Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardMar 30, 201611783452 (P.T.A.B. Mar. 30, 2016) Copy Citation 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. 2 Appeal2014-003917 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. 3 Appeal2014-003917 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 4 Appeal2014-003917 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 5 Appeal2014-003917 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 6 Appeal2014-003917 Application 11/783,452 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. 7 Appeal2014-003917 Application 11/783,452 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 8 Copy with citationCopy as parenthetical citation