Ex Parte Lyle et al

Patent Trial and Appeal Board

Dec 20, 2012

11040069 (P.T.A.B. Dec. 20, 2012)

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.
11/040,069 01/21/2005 Ruthie D. Lyle LOT920040123US1 (075) 2289
46321 7590 12/20/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
ZHANG, SHIRLEY X
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
12/20/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUTHIE D. LYLE, MICHAEL MULLER,
VAUGHN T. ROKOSZ, and ANDREW L. SCHIRMER
____________

Appeal 2010-007705
Application 11/040,069
Technology Center 2400
____________

Before MARC S. HOFF, JEFFREY S. SMITH, and
ANDREW CALDWELL, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007705
Application 11/040,069

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Representative Claim
Claim 1. A method for selectively blocking the transmission of an
unsolicited instant message, the method comprising the steps of:

receiving for routing to an instant messaging client, an instant
message in an instant messaging server managing instant messaging
communications between instant messaging clients over a computer
communications network, the instant message designating an intended
recipient;

locating said intended recipient in a do not instant message list in the
instant messaging server; and,

responsive to said location of said intended recipient in said do not
instant message list, blocking routing of said instant message for completion
of transmission of said instant message to said intended recipient.

Prior Art
Keller US 2005/0246344 A1 Nov. 3, 2005
Woods US 6,965,919 B1 Nov. 15, 2005
Bhatia US 2006/0031307 A1 Feb. 9, 2006

Examiner’s Rejections
Claims 1-3, 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keller.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keller and Woods.
Appeal 2010-007705
Application 11/040,069

3
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keller and Bhatia.

ANALYSIS
Section 103 rejection of claims 1-3, 5, 7, and 8
Appellants contend that Keller does not teach “blocking routing of
said instant message for completion of transmission of said instant message
to said intended recipient” as recited in claim 1. App. Br. 4-8; Reply Br. 2-
6. The Examiner finds that paragraphs 4, 13, 15, and 39 of Keller teach that
blocking an instant message was within the ordinary skill in the art at the
time of invention. Ans. 9-10.
The cited portions of Keller teach a need for consumers to decline
unsolicited instant messages using a ‘do not contact’ list. Paragraphs 41 to
43 of Keller describe that a server compares a do not contact list to a list of
contact points from senders, then reports to senders the contact points that
appear on the do not contact list. The senders then do not send messages to
the reported contact points. However, the Examiner has not explained how
Keller teaches that the server receives an instant message, then blocks the
routing of the instant message to the recipient. We agree with Appellants
1

that the Examiner has not persuasively explained how Keller alone teaches

1
Although Keller does not teach a server that detects and blocks routing of
an instant message for completion of transmission to an intended recipient as
required by claim 1, Bhatia appears to teach this limitation. See Bhatia,
Figs. 1, 3 and ¶¶ 16, 33-40. In the event of further prosecution, the
Examiner should consider whether the combined teachings of Keller,
Woods, and Bhatia teach the limitations of claims 1-5, 7, and 8.
Appeal 2010-007705
Application 11/040,069

4
“blocking routing of said instant message for completion of transmission of
said instant message to said intended recipient” as recited in claim 1.
We do not sustain the rejection of claim 1 under 35 U.S.C. § 103 as
being unpatentable over Keller alone.

Section 103 rejection of claim 4
The Examiner has not persuasively explained how the combination of
Keller and Woods teaches “blocking routing of said instant message for
completion of transmission of said instant message to said intended
recipient” as recited in independent claim 1. We do not sustain the rejection
of claim 4 under 35 U.S.C. § 103 as being unpatentable over Keller and
Woods.

Section 103 rejection of claim 6
Claim 6 recites “wherein said blocking step comprises the step of
performing selective blocking selected from the group consisting of
absolutely blocking said instant message, queuing said instant message for
later delivery and redirecting said instant message.” The Examiner finds
that paragraph 37 of Bhatia teaches the blocking step. Ans. 7. Appellants
argue that Keller alone does not teach the blocking step. App. Br. 8.
Paragraph 37 of Bhatia teaches that if server 106 determines that a
sender’s identifier matches an identifier on a junk sender list, the network
message is deleted. See also Figs. 1 and 3 and ¶¶ 33-36, 40. Paragraphs 16
and 40 of Bhatia teach that the network message includes an instant
message. The scope of “blocking routing of said instant message for
completion of transmission of said instant message to said intended
Appeal 2010-007705
Application 11/040,069

5
recipient” as recited in claim 1, “wherein said blocking step comprises the
step of performing selective blocking selected from the group consisting of
absolutely blocking said instant message, queuing said instant message for
later delivery and redirecting said instant message” as recited in claim 6,
encompasses a server detecting and deleting a junk instant message as taught
by Bhatia.
We agree with the Examiner that paragraph 37 of Bhatia teaches
“wherein said blocking step comprises the step of performing selective
blocking selected from the group consisting of absolutely blocking said
instant message, queuing said instant message for later delivery and
redirecting said instant message” within the meaning of claim 6. Appellants
have not provided persuasive evidence or argument to rebut the Examiner’s
findings.
We sustain the rejection of claim 6 under 35 U.S.C. § 103 as being
unpatentable over Keller and Bhatia.

DECISION
The rejection of claims 1-3, 5, 7, and 8 under 35 U.S.C. § 103(a) as
being unpatentable over Keller is reversed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Keller and Woods is reversed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Keller and Bhatia is affirmed.

Appeal 2010-007705
Application 11/040,069

6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART

kis