoning. See Reply Br. 5. In particular, Appellants
have not explained why the alleged differences between Hullfish and
Henderson would have prevented one of skill in the art from combining the
teachings of Hullfish and Henderson in the claimed manner. See id.
Moreover, Appellants' assertion relies on an overly narrow characterization
of Hullfish's and Henderson's teachings. Contrary to Appellants' assertion,
Henderson's invention "relates generally to mobile communications, and
more particularly but not exclusively to managing a quick registration of a
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Application 11/783,452
mobile device to be useable for an instant messaging (IM) session."
Henderson 1:6-9 (emphases added). Similarly, Hullfish's invention
generally "relates to electronic message systems in a computer
environment." Hullfish i-f 2.
"Buddy Setting Module"
Claim 1 also recites "a buddy setting module which sets a buddy
relationship using a messenger client on the basis of the instant messenger
account registered in a messenger server." App. Br. 16. Appellants argue
Hullfish does not teach or suggest the claimed "buddy setting module"
because "Hullfish simply discloses user preference information for applying
filters (i.e., blocking) to forwarded messages." Reply Br. 6 (citing Hullfish
i-f 42). Appellants also contend that even if Gang teaches this limitation, it
would not have been obvious to combine Hullfish's and Gang's teachings in
the claimed manner. Id. at 6-7. In Appellants' view, the proposed
modification would render Hullfish unsatisfactory for its intended purpose
"because Hullfish is directed toward applying filtering/blocking to
forwarded messages ... [and] modifying Hullfish to share content with
'buddies' ... would destroy the useful filtering of unwanted content." Id. at
7.
We find Appellants' arguments unpersuasive. The Examiner found
Gang teaches the recited "buddy setting module" because Gang discloses a
system that generates a "sharelist." See Ans. 5 (citing Gang 6:5-15).
Appellants have not persuasively challenged this finding. As for Appellants'
argument that the proposed modification would render Hullfish
unsatisfactory for its intended purpose, the fact Hullfish discloses allowing
users to block certain forwarded messages does not preclude Hullfish's
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Application 11/783,452
system from sharing content with "buddies." As an initial matter, Hullfish is
not "directed toward applying filtering/blocking to forwarded messages" as
argued by Appellants. Reply Br. 7. Hullfish's filtering feature is simply one
of several aspects of an invention that "relates to electronic messaging
systems in a computer environment." Hullfish i-f 2. In any event, one of skill
in the art would recognize that Hullfish's "filtering" feature and Gang's
"buddy setting module" could coexist-the modified system could allow a
user to receive content from specific "buddies" and block content (including
forwarded messages) from other "buddies" or entities. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (explaining that an obviousness
analysis "can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ"); Peifect Web Techs., Inc. v.
Info USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (explaining that an
obviousness analysis "may include recourse to logic, judgment, and common
sense available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion").
"Storage Module"
Claim 1 also recites "a storage module which stores the device
information, the instant messenger account, and the buddy relationship."
App. Br. 16. Appellants contend neither Gang nor Henderson discloses the
recited "storage module" because Hullfish's filter information is not a
"buddy relationship" and Gang's user profile server stores data including a
user's screen name, buddy list, geographic location, and identified interests.
See App. Br. 10-11; Reply Br. 7.
We find Appellants' arguments unpersuasive. The Examiner found
Hullfish discloses a database that stores, among other things, a mobile
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device address and instant message account information. See Ans. 5; Final
Act. 3 (citing Hullfish i-fi-1 63-70). The cited portions of Gang disclose a
server that stores a user's buddy list, geographic location, and identified
interests. See Final Act. 3--4 (citing Gang 15). The Examiner concluded a
combination of Hullfish's and Gang's disclosures teach or suggest the
claimed subject matter. See Final Act. 3--4; Ans. 5. Appellants' arguments
against Hullfish and Gang individually have not persuaded us the Examiner
erred. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (explaining that
"one cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references").
The "Wherein" Clause
Claim 1 's final limitation recites "wherein the buddy relationship is
set to share contents among CE devices having the buddy relationship."
App. Br. 16. Appellants contend Gang discloses sharing contents between
different recipients but does not disclose sharing contents among consumer
electronics devices having the claimed buddy relationship. See App. Br. 11;
Reply Br. 8.
We find Appellants' arguments unpersuasive. The Examiner found
Hullfish discloses the claimed consumer electronic devices and both Hullfish
and Gang disclose the recited buddy relationship. See Final Act. 3--4. The
Examiner concluded a combination of Hullfish's and Gang's teachings
suggests claim 1 's "wherein" limitation, Final Act. 3--4, and Appellants'
arguments against Gang alone have not persuaded us this conclusion is
erroneous, see Keller, 642 F.2d at 426.
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Claim 8
Claim 8 recites ( 1) "registering the CE device on the basis of the
device information to generate an instant messenger account"; (2)
"requesting registration of the generated instant messenger account in a
messenger server using a messenger client of the device server"; and (3)
"providing the instant messenger account to be registered according to the
request to the CE device." App. Br. 17. Appellants contend the Examiner's
combination of Hullfish and Henderson fails to teach or suggest these
limitations for largely the same reasons Appellants argue the Examiner's
combination of Hullfish and Henderson fails to teach or suggest claim 1 's
"account generation module." See App. Br. 13; Reply Br. 9. We find these
arguments unpersuasive for the reasons set forth above.
DECISION
For the above reasons, we affirm the rejections of claims 1-3 and 8-
20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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