Ex Parte Shimamura et al

Patent Trial and Appeal BoardNov 29, 2012

10576048 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/576,048 08/07/2006 Koichi Shimamura VPM-01601 8854 54004 7590 11/29/2012 MUIRHEAD AND SATURNELLI, LLC 200 FRIBERG PARKWAY SUITE 1001 WESTBOROUGH, MA 01581 EXAMINER SRIVASTAVA, VIVEK ART UNIT PAPER NUMBER 2423 MAIL DATE DELIVERY MODE 11/29/2012 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 KOICHI SHIMAMURA, TAKENORI SEKIYA, SATOSHI NISHIZAWA, HIDEAKI SUGA, JOTA NAKATSUMA, HISASHI KATO, and YOSHIMI SAITO _____________ Appeal 2010-007631 Application 10/576,048 Technology Center 2400 ______________ Before KALYAN K. DESHPANDE, BRYAN F. MOORE, and TREVOR M. JEFFERSON, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007631 Application 10/576,048 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner’s Non-Final Rejection of claims 2-50. App. Br. 2. Claim 1 is cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejection of these claims. INVENTION The invention is directed to a presence display system capable of displaying the states of other users. See Spec. 1. Claim 9 is representative of the invention and is reproduced below: 9. A server apparatus in a presence display system comprising the server apparatus and a client apparatus for each user, constituted to allow the client apparatus to display the states of other users, comprising: means for holding information indicating the states of each user and location information that are transmitted by each of the client apparatuses; means for storing a buddy list that registers other users whose states the user wishes to watch, for each user; means for transmitting, to each user, information indicating the states of other users registered in the buddy list and information relating to the distance between the user and the other users; and means for creating a list of other users that are watching the state of the user and transmitting the list to the user in accordance with a request from the user . REFERENCES Yoakum US 6,658,095 B1 Dec. 2, 2003 Mora US 2004/0162882 A1 Aug. 19, 2004 Michael US 2004/0170263 A1 Sep. 2, 2004 De Vries EP 1,176,840 A1 Jan. 30, 2002 Appeal 2010-007631 Application 10/576,048 3 REJECTIONS AT ISSUE Claims 2-7, 9-14, 16, 18, 19, 21, 23, 24, 27-30, and 32-50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of De Vries and Michael. Ans. 3-15. Claims 8, 17, 22, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of De Vries, Michael, and Yoakum. Ans. 15-17. Claims 15, 20, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of De Vries, Michael, and Mora. Ans. 17-18. ISSUE Did the Examiner err in finding that Michael renders obvious the following limitation recited in claim 9: “means for transmitting, to each user, information indicating the states of other users registered in the buddy list?” ANALYSIS Appellants argue the above limitation of claim 9. Appellants do not make substantive additional arguments regarding claims 2-8 and 10-50 and therefore these claims fall with claim 9. Appellants argue that “Michael does not disclose that a buddy list is transmitted from the presence server to the user upon request. Instead, in paragraph 19, Michael discloses that each user maintains a contact list and the presence server unit maintains presence information for each of the users Appeal 2010-007631 Application 10/576,048 4 (see paragraph 0018).” App. Br. 11. (Emphasis omitted). We are not persuaded by this argument. The Examiner concludes that “the fact that the presence server maintains a watcher list and that users can specify which watchers are authorized to receive their presence information, would make it obvious to one of ordinary skill in the art at the time the invention was made, in view of Michael's disclosure, to modify Michael such that the user is provided a watcher list upon request in order to facilitate specifying which watchers are authorized to receive their presence information.” Ans. 19. We find ample support for the Examiner’s finding. In other words, one of ordinary skill in the art at the time of the invention would have found it obvious to transmit a buddy list to the user upon request in order to facilitate the user’s maintenance of the buddy list. See Id. Thus, we agree with the Examiner that Michael suggests the limitation at issue. Appellants also argue that the Examiner relies on inherency for his rejection. App. Br. 13-14. As noted above, the Examiner found that the limitation at issue would have been obvious to one of skill in the art at the time of the invention, thus, despite the use of the word “necessary,” the Examiner does not rely on inherency. Inherency is distinct from obviousness. Trintec Industries, Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002). DECISION The Examiner’s decision to reject claims 2-50 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). Appeal 2010-007631 Application 10/576,048 5 AFFIRMED tj